Court’s Decision
The Bombay High Court, in a significant judgment delivered on 13 June 2025, set aside the Registrar of Trade Marks’ refusal to register Yamaha’s ‘WR’ mark. The Court directed that the application be advertised before acceptance under the proviso to Section 20(1) of the Trade Marks Act, 1999. Justice Manish Pitale observed that, “the petitioner has made out a case under proviso to sub-Section (1) of Section 20 of the Trade Marks Act,” and emphasized that the respondent failed to consider “the elaborate material placed on record” before issuing the impugned cryptic order under Section 11(1).
Facts
The petitioner, a global automobile brand with international registrations of the trade mark ‘WR’ since 1990, applied in India on 5 November 2018 for registration under Class 12 (vehicles including motorcycles). The application was objected to in the First Examination Report (FER), citing potential confusion with the ‘WR-V’ mark registered by Honda in the same class. Despite submitting detailed responses and user affidavits, the application was rejected by order dated 20 May 2021, invoking Section 11(1) of the Trade Marks Act, on the grounds of likelihood of confusion.
Issues
- Whether the respondent erred in summarily rejecting the petitioner’s application without adequate reasoning.
- Whether the petitioner’s extensive prior international use and reputation of the ‘WR’ mark justified advertisement before acceptance under Section 20(1).
Petitioner’s Arguments
The petitioner argued that:
- The impugned order was cryptic, lacked reasoning, and ignored the voluminous documentary evidence provided, including global registrations and sales data.
- The trade mark ‘WR’ has acquired global distinctiveness and enjoys a spill-over reputation in India, meriting protection under the doctrine of transborder reputation.
- Section 11(1) was invoked mechanically, without appreciating the dissimilarity in usage contexts between ‘WR’ (motorcycles) and ‘WR-V’ (cars).
Reliance was placed on:
- Milment Oftho Industries v. Allergan Inc. [(2004) 12 SCC 624] – for recognition of transborder reputation.
Respondent’s Arguments
The respondent justified the rejection under Section 11(1), asserting that:
- There existed a clear likelihood of confusion between the petitioner’s ‘WR’ and Honda’s ‘WR-V’ mark within the same class.
- The order, though brief, acknowledged applicable legal provisions and the presence of similar marks on the register.
- The petitioner failed to substantiate the extent of its mark’s reputation in India.
Reliance was placed on:
- Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries [(2018) 2 SCC 1] – to emphasize the territoriality principle and the burden on the applicant to prove spill-over reputation.
Analysis of the Law
The Court considered:
- Section 11(1)(b) of the Trade Marks Act, which bars registration of marks that may confuse the public due to similarity.
- Section 20(1) proviso, which permits advertisement of applications before acceptance if exceptional circumstances or sections 9/11 apply.
Precedent Analysis
- Milment Oftho v. Allergan – Established the principle that transborder reputation can influence registration rights even without physical market presence in India.
- Toyota v. Prius Auto Industries – Affirmed the principle of territoriality but clarified that spill-over reputation must be demonstrated.
- London Rubber Co. v. Durex Products [AIR 1963 SC 1882] – Cited for recognition of special circumstances to allow co-existence of similar marks.
- Jai Bhagwan Gupta v. Registrar of Trade Marks [2020 SCC OnLine Del 2634] – Interpreted Section 20 to require application of mind by the Registrar before rejecting or advertising marks.
Court’s Reasoning
- The Court held that while Section 11(1) could be invoked, the Registrar had failed to consider the petitioner’s responses and international usage evidence.
- The impugned order lacked any engagement with the prior use, international registrations, and concurrent global existence of the marks.
- The proviso to Section 20(1) applied, given the exceptional circumstances shown by the petitioner — long-standing use, global registration, and potential for coexistence.
- The respondent had the discretion to advertise the mark before acceptance but failed to exercise it judiciously.
Conclusion
The Court allowed the petition, set aside the impugned order dated 20 May 2021, and directed the respondent to:
- Advertise the application for the ‘WR’ mark before acceptance under Section 20(1) proviso.
- Take further steps in accordance with law within two weeks from the date of submission of the order.
Implications
This judgment reinforces the importance of reasoned decision-making by statutory authorities and the relevance of transborder reputation in trade mark registration. It underlines the Registrar’s obligation to consider all evidence and exercise discretion under Section 20(1) meaningfully, especially where special circumstances and international goodwill are involved. It provides significant guidance to global brands seeking trade mark protection in India despite similar marks in the same class.
Referred Judgments and Relevance
- Milment Oftho v. Allergan Inc. – Upheld petitioner’s argument on transborder reputation.
- Toyota v. Prius – Cited by respondent, but distinguished on facts by the Court.
- London Rubber Co. v. Durex – Recognized special circumstances where even identical marks may coexist.
- Jai Bhagwan Gupta v. Registrar – Interpreted Section 20; emphasized need for Registrar to apply mind and record reasons when exercising discretion to advertise before acceptance.
