Introduction:
In the present case[1] an appeal was filed at IPAB and pursuant to the Tribunal Reforms Act of 2021, the present appeal has been received on transfer by the High Court of Delhi. The Senior Examiner of Trademarks’ decision dated March 15, 2018, regarding Application No. 2365543 for the mark under class 4, is being contested by this appeal. The Hon’ble High Court of Delhi allowed the appeal and set aside the impugned order dated 15th March, 2018.
The Appellant:
The appellant is a part of the Shell Group of Companies, whose parent corporation is Royal Dutch Shell Plc. The Shell Group of Companies is in the business of discovering and producing oil and gas, offering petrochemicals and energy solutions, and producing and distributing gasoline for cars, ships and aero planes.
In an application dated July 18, 2012, the appellant applied for the registration of the trade mark under class 4, the trademark being a drum of red and yellow colour outlined by black colour. The applicant claims usage since July 1, 2005 and only claimed rights in the said combination of the colour and not in the device of drum.
Proceedings:
During the examination process objections were raised under Sections 11 and 9(1) (b) of the Trade Marks Act, 1999. The response to the examination report was filed on 13th March, 2018 post which a hearing was conducted. Later a refusal order along with grounds for refusals was provided by the Registrar. The appellant was aggrieved by the decision of the Registrar of Trademarks and hence filed an appeal.
Contention of the applicant with respect to the filing of appeal:
- With respect to the objection under section 11, the examination report failed to provide any similar or identical mark.
- There was no mandate for filing a user affidavit.
Contention of the respondent:
- The respondent states that under Rule 27 of the Trademark Rules, 2002, it is the discretion of the registrar to call upon applicant to file user affidavit.
Court decision:
The court decided that since the respondent objected the application for the registration of trademark by virtue of section 11 and at the same time did not provide for any similar/identical mark, the objection does not stand.
Further the objection under section 9(1) (b) of the act does not stand as the order fails to state how the impugned mark falls under any of the grounds provided in Section 9(1)(b).
The court also explained that as per Rule 27 of the Trade Marks Rules 2017 ”The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used”, which means it is not mandatory to file user affidavit. The discretion is given to the Registrar to call upon an applicant to file a user affidavit but in case at hand the registrar never called upon the applicant to file a user affidavit and hence renders the refusal unsustainable.
Conclusion:
As the appeal was decided in the favour of the applicant, the registrar was directed by the court to proceed with the advertisement of the applied trademark and in case any opposition is raised, let that be decided on its own merits.
[1] SHELL BRANDS INTERNATIONAL AG v. THE REGISTRAR OF TRADE MARKS, C.A.(COMM.IPD-TM) 27/2021.
DUCTUS EDGE 