Colorbar Cosmetics Pvt. Ltd. v. Registrar of Trademarks

1. This appeal was originally filed under Section 91 of the Trademarks Act, 1999 (“1999 Act”) before the Intellectual Property Appellate Board (IPAB). Subsequently, consequent on the abolition of the IPAB and the constitution of IP Division in this Court, the appeal has been renumbered CA (COMM.IPD-TM) 3/2021.

2. Notice was issued, in these proceedings, by the learned IPAB as far back as on 9th February, 2021. On 20th September, 2021, a further and final opportunity of three weeks was granted to the respondent to file a reply to this appeal. That has not been done. The matter was directed to be listed for disposal today. 2021:DHC:3509

3. The respondent has not condescended to file any reply to the appeal. The issue in controversy is elementary. I have, therefore, heard learned Counsel for the parties and proceeded to dispose of the appeal.

4. The appeal challenges the order dated 21st May, 2020, passed by the Senior Examiner of Trade Marks in the Trade Marks Registry, whereby the application, for registration of the “ ” mark of the appellant, has been rejected.

5. The appellant claims to have been incorporated in 2004 and to be dealing in cosmetics. It claims to have coined the mark “COLORBAR” in 2004 and to be the proprietor of more than 250 registered trademarks, having “COLORBAR” as its prefix. Owing to the popularity of the “COLORBAR” brand, it is further asserted, in the appeal, that the public commonly refers to the appellant with the acronym “CB”.

6. The appellant contacted a designer of marks, who developed the logo, for use by the appellant as its mark. The appellant claims to be using the said mark since 28th September, 2017, and that its products are sold extensively, throughout the country, under the mark “ ”.

7. On 10th January, 2018, the appellant applied for registration of the mark, claiming user since 28th September, 2017.

8. Said application has been rejected by the impugned order, on the ground that it is deceptively similar to another mark “cited in examination report “ “CB” vide application no. 2953262 with similar classification of goods”, which was registered on 29th April, 2005 and is valid till 29th April, 2025. On the ground of deceptive similarity with the said “CB” marks, registered vide Application No. 2953282 on 29th April, 2015, therefore, the appellant’s application for registration of its mark has been rejected.

9. Ms. Rajeshwari, learned Counsel for the appellant, submits that the mark, which the appellant desired to register, could not, by any stretch of imagination, be treated as visually or otherwise similar, in any way, to the marks registered vide Application NO. 2953262 on 29th April, 2015. The “CB” marks, which was registered with effect from 29th April, 2015 consequent on Application NO. 2953262, it may be noted, is.

10. It is clear, on a bare comparison, that there is no similarity whatsoever, between the mark, which the appellant seeks to register, and the “ ” mark, which stands registered with effect from 29th April, 2015 consequent on Application No. 2953262. Neither is there any similarity with the mark “ ”, objection against which was taken by the Registrar in the Examination Report, which, besides, is stated to be a mark of the appellant itself. This may be shown, by a tabular comparison of the marks thus: Appellant’s mark Allegedly conflicting marks

11. It requires exercise of particularly fertile imaginative skills to read the mark, of which the appellant seeks registration, as “CB”. The mark registered under Application No. 2953262 on the other hand, is clearly discernable as “CB”. There is no visual or other similarity, therefore, whatsoever, between the two marks.

12. Be it noted, the appellant does not seek registration of the word mark “CB” vide this mark.

13. In view thereof, I am unable to sustain the finding of the Senior Examiner of Trade Marks in the impugned order dated 21st May, 2020, to the effect that the appellant is not entitled to register its mark as being deceptively similar to the “CB” mark registered with effect from 29th April, 2015 under Application No. 2953262.

14. Resultantly, the impugned order is set aside. The appellant would be entitled, consequently, to registration of its mark if there is no other legal impediment in that regard.

15. The Registrar of Trade Marks is directed to consider the appellant’s application for registration of mark de novo, in accordance with the above findings.