Bombay High Court: In the present petition, Manish Pitale, J., dealt with the issue of refusal to register the trade mark ‘WR’ to the petitioner, Yamaha Hatsudoki Kabushiki Kaisha (‘Yamaha’) by the Registrar/Examiner of Trade Marks (the ‘respondent’). The Registrar cited similarity with Honda’s ‘WR-V’ and stated that there would be a likelihood of confusion in the minds of public between the trade mark of Yamaha, of which the registration was sought, and similar trade marks already on the register. The Court quashed the cryptic order by the Registrar and directed him to advertise the application before acceptance as per Section 20(1) of the Trade Marks Act, 1999 (‘the Act’).
Background:
Yamaha Company, founded on 1-7-1955, was one of the leading manufacturers of motorcycles and marine products and the second largest in the motorcycles sales in the world. It had achieved distinctiveness globally in its name and brand Yamaha. It used various trade marks and ‘WR’ was one of them. It first adopted the said trade mark in August 1990 in respect of two-wheeler and three-wheeler products, parts and accessories and had sold its products bearing the same mark in 131 countries since then.
Yamaha wanted to launch a WR bike range and therefore applied for the same in 2018 with the Registrar in class 12. The Registrar, however, stated that the mark of Honda Motor Company Ltd. i.e. ‘WR-V’ was already registered in class 12 itself as a conflicting mark and by the impugned order dated 20-5-2021, refused to accept the application by invoking Section 11(1) of the Act. The Registrar stated that allowing the registration of the same would create confusion in the minds of the people as it was not distinguishable from the cited mark ‘WR-V’ to which Yamaha said that ‘WR’ was associated only with bikes and three-wheelers whereas ‘WR-V’ was a car by Honda.
Yamaha also emphasized that it had obtained the registration of the said trade mark in several international jurisdictions like United States, European Union, Australia, New Zealand and Japan and that the mark was being used by it since 1990 and that the consumers in India were also familiar with their products. The Registrar contended that the impugned order correctly referred to Section 11(1) and therefore it should not be set aside.
Analysis:
The Court considered the material on record and observed that at a bare perusal of the two marks would show that there was certainly a possibility of confusion as alleged by the Registar and that Yamaha failed to demonstrate why Section 11(1) of the Act could not be invoked in the present case. But it was not an unknown phenomenon that even identical or similar trade marks could exist on the register and the claim of international reputation of Yamaha spilling over to India would also need to be acknowledged.
The Court also highlighted that Section 20 of the Act indicated the options available to the Registrar when an application for registration was filed and the proviso to Section 20(1) laid down an exception to the general rule wherein a trade mark could be advertised even before acceptance. Keeping in mind the prior use in international jurisdictions, the registration obtained for the subject mark ‘WR’ in such territorial jurisdictions, the fact that motorcycles of Yamaha bearing the trade mark ‘WR’ were being sold in a number of foreign countries and the claim of the petitioner alleging that both the marks were concurrently being used in international jurisdictions, the Court determined that these factors certainly satisfied the requirements of the aforementioned proviso creating a special circumstance in favour of Yamaha and directed the Registrar to advertise the application before acceptance and thereafter proceed in accordance with law.
Thus, the Court set aside the impugned order of the Registrar holding that the authority could have a passed a more “detailed and well-reasoned order” and directed the Registrar to take appropriate action as directed by the Court, within two weeks from the date of judgment.
[Yamaha Hatsudoki Kabushiki Kaisha v. Registrar, Trade Marks, Commercial Miscellaneous Petition No. 650 of 2022, decided on 13-6-2025]
Advocates who appeared in this case :
For the Petitioner: Darius Dalal a/w Disha Mehta i/by Jehangir Gulabbhai & Bilimoria & Daruwalla.
For the Respondent: Abhishek Bhadang a/w Gauri Raghuwanshi; Pranjal Sharma, Examiner of Trade Marks GI & Copyright, present.
Buy Trade Marks Act, 1999 HERE
