In relief to the Japanese automotive company Yamaha, Bombay’s Alta court has put aside an order that refused a brand similar to one already recorded by Honda Motor Company and directed the Chancellor, Marks, to judge the question of again.A bench of Justice Manish Pital on June 13 said that while a naked reading of the two brands – WR of Yamaha and WR -V of Honda – can cause confusion in the minds of the public, the authority should have taken into consideration the case as exceptional circumstances and has issued an advertisement in search of public objections before refusing the Yamaha application.
The Court said that the authority, in its “cryptic” order, has completely ignored the claim of Yamaha’s international reputation, refusing the demand and fact that the company has used the WR brand internationally since 1990.The Pital judge said that the authority could have approved a “detailed and well -seasoned order”.
Yamaha Hatsudoki Kabusushiki Kaisha had moved the high court, challenging an order of May 2021 from the chancellor/examiner of the brands, refusing the company’s demand for the registration of the “WR” brand.
The authority had said that there was a probability of confusion in the audience’s mind between the Yamaha brand, for which the registration and a similar brand was sought already in the register.
The Chancellor had mentioned the Honda Motor Company Ltd – WR -V – registered brand – recorded in the same category as a conflict brand.The Pital judge, in order, said on a naked reading of the two signs – “WR” by Yamaha and “WR -V” of Honda – was unable to accept Yamaha’s thesis that there is no possibility of confusion in the audience’s mind.
It should be noted that the aforementioned Mark WR-V is recorded in the same class 12, which includes motorcycles, said the court.
“Therefore, by invoking section 11 (1) of the trademark law, by the defendant (registering/examiner of the brands), it cannot be said that it is out of place,” he observed.
The Pital judge said that Yamaha has not shown how this section, which concerns the similarity with a particular brand that leads to confusion in the audience’s mind, cannot be invoked.
The Court, however, observed that it was operational for the authority to consider Yamaha’s thesis that used the “WR” brand internationally since 1990.
“This could be a situation that creates special circumstances in favor of the signatory (Yamaha),” he said.
The pital judge said that it was not an unknown phenomenon that identical or similar brands could exist in the register.
The Court canceled the order issued by the chancellor/examiner of the brands that rejects Yamaha’s demand for the “WR” brand.
He ordered the authority to advertise the application of the signatory before acceptance based on the provisions of the trademark law and subsequently proceed in accordance with the law.
Pursuant to section 20 (1) of the trademark law, the authority can advertise the application in search of objections from the public before accepting the application.
The chancellor opposed the Yamaha request in court and reiterated that his WR brand was not distinguishable from the quoted WR-V, and therefore there was a probability of confusion in people’s minds.
In his reason, Yamaha, however, claimed that his “WR” brand was in the context of his bike and the WR-V brand of the Honda Motor Company Limited was in the context of his car.
He said the two existed at the same time on various international jurisdictions.
The company stressed that it adopted the “WR” brand in August 1990 for products, parts and accessories on two wheels and three wheels, sold these products in 131 countries since 1999 and sold them in at least 62 countries.
The company intended to launch its WR range of motorcycles in India and had therefore submitted its application for registration of the WR brand in 2018.
He presented to the Court that the chancellor approved the order by rejecting his application mechanically without correctly applying his mind.
