Facts of the Case

The Appellant, STP Limited, filed a trademark application for “ShaliSBR Latex (Device)” under Class 19 for building materials and related goods.

The application was refused by the Registrar of Trade Marks through an order dated 3 January 2019 on the ground that the mark was objectionable under Sections 9 and 11 of the Trade Marks Act, 1999.

The refusal was based on alleged similarity with earlier cited marks, including “SHALITEX”, “ShaliBar”, “ShaliRx”, and “ShaliTex Expansion Joint Board RB”.

However, the Appellant contended that most of the cited marks already belonged to them, and even the remaining cited mark was from their earlier corporate identity.

Issues Involved

  1. Whether the trademark “ShaliSBR Latex” is liable to be refused under Sections 9 and 11 of the Trade Marks Act, 1999.
  2. Whether refusal is justified when the cited conflicting marks belong to the same applicant.
  3. Whether a cryptic, non-reasoned order of refusal is legally sustainable.

Petitioner’s Arguments (Appellant)

  • The refusal order was non-speaking and cryptic, merely citing Sections 9 and 11 without reasoning.
  • Three out of four cited trademarks were already registered in the name of the Appellant.
  • The remaining cited mark “SHALITEX” was registered under the Appellant’s earlier corporate name.
  • The Appellant had extensive prior use and numerous registrations of trademarks with the prefix “SHALI”.
  • Therefore, no likelihood of confusion or conflict existed.

Respondent’s Arguments

  • The Respondent (Registrar of Trade Marks) relied on objections under Sections 9 and 11.
  • It was argued that the applied mark bore similarity with earlier cited marks, leading to possible confusion.

Court Findings / Order

The Delhi High Court held:

  • The impugned order was cryptic and unsustainable, as it lacked proper reasoning.
  • All cited marks either belonged to the Appellant or were linked to its earlier identity.
  • The Appellant had substantial registrations and prior usage of the “SHALI” prefix.
  • Therefore, refusal under Sections 9 and 11 was unjustified.

Final Order:

  • The refusal order dated 3 January 2019 was set aside.
  • The trademark application was directed to proceed for advertisement in the Trademark Journal within three months.
  • The Court clarified that opposition proceedings, if any, would remain unaffected. 

Important Clarifications by the Court

  • A refusal order must be reasoned and speaking, not mechanical.
  • When cited marks belong to the same entity, Section 11 objections lose significance.
  • Prior registrations and extensive use play a crucial role in trademark examination.
  • Advertisement does not guarantee registration; opposition rights remain intact. 

Link to download the order -  https://delhihighcourt.nic.in/app/showFileJudgment/PMS13092023CAT462021_153813.pdf

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