How Can Trademark Registry Restrict Use Of A Mark Without Reasons, Gujarat High Court Orally Asks?

The Gujarat High Court on Friday (January 16) orally questioned the Registrar of Trademarks on why the adjudicating authority had permitted advertisement of a trademark in the Trademark Journal with restrictions, without recording any reasons for imposing such conditions.

Justice Niral R. Mehta was hearing an appeal arising from a 2020 order of the trademark authority, which had conditionally accepted an application for registration of the “Family Farms” logo with the tagline “Ye Ghar Ki Baat Hai” in Class 31, covering agricultural and horticultural products.

The counsel appearing for the trademark holder submitted that although the trademark registry had initially objected to the application at the examination stage, a reply was filed and the matter thereafter proceeded to a show-cause hearing. Following the hearing, the authority permitted advertisement of the mark in the Trademark Journal subject to "restriction of the goods for sale in Gujarat only".  

It was further pointed out that the mark was subsequently published in the Trademark Journal and remained unopposed during the statutory period. After completion of 120 days, the trademark was registered and a certificate was issued, albeit with the territorial rider.

The appeal, originally filed before the Intellectual Property Appellate Board (IPAB), sought modification of the restriction on the ground that the evidence on record had not been properly appreciated. The proceedings were later transferred to the Gujarat High Court following the abolition of the IPAB.

During the hearing, the counsel appearing for the trademark authority submitted, "the order under challenge was passed by a particular Registrar. Now that particular person has been challenged. So the persons right now in charge of the office today cannot file any affidavit justifying the order of the other person has passed". 

The court orally asked if there was a record of the same. To this counsel appearing for the authority said that the only record was what the appellant had produced and there was no reasonings given in the order. 

The court however orally said, “So ultimately as I understand if somebody makes an application for registration of trademark, either it has to be allowed or may be rejected or maybe with condition. General approach should be either allow or reject with reasons. For rejection there has to be reasons. For allowing maybe no reasons are needed. If you are restricting there has to be some reasons for that. What is the law on that?”.

The court further orally remarked, “He (appellant) has produced evidence. You are restricting him…If you say that all officers have changed and nobody can file affidavit, is not acceptable. Ultimately somebody has to assure us.”

Granting time to the counsel for the trademark authority to seek instructions, the court orally said, “We can keep this matter next week. You take formal instructions. Try to make them understand at your level.”

The matter has been listed for further hearing next week.

Case title: Kunvarji Growth Corporation LLP v. Registrar of Trade Marks

Case Number: R/CIA/99/2022