Yamaha Hatsudoki Kabushiki Kaisha v. Registrar of Trade Marks

In a significant ruling, the Bombay High Court has set aside the Registrar of Trade Marks’ refusal to register Yamaha Hatsudoki Kabushiki Kaisha’s (“Yamaha”) trademark ‘WR’ filed under Class 12. The Registrar had rejected the application under Section 11(1) of the Trade Marks Act, 1999, citing potential likelihood of confusion with Honda Motor Company Limited’s (“Honda”) trademark ‘WR-V’, which is also registered under the same class.

Yamaha, a globally recognized manufacturer of motorcycles and marine products, had applied for registration of the ‘WR’ mark for its motorcycle range, asserting prior adoption since 1990 and global registrations. Yamaha contended that ‘WR’ was associated exclusively with its two-wheeler and three-wheeler products, while Honda’s ‘WR-V’ is related to cars, and therefore the marks served distinct market segments. It also relied on its international reputation and long-standing use of the mark as grounds for registration and demonstrated, while placing relevant material on record, that both the marks have concurrently existed over various international jurisdictions.

In response, the Registrar defended the refusal, citing Section 11(1) and asserting that registration of ‘WR’ could mislead consumers due to the similarity in the marks and that Yamaha had not shown sufficient reasons to override the statutory bar under Section 11(1)(b).

The Court, while acknowledging the possibility of confusion between the marks at first glance, held that the Registrar’s order was not well-reasoned, cryptic and failed to consider Yamaha’s evidence of long-standing international use, concurrent registrations in multiple jurisdictions, and the application of the proviso to Section 20(1). It emphasized that in special circumstances, a mark may be advertised before acceptance to allow public opposition and fair scrutiny, and Yamaha’s global presence and brand equity met that threshold.

The Court also underscored that it cannot overlook the settled position of law laid down by the Hon’ble Supreme Court in London Rubber Co. Ltd. v. Durex Products Inc., where special circumstances were considered for permitting registration under Section 12, despite the marks in question being identical. Although that decision pertained to the applicability of Section 12, it reaffirms the principle that the coexistence of similar or even identical marks on the Trade Marks Register is not unprecedented.

Accordingly, the Bombay High Court quashed the impugned order dated 20 May 2021 and directed the Registrar to advertise Yamaha’s ‘WR’ application before acceptance under Section 20(1). This decision reinforces the legal recognition of transborder reputation, the need for reasoned administrative orders, and the role of special circumstances in trademark registration proceedings.

Yamaha Hatsudoki Kabushiki Kaisha v. Registrar of Trade Marks, 2025 SCC OnLine Bom 2332 Read the judgement copy here