In this case, the petitioner, Nitori Holdings Co. Ltd., challenged the order
of the Senior Examiner of Trade Marks, Mumbai, dated September 2, 2021. The
impugned order held that the petitioner's trademark was not registerable. The
petitioner contended that the order lacked reasons and failed to provide a
proper analysis of their mark's distinctiveness. The court was tasked with
reviewing the order and determining whether it should be set aside.
Case: K.S. Jadhav v. The Senior Examiner of Trade Marks, Mumbai
Court: High Court of Judicature at Bombay
Date of Decision: June 9, 2023
The court addressed the following legal issue in its decision:
Rule of Law:
- Whether the order of the Senior Examiner of Trade Marks, Mumbai,
refusing to register the petitioner's mark was valid and should be upheld?
The relevant legal principle applicable to the case is the Trade Marks Act,
1999. The court must consider whether the petitioner's mark satisfies the
requirements for registration under this Act. Specifically, Section 9(1)(a) of
the Trade Marks Act is mentioned, which deals with the distinctiveness of a
Analysis and Reasoning:
The court analyzed the impugned order and found that the Senior Examiner of
Trade Marks had not provided adequate reasoning. The order merely cited Section
9(1)(a) of the Trade Marks Act without a detailed analysis. The court noted that
there was no consideration of the petitioner's submissions or the material on
The only reason mentioned in the order was a general observation that the mark
lacked distinctiveness and failed to differentiate the goods or services of the
petitioner from others. The court concluded that the impugned order should be
set aside and remanded back to the Senior Examiner for a proper consideration of
the petitioner's submissions and material on record.
Holding and Decision:
The court held the following:
The Senior Examiner's order dated September 2, 2021, is quashed and set aside.
The matter is remanded back to the Senior Examiner for a hearing of the
petitioner's case and a proper consideration of their submissions and material
The Senior Examiner is directed to pass a reasoned order within eight weeks from
the date of this order.
The Commercial Miscellaneous Petition is disposed of accordingly.
Implications and Significance:
The court's decision to set aside the impugned order and remand the case back to
The examiner has implications for the petitioner and their ability to register
their trademark. It highlights the importance of providing proper reasoning and
considering the submissions and evidence presented by applicants. The decision
emphasizes the need for a thorough examination process in trademark registration
and ensures that the petitioner's rights are protected.
In the case of K.S. Jadhav v. The Senior Examiner of Trade Marks
the High Court of Judicature at Bombay set aside the Senior Examiner's order
refusing to register the petitioner's mark. The court found that the order
lacked proper reasoning and failed to consider the petitioner's submissions and
evidence. The case highlights the importance of a thorough examination process
in trademark registration and ensures that the petitioner's rights are