The case in question revolves around the binding effect of statements made by
the plaintiff before the Registrar of Trademarks in response to an examination
report. The plaintiff, who sought to protect the trademark "ORNATE JEWELS" in
the jewelry industry, faced a legal hurdle when the defendant claimed a similar
trademark. The crux of the matter lies in the plaintiff's response to the
Registrar of Trademarks' objection regarding the similarity of trademarks and
its subsequent impact on the plaintiff's legal position.
The plaintiff asserted its use of the trademark "ORNATE JEWELS" for Gold
Diamond, Precious and Semi-Precious Jewelry since 2012. The plaintiff also held
a registered trademark with a logo in Class 35 before the Registrar of
Trademarks in 2018. Conversely, the defendant argued that it had been using the
same trademark, "ORNATE JEWELS," in the same industry but with a distinct logo.
The defendant's trademark had been registered with the Registrar of Trademarks
in Class 14 since 2016.
The Registrar's Objection:
The pivotal moment in this legal battle occurred when the Registrar of
Trademarks raised an objection to the plaintiff's registration application. The
objection was grounded in the fact that the defendant had already registered a
trademark with a similar name in 2016. The plaintiff, however, countered this
objection by asserting that the defendant's trademark was entirely different and
dissimilar, bearing Registration No. 3256088.
The High Court's Ruling:
The Rajasthan High Court upheld the Trial Court's decision, denying the
plaintiff's claim for a temporary injunction. The crux of their reasoning hinged
upon the plaintiff's response to the Registrar of Trademarks' objection
regarding the similarity of trademarks. The High Court concurred with the Trial
Court's observation that the plaintiff's response before the Registrar of
Trademarks estopped them from taking a contradictory position now. In essence,
the plaintiff's previous statement, asserting dissimilarity, held them legally
bound and precluded them from subsequently claiming similarity, which would be
at odds with their earlier stance before the Registrar of Trademarks.
The case underscores the importance of consistency in legal proceedings,
particularly in matters related to trademark registration and protection. When a
party makes a statement before a competent authority, such as the Registrar of
Trademarks, it carries a significant legal weight. In this instance, the
plaintiff's initial assertion that the defendant's trademark was dissimilar,
made during the registration process, formed the basis for their subsequent
Doctrine of Estoppel:
The doctrine of estoppel is central to this case. Estoppel prevents a party from
adopting a position that contradicts their prior statements or conduct when it
would be unjust or inequitable to do so. The plaintiff's assertion of
dissimilarity before the Registrar of Trademarks created a legitimate
expectation that they would maintain this position. To allow the plaintiff to
subsequently claim similarity would not only undermine the integrity of the
registration process but also lead to unjust results for the defendant.
The Concluding Note:
This case serves as a poignant reminder of the binding effect of statements made
before the Registrar of Trademarks in response to examination reports. Parties
must exercise caution and consistency in their statements during trademark
registration, as these statements can significantly impact their legal positions
in subsequent disputes.
Case Law Discussed:
Case Title:Ornate Jewels Vs Wow Overseas Private Limited
Date of Judgement:18/09/2023
Case No. S.B. Civil Miscellaneous Appeal No. 1570/2021
Neutral Citation No: N.A.
Name of Hon'ble Court:Rajasthan High Court
Name of Hon'ble Judge: Sudesh Bansal.H.J.
Information and discussion contained herein is being shared in the public
Interest. The same should not be treated as substitute for expert advice as it
is subject to my subjectivity and may contain human errors in perception,
interpretation and presentation of the fact and issue involved herein.
Written By: Md. Imran Wahab
, IPS, IGP, Provisioning, West Bengal
Email: [email protected]
, Ph no: 9836576565