Safiya Malik

The High Court of Bombay Single Bench of Justice Manish Pitale held that the Registrar of Trade Marks failed to apply its mind appropriately when rejecting a trademark registration for 'WR' under Section 11(1) of the Trade Marks Act, 1999. The Court directed the Registrar to advertise the application before acceptance in terms of the proviso to Section 20(1) of the Act and proceed further in accordance with law.

The matter arose from a petition filed by a multinational corporation engaged in manufacturing motorcycles and related products. The petitioner sought to challenge an order dated 20 May 2021 passed by the Registrar of Trade Marks, which refused registration of the trademark 'WR'. The application, filed on 5 November 2018 under Class 12, pertained to motorcycles and related vehicles.

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According to the petitioner, it is an internationally reputed manufacturer, having introduced its WR-branded motorcycles globally since 1990. It claimed that the trademark 'WR' had been used in over 131 countries, with registration obtained in several international jurisdictions such as the United States, European Union, Australia, New Zealand, and Japan. The petition stated that public information about its WR range was available across numerous digital platforms, indicating consumer familiarity in India.

Following the trademark application, a First Examination Report (FER) was issued on 28 November 2018, citing conflict with an existing registered mark 'WR-V' belonging to another entity under the same class. The FER invoked Section 11(1) of the Trade Marks Act, noting a likelihood of confusion among the public.

The petitioner submitted an initial reply to the FER on 26 December 2018 and a detailed rejoinder on 8 July 2020. The response included an affidavit of user, documentary exhibits demonstrating global usage, international trademark registrations, and market recognition. The respondent nevertheless issued an order on 20 May 2021, refusing registration and upholding the objection based on Section 11(1), citing a similarity with existing marks.

In its challenge before the High Court, the petitioner alleged that the Registrar passed a cryptic and non-reasoned order, disregarding documentary evidence and established jurisprudence. The petitioner relied on the Supreme Court's judgment in Milment Oftho Industries & Ors. v. Allergan Inc. (2004) 12 SCC 624 to argue that transborder reputation should not be ignored in assessing a mark's registrability in India.

In reply, the respondent maintained  that the mark 'WR' was not sufficiently distinct from the cited 'WR-V', and that there was a likelihood of confusion. The respondent asserted that the Registrar had applied Section 11(1) appropriately and that the order, though brief, had valid reasoning. Reference was made to Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2018) 2 SCC 1 to support the principle of territoriality, asserting that the petitioner failed to demonstrate sufficient spillover of goodwill in India.

The Court reviewed both the FER and the parties' submissions. It noted that the Registrar had cited similarity with 'WR-V' in Class 12 and refused the mark based on potential consumer confusion. The petitioner had contended that 'WR' (used for motorcycles) and 'WR-V' (used for cars) had coexisted internationally without issue. Additionally, the petitioner presented evidence of the WR trademark's global use since 1990, including recognition through awards and consistent sales data.

The Court acknowledged that while the Registrar was entitled to invoke Section 11(1), it should have considered the detailed materials and precedents provided. The petitioner also stated the Delhi High Court ruling in Jai Bhagwan Gupta v. Registrar of Trade Marks & Ors. 2020 SCC OnLine Del 2634, concerning the Registrar's discretion under Section 20 to advertise marks before acceptance.

The Bombay High Court emphasized that the proviso to Section 20(1) permits advertisement before acceptance where Section 11(1) applies or where exceptional circumstances exist. The Court concluded that the facts presented by the petitioner met these criteria, especially due to international recognition and concurrent global use of 'WR' and 'WR-V'.

The Court recorded, "This Court is unable to accept the contention raised on behalf of the petitioner that there is no possibility of confusion in the mind of the public between the two marks." It further stated, "The cited mark WR-V is registered in the same class i.e. class 12, which includes motorcycles. Therefore, invoking Section 11(1) of the Trade Marks Act, on the part of the respondent, cannot be said to be misplaced."

However, the Court also observed, "Considering the elaborate material placed on record by the petitioner in response to the FER, it was incumbent upon the respondent to have at least considered the same." It noted, "The impugned order does show that Section 11(1) of the Trade Marks Act was invoked. But, the exercise to be carried out by the respondent ought not to have stopped at that stage."

The Court stated, "In fact, this Court finds substance in the contention raised on behalf of the petitioner that the respondent could have passed a detailed and well-reasoned order, particularly in light of the elaborate material placed on record."

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Further, it recorded, "The Registrar has the option of directing advertisement of a mark before acceptance under proviso to sub-Section (1) of Section 20 of the Trade Marks Act." The Court found that, "These factors certainly satisfy the requirements of the proviso to sub-Section (1) of Section 20 of the Trade Marks Act for the Registrar to direct advertisement before acceptance."

The Court allowed the petition and set aside the impugned order. It directed the respondent to advertise the petitioner's application before acceptance, pursuant to the proviso to Section 20(1) of the Trade Marks Act.

 Following this advertisement, the Court instructed that the respondent should proceed in accordance with the law.

Additionally, the Court ordered the respondent to take the necessary steps as per the directives within two weeks of the order being produced before it. The matter was then disposed of, with all pending applications also considered disposed.

Advocates Representing the Parties

For the Petitioners: Adv. Darius Dalal along with Ms. Disha Mehta, instructed by Jehangir Gulabbhai & Bilimoria & Daruwalla

For the Respondents: Mr. Abhishek Bhadang along with Ms. Gauri Raghuwanshi

Case Title: Yamaha Hatsudoki Kabushiki Kaisha v. The Registrar of Trade Marks

Neutral Citation: 2025:BHC-OS:8673

Case Number: COMMERCIAL MISCELLANEOUS PETITION NO. 650 OF 2022

Bench: Justice Manish Pitale

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