Delhi High Court upheld the appeal filed under section 91 of the Trademarks act 1999, held that two parties can register identical or similar marks if there is honest and concurrent use.
Title: MHG IP HOLDINGS (SINGAPORE) PTE. LTD. versus THE REGISTRAR OF TRADE MARKS, DELHI
Date of Decision: 18th July, 2023
+ C.A.(COMM.IPD-TM) 49/2021 and I.A. 9889/2023
CORAM: JUSTICE PRATHIBA M. SINGH
Introduction
Delhi High Court set aside the order of Registrar of Trade Marks by which the application of the Appellant being application no. 2835731 was refused registration and returned the matter to Registrar for re-consideration. It also held that two parties can register identical or similar marks if there is honest and concurrent use.
Facts of the case
The Appellant, M/s M & H Management Ltd., a Mauritius-based firm in the hotel sector, filed the appeal. The Appellant is a fully owned subsidiary of “Minor International PCL,” which asserts to own and manage more than 150 hotels and resorts in a number of nations in the Asia Pacific, Middle East, Europe, South America, Africa, and Indian Ocean regions.
In its defence, the appellant claims that one of the marks it adopted in 1933 was the mark “TIVOLI,” which it claims to have used in a vast number of nations throughout the world. Several other nations, including Argentina, China, Colombia, Ethiopia, France, Germany, Mexico, New Zealand, Paraguay, Spain, Sri Lanka, UAE, United Kingdom, and the United States of America, are listed as having registered the mark.
Additionally, the appellant is the registered owner of the domain name www.tivolihotels.com, on which it runs a website to advertise its many properties, resorts, and hotels. In 2014, the Appellant submitted an application for the mark under the number 2835731 in class 43.
The Registrar looked through the applicant’s application, and on May 19th, 2016, an examination report noting already-registered comparable marks was provided. The trademark registrar noted objections made in accordance with Section 11 in the examination report.
On September 29, 2016, the appellant responded to the aforementioned examination report. The Appellant argued in its response that the mark had been adopted and used since 1933 and had a global reputation. The Appellant claims that the registered/applied-for marks were not identical since there were discrepancies between the Appellant’s markings and the mentioned marks. In any case, the appellant argued that the mark has a strong global reputation in its favour and is therefore susceptible to registered. However, the Registrar vide its order dated 10th January, 2019 has refused registration and the review against the refusal order has also been rejected vide order dated 25th June, 2019. Hence, the present appeal.
Out of the three trademarks mentioned above, only mark #3 has faced opposition. The stated markings are registered marks and they belong to the same class as the mark in relation to the registrations at serial numbers 1 and 2. registered, as requested, by the appellant.
However, a review of the aforementioned registrations reveals that they were submitted after the appellant’s 1933 use of the mark. This Court is persuaded to believe that the Appellant’s case may qualify for the exemption under Section 12 of the Act since the domain name www.tivolihotels.com was registered in the Appellant’s favour and has been in use for a long time.
Honest and concurrent usage are recognised in the preceding clause. In accordance with the aforementioned clause, two parties may register identical or related marks if there is genuine concurrent usage.
Given the substantial evidence that the Appellant has shown on the adoption and widespread usage of the in question mark, the Court believes that the Registrar of Trademarks should take this element into consideration.
In light of these facts, the contested ruling is overturned, and the matter is sent back to the Registrar of Trademarks for another review, taking into account the appellant’s previous adoption and extensive worldwide use of the trademark as well as the issue of the appellant’s honest and concurrent usage. In light of the particular circumstances of this case, the Registrar would consider the evidence before making a determination about whether the appellant’s mark merited to be treated as “Advertised before acceptance.”
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Written By – Shreyanshu Gupta