Manmohan Singh, Chairman:— The Appellant has filed the instant Appeal on July 25, 2019 against the Order dated March 06, 2019 as well as Statement of Grounds of decision dated April 30, 2019 of the Respondent refusing the Appellant's Application No. 2822853 for the mark in Class 09. By this order we proposed to decide the above appeal. No counter affidavit has been filed by the respondent.
2. After filing the application for registration of Trade Mark KHIND which is also dominate part of corporate name of the appellant, the respondent had raised objection in the Examination Report (ER) dated January 01, 2016 on grounds a) that the mark is devoid of any distinctive character, and b) similar marks exist on record i.e. HIND under Application No. 1197672 and HIND under Registration No. 1377375 (Annexure C).
3. The Applicant, in its Response dated January 22, 2016 (Annexure D) emphasized on the distinctive character of the mark i.e. KHIND is a coined arbitrary term derived from the erstwhile name of the Appellant's affiliate viz. KEE HIN INDUSTRIES SDN BHD which has no meaning in the English language and was first used in the year 1989; numerous KHIND and KHIND formative marks are/had been registered by the Appellant in numerous countries of the world, including in India; complete and ideological dissimilarity of the trade mark vis-à-vis the cited application/registration; prior adoption by the Appellant of the trade mark/trade name KHIND; registration of the trade mark of the Appellant i.e. under No. 1311478 in Class 09 for the same/similar goods (Annexure E).
4. Hearings were held on November 20, 2018 and February 27, 2019 before the Respondent. In addition to the submissions at the hearings, Written Submissions were filed on behalf of the Appellant on March 02, 2019.
5. Counsel for the appellant has argued the appeal and he has referred few decisions in support of his submissions.
a. It is stated by him that none of judgment referred by respondent is applicable to the facts of present case. It is argued by him that the observation in British Sugar Plc v. James Robertson & Sons Ltd. [1996 RPC 281 at 302] pertain to common laudatory word - ‘Treat’ for ‘desert sauces and syrups; all included in Class 30’ - which is not applicable to the case at hand as the subject trade mark - cannot be, in any manner, considered as laudatory.
b. It is also argued that the ratio relied upon by the Respondent in Paine & Co.'s Trade Marks [(1893) 10 RPC 217] did not deal with the question of inherent distinctiveness of a trade mark. In this case, the Court held that it's duty to maintain the purity of the Register comes into play when its attention is called to entry on the Register of a trade mark which cannot in law be justified as a trade mark. The observations in the said decision are not applicable to the case at hand as was already on the Register in the name of the Appellant. The said trade mark had not been renewed on account of adoption of another stylized representation i.e. .
c. He says that the observations relied upon in United Biotech Pvt. Ltd. v. Orchid Chemicals and Pharmaceuticals Ltd [(2012) 50 PTC 433 (Del.) (DB)] have no relevance as the subject matter of that case was removal of the mark FORZID for pharmaceutical preparations from the Register as it was found to be deceptively similar to the mark ORZID. In the instant case, the cited marks HIND (common Hindi language dictionary word which co-existed with the trade mark of the Appellant under No. 1311478) are ideologically and otherwise dissimilar to the trade mark.
d. It is alleged by him that the decision rendered in K.R. Chinna Krishna Chettiar v. Sri Ambal & Co. [(1969) 2 SCC 131 : AIR 1970 SC 146] where ‘Sri Andal Madras Snuff was held to be similar to ‘Sri Ambal parimala snuff and it was observed that the resemblance between the two marks must be considered with reference to the ear as well as the eye, in fact assists the Appellant as the trade mark is both phonetically and visually dissimilar to the cited mark HIND.
6. It is submitted by the counsel that the Appellant has no quarrel with the propositions laid down in Amritdhara Pharmacy v. Satyadeo Gupta [AIR 1963 SC 449] and Mex Switchgears Pvt Ltd. v. Omex Cables Industries [(2018) 76 PTC 209]. The said decisions emphasized on the overall similarity between the two names/marks and held ‘Lakshmandhara’ to be deceptively similar to Amritdhara’ and ‘OMEX GOLD’ deceptively similar to ‘MEX’, respectively.
7. We totally agree with the argument of the counsel for the appellant. It appears that all the judgments referred by the respondent are out of context. The respondent has not applied his mind before referring those decisions. The respondent has blindly referred those cases without appreciating the facts and law.
8. The subject mark is a prior coined arbitrary term derived from the erstwhile name of the Appellant's affiliate viz. KEE HIN INDUSTRIES SDN BHD which has no meaning in the English language, there can be no confusion/deception or likelihood of confusion with the cited marks. The Appellant is a bona fide proprietor and the question of adoption of the cited mark with any prefix and/or suffix does not arise.
9. The Respondent has failed to take notice of the fact that the Appellant's trade mark was on the Register of Trade Marks under No. 1311478 and it was considered to be distinctive. Also, the Respondent had accepted Application No. 2822854 for the trade mark in Class 11 for registration (Annexure J). Thus, the Respondent wrongfully deployed a different yardstick to test registrability of the same mark albeit in a different Class on the ground of Section 9(1)(a) of the Trade Marks Act, 1999.
10. The Respondent erroneously assumed that the cited mark HIND under No. 1197672 filed on May 09, 2003 was valid/registered when it had not even progressed beyond examination in over 15 years. The said approach of the Respondent is incorrect and perverse leading to miscarriage of justice and without application of mind. The approach of the respondent is one sided and without the law.
11. The Respondent, in its Statement of Grounds, has erroneously stated the trade mark to be ‘purely descriptive’ of the goods in respect of which it has been applied for, however, objection was raised in the Examination Report under Section 9(1)(a) of the Trade Marks Act, 1999. The Respondent in the said order observed that the trade mark is ‘descriptive’ for the first time in the Statement of Grounds. The Respondent is now trying to justify his wrongful refusal of the subject trade mark. The said finding of the Respondent is perverse and lacks merit.
12. The Order dated March 06, 2019 did not outline grounds for refusal and/or materials used by the Respondent in refusing the Application as envisaged in Section 18(5) of the Trade Marks Act, 1999. Thus, prima facie, the said Order is baseless, arbitrary, without any application of mind and in contravention of Section 18(5) of the Act. The Hon'ble High Court of Delhi in Intellectual Property Attorneys Association v. The Controller General of Patents Designs & Trade Marks [W.P.(C) 3851/2019 & CM Appls. 17546/2019, 29362/2019 decision passed on October 16, 2019] observed that ‘8…..the Registrar of Trade Marks is directed to strictly implement Section 18(5) of the Trade Marks Act by recording in writing grounds for refusal/conditional acceptance and the order containing the grounds of refusal/conditional acceptance be sent to the applicant within two weeks of the passing of the order.”
The Order dated March 06, 2019 is also in contravention of the principle laid down by the Hon'ble Supreme Court in Siemens Engineering and Manufacturing Co. of India Ltd. v. Union of India [(1976) 2 SCC 981 : AIR 1976 SC 1785], where it was observed that “6………….It is now settled law that where an authority makes an order in exercise of a quasi-judicial function it must record its reasons in support of the order it makes. Every quasi-judicial order must be supported by reasons…”
13. The impugned Order as well as Statement of Grounds of decision is bad and perverse, both in law and facts. Both orders are set aside by allowing the appeal. The appellant's Application No. 2822853 for registration of the trade mark in Class 09 in the name of the Appellant is allowed and shall proceed further for registration as per rules.
14. No costs.