Summary
This installment analyses recent Indian trademark decisions, focusing on court interventions that have overturned initial refusals. Noteworthy cases include the acceptance of Roopak’s trademark after judicial review, clarification on affidavit requirements for well-known trademark applications in Kamdhenu’s case, and the reversal of the rejection of the GEM MANKIND device mark. The Delhi High Court’s reasoning is presented with reference to cited judgments, demonstrating an evolving approach that balances legal formalities with fairness. These rulings provide guidance for stakeholders navigating trademark registration complexities in India.
The latest installment of Trademarks in the Courtroom: Noteworthy Decisions from India Part – 5 brings forth a fresh wave of insights, shedding light on how nuanced circumstances and meticulous details can overturn initial trademark refusals. This segment particularly emphasizes the courts’ reasoning in re-evaluating trademark rejections, guiding us through the labyrinth of legal protocols in the intellectual property realm.
Roopak’s trademark refusal is set aside, and the mark is ordered to be accepted and advertised.
On an appeal filed by the applicant of the mark Roopak’s in class 35, the Delhi High Court set aside the refusal order and accepted the mark. The Court stated that all marks cited by the examiner were related to the trademark applicant and that the only unrelated mark was abandoned.
Citation: Roopak’s Pik and Pay Vs. The Registrar of Trademarks [C.A. (Comm. IPD-TM) 37/2021]
Kamdhenu’s well-known trademark application refusal based on the missing affidavit is not valid, says Delhi High Court
The Registrar of Trademarks refused an application for well-known mark status of ‘Kamdhenu’ as an affidavit was not filed along with the evidence submitted. Reversing the refusal, the Delhi High Court stated that the affidavit was not mandatory, and even if the affidavit was required, the applicant should have been given an opportunity to submit the affidavit. It asked the Registrar of Trademarks to permit the filing of an affidavit and afford a hearing to decide the application.
Citation: Kamdhenu Ltd vs The Registrar Of Trade Marks [C.A.(COMM.IPD-TM) 66/2021]
Rejection of the Device Mark “GEM MANKIND” is not valid, says Delhi High Court.
The Delhi High Court has set aside the rejection of the trademark, GEM MANKIND”, under Section 11 of the Trademarks Act based on earlier marks. The marks cited by the Registrar to support the rejection were prior registrations for GEM by third parties. The Court stated that the use of the generic word GEM for rejection of a device mark in which words are written in a stylish font is not valid.
Citation: Mankind Pharma Limited Vs. Registrar Of Trade Marks [C.A.(COMM.IPD-TM) 2/2023]
Concluding this post, we observe a pattern where the courts, advocating for fairness and precision, have challenged rigid trademark denials, inviting a more discerning and equitable approach. These instances serve not just as a record of victories but as beacons for entities navigating the often turbulent waters of trademark registration in India.