Delhi High Court Sets Aside Refusal Of 'KAMA CASA' Trademark, Says Composite Marks Cannot Be Dissected

The Delhi High Court has recently set aside the refusal of the trademark “KAMA CASA” for furniture and home décor products and related retail services, holding that the Registrar erred in dissecting a composite wordmark and comparing it with separate prior marks.

A Single-Judge Bench of Justice Tushar Rao Gedela held, “In other words, the mark of the appellant “KAMA CASA”, which is a word mark, ought to have been considered as a composite mark and not broken into “KAMA” and “CASA”. In case such dissection is permitted, it would lead to anomalous and incongruous results. Such dissection is also impermissible under the Anti Dissection Rule, which applies to the registration of trademarks etc., in that a mark, for the purposes of registration, has to be considered as a composite mark and cannot be compared with two separate marks which may have been registered earlier, to refuse registration under Section 11(1) of the Act. This would be very anti thesis to the prudence of registration"

Modi Woodspace Pvt. Ltd. applied for registration of the wordmark “KAMA CASA” in Classes 20 and 35 for use in furniture and home décor products, along with related retail and business services, on a proposed-to-be-used basis on August 29, 2023.

Subsequently, objections were raised by the Trade Marks Registry under Section 11(a) of the Trade Marks Act, 1999 at the examination stage, and the application was later refused under Section 11(1) after a hearing.

The refusal of the application was based on the ground that the wordmark contained elements already present in earlier registered marks “KAMA” and “CASA”, and was therefore likely to cause confusion among consumers.

The impugned order noted that while the application of the appellant was on a “proposed to be used basis”, the cited marks had already been in use since the years 2018, 2013, and 2007, respectively.

The appellant approached the High Court challenging the refusal.

It argued before the bench that the Registrar committed a fundamental error by comparing the composite mark “KAMA CASA” with two separate marks “KAMA” and “CASA”. It further submitted that there is no principle permitting comparison of a composite wordmark with distinct device marks, pointing out that it had applied for registration of a wordmark, whereas the cited marks were device/label marks.

It also argued that several marks containing the word “CASA” were already registered in the same or similar classes, indicating no impediment or rational basis to refuse the registration.

On the other hand, the respondent contended that the marks were similar and fell within the same class, and that such similarity would cause confusion among traders as well as consumers. Referring to Section 11 of the Act, it argued that a mark must be refused registration if it is similar to an earlier registered mark and covers similar goods or services.

The bench held that the Registrar was required to consider the mark of the appellant as a whole and not by breaking it into separate parts. It emphasized that a trademark must be assessed in its entirety and that dissection of a composite mark is impermissible under the Anti-Dissection Rule.

Upon examining the marks, the Bench noted that the appellant's mark was a wordmark, whereas the cited marks were device marks, and that the latter could not be broken down to isolate the words “KAMA” and “CASA” from their design elements.

“Having regard to the aforesaid two distinctions, it is unfathomable as to how and on what basis, the Registrar compared the composite wordmark “KAMA CASA” of the appellant with two or three cited device marks containing words “KAMA” and “CASA separately, each with its own distinctive device elements. Even if the Class is common, there is no similarity or deceptive similarity between the two sets of marks,” the court observed.

The court also took note of the search report placed on record and found that numerous marks containing “CASA” existed in the same or similar classes.

In light of these findings, the bench set aside the refusal order and remitted the matter for fresh consideration, directing the Registrar to also consider the search report. 

For Appellant: Advocates Rohan Rohatgi and Muthu Praba

For Respondent: Advocates Gaurav Barathi, SPC, with Chirantan Priyadarshan