The Division bench of the Delhi High Court disposed an appeal filed by the Appellant challenging the operative part of the impugned order dated 17th November 2023 passed by the Single Judge in an appeal filed under Section 91 in C.A.(COMM.IPD-TM) 20 of 2023.
The Appellant, Muneer Ahmad in C.A.(COMM.IPD-TM) 20 of 2023 had filed an appeal under Section 91 of the Trademarks Act, 1999 to overcome the refusal order dated 12th May 2023, passed by the Examiner rejecting Application No. 4136359, seeking registration of ‘BHARAT’ with the device of brush’ in Class 16. The objections under Section 9(1)(a), 9(1)(b) and 11(1) were cited in the Examination Report. Further, a refusal order was adjudicated only on the absolute grounds of refusal u/s 9(1)(a) and 9(1)(b), and the relative ground of refusal u/s 11(1) was not even mentioned in the order.
In the impugned order dated 17th November 2023, the learned Single Judge set aside the refusal order stating that the mark when seen as a whole is distinctive and not descriptive. The Order further instructed the appellant, Mr. Muneer Ahmad to file a fresh affidavit with evidence to claim the date of first use and also directed the learned examiner to issue the certificate of Registration. Thereafter, the Appellant, Mehboob Ahmad filed an appeal under I.A 26204/2023, seeking clarification in paras 19 and 20 of the impugned order which read as follows:
“19. As Mr. Vaidyanathan has raised an objection that most of the documents on the basis of which the appellant was seeking to substantiate its claim of user are illegible, the appellant would be at liberty to file a fresh affidavit of user along with documents in support thereof. Said affidavit is directed to be filed within two weeks from today.
20. After considering the said affidavit and other material on record, the Registrar would proceed, to issue the certificate of registration, incorporating the date of user of the mark by the appellant, within a period of four weeks from today.”
The said appeal was rejected as per the order dated 22nd December 2023 by the learned Singled Judge claiming that there was no ambiguity in the impugned order. Aggrieved by this order, the Appellant, Mr. Mehboob Ahmad, filed an appeal under LPA 88/2024 before the Hon’ble Delhi High Court, contending that an entire stage of trademark adjudication is being skipped, by directing the examiner to issue the registration certificate as it deprives the right of a third party to object within 4 months of the date of its advertisement in Trademark Journal. Seeing merit in the said appeal, the Division bench of the Delhi High Court issued notices to Respondent no.1, Muneer Ahmad and Respondent No. 2, the Examiner.
The Division bench observed that the Examiner had passed the refusal order without referring to Section 11(1) objection that was raised in the examination report along with the Section 9(1)(a) and 9(1)(b) objections. Thus, the Division bench considered to remit the matter to the Examiner. It was clarified that the mark will proceed to advertisement in accordance with Section 20(1) of the Trade Marks Act, after considering the Section 11(1) objection alone since the objections under Sections 9(1)(a) and 9(1)(b) did not survive.
Citation: Mehboob Ahmad vs Muneer Ahmad & Anr., High Court of Delhi, 21st February, 2024, LPA 88/2024 & CM Appls. 5961-65/2024
Authored by Ms. Benita Alphonsa Basil, Trademark Team, BananaIP Counsels.
Reviewed and confirmed by Ms. Naika Salaria, Trademark Team, BananaIP Counsels.
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