Doons Defence Academy vs Registrar Of Trade Marks

The present Appeal is filed under Section 91 against the order dated 22/06/2019 passed (hereinafter referred to as the “impugned Order”) whereby the Respondent has refused to register the trademark (hereinafter referred to as “subject trademark”) bearing application No. 3014146 in Class 41 (hereinafter referred to as the “subject application”) of the Appellant on the grounds that mark is similar to the mark under Application No.2435693

FACTS OF THE CASE:

The Appellant is a retired Indian Navy Veteran (submariner) and true patriot, who founded a sole proprietorship firm M/s. Doon Defence Academy as early as 2005 to provide quality education and platform for students in India who are keen on preparing for Defence services.

The Appellant submitted that the Appellant is conducting business since inception under the subject mark. The subject mark is a combination of uniquely and artistically designed device/label/logo mark with an artistic device of swords, wings and anchor in the middle (signifying the three services in the Indian Army) with letters “DDA” which is an acronym of “Doon Defence Academy” written on top in black colour encircled in white background. The said Doon Defence Academy is situated in Dehradun, Uttarakhand and provides intensive and supportive quality education with physical training by eminent faculty members who offer practical, systematical education with latest and modern technologies to the students in written examinations and SSB-interview process. The Appellant’s progressive business outlook is evident from the fact that more than 8,400 students have been selected in different career perspectives since its inception and that every year many students from the Appellant are getting selected in the Defence Services and Merchant Navy. The Appellant is extensively using the subject trademark and has been generating high revenue since its establishment.

The Appellant further stated that the Appellant has invested heavily to develop the subject trademark by advertising it in various newspapers and through internet. The subject mark was advertised on 25-04-2006 in Amar Ujala, on 06-05-2006 in Dehradun Jagran. The subject mark has been advertised in The various newspapers where the subject trademark has been heavily promoted include prestigious newspapers like Amar Ujala, Dainik Jagran, Hindustan Times, Shah Times, Himachal Times, Garhwal Post, Dehradun Kesari, Rashtriya Sahara, The Tribune, Jan Bharat Mail, Dehradun Jagran, Josh, Uttarakhand Plus, and Filmy Sansaar among other prominent newspapers. The Appellant also created and acquired the domain name www.doondefenceacademy.com on 14.11.2007 which is an excellent medium of propagation of the subject trademark. The Appellant has heavily promoted and advertised Doon Defence Academy and the subject trademark on various social media websites including, Facebook, Twitter, LinkedIn, Instagram, YouTube among other popular social media websites. The Appellant has his own YouTube Channel which has more than 1000 videos uploaded. The Appellant’s YouTube Channel has more than 17,000 subscribers.

The Appellant has lacs of followers on Facebook, more than 1000 views on google. The Appellant’s Doon Defence Academy is also very famous on Instagram. The Appellant has won several prestigious awards over the past years, has popularized the subject mark by giving interviews in news channels like ABP Ganga news channel, the subject mark has also been popularized on radio channels like Red FM in multiple cities, and he was conferred by prestigious Times Power Icon Awards in the year 2019 by famous actress Ms.Nushrat Bharrucha.

The subject application was filed on 21/07/2015 in class 41; thereafter examination report dated 23/05/2016 was issued in which objection under Section 11(1) of Trade Marks Act, 1999 was raised. In response, the Appellant filed its reply to the examination report dated 24/06/2016 along with the affidavit of use dated 31/05/2016. The Appellant again filed Affidavit of use dated 31/05/2016 along with authorization of agent request on Form TM-M dated 17/07/2019 with documentary evidence. The subject application was set for hearing and Hon’ble hearing officer and Senior Examiner of Trade Marks passed the impugned order on 22/06/2019. Furthermore, the Appellant applied for the Statement of Grounds of decision and material used by Respondent for refusal of the subject trademark and received the Statement of Grounds of the decision on September 06, 2019. The Order stated as follows — “*With reference to the above and request on Form TM-M dated 24/08/2019. It has been decided by the Registrar of Trade Marks to inform you that hearing in respect of above application was held on 22/07/2019 and the said application is refused on the following Grounds;

* 11(1)(a) Relative grounds for refusal of registration.- The said trade Mark is refused for registration because of its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or 11(1)(b) Relative grounds for refusal of registration. The said trade Mark is refused for registration because of its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark there exists a likelihood of confusion on the part of the public,which includes the likelihood of association with the earlier trade mark.

Identical/Similar, valid marks with same classification vide application no. 2435693 is already on record. The logo of the applied mark and cited mark is similar.

Likelihood of confusion. Perused. The applicant claimed user from 2005 but no evidence of use of the mark adduced. Objection under Section (11) sustained.

Trademark application is accordingly refused.”

Aggrieved by the impugned order dt. 22nd June 2019 for which Statement of Groundsprovided dated 6th September 2019 (impugned order), the Appellant has filed the present appeal before us.

The learned counsel for the Appellant submitted that the Registrar of Trade Marks had erred by deciding that the impugned device trademark “” of the Appellant as similar to the earlier Registered mark under application No.2435693 for similar set of services.

The Appellant submitted that the rejection of the Appellant’s application is not only against Appellant’s interest but also against the public interest, public policy and also contrary to the spirit of the Act.

The Appellant submitted that because the impugned Order passed by the Respondent has resulted in grave miscarriage of justice, hardship, irreparable loss and injury to the Appellant as appellant has been using the Trademark since 2005 and by virtue of such long use the Appellant has acquired common law rights in the said Trademark. Hence the Appellant is a person aggrieved by impugned order passed by (Registrar/Senior Examiner) Respondent herein.

The impugned order the and Grounds of Decisions provided to the Appellant are bad in law and cryptic in nature and do not provide any detailed grounds / reasoning as to why the subject application was refused other than vaguely stating that the mark is refused under section 11 (1) (a) and 11 (1) (b) under the Act.

The Respondent has refused the subject trademark without giving due consideration to the contents of Affidavit of Use and the documents filed by the Appellant on 17/07/2019. The Respondent has failed to appreciate that the Appellant’s subject trademark, by virtue of its long, uninterrupted, extensive and honest use since 2005 has also acquired distinctiveness and could not have been barred by Section 11 of the Act.The Respondent on refused Registration of the mark on incorrect factual finding as he has stated in impugned statement of grounds of decision. “The applicant claimed user since 2005 but no evidence of use of the mark adduced.” On contraryAppellant had filed two affidavits of usage before the learned Respondent.

The Appellant submitted that the Respondent had failed to appreciate that the prior registered mark bearing number 2435693 cited by the Learned Examiner of the Respondent at the time of giving grounds of the decision dated 06/09/2019 is not similar to the subject trademark when looked at as a whole. The cited mark “Rajasthan Defence Academy with the device of arms” under application no. 2435693 is very different from the subject mark The cited mark is a very mark with a totally different device/label/logo mark along with “RDA” written on top and a device of arms (signifying the armed forces) in red colour, wings (signifying the Air Force) and anchor (signifying the Navy) in blue colour and a chakra symbol in blue and white colour in the middle with the slogan “My India My Pride” written below. The design is encircled in the yellow background with the words “RAJASTHAN DEFENCE ACADEMY” written on top. Red coloured star is depicted on the left and right side. At the bottom, the words and followed by “SIKAR (RAJ.) is written below the circle. All of this is encircled in circles with red and blue circumferences. On the other hand, the Appellant’s subject trademark is a composite mark which is in black and white colour combination. The subject mark is a combination of uniquely and artistically designed device/label/logo mark with an artistic device of swords, wings and anchor in the middle (signifying the three services in the Indian Army) with letters “DDA” which is an acronym of “Doon Defence Academy” written on top in black colour encircled in white background. The words Rashtra Sarvopari / . — f are written below on a white coloured ribbon in black colour in Devanagari font. At the bottom is the slogan of the Appellant “COUNTRY FIRST” written in bold black colour and on top is a black-coloured design shape. The said mark is a composite mark and the trademark as a whole has no direct reference to the services provided by the Appellant.

The Appellant submitted that the Learned Respondent has failed to appreciate that the cited mark is registered with the condition / a disclaimer, “subject to no exclusive right over word Rajasthan Defence Academy and other descriptive matters” and therefore, the said cited prior registered mark cannot be cited as a ground for refusal under Section 11 of the Act. The Learned Respondent has failed to appreciate that the cited mark is later in use and that the Appellant is the prior user of the subject mark as the user detail specified in the cited mark is from the year 2012 whereas the Appellant is using the subject trademark since

2005. It is further submitted that the Appellant’s has greater goodwill and reputation attached to the subject mark when compared to the cited mark as can be seen from the Turnover for years 2012-13 and 2013-14 which is much higher than the proprietor of the cited mark. The first invoice of cited mark is dated 27/08/2012 issued by Rajasthan Academy Sansthan, Jhunjhunu.

The Appellant further submitted that the Respondent has failed to appreciate that no confusion and deception can taken place when students enroll for training especially professional training, they and their parents do extensive research. A student who is to go for training to Dehradun will not enroll himself for an academy situated in Jhunjhunu Rajasthan. Hence, objection under section 11 (1) (a) and section 11 (1) (b) are not at all sustainable

FINDINGS OF THE BOARD

We have examined impugned order dated 22nd June 2019 for which Statement of Grounds provided dated 6th September 2019 by the Respondentand reviewed the submissions of the Appellant. It is pertinent to mention that there is no speaking order or reasoning provided for the refusal of the impugned mark or in the statement of grounds as to why the usage document or affidavit has not taken into consideration for passing the impugned order. It need to be noted that Trade Marks Act 1999 is a Special Act and thus all Sections are to be applied strictly as per law stipulated in the Statue. Under no circumstances self-made procedure and guidelines can be adopted even for the sake of earlier disposal of any matter. The interpretation of any Section should not be misinterpreted for the sake of convenience.

In the present appeal admittedly the application of the appellant was rejected without any proper speaking orders. Even when the TM(M) was filed in order to get the reasons in writing for refusing the application as per material available on record. The material available on record and reply to the examiner report has not been discussed nor the plea raises was distinguished while rejecting the application after filing such applications on Form TM(M) and merely mechanical/stereotypes orders are passed in various matters. The said orders are not acceptable in law. The justification of mass disposal in one go or computerized orders without application of mind, without referring and discussion of the material available on record has no meaning in the eyes of law.

The Respondent being creation of the Act and constituted under the provisions of the Act, is expected to follow the provisions of law meticulously in passing detailed orders more specifically in consonance with Sub Section 5 of Section 18 of the Act read with Rule 36 of Trade Marks Rules 2017. Section 18(5) of the Act reads as under “In the case of refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal and conditional acceptance and the material used by him in arriving at his decision.” A similar language has been used in Rule 36. Section 18 of the Trademark Act, 1999 is an incumbency provision which cannot be disregarded by the Respondent in passing its orders.

The impugned order displays that Respondents has not considered the submission of the Appellant and seems to have been passed without any application of

mind. If the Respondent would have considered the contentions of the Appellant and discussed the documents filed by it; the Respondent would have considered the application and processed for Registration since the mark applied is prior in usage to alleged similar mark cited by the examiner.

In the case of M/s. Hawa Engineers Limited Vs. Registrar of Trademarks OA/51/2014/TM/AMD this board while dealing with the issue of speaking orders categorically directed the Respondent authority to issue speaking orders referring to all the submissions of the Applicants before them. The said order also narrated the judgment of the Honorable Gujarat High Court in the case of Testeels Ltd. vs N.M. Desai And Anr., AIR 1970 Guj 1, (1969) GLR 622 GJin which Honorable Justice Bhagwati laid down the principle that “Both on principle and on authority, that every administrative officer exercising quasi-judicial functions is bound to give reasons in support of the orders passed by him”.

It is painful for us to see the working of the Respondent, particularly these kinds of orders without appreciating the documents submitted and arguments advanced by the Applicants before it even after repeated orders passed by this Board and various Courts in the Country. Such sort of orders gives us an impression that there is not only non-application of the mind but smacks of the casual attitude. This is not the first time this tribunal brought this to the notice of Office of the Respondent. In spite of several such orders it looks like the Respondent Office is passing orders deliberately and without any fear of rule of law.

The word deliberate is specifically used, since the Respondent Office is aware of passing such orders in the past by us as well as various Courts of the land. As a quasi-judicial authority the Respondent are expected to follow the rule of law. The Respondent is directed to strictly follow the orders of this Board and henceforth pass speaking orders in all the matters before it. It is very specifically stated that if this order are not followed in letter and spirit in future this Board will not hesitate to pass orders directing the Government to cut the costs from the salaries of the concerned adjudicating officer passing such order. It is also appropriate for the litigants to take the ground that a speaking order has to be passed by citing the present order and in accordance with various judgments of the various High Courts.

In view of the circumstances mentioned above, the present appeal is allowed setting aside the impugned order dated. 22nd June 2019 for which Statement of Groundsprovided dated 6th September2019 passed by the Respondent. The application No. No. 3014146 in Class 41 of the appellant shall proceed further in accordance with law. However there shall be no exclusive rights to the descriptive devices which designate respective defense forces.

No costs.