High Court of DelhiC.A.(COMM.IPD-TM)/71/2025

Lucy Group Ltd v. The Registrar Of Trademarks

2026-03-27Hon'Ble Ms. Justice Jyoti Singh13 pages

$~7 * IN THE HIGH COURT OF DELHI AT NEW DELHI + LUCY GROUP LTD .....Appellant Through:

Ms. Anju Agrawal, Ms. Sruthi Venugopal and Ms. Vidhi Gupta, Advocates.

versus THE REGISTRAR OF TRADEMARKS .....Respondent Through:

Ms. Nidhi Raman, CGSC with Mr.

Om Ram and Ms. Nikita Singh, Advocates.

CORAM:

HON'BLE MS. JUSTICE JYOTI SINGH

O R D E R

% 27.03.2026 1.

This appeal is filed on behalf of the Appellant under Section 91 of the Trade Marks Act, 1999 ('1999 Act') read with Rule 156 of the Trade Marks Rules, 2017 ('2017 Rules') for setting aside the impugned order dated 17.04.2025 passed by the Respondent, whereby Respondent has refused registration of trademarks under Application No. 5247072 dated 14.12.2021 in Class 09.

As per the case out in the appeal, Appellant participated in the Trade Event Elecrama in Bengaluru on 13.02.2016 and used the mark GEMINI for the first time in India to promote and display products to its potential customers and business associates. On 16.06.2021, Appellant filed a Convention Trademark Application No. UK00003656071 in Great Britain Trademark Office seeking registration of the mark GEMINI. On 14.12.2021, Appellant also filed TM-Application No. 5247072 with the Respondent for registration of the mark GEMINI in India under Class 09 as convention application.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

It is stated that on 04.01.2022, Examination Report ('ER') was issued by the Respondent objecting to the application under Section 11(1) of 1999 Act citing four prior marks, on the ground that the subject mark is identical with or similar to the earlier marks which are already on the Register of Trade Marks in respect of identical or similar description of goods. After extensive hearing and filing of written submissions, Respondent refused registration of the applied mark GEMINI vide impugned order dated 17.04.2025. On 15.05.2025, request was made by the Appellant on Form TM-M for obtaining the detailed grounds of refusal, however, the grounds were never provided.

Learned counsel for the Appellant submits that a plain reading of the impugned order demonstrates that Respondent has merely recorded the existence of four cited registered marks on the Register of Trade Marks and concluded that there is a likelihood of confusion amongst the public due to similar nature of goods but there is no comparative analysis of nature and function of the respective goods, the trade channels through which they are sold and/or the relevant class of consumers. Moreover, impugned order fails to identify which of the four cited marks have been relied upon to refuse registration of the applied mark and hence, the order suffers from lack of reasoning required under Section 18(4) of 1999 Act. The most glaring illegality in the order is the finding that Appellant's adoption of the applied mark is not bona fide, which is false and not a ground for refusal under Section 11(1) of the 1999 Act.

It is further submitted that Respondent failed to appreciate that the targeted consumers and nature of goods under the applied mark and cited marks are dissimilar and there is no scope or likelihood of confusion amongst the members of the public. Appellant's application in Class 09 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

covers specialized Industrial-grade products-SCADA (Supervisory Control and Data Acquisition), which provide a dynamic and robust medium for medium voltage networks and GEMINI RTU (Remote terminal unit). These are multi-purpose remote terminal units designed for advanced feeder automation and controlling and monitoring of pole and ground mounted medium voltage switchgear. The nature of these goods is clearly supported by Appellant's product catalogues, technical specifications and corporate profile placed on record. These documents demonstrate that Appellant operates in a highly specialized field of power automation, grid monitoring and infrastructure control systems.

It is urged that Appellant had filed an application for the mark GEMINI in UK prior to applying for registration in India and has been continuously and extensively using the applied mark in India for over a decade since 13.02.2016. This is duly evidenced by user affidavits and extensive supporting documentation placed on record. As such, on the date of the impugned order, Appellant had already used the mark in India for over 9 years. The adoption and use were clearly bona fide, honest and in the ordinary course of trade with no intent to encash upon any potential goodwill of any third party. Goods offered by the Appellant under the applied mark are of a highly specialized nature, distinct in character, application and trade channels and thus do not overlap the goods covered by the earlier four registrations of cited marks and this negates any possibility of confusion or deception in the minds of the relevant consumers, thereby rendering the objections under Section 11 of 1999 Act unsustainable.

It is further urged that in stark contrast to the aforesaid goods of the Appellant under the applied mark, goods under cited 'mark 1' No. 728627 in The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

Class 09 for the mark 'GEMINI' fall under 'wires and cables', which are basic transmission components used for conducting electricity and are commonly traded and used by traders and public in general. In contrast, Appellant's products being SCADA systems, RTUs and industrial switchgear are all advanced control systems integrated with software and supplied as part of specialized engineering projects and are directed at entirely different sections of the public. The description of products as also their nature, purpose and function are different and there is no risk of confusion amongst the public. Moreover, the Appellant and proprietor of cited mark 1 have been co-existing in the Indian market since 2016 with no reported confusion. By virtue of long use, applied mark GEMINI has acquired secondary distinctiveness amongst the customers and is thus entitled to protection under Section 12 of 1999 Act. 8.

It is argued that reliance on cited mark 2 with trademark Registration No. 953168 in Class 09 for the mark 'GEMINI' was also misplaced as the products under the said mark relate to television broadcasting network and entertainment services. The proprietor of the cited mark, Sun TV Network Limited is a media and entertainment company engaged in television broadcasting. The products covered under this registration concern entertainment while Appellant's products are industrial power distribution solutions and hence, both categories are entirely different in nature, purpose and consumer base. Further, both parties have been in peaceful coexistence in India since 2016 without any confusion in the marketplace. Respondent failed to take into consideration that Appellant has already filed a rectification petition on the ground of 'non-use' against cited mark 2 on 30.07.2022, which is currently pending adjudication. 9.

It is urged that Respondent has overlooked that cited mark 3 with The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

trademark registration No. 3164101 for the mark GEMINI in Class 09 had been abandoned prior to the date of the impugned order and application for registration of cited mark 4 bearing No. 3939124 for the mark GEMINI in Class 09 was filed on a "proposed to be used" basis, later than the first user date claimed by the Appellant. Reference is made by the counsel to a tabular representation reflecting clear differences in the goods of the Appellant and those under the cited marks as follows:- The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

10.

It is thus submitted that Respondent's attempt to treat all goods in question (covered by the cited marks and subject mark) as similar, merely on the basis that they fall under the same class is not legally sustainable and has no legal standing. The correct test which should have been applied was whether the goods in question are commercially and functionally similar The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

rather than whether there is a theoretical or broad overlap in classification. It is further urged that Section 11 of the Trademarks Act, 1999 requires a finding of likelihood of confusion "on the part of the public". Respondent herein has miserably failed to identify who constitutes the relevant public in the present case. Respondent has failed to discharge its obligation to pass a reasoned and speaking order, thereby violating the principles of natural justice and procedural fairness. Denial of access to the Statement of Grounds of Decision has materially prejudiced Appellant's right to prefer an informed and effective appeal despite a formal request made in this regard. 11.

Learned counsel for the Respondent submits that refusal of Trademark Application No. 5247072 for the Mark "GEMINI" in Class 9 is based on the absolute and relative grounds of refusal under Section 11 of the 1999 Act, specifically citing four valid, prior and identical marks on the Register of Trademarks. Impugned Order is detailed and well-reasoned, based on correct appreciation of facts and law and does not suffer from any infirmity that would warrant interference by this Court. Details of the Appellant's trade mark application are as follows: 12.

It is urged that Appellant's Mark "GEMINI" is phonetically, visually and structurally identical to earlier trademarks cited in the Examination The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

Report, giving rise to a likelihood of confusion amongst the public. The legislative mandate of Section 11(1) prohibits registration of a mark which is identical to an earlier trademark where the goods are similar or identical under the rival marks, as this results in confusion among the members of public. In the present case, the applied mark being identical to the cited marks and goods being similar/identical, the applied mark cannot be registered as it will create confusion among potential customers and will be against Section 11(1) of the 1999 Act. Appellant's goods are electrical goods under Class 09 and those of the proprietor under mark-1 are 'wires and cables' and are often sold through same trade channels and to the same class of consumers such as electricians, contractors and engineers.

Thus, there is possibility of high degree of confusion. The contention that Appellant's goods are specialized industrial products and thus different from common wires and cables, is an artificial distinction as in modern electrical industry, cables and switchgears are inextricably linked. A specialized industrial consumer purchasing high voltage cables bearing cited mark 1 GEMINI or purchasing computer hardware, computer peripherals etc. is likely to be confused if he encounters GEMINI branded apparatus and instruments for use and power supply distribution, switchgears etc. Thus, refusal of registration for applied mark against cited mark 1 is justified. 13.

It is further argued that cited mark 2 has a priority date of 2000 and hence, impugned order correctly records that cited mark is well in prior use compared to the applied mark.

14.

Heard learned counsels for the parties.

15.

Appellant applied for registration of trademark GEMINI on 14.12.2021, which was examined on 04.01.2022 and reply was filed to the ER by the Appellant. Perusal of the impugned order shows that the The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

registration has been declined on the ground that four cited marks GEMINI are phonetically and visually similar to applied mark and the rival products/services are similar and hence, likelihood of confusion cannot be ruled out. It is also observed in the order that Appellant has deliberately chosen the applied mark in an effort to take the goodwill and reputation of the conflicting marks and hence, the adoption is not bona fide. 16.

Broadly understood, case of the Appellant is that four marks were cited by the Respondent to decline registration of the applied mark but without appreciating that cited mark 1 covers goods, which are completely different from the class of goods under the cited mark. Extensive arguments have been made by the counsel to take the Court through the specialized Industrial-grade SCADA products of the Appellant. In respect of cited mark 2, it is brought forth that the rival goods do not overlap even remotely as the goods under the cited mark pertain to television broadcasting network and entertainment services. For cited mark 3, it is urged that the mark was abandoned prior to date of the impugned order and this crucial fact has been completely overlooked by the Registrar. As for cited mark 4, it is urged that the mark was applied for on a 'proposed to be used' basis much later than the first use by the Appellant and cannot come in the way of registration of the applied mark.

17.

Having gone through the ER, reply thereto as also the detailed written submissions filed by the Appellant before the Respondent, I find that none of these crucial submissions have been considered by the Respondent and registration has been refused simply on the ground that the applied mark is phonetically and visually similar to the cited marks and there is similarity of goods. Respondent has not even delved into the differences sought to be brought on record by the Appellant in the nature and function of the rival The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

goods. The fact that cited mark 3 was abandoned and/or cited mark 4 was applied for on 'proposed to be used' basis much after the first user of the applied mark by the Appellant, is also not considered. In fact, the order indicates that these crucial facts and legal issues are not even referred to by the Registrar in the order. It was likely that if these facts and legal issues were taken into consideration by the Respondent and adjudicated, the decision may have been otherwise. It needs no reiteration that even a quasijudicial authority is under a legal obligation to consider all contentions and issues raised by the parties, to the extent, they are relevant before taking a decision. Seen in this context, the impugned order is clearly unreasoned, non-speaking and reflects non-application of mind. 18.

Accordingly, without entering into the merits of the case, the matter is remanded to the Respondent for fresh consideration of Application No. 5247072 filed by the Appellant for registration of trademark GEMINI in Class 09 for the goods in question. Needless to state that the final decision will be taken by the Respondent within 10 weeks from today after hearing the Appellant and taking into consideration all points raised in response to the ER as also documents: priority documents (A3); user affidavit (A5); written submissions dated 06.08.2024 (A9); written submissions dated 17.02.2025 (A12); and written submissions dated 15.03.2025 (A14), all of which are already on record of the Respondent. No new document will be permitted by the Respondent.

19.

Appeal is allowed and disposed of in the aforesaid terms. JYOTI SINGH, J MARCH 27, 2026 S.Sharma The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.