TREGUM REMEDIES PRIVATE LIMITED v. THE SENIOR EXAMINER OF TRADEMARKS

4. The arguments of Mr.R.Sathish Kumar, learned counsel for the appellant:-

(a) Mr.R.Sathish Kumar, learned counsel for the appellant would address the rejection of the application by the respondent under Section 9(1) of the Act contending that the Trademark which was applied for registration is a composite mark and therefore, the respondent has clearly fell in error in finding it to lack distinctiveness.

(b) Insofar as the objection of the respondent taken under Section 11(1) of the Trade Mark Act, 1999, Mr.R.Sathish Kumar contends that even according to the respondent, other third party applicants have been granted registration of Trademarks like "SKINN" and "SKINN ESCAPADE" and therefore, it is not open to the respondent to now reject the appellant's application citing lack of distinctiveness. Learned counsel also states that even the earlier registrations which have been cited by the respondent viz., "SKINN" "TITAN" and

"SKINN ESCAPADE" are also in the same line of business of perfumes, sprays, deodorants, essential oils etc., and therefore, he would contend that the rejection of the appellant's application is arbitrary and inconsistent to earlier registrations granted by the respondent. He would further state that there is no likelihood of any confusion with the cited marks especially "SKINN", since the

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appellant's mark has to be seen as a composite mark and the word "SKIN"

alone cannot be seen in an isolation to contend that there is possibility of confusion.

(c) Mr.R.Sathish Kumar, learned counsel for the appellant also invites my attention to the impugned order and contends that there are absolutely no reasons assigned for rejecting the appellant's application. He would further state that the impugned order also does not address the response to the objections to the Examination Report of the respondent. He would further state that mere acceptance of the appellant's application for registration will not cause any prejudice to any person, including the Company or person competing in the same line, since it is always open to any person to raise an objection at the appropriate stage, after publication of the proposed mark is ordered to be made/effected in terms of the statute.

5. Per contra, Mr.G.Mutharasu, learned Central Government Standing Counsel would invite my attention to the impugned order as well as the Examination Report and contend that the respondent has clearly found that the appellant, being only a proposed use, the mark is subject to the rights of the prior applications/prior uses of the marks and that, there is a clear finding rendered by the respondent that the proposed mark is significantly identical with and/or deceptively similar to the cited marks. Mr.G.Mutharasu would further

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state that admittedly, the goods in respect of which the appellant is seeking registration, are admittedly goods of same description as those of the cited marks and therefore, the rejection of the appellant's application is proper and does not require any interference.

6. As regards the argument of Mr.R.Sathish Kumar with regard to Section 11(1) of the Act, Mr.Mutharasu contends that since there is similarity of the marks as well as similarity of goods covered by the said marks, there is every likelihood of confusion in the mind of public and therefore, even under Section 11(1) of the Act, the rejection of the appellant's application cannot be found fault with.

7. Mr.Muthurasau contends that in the event of finding that the impugned order is not a reasoned order, then he requests that the matter may be remitted to the respondent for a fresh decision to be passed, after giving a fair opportunity to the appellant as well.

8. I have carefully considered the submissions advanced on either side and I have also gone through the records produced by way of typed set of papers.

9. There can be no second opinion that the respondent is entitled to reject

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the application for registration of the appellant's trademark if the proposed mark, which is sought to be registered is devoid of any distinctive character. Similarly, even under Section 11, the respondent is well within its right to refuse registration because of its identity or similarity to an earlier trade mark giving rise to a likelihood of confusion on the part of the public, including the likelihood of of associating the appellant's mark with the earlier trademark. Therefore, the respondent was certainly within its jurisdiction to decide to accept the appellant's application for registration or even refuse/reject the said application.

10. On scrutiny of the appellant's application, in and by examination report, the respondent raised two objections viz., an objection under Section 9(1)(b) of Trade Marks Act, 1999 as well as under Section 11 (1) of the Act.

11. To the Examination Report, the appellant was given a fair opportunity to respond. In response, the appellant contended that the proposed mark "THE SKIN COMPANY" is a combination of three words and is therefore to be viewed as a composite mark. The appellant further stated that the appellant does not make any exclusive claim to any single word in the brand name. Therefore, the objection regarding Section 9(1)(b) of the Trade Marks Act, 1999 was addressed by contending that the work "SKIN" should not be read in isolation as just one word, but, must be seen as a word being only a part of a composite

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mark.

12. It has also been responded by the appellant that the mark "THE SKIN COMPANY" is unique and has been conceived by the appellant and does not describe any individual place, thing or animal and therefore, the mark as a whole, is entitled to be registered. Subsequent to the response to the objections raised by the respondent, an enquiry was conducted admittedly and in and by the impugned order, the appellant's application has been refused/rejected.

13. Even on a careful reading of the impugned order, the first thing that meets my eye is that the impugned order appears to be a pre-conceived decision of the authority. For instance, the reasoning given in the order that "the mark taken in its entirety is significantly identical with and/or deceptively similar to the cited marks" clearly evidences the fact that the reasoning does not appear to be appellant's case specific. The respondent does not even assert as to whether the proposed mark of the appellant is identical to cited marks or whether it is deceptively similar to the cited marks. Both these reasons fall under different categories and cannot be clubbed together. In fact, when the objection in the Examination Report was with regard to Section 9(1)(b), the impugned order proceeds to refuse the application citing Section 9(1)(a).

14. More over, when the appellant has given a detailed explanation in

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response to the Examination Report, the impugned order does not even consider, for whatever it is worth, the explanation offered in response by the appellant and proceeds to non-suit the appellant on a different ground altogether. This only shows non-application of mind on the part of the respondent before passing the impugned order.

15. Though Mr.Muthurasu, learned Central Government Standing Counsel requests that the matter may be remitted to the respondent for fresh consideration, I am unable to accede to the said request for the simple reason that the two objections that were raised on examination by the respondent at the first instance having adequately and satisfactorily addressed by the appellant.

16. Insofar as the objection under Section 9(1) of the Act, as rightly contended by Mr.R.Sathish Kumar, the objection cannot hold any water for the simple reason that the proposed mark of the appellant is a composite mark viz.,

"THE SKIN COMPANY". The law on the subject is fairly well settled and it is not open to the authorities or the Courts to dissect a composite mark and refuse registration referring to a single word in the composite mark. Therefore, the objection under Section 9(1)(b) or under section 9(1)(a) of the Trade Marks Act is clearly unsustainable and the respondent ought to have accepted the explanation offered by the appellant.

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17. In fact, I find considerable force in the arguments of Mr.Sathish Kumar that when the respondents have accepted "SKINN" to be distinctive and not descriptive, when it comes to the appellant, that too, seeking registration of a composite mark "THE SKIN COMPANY", a different yardstick cannot be applied when it comes to the appellant' case, by raising an objection under Section 9(1) of the Trade Marks Act,1999.

18. As regards Section 11(1) of the Act also, if the proposed mark is viewed as it is , viz., as a composite mark, then, there is absolutely no room for any confusion even with relation to the cited marks. In any event, the respondent has not even pinpointed and raised an objection warranting rejection of the appellant's application on the ground whether the proposed mark is identical or deceptively similar.

19. The impugned order, as already discussed, is more generic in nature and appears to be a mere regular format used by the respondent to pass orders in similar or identical matters like the facts and issues on hand in the present case.

20. Further, as rightly pointed out by Mr.R.Sathish Kumar, the mere fact that the appellant's application is accepted for registration does not give any undue or unfair advantage to the appellant. The next step, on accepting the appellant's application for registration, is to effect publication in the trademark

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journal. Upon such advertisement, it shall always be open to any party to object to the proposed mark and such objections will be dealt with at the appropriate stage, in the manner known to law.

21. In the light of the above, I am unable to sustain the impugned order. Accordingly CMA (TM) No.1 of 2026 is allowed and the order dated 07.12.2024 is set aside. The respondent shall proceed to cause an advertisement in the trade mark journal in terms of Section 20(1) read with Rule 39 of the Trade Marks Rules 2017 and thereafter, decide the application in accordance with law.

No costs.

09-10-2026

Index: Yes Speaking Neutral Citation: Yes

SR

To The Senior Examiner Of Trademarks Office of the Trademark Registry, Guindy,

Chennai-600 032.

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P.B.BALAJI, J.

SR

Pre-Delivery Order in CMA(TM) No. 1 of 2026 09-10-2026

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