Madras High Court Sets Aside Refusal To Register Exponent Energy's 'EXPONENT' Trademark

The Madras High Court has set aside the Trade Marks Registry's refusal to register “EXPONENT” as a word mark for Exponent Energy Private Limited. The court ruled that the Registrar failed to explain why the mark could cause confusion and did not consider a statutory exception under the Trade Marks Act, 1999.

Justice A.D. Maria Clete declined to direct acceptance of the mark for advertisement. The court remitted the application to the Registrar for fresh consideration within three months of the first hearing.

Exponent Energy, a Bengaluru-based company incorporated in 2020, makes electric vehicle battery packs and charging equipment. It applied to register “EXPONENT” in Class 42 in May 2022, claiming use since April 8, 2021.

The Registry objected under Section 11(1) of the Act, citing two earlier marks. One was “EXPONENT”, held by US-based Exponent, Inc., whose status was recorded as “Protection Granted”. The other was “EXPONENTIAL TECHNOLOGIES GROUP”, associated with US-based Mouser Electronics, Inc., whose status was recorded as “Objected”.

After four hearings, the Assistant Registrar refused registration in July 2025, holding that the marks and services were similar and could cause confusion.

The court found that the Registrar had not separately compared the marks or identified which services overlapped. The first cited mark was identical to the applied-for word, while the second comprised three words.

“A single finding of phonetic similarity covering both citations indicates that the comparison was not in fact undertaken,” Justice Clete observed.

The court also found that the Registrar had ignored Section 12, which allows registration of similar marks by different proprietors in cases of honest concurrent use or other special circumstances. Exponent Energy had invoked the provision in its reply and written submissions, but the refusal order did not address it.

“A refusal under Section 11(1) which leaves wholly undecided the exception that the sub-section itself saves is incomplete on the face of the statute,” the court ruled.

The Registrar had also failed to consider the company's requests for advertisement before acceptance and for narrowing the list of services. The court noted that no written amendment or proposed restricted specification had been filed.

The court declined to direct acceptance because the application covered a broad range of services. “A trade mark is registered for the specification applied for and not for the business as it happens to be carried on,” it observed.

The court also noted that the earliest invoice relied on to establish use was issued by a supplier for components purchased by Exponent Energy, not for services rendered by the company. The Registrar must assess whether the evidence establishes use for the services covered by the application.

The court set aside the refusal and directed the Registrar to examine each cited mark separately, verify its current status, assess the evidence of use and decide the company's requests with reasons. Exponent Energy may file the exact wording of its proposed restricted services before the hearing.

The Registrar must give the company at least two weeks' notice and pass a fresh order within three months of the first hearing. The court left all questions on the merits open and made no order as to costs.