Case Note & Summary
The dispute arose from a petition filed by Petitioner challenging an order dated 19 May 2025 by the Registrar of Trade Marks, which rejected the petitioner's application for registration of the mark 'ENTERO' as a device mark under Class 5. The petitioner had filed the application on 18 August 2023, and the Registrar issued a preliminary examination report raising an objection under Section 11(1) of the Trade Marks Act, 1999, citing deceptive similarity to an earlier registered mark 'EnteroGG'. The petitioner filed a detailed reply and a user affidavit, asserting honest and concurrent use of the mark since 2018 and the non-use of the cited mark. Despite this, the Registrar passed the impugned order refusing registration on grounds of likelihood of confusion. The core legal issues were whether the impugned order was valid given its lack of reasoning and failure to consider the petitioner's case of honest concurrent use under Section 12 of the Act. The petitioner argued that the order was unreasoned and mechanical, violating principles of natural justice and statutory requirements under Sections 18(5) and 91, and that the Registrar overlooked Section 12 exceptions. The respondent contended that the hearing was limited to Sections 9 and 11, and issues of non-use fell under rectification proceedings under Section 47, not within the Registrar's jurisdiction during registration. The court analyzed the impugned order and found it ex facie unreasoned, with no consideration of the petitioner's material on honest concurrent use. The court emphasized that reasoned orders are essential for appealability and legality testing, citing precedent. It held that Section 11(1) includes an exception for marks meeting Section 12 conditions, which the Registrar ignored. The court concluded that the order was passed with non-application of mind and set it aside, remanding the matter for fresh examination by a different examiner in a time-bound manner.
Headnote
A) Administrative Law - Judicial Review - Reasoned Orders - Trade Marks Act, 1999, Sections 18(5), 91 - Impugned order rejecting trade mark application was unreasoned and passed mechanically without application of mind - Court held that orders of statutory bodies exercising adjudicatory functions must contain reasons, especially when appealable, to test legality and validity - Reliance placed on Assistant Commissioner v. Shukla and Brothers (Paras 5, 13A, 13D). B) Trade Mark Law - Registration - Honest Concurrent Use - Trade Marks Act, 1999, Sections 11(1), 12 - Petitioner's application for mark 'ENTERO' rejected under Section 11(1) due to similarity with earlier mark 'EnteroGG' - Court found Registrar ignored petitioner's material showing honest concurrent use since 2018 and non-use of cited mark - Held that Section 11(1) carves exception for marks satisfying Section 12 conditions, and failure to consider this rendered order invalid (Paras 8, 13B, 13C).
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Issue of Consideration: Whether the impugned order rejecting the trade mark application was valid given lack of reasoning and failure to consider the petitioner's case of honest and concurrent use under Section 12 of the Trade Marks Act, 1999
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Final Decision
Petition allowed. Impugned order dated 19 May 2025 set aside. Matter remanded to a different Examiner of Trade Marks for fresh examination in a time-bound manner.
