Stp Limited vs. Registrar Of Trade Marks, New Delhi

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* IN THE HIGH COURT OF DELHI AT NEW DELHI
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Reserved on: 11 September, 2023
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Date of decision: 13 September, 2023

JUDGMENT
Prathiba M. Singh, J.
1. This hearing has been done through hybrid mode.
2. The present appeal has been filed by the Appellant - STP Limited
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seeking setting aside of the impugned order dated 31 December, 2018
passed by the Hearing Officer (Senior Examiner of Trade Marks) whereby
the Appellant’s application has been refused for registration. The details of
the application are as under:
Signature Not Verified
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:13.09.2023
15:30:28
C.A.(COMM.IPD-TM) 161/2021 Page 1 of 4

3. Mr Shivendra Pratap Singh, ld. Counsel for the Appellant submits
that the impugned order merely rejects the application on the ground that it
is objectionable under Section 9/11 of the Trade Marks Act, 1999. However,
as per the Examination Report, there was only a relative ground of objection
under Section 11 and no objection was raised under Section 9.
4. Ld. Counsel for the Appellant further submits that in the Examination
Report, objection was raised under Section 11 of the Trade Marks Act, 1999
that the applied trademark ‘SHALIMARK’ bears identity or similarity with
the earlier marks cited. The details of the said marks are as under:
(i) ‘SHALIMAR’ bearing no. 1015144 in class 19 in the name of
Shalimar Colours (India) Pvt. Ltd.
(ii) ‘SHALIMAR’ bearing no. 1321779 in class 19 in the name of
Mr. Sunil Kumar Agarwal
(iii) ‘SHALIMAR’ bearing no. 1729841 in class 19 in the name of
S. Raghbir Singh
5. Insofar as the marks bearing no. 1321779 and 1729841 are concerned,
Signature Not Verified
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:13.09.2023
15:30:28
C.A.(COMM.IPD-TM) 161/2021 Page 2 of 4

ld. Counsel for Appellant submits that they are abandoned.
6. Ld . Counsel for the Appellant also brings to the notice of this Court
the substantial number of registrations with the prefix ‘SHALI’ which has
been registered in the name of the Appellant herein.
7. The Court has heard ld. Counsels for the parties and perused the
record.
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8. A perusal of the impugned order would show that the order dated 31
December, 2018 passed by the Hearing Officer (Senior Examiner of Trade
Marks) is completely cryptic and merely rejects the application on the
ground that it is objectionable under Section 9/11 of the Trade Marks Act,
1999.. The relevant part of the impugned order reads as under:
“ The trade mark applied for is objectionable under*
Section 9/11 of the Act. The application is accordingly
refused.”
9. A perusal of the record would show that the Appellant has more than
a hundred registrations for several marks with the ‘SHALI’ prefix such as
‘SHALI PLASTIC’, ‘SHALIGRIP’, ‘SHALIDECK’, etc. The word mark
‘SHALI’ is also registered in favour of the Appellant. The details of the
registrations which are granted in favour of the Appellant are placed on
record.
10. The marks cited in the examination report bearing no. 1321779 and
1729841 have already been abandoned. The third cited mark bearing no.
1015144 is SHALIMAR of Shalimar Colours India Pvt. Ltd. which is in
respect of building material including cements, clinker, pipes (not of metal)
etc. On the other hand, the Appellant’s trade mark application is for the
mark SHALIMARK for building material (non-metallic); Resin based
Signature Not Verified
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:13.09.2023
15:30:28
C.A.(COMM.IPD-TM) 161/2021 Page 3 of 4

thermoplastic road marking compound; water based road marking
compound.
11. Since, building material is common to the cited mark bearing no.
1015144 and to the applied mark, ld. counsel for the Appellant submits that
he is willing to delete ‘building material (non-metallic)’ from the list of
goods.
12. In view thereof, Appellant’s trade mark application bearing no.
2873856 for the mark ‘SHALIMARK’ shall be restricted to the following
goods:
Resin based thermoplastic road marking
compound; water based road marking compound.
13. Accordingly, the Appellant’s application no. 2873856 shall proceed
for advertisement for the aforementioned goods in class 19 in the trade mark
journal. Let the same be advertised within three months.
14. It is made clear that the present order would have no impact on
opposition proceedings, if any, which may be filed against the application.
15. Accordingly, this appeal along with all pending applications is
allowed in the above terms.
16. The Registry is directed to supply a copy of the present order to the
office of the Controller General of Patents, Designs & Trademarks of India
on the e-mail- llc-ipo@gov.in for compliance of this order.
PRATHIBA M. SINGH
JUDGE
SEPTEMBER 13, 2023
Rahul/kt
Signature Not Verified
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:13.09.2023
15:30:28
C.A.(COMM.IPD-TM) 161/2021 Page 4 of 4