Iesse-Schuh Gmbh vs Registrar Of Trademarks

Manmohan Singh, J

That the present Appeal is filed against the impugned Order dated 26.03.2019 which was received on 01.04.2019 as passed by the Registrar/Senior

Examiner of Trade Marks Registry, Delhi in Application No. 2778600 dated 22.07.2014 in Class 25.

That the Appellant is one of the leading company which manufactures shoes in wide range and variety, made of natural materials. The Appellant's

aim is to produce genuine, graceful and aesthetics designs, combined with powerful endurance and longevity.

Appellant filed a Trademark Application No. 2778600 on 22.07.2014 for the Trademark in class 25 Appellant's trademark

Application was examined by the Trade Marks Registry on 23.11.2015 and Counsel for the Appellant filed the response to the Examination report on

25.11.2015. The Appellant filed additional Response before the Trademark Registry on 11.07.2015. The Counsel for the Appellant attended show

cause hearing and argued the matter on 24.09.2018.

The Counsel for the Appellant again attended the show cause hearing on 26.12.2018. The Hon'ble Registrar refused the application and invited the

attention of the Appellant to file Form TM-M if the Appellant wish to file an appeal. The intimation of refusal along with order was received by the

Appellant counsel through mail dated 26.12.2018.

The Counsel for the Appellant applied TM-M for the grounds of the decision of refusal order under Rule 36(1) of Trade Marks Rules, 2017 on

25.03.2019. The Counsel for the Appellant received grounds of decision of refusal order under Rule 36(1) of Trade Marks Rules, 2017 on 01.04.2019.

The Appellant adopted the Trademark in the year 1985 in its home country Germany. That the Trademark

became famous due to high quality standards and timeless design. That the Appellant has been using the Trademark

continuously since the date of adoption in its home country as well as in various other international markets including Italy,

France, Great Britain, Japan, USA, Canada, Australia, New Zealand, Russia, Brazil, Argentina etc. for more than thirty years. By virtue of long

standing worldwide use, excellent quality of goods and widespread advertisements, the subject trademark has been and continues

to be a very popular and recognized Trademark of the Appellant. Due to worldwide popularity of the trademark the goodwill and

reputation has also spilled over into Indian jurisdiction.

The Appellant has obtained registration of the mark in Germany, later in Europe and the mark is meanwhile well-known and

protected in many countries of the world. That the Appellant's trademark has already acquired transborder reputation and the

said trademark of the Appellant stands as a symbol and term for lovingly crafted home and casual shoes made of natural materials.

Copies of worldwide registrations along with copy of sale invoices (U.S.A., Italy and Germany) and copy of catalogues advertising the Trademark

are filed along with the appeal under Annexure-A.

The Appellant has also registered its Domain name https://www.haflinger.com/&www.Haflinger-Usa.com and also maintains the website

https://www.haflinger.com/&www.Haflinger-Usa.com. That the Appellant advertises and provides information on its products and services through

its website https://www.haflinger.com/&www.Haflinger-Usa.com. The said website(s) act like a virtual showroom and a large number of prospective

customers visit said website before purchasing the appellant's products. That the printouts of who is record and website(s) of Appellant's domain

names/website(s) are filed along with appeal under Annexure-B.

The Appellant's Trademark is also available and advertised through various social websites as follows:-

• Facebook

• Youtube

• Instagram

It is stated on behalf of appellant that the Trademark of the Appellant has been considerably used in various countries in

respect of aforesaid goods and with the consequence that the Trademark enjoy a substantial reputation and goodwill which is

international in nature and travelled into India.

The Appellant filed an application for registration of the Trademark vide application No. 2778600 dated 22.07.2014 in India in

class 25 in respect of ""shoes; parts of shoes, namely welts, soles, tips and legs for shoes; socks, knee-high, stockings"".

The Sr. Examiner refused the application No. 2778600 sustaining the grounds under Section 11 of the Trade Mark Act in view of prior registration

No. 1610941 for the trademark ""HAFLINGER LONDON"" without considering the prior existence and extensive use of Appellant's Trademark

for more than 30 years.

The Registrar/Senior Examiner failed to consider the fact that Appellant honestly and bonafidely adopted the Trademark and has been using the

same its home country and also worldwide for more than 30 years. The Appellant's Trademark has become popular by virtue of long standing

worldwide use, excellent quality of goods and wide spread advertisements.

The Registrar/Ld. Senior Examiner erred in holding that:-

Trademark is similar/identical to the cited mark in the Examination report. So objection under Section 11 maintained. Hence refused

without considering the fact that the Appellant's Trademark is prior in adoption, use and registered in various countries including Appellant's home

country in comparison of cited registration No. 1610941 dated 12.10.2007 which is much subsequent in comparison of prior existing well-known

Trademark of the Appellant. The aspect of prior user and adoption and prior registration has not been considered and validity

discussed in the impugned orders. The orders are sustainable as per settled law as prior user has a better rights.

The Registrar/Senior Examiner should have considered this as a fit case for allowing registration.

In the light of above, the present appeal is allowed. The impugned order are set-aside. The application is accepted for registration and it shall

proceed further as per rules.

No costs.