The registration application of the production house was rejected on the basis that ‘AVATAR’ was visually and phonetically similar to another mark ‘AVATHAR’. The Delhi High Court has dismissed the trademark registry’s order rejecting production house Twentieth Century Fox Film Corporation’s plea for registering the ‘Avatar’ trademark for jewellery and watches to promote the movie ‘Avatar: The Way of Water’, which was released in December last year. A single judge bench of Justice C Hari Shankar in its February 27 decision held that the basis on which the registration application of the production house was rejected was that the same was visually and phonetically similar to another mark ‘AVATHAR’ and this was incorrect. The high court set aside the order passed by the trademark registry senior examiner on September 13, 2022, and said, “As appellant’s mark was never advertised, having been rejected at an initial stage, the registrar is directed to advertise the mark and proceed thereafter in accordance with law.” In coming to its decision, the high court examined Section 11(1) of The Trade Marks Act which states that mere identity or similarity of the mark of which registration is sought, and the earlier mark, is not sufficient ground to reject the application seeking trademark registration. Justice Shankar said that in terms of Section 11(1), the senior examiner was to compare the two marks and assess whether ‘AVATAR’ was identical or similar to ‘AVATHAR’, whether the goods and services covered by the two marks were identical or similar, and whether, because of these factors, a likelihood of confusion on the part of the public existed. Applying the test, Justice Shankar said that the two marks are phonetically similar, however, “mere phonetic similarity is insufficient to render the marks identical or similar within the meaning of Section 11(1)” as the similarity should result in a likelihood of confusion in the public’s mind. The high court further observed that ‘AVATHAR’ was a composite mark consisting of a sketch of the face of a lady alongside the word ‘Avathar’ written both in English and Tamil. “The principle that composite marks are to be compared as a whole, unless individual parts thereof are registered separately, is a thread that runs through the Trade Marks Act,” the high court said, adding that only the two words cannot be compared and the two marks have to be compared as a whole. “The court is of the opinion that the senior examiner erred in merely emphasising the phonetic similarity between ‘AVATHAR’ and ‘AVATAR’, without recognising the fact that the cited mark was a composite device mark containing a sketch, as well as the word AVATHAR written in two languages, compositely registered, with no registration of its individual parts or elements,” the high court said. It also observed that no person of “average intelligence and imperfect recollection” would get confused between the two marks and allowed Twentieth Century’s plea.