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Judgment
Manmohan Singh, J
The appellant has filed the present appeal under Section-91 of the Trade Marks Act, 1999 against the impugned order whereby the application for registration was refused.
The Appellant's application for the mark TRIBUTE PORTFOLIO under No. 2923292 in class 36 for 'real estate services, namely, real estate brokerage, real estate acquisition, real estate equity sharing, namely managing and arranging for ownership of real estate, condominiums, apartments, real estate investment, real estate management, real estate time sharing and leasing of real estate and real property, including condominiums and apartments' has been refused by the Respondent while upholding the objections under Section 9/11 of the Trade Marks Act, 1999.
In the grounds of decision, it was stated that
"Adv. Harish appeared and made submissions. Heard. Pursued. Conflicting marks cited in the examination report phonetically similar. Mark is filed on proposed to be used basis. Hence refused.
...
Identical/similar, valid mark with same classification of goods/services vide application No. 2717266 is already on record. Likelihood of confusion. Mark is filed on proposed to be used basis. Objection under Section 11 sustained. Trademark application is accordingly refused."
Therefore, the present appeal is filed, inter alia, on the following grounds:
a. The grounds of decision are in discord with the impugned order
While the order of refusal records that the mark is objectionable under Section 9 and Section 11 of the Act, the ground of decision does not deal with objection under Section 9 at all and records that objection under Section 11(1) is sustained. It is evident that the grounds of decision are in complete discord with the impugned order and hence deserves to be set aside.
b. Grounds of decision is a non-speaking order; against principles of natural justice
It is submitted that the Respondent did not take into account the submissions and evidence on record. Except saying that arguments were heard and documents pursued, the Registrar has not dealt with the same at all. Further, the Respondent has not provided any reasons for the finding that rival marks are identical/similar and how there is likelihood of confusion if the rival marks co-exist. It is only mechanically stated that there is an identical/similar mark on record and does not even comment on whether the Registrar believes that the mark is identical or similar. Thus, the impugned order does not outline grounds for refusal and/or materials used by the Respondent in refusing the Application as envisaged in Section 18(5) of the Trade Marks Act, 1999. Thus, prima facie, the impugned order is baseless, arbitrary, without any application of mind and in contravention of Section 18(5) of the Act.
Rival marks are entirety are different
It is submitted on behalf of the appellant that the Appellant's mark TRIBUTE PORTFOLIO when seen as a whole is distinguishable from the cited mark . Further, as the cited mark is a composite mark, the cited applicant does not have any standalone rights in TRIBUTE i.e. a single element thereof. The Senior Examiner gravely erred in comparing the common element of the rival marks which is not the test in law. In doing so, the Senior Examiner has disregarded the provisions of Section 17 of the Act and the settled position of law that marks are to be compared as a whole and not dissected into parts for the sake of comparison.
No likelihood of confusion
It is also submitted on behalf of the appellant that the Respondent disregarded the submission that the Appellant is part of a leading hotel and leisure company and its services are offered within the precinct of its properties and anyone availing the services of the Appellant at such properties will not be confused that they are availing the services of the cited applicant - an individual. Hence, the conclusion of the Registrar that there is likelihood of confusion is completely misconceived and incorrect.
TRIBUTE PORTFOLIO registration in class 37 ignored
It is also submitted that the Respondent disregarded the TRIBUTE PORTFOLIO registration of the Appellant under No. 2934641 in class 37 for 'building construction, repair, installation services, real estate construction, construction services' (accepted without any objection) and ignored existing statutory rights of the Appellant in India.
It is also submitted on behalf of appellant that the respondent has erred in holding that if a mark filed on a proposed to be used basis, objection under Section 11 can be sustained. The Respondent gravely erred in holding that since the TRIBUTE PORTFOLIO mark was filed on a proposed use basis, objection under Section 11 can be sustained. In doing so, the Senior Examiner did not appreciate that there is no requirement in law that a mark filed on a proposed to be used basis cannot be accepted even if an objection under Section 11 has been raised.
Having considered the material on record, we are of the view that the word TRIBUTE PORTFOLIO is not and cannot be considered descriptive of the services in question and in fact has a meaning completely unrelated to the nature of services it is applied for. The objection under Section 9(1)(a) could not have been sustained as TRIBUTE PORTFOLIO is not devoid of distinctive character and incapable of distinguishing the goods/services of one person from those to another.
Case:
Pearl Retail Solutions Pvt. Ltd. vs. Pearl Education Society, : AIR 2013 Delhi 181]
Held: This Court is of the view that the word PEARL cannot be said to be a generic word in respect of education and training institute. In the opinion of this Court, a word may be generic qua a specific business or trade or industry but not across the board for all businesses or trades or industries. For instance, word "Arrow" is a generic word qua archery business but is an arbitrary word qua shoes. ... Similarly, PEARL is a generic word qua gems and jewellery business but not with regard to educational business as the said expression has no connection or correlation with education or training services.
The Respondent has also ignored submissions and documents presented to him to show that the mark TRIBUTE PORTFOLIO is in fact in use.
- Millions of Indians who have visited the Appellant's parent company's (Marriott) hotels and websites have seen the TRIBUTE PORTFOLIO mark.
- Over 900,000 Indians who are members of Marriott's loyalty program receive direct mail pieces that bear the TRIBUTE PORTFOLIO mark.
The evidence on record the TRIBUTE PORTFOLIO mark is in use and acquired distinctiveness was ignored. The Respondent did not consider the fact that TRIBUTE variant -TRIBUTE PORTFOLIO was already registered under No. 3001626 in 43 and under No. 2934641 in class 37 for without any objection under Section 9(1) (a) of the Act and completely ignored the existing statutory rights of the Appellant in India.
The grounds of decision are in discord with the impugned order
While the order of refusal records that the mark is objectionable under Section 9 and Section 11 of the Act, the grounds of decision does not deal with objection under Section 11 at all and records that objection under Section 9 is sustained.
It is also pertinent to mention that in the Order dated _________, the Respondent, for the first time, stated the mark to be objectionable under Sections 9/11, whereas neither the Examination Report nor the Grounds of decision relied upon Section 11.
The impugned order is against the principles of natural justice; non speaking order
In not taking into account evidence and submissions not dealing with the same at all, the impugned order has been passed without application of mind and against principles of equity and natural justice. It is arbitrary, unreasoned, bad in law, is contrary to statutory provisions and established principles of law. Further, the impugned order does not outline grounds for refusal and/or materials used by the Respondent in refusing the Application as envisaged in Section 18(5) of the Trade Marks Act, 1999. Thus, prima facie, the impugned order is baseless, arbitrary, without any application of mind and in contravention of Section 18(5) of the Act and thus liable to be set aside.
Cases:
Intellectual Property Attorneys Association vs. The Controller General of Patents Designs & Trade Marks & Anr. [W.P.(C) 3851/2019 & CM Appls. 17546/2019, 29362/2019 decision passed on October 16, 2019]
Held: "...the Registrar of Trade Marks is directed to strictly implement Section 18(5) of the Trade Marks Act by recording in writing grounds for refusal/conditional acceptance and the order containing the grounds of refusal/conditional acceptance be sent to the applicant within two weeks of the passing of the order."
Siemens Engineering and Manufacturing Co. of India Ltd. v. Union of India 1976 AIR SC 1785]
Held: It is now settled law that where an authority makes an order in exercise of a quasi-judicial function it must record its reasons in support of the order it makes. Every quasi-judicial order must be supported by reasons..."
Asst. Commissioner vs. M/s. Shukla & Brothers, (2010) 4 SCC 785
Held: The principle of natural justice has twin ingredients; ... and secondly, the orders so passed by the authorities should give reason for arriving at any conclusion showing proper application of mind. Violation of either of them could in the given facts and circumstances of the case, vitiate the order itself.
In the light of above, the impugned order is set-aside. The appeal is allowed. The application for registration is accepted and shall be proceeded for registration as per rules.
No costs.