Madras High Court Allows Appeal in Trademark Case
In this case, the Madras High Court allowed an appeal against the Trade Marks Registry’s decision to reject a trademark application for a mark similar to a well-known mark. The Court noted that Respondent’s mark, although well-known, was not registered under Plaintiff’s class and did not appear in isolation. The matter has been remanded to the Trade Marks Registry for reconsideration, highlighting the need for careful evaluation of marks across different classes.
Facts of the Case
The Appellant, Prem Biyani is a manufacturer and marketer of insecticides whose mark “Zee” under Class 5 was opposed by the First Respondent, Zee Entertainment. The Trade Marks Registry held that Prem Biyani’s mark is deceptively similar to Zee Entertainment’s mark and proceeded to reject Prem Biyani’s trademark application. Aggrieved by the Trade Mark Registry’s decision, Prem Biyani filed an appeal before the Madras High Court.
Arguments Raised
The Trade Marks Registry, who is also the Second Respondent, submitted that the mark of Zee Entertainment is notified as a well-known mark. The Registry also stated that in the various invoices produced by the appellant, the word ‘ZEE’ was found missing. However, Prem Biyani argued that the concept of well-known mark was not statutorily recognized in 1997, when he started using the mark.
Decision
The following factors were observed by the Court in reaching its decision:
- Zee Entertainment’s mark does not appear in isolation, but in combination with other words;
- Zee Entertainment’s mark was not registered under class 5;
- Even if it is a well-known mark, the well-known mark need not prevail over other similar or identical marks, as such protection may be provided under certain conditions imposed by the Registrar;
- The Registrar is to apply his mind to ascertain if both marks can be allowed to be used as they belong to different classes.
In light of the same, the Court allowed the appeal and remanded the matter back to the Trade Marks Registry for it to consider Prem Biyani’s application based on the abovementioned observations made by the Court.
Relevant Paragraphs
“6. The submissions on either side is carefully weighed. There are two facts that requires to be considered :
(a) that the first respondent mark does not appear in isolation, but in combination with other words, and at any rate it was not registered under class-5;
(b) even if it is a well-known mark, it is not that such well known mark should prevail over any other similar or identical marks, since under Sec.12 of the Trade Marks Act, the Registrar can still impose certain conditions. Indeed, the legislative intent is far too evident in that, it has made Sec.11 subject to Sec.12. Therefore, in all such situations, it may be appropriate for the Registrar to consider any application where the mark is similar or identical to any other mark, more so, when they belong to different classes and apply his mind to ascertain if both the marks can be allowed to be used, subject to certain conditions under Sec.12. This apparently has not been done in this case.
7. In view of the same, this Court deems it appropriate to allow this appeal, and remands the matter back to the Trade Mark Registry, for it to consider the application of the appellant in the light of what this Court has hereinabove observed. No costs.”
Citation: Prem Biyani vs Zee Entertainment Enterprises Ltd. & Anr., Madras High Court, 7th March 2024, [(T)CMA(TM) No.52 of 2023, OA/26/2015/TM/CHN]
Authored by Ms. Anjana Gopinath, Consulting and Strategy Team, BananaIP Counsels
Reviewed and Confirmed by Ms. Kavya Sadashivan, Consulting and Strategy Team, BananaIP Counsels
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
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