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Date of Decision: 11th December, 2024 C.O. (COMM.IPD-TM) 300/2023
FENA PRIVATE LTD .....Petitioner
Through: Mr. Manish Kumar Mishra and Ms. Akansha Singh, Advocates.
Through: None.
JUDGMENT
1. The present cancellation petition has been filed under Sections 11 (1), 11(2), 11(3)(a), 11(10), 18, 29 read with Section 57 of the Trade Marks Act, 1999 (hereinafter, ‘the Act’) seeking cancellation/removal of the trademark ‘NIPPU’ bearing trademark registration No.3728776 in class 3, from the Register of Trade Marks.
PROCEEDINGS IN THE PETITION
2. Notice in the present petition was issued by this Court on 28th November, 2023.
3. On 6th January, 2024, the court notice was served upon the agent of the respondent no.1. Despite efforts being made to serve the respondent no.1 through speed post, through courier, and through the dasti mode, the court notice could not be served on the address of the respondent no.1.
4. Pursuant to the order dated 12th August, 2024, the petitioner took steps to serve the respondent no.1 by way of publication in the English newspaper “The Tribune”, edition dated 12th September, 2024.
5. Despite this, none appeared on behalf of the respondent no.1 and he was proceeded against ex-parte vide order dated 7th November, 2024.
BRIEF FACTS
6. Brief facts relevant for adjudicating the present petition are set out below:
6.1. The petitioner is a private limited company engaged in manufacturing and selling various consumer non-durables including detergent cakes and powder, cleaning preparations under its various flagship brands namely FENA, NIP, IMPACT, FAMUS, COP.
6.2. The petitioner adopted an inherently distinctive mark ‘NIP’ in the year 1976 and since then has been extensively and continuously using the same in respect of dishwash bar, gels, powder, cleaners and detergents.
6.3. It is averred that the trademark ‘NIP’ of the petitioner is an invented and coined mark having no meaning whatsoever in common parlance nor is the same a dictionary word. The petitioner is the registered proprietor of the trademark ‘NIP’ and its labels in India. One amongst the earliest trademark registrations of the petitioner for the mark ‘NIP’ is trademark no.306410 dated 20th June, 1975 in class 3 registered in respect of goods being ‘detergents (not for use in industry) and soaps’. The details of the trademark registrations of the petitioner are given below: Trademark Registration Number/Date of Application Class/goods Valid upto NIP 306410 20th June, 1975 Detergents (not for use in industry) and soaps 20th June, NIP 430691 4th December, Detergents, soaps and cleaning powder 4th December, 8th November, and cleaning powders, included in class 3 8th November, 8th November, and cleaning powders, included in class 3 8th November, 19th November, Soap detergents, detergents, deodorants, cleaning powders, 19th November, preparations for cleaning, polishing, scouring and laundry use 9th August, 2004 Bleaching preparations and other substances for laundry use, cleaning, polishing, abrasive preparations, soaps & detergents 9th August, 8th November, Bleaching preparations and other substances for laundry use; substances for brightening clothes, cleaning; polishing; abrasive preparations; soaps; 8th November, preparation for dishwashing purposes; perfumery, essentials oils, cosmetics, hair lotions, dentifrices All the aforesaid trademark registrations remain valid and subsisting.
6.4. The petitioner has extensively advertised and marketed the products under the trademark ‘NIP’ on its website i.e., https://www.fena.com/ and various social media platforms. The petitioner’s goods bearing the mark ‘NIP’ have a strong presence on e-commerce websites as well. Pertinently, the petitioner was rated as one of the most trusted brands by Economic Times in the year 2015. As a result of these activities, the trademark/trade name ‘NIP’ has acquired highest level of distinctiveness and has attained tremendous goodwill and reputation amongst the public.
6.5. It is also evident from the fact that the sales figures of the petitioner under the trademark ‘NIP’ in the year 2021-2022 were to a tune of INR 7,528 Lakhs and promotional expenses of the same year were to a tune of INR 6,593 Lakhs. During the period 2002-2022, the sales and promotional expenses of the petitioner’s products bearing the mark ‘NIP’ in India are given in paragraph 12.[7] of the petition.
6.6. Respondent no.1 is the sole proprietor of Godawari Industries and the respondent no.2 is the Registrar of Trade Marks.
6.7. The respondent no.1 has obtained registration of the mark ‘NIPPU’ (hereinafter ‘impugned mark’) bearing trademark registration no.3728776 in Class 3 with effect from16th January, 2018 on a ‘proposed to be used’ basis.
6.8. It is averred that the petitioner came across the impugned trademark registration of the respondent no.1 when the application was published in the Trade Marks Journal No. 1838 dated 26th February, 2018. The petitioner filed Notice of Opposition against the same on 25th May, 2018.
6.9. It is further averred that the counter statement in the said opposition was never served upon the petitioner. Without considering the issue of nonservice of counter statement, the said opposition was abandoned by the Senior Examiner of Trade Marks vide order dated 25th November, 2019 on the ground of non-filing of evidence under Rule 45(2) of the Trade Marks Rules, 2017.
6.10. Thereafter, the petitioner filed an appeal being C.A.(COMM.IPD- TM) 33 of 2022, which was disposed of vide order dated 25th July, 2023 passed by this Court, wherein the petitioner was granted liberty to pursue its remedies for cancellation of the impugned registration.
SUBMISSIONS OF THE PETITIONER
7. Counsel appearing on behalf of the petitioner submits that the respondent no.1’s trademark registration of the impugned mark ‘NIPPU’ is subsequent to the adoption, use and registration of the petitioner’s trademark and violates the prior rights of the petitioner. The petitioner adopted and has been using the trademark ‘NIP’ since the year 1976, whereas, the respondent no.1 has subsequently adopted the impugned mark on 16th January, 2018 on a ‘proposed to be used’ basis. Hence, the impugned mark has been wrongly entered in the Register and is liable to be cancelled in terms of Sections 11 (1), 11(2), 11(3)(a), 11(10), 18, 29 read with Section 57 of the Act.
8. It is further submitted that the impugned mark is deceptively similar to the petitioner’s trademark ‘NIP’ and the registration was obtained by the respondent no.1 in respect of class 3 goods, which are identical to that of the petitioner. Furthermore, the adoption of the impugned mark is likely to induce the members of trade, potential customers and the general public into believing that the goods bearing the impugned mark have some nexus, association or trade connection with the petitioner, which is not the case. In this regard, counsel for the petitioner relied upon the judgment of the Division Bench of this Court in M/s South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. & Anr., 2014 SCC OnLine Del 1953.
9. Accordingly, the petitioner has filed the present petition.
ANALYSIS AND FINDINGS
10. I have heard the counsel for the petitioner and perused the record of the case.
11. In M/s South India Beverages (supra), the Division Bench of this Court held as follows:
12. From the averments made in the petition and the evidence on record, the petitioner has established that it is the prior registered proprietor and a prior user of the mark ‘NIP’ and its other formative marks since the year
1976. The adoption and the use of the impugned trademark ‘NIPPU’ by the respondent no.1, which is very similar to the trademark ‘NIP’ of the petitioner, is likely to create confusion in the market.
13. Not only is the trademark of the respondent no.1 confusingly/deceptively similar to the petitioner’s prior adopted, registered trademark ‘NIP’ or its formative marks but the nature of the goods of the petitioner and the respondent no.1 are identical. The respondent no.1 has obtained registration of the impugned trademark in respect of class 3 goods, being ‘Laundary Blue; Fabric Softner; Washing Soap, Washing Powder, Detergent Cakes And Bleaching Preparations, Toilet Soap; Toilet Cleaners, dish wash, soap’ which are identical/similar to the goods under the trademark ‘NIP’ of the petitioner i.e. ‘Detergent Cakes And Powder, Cleaning Preparations, Soaps, Bleaching Preparations etc’.
14. At this stage, it may be relevant to note that the respondent no.1 did not appear before the Court, despite service of notice on 12th September,
2024. Further, no communication on behalf of the respondent no.1 has been placed on record in respect of the allegations of the petitioner in this petition. Since the respondent no.1 has failed to take any requisite steps to contest the present petition, it is evident that it has no defence to put forth on merits.
15. In view of the discussion above, it is clear that the impugned trademark has been adopted by the respondent no.1 dishonestly to trade upon the established goodwill and reputation of the petitioner and to project itself to be associated with the petitioner. Therefore, the continuation of the impugned registration on the Register of Trade Marks is in contravention of the provisions of Section 11 of the Act and is liable to be cancelled under Section 57 of the Act.
16. Accordingly, the present petition is allowed and the Trade Marks Registry is directed to remove the impugned registered trademark ‘NIPPU’ bearing trademark registration No.3728776 in Class 3 from the Register of Trade Marks.
17. The Registry is directed to send a copy of the present order to the Trade Marks Registry at e-mail - llc-ipo@gov.in for compliance. AMIT BANSAL, J DECEMBER 11, 2024