Taking a look at the BHC’s judgement in Yamaha v. Registrar of Trademarks, Anureet Kaur explains how the Registrar erred in non application of Section 20(1) of the Trademark Act. Anureet is a second-year B.A. LL.B. (Hons.) student at Rajiv Gandhi National University of Law, Punjab. She has a keen interest in Intellectual Property Law and enjoys exploring the intersection of legal principles with innovation and creativity through research and writing. Her previous posts can be accessed here.
Trademark Tussle on Two Wheels: Yamaha v. Trademark Registrar
By Anureet Kaur
What happens when a global automotive giant knocks on India’s Trademark Registry’s doors and is then quickly turned away on the grounds of similarity? In Yamaha Hatsudoki Kabushiki Kaisha v. Registrar of Trade Marks, the Bombay High Court (BHC) assessed whether the trademark registrar was justified in rejecting Yamaha’s WR mark application based on the reason that it was similar to Honda’s WR-V mark, under Section 11(1).
On the face of it, the issue might look very simple- Yamaha wanted to register their mark ‘WR’ for its motorcycles under class 12, however, the Registrar rejected the application stating that Honda has already registered ‘WR-V’ under the same class. However, there is a twist- Yamaha argued not just distinctiveness but decades of global use, presence across 60+ countries, a Red Dot Design Award, and most importantly widespread brand recognition.
Consequently, in the appeal, Justice Manish Pitale of BHC ordered the Trademark Registrar to advertise the mark before acceptance by highlighting procedural fairness under Section 20 of the Trade Marks Act, 1999 (hereinafter ‘Act’).
In this post, I critically analyze the BHC’s SB order by looking at three key questions:
- Firstly, was the Registrar really wrong in refusing the mark under Section 11(1), especially when WR and WR-V coexist in the same class?
- Secondly, does Yamaha’s mark really deserve an advertisement opportunity?
- And finally, was the Court too lenient or too cautious?
Before answering these questions, I would like to provide a little more background on the present case.
Background
In the present appeal, Yamaha highlighted that it adopted the mark ‘WR’ as early as 1990, with its products sold in over 60 countries and registered in multiple international jurisdictions, including the US, Japan, and others. Yamaha also argued that the goodwill and reputation associated with WR has reached India over a period of time. On these points, Yamaha argued that the impugned order of the respondent failed to consider the documentary material that it had submitted. It also pointed out that the Registrar failed to give any reasoning and just referred to Section 11(1) of the Act to refuse the registration.
On one hand, the Court accepted that Section 11(1) has been rightly invoked by the respondent; however, it pointed out that the Registrar had a statutory option under the proviso to Section 20(1) to advertise the mark before acceptance, especially when exceptional circumstances exist. Thus, the Court set aside the refusal and directed the respondent to advertise the application within two weeks as per the concerned law (please refer to paras 25 and 26 of the order).
Now, let’s delve into the intricacies involved in the first question.
Was the Registrar Really Wrong?
The answer is ‘Yes’ but not because Section 11(1) was wrongly invoked, but because the Registrar didn’t go beyond the similarity assessment. First things first, Yamaha’s WR and Honda’s WR-V are similar and fall within the same class 12 and thus could lead to a likelihood of confusion in the mind of the public. However, it is important to note that as per London Rubber Co. Ltd. v. Durex Products (Supreme Court, 1963), it is not uncommon for even identical or similar trademarks to co-exist on the register. Thus, the problem lies in the fact that the Registrar did not consider the above in mind. Furthermore, (as pointed out by the BHC), the rejection order does not provide proper reasoning, does not mention the evidence Yamaha submitted, and even fails to consider whether the case deserved to go the Section 20 route.
The aspect of transborder reputation was also not taken into consideration by the Registrar (to better understand the concept of transborder reputation in trademark law, you can refer to earlier posts at Spicy IP- here, here, here, and here). In the present case, Yamaha was able to show global use of the WR mark since the early 90s, digital presence in India, and even knowledge of the same among the Indian audience. Furthermore, it did not try to rebrand or rebadge its WR mark (as done by Toyota in the Vellfire- Alphard case) thus pointing towards its bona fide intent.
In these cases, where transborder reputation is clearly established, a question arises- Is the Registrar obliged to take transborder reputation into account while examining trademark prosecution/registration applications? Usually, we have seen reliance on the transborder reputation of a mark by the Courts during infringement proceedings (see here and here), but can the Registry consider it while granting a registration? Logically, the answer should be yes, as it assists in establishing goodwill and distinctiveness of a subject mark (presumably this factor was left out in the TikTok case); however, I do not have a definitive answer to this and would appreciate any insights or thoughts from readers on this aspect.
This discussion now brings us to an important concern that the Court even acknowledged- the use of Section 20(1) proviso which allows advertisement before acceptance. Undoubtedly, the Registrar invoked Section 11(1) as confusion was a valid concern but he failed to refer to Section 20(1). So, now it is time to answer the second question:
Does Yamaha really deserve an advertisement opportunity?
To answer this, we need to look at Section 20(1) of the Act that governs the advertisement of applications for registration of trademarks. Section 20(1) mandates that once a trademark application is accepted, it needs to be advertised in the prescribed manner. However, the proviso to Section 20(1) allows the Registrar to advertise an application before accepting it in specific cases, such as when Section 11(1) or (2) applies. This is because in case there is any opposition to the mark, the same can be amended, and then it can be advertised again (see Delhi High Court’s decision in Jai Bhagwan Gupta v. Registrar of Trade Marks). It also gives the Registrar the discretion to do so in any other case where he believes that “exceptional circumstances” make it appropriate to advertise the application before acceptance.
But what do “exceptional circumstances” even mean?
The Act doesn’t define them and there is limited clarity from the courts as well. However, registry practice suggests that where there is bona fide commercial adoption and use of the mark then the pre-acceptance advertisement may be justified. Yamaha’s WR mark could have reasonably qualified under this. Thus, denying it the opportunity without fully assessing these factors feels like a missed step.
In Yamaha’s case, the Court clarified that once the Registrar forms an opinion under Section 11(1), he is legally expected to consider whether the application should be advertised before acceptance under this proviso or not. A failure on his part to exercise this discretion amounts to non-application of mind as held by the Delhi HC in the case of Jai Bhagwan Gupta v. Registrar of Trade Marks.
As mentioned while dealing with the first question, Yamaha successfully placed on record supporting documents to establish its transborder reputation, including international registrations and evidence of usage across jurisdictions, and even it was able to demonstrate that the mark is known to the Indian audience but the Registrar rather than evaluating these factors and referring to Section 20(1) chose to reject the application. Thus, the Registrar’s failure to look at this aspect deprived Yamaha of having its application tested through the statutory process.
So, the answer to the second question is- Yes, Yamaha deserved an advertisement opportunity.
Final Thoughts- was the Court too lenient or just rightly cautious?
Here, the Court allowed the mark to be advertised. However, this also raises a concern- should the Court have preferred sending this issue for reconsideration back to the Registrar? In my opinion, the Registrar had already ignored key evidence and even skipped applying Section 20, thus the better approach should have been the one that has been presently taken by the Court.
Yet, at the same time, we can’t ignore the fact that advertising more marks before acceptance would lead to more burden on third parties as they now have to keep watch, oppose, and even fight long legal battles. This is probably one of the reasons why Section 20 says that such advertisements should happen only in “exceptional circumstances”. The idea is to ensure that this route isn’t misused or treated as a shortcut and is rather reserved for cases that genuinely fall within this criteria, such as Yamaha’s case. However, it also can’t be ignored that there is a lack of clarity on what exactly counts as “exceptional”, thus, it would be helpful if the courts laid down proper guidance on this.
In the end, I would conclude by saying that when provisions like Section 20 exist, the right approach should be to apply those provisions and not bypass them.
So, to answer the last question, the Court was not lenient and was sound in its reasoning.
