Bombay HC quashes order denying Yamaha’s ‘WR’ Trademark, orders fresh review

New Delhi: The Bombay High Court has set aside an order by the Registrar of Trade Marks that denied Japanese automobile giant Yamaha the registration of its ‘WR’ trademark, citing similarities with Honda Motor Company’s ‘WR-V’ trademark. 

The court, presided over by Justice Manish Pitale, directed the registrar to reconsider Yamaha’s application afresh, emphasising the need for a detailed and reasoned decision.

The dispute originated in May 2021 when the Registrar of Trade Marks rejected Yamaha Hatsudoki Kabushiki Kaisha’s application for the ‘WR’ trademark, arguing that it could cause confusion with Honda’s existing ‘WR-V’ trademark, both registered under Class 12, which includes motorcycles. 

According to news reports, Yamaha challenged the decision, contending that its ‘WR’ mark, used internationally since 1990 for two-wheeler and three-wheeler products, parts, and accessories, is distinct as it pertains to motorcycles, while Honda’s ‘WR-V’ relates to cars. The company highlighted that the two trademarks have coexisted in various international jurisdictions without issue.

In its June 13 ruling, the Bombay High Court acknowledged that a cursory comparison of the ‘WR’ and ‘WR-V’ trademarks might suggest potential public confusion. However, Justice Pitale criticised the registrar’s order as “cryptic” and lacking proper reasoning, noting that it failed to consider Yamaha’s long-standing international reputation and its use of the ‘WR’ mark since 1990. The court stated that the registrar should have treated the case as an exceptional circumstance, warranting an advertisement under Section 20(1) of the Trade Marks Act to invite public objections before rejecting the application outright.

“This could be a situation creating special circumstances in favour of the petitioner (Yamaha),” Justice Pitale observed, adding that it is not uncommon for similar trademarks to coexist on the register. The court further noted that the registrar’s invocation of Section 11(1) of the Trade Marks Act, which addresses the likelihood of confusion due to similar trademarks, was not misplaced but required a more thorough evaluation of Yamaha’s claims.

Yamaha argued that it has been using the ‘WR’ trademark globally since 1990, selling products in 131 countries since 1999 and currently in at least 62 countries. The company sought to launch its WR range of motorcycles in India, prompting the 2018 trademark application. It accused the registrar of mechanically rejecting its plea without adequately considering the distinct contexts of the two trademarks—motorcycles for Yamaha and cars for Honda.

The registrar, in opposition, maintained that the ‘WR’ mark was not sufficiently distinguishable from ‘WR-V,’ reinforcing the likelihood of public confusion. However, the court found that the registrar’s failure to issue a detailed order or account for Yamaha’s global use of the mark undermined the decision’s validity.

The Bombay High Court quashed the registrar’s order and directed the authority to advertise Yamaha’s application for public objections, as mandated by the Trade Marks Act, before proceeding with a fresh adjudication. The ruling underscores the importance of reasoned decision-making by the Trade Marks Registry and highlights the judiciary’s role in ensuring fair consideration of trademark applications, particularly for globally established brands.