Khadi And Village Industries Commission v. The Registrar Of Trade Marks

1/3

IN THE HIGH COURT OF JUDICATURE AT BOMBAY

ORDINARY ORIGINAL CIVIL JURISDICTION COMMERCIAL MISCELLANEOUS PETITION NO. 138 OF 2025 Khadi and Village Industries Commission

...Petitioner

Versus

The Registrar of Trade Marks

...Respondent

_______ Ms. Shwetasree Majumdar (through V.C.) a/w. Ms. Janhvi Chadha, Ms. Priya Adlakha, Mr. Umang Gola and Ms. Aishwarya Ambardekar i/b. Bimal Rajasekhar, for the Petitioner.

Mr. Yashodeep Deshmukh a/w. Mr. Rutwik Rao, for the Respondent. _______ CORAM :

ARIF S. DOCTOR, J.

DATE :

9th APRIL, 2026 P.C.

1.

The captioned petition is filed under the provisions of Section 91 of the Trade Marks Act, 1999 ("Trade Marks Act") and impugns an order dated 19th June 2025, by which Respondent No. 1 has refused the Petitioner's application for registration of the word mark 'DAANA' in Class 35 under the provisions of Section 11(1) of the Trade Marks Act.

2.

The principal grievance of Ms. Majmudar, learned counsel for the Petitioner, is that the impugned order is a non-speaking order by which the Petitioner's application has been summarily refused. Ms. Majmudar pointed out that the impugned order only records that the subject mark is phonetically similar to the

2/3 cited mark and that the goods/services involving the Petitioner's mark and the cited mark are similar, and then goes on to conclude that there exists a likelihood of confusion on the part of the public which would include a likelihood of association. She further pointed out that the impugned order was bereft of any kind of analysis and independent findings dealing with the submissions made by the Petitioner in the context of each of the conjunctive links of Section 11(1) of the Trade Marks Act. 3.

Mr. Deshmukh, learned counsel appearing on behalf of the Respondent, submitted that the Respondent has, after analyzing the material placed before the Respondent and also the provisions of Trade Marks Act, passed the impugned order. He therefore submitted that no interference with the impugned order is merited since the Respondent had correctly rejected the Petitioner's application. He was, however, unable to point out any reasoning in the impugned order, which dealt with the Petitioners' contentions. Hence, in my view the impugned order would have to be set aside and the matter remanded back for considering afresh.

4.

Given the rival contentions that have been urged before me, let the Registrar, while considering the matter afresh, also take into consideration the following: i.

Whether the test under Section 11(1) of the Trade Marks Act, 1999, is satisfied conjunctively.

ii.

Whether the goods covered by the cited registrations in Classes 24 and 25 are similar to the services included in the Petitioner's

3/3 application in Class 35 and also the import of the cited proprietor's own registration in Class 35?

iv. Whether the cited marks are actually used in respect of the registered goods or whether the registrations were made on a proposed-to-beused basis with no evidence of actual use in relation to textiles or clothing?

v.

What would be the effect (if any) of the Petitioner's registration for "Daana" in Classes 24 and 25?

5. It is clarified that the Registrar is at liberty to consider any other aspect that the Registrar may deem relevant for deciding the application, including the relevance of (i) to (v) above. The inquiry shall not in any manner be circumscribed to deciding only (i) to (v) above.

6. All rights and contentions of the parties are kept open. It is clarified that this order does not cast any aspersion on the authority which passed the impugned order. However, the remand is only on account of the lack of reasons and analysis in the impugned order dated 19th June 2025.

7. The Commercial Miscellaneous Petition is accordingly disposed of. [ARIF S. DOCTOR, J.]