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The Bombay High Court Steps In!

Recently, the Bombay High Court has pronounced a series of decisions in matters in which parties appealed decisions of the Trade Marks Registry (hereinafter “Registry”) refusing to register marks. It is interesting to note that, in a majority of these orders, the Registry’s decisions were set aside and then remanded back to Registry for fresh consideration.


A review of the Court’s orders has revealed that, in a majority of cases, the Court has emphasized that the quality of examination at the Registry must improve. For instance, in Methodical Mind LLC V. The Registrar of Trade Marks & Anr., the Court stated that the Registrar had been refusing registration of marks without proper application of mind. In Helix OpCo, LLC V. Registrar of Trade Marks, it held that the Registrar must take into account all the documents uploaded and facts presented by the applicant, including foreign registrations. In Arjo IP Holdings AB V. The Registrar of Trade Marks, the Court held that, in accordance with well-settled principles of trade mark law, it was improper to dissect marks while comparing them. The Court has also stressed that the Registry must pass reasoned orders while refusing applications. In I Am The Ocean, Llc V. Registrar Of Trade Marks, the Court observed that the Trade Marks Act, 1999 and the Trade Marks Rules, 2017 require the Registrar to set out reasoned grounds for refusal of an application.


Another issue that has come up in matters before the Bombay High Court is the lack of consideration of attendant circumstances surrounding a cited mark in Examination Reports issued by the Registry.  In Henkel AG and Co. Kgaa V. The Registrar of Trademarks, the Court observed that the Registrar took an easy approach and only took note of the fact that the rival marks were similar.  However, the Court held, that the Registrar failed to consider other aspects such as the fact that one of the cited marks was already deemed as abandoned and another cited mark was opposed by the third-party with whom the applicant had a co-existence agreement.  


In Mitsubishi Materials Corporation V. The Senior Examiner Of Trade Marks, the Court further explicitly directed the Registry to honor the law and principles of natural justice and give an applicant a reasonable opportunity to respond to any additional objections raised by the Registry at a later stage.


We are sure that the holdings in these recent cases will, undoubtedly, go a long way in seeing better quality of examination at the Registry.

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