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July 10, 2023

Court Case Bulletin (CCB): Phonetic Search Should Be Conducted By The Trade Mark Registry During The Examination Of An Application

Author: Former Intern - Garima Chauhan

In the matter of Institut European D. Admnistration Des Affaires, Insead, Association v. Fullstack Education Private Limited and Anr [2023:DHC:3524], a single judge [Justice C. Hari Shankar] of the High Court of Delhi, vide order dated May 17, 2023, directed that a phonetic search should also be conducted by the Trade Mark Registry during the preliminary examination of an application.

Rule 33(1) of the Trade Marks Rules, 2017 (‘Trade Marks Rules’) states that “the Registrar shall cause the application to be examined as per provisions of the Act, wherein a search shall also be conducted amongst the earlier trademarks, registered or applied for registration...  The rule does not specify the nature of ‘search’ that shall be conducted by the Registrar during the examination of the application.

The Petitioner filed a rectification petition against the Respondents’ mark INSAID (Device) based on the alleged deceptive similarity with its earlier mark INSEAD (Device). The Petitioner contended that the mark was registered in violation of Rule 33 of the Trade Marks Rules as no phonetic search was conducted during the examination of Respondents’ application for the mark INSAID. The Petitioner submitted that INSEAD turns as one of the suggested similar marks in the phonetic search.

Pursuant to the Court’s direction, the Registrar of Trade Marks placed on record the result of the preliminary search, which contained only ‘Wordmark’ search, the search did not suggest Petitioner’s INSEAD mark as similar. The Respondent contended that failure to conduct a phonetic search at the initial stage of examination of the application for registration of the marks, does not fatally imperil the registration once granted.

The Court observed that, “… neither Counsel is able to draw my attention to any fixed guideline which envisages the nature of the searches which are required to be conducted when an application is submitted for registration of a mark, it is not possible for me to invalidate the registration of the respondents’ INSAID mark on the sole ground that the initial search under Rule 33 of the Trade Marks Rules, was not properly conducted….”. However, in order to avoid such confusion in future cases, the Court while allowing the petition directed that, “…where an application is submitted for registration of a mark which involves a word, then, even at the preliminary stage, a word mark search as well as a phonetic search should be conducted…”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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