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Twentieth Century Fox Film Corporation Vs. The Registrar - (High Court of Delhi) (27 Feb 2023)

Mere identity or similarity of the mark of which registration is sought, and the earlier mark, is not sufficient ground to reject the application seeking registration


Intellectual Property Rights

Present appeal under Section 91 of the Trade Marks Act assails order passed by the Senior Examiner of Trade Marks in the office of the Trade Marks Registry, New Delhi, rejecting Application submitted by the appellant for registration of the mark, in Class 14.

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 Avathar Varatharajan and that the similarity was likely to result in confusion.

It is clear, from a bare reading of Section 11(1) of Act 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.

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. 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.

The Senior Examiner has erred in rejecting the Appellant's application. The impugned order is, therefore, quashed and set aside. 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. Appeal allowed.


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