Bombay HC quashes order refusing trademark to Yamaha, directs fresh review

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In a relief to Japanese automobile company Yamaha, the Bombay High Court has set aside an order refusing it a trademark similar to one already registered by Honda Motor Company and directed the registrar, Trade Marks, to adjudicate the issue afresh.

A bench of Justice Manish Pitale on June 13 said while a bare perusal of the two trademarks Yamaha's WR and Honda's WR-V may cause confusion in the minds of the public, the authority ought to have considered the case as exceptional circumstances and issued an advertisement seeking objections from the public before rejecting Yamaha's application.

The court stated the authority, in its "cryptic" order, completely ignored the claim of Yamaha's international reputation while refusing the application and the fact that the company has been using the WR trademark internationally since 1990.

Justice Pitale said the authority could have passed a "detailed and well-reasoned order".

Yamaha Hatsudoki Kabushiki Kaisha had moved the high court, challenging a May 2021 order by the registrar/examiner of Trade Marks, refusing the company's application for registration of trademark 'WR'.

The authority had said that there was a likelihood of confusion in the mind of the public between the trademark of Yamaha, for which registration was sought, and a similar trademark already on the register.

The registrar had cited the trademark of Honda Motor Company Ltd WR-V registered in the same category as a conflicting mark.

Justice Pitale, in the order, said on a bare perusal of the two marks 'WR' of Yamaha and 'WR-V' of Honda it was unable to accept Yamaha's contention that there is no possibility of confusion in the mind of the public.

It is to be noted that the cited mark WR-V is registered in the same class 12, which includes motorcycles, the court said.

"Therefore, invoking Section 11(1) of the Trade Marks Act, on the part of the respondent (Registrar/Examiner of Trade Marks), cannot be said to be misplaced," it noted.

Justice Pitale said Yamaha has failed to demonstrate how this section, which pertains to similarity to a particular trademark leading to confusion in the mind of the public, cannot be invoked.

The court, however, noted that it was incumbent on the authority to consider Yamaha's contention that it has been using the 'WR' trademark internationally since 1990.

"This could be a situation creating special circumstances in favour of the petitioner (Yamaha)," it said.

Justice Pitale said it was not an unknown phenomenon that identical or similar trademarks could exist on the register.

The court quashed the order passed by the registrar/examiner of Trade Marks rejecting Yamaha's application for the 'WR' trademark.

It directed the authority to advertise the application of the petitioner before acceptance as per provisions of the Trade Marks Act and thereafter proceed in accordance with the law.

Under section 20(1) of the Trade Marks Act, the authority can advertise the application seeking objections from the public before accepting the application.

The registrar opposed Yamaha's plea in court and reiterated that its trademark WR was not distinguishable from the cited WR-V, and hence, there was a likelihood of confusion in people's minds.

Yamaha, in its plea, however, contended that its trademark 'WR' was in the context of its motorcycle and the trademark WR-V of the Honda Motor Company Limited was in the context of its car.

It stated that the two have concurrently existed over various international jurisdictions.

The company pointed out that it adopted the trademark 'WR' in August 1990 for two-wheeler and three-wheeler products, parts and accessories, has sold these products in 131 countries since 1999 and was selling them in at least 62 countries.

The company intended to launch its WR range of motorcycles in India and had hence filed its application for registration of the trademark WR in 2018.

It submitted to the court that the registrar passed the order rejecting its application in a mechanical manner without properly applying its mind.