M/s Ornate Jewels V/s Wow Overseas Private Limited [S.B. Civil Miscellaneous Appeal No. 1570/2021]
The Rajasthan High Court, Jaipur Bench Ornate Jewels response before the registrar of trademarks estopped them from taking a contradictory position.
The bench Justice Sudesh Bansal upheld the Trial Court’s decision, denying the plaintiff’s claim for a temporary injunction. The crux of their reasoning hinged upon the plaintiff’s response to the Registrar of Trademarks’ objection regarding the similarity of trademarks. The High Court concurred with the Trial Court’s observation that the plaintiff’s response before the Registrar of Trademarks estopped them from taking a contradictory position now.
The plaintiff asserted its use of the trademark “ORNATE JEWELS” for Gold Diamond, Precious and Semi-Precious Jewelry since 2012. The plaintiff also held a registered trademark with a logo in Class 35 before the Registrar of Trademarks in 2018. Conversely, the defendant argued that it had been using the same trademark, “ORNATE JEWELS,” in the same industry but with a distinct logo. The defendant’s trademark had been registered with the Registrar of Trademarks in Class 14 since 2016.
The pivotal moment in this legal battle occurred when the Registrar of Trademarks raised an objection to the plaintiff’s registration application. The objection was grounded in the fact that the defendant had already registered a trademark with a similar name in 2016. The plaintiff, however, countered this objection by asserting that the defendant’s trademark was entirely different and dissimilar, bearing Registration No. 3256088.
The case underscores the importance of consistency in legal proceedings, particularly in matters related to trademark registration and protection. When a party makes a statement before a competent authority, such as the Registrar of Trademarks, it carries a significant legal weight. In this instance, the plaintiff’s initial assertion that the defendant’s trademark was dissimilar, made during the registration process, formed the basis for their subsequent legal challenges.
The doctrine of estoppel is central to this case. Estoppel prevents a party from adopting a position that contradicts their prior statements or conduct when it would be unjust or inequitable to do so. The plaintiff’s assertion of dissimilarity before the Registrar of Trademarks created a legitimate expectation that they would maintain this position. To allow the plaintiff to subsequently claim similarity would not only undermine the integrity of the registration process but also lead to unjust results for the defendant.
In conclusion, this case serves as a poignant reminder of the binding effect of statements made before the Registrar of Trademarks in response to examination reports. Parties must exercise caution and consistency in their statements during trademark registration, as these statements can significantly impact their legal positions in subsequent disputes.
