In a recent ruling Yamaha Hatsudoki Kabushiki Kaisha vs The Registrar of Trade Marks, Comm (Misc) 650 of 2022, the Bombay High Court has set aside the order of the Registrar refusing Yamaha’s ‘WR’ mark based on Honda Motor Company Ltd.’s “WR-V” trademark registered in class 12. The Court while setting aside the order emphasized a) the importance of global brand reputation b) coexistence in international markets c) obligation of the Trade Marks Registry to provide reasoned decisions and concluded that all these constitute exceptional circumstances under the proviso to Section 20(1) of the Trade Marks Act, 1999.

Brief Facts:

1. Yamaha Hatsudoki Kabushiki Kaisha, (Yamaha) global leaders in motorcycles sought to register the trademark ‘WR’ in class 12 in India in 2018.
2. The Registrar raised objections under Section 11 of the Trade Marks Act (relative grounds for refusal) based on Honda Motor Company Ltd.’s “WR-V” trademark registered in class 12 as a conflicting mark.
3. Yamaha argued that “WR” and “WR‑V” have coexisted globally without confusion, noting the “WR” mark is registered in multiple jurisdictions and has been used internationally since August 1990 for two- and three-wheelers and auto parts across 131 countries.
4. Despite the evidence on record, the Registrar rejected the application in May 2021, citing Honda’s registered ‘WR V’ mark on the grounds that ‘WR’ and ‘WR V’ were deceptively similar and likely to cause consumer confusion.
5. Yamaha challenged the refusal before the Bombay High Court, asserting that the rejection was unreasoned and failed to consider key facts.

What Did the Court Rule?

1. Different product categories: The Bombay High Court observed that a cursory comparison of the marks ‘WR’ and ‘WR V’ could spark confusion, since both marks fall in Class 12. However, the Registrar’s refusal failed to consider Yamaha’s arguments particularly its transborder reputation and distinct product categories. The Court observed that Yamaha uses “WR” for motorcycles, while Honda uses “WR-V” for cars.
2. Cryptic Orders Are Unacceptable: The Court held that the Registrar’s order was cryptic and lacked reasoning. The order was issued mechanically, without analysis or regard for legal safeguards and precedents.
3. Registrar’s Duty to Consider Section 20(1): The Court highlighted the procedural options under Section 20 of the Trade Marks Act regarding advertisement of marks before acceptance. The Court emphasized that the Registrar has discretion to advertise a mark before acceptance under exceptional circumstances, particularly when Section 11(1) applies. The Court concluded that Yamaha had made a sufficient case for the Registrar to have exercised discretion under the proviso to Section 20(1) to advertise the application before acceptance, given the international reputation, prior use, and exceptional circumstances. The Court set aside the order and directed publication of the mark.

Key learnings from the Judgment

1. The proviso to sub-section (1) of Section 20 allows the Registrar to advertise a trademark application before acceptance in ‘exceptional circumstances’, particularly when sections 9(1) and 11(1) and (2) apply.
2. The ‘exceptional circumstances’ can be co-existence of marks in other jurisdictions, registrations obtained in other countries, transborder reputation of the mark and others.
3. The Registrar must maintain the purity of the Register by not mechanically advertising all applications before acceptance. Marks that satisfy the requirements outlined in the proviso to Section 20(1) are to be advertised prior to acceptance.

Our Comment

The Trade Marks Registry must now consider and assess whether “exceptional circumstances” under the proviso to Section 20(1) are established based on evidence provided by the applicant. This evidence may include the applicant’s transborder reputation, coexistence in other jurisdictions, and other relevant factors, even if objections arise under Section 11. Future decisions are expected to involve greater scrutiny of evidence and facts on record, including foreign use and online presence, rather than blanket refusals in cases of prior cited identical or similar marks. The case decision may help global brand owners who at times delay the filing of applications in India and a local company in the interim applies for the mark which becomes ground of objection under Section 11 of the Act, and the Registrar would refuse such application.