In the case of KX Technologies LLC vs. The Registrar of Trade Marks, the Madras High Court set aside a decision by the Registrar of Trade Marks, which had rejected the company’s application to register the word mark “FACT.”
Background of the Application
KX Technologies, a U.S.-based company, applied for registration of the mark on 17.03.2014 for use in air and water purification filters, on a “proposed to be used” basis. The Registrar refused the application on 10.01.2024, citing objections under Sections 9 and 11 of the Trade Marks Act, 1999. Under Section 9, the Registrar stated that the mark lacked distinctiveness, and under Section 11, the Registrar rejected the application based on three existing marks owned by Fertilisers & Chemicals Travancore Limited (FACT), all of which were used in the chemical and fertilizer sectors.
KX Technologies Arguments
KX Technologies argued that the mark “FACT,” standing for “Fibrillated Adsorbent Cellulose Technology,” was unique and coined specifically for their filtration products. They also pointed out that their goods—filters for air and water purification—were entirely different from those covered by the cited marks, which were associated with fertilizers and chemicals. Furthermore, KX Technologies stated that they had applied to amend their application by removing any references to chemical treatment to avoid overlap with the cited marks.
The Court’s Reversal
The court reviewed the case and determined that the appellant’s proposed use of the mark “FACT” in connection with air and water purification was distinct from the goods covered by the cited marks. It stated that while the cited marks were long-established, their use in the fertilizer industry was unlikely to create confusion with KX Technologies’ products in filtration. Therefore, the court ruled that the Registrar’s decision to reject the application was unjustified.
Consequently, the court reversed the Registrar’s refusal and allowed the application to proceed to advertisement, subject to a disclaimer that KX Technologies would only use the mark for air, water, or fluid purification products. The court made it clear that this ruling did not prevent future opposition by third parties, should they contest the registration.
Citation: KX Technologies LLC v. Registrar of Trade Marks, CMA(TM) No. 6 of 2024 (H.C. Madras Sept. 24, 2024). Available at: http://indiankanoon.org/doc/96196668/.
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