HDFC Trademark Rejection Decision By Registrar Is Set Aside By Bombay High Court

The Bombay High Court, on March 27th, 2023 quashed and set aside the decision taken by the Registrar of Trademarks against the trademark application filed by HDFC Bank.?

The bank challenged the decision of the Registrar of Trademark passed on June 04th, 2021 regarding the application of registration of the trademark (device mark) "MILLENNIA".

The counsel for the petitioner submitted that according to the Registrar, the rejected trademark was similar to another trademark registered earlier for similar services which they apprehended to create confusion. The Counsel further claimed that except for being both device marks, the registrar could not show any other points of similarity between the concerned two marks.

As the similarity is concerned, the Counsel for the petitioner submitted before the Court that the earlier mark was accompanied by a logo, which makes it easy for the public to distinguish between the two trademarks concerned.

The Court while passing the judgement, opined that the Registrar appears to have erred by completely ignoring the fact that the respondent was expected to compare such services with the services offered by the entity holding the earlier registration and then come to a reasoned conclusion either way in the matter. No such exercise. appears to have been carried out in the impugned order dated 14th June 2022. Apart from this, there is no application of mind on the part of the Respondent, on the aspect of whether the two marks could be said to be similar because both the marks are device marks.?

The Court considered the reply to the trademark examination report submitted by the petitioner before the defendant pointed out that there is no reference to the contentions raised therein while passing the impugned order.?This implies a mechanical decision, without proper human scrutiny.

The Petitioner is granted liberty to place a copy of the order passed by this Court before the Respondent for further action in the matter. The Petitioner is granted permission to place on record before the Respondent an additional affidavit along with relevant documents, to support its application for registration of the said trademark, within two weeks of 10th April 2023.?The Registrar is directed to dispose of the said application of the Petitioner, within six weeks from 10th April 2023.

Case: HDFC Bank Limited vs. The Registrar of Trademarks