Registrar's Non-Speaking Order on Phonetic Similarity and Service Overlap Fails Legal Mandate; Matter Remanded for Detailed Scrutiny under Trade Marks Act
In a significant judgment dated October 15, 2026, the Madras High Court quashed the refusal order issued by the Assistant Registrar of Trademarks that denied registration of the word mark "EXPONENT" for scientific and technological services under Class 42. The refusal, originally grounded on alleged phonetic similarity with two earlier marks and similarity of services, was found to be legally infirm due to the absence of proper reasoning and non-compliance with statutory procedural requirements under the Trade Marks Act, 1999.
The appellant, Exponent Energy Private Limited, engaged in electric vehicle battery packs and related technological services, had filed for registration of the mark "EXPONENT" claiming use from April 2021. The Trademark Registry refused registration under Section 11(1) citing two earlier marks: the identical word mark "EXPONENT" held by Exponent, Inc., USA, and the composite mark "EXPONENTIAL TECHNOLOGIES GROUP" by Mouser Electronics, USA. The Registry's order concluded a likelihood of confusion due to phonetic similarity and overlapping services but failed to provide detailed comparative analysis or address the appellant's submissions and statutory requests.
The Court observed that the refusal order was a non-speaking order, lacking the requisite recording of reasons and materials as mandated by Section 18(5) of the Trade Marks Act. The impugned order did not separately consider the cited marks, neglected to examine the nature and scope of the services claimed, and failed to verify the current status of the cited marks, including one still under objection. Moreover, the appellant's reliance on honest concurrent use and special circumstances under Section 12, and its requests for restriction of services and advertisement before acceptance under Sections 18(4) and proviso to Section 20 respectively, were not even addressed.
The Court emphasized that Section 12's exception is integral to Section 11(1) and must be explicitly considered before refusing registration. It also clarified that association of marks under Section 16(1) does not guarantee registration but regulates consequences post-registration. The appellant's offer to amend and restrict the specification to avoid overlap was ignored due to lack of formal application and wording, which the Court permitted to be filed anew.
While setting aside the refusal, the Court refrained from directing immediate registration, noting the necessity for detailed examination of phonetic similarity, nature of services, evidence of use, and likelihood of confusion. The matter was remanded to the Registrar with clear directions to conduct a thorough, reasoned analysis of each cited mark, the applicant's evidence, and statutory requests within three months after affording the appellant a fresh hearing.
This judgment reaffirms the requirement for speaking orders in trademark refusals, ensuring transparency and fairness in administrative decisions, and underscores the careful balancing of competing rights in trademark jurisprudence.
Bottom Line:
Trade Marks - Refusal of registration under Section 11(1) of Trade Marks Act, 1999 must contain reasons as mandated by Section 18(5) - Registrar must separately consider cited marks, compare rival marks and services, verify status of cited marks, and expressly decide applicant's requests under Sections 12, 18(4) and proviso to Section 20 - Non-speaking refusal order liable to be set aside and matter remanded.
Statutory provision(s):
Trade Marks Act, 1999 Sections 11(1), 12, 16(1), 18(4), 18(5), 20 (proviso)
Exponent Energy Private Limited v. Registrar of Trademarks, (Madras) : Law Finder Doc Id # 2998552
