Merck KGaA vs Registrar of Trade Marks — Bombay HC (2025) — LawSathi Research

Merck KGaA vs Registrar of Trade Marks — Bombay HC (2025) — LawSathi Research

What the court decided

AI extract

Outcome

Orders dated 28th June, 2021 and 3rd March, 2023 quashed and set aside; Application No. 4551559 in Class - 1 remanded to the Registrar of Trade Marks for fresh consideration by a well-reasoned speaking order, expeditiously.

Issue for consideration

Whether the order dated 28th June, 2021 refusing registration of the trade mark is vitiated as a non-reasoned, non-speaking, cryptic order passed with mere reference to statutory provisions and without consideration of the Petitioner's submissions, including its response dated 18th September, 2020 regarding registration of the mark in other countries. +1 more

Court's answer

The order dated 28th June, 2021 of the Registrar of Trade Marks is a non-reasoned, non-speaking order with mere reference to statutory provisions.

Ratio / Principle

The registration was refused by a cryptic order without any discussion of the submissions canvassed, and the impugned order dated 28th June, 2021 does not indicate any consideration of the Petitioner's response dated 18th September, 2020 pointing out that the subject mark has been granted registration in various other countries.

Key takeaways

Without examining the merits of the matter, the orders dated 28th June, 2021 and 3rd March, 2023 are quashed and set aside.ratio¶21
Application No. 4551559 in Class - 1 is remanded to the file of the Registrar for consideration afresh; a well-reasoned speaking order is expected, taking into consideration the submissions canvassed by the Petitioner, and the Registrar is expected to consider the matter expeditiously given the refusal was of the year 2021.ratio¶22

Detailed headnote1 paragraphs

Trade Marks - Refusal of registration - Natural justice / reasoned order - Registrar of Trade Marks refused registration of Application No. 4551559 (Class - 1) by order dated 28th June, 2021; review sought was rejected by order dated 3rd March, 2023. Bombay High Court (Commercial Division), Deshmukh J., found the order dated 28th June, 2021 to be a non-reasoned, non-speaking, cryptic order with mere reference to statutory provisions, passed without discussion of the submissions canvassed at the hearing of objections and without consideration of the Petitioner's response dated 18th September, 2020 that the subject mark had been granted registration in various other countries; the Petitioner also contended the order under review was never communicated to it. Without examining the merits, the Court quashed and set aside the orders dated 28th June, 2021 and 3rd March, 2023 and remanded Application No. 4551559 to the Registrar for consideration afresh, expecting a well-reasoned speaking order taking into account the Petitioner's submissions, to be passed expeditiously. Petition disposed of accordingly.

2025:BHC-OS:962

904 COMMP-58-2025.doc

IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION

IN ITS COMMERCIAL DIVISION

COMMERCIAL MISC. PETITION NO. 58 OF 2025

Merck KGaA ...Petitioner Versus

Registrar of Trade Marks ...Respondent

Mr. Vinod Bhagat, Ms. Ishita Maheshwari, Ms. Sonam Pradhan, Ms. Rashi Thakur i/b Vinod Bhagat for Petitioner.

Mr. Vinit Jain, Mr. Ashutosh Mishra for Respondent No. 1.

Mr. Pranjal Sharma, Examiner from Registrar of Trade Mark.

——————

Coram : Sharmila U. Deshmukh, J. Date : 2^nd July, 2025.

P. C. :

1. The present Petition challenges the order dated 3^rd March, 2023 passed in the Review Petition and original order dated 28^th June, 2021 passed by the Respondent.

2. The contention of Mr. Bhagat, learned counsel appearing for Petitioner is that as far as the order under review is concerned, the same was never communicated to the Petitioner. He would further submit that order of 28^th June, 2021 does not deal with extensive submissions canvassed by Petitioner at the time of hearing of objection.

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904 COMMP-58-2025.doc

3. Perusal of order dated 28^th June, 2021 indicates that the same is non-reasoned, non-speaking order with mere reference to statutory provisions. The registration has been refused by cryptic order without any discussion on the submissions which were canvassed. By response dated 18^th September, 2020, it was specifically pointed out to the Registrar of Trade Marks that the subject mark has been granted registration in various other countries. Perusal of the impugned order dated 28^th June, 2021 does not indicate any consideration of the same.

4. Confronted with this position, learned counsel appearing for Petitioner, on instructions of Examiner, who is present in Court submits that orders dated 28^th June, 2021 as well as 3^rd March, 2023 be quashed and set aside and matter be remanded for consideration afresh.

5. In light of above without examining the merits of matter, orders of 28^th June, 2021 and 3^rd March, 2023 are hereby quashed and set aside.

6. Application No. 4551559 in Class - 1 is remanded to the file of the Registrar for consideration afresh. It is expected that wellreasoned speaking order will be passed on the said Application by taking into consideration the submissions canvassed by the Petitioner. Considering the refusal was of the year 2021, it is expected that Registrar will consider the matter expeditiously.

7. Petition is disposed of in the above terms.

[Sharmila U. Deshmukh, J.]

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Sairaj