Authority: High Court of Judicature at Madras

Order Date: 15-10-2026

Case Overview

  • Parties: Exponent Energy Private Limited (appellant) represented by Director Arun Vinayak Srinivasan vs. The Registrar of Trademarks, Trademarks Registry, Chennai (respondent).
  • Application: Trademark Application No.5432621 filed on 02‑05‑2022 for the word mark “EXPONENT” in Class 42, claiming use from 08‑04‑2021 for scientific and technological services, research and design, industrial analysis and research, industrial design, and vehicle design services.
  • Earlier Marks Cited: (i) “EXPONENT”, Application No.3595698, Exponent, Inc., USA, covering engineering and scientific research and consultancy services – status “Protection Granted”. (ii) “EXPONENTIAL TECHNOLOGIES GROUP”, Application No.5382808, Mouser Electronics, Inc., USA, covering electronic component design, testing and allied technological services – status “Objected”.
  • Examination Report dated 20‑07‑2022 raised objection under Section 11(1) of the Trade Marks Act, 1999 on phonetic similarity and likelihood of confusion.
  • Appellant’s Reply: Affidavit of use and written submissions dated 28‑09‑2022, arguing distinguishability of marks and different services, and invoking Sections 12, 18(4), 20 and 16(1).
  • Show‑cause Hearings held on 05‑03‑2024, 04‑06‑2024, 14‑11‑2024 and 05‑02‑2025. On 07‑06‑2024 appellant reiterated objections, sought waiver, registration in association with earlier marks, and advertisement before acceptance. Offered to amend specification but did not file a written amendment.
  • Impugned Order dated 25‑07‑2025 by the Assistant Registrar refused registration, stating phonetic similarity and similar services, without detailed reasoning.
  • Appellant contended the order was non‑speaking, violated Section 18(5) (failure to record reasons and materials), ignored Section 12 (exception for honest concurrent use or special circumstances), and disregarded requests under Sections 12, 18(4) and the proviso to Section 20.
  • Central Government Counsel for the respondent appeared to concede the remand sought by the appellant.
  • Key Legal Issues Considered by the Court:

1. Whether the order satisfied Section 18(5) recording‑reason requirement.

2. Whether a refusal under Section 11(1) can stand without addressing Section 12.

3. Whether the Registrar properly considered the appellant’s requests under Sections 12, 18(4) and 20.

4. Whether the matter required remand for fresh consideration.

  • Court Findings:
  • The order merely stated phonetic similarity and similarity of services, without separate comparison of the two cited marks or identification of overlapping services, thus failing Section 18(5).
  • The order did not discuss the status of the second cited mark (Application No.5382808) or the material evidence submitted by the appellant.
  • Section 12, which saves a refusal, was not referenced; therefore the refusal was legally infirm.
  • The appellant’s reliance on Section 16(1) was misplaced; existing Class 42 registrations (Nos.5545839 and 5545844) are composite marks and do not confer automatic entitlement to the word “EXPONENT”.
  • Evidence of use (invoice No.0041/2021‑22 dated 08‑04‑2021) pertained to inward purchases of machined components, not services, and thus required further examination.
  • A remand is appropriate because the Registrar has not exercised statutory discretion on Section 12, the proviso to Section 20, or the appellant’s offer to restrict services.

Final Outcome

  • The impugned order dated 25‑07‑2025 is set aside.
  • The matter is remanded to the Registrar of Trademarks, Chennai, for fresh consideration after affording the appellant an opportunity of hearing with not less than two weeks’ notice to its address for service.
  • The appellant may, before such hearing, file the exact wording of the restricted list of services on which it wishes to rely.
  • The Registrar shall:
  • Deal with each of the two cited marks separately.
  • Compare the rival marks and the respective lists of services.
  • Verify the present status of the cited marks.
  • Consider the documents filed to prove use.
  • Decide on the appellant’s requests under Section 12, Section 18(4) and the proviso to Section 20, providing express findings and reasons.
  • The Registrar’s order must be passed within three months from the date of the first hearing.
  • All questions on merits are left open; the observations in this judgment shall not bind the Registrar.
  • No order as to costs.

Topics: Trademark Law, Intellectual Property, Court Proceedings