Volkswagen Ag vs Assistant Registrar Of Trade Marks, Trade Marks Registry

Z.S. Negi, J

This is an appeal under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) directed against the order dated 5.9.2007 passed by the Assistant Registrar of Trade Marks, Chennai whereby he has refused the application No. 1388467 for registration of trade mark 'GTI' in classes 7, 12, 28, 35 and 37.

The appellant, a German company, applied on 27.9.2005 for registration of trade mark 'GTT in classes 7, 12, 28, 35 and 37 and the appellant received an examination report on 7.12.2005 raising objection under Section 11 of the Act on the basis of mark cited therein and requiring the appellant to file reply to the examination report within a month. The appellant filed a reply to the examination report on 20.01.2006 stating that the application relating to the first cited mark, namely, GTIP-TOP being application No. 882951 in class 12 is entirely different from the subject application and that the appellant's mark is visually, structurally and phonetically different from the mark cited in the search report. With respect to the cited trade mark under application No. 489394 in class 7, it was submitted that the same was with respect to "Electric Motors (except for land vehicles), Agricultural Implements" whereas the appellant's main interest lies in "Automobiles" per se, the distribution channels of the applicant and that of the proprietor of the cited mark, namely, Bhagwant Singh are different hence it was stated that there would be no scope for confusion of deception. With respect to the last cited mark in the search report, under application No. 1257794 in class 35, it was submitted that the same was visually and structurally different from the subject trade mark and having such a stark difference it would not give rise to confusion or deception. A copy of the journal advertisement for this cited mark was also enclosed with the reply. The application was set down for a personal hearing on 28.06.2007 which was attended by the appellant's counsel and thereafter on 28.07.2007 an order was communicated to the appellant refusing their application for registration under sections 9 and 11 of the Act. Thereupon, a request was filed on 27.08.2007 on Form TM-15 for the grounds of decision. The ground of decision was communicated by the Trade Marks Registry to the appellant on 06.09.2007.

The grounds stated by the appellant are as follows:

(a) The order of the Examiner of Trademarks refusing the application in all the classes is contrary to law and is liable to be set aside.

(b) The refusal of the application under Section 9 of the Act is contrary to Rule 38(4) of the Trade Marks Rules, 2002 (hereinafter referred to as the

Rules) which requires the Registrar to communicate to the applicant in writing, any objection with regard to the application. In the instant case the examination report did not raise any objection under Section 9 of the Act, and therefore, the appellant had no opportunity to submit any response in this regard.

(c) On account of no objection having been raised under Section 9 of the Act, the appellant could not place reliance on registrations granted to it in other countries in support of distinctiveness of the mark. The appellant has submitted copies of the registration certificates of the mark obtained in other countries, namely, Canada, Germany, Japan, U.S.A, South Africa, Registration under the Madrid Agreement and the Madrid Protocol in a host of countries world wide.

(d) The Examiner of trademarks has erred in finding that the mark is highly descriptive by failing to see that the mark "GTI" as a whole is a unique combination, which in common parlance is not the normal way of referring to the goods and services and hence the mark is not descriptive.

(e) The Examiner of trademarks ought to have seen that in common parlance, the relevant class of consumers do not use the term 'GTI' to designate the goods and services or the essential characteristics of the goods and services for which registration was sought and hence the mark is not descriptive of the services.

(f) The refusal of the application under Section 11 of the Act is erroneous and without taking into consideration the applicant's written submission stating that cited marks were different from the appellant's mark in the sense that the goods to which the conflicting marks were applied to, were absolutely different and so were the trade channels. The appellant's mark is an internationally acclaimed one and has been applied to the appellant's manufactured goods internationally for decades. The goods and services covered under the appellant's trade mark will be applied only to the appellant's products, namely, automobiles and the same will be traded through the authorised dealers of the appellant and not through normal trade channels.

(g) The Examiner of trademarks having accepted the appellant's written submission with regard to the cited marks could not have rejected the same submission and sustained the objection under Section 11 of the Act in respect of all the classes when the marks cited belong only to class 7 and 35 and the cited mark in class 12 being structurally different from the appellant's mark.

(h) The appellant having complied with all the requirements of the Act, the Examiner of trademarks ought not to have refused the application under Section 18(4) of the Act.

The appeal came up before us for hearing on 27.6.2008, when Ms. Jayalakshmi, Advocate appeared for the appellant and the respondent was unrepresented. Learned Counsel for the appellant submitted that refusal of application for registration, amongst others, under Section 9 of the Act is contrary to Rule 38(4) of the Rules which requires the Registrar to communicate in writing any objection with regard to application to the applicant but in this case no objection under Section 9 of the Act had been raised in the examination report and as such the appellant had no opportunity to defend the registrability of the mark under Section 9 of the Act and to exhibit copies of registration of the mark obtained in many countries of the world. She took us through the copy of the standard examination report dated 2.12.2005 in which the only objection tick marked in ink was about objection under Section 11 of the Act. She submitted that the applicant/appellant had replied to the objection raised under Section 11 of the Act.

The applicant had explained/as to how the applicant's mark is distinct or different from the conflicting marks cited in the examination report. It was also explained in the written submission that the trade channels of the cited conflicting marks and the appellant's internationally acclaimed mark are different. The goods and services covered under the appellant's trade mark will be applied only to the appellant's product (automobiles) and the same will be traded through the authorized dealers and not through normal trade channels. Learned Counsel lastly submitted that the impugned order dated 5.9.2007 may be set aside and accept the application No. 1388467 for advertisement.

After hearing the learned Counsel and going through the records we are of the opinion that in the instant case the Registrar of Trade Marks has, by not raising/informing the objection under Section 9 of the Act in the examination report but taking the ground of Section 9 of the Act for refusing the registration, deprived the appellant an opportunity to defend its case by appropriately responding and adducing evidence therefor. We are of the view that even this deprival of opportunity in itself is sufficient ground to remand the matter back to the Registrar of Trade Marks. In the case of Cadila Laboratories Ltd. v. The Registrar of Trade Marks. wherein the facts of the case closely resembles to the present case, the Hon'ble High Court of Gujarat held as under:

The case before the Registrar was not only to accept the application but before the application is accepted, he should have advertised the application for inviting the public objections if any including objections from proprietors of the cited mark and other public representing the Trade Mark to represent their views so that he would have the benefit and advantage of other views of the public before considering as to whether the mark applied is deceptively similar or any other mark which is existing in the market.

If the applicant satisfactorily meets all the objections raised by the Office, the application will be advertised in the trade mark journal before acceptance as per Section 20 on the applicant furnishing a printing block where necessary. The application may be advertised before acceptance if it relates to a trade mark to which Section 9(1) and Section 11(1) and (2) applies or in any other case where it appears that it is expedient by reason of any exceptional circumstances so to do. Looking to the facts of the present case, exceptional circumstances did exist and therefore the Registrar ought to have advertised the trade mark in the Trade Mark Journal before acceptance.

By applying the decision in the case of Cadila Laboratories limited (supra), we allow the appeal by setting aside the impugned order of the Assistant Registrar of Trade Marks and remand the matter back to the Registrar of Trade Marks with the direction that the application No. 1388467 be proceeded with de novo in accordance with law. There shall be no order as to costs.