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Divergence from submissions in Examination Report issued by the Trademark Registry

An applicant seeking registration of his trademark, in a reply to the objection raised by the Registrar of Trade Marks, may submit that his mark must be read as a whole, relying on the provisions of section 17 of the Trade Marks Act, 1999. In circumstances wherein, he is claiming infringement of his trademark, he may assert that a portion of his trademark has been copied. Can he later diverge from his position as claimed in the examination report?

The defendant in Phonepe Private Limited v. EZY Services [i], had put forth the argument against the applications filed by the plaintiff for registration of its PhonePe marks. The trademark registry had cited third-party trademarks containing the suffix/expression Pe.

In its response to these examination reports, the plaintiff contended that the mark of the plaintiff was required to be considered as a whole and that the suffix Pe could not be extracted out of the mark to make out a case for objection. This, however, was precisely the stand being taken by the plaintiff, to question the BharatPe mark of the defendant. The plaintiff was, therefore, estopped from taking such a stand.

The Delhi High Court in this case held that the word Pe was common to trade and the plaintiff could not hold exclusive right to use the word Pe. The court also held that the plaintiff's mark must be read as a whole.

However, there is no estoppel against the statute and a person cannot be denied the right to exercise his statutory and natural rights.

In H&M Hennes & Mauritz AB v. HM Megabrands Pvt. Ltd.[ii], the defendant contended that the plaintiff in its reply to the examination report had submitted that the mark H & M must be taken as a whole for differentiating it with cited marks HMT, HMV, HMW, H.M. Tex Kamal and H.M.M.C and claimed that the plaintiff could not contest that the defendant had copied parts of their mark. The defendant claimed that the plaintiff was estopped from suing for infringement for this reason.

The Delhi High Court held that none of the business marks that the plaintiff was confronted with, were in any business even remotely connected to the business of the plaintiffs. The marks HMT & HMV were abbreviations of their earlier names, Hindustan Machine Tools and His Masters Voice, respectively, and the businesses, over the years, had come to be referred to by their abbreviations.

Simply because the plaintiff took the aforementioned stand during the registration process does not preclude the plaintiff from exercising its statutory and natural rights. There is no estoppel against a statute.


In Teleecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd.[iii], the Delhi High Court held that post-grant of registration of the mark, neither the examination report nor the reply to the same are relevant documents. Furthermore, there is no estoppel against the statute.

Conclusion
Neither the examination report nor the response to it, are relevant documents, and no estoppel against statute exists. Also, in Phonepe Private Limited v. EZY Services [iv], the plaintiff cannot deviate from its stance in reply to the examination report, which was a mere contention. Therefore, the opponent cannot be denied the right to exercise his natural and statutory rights and claim that the applicant has copied a portion of its mark.

End-Notes:
  1. 2021 SCC OnLine Del 2635
  2. 2018 SCC OnLine Del 9369
  3. 2021 SCC OnLine Del 2635
  4. 2021 SCC OnLine Del 2635

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