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November 12, 2021

Court Case Bulletin (CCB): Trade Mark Refusal Orders Must Analyse The Grounds For Refusal And Materials Used By The Registrar In Arriving At Decision

Author: Samreen Iboo Sait

In the matter of Metso Outotec Corporation v Registrar of Trade Marks [Commercial Appeal (L) No. 18137 & 18138 of 2021], a Single Judge [G.S. Patel, J.] of the High Court of Bombay on October 6, 2021, allowed an appeal and quashed two trademark refusal Orders passed by the Registrar of Trade Marks, while clarifying that a refusal order cannot merely note submissions without explicit consideration of the submissions made by the Applicant.

Section 18(5) of The Trade Marks Act, 1999 reads that “In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.” The interpretation of what would count as “writing the grounds” in a refusal order or a conditional acceptance passed by the Registrar requires clarity. Would mere noting the progression of the prosecution and duplicating the relevant objection suffice or would the Registrar be required to put in writing the process and grounds for arriving at a decision?

The Registrar of Trade Marks, Bombay had passed Orders refusing two trademark applications. The Registrar, in its Orders claimed to have noted submissions made on behalf of the Applicant and simply recorded that the marks applied for registration are objectionable under Section 9 of the 1999 Act for being descriptive. The Applicant filed the present appeal arguing that no reasons were stated for refusal order and that refusal by dissecting the trademark is not allowed and the trademark as a whole cannot be rejected as a result of such dissection. 

The High Court, at the outset noted that the Orders contained no reasons and merely recite a Section and further observed that “…that process of analysis must surely reflect in the order itself. It is not permissible for the authority to merely note that submissions have been made and directly arrive at a conclusion with no findings or consideration of the submissions at all… the total elision of all reasons, is contrary to the statutory mandate of Section 18(5) in Chapter III of the Trade Marks Act 1999. That Section requires written reasons if an application is rejected or only conditionally accepted. The grounds for the refusal or conditional acceptance and also, importantly for our purposes, the materials used by the Registrar must be reflected in the order” [colly]. Accordingly, the appeal was allowed, and the refusal orders of the Registrar of Trade Marks were quashed. 

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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