AI Structured Summary
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Judgment
S.
No.",Trademark,Reg. No.,"Date of
Application",Class(es),Country,Status
1.,AMBA,1797056,28.06.2008,09,China,Registered
2.,AMBA,001113133,22.03.1999,"09, 16","European
Union",Registered
3.,AMBA,2894467,14.04.2003,09,USA,Registered
4.,AMBA,2468865,24.05.1999,16,USA,Registered
5.,AMBA,980680,16.04.2002,09,China,Registered
6.,AMBA,4511046,09.08.2000,09,Japan,Registered
7.,AMBA,987809,01.03.2002,16,China,Registered
8.,AMBA,516660,01.04.2002,16,Korea,Registered
9.,AMBA,163159,16.04.2002,42,China,Registered
The Appellant submitted that owing to such extensive use and promotion, the trademark AMBA has acquired indomitable goodwill and reputation in the minds of the consuming",,,,,,
public and the members of the trade. Further, the trademark AMBA has acquired secondary meaning with the source of the Appellant and is today associated with the Appellant and",,,,,,
Appellant alone.,,,,,,
The Appellant submitted that the Appellant had filed a user affidavit dated 15th October, 2019 along with extensive documentary evidence, prior to the date of the hearing, which",,,,,,
is available in the online records of Trademarks Registry.,,,,,,
The Appellant further stated that Citation No. 1- Registration No. 1558154 for the mark AMBA in the name of M/S AMBA SHAKTI STEELS LIMITED has not been renewed,,,,,,
since 2017 and therefore the said cited registration is invalid and no longer a valid objection.,,,,,,
The Appellant stated that with regards to Citation No. 2- Registration No. 2292934 for the mark AMBA in the name of ASSOCIATION OF MBAS AND BUSINESS,,,,,,
GRADUATES ASSOCIATION: The Ld. Examiner (Respondent) had failed appreciate the following aspects-,,,,,,
a) The difference in the business interest - The Appellant is a global semiconductor and software design company, whereas the cited party claimed to be an authority on postgraduate",,,,,,
business education, with the aim to raise the profile of business education and the MBA qualification in the UK and Europe. It is evident that the cited party primarily is not in the",,,,,,
business of manufacturing and supplying the goods it has secured the registration for, whereas the class/goods for which the Appellant is seeking registration is the core class and the",,,,,,
main business of the Appellant.,,,,,,
b) Exclusion of the overlapping goods by the cited party in the cited registration:That in the specification of the registration of the cited party, there are specific wordings included",,,,,,
which exclude most of the goods covered under the subject mark of the Appellant. The cited registration includes the exclusion class which reads as ‘but not including computer,,,,,,
hardware, namely integrated circuits, microprocessors, microprocessor cores, macro cells, microcontrollers, bus interfaces and printed circuit boards and user manuals for use",,,,,,
therewith sold as a unit, computer software for use in the design and development of integrated circuits, microprocessors, microprocessor cores, macro cells, microcontrollers, bus",,,,,,
interfaces and printed circuit boards.’,,,,,,
c) Peaceful co-existence on the UK Register - That both the parties peacefully co-exist in the UK register and no objection till date has been brought by either of the party against,,,,,,
the other concerning the said registrations.,,,,,,
d) Peaceful co-existence on the Indian TM Register- That both the parties are peacefully co-existing in Class 42 wherein the Appellant has acquired a registration for the mark,,,,,,
AMBA in class 42. It is pertinent to note that the above said party’s registration was also cited in the exam report of the Appellant’s Reg. No. 3294519 for the mark AMBA,,,,,,
in class 42.,,,,,,
e) Priority in use in India - The Appellant is the prior user of the mark AMBA in India i.e. from the year 1995, whereas the cited party has claimed user in its application since 2011.",,,,,,
f) The use of the mark AMBA by the cited party - A perusal of the website of the cited party- www.associationofmbas.comclearly reflects that the cited party is using its mark in a,,,,,,
very distinguishing manner with various artistic features present in the same. Representations of the mark used by the cited party are: /,,,,,,
The Appellant submitted that the refusal order has been passed in complete disregard of the Appellant’s prior and extensive rights in the subject mark since the year 1995.,,,,,,
The Respondent has chosen not take into account the documents/submissions filed by the Appellant on record. In this regard the Respondent has wrongly interpreted and applied the,,,,,,
judgments of the Hon’ble Supreme Court in the case of MilmetOftho Industries &Ors vs. Allergan Inc. and Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd.,,,,,,
&Ors.while issuing the Grounds of Refusal in this matter.,,,,,,
The Appellant submitted that on account of the Impugned Order, the Appellant has been tremendously aggrieved for the reasons that the said impugned order is transgressing into",,,,,,
the statutory rights of the Appellant by denying what lawfully belongs to the Appellant. The rejection of the subject trademark by the Respondent shall have detrimental effect on the,,,,,,
enforcement actions of the Appellant which cannot be compensated in terms of money.,,,,,,
We have examined the Registrar’s impugned order dated 17th October 2019 and Statement of Grounds provided on 10/02/2020 and reviewed the submissions of the,,,,,,
Appellant. It is evident that the Respondent orders are non-speaking orders in that no proper reasons were given in impugned orders nor the evidence produced was discussed expect,,,,,,
to state that the applicant has failed to produce documentary evidence in support of statement of user claimed in the application. The Respondent further ignored the similarforeign,,,,,,
Registrations and Registration of exactly same mark in Class 42 in India by the Appellant apart from the usage of the mark as claimed since 1995. The Respondent would have to,,,,,,
consider all these factors before rejecting a mark. Therefore the instant mark was distinctive towards the Appellant owing to International Registrations and long usage of the mark in,,,,,,
India. Further it is also evident that the mark co- existswith the cited mark in India without any litigation till date goes in favour of the Appellant for Registration of the mark.,,,,,,
In view of the above, the present appeal is allowed the orders of Respondent dated 17th October 2019 read with the Statement of grounds dated 10th February 2020 are set-",,,,,,
aside. The application of the appellant for the mark “AMBA†in class 9 under application No.3294517 beallowed to be accepted.,,,,,,
No costs. The application shall proceed further as per rules.,,,,,,