Hon'ble Judges/Coram:
C. Hari Shankar

JUDGMENT

C. Hari Shankar, J.

1. This appeal under Section 91 of the Trade Marks Act assails order dated 13th September 2022, passed by the Senior Examiner of Trade Marks in the office of the Trade Marks Registry, New Delhi, rejecting Application No. 4280126 submitted by the appellant for registration of the mark, in Class 14, for "Alarm clocks; bracelets; busts of precious metal; charms; clocks; earrings; jewellery; jewellery cases of precious metal; jewellery boxes not of precious metal; jewellery chains; decorative key fobs; key chains; key rings; lapel pins; neck chains; necklaces; necktie fasteners; nonmonetary coins; ornamental lapel pins; pendants; rings; stop watches; tie clips; tie fasteners; tie tacks; wall clocks; watch bands; watch cases; watch chains; watch straps; watches; wedding bands; wrist watches on proposed to be used basis".

2. Consequent to submission of the aforesaid application by the appellant, the office of the trademark Registry issued First Examination Report (FER) dated 25th September 2019, objecting to the registration of the proposed mark under Section 11(1) of the Trade Marks Act, 1999, on the ground that it was deceptively similar to two earlier marks. The two marks which were cited were (i), registered in favour of Mr. A. Shrivinasan and (ii) , registered in favour of Mr. Avathar Varatharajan.

3. Of these two marks, the former mark was not renewed and, accordingly, was deemed to be statutorily abandoned under Section 25(3) of the Trade Marks Act.

4. The appellant, in its reply dated 19th October 2019 to the FER, submitted that (i) the appellant's mark was phonetically and visually distinct from the cited mark, (ii) the overall impression conveyed by the two marks was completely different and there was, therefore, no likelihood of confusion, (iii) Section 17 of the Trade Marks Act required the rival marks to be seen as a whole, without vivisecting the marks into their individual components, (iv) the goods in respect of which the cited was registered were also different from the goods in respect of which the appellant sought registration of its mark.

5. Mr. Prithvi Singh, learned Counsel for the appellant submits, moreover, that the goods in respect of which the registration of the appellant's mark was sought were essentially towards promotion of the movie AVATAR which was released in December 2022.

6. The Senior Examiner, by the impugned order dated 13th September 2022, rejected the aforesaid defence put up by the appellant and disallowed registration of the appellant's mark under Section 11(1)¹ of the Trade Marks Act on the ground that it was visually and phonetically similar to the cited mark.

7. Aggrieved thereby, the appellant has approached this Court by means of the present appeal.

8. I have heard Mr. Prithvi Singh, learned Counsel for the appellant and Mr. Harish Vaidyanathan Shankar, learned Counsel for the respondent at some length.

9. The only ground on which registration of the mark of the appellant has been refused, is that it is deceptively similar to the mark registered in favour of Mr. Avathar Varatharajan and that the similarity was likely to result in confusion.

10. It is clear, from a bare reading of Section 11(1) that mere identity or similarity of the mark of which registration is sought, and the earlier mark, is not sufficient as a ground to reject the application seeking registration. Section 11(1) has two clauses. Clause (a) envisages a situation in which applicant's mark is identical to the earlier trademark and registration is sought in respect of similar goods and services. Clause (b) envisages a situation in which the applicant's mark is similar to an earlier trade mark and the goods and services covered by the two marks are identical or similar. In either case, a third condition is required to be satisfied, which is that, owing to the identity or similarity between the applicant's mark and the cited mark, and the identity of similarity between the goods covered under two marks, there exists a likelihood of confusion on the part of the public, which would include a likelihood of association with the earlier trade mark.

11. In examining sustainability of the objections raised in the FER, the Senior Examiner was required, therefore, to assess whether (i) the appellant's mark was identical or similar to the earlier cited mark , (ii) whether the goods and services covered by the two marks were identical or similar and (iii) whether, because of these factors, a likelihood of confusion on the part of the public existed.

12. Applying these tests to the case at hand, the position that emerges is, as I find, thus:

(i) It cannot be said that the applicant's mark is identical or similar to the cited mark. No doubt, the two marks are phonetically similar and, perhaps, even identical. However, mere phonetic similarity is insufficient to render the marks identical or similar within the meaning of Section 11(1). The identity or similarity has to be such as would result in likelihood of confusion on the part of the public.

(ii) The cited consists of the word "AVATHAR" in English and Tamil, with the sketch of the face of a lady alongside. It is the composite mark, as such, which has been registered. When comparing marks for the purpose of assessing infringement, Section 17² of the Trade Marks Act specifically proscribes vivisection of marks into its individual components, and holds that where a mark is registered as a whole, exclusivity is conferred on the whole mark, and not on individual parts thereof. It is this very claim to exclusivity in the earlier mark, and the possibility of confusion, were the two marks to be simultaneously registered, that forms the foundation of the proscription against registration found in Section 11(1). The possibility of confusion has, in either case, to be viewed from the perspective of the same mythical gentleman of average intelligence and imperfect recollection, first invoked by the Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd MANU/SC/0115/1959 : AIR 1960 SC 142. The impression, created on the "mind's eye" of such a gentleman is of the entire earlier mark, seen as a whole. The principle that composite marks are to be compared as a whole, unless individual parts thereof are registered separately, is a thread that runs through the Trade Marks Act. One cannot, therefore, extract, from the cited mark, only the word "AVATHAR" in order to compare it with the appellant's mark. The marks are to be compared as a whole.

(iii) Viewed thus, it is clear that there is no similarity between the cited mark and the appellant's mark, except the phonetic similarity between the words "AVATHAR" and "AVATAR". The cited mark contains the sketch of a lady as well as the word "AVATHAR" written both in English and Tamil. These features are completely absent in the appellant's mark. No person of average intelligence and imperfect recollection would, therefore, confuse the cited mark with the appellant's mark. It is extremely unlikely that the average consumer would regard as merely an avatar³ of .

(iv) The Court is of the opinion that the Senior Examiner erred in merely emphasising the phonetic similarity between "AVATHAR" and "AVATAR", without recognising the fact that the cited mark was a composite device mark containing a sketch, as well as the word AVATHAR written in two languages, compositely registered, with no registration of its individual parts or elements. The marks, to reiterate, were required to be compared as a whole and, when so compared, they cannot be treated as similar, much less identical.

13. In that view of the matter, it is not necessary for this Court to enter into the exercise of comparing the goods or classes in respect of which registration was sought, as identity or similarity of the marks and identity or similarity of the goods are required to be cumulatively satisfied for either of clauses (a) and (b) of Section 11(1) to apply, the conjunctive link, in each clause, being "and", not "or". If the competing marks are neither identical nor similar, therefore, no occasion arises to compare the goods or services in respect of which the marks are registered, or proposed to be registered.

14. Moreover, and at the cost of repetition, in view of the difference between the two marks, there was no likelihood of confusion, on the part of the public, between them. The third requirement of Section 11(1) is also, therefore, not satisfied.

15. I am, therefore, of the considered opinion that the Senior Examiner has erred in rejecting the appellant's application.

16. The impugned order dated 13th September 2022 is, therefore, quashed and set aside.

17. As appellant's mark was never advertised, having been rejected at an initial stage, the Registrar is directed to advertise the mark and proceed thereafter in accordance with law.

18. The appeal stands allowed in the aforesaid terms.

19. Miscellaneous applications do not survive for consideration and stand disposed of.

20. Let this order be uploaded on the website of this Court within 24 hours.

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