SIDHARTH JINDAL Vs. REGISTRAR, TRADE MARKS

JUDGEMENT

(1.) This appeal is directed against order dtd. 4/11/2024 rejecting Trade Mark Application No.5881755 for registration of the word mark BANGTAN BOYS BTS. The appellant had applied for registration of the above mentioned trade mark on 4/4/2023 on a 'proposed-to-be-used' basis. Examination report dtd. 5/12/2023 was issued in respect thereof raising objections both under Ss. 9 and 11 of the Trade Marks Act, 1999 (the TM Act). The appellant responded thereto on 27/12/2023. The order impugned herein was issued in the above facts and circumstances.

(2.) Learned counsel for the appellant invited my attention to the application and the examination report. He pointed out that the search report annexed to the examination report cites three allegedly conflicting marks. As regards the first cited mark, he submits that the mark is BTS and is applied in relation to goods such as pumps. As regards the second cited mark, he submits that the mark is BTS BIOGAS SRL/GMBH (BTS BIOGAS) and is applied in relation to biogas installations. With regard to the third cited mark, learned counsel submits that the mark is BTS GROUP AB and appears to be applied in relation to advice and consultancy services.

(3.) Learned counsel next submitted that by reply dtd. 27/12/2023, the objections raised in the examination report were dealt with in detail by also citing precedents in support of the contentions of the appellant. He also pointed out that the appellant had applied for and obtained registration of the mark BTS BANGTAN BOYS in Class 9 and had also applied for registration of the mark BANGTAN BOYS BTS in Class 16, and that the said application was accepted for advertisement. By turning to the impugned order, learned counsel submits that the said order refers to the South Korean boy band although no reference was made thereto in the examination report. He also points out that the respondent has recorded that the application is being rejected because it was filed on a proposed-to-be-used basis. Learned counsel contends that such conclusion is in the teeth of Sec. 18 of the TM Act. Learned counsel also relied upon the earlier order of this Court in M/s. EFFRA LIFE SCIENCE, Represented by its Proprietor S.Kannan v. The Registrar of Trade Marks, judgment dtd. 11/3/2025 in CMA(TM)No.3 of 2025.