Madras High Court Sets Aside Refusal Of 'THE SKIN COMPANY' Trademark, Orders Advertisement

The Madras High Court on 9 October set aside the refusal of Hyderabad-based Tregum Remedies Private Limited's application for “THE SKIN COMPANY” in Class 3 and directed the Registry to advertise the mark in the Trade Marks Journal.

A Single Judge Bench of Justice P.B. Balaji held that the Registry had failed to give reasons for refusing the application, consider the company's reply or assess the mark as a whole. He observed:

“it is not open to the authorities or the Courts to dissect a composite mark and refuse registration referring to a single word in the composite mark.”

Tregum applied to register “THE SKIN COMPANY” in Class 3. The Senior Examiner of Trade Marks initially objected under Sections 9(1)(b) and 11(1) of the Trade Marks Act, 1999, citing lack of distinctiveness and earlier marks.

The company replied that the mark comprised three words, made no exclusive claim over any individual word and was distinctive as a whole. However, in December 2024, the Examiner refused the application under Sections 9(1)(a) and 11(1), finding it “significantly identical with and/or deceptively similar to” the cited marks “SKINN”, “TITAN” and “SKINN ESCAPADE”, registered for perfumes, sprays and deodorants.

Before the High Court, Tregum argued that the refusal order contained no reasons, disregarded its reply and applied an inconsistent standard despite the Registry having registered “SKINN” and “SKINN ESCAPADE” for similar goods. It also submitted that acceptance would not prejudice third parties, who could oppose the mark after its advertisement.

The Registry argued that the goods were of the same description and the marks deceptively similar. However, its counsel requested a remand if the Court found the refusal order unreasoned.

The Court found the order generic and observed that it “appears to be a mere regular format used by the respondent to pass orders in similar or identical matters.”

It also noted that the Registry had failed to clarify whether the mark was identical or deceptively similar to the cited marks, observing that “both these reasons fall under different categories and cannot be clubbed together.”

Further, the Bench found that the Registry had raised an objection under Section 9(1)(b) in the examination report but ultimately refused the application under Section 9(1)(a). Its failure to consider Tregum's reply demonstrated non-application of mind.

Justice Balaji also held that the Registry could not treat “SKINN” as distinctive for other applicants while applying a different standard to Tregum's composite mark. It also found no likelihood of confusion when “THE SKIN COMPANY” was assessed as a whole.

Rejecting the Registry's request for remand, he stated that Tregum had adequately addressed both objections. It added that advertisement would not confer an unfair advantage on Tregum, as third parties could still oppose the application.

Accordingly, the High Court allowed the appeal, set aside the refusal order and directed the Registry to advertise the application in the Trade Marks Journal under Section 20(1) of the Trade Marks Act, 1999, read with Rule 39 of the Trade Marks Rules, 2017, for consideration in accordance with law.