A short judgement (5 pages long) passed by Justice Sanjeev Narula of the Delhi High Court on the 10th of January ’23 came to my notice.
The case goes by the name Siddharth Suri V/S Registrar of Trademarks and deals with an application named for the trademark “ANDAMEN” for leather goods in class 18. This case is significant for at least three reasons:
I) The application was refused on the 24th of Jan 2019 and has been reinstated on the 10th of Jan 2023. It took almost 4 years for this application to be heard and decided. I can understand the struggle of an applicant and his perseverance to get his application reinstated. This itself is commendable. When I saw the application, I had greater respect for the applicant. The application under no. 2849573 was actually filed in November 2014. That means it took almost 9 years and the applicant still did not have any relief in getting his mark registered. It is true that the Honorable Judge has ordered that the mark be “advertised without acceptance” within a period of 3 months of the order, which means that the mark will now be advertised and will be now open for opposition, and only thereafter will the applicant have the satisfaction of his mark being registered.
ii) The order passed by the Honorable Judge Sanjeev Narula will be a precedent for “phonetic equivalents of geographical names”, in this case “The Andaman Islands” or “The Andaman Sea”. The order itself acknowledges that the mark “ANDAMEN” is a tweaking of the geographical name. The order is a precedent for the fact that if the business activity, in this case “manufacture and sale of leather goods” does not take place at the geographical location. That is to say that the islands archipelago does not have a reputation for the manufacture or sale of leather goods, then such a trademark will be accepted for registration and the examiner cannot raise an objection under section 9 on the grounds that such a mark serves as an indication of geographical location which is an absolute for refusal of registration.
iii) The examiner of trademark had also refused this application on the ground that the mark “ANDAMEN” applied for deceptively similar to the device mark “”. The Honorable Judge Sanjeev Narula held that cited registered mark cannot be considered visually or phonetically similar to the subject mark “ANDAMEN” because the cited mark is a device mark, whereas the subject mark is a word mark.
Therefore, this case will also become a precedent for the fact that if a word mark has similar alphabets to a word or words represented in a device mark, when the two marks are compared the marks will be considered “prima facie dissimilar”.