Eco Lean Research And Development A/S A Danish Company vs Assistant Registrar Of Trade Marks

S. Usha, J

The Appellants herein filed an application for registration of the trademark ""ECOLEAN"" under application No. 1375222 in respect of ""Plastic

materials in the form of plastic raw material for industrial use"" falling in Class-1, ""Machines for the manufacture of packing materials, packages,

packings, wrappings or plastic materials; machines for extruding, injecting, moulding extruding or laminating of plastic material or plastic products;

machines for moulding, filing, stoppering or sealing of plastic material or plastic products; machines for shaping plastic"" falling in Class-7, ""Plastic

materials for packaging (not included in other classes) in the shape of rolls, foils, films or sheets; packaging and wrapping made or plastic and/or paper

for bakery products, fruits or vegetables, confectionery, foodstuff and foodstuff products"" falling in Class-16, ""Sealing and stuffing materials of plastics,

plastic fibres for use in the manufacture of materials for packaging, plastic film (not for packaging); semi-manufactured plastics; webs, bars, blocks,

pellets, rods, sheets or noses, pipes and tubes for packaging purposes, plastic materials in extruded form for industrial use; plastic materials formed as

webs, bars, blocks, pellets, rods, sheets or noses or tubes for use in the manufacturing of packaging or containers such as boxes, casks, cups, bottles,

moulds, bags, stand up bags and sacks or troughs, trays and seals, corks or sealing caps for such containers and packaging; plastic materials for the

manufacture of laminated plastic and/or laminates consisting of plastics and other materials for the manufacture of trays, plates and drinking vessels

falling in Class-17, ""Containers and packages such as boxes, sacks, cups, bottles, bags, sand up bags and sacks or troughs and seals, corks or sealing

caps for such containers and packagings; all made of plastic materials"" falling in Class-20& ""Design of packages and materials for packaging and

wrapping; industrial design; licensing of intellectual property rights including know-how regarding packages and materials for packaging; chemical

analysis; chemical research"" falling in Class-42. The said application was examined and an examination report was sent to the Appellant's counsel

raising an objection as to acceptance of the application as there was already conflicting marks available on the Register. The Appellant's counsel after

furnishing reply to the said objection requested for a personal hearing. Personal hearing was given and the impugned order was passed by the

Assistant Registrar of Trade Marks on 06.12.2007 refusing registration under class 11 of the Trade Marks Act, 1999 (hereinafter referred to as the

Act) for the reason that since identical/similar trade marks in respect of same/similar goods were already on the register in the name of other persons

and there existed a likelihood of confusion and deception. Aggrieved by the said order, the Appellant herein filed the instant appeal.

The memorandum of grounds of appeal are as follows:

(a) the Registrar had erred in rejecting the application without giving the applicant an opportunity of being heard which is in violation of the principles

of natural justice;

(b) the Respondent failed to take on record the argument that the mark cited in the grounds of decision are marks where only the prefix is common;

(c) the Respondent failed to take note that the impugned trade mark has already been registered in Canada;

(d) the Respondent failed to take note that the goods of the impugned mark is entirely different from the marks cited in the grounds of decision;

(e) the Respondent's order is in violation of the established principles of law, Judgment and provision of the Act; and

(f) the Respondent erred in not allowing the application to proceed for advertisement.

The matter came up before this Appellate Board on 26.02.2010. Learned Counsel, Shri A. Vijay Anand appeared on behalf of the Appellant and

none appeared for the Respondent.

The learned Counsel for the Appellant submitted that the impugned trade mark ""ECOLEAN"" is a coined word as well it is a part of their company's

name. The counsel also pointed that the Registrar has dealt with only Section 11 of the Act where as no finding has been given as to the objection

under Section 9 though it was raised in the examination report. The counsel submitted that the impugned mark was not barred under Section 11 of the

Act. The counsel prayed that the appeal be allowed with a direction to the Registrar to proceed to advertisement.

We have considered the arguments of the counsel for the Appellant. The Registrar has refused registration on the ground that there are deceptively

and phonetically similar marks already on the Register and thus the impugned trade mark was prohibited under Section 11 of the Act.

The first ground of appeal was that the impugned order was passed without affording an opportunity to the Appellant to present their case before

the Registrar. The Appellant themselves have averred in para 4 (iv) of the appeal that they were heard and they submitted their case before the

Registrar and hence this ground is merit less in our opinion.

It is well settled principle that the mark has to be considered as a whole. If that be the case, then the marks are phonetically similar and there is

every possibility of confusion and thus prohibited under Section 11 of the Act in our considered view. 8. The other ground is that the mark is registered

in Canada and so the trade mark in India also be registered. This Appellate Board has already held that mere registration in other countries will not

qualify the impugned trade mark to be registered in India as we are not aware under what facts and circumstances the mark was registered in

Canada.

The appeal is, therefore, dismissed as we see no merits therein, without costs.