Bayer Intellectual Property Gmbh v. Registrar Of Trade Mark

1/2 41-COMMP-96-2025 (OS).DOC

IN THE HIGH COURT OF JUDICATURE AT BOMBAY

ORDINARY ORIGINAL CIVIL JURISDICTION IN ITS COMMERCIAL DIVISION COMMERCIAL MISCELLANEOUS PETITION NO. 96 OF 2025 Bayer Intellectual Property Gmbh

...Petitioner

Versus

Registrar Of Trade Mark

...Respondent

_______ Mr. Vinod Bhagat i/b Ms. Sonam Pradhan i/b Mr. Vinod A. Bhagat for Petitioner. Mr. Yashodeep Deshmukh (Through V.C.) a/w Ashutosh Misra Vaidehi Deshmukh for Respondent No. 1.

Mr. Hemant Thadhani a/w Nidhi Mishra i/b Crawford Bayley & Co. for Respondent No. 2.

_______

CORAM

:

ARIF S. DOCTOR, J.

th December, 2025 DATE :

P.C.

1.

After the matter was heard at some length, it is submission of Mr. Bhagat learned counsel for the Petitioner is that the Petitioner is registered user of the word mark 'Fame' in respect of Insecticide preparation in Class -5. 2.

It is submission of learned counsel that the opposition proceedings which were filed by the Petitioner against the mark of Respondent No. 2 i.e. 'Flame', which are in respect of identical goods in the identical category was rejected and thus the Respondent No.2 was granted registration of the mark 'Flame'. 3.

Mr. Bhagat pointed out that in doing so, the Registrar of Trademark has completely omitted to deal with the fact that there is phonetic similarity between "Fame" i.e. the petitioner's mark and 'Flame' i.e. the mark of Respondent No. 2. Areeb

2/2 41-COMMP-96-2025 (OS).DOC 4.

A very fair stand has been taken by Mr. Deshmukh, who points out that while order dated 19 th October, 2023, speaks of dissimilarity in paragraph nos. 13 & 14, the same is silent on the aspect of phonetic similarity. 5.

After the matter was argued at some length, learned counsel for Respondent No.1 submitted that, the matter could be remitted back for fresh consideration on the aspect of whether there was phonetic similarity between the petitioner's mark i.e. 'Fame' and 'Flame' i.e. the mark of Respondent No.2. 6.

Hence, the impugned order is quashed and set aside, the matter is remitted back to the Registrar to take into consideration the aspect of phonetic similarity.

7.

The Registrar shall endeavor to do so within a period of three months from today, subject to any other prior commitments or exigencies that the Registrar may have.

8.

Needless to state that the rights of both the parties would be kept open to challenge any such order i.e. passed, including grounds taken in the present Petition.

9.

Petition is accordingly disposed of.

(ARIF S. DOCTOR, J.) Areeb