Justice Pitale Criticizes Registrar's Rejection of Yamaha's Trademark
The Bombay High Court has directed the Registrar of Trade Marks to conduct a fresh review of Japanese automaker Yamaha’s application for the ‘WR’ trademark, overturning an earlier rejection and calling for a more detailed and reasoned analysis of the matter.
The ruling, delivered by Justice Manish Pitale, noted that the registrar’s May 2021 decision was “cryptic” and lacked adequate consideration of Yamaha’s longstanding international use of the 'WR' mark. The court stated that rather than rejecting the application outright, the registrar should have proceeded with advertisement under Section 20(1) of the Trade Marks Act, allowing for public objections to be filed.
Yamaha Hatsudoki Kabushiki Kaisha had applied to register the ‘WR’ mark under Class 12, which includes vehicles such as motorcycles. The application was rejected by the trademark registrar on the grounds that it could create confusion with Honda Motor Company’s ‘WR-V’ trademark, which is also registered under the same class.
Challenging the decision, Yamaha argued that it has used the ‘WR’ mark internationally since 1990, primarily for two- and three-wheeler vehicles, as well as related parts and accessories. The company pointed out that Honda’s WR-V branding is limited to cars, and the two marks have coexisted in over 131 countries, including current marketing in at least 62 nations, without any instances of consumer confusion.
In the June 13 ruling, the High Court acknowledged that while a superficial resemblance exists between ‘WR’ and ‘WR-V’, the registrar had failed to properly assess the broader context, including Yamaha’s global brand presence and established usage of the mark.
“It is not uncommon for similar trademarks to coexist on the register,” Justice Pitale remarked, adding that while reliance on Section 11(1) of the Trade Marks Act (which addresses the likelihood of confusion) was not misplaced, the registrar’s analysis lacked depth and context.
Yamaha filed the application in 2018, anticipating the launch of its WR-series motorcycles in India. With this ruling, the court has instructed the Registrar to advertise the application, inviting public responses before arriving at a final decision.
The judgment underscores the importance of reasoned, transparent regulatory processes, particularly when it comes to globally recognized trademarks. Legal experts say the case could set a precedent for future trademark disputes involving multinational brands in India.