The Bombay High Court earlier this month, sided with the German Automaker Audi AG and sent back a matter to the Senior Examiner of Trade Marks, Mumbai for reconsideration after concluding that he failed to consider the detailed material placed before him earlier and passed the order rejecting trademark registration of Audi’s ‘Q6’ series.
Justice Manish Pitale was hearing a miscellaneous petition filed by Audi AG against the Senior Examiner’s order.
On September 2, 2021 the order was passed by the Senior Examiner refusing to register the ‘Q6’ mark under Classes 9 and 12. As per the impugned order, the registration was refused on the ground of the mark being devoid of any distinctive character under Section 9(1)(a) of the Trade Marks Act, 1999 and further on the ground that it is likely to create confusion in the mind of the public under Section 11(1) of the said Act.
Petitioners’ counsel submitted that the impugned order merely refers to the statutory provisions and there is no reasoning in the order, despite the fact that ample material was placed on record before respondent No.1-Examiner to justify registration of such a mark. Since the petitioner was put to notice with regard to the said objections, in the reply to the provisional refusal, detailed material was placed on record. Yet, the examiner failed to deal with the same while passing the impugned order.
On the other hand, Advocates appearing for the respondents submitted that the material relied upon by the petitioner, can be considered by the Court and refusal can certainly be justified.
Finally, after hearing submissions from both sides, the bench pointed out that in the application for registration, reference was made to the fact that the aforesaid mark had been already registered in various jurisdictions including Australia, Chile, European Union, Germany, Norway, Singapore, Turkey, Ukraine, Switzerland and United Kingdom.
Justice Pitale observed –
“A perusal of the impugned order shows that respondent No.1 Has simply referred to Sections 9(1)(a) and 11(1) of the aforesaid Act as grounds for refusal and has failed to deal with the detailed Material placed on record on behalf of the petitioner to deal with the Specific objections pertaining to the said statutory provisions.”
Finally, Court set aside the impugned order and remanded back the matter to the Senior Examiner for fresh consideration.
Author: Nitish Kashyap