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Non-speaking Refusal Order Quashed by the Bombay High Court

08

DEC

2021

The Bombay High Court, through an order dated 6th October 2021 in the case of Metso Outotec Corporation vs the Registrar of Trade Marks, quashed the order passed by the Senior Examiner of Trade Marks, refusing the application for the mark SISUPER. The trademark applications were refused by the examiner on the ground that they were devoid of distinctive character, and they consisted exclusively of marks and indications which might have served in trade to designate the quality or the intended purpose of the goods or services. The marks were applied for goods and services falling under classes 6, 7, 17 and 37. In the reply to the objections in the provisional refusal, the applicant (or the appellant herein) submitted detailed explanations and representations on facts and law to demonstrate how the mark SISUPER was coined and adopted. The applicant stated that its mark was inherently distinctive and submitted their averment in support of acquired distinctiveness of the mark (without prejudice to its inherent distinctiveness). The applicant also relied on the protection granted to the mark in various international jurisdictions. The application was then listed for a hearing, wherein the applicant argued based on the submissions made in the reply. Post hearing, the Senior Examiner of Trade Marks refused the application. In the refusal order, the examiner had merely reiterated the provisions of law and stated that the mark is not registrable because of the abovementioned reasons.

The Bombay High Court noted from the order that none of the submissions made in the written reply and during the oral hearing were considered. The order only mentioned that the Examiner had heard an Advocate who had gone through the records, but the Court stated that the process of analysis must surely reflect in the order itself. The Court observed that it was 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. It was held that the form of this order, i.e., the total elision of all reasons, is contrary to the statutory mandate of Section 18(5) of the Trade Marks Act. The section requires written reasons if an application is rejected or only conditionally accepted, the grounds for the refusal or conditional acceptance and the materials used by the Registrar must be reflected in the order. The Court also disallowed the Examiner from defending the decision as they were not a party to the suit. It was contended that the order must speak for itself.

Our take

The courts, in various instances, have held that the orders must contain detailed grounds, including reference to the material used by the Registrar in arriving at a decision. The present order reiterates the same.

Another aspect that must be considered, especially when the mark is objected to, based on absolute grounds of refusal, is that the Examiner’s opinion should be in sync with the judicial precedents. Considering that the Trade Marks Registry forms the basis of the trademark prosecution process, refusal orders which are passed without holistically considering the matter will lead to a slew of appeals before the courts, entailing unnecessary burden to the courts and the stakeholders. Hence, if the efficiency of the system is to be improved, it is imperative to improve the quality of examination.

Whether or not a mark is fit for registration under the provisions of the Act should be determined in light of the guidelines laid down by the law including the provisions of the Statute, the Rules made thereunder and the judicial pronouncements on the subject. The well-developed Indian jurisprudence provides for broad factors to be considered leaving the room for assessment by the examiner on a case-to-case basis. It is much desired that decisions passed by the examiners are well reasoned and backed by well-established principles of trademark law in India. It is also important to ensure that the absolute as well as relative restrictions on the registrability of trademarks remain reasonable and legitimate and not overreaching and arbitrary. Hence, a careful analysis of a trademark application is warranted before a refusal order is passed.

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