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GANESH GRAINS LTD.
DHARMENDRA KUMAR GUPTA
JUDGMENT
1. The present rectification petition has been filed read with Section 4 cancellation/removal of the trademark (Device) (hereinafter registration number BRIEF FACTS
2. The case set up by the 2.[1] The Petitioner began the year 1936 through its predecessor partnership firm “ Ratan” having its business at 88 Burtolla Street Kolkata 2.[2] The Petitioner since the year 1936, through its predecessor, has bee engaged in the business of manufacturing and exporting goods Atta, Maida, all the wheat products, Suji, Besan, Salia, Coffee, Tea, Cocoa, -TM) 591/2022 IN THE HIGH COURT OF DELHI AT NEW DELHI Date of decision: 22nd C.O. (COMM.IPD-TM) 591/2022 GANESH GRAINS LTD. Through: Mr. Ankur Sangal and Ms. Amrit Sharma, Advocates.
VERSUS
DHARMENDRA KUMAR GUPTA& ANR. Through: None. HON'BLE MR.
JUSTICE AMIT BANSAL AMIT BANSAL, J. (Oral) The present rectification petition has been filed read with Section 47(1) of the Trade Marks Act, 199 cancellation/removal of the trademark “GANESH HARA MATAR” hereinafter ‘Impugned Mark’)registered under registration number 1314228.
BRIEF FACTS The case set up by the Petitioner is as follows: etitioner began its business under the trade mark “GANESH” in the year 1936 through its predecessor partnership firm “ ” having its business at 88 Burtolla Street Kolkata etitioner since the year 1936, through its predecessor, has bee engaged in the business of manufacturing and exporting goods IN THE HIGH COURT OF DELHI AT NEW DELHI nd November, 2024.....Petitioner Mr. Ankur Sangal and Ms. Amrit Sharma, Advocates......Respondents The present rectification petition has been filed under Sections 57 of the Trade Marks Act, 1999 seeking “GANESH HARA MATAR” under Class30 bearing its business under the trade mark “GANESH” in the year 1936 through its predecessor partnership firm “Ram Gopal Ram ” having its business at 88 Burtolla Street Kolkata – 700 007. etitioner since the year 1936, through its predecessor, has been engaged in the business of manufacturing and exporting goods inter alia Sugar Rice, Pulses, Tapioca, Sago, Artificial Coffee, Flour and preparations made from Cereals, Yeast, Spices, Edible Oils and Fats, Pulses, Roasted Grains, 3 various other edible products falling in different classes under the Trade Marks Act, 1999 ( 2.[3] In the 1950s Ratan’ wastransferred to the firm ‘ the company‘Ganesh Wheat Products Private Limited the business of‘ Further, on 4th January2011,name of Grains Private Limited ‘Ganesh Grains Limited 2.[4] In order to obtain statutory protection over its trade mark “GANES and itsvariants, the the 1950s and since then the registrations in its favour for the mark “GANESH” and the “GANESH” formative variants under various c trademarks granted in favour of the Petitioner @ Volume II Pg. petition) 2.[5] The Petitioner due to the continuous and extensive use of the trade mark“GANESH” and garnered immense goodwill and reputation in the trade mark “GANESH” 2.[6] The goodwill and reputation of the Petitioner can be evidenced salesturnover and promotional expenditure of the Petitioner for its business under thetrade mark “GANES 2020), the sales turnover and advertisement expenditure of the Petitioner made from Cereals, Yeast, Baking Powder, Salt, Mustard, Sauces and Spices, Edible Oils and Fats, Pulses, Roasted Grains, 3 Marks Act, 1999 (hereinafter ‘the Act’). 1950s the business of the partnership firm wastransferred to the firm ‘Ganesh Flour Mills’ Ganesh Wheat Products Private Limited’ ‘Ganesh Flour Mills’ was taken over by the said company January2011,name of the company was changed to Grains Private Limited’ andthereafter the same was again changed to Ganesh Grains Limited’ on 5th February 2011. In order to obtain statutory protection over its trade mark “GANES and itsvariants, the Petitioner applied for its first trade mark application in the 1950s and since then the Petitioner has obtained over 85 trade mark formative variants under various classes. (Reference is made to the list of arks granted in favour of the Petitioner @ Volume II Pg. The Petitioner due to the continuous and extensive use of the trade mark“GANESH” and “GANESH” formative markssince the year mmense goodwill and reputation in the trade mark “GANESH” The goodwill and reputation of the Petitioner can be evidenced under thetrade mark “GANESH”.In the year 2019-, the sales turnover and advertisement expenditure of the Petitioner Baking Powder, Salt, Mustard, Sauces and Spices, Edible Oils and Fats, Pulses, Roasted Grains, 3-D Snacks and of the partnership firm ‘Ram Gopal Ram Ganesh Flour Mills’. On 9th March 2000, ’ was incorporated and was taken over by the said company. company was changed to ‘Ganesh andthereafter the same was again changed to In order to obtain statutory protection over its trade mark “GANESH” its first trade mark application in etitioner has obtained over 85 trade mark (Reference is made to the list of arks granted in favour of the Petitioner @ Volume II Pg.383 of this The Petitioner due to the continuous and extensive use of the trade since the year 1936 has mmense goodwill and reputation in the trade mark “GANESH”. The goodwill and reputation of the Petitioner can be evidenced via the -2020 (up to January, the sales turnover and advertisement expenditure of the Petitioner were Rs.3,81,78,56,249 2.[7] In September 2020, the Petitioner came across the Impugned Mark the Respondent No.1 “ preparation made from cereals 1314228 in Class 2.[8] Subsequently, before the erstwhile that the impugned mark of the Respondent No.1 Petitioner’s trade mark “GANESH” identical/similar goods PROCEEDINGS IN THE PRESENT SUIT
3. This matter has been received on transfer from erstwhileIntellectual Property Appellate Board (IPAB) government notification dated 22 No. P-24017/28/2021 mandated that all pending appeals and other matters before the IPAB would be transferred to the concerned High Court
4. Notice was issued by this Court in this petition January 2024.
5. Subsequently, has been proceeded against
6. Written note of arguments Rs.3,81,78,56,249/- and Rs.3,81,32,590/-, respectively. In September 2020, the Petitioner came across the Impugned Mark dent No.1 i.e., “GANESH HARA MATAR” ” in respect of ‘namkeen, dalmoth, snacks, preparation made from cereals’registered via trademark in Class-30. Subsequently, the Petitionerproceeded to file the present petition erstwhileIntellectual Property Appellate Board (IPAB) that the impugned mark of the Respondent No.1 isdeceptively similar to the Petitioner’s trade mark “GANESH” which had beenregiste identical/similar goods.
PROCEEDINGS IN THE PRESENT SUIT This matter has been received on transfer from Intellectual Property Appellate Board (IPAB) government notification dated 22nd April 2021, being Notific 24017/28/2021-IPR-I whereby the IPAB was dissolved and it was be transferred to the concerned High Court. Notice was issued by this Court in this petition Subsequently, vide order dated 22nd October, 202 has been proceeded against ex-parte. note of arguments has been filed on behalf of the Petitioner, respectively. In September 2020, the Petitioner came across the Impugned Mark of “GANESH HARA MATAR” (device) – namkeen, dalmoth, snacks, trademark application number the Petitionerproceeded to file the present petition Intellectual Property Appellate Board (IPAB) alleging isdeceptively similar to the had beenregistered in relation to This matter has been received on transfer from the Intellectual Property Appellate Board (IPAB) pursuant to a being Notification No. F. the IPAB was dissolved and it was Notice was issued by this Court in this petition vide order dated 15th, 2024, Respondent No.1 been filed on behalf of the Petitioner.
7. Mr Ankur Sangal, appearing on behalf of the Petiti following submissions:
I. The Petitioner is the prior adopter and first user of the trade mark “GANESH” in respect of food products, the user began in the year
1936. II. The impugned mark is violative likely to deceive the public and cause confusion in the market due to its similarity with the in respect of same goods.
III. The impugned registration is contrary to Section 11(1)(b) of the Act as the impugned mar similar to the to passing off the
IV. The Respondent under Class 30 despite having registered the impugned mark. The user claim of cannot claim to be owner of the mark under Section 18 of the Act.
ANALYSIS AN
8. I have heard the counsel for the the case.
9. Despite being served, Respondent No.1 has chosen not to defend the present case and, therefore, has not entered appearance.
10. The petition has been duly verified an affidavit of the P behalf of the respondents, all the averments made in the petition have to be Mr Ankur Sangal, appearing on behalf of the Petiti following submissions: The Petitioner is the prior adopter and first user of the trade mark impugned mark is violative of Section 9(2)(a) of the Act to its similarity with the Petitioner’s mark “GANESH” being used in respect of same goods. impugned registration is contrary to Section 11(1)(b) of the Act as the impugned mark is structurally, visually and phonetically similar to the Petitioner’s prior mark “GANESH” and also amount to passing off the Respondent No. 1’s as those of the Respondent No.1 does not manufacture any goods that fall user claim of Respondent No.1 is false and, therefore, ANALYSIS AND FINDINGS I have heard the counsel for the Petitioner and examined the record of Despite being served, Respondent No.1 has chosen not to defend the The petition has been duly verified and is also supported by the Petitioner. In view of the fact that no reply has been filed on Mr Ankur Sangal, appearing on behalf of the Petitioner has made the The Petitioner is the prior adopter and first user of the trade mark Section 9(2)(a) of the Act as it is etitioner’s mark “GANESH” being used impugned registration is contrary to Section 11(1)(b) of the Act k is structurally, visually and phonetically etitioner’s prior mark “GANESH” and also amounts espondent No. 1’s as those of the Petitioner. No.1 does not manufacture any goods that fall espondent No.1 is false and, therefore, Respondent etitioner and examined the record of Despite being served, Respondent No.1 has chosen not to defend the d is also supported by the etitioner. In view of the fact that no reply has been filed on taken to be admitted. averments made in the petition, the same have to be taken as admitted.
11. A perusal of the record would show that Respondent No.1 did not file any invoices or any other documents evidencing the user of the impugned mark. Therefore, the mark is liabl
12. In this regard, r this Bench in DORCO Co. Ltd. SCC OnLine Del 1484 wherein this Court had mark on the ground of non (supra) are set out below: “8. In the judgment in Petroleum Company Ltd. IPAB that the onus same. However, when the applicant pleads “non must specifically deny it. Therefore, in the absence of a specific denial, it was held that the allegations of “non
9. In the present case, the allegations of “non respondent no.1 stand admitted in the absence of a specific denial of the same and the impugned trademark is liable to be removed from the Register of Trade Marks on account of “non under Section 47(1)(b) of the Act
10. From the facts detailed above, it is clear that the petitioner is the proprietor of the impugned trademark. to be the proprietor of the impugned trademark as show as to how the impugned trademark has been adopted by the respondent no.1. impugned trademark is in contravention of Section 18(1) of the Act. In fact, the registration of the petit goods, was pending in India and was also cited as a conflicting mark in the examination report issued in the application for registration of the impugned trade mark. Therefore, as per Sections 9(1)(a) and 11(1)( the Act, the registration of the impugned trademark could not be granted.”
13. Furthermore, evidence on record, the taken to be admitted. It is trite law that in the absence of any denia A perusal of the record would show that Respondent No.1 did not file Therefore, the mark is liable to be removed on the ground of non In this regard, reference may be made to an earlier decision passed by DORCO Co. Ltd. v. Durga Enterprises and Another SCC OnLine Del 1484 wherein this Court had ordered the removal of mark on the ground of non-user. The relevant observations (supra) are set out below: In the judgment in Shell Transource Limitedv.Shell International Petroleum Company Ltd.¸ 2012 SCC IPAB 29, it was observed by the IPAB that the onus of proving “non-user” is on the person who pleads the same. However, when the applicant pleads “non-user”, the respondent was held that the allegations of “non-user” stood admitt In the present case, the allegations of “non- Register of Trade Marks on account of “non-user” as contemplated under Section 47(1)(b) of the Act. From the facts detailed above, it is clear that the petitioner is the proprietor of the impugned trademark. The respondent no.1 cannot claim to be the proprietor of the impugned trademark as there is nothing to respondent no.1. Therefore, the application for registration of the fact, the registration of the petitioner’s identical mark in respect of similar impugned trade mark. Therefore, as per Sections 9(1)(a) and 11(1)( Furthermore, based on the averments made in the petition and the evidence on record, the Petitioner has established that it is the prior n the absence of any denial to the A perusal of the record would show that Respondent No.1 did not file e to be removed on the ground of non-user. made to an earlier decision passed by Durga Enterprises and Another, 2023 ordered the removal of the observations from DORCO Shell Transource Limitedv.Shell International ¸ 2012 SCC IPAB 29, it was observed by the user” is on the person who pleads the user”, the respondent user” stood admitted. -user” against the er” as contemplated From the facts detailed above, it is clear that the petitioner is the The respondent no.1 cannot claim there is nothing to Therefore, the application for registration of the ioner’s identical mark in respect of similar impugned trade mark. Therefore, as per Sections 9(1)(a) and 11(1)(a) of [Emphasis applied] the averments made in the petition and the etitioner has established that it is the prior registered proprietor and a prior user of the mark ‘ formative marks since the year
14. The adoption and the use of the impugned mark by which is very similar to the trademark ‘ to create confusion in the market. Not only is the trademark of the Respondent No.1 confusingly/deceptively similar to the adopted/ registered trademark ‘ nature of the goods of the i.e.,edible food products
15. In view of the discussion above, it is clear that the impugned mark has been adopted by goodwill and reputation of the associated with the registration on the Register of Trade Marks is in contravention 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 impugned trademark registration under the trademark application no. name of Respondent Marks.
17. A copy of the order be sent to the Respondents through e Registry is directed to supply a copy of the present order to the Trademark Registry, at e-mail NOVEMBER 22, 2024 kd proprietor and a prior user of the mark ‘GANESH formative marks since the year 1936 through its predecessor. The adoption and the use of the impugned mark by which is very similar to the trademark ‘GANESH’ of the o.[1] confusingly/deceptively similar to the registered trademark ‘GANESH’ or its formative marks but the nature of the goods of the Petitioner and the Respondent,edible food products falling in Class 30. In view of the discussion above, it is clear that the impugned mark has been adopted by 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 Section 57 of the Act. Accordingly, the present petition is allowed and the impugned trademark registration under the trademark application no. name of Respondent No.1 in Class 30 is removed from the Register of Trade A copy of the order be sent to the Respondents through e mail – “llc-ipo@gov.in” for compliance.
NOVEMBER 22, 2024 GANESH’ and its other through its predecessor. The adoption and the use of the impugned mark by Respondent No.1, ’ of the Petitioner, is likely o.[1] confusingly/deceptively similar to the Petitioner’s prior ’ or its formative marks but the espondent No.1 are identical, In view of the discussion above, it is clear that the impugned mark has o.[1] dishonestly to trade upon the established etitioner and to project itself to be etitioner. Therefore, the continuation of the impugned registration on the Register of Trade Marks is in contravention of the Accordingly, the present petition is allowed and the impugned trademark registration under the trademark application no. 1314228 in the 0 is removed from the Register of Trade A copy of the order be sent to the Respondents through e-mail. The nce. AMIT BANSAL, J