Recently, the Madras High Court set aside an order passed by the Registrar of Trade Marks (“Respondent”), refusing the application for registration of M/s. Chu Chu TV Studios LLP’s CHUCHU TV Device mark, noting that the order was unsustainable.
In the order, the examiner had noted that mere combination of two known words would not qualify as an invented word, even though such an objection was not raised in the Examination Report. In the report, an objection was raised on the ground that the Appellant’s mark was similar to a prior mark, CHUCHU, and that an affidavit attesting to the veracity of electronic evidence was not provided.
The Appellant submitted that it had filed relevant documents in reply to the Examination Report to show that it had earlier rights in the mark CHU CHU. As regards electronic evidence, the Appellant submitted that an affidavit is not required to evidence content posted online by a third-party, which is what the Appellant had submitted to show use of its mark.
The court observed that the Appellant had produced cogent invoices and material to sufficiently evidence use of the mark. The court further noted that the mark cited in the Examination Report is itself pending clearance, and the conclusion that the cited mark is valid or that use of the mark predates use of the Appellant’s mark, is untenable in law. The court also stated that the observations in the Respondent’s order regarding distinctiveness is inapplicable to device marks. Lastly, the court held that a certificate of electronic evidence is required only when an electronic record, which is within possession of the person producing such record, is sought to be introduced as evidence, and is not applicable to the present case. The court stated that a rejection on this account is not warranted, and the examiner could have simply called for the affidavit. Accordingly, the court directed that the Appellant’s application be accepted and advertised in the Trade Marks Journal.
M/s Chu Chu TV Studios LLP v. The Registrar of Trade Marks, CMA(TM) No. 2 of 2023 & CMP. No. 15970 of 2023, Judgement dt. September 15, 2023