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Judgment
Prathiba M. Singh, J.(Oral)
This hearing has been done through hybrid mode.
The present appeal arises out of the impugned order dated 25th April, 2019, passed by the Registrar of Trademarks read along with the Statement of Grounds dated 11th July, 2019, rejecting the Appellant’s trademark application. The details of the said mark are as under:
| Mark | Applicat ion No. | Application Date | Class | Applicant |
|---|---|---|---|---|
| 2579906 | 14th August, 2013 | 30 For pretzels, pretzel bites and pretzel dogs and rice, tapioca, sago, flour and preparations made from cereals, com, com flakes, flour milling products, bread, pastry, confectionery, biscuits, crackers, cookies, vegetarian wraps, honey treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices | PM Franchise Brands, LLC |
The marks cited by the Registry for refusing the registration of the Appellant’s mark are as under:
| Appl. No. | Class | Conflicting Mark | Journal No. | Status | Appl. Date |
|---|---|---|---|---|---|
| 690225 | 30 | PRETZ | 1291 | Registered | 11/12/1995 |
| 824777 | 30 | PRET (WITH 1330 LABLE) | 1330 | Registered | 28/10/1998 |
| 824778 | 30 | PRET A MANGER | 1332 | Registered | 28/10/1998 |
| 1480972 | 30 | PRETZELTALK TASTE WITH A TWIST [SPECIAL FORM OF | 1379 | Registered | 23/08/2006 |
| WRITING] | |||||
| 2154181 | 30 | pretzel a more | Objected | 03/06/2011 | |
| 2354199 | 30 | PRETZEL KNOTS SMART SNACK (LABEL) | Objected | 26/06/2012 | |
| 2579492 | 30 | PRETZELMAKER (DEVICE) | Marked for Exam | 13/08/2013 |
The Examination Report dated 23rd September, 2014 which was issued by the Trademark Office raised various objections, including under Sections 9, 11 and 12 of the Trade Marks Act, 1999 (hereinafter “Act”). A reply was also submitted to the Examination Report, in which the Appellant relied upon other registered trademarks forming a family of marks of the Plaintiff in various international jurisdictions including Israel, Philippines, Singapore, Israel, EUIPO, USA, Canada, etc. The same mark as claimed in the present application has also already been registered in India with Trademark No.2579493 in a different class i.e., Class 43. The Appellant also relied upon sales figures of approximately 4.7 million USD per year in 2014, and expenditure on publicity and advertisement of around 0.9 million USD per year, for claiming distinctiveness.
The Registrar of Trademarks however, rejected the mark under both Sections 9 and 11 of the Act on the ground that the mark was designating the kind, quality, intended purpose of the goods and stating that the said mark is similar to earlier trade marks.
The Court has heard ld. Counsel for the Appellant and the Respondent. The mark applied for is a combined mark consisting of a logo ‘ ’ and the word ‘PRETZELMAKER’. The goods in question are pretzels, pretzel bites and pretzel dogs. This Court has put to the counsel that the impugned order so far as it relates to the word mark would not require interference. However, in so far as the logo is concerned, the same is a distinctive logo as to the manner in which it is depicted and the shape of the logo which could proceed for advertisement.
At this stage, ld. Counsel for the Appellant submits that the Appellant would be willing to delete the word ‘PRETZELMAKER’ from the mark. In view thereof, the Court is of the opinion that the logo which is part of the subject application can proceed for registration. Accordingly, this Court directs that the Appellant’s application no.2579906 shall proceed for registration after deletion of the word ‘PRETZELMAKER’ from the mark.
List before the Trademark Registry for filing of the requisite form(s) for amendment of the trademark application by the Appellant. Upon the said form(s) being filed and formalities being completed, the mark shall proceed for advertisement in the Trademark Register, within three months.
With these observations, the present appeal is disposed of. All pending applications are also disposed of.
Copy of today’s order be supplied to the Trademark Registry at [email protected].