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Trademark searches may have a bearing on deciding whether a registration for a mark be sought or not. In a case decided in 2009, namely Sterling Machine Tools v. Central Govt. & Ors. 2009 (41) PTC 481 (Del.), Sterling Machine Tools challenged the certificate issued by the Joint Registrar of Trademarks to M/s A,K Enterprises certifying that upon search, no Trademark identical or deceptively similar to the Trademark "BHARAT MARSHAL" was found to be registered
Sterling Machine Tools were applicants under Rule 24(1) of the Trade and Merchandise Marks Rules, 1959 in Form TM-54 in respect of the Trademarks "Bharat" and "Bharat Marshal". Rule 24(1) briefly states that any person can make an application to the Registrar in Form TM-54 to cause a search to be made in respect of the specified goods classified in the fourth schedule and ascertain whether any work or record resembles the said mark. Sub Rule 2 permits the Registrar to take on record any objection in case an incorrect search report was given and when the mark assembles a mark, which was on record but was not disclosed. Objection, however, in this regard has to be filed within three months. Sub Rule 3 permits a person to make an application to the Registrar in Form TM-60 to cause a search to be made and for issue of certificate under Section 45 of the Copyright Act 1957. A certificate is issued by the Registrar when there is no Trade mark identical with or deceptively similar to the artistic work, already registered or mark for which an application for registration was pending. Rule 24(1) uses the word "resembles" and Rule 24(3) used the expression "identical with or deceptively similar to another mark" when it so nearly resembles the other mark so as likely to deceive or confusion. Resemblance of the two marks which is likely to cause confusion is the criterion under Rule 24(3).
In addition a search had also been conducted by them through Form TM-60 for the mark "BHARAT'. The Registrar of Trademarks in response to the three search applications of the petitioner had responded in negative and had informed that similar marks on the register existed. The contradiction between the search reports issued to the two parties was brought forth the Court.
In view of the facts and law in place, the Court held that without going into further details it is left open to the Registrar of Trademarks to go into the question of resemblance and deceptive similarity as used in sub-rule 1 and 3 of the Rule 24 of the Trade and Merchandise Marks Act, 1958. The matter being remanded back, the Court opined that it was apparent that the Registrar had given contradictory reports and the certificate dated 28th July, 1995 issued to AK Enterprise was without examining the earlier marks, which had been registered. In this view, the matter was remanded back to the Registrar of Trademarks to re-examine the same.
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