Merck Kgaa v. Registrar Of Trade Marks

2025:BHC-OS:962 904 COMMP-58-2025.doc IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION IN ITS COMMERCIAL DIVISION COMMERCIAL MISC. PETITION NO. 58 OF 2025 Merck KGaA

...Petitioner

Versus

Registrar of Trade Marks

...Respondent

------ Mr. Vinod Bhagat, Ms. Ishita Maheshwari, Ms. Sonam Pradhan, Ms. Rashi Thakur i/b Vinod Bhagat for Petitioner.

Mr. Vinit Jain, Mr. Ashutosh Mishra for Respondent No. 1. Mr. Pranjal Sharma, Examiner from Registrar of Trade Mark. ------ Coram : Sharmila U. Deshmukh, J.

Date : 2nd July, 2025.

P. C. :

1.

The present Petition challenges the order dated 3rd March, 2023 passed in the Review Petition and original order dated 28th June, 2021 passed by the Respondent.

2.

The contention of Mr. Bhagat, learned counsel appearing for Petitioner is that as far as the order under review is concerned, the same was never communicated to the Petitioner. He would further submit that order of 28th June, 2021 does not deal with extensive submissions canvassed by Petitioner at the time of hearing of objection.

Sairaj 1 of

904 COMMP-58-2025.doc 3.

Perusal of order dated 28th June, 2021 indicates that the same is non-reasoned, non-speaking order with mere reference to statutory provisions. The registration has been refused by cryptic order without any discussion on the submissions which were canvassed. By response dated 18th September, 2020, it was specifically pointed out to the Registrar of Trade Marks that the subject mark has been granted registration in various other countries. Perusal of the impugned order dated 28th June, 2021 does not indicate any consideration of the same. 4.

Confronted with this position, learned counsel appearing for Petitioner, on instructions of Examiner, who is present in Court submits that orders dated 28th June, 2021 as well as 3rd March, 2023 be quashed and set aside and matter be remanded for consideration afresh. 5.

In light of above without examining the merits of matter, orders of 28th June, 2021 and 3rd March, 2023 are hereby quashed and set aside.

6.

Application No. 4551559 in Class - 1 is remanded to the file of the Registrar for consideration afresh. It is expected that wellreasoned speaking order will be passed on the said Application by taking into consideration the submissions canvassed by the Petitioner. Considering the refusal was of the year 2021, it is expected that Registrar will consider the matter expeditiously. 7.

Petition is disposed of in the above terms.

[Sharmila U. Deshmukh, J.] Sairaj 2 of