Bombay High Court berates Trademark authorities for rejecting application without considering submissions by applicant

The Bombay High Court recently came down upon the Registrar of Trademarks and the Senior Examiner for denying registration of trademark without considering submissions and documents relied upon by the applicant [I Am The Ocean, LLC vs Registrar of Trade Marks]. .Justice RI Chagla observed that in a series of matters before the Court, although there have been submissions and documents in support of a petitioner's case for registration of trademarks, they were not being considered.."It has been observed by this Court in a series of matters which have come up that although there have been submissions and documents in support of the Petitioner’s case for registration of the Trade Marks in the replies which have been filed before the Registrar of Trade Marks, these are not being considered. The replies are drafted with application of mind," the Court stated..The Court was hearing a plea by I Am The Ocean, LLC seeking to set aside an order of the Examiner of Trade Marks, Trade Marks Registry, Mumbai passed on August 23, 2021.By the order, the Trade Marks Registry rejected an application by the petitioner for registration of their trademark on the ground that it was similar to another mark.The petitioners then called upon the Senior Examiner to furnish reasons for the order as it did not contain any. However, the Senior Examiner passed an order identical to the previous one. Hence, the petitioners moved the High Court..Advocate Hiren Kamod for the petitioners told the Court that they had made detailed submissions in their reply from which it was apparent that the petitioner had made out a case as to their mark being distinct.He also stated that several authorities were relied upon in support of the petitioners' case, including the fact that the mark was registered in Europe and New Zealand.Further, he stated that there were also submissions that demonstrated that the mark was distinct phonetically, visually and structurally from the marks cited by the assailed order..On the other hand, advocate Shreyas Deshpande for the Registrar of Trade Marks stated that there were reasons in the order that the cited marks were identical and had similar goods and services, which could likely cause confusion among the public..He contended that the words "I am" in the mark were also used in the cited marks and thus would cause confusion. Accordingly, he supported the order under challenge..After considering the submissions, the Court found merit in the petitioners' argument. It observed that they were detailed submissions and also noted that the mark was registered in Europe and New Zealand.Further, it observed that the submissions that the mark was unique was put forward after much thought and deliberation by the petitioners which produced the impression of a distinctive trademark..The Court thereafter noted that the assailed order made no reference to the submissions and authorities relied on by the petitioner. It said that there was no independent application of mind on part of the Senior Examiner an thus the order could not be called a reasoned one..The Court stated that the least expected of the officer adjudicating the application was to peruse the reply and apply their mind. This, according to the Court, was completely abdicated by the Registrar and the Senior Examiner and reduced section 18(5) of the Trade Marks Act to a redundancy."The least expected of the Officer adjudicating the application is to peruse the reply and extend to it the bare courtesy of application of mind. There is complete abdication by the Registrar of Trade Marks / Senior Examiner of Trade Marks in quasi judicial functions vested in them by the Trade Marks Act and Trade Marks Rules. The impugned order reduces Section 18(5) of the Trade Marks Act to a redundancy," the Court said..It, therefore, set aside the assailed order and remanded the matter back for consideration of submissions and the material on record in support of the petitioners' case. The Court directed that a reasoned order be passed within eight weeks..[Read Order]