Delhi High Court: The present appeal was filed for challenging impugned judgement dated 23-03-2023 passed by the Single Judge, whereby appellant’s application for cancellation the trade mark ‘CLARIWASH’ (‘impugned trade mark’) was rejected on the ground that respondent 1 was not at fault for an error committed by the Registrar of the Trade Marks in issuing the faulty examination report. The Division Judge Bench of Vibhu Bakhru* and Tara Vitasta Ganju, JJ., without interfering with the impugned judgment, held that there was no dispute, when the registration of the trade mark was contrary to the Trade Marks Act, 1999 (‘the Act’) and the same should be liable to be cancelled. However, in the case in hand, the Court was unable to accept that the respondent 1’s application for registration of the impugned mark was required to be rejected. The Court found no grounds for interfering with the impugned judgment. Thus, appeal was, accordingly, dismissed.
Background:
In an instant case, the appellant was a wholly owned subsidiary of L’Oréal and was engaged in the business of manufacturing, distribution, and sale of a wide range of hair care, skin care, toiletries, beauty products and other allied products. Whereas respondent 1 was the registered proprietor of the impugned trade mark.
The appellant’s predecessor, Cheryl’s Cosmeceuticals Private Limited (‘CCPL’) adopted CLARI formative trade mark in the year 2009 and the impugned trade mark in the year 2010. CCPL applied for obtaining the registration of the trade mark CLARI-FI under Application, which was granted, and the Registration Certificate was issued on 28-03-2011.
By a Deed of Assignment and Asset Transfer Agreement dated 19-09-2013, CCPL was acquired by the appellant and the reputation and goodwill pertaining to various ‘CLARI’ formative marks was also transferred to the appellant. Thereafter, the appellant entered into an agreement with Vardhaman Skincare (P) Ltd. for manufacturing the products, which included the products under the CLARI formative marks.
The respondent 1 applied for registration of the impugned trade mark in Class 03 on 16-04-2010 claiming usage of the impugned trade mark since 16-11-2009. On 03-01-2012, Registrar of Trade Marks (respondent 2) issued examination report for impugned trade mark, inviting for objections under Section 11 of the Act. The said examination report was enclosed with search report, which referred to two allegedly conflicting marks and indicated that the respondent 2 had erroneously conducted a search in respect of the trade mark CHARIWASH. The respondent 1’s application for registration of the impugned trade mark was duly advertised. Concededly, the search report was erroneous insofar as it referred to trade mark CHARIWASH and not CLARIWASH.
Thereafter, respondent 2 issued the Registration Certificate in respect of respondent 1’s application for registration of the impugned trade mark, albeit incorrectly noting the same as CHARIWASH instead of CLARIWASH. For rectification, the respondent 1, on 14-06-2012, filed an application for rectification/ correction of the Registered Trade mark to be read as CLARIWASH and not CHARIWASH. The application was allowed, and the corrected registration certificate was issued in favour of respondent 1.
In response to that appellant filed an application seeking cancellation of the impugned trade mark, before IPAB, which was later transferred to the Single Judge, who rejected the application by the impugned judgement.
Impugned Judgement:
The Single Judge while dismissing the application by the appellant, held that the respondent 1 could not be faulted for an error committed by the Registrar of the trade mark in issuing the faulty examination report. There was no similarity between impugned trade mark and CLARI-FI to result in likelihood of any confusion.
The Court then referred to Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 SCC OnLine SC 11, wherein the Supreme Court, followed the anti-dissection rule, had held that competing trade mark had to be examined as a whole and cannot be dissected for the purpose of considering whether the competing marks were similar.
Analysis:
The Court after perusal of facts and contention noted that, there were no grounds to refuse the registration under Section 9 of the Act. The controversy was limited to considering whether the Registrar had correctly examined the question that whether there were any grounds to refuse the registration of the impugned trade mark because of its identicality with the earlier trademark.It was apparent that there was an error in conducting search, in as much as the search report indicated that the search was conducted in respect of the mark CHARIWASH instead of CLARIWASH. It was reasonable to assume that the search was confined to the trade mark similar to CHARIWASH.
The Court noted that, the respondent 1’s application for registration of the impugned trade mark was duly advertised in the Trade Mark Journal. The appellant or its predecessor had full opportunity to oppose the registration of the impugned trade mark at the material time. However, they had taken no steps to do so.
The Court stated that, there was no dispute that if the registration of the trade mark was contrary to the provisions of the Act, the same would be liable to be cancelled. However, in the present case, the Court was unable to accept that respondent 1’s application for registration of the impugned mark was required to be rejected.
The Court further noted that, respondent 1’s application for registration of the impugned trade mark was filed over almost 14 years ago. It would be manifestly unfair if respondent 1’s application was directed to be reconsidered on account of procedural error.
The Court then found no grounds for interfering with the impugned judgment. Thus, appeal was, accordingly, dismissed.
[Loreal India (P) Ltd. v. Rajesh Kumar Taneja Trading, 2024 SCC OnLine Del 4797, decided on 15-07-2024]
*Judgement authored by Justice Vibhu Bakhru
Advocates who appeared in this case:
For Petitioner: Shravan Kumar Bansal and Ajay Amitabh Suman, Advocates.
For Respondent: Pramod Kumar Singh and Priya Nagpal, Advocate for R-1.
Shoumendu Mukherji, Sr Panel Counsel and Megha Sharma, Akanksha Gupta, Advocates for UoI.
Harish Vaidyanathan Shankar, CGSC, Srish Kumar Mishra, Alexander Mathai Paikaday, Lakshay Gunawat and Krishnan V, Advocates for R-2.
