Metso Outotec Corporation v. the Registrar of Trade Marks

Background

The Bombay High Court on October 6, 2021, set aside and quashed the decisions of the Senior Examiner of Trade Marks refusing the mark “SISUPER”. In Metso Outotec Corporation v. the Registrar of Trade Marks, appeals were preferred before the Bombay High Court from orders passed by the Registrar of Trade Marks in respect of trademark applications for the mark SISUPER and (the “SISUPER marks”) bearing application nos. 4433306 and 4435364 respectively (IR Nos. 1513304 and 1512932). The appellants in this case, Metso Outotec Corporation, registered a trademark ‘SISUPER’ in various jurisdictions such as the EU, Australia, and Singapore. The international application designating India, for the device trademark was designated to India on October 28, 2019. The mark was examined and provisionally refused by the Trade Marks Registry (India) on absolute grounds of refusal. A response to the same was filed on March 11, 2020. On May 22, 2021, the Senior Examiner of Trade marks passed an order refusing the registration of the Mark as per sections 9(1)(a) and (b) of the Trade Marks Act (“The Act”) stating that the mark was devoid of distinctive character and was also descriptive as it refers to the quality of goods and services. The proprietor of SISUPER, Metso Outotec, preferred an appeal under section 91 of the Trade Marks Act, 1999 challenging the decision of the Registrar of Trade Marks.

Judgment & Observations

Following a brief discussion of the order by the Senior Examiner, the judgment refers to the petitioner’s submissions with respect to the mark SISUPER. The Appellant argued that they did not claim exclusivity over the word “SUPER” in their mark.  They iterated the principle that a mark must be viewed as a whole and that carving up of a mark is impermissible. Therefore, neither section 9(1)(a) nor (b) would be applicable. Consequently, the Court discusses what it considers the key issue of the decision which is the glaring lack of reasoning in the decision by the Senior Examiner. The order passed by the Senior Examiner merely refers to section 9(1)(a) and (b) as reasons for refusal of the mark without providing any further analysis. This approach runs afoul of the provisions of Section 18(5) which requires the Registrar to record the reasons for his refusal along with the materials used by him in arriving at his decision. Accordingly, it was held that the applications of Metsuo would be heard by the Registrar afresh.

It is also interesting to note that the court also disallowed the registrar from “defending” his decision as he was not a party to the lis. It was stated that the order must speak for itself.

Opinion*:

Litigants and IP practitioners around the country would appreciate the stand taken by the Court, and with particular reference to the lack of reasoning mentioned in the impugned order of the Registrar. It has been a disappointing recent trend (particular in respect of matters designating India under the Madrid Protocol) where the Registry has consistently passed orders without application of mind. The written reasons for passing these orders are also devoid of any legal reasoning and merely contain the recital of provisions, as has also been noted by the Bombay High Court. Requests for speaking orders are also either inordinately delayed or are ignored by the Registry. A number of matters entrusted to our firm have also been affected by these actions.

This order of the Bombay High Court will likely pave the way for a flood of such appeals against orders of the Registry, especially with relation to IR matters. One would hope that the observations of the Court are taken into account by the Registrar in future matters, so as to ensure that applicable law is correctly applied by the Registrar during the examination of marks or at hearings. The recent pattern of examination by the Senior Examiners tends to leave the impression that they have already made up their minds about the various trademarks listed for hearing even before counsel make their submissions, or file appropriate evidence. There are also a number of cases where settled law is ignored simply because the conflicting marks in question are identical. This approach by the Registry is a cause for grave concern, especially at a time when the government is promoting the speed and efficiency of the Indian IP regime globally. While it is certainly commendable that the Registry has improved the speed at which applications are examined, the quality of examination is often found to be severely lacking.

The Registry would therefore do well to sensitize its officers on the appropriate points of law applicable to trademarks, so as to ensure that orders which are contrary to established law are passed. A mechanism should also be evolved to hold officers accountable for their orders, particularly when orders are passed without any cogent reasoning as was done in the SISUPER case. This would be an extremely positive change and would ensure that practitioners and rights holders are not forced to approach the higher judiciary to have basic common-sense orders passed.

* The summary of the case was authored by Aashray Suresh, an assessment intern at the firm. The opinion section of the piece has been authored by Nikhil Srivastava (Senior Associate) and Raja Selvam (Managing Attorney).