The Delhi High Court in a recent case dismissed an appeal by CEAT citing gross delay and strong likelihood of confusion. The Appellant, CEAT Limited filed an appeal against a refusal order issued by the Registrar of Trade Marks in respect of the Appellant’s TM application. The application was filed for the trademark “FARMAX” bearing the Trademark Application No. 3324395 in class 12 for goods such as ‘agricultural vehicles, automobiles tyres; retreaded tyres; vehicle tyres; tyres for the wheels of forestry vehicles; tyres for land vehicles; parts and fittings for the aforesaid goods etc.’. The Registrar of Trade Marks had refused the mark “FARMAX” on the grounds of Section 11(1) based on its similarity with the prior registered marks “FARMOX” and “FORMAX” in class 12.
In the appeal, the Appellant contended that the trademarks FARMAX, FARMOX, and FORMAX when seen as a whole are structurally and phonetically dissimilar. Further, the Appellant noted that the cited mark “FARMOX” has been registered for the ‘use of scooters, motorcycles, tractors and motor like vehicles’ and the cited mark “FORMAX” has been registered for ‘parts and fittings for use in motor land vehicles and tractors’ under class 12. The Appellant relied on the decision of the Supreme Court in Nandhini Deluxe vs. Karnataka Cooperative Milk Producers Federation Limited to contend that “Tyres” sold under the Appellant’s mark are distinct from goods offered under the cited marks and the prior existence of the cited marks for the same class of goods cannot hinder the registration of the Appellant’s trademark, since the nature of goods offered under the Appellant’s mark is distinct from the cited marks. In response, the Registrar of Trade Marks (the Respondent herein) contended that the goods offered under the Appellant’s mark and the cited marks were cognate and allied and related to vehicles and tractors.
The Court firstly noted that the appeal filed by the appellant was grossly delayed (by 425 days) and the explanation offered in the condonation of delay application was specious, cursory, and flimsy, which could not find favor of the Court. The court then moved on to note that the Appellant’s mark was structurally and phonetically similar to the cited marks. The Court also noted that the case of Nandhini Deluxe vs. Karnataka Cooperative Milk Producers Federation Limited was irrelevant to the present case since the marks dealt with in the cited precedent were device marks bearing a generic word. In the present case, however, the marks “FARMAX”, “FARMOX” and “FORMAX” were coined marks and are not generic. The Court commented that it would be difficult to drive a distinction between vehicles’ tires, for which the appellant seeks registration, and automobiles, for which the cited marks had been registered as they are closely related and offered under marks causing a strong likelihood of confusion.
The Court therefore proceeded to dismiss the appeal in favor of the Registrar Of Trade Marks.
Citation: Ceat Limited vs The Registrar Of Trade Marks [C.A.(COMM.IPD-TM) 142/2021 & I.A. 1466/2023]
Authored by Naika Salaria, Trademarks and Copyrights team, BananaIP Counsels
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