Trade Mark granted to a person can be given to another one dealing in a different class of goods/services: Kerala HC

A Trade Mark granted to a person can be given to another one dealing in a different class of goods/services – High Court of Kerala

The Hon’ble High Court of Kerala in Kunhi Muhammed Etayattil Vs. the Assistant Registrar of Companies & Anr (WP [C] No. 3057 of 2021 dated: 07.04.2021) held that it is totally illegal to reject the application filed by the petitioner herein for incorporation of a Limited Liability Partnership (LLP) in the name & style of “Reef Wellness and Excellence LLP” for the reason that the proposed name ‘REEF’ has an existing trademark under Class 5 (Pharmaceutical, veterinary and sanitary preparations, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants, preparation for destroying vermin; fungicides, herbicides) whereas the petitioner was desired to engage in the services (wellness services) come under Trademark Class 35.

Facts of the case

♦ The petitioner was planned to incorporate a Limited Liability Partnership (LLP) under the Limited Liability Partnership Act, for doing business in Recreation and Wellness Centres, in the name and style “Reef Wellness and Excellence LLP”. The petitioner therefore submitted Form RUN-LLP for reservation of the name “Reef Center for Wellness and Excellence LLP”, under Rule 18(5) of the LLP Rules. The petitioner’s application was approved through a letter dated 22.05.2019, wherein it was stated that the mentioned name was made available for registration of the LLP for new incorporation. On 23.01.2020, the petitioner filed Form FiLLiP for incorporation of the Limited Liability Partnership under the name ‘Reef Centre for Wellness and Excellence and the 1^st respondent–Assistant Registrar of Companies, has approved the proposed name of the LLP with the remark “No Resemblance found, TM Checked U/c (Under Class) 44,35,41, Name can be given”. However, the 1^st respondent had pointed out certain defects in the application.

♦ The petitioner rectified the defects and resubmitted the FiLLiP form on 05.02.2020. However, the resubmitted FiLLiP Form was once again sent back by e-mail dated 05.02.2020 stating that the NOC should be provided by the same person in whose name the utility bill was furnished against which the petitioner submitted an explanation clarifying that NOC signed by the building owner was already given and telephone bill in the name of Reef Wellness and Excellence was also submitted. The Assistant Registrar of Companies had again rejected his application on 18.02.2020, holding that in the case of proprietorship, NOC should be given on the letterhead duly stamped and signed and further that Business Visa of one of the partners, who is a resident of India, also has to be submitted, in utter disregard of the fact that the petitioner applied for an LLP but not for a proprietorship. The petitioner submitted another reply. As the 1^st respondent did not proceed further, the petitioner filed a complaint dated: 04.03.2020 to the Escalation Authority under the Ministry of Corporate Affairs.

♦ The Escalation Authority, without considering the contentions of the petitioner, rejected the complaint on 04.03.2020 merely stating that the queries are validly raised. The petitioner again represented before the Escalation Authority that the 1^st respondent cannot demand an OCI Card from an Indian Passport holder. Thereupon, on 04.03.2020, the Escalation Authority required the petitioner to file a fresh Form FiLLiP as the maximum number of re-submissions was already over.

♦ The petitioner thereupon filed fresh Form of FiLLiP dated: 12.06.2020. The petitioner was then served with a mail dated: 14.06.2020 informing that “proposed names include the word REEF is TM under Class 5”. Hence, it cannot be considered as per Section 15(2) of the Limited Liability Partnership Act, 2008. The petitioner submitted further clarification stating that Class 5 deals with Pharmaceuticals and related products whereas service being provided by the petitioner falls under Class 35.

♦ The petitioner as per another mail dated: 22.06.2020 was again directed to re-submit, with the remark that ‘Subscriber sheet submitted in FiLLiP is too old’. The petitioner accordingly resubmitted the Form. The petitioner’s application was again rejected on 09.07.2020, this time stating that the proposed name REEF has an existing trademark under Class 5. The petitioner submitted a representation stating that he had reserved the name earlier. Though the period of such reservation was over, in the subsequent communications the petitioner was informed that the name is available and no objections were raised. Furthermore, the already existing trade mark with the word REEF is under Class 5 whereas the petitioner’s service falls under Class 35. The said representation did not yield any positive results. Hence the petitioner has approached the Hon’ble High Court of Kerala with this writ petition.

Issues involved

√ Agony of common man, forced to deal with faceless men and machines, resulted in ‘system generated harassment’ aggravated by non-application of mind by officials who leave everything to be dealt with by the system.

√ Whether a Trade Mark granted to a person can be given to another one dealing in a different class of goods/services?

Held by the High Court

♦ The facts of the case disclose a sorry picture of what can be described as a ‘system generated harassment’ aggravated by non-application of mind by officials who leave everything to be dealt with by the system, thereby putting the common man to an agonising phase of suffering, where he is condemned to deal with faceless men and machines.

♦ It is clear from Section 28 of the Trade Marks Act, 1999 that exclusive right to use a trade mark is given to a registered proprietor of a trade mark only in relation to the goods or services in respect of which the trade mark is registered. It is evident from the records that the word REEF is now included in the names of entities dealing in Class 05 goods in Fourth Schedule to Trade Marks Rules, 2002, namely, Pharmaceutical, veterinary and sanitary preparations, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants, preparation for destroying vermin; fungicides, herbicides. The petitioner proposes to deal in services and his activity may fall under Classes 44, 35 or 41.

♦ The Hon’ble Apex Court considered the issue of registering similar trade name by different entities for difference classes of products, in Nandhini Delux v. Karnataka Co-operative Milk Producers Federation Limited [AIR 2018 SC 3516]. In the said case, the appellant before the Supreme Court was operating a restaurant under the trade mark NANDHINI and the respondent was selling milk and milk products under the mark NANDINI. The Hon’ble Apex Court held that as the products of the appellant and respondents fall in different classes, there is no question of confusion or deception in the matter of Trade Mark. The Hon’ble Apex Court held that if a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bonafide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under the broad classification and by that process preclude the other traders or manufacturers from getting registration of separate and distinct goods which may also be grouped under the broad classification.

♦ The case of the petitioner in fact stands on a stronger footing. The registration of word mark already granted by the respondents are “REEFLEC’, REEF”, “REEFIT FORTE”, “REEFER (HEMATANIC)” which are all for products falling under Class 05. The petitioner seeks the name “Reef Wellness and Excellence LLP”, not for any product but for a service, and that too which does not fall under Class 05. The name proposed by the petitioner cannot be said to be identical or deceptively similar. When the petitioner sought for a word name for a service which word name is not identical or deceptively similar to other word names already registered for a different class of products, the respondents are not justified in rejecting the application of the petitioner for the reason that the proposed name include the word “REEF” which is existing trade mark under Class 05. In the circumstances, the respondents are not justified in declining incorporation of LLP as sought for by the petitioner on the ground of similarity of name. The writ petition is therefore allowed and the Assistant Registrar of Companies being the 1^st respondent was directed to incorporate the LLP without raising any dispute on the name proposed by the petitioner.

Author/Blogger:  Aji V. Dev, Advocate, High Court of Kerala at Aji V. Dev & Associates, Ernakulam, Kochi, available at ajivdev@yahoo.co.in/advajivdev@gmail.com/9447788404