In the present case, Plaintiff, Seiwa Kasei Co. Ltd (“Seiwa”) filed a petition before the Bombay High Court, against two orders issued by the Registrar of Trade Marks (“Registrar”).
Seiwa Kaswei, a renowned manufacturer of cosmetic ingredients, sought to register the mark “PHYTOCUTICLE” in India through an international application. The Registrar provisionally refused the trademark under Section 9(1)(a) of the Trade Marks Act, 1999, citing non-distinctiveness. Seiwa Kasei argued that the mark was distinctive, newly coined, fancifully adopted, and had been registered in multiple other jurisdictions.
However, on 21st November 2021, the Plaintiff’s application was fully refused stating that the mark was well established within the public domain and in common use without substantiating the same. Seiwa then filed for a review of the order, however, the same was summarily dismissed through a non-speaking order dated 18th May 2022 (“Review Order”).
Seiwa alleged that the Review Order was merely uploaded on the Respondent’s website and was not communicated to the Plaintiff as mandated under Rule 111 of the Trademarks Rules, 2017 (“Rules”).
On reviewing the facts of the case, the court observed that the impugned orders were cryptic, providing no substantive reasoning for the refusal and failing to address Seiwa’s arguments. Furthermore, the Registrar had failed to communicate the review order to the petitioner, as required under the Trade Marks Rules, 2017. The court clarified that mere placing of an order on the website without communication was not enough and the Registrar was obligated to communicate the decision as mandated under the Rules.
The Court, emphasizing the quasi-judicial role of the Registrar, ordered a de novo consideration of the trademark application by a different officer to ensure fairness and transparency in the decision-making process.
Citation: Seiwa Kasei Co. Ltd vs Registrar Of Trade Marks, Bombay High Court, 14th June 2024, OM MISCELLANEOUS PETITION (L) NO.6676 OF 2024. Available at: https://indiankanoon.org/doc/38489320/
Authored by Ms. Ilana Baruah, Consulting and Strategy Team.
Reviewed by Ms. Anjana Gopinath, Consulting and Strategy Team, BananaIP Counsels
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