A Rare Judicial Lens on Section 20(1) Proviso and Trademark

A bench of the Bombay High Court (“Court”) recently heard the case of Yamaha Hatsudoki Kabushiki Kaisha v. Registrar of Trademarks,[1] in which the Registrar/Examiner of Trade Marks (the “Respondent”) refused to register the trademark “WR” of the Petitioner, Yamaha Hatsudoki Kabushiki Kaisha (the “Yamaha”). Citing similarities with Honda’s “WR-V,” the Registrar said that the public would likely get confused with Yamaha’s trademark for which registration was requested, with other similar trademarks already on the registry. According to Section 20(1)[2] of the Trade Marks Act, 1999 (the “Act”), the Court set aside the Registrar’s order and ordered him to publicise the application prior to acceptance. This article seeks to analyse the instant judgement in light of its contemporary relevance.

Yamaha Hatsudoki Kabushiki Kaisha was established on July 1st, 1955, and has long been regarded as one of the top manufacturers of motorcycles. It is the second-biggest company in the world for motorcycle sales, and its name and brand recognition are well-known. Among the many trademarks that Yamaha uses, “WR” stands out because it was adopted by the business as early as August 1990. Since then, the mark has been regularly applied to its two- and three-wheeled vehicles, as well as related components and add-ons. The availability of Yamaha’s “WR” branded products in 131 nations enhances the brand’s standing in international markets. Yamaha requested trademark registration in 2018 under Class 12 which covers autos and related items, in order to launch a specific “WR” brand of motorcycles in India. However, the application received a negative response from the Trade Marks Registry.

On May 20, 2021, the Registrar/Examiner invoked Section 11(1)[3] of the Act to reject the application in an order. The reported reason was that the mark “WR” was very similar to the already-registered mark “WR-V,” which was owned by Honda Motor Company Ltd. for one of its vehicles and was also registered under Class 12. Given that both marks were used simultaneously, the Registrar claims that this similarity could lead to public confusion or deceit.

In reply, Yamaha argued that the Registrar had made a mistake by combining the two marks without properly evaluating their different market connotations. According to the statement, Yamaha’s “WR” has long been associated with motorcycles and three-wheelers, while Honda’s “WR-V” is a car that occupies a distinct segment of the automotive market. Yamaha further emphasised that the “WR” mark was already registered in several other countries, such as Japan, the US, the EU, Australia, and New Zealand. According to the company, the WR series has also gained recognition among Indian consumers, particularly through social media and internet platforms. The Registrar insisted that the denial under Section 11(1) was appropriate and should not be overturned in spite of these arguments.

The Petitioner claimed that the Registrar of Trade Marks’ contested order was essentially incorrect because it ignored the substantial amount of evidence and documents placed on record. The Respondent failed to provide a reasoned examination of the material despite thorough submissions, including a thorough Reply to the Examination Report. Instead, the Respondent issued a perfunctory ruling that only briefly mentions a few precedents that the Petitioner had mentioned. It was argued that the order was completely without rationale and that it seemed to have arbitrarily and mechanically utilised Section 11(1)[4] of the Trade Marks Act, 1999, in order to deny the application.

The Petitioner further emphasised how important materials, including the user’s affidavit and supporting documentation, were presented to the Respondent but were completely disregarded. In countries where the Petitioner has been using the mark for its motorcycles since August 1990, such as the United States, the European Union, Australia, New Zealand, and Japan, emphasis was placed on the international registration of the WR trademark. It was argued that WR-marked products have been regularly featured on YouTube and other digital channels, demonstrating their familiarity with the Indian people. The respondent’s use of a one-line argument was deemed insufficient and contemptuous in this particular circumstance. The Petitioner cited Milmet Oftho Industries v. Allergan Inc.[5] to support its claim that the impugned order did not meaningfully take into account international goodwill when establishing registrability, as required by the law of transborder reputation.

The Respondent’s attorney responded that the contested ruling was legitimate and strongly based on Trade Marks Act Section 11(1). It was contended that the logic of the order, despite its seeming conciseness, was proper and derived from the Registrar’s accessible evidence record. In its opinion, the Respondent had correctly determined that the applied-for mark was likely to lead to confusion with already-registered marks, such as the referenced mark and other comparable marks already on the register. It was argued that this possibility of public confusion was a good reason to reject.

The Respondent cited the Supreme Court’s decision in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd.,[6] which upheld the territoriality concept in Indian trademark law, in reference to the Petitioner’s reliance on trans-border repute. The Petitioner had not met the burden of demonstrating a tangible reputation in the Indian market, according to the Respondent. It was argued that the defence of transborder reputation could not be upheld in the absence of specific proof proving consumer recognition or market presence in India at the pertinent time. The Respondent argued that the writ petition ought to be denied on the grounds that the contested ruling was both rational and justifiable.

The Court agreed with the Registrar that the marks “WR” and “WR-V” could, on their face, lead to confusion after reviewing the evidence that was entered into the record. It noted that Yamaha had not provided enough evidence to support its claim that the Trade Marks Act, 1999’s Section 11(1) bar should not apply in this particular instance. Therefore, the Registrar’s original worry about the two marks’ visual and linguistic similarities was, in theory, accepted by the Court. Nevertheless, it acknowledged that the simple fact that two marks are similar does not always mean that they should be rejected because similar or even identical marks can coexist in the register under specific conditions.

The Court emphasised the necessity of taking into consideration Yamaha’s assertion of the mark “WR”’s transnational and worldwide reputation. The Court acknowledged that such a claim would require sufficient legal evidence, but it did not completely rule out its applicability. Rather, it gave weight to the petitioner’s claim that the “WR” mark had gained distinctiveness in a number of areas and had been in use worldwide since 1990. The Court acknowledged that despite the application’s apparent similarity to an already-registered mark, transnational recognition, especially when evidenced by consistent use, international registrations, and digital visibility, may be a relevant factor in favour of moving forward with the application.

The Court specifically cited Section 20[7] of the Trade Marks Act, 1999, which describes the steps the Registrar must take after receiving an application, in its reasoning. The Court noted that under extraordinary circumstances, the Registrar may publicise an application even prior to its official acceptance under the proviso of Section 20(1). The Court determined that the case fell within the purview of this proviso after taking into account that Yamaha had obtained registration for the “WR” mark in several international countries and that its motorcycles carrying the same mark were being sold widely outside. Yamaha’s position was further reinforced by the simultaneous use of “WR” and “WR-V” in international markets, which created a unique situation that called for the application of this procedural exemption.

Finally, the Court determined that the contested order lacked sufficient justification and did not accurately represent the Registrar’s application of the facts and evidence. It emphasised that a speaking order is expected to be issued by an authority with statutory powers, especially when it comes to issues affecting significant economic rights. As a result, the decision was overturned, and the Registrar was instructed to publicise Yamaha’s application prior to its approval. As a last reminder of the value of reasoned decision-making in administrative adjudication, the Court additionally directed that such action be performed within two weeks of the judgment date.

In order to determine the contemporary relevance of the instant judgement, the author argues that-

Firstlymandating the requirement for a speaking order is an important reminder of procedural justice and openness. Given the increasing reliance on technical trademark searches and software-driven inspection tools, the Yamaha decision reaffirms the legal mandate that even decisions pertaining to discretion or early publication be supported by intelligible justifications. In addition to protecting applicants from arbitrary denials, this establishes a standard for judicial scrutiny of administrative decisions, particularly in the field of Intellectual Property.

Secondly, a move toward harmonising Indian trademark processes with international brand strategies is reflected in the Court’s evaluation of Yamaha’s worldwide trademark registrations and market presence. This decision recognises the commercial realities of international goodwill at a time when companies operate across borders and global brand reputation is shaped digitally. It confirms that in order to bridge the gap between domestic procedural law and international brand ecosystems, Indian trademark authorities must modify Section 20(1)’s discretionary framework to take such cross-border concerns into account.

Thirdly, the Registrar is now expected to facilitate brand entry into the market, particularly in consumer industries with high turnover rates like technology and automotive, in tandem with transforming commercial realities. By utilising the proviso to Section 20(1) to permit pre-acceptance publication, the ruling turns this discretion into a pro-business instrument that facilitates prompt trademark rights assertion, which is essential for businesses introducing goods in synchronised global markets. This broadens the Registrar’s responsibility in helping India’s intellectual property ecosystem keep up with time-to-market demands from around the world.

Fourthly, the Yamaha ruling serves as a crucial doctrinal benchmark for elucidating the legal parameters of an examiner’s discretion, particularly in relation to procedural clauses such as Section 20. By doing so, it clarifies the administrative law dimensions of IP regulation, an area that is sometimes overlooked in trademark jurisprudence.

To summarise, by revealing underlying issues of administrative responsibility, discretion, and worldwide branding by businesses in light of IP regulation, the Yamaha v. Registrar of Trade Marks ruling stands as a turning point in the evolving IP jurisprudence in India. In addition to setting the standard for Registry procedures, the Court has shed light on the changing relationship between domestic IP procedure and global market forces. This ruling provides a much-needed compass for negotiating the trademark dispute with much-needed legal clarity at a time when brands are more widely recognised beyond national boundaries.

[1] Yamaha Hatsudoki Kabushiki Kaisha v. Registrar, Trade Marks, 2025 SCC OnLine Bom 2332.

[2] Trademarks Act, 1999, §  20(1), No. 47, Acts of Parliament, 1999 (India)

[3] Trademarks Act, 1999, §  11(1), No. 47, Acts of Parliament, 1999 (India)

[4] Trademarks Act, 1999, § 11(1), No. 47, Acts of Parliament, 1999 (India)

[5] Milmet Oftho Industries & Ors vs Allergan Inc, AIR 2004 SC 3355.

[6] Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd, MANU/SC/1619/2017.

[7] Trademarks Act, 1999, § 20, No. 47, Acts of Parliament, 1999 (India)