United Foods Public Company Limited A Company Duly Organized And Existing Under The Laws vs Assistant Registrar Of Trade Marks Trade Marks Registry

S. Usha, J

The Appellant herein filed an application for registration of the trade mark UNITED BUTTERSCOTCH under application No. 1404780 on 8.12.05

in respect of candy in class 30. The user claimed was proposed to be used. The said application was examined and examination report containing the

objection as to the acceptance of the application for registration was communicated to the Appellant's counsel. Subsequently the Appellant was given

a personal hearing in the matter. The application was heard and was refused registration under Sections 9 and 11 of the Trade marks Act, 1999

(hereinafter referred to as the Act). Thereafter a request was made in Form TM-15 seeking grounds of decision and the same was communicated to

the Appellant's counsel on 6.12.07. The Registrar had refused registration under Section 9 of the Act on the grounds that the trade mark applied for

consists exclusively of words which may serve in the trade to designate the kind and quality of goods and that it was not capable of distinguishing the

applicant's goods from the goods of others. Further, the trade mark was admittedly proposed to be used and as such had not acquired any distinctive

character before the date of application. The mark was refused registration under Section 11 as the mark was identical with the conflicting marks as

seen from the Examination Report. Since the marks are identical and the goods are similar, there exists a likelihood of confusion and deception.

Aggrieved by the said order, the Appellant has filed the instant appeal on the following grounds that

i. the Registrar erred in rejecting the application without giving the applicant an opportunity of being heard which is in violation of principles of natural

justice;

ii. the Registrar failed to take on record the argument that the marks cited in the examination report are entirely different from the Appellant's mark;

iii. The Registrar's order is in violation of established principles of law, judgment and provisions of the Act and

iv. the Registrar erred in not allowing the application to proceed to advertisement.

We have heard Ms. Shobana Komal learned Counsel for the Appellant on 25.2.2010.

Counsel for the Appellant submitted that the mark was not descriptive and the Registrar ought to have allowed the application for registration and

ought not to have declined registration under Section 9 of the Act. The learned Counsel for the Appellant also submitted that the mark is to be seen as

a whole and cannot be split. By splitting the words the Registrar has wrongly come to a conclusion that the impugned mark and the conflicting marks

in the examination report are likely to cause confusion and deception and has thus refused registration under Section 11 of the Act. The counsel,

therefore, prayed that the appeal be allowed and the application to proceed to advertisement.

We have carefully considered the arguments of the counsel and have gone through the pleadings and documents. Under Section 9 and 11 of the

Act, i.e. under absolute grounds and relative grounds for refusal of registration, the Registrar has refused registration of the trade mark. We agree

with the findings of the Registrar that the mark is descriptive of the goods and it is not capable of distinguishing the Appellant's goods from the goods

of others. It is also seen that the Registrar has observed that the mark is proposed to be used and as such has not acquired any distinctiveness. In an

application for registration, the onus is on the applicant - Appellant to prove that the impugned trade mark is distinctive, the Appellants have failed to

discharge the same.

The impugned trade mark has been refused registration as the impugned trade mark is identical with the conflicting trade marks and the goods are

also similar. When the marks and the goods are similar, possibility of confusion and deception is certain. The class of purchasers is also to be taken

into consideration in such circumstances - the goods being candy being purchased by all people, there is every possibility of confusion being caused by

such registration.

The other ground of appeal was that no opportunity of hearing was given which is in violation of principles of natural justice. The Appellants

themselves have averred in para 4 (iv) of the appeal that ""the application was set down for personal hearing on 10th July, 2006 and 5th July, 2007. In

response to the objection under Section 9 raised by the Respondent, the Appellant submitted the argument that the subject matter has no reference to

the character or quality of goods and hence the mark is distinctive. When that be so, the ground raised is not maintainable. We find no merits in the

appeal.

The appeal is therefore dismissed with no order as to costs.