Prem Biyani Prop. Trading As Uttaransha International v. Zee Entertainment Enterprises Ltd

IN THE HIGH COURT OF JUDICATURE AT MADRAS

DATED : 07.03.2024 CORAM :JUSTICE N.SESHASAYEE OA/26/2015/TM/CHN Prem Biyani Prop. Trading Uttaransha International 7-24/10/8, Shivaji Nagar, Attapur Hyderabad - 500 064.

... Appellant Vs.

1.Zee Entertainment Enterprises Ltd., 135, Continental Building Dr.Annie Besant Road Worli, Mumbai - 400 018.

2.The Deputy Registrar of Trade Marks Trade Marks Registry at Chennai Chennai.

... Respondents PRAYER: Transferred Civil Miscellaneous Appeal (Trade Mark) filed under Trade Marks Act, praying to (a) set aside the impugned order dated 19.04.2012; (b) to direct the second respondent to proceed further with application No.960905 in Class 05 in accordance with the law; and (c ) to award costs of the proceedings.

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For Appellant : Mr.P.Venkataramani For Respondent : Mr.C.Kulanthaivel Central Govt. Standing Counsel for R2 R1 - No Appearance

JUDGMENT

This appeal is directed against the order of the Deputy Registrar of Trade Marks dated 19.04.2012, by which he had rejected the appellant's application for registering its word mark 'ZEE' under class 5, following an opposition from the first respondent for the registration of the same.

2. The brief facts are as below :

a) The appellant introduces itself as a manufacturer and marketer of insecticides, that it is using the work 'ZEE' since 1998 for marketing its product, and on 04.10.2000, it moved the Trade Mark Registry with its application for registering the mark under class 5. b) It sailed through the preliminary procedures and it came to be published in the Trade Mark journal.

c) No sooner, the first respondent came out with its opposition alleging that it has been using the word 'Z' or 'ZEE' along with other 2/7

combination words, and has atleast 14 registrations. The details are as below :

S.No.

Application No.

Class Mark 1263421 ZEE NETWORK 1263422 ZEE NETWORK 1263423 ZEE NETWORK 1246684 Z ENGLISH 1246672 Z NEWS 1246670 Z NEWS 1246622 Z ZEE 1246629 Z ZEE 1081810 ZEE CINE RATING 1081811 ZEE CINE RATING 1246642 Z RECORDS 1246663 Z CINEMA 789417 Z CINE AWARDS 789416 Z CINE AWARDS d) Before the Trade Mark Registry, the appellant claims to have produced its evidence, but the Deputy Registrar had held that the said documents are confusing and proceeded to hold that the appellant's mark is deceptively similar to the first respondent's mark and proceeded to reject the appellant's application for registration. This is now under challenge.

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3. The first respondent was served with a notice, and it did not choose to appear. Heard the learned counsel for the appellant as well the second respondent.

4. The learned counsel for the appellant made the following submissions : (a) None of the marks of the first respondent were registered under class- 5; and (b)Today, the first respondent's mark may have been considered as a well-know mark, but not in 1997, for the concept of well-know mark was statutorily not recognised under the Trade Marks Act, 1958, which was then in vogue. However, the Registrar has invoked the well-known mark concept for deciding the present issue. Indeed, the Registrar has taken twelve long years to take a decision on the application filed in 2000.

5. The learned counsel for the second respondent submitted that: (a) In the various invoices produced by the appellant, the work 'ZEE' was found missing; and (b)In the records of the Trade Mark Registry, the mark of the first 4/7

respondent is notified as a well-known mark.

6. The submissions on either side is carefully weighed. There are two facts that requires to be considered :

(a) that the first respondent mark does not appear in isolation, but in combination with other words, and at any rate it was not registered under class-5;

(b)even if it is a well-known mark, it is not that such well known mark should prevail over any other similar or identical marks, since under Sec.12 of the Trade Marks Act, the Registrar can still impose certain conditions. Indeed, the legislative intent is far too evident in that, it has made Sec.11 subject to Sec.12. Therefore, in all such situations, it may be appropriate for the Registrar to consider any application where the mark is similar or identical to any other mark, more so, when they belong to different classes and apply his mind to ascertain if both the marks can be allowed to be used, subject to certain conditions under Sec.12. This apparently has not been done in this case.

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7. In view of the same, this Court deems it appropriate to allow this appeal, and remands the matter back to the Trade Mark Registry, for it to consider the application of the appellant in the light of what this Court has hereinabove observed. No costs.

07.03.2024 ds Index : Yes / No Speaking order/ Non-speaking order To:

The Deputy Controller of Patents & Design Patent Office Intellectual Property Building GST Road, Guindy Chennai - 600 032 6/7

N.SESHASAYEE, J.

ds 07.03.2024 7/7