Madras High Court: While hearing an appeal filed under the Trade Marks Act, 1999 (‘Trade Marks Act’), against the order of the Registrar of Trade Marks rejecting the application for registration of the mark “Fresh Not Frozen,” a Single Judge Bench of N. Anand Venkatesh held that “Fresh Not Frozen” is deceptively similar to the registered mark “Fresh N Frozen” and likely to mislead consumers. The Court accordingly upheld the Registrar’s refusal and dismissed the appeal, while clarifying that liberty remained for the applicant to submit a fresh application for a different, unobjectionable mark.
Background:
The appeal was filed under Section 91 of the Trade Marks Act, 1999, challenging the order dated 26-04-2019 of the Registrar of Trade Marks, Chennai, which rejected the application for registration of the mark “Fresh Not Frozen” in class 35. The applicant had adopted this mark in connection with online retail store services featuring vegetarian and non-vegetarian items, processed and unprocessed foodstuffs, fruits, vegetables, and grains, and claimed continuous and uninterrupted use since 22-03-2016.
The Registry raised objections under Sections 9(1)(a), 9(1)(b), and 11(1) of the Act. Although a reply was filed on 09032018, the application was ultimately refused. In response, the applicant contended that the mark was in no way deceptively similar to the registered mark “Fresh N Frozen.” It was argued that the existing mark was a word mark used for goods and wholesale/retail outlets engaged in the distribution, trading, and marketing of chicken, mutton, fish, semi-cooked and cooked food, confectionery, juice, and soft drinks. The applicant further submitted that “Fresh Not Frozen” was a general term and, in fact, diametrically opposite to “Fresh N Frozen.”
Analysis and Decision:
The Court emphasised that there was already a registered trademark “Fresh N Frozen” in class 35, and the applicant sought registration of “Fresh Not Frozen” for similar products in the same class. The Court noted that the application had been rejected on the ground that the mark sought was deceptively similar to the registered valid mark in respect of identical services.
The Court highlighted that in deciding deceptive similarity, factors such as the nature of the marks, the degree of resemblance phonetically or ideally, the nature of goods, similarity in character and performance of goods, the class of purchasers and their degree of care, the mode of purchasing, and surrounding circumstances must be considered.
On a cursory look at the two marks, the Court observed that the mark sought was certainly deceptively similar. The Court emphasised that it is not what meaning is being assigned by the words chosen by the appellant, but the determining factor is whether it is deceptively similar. The Court further noted that the class of customers, with their reasonable mental faculty, would certainly be misled on a first look, since the only letters added were “OT” and every other word in the registered mark was present in the applicant’s mark.
The Court further observed that the decision of the Registrar was clearly objectionable under Sections 9 and 11 of the Trade Marks Act and could not be interfered with. However, the Court clarified that liberty remained for the applicant to submit a fresh application for a different, unobjectionable trademark, which would be considered on its own merits.
Accordingly, the appeal was dismissed with the observation that the rejection was solely on the ground of deceptive similarity with an already registered trademark.
[Freshtohome Foods (P) Ltd. v. Registrar, Trade Mark (Chennai), (T) CMA (TM) No. 189 of 2023, decided on 18-12-2025]
Advocates who appeared in this case:
For the Appellant: P. Magesh
For the Respondent: G. Ilangovan