Sarogi, Advocates vs THE REGISTRAR OF TRADEMARKS DELHI

Through: Ms. Avshreya Pratap Singh Rudy, Mr. Kanav Vir Singh, Ms. Usha Jamnal, Ms. Harshita Chaturvedi, Advocates Mob: 9810001315 CORAM: HON'BLE MS. JUSTICE MINI PUSHKARNA O R D E R 06.02.2025 The present appeal has been filed under Section 91 of the Trade % 1. Marks Act, 1999 and under Rule 156 of the Trade Mark Rules, 2017 challenging the order of refusal dated 09th January, 2024 passed by the Registrar of Trade Marks in Application no. 4997759 for the mark ‘SKYN’. 2. Learned counsel for the appellant submits that by way of the said impugned order, the application for registration filed by the appellant has been dismissed on the basis of the cited mark, which belongs to the appellant itself. 3. Learned counsel for the appellant further submits that there are Assignment Deeds in favour of the appellant, wherein, the mark in question, i.e., ‘SKYN’ has been assigned in favour of the appellant. This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 10/02/2025 at 14:49:50

4. He further submits that the appellant already has ‘SKYN’ mark registered in its favour in various Classes for different products. 5. He further draws the attention of this Court to the table given in the appeal with respect to various registrations, which already exist in favour of the appellant. 6. Learned counsel for the appellant further submits that during the pendency of the present appeal, two more registrations for the mark ‘SKYN’ have been granted in favour of the appellant. 7. 8. No reply has been filed on behalf of the respondent. However, learned counsel for the respondent submits that considering the submissions made before this Court, appropriate orders may be passed by this Court. 9. Having heard learned counsels for the parties, this Court notes that there are various registrations with the mark ‘SKYN’ already existing in favour of the appellant, details of which are reproduced as under: This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 10/02/2025 at 14:49:50

10. It is to be noted that by the impugned order dated 09th January, 2024, Registrar of Trade Marks, has recorded as follows: This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 10/02/2025 at 14:49:50

11. Perusal of the impugned order dated 09th January, 2024 passed by the Registrar of Trademarks, manifests that the premise on which the application of the appellant has been rejected, is existence of a prior trade mark, i.e., ‘SKYN’. 12. This Court notes the submissions made by the appellant that the prior registrations for the mark ‘SKYN’ are pertaining to the appellant itself, and do not belong to any other third party. 13. This Court also takes note of the reply filed by the appellant to the Examination Report before the Registrar of Trademarks, which reads as under: “xxx xxx xxx

1. CITED MARK UNDER APPLICATION NUMBER 2776008 With respect to the above-mentioned cited mark, it is submitted that the cited mark belongs to the Applicant herein. In this regard, it is submitted that a request for assignment of the above-mentioned cited mark from 'Ansell Limited' to 'SxWell Australia Pty. Ltd.' and subsequently 'LifeStyles Healthcare Pte Ltd', i.e., the Applicant herein, has been filed in the matter. Thus, the cited mark belongs to the Applicant itself and thus, does not act as a bar to the present application . A copy of the status page of the cited mark under application number 2776008 along with copies of requests filed vide Forms TM-M dated March 20, 2018, have been annexed herewith as Annexure A. 'SxWell Australia Pty. Ltd.' xxx xxx xxx” (Emphasis Supplied)

14. Reading of the aforesaid reply clearly shows the stand of the appellant that there are Assignment Deeds in favour of the appellant for the mark in question, and that the cited mark belongs to the appellant. 15. This Court also notes the Confirmatory Deed of Assignment dated 05th December, 2017, for the assignment of the mark, i.e., ‘SKYN’ in favour of predecessor-in-interest of the appellant, which is on record before this Court. This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 10/02/2025 at 14:49:50

16. This Court also takes note of the Confirmatory Deed of Assignment dated 10th December, 2017, for the mark ‘SKYN’ in favour of the appellant herein, which is placed on record before this Court. 17. Accordingly, the impugned order dated 09 January, 2024 passed by the Registrar of Trade Marks is set aside. 18. The matter is remanded back to the respondent for consideration of the application of the appellant, i.e., Application no. 4997759 for registration of the mark ‘SKYN’, afresh, expeditiously, in accordance with law. 19. The present appeal accordingly stands allowed and disposed of, along with pending applications. 20. The Registry is directed to supply a copy of the present order to the Office of the Controller General of Patents, Designs and Trade Marks of India, on E-mail Id: [email protected], for compliance. FEBRUARY 6, 2025 MINI PUSHKARNA, J This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 10/02/2025 at 14:49:50