Bombay High Court orders fresh review of Yamaha’s ‘WR’ trademark plea

The Bombay High Court has overturned a decision by the Registrar of Trade Marks that denied Yamaha’s application for the ‘WR’ trademark, directing the authority to reconsider the matter with a more detailed and reasoned analysis.

Justice Manish Pitale, presiding over the case, observed that the registrar’s May 2021 order was “cryptic” and did not sufficiently assess Yamaha’s long-standing international use of the ‘WR’ mark. The court held that the matter warranted advertisement under Section 20(1) of the Trade Marks Act to invite public objections, instead of an outright rejection.

The case concerns an application filed by Yamaha Hatsudoki Kabushiki Kaisha to register the ‘WR’ mark under Class 12, which covers vehicles including motorcycles. The registrar had rejected the application citing potential confusion with Honda Motor Company’s ‘WR-V’ trademark, which is registered in the same class.

Yamaha challenged the decision, asserting that its ‘WR’ branding has been in use internationally since 1990, primarily for two- and three-wheeler vehicles, parts, and accessories. The company argued that Honda’s ‘WR-V’ is used exclusively for cars, and that both trademarks have coexisted in multiple global markets without conflict.

In its ruling dated 13 June, the High Court noted that while there may be a superficial resemblance between ‘WR’ and ‘WR-V’, the registrar’s decision lacked a proper examination of Yamaha’s arguments. Justice Pitale stated that the registrar failed to consider the “special circumstances” of the case, including Yamaha’s global footprint and established use of the trademark.

“It is not uncommon that similar trademarks coexist on the register,” the court noted, adding that the registrar’s reliance on Section 11(1) of the Act, concerning the likelihood of confusion—was not in itself erroneous, but should have been backed by a more comprehensive evaluation.

Yamaha said it has sold products bearing the ‘WR’ mark in over 131 countries since 1999 and currently markets in at least 62 countries. The application to register the mark in India was filed in 2018 in anticipation of launching its WR-series motorcycles in the domestic market.

The court has now ordered the registrar to advertise Yamaha’s application to allow for public responses before making a fresh determination. The decision reinforces the principle that regulatory authorities must issue clear, reasoned orders, particularly in matters involving established international trademarks.

News