Our exploration continues in Trademarks in the Courtroom: Noteworthy Decisions from India Part – 4, focusing on Indian trademark case highlights. This segment reviews crucial judgments regarding user affidavits and the handling of trademark refusal orders, pivotal aspects of the trademark registration process.
Cases pertaining to user affidavit:
Unreasoned refusal of Shell’s drum trademark application set aside
The Delhi High Court has recently set aside an order of the Trademark Registrar refusing a trademark application by Shell for a drum logo in red and yellow colours. The order was set aside as Section 11 was stated as a ground, but no earlier marks were cited, and no explanation was provided for refusal under Section 9 of the Trademarks Act. The Court also stated in the order that filing a user affidavit was not compulsory under Rule 27 of 2022 Rules unless the Registrar asks for it.
Citation: Shell Brands International AG Vs. The Registrar of Trade Marks [C.A. (COMM.IPD-TM) 27/2021]
User Affidavit must be considered by the Registrar of Trademarks, says Delhi High Court.
The Delhi High Court has recently set aside the refusal of a trademark filed by ECOS(I) Mobility because the Trademark Registrar did not consider the user affidavit while passing the order under Section 9 of the Trademarks Act. This decision was given on appeal from the refusal order of the Registrar.
Citation: Ecos(I) Mobility And Hospitality Pvt. Ltd. Vs. Registrar of Trade Marks [C.A.(COMM.IPD-TM) 136/2022]
Setting aside the trademark refusal order of the Examiner:
‘Tivoli’ trademark refusal order set aside and remanded for consideration based on honest and concurrent use.
In a case involving the trademark, Tivoli, the Delhi High Court set aside the order of the Registrar of Trademarks refusing the application based on earlier marks. Based on the claims of use of the mark by the appellant since 1933, ownership of the domain name – tivolihotels.com, and global reputation, the Court asked the Registrar to consider the mark for advertisement before acceptance under Section 12. The Court remanded the application to the Registrar with the afore-mentioned directions.
Citation: MHG IP Holdings (Singapore) Pte. Ltd. Vs. The Registrar of Trade Marks [C.A. (Comm. IPD-TM) 49/2021 and I.A. 9889/2023]
The latest judgments in Indian trademark case highlights emphasize the judiciary’s role in refining trademark registration practices, particularly concerning user affidavits and examination protocols. These insights are indispensable for industry professionals navigating the intellectual property landscape.
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