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Date of Decision: 17.09.2024 C.O. (COMM.IPD-TM) 297/2023 & I.A. 23407/2023
TREASURE STUDIO INC & ANR. .....Petitioners
Through: Ms. Mamta R. Jha, Ms. Anindhya Sharma, Ms. Reha Mohan and Mr. Pramit Rastogi, Advs.
M: 9997930126 Email: mamta@inttladvocare.com
Through: None.
JUDGMENT
1. The present petition has been filed under Section 57 of the Trade Marks Act, 1999 seeking rectification/removal of the trademark bearing registration no. 4072531 dated 30th January, 2019 in Class-24 registered in the name of respondent no.1 from the Register of Trade Marks.
2. Perusal of the order sheets show that despite service, the respondent no. 1 has not entered appearance, till date.
3. Attention of this Court has been drawn to the affidavit of service to show that service has been done upon respondent no. 1, through Email and WhatsApp. The affidavit of service filed on behalf of the petitioner, in this regard, reads as under: “xxx xxx xxx
3. I say that the complete petition has been sent to the Respondent No. 1 via registered post on 30.10.2023 at the address Babil Rd, Chandni Bagh Ramnagar, Hari Om Nagar, Panipat, Haryana
132103. A copy of the postal receipt is annexed herewith and marked as DOCUMENT – 1.
4. I say that the complete petition has also been sent to the e-mail addresses of Respondent No. 2 being delhi.tmr@nic.in, hodel.tr_nr@nic.in and hvscgscdhc@gmail.com from my e-mail ID i.e., manish@inttladvocare.com on 01.11.2023. A copy of the e-mail is annexed herewith and marked as DOCUMENT - 2.
5. I say that the said e-mail has not bounced back. I say that the Respondent No. 2 have been duly served via e-mail as mentioned above.”
4. This Court notes that the Trademark Attorney for respondent no. 1 has also been served, who informed the process server that the respondent no. 1 will engage another counsel from Delhi. In this regard, order dated 27th May, 2024, reads as under:
5. In view of the aforesaid, it is clear that respondent no. 1 is aware of the present proceedings, and has chosen not to appear before this Court despite service, as well as knowledge of the present proceedings.
6. Accordingly, respondent no. 1 is proceeded ex-parte and this Court proceeds to hear the matter today.
7. As per the case canvassed on behalf of the petitioner, the facts are as follows: 7.[1] The petitioner no. 1 is a children’s entertainment company, which creates animated videos for young children under the name/trademark ‘COCOMELON’. The petitioner no. 1 was founded in the year 2005 with an aim to make content catering to toddlers and children. 7.[2] Petitioner no. 1 launched its YouTube Channel in the year 2006 creating the channel ABCKidsTV, with intent to widely distribute their high quality content. The petitioner no. 1’s YouTube channel ABCKidsTV has now been renamed as ‘COCOMELON’, and it is one of the oldest children’s Channel on YouTube. 7.[3] Petitioner no. 2 is a global entertainment company founded in year 2018, which creates and distributes inspiring and engaging content for children. The petitioner no. 2 acquired petitioner no. 1 in the year 2020 and continues to publish and market goods and services offered under the trademark /COCOMELON. 7.[4] Petitioner no. 1 in the year 2017 adopted the name/trademark ‘COCOMELON’ for their already successful and popular YouTube channel. The trademark ‘COCOMELON’ of the petitioners is a coined trademark, having no meaning in the dictionary or in the common parlance. Therefore, the mark is an inherently distinctive trademark. 7.[5] The petitioners are also the registered proprietors and owner of the intellectual property associated with the trademark / COCOMELON, across the world, including, in India. 7.[6] Since the adoption of the petitioner’s trademark /COCOMELON in the year 2017, the members of the public in India have been aware about the same, as well as the services and goods provided thereunder. The petitioner’s YouTube channel under the name ‘COCOMELON’ is immensely popular across the world, including India, with more than 165 million subscribers worldwide. As of September, 2023, it is the most-watched children’s YouTube channel in the world. 7.[7] Petitioners channel under the trademark / COCOMELON, enjoys huge popularity on other social media platforms such as Facebook and Instagram, where user/followers, are apprised of all the latest videos, products and events of the petitioners. 7.[8] It is submitted that the petitioner no. 2 also operates a website bearing the domain name https://www.cocomelon.com/ and operates other third party social media accounts under the trade mark /COCOMELON. The petitioner no. 2’s domain name www.cocomelon.com, which contains the trademark in its entirety, is accessible to users all over the world, including in India. 7.[9] It is further submitted that the petitioners via their licensees are also engaged, in marketing and selling a wide range of consumer products, including, blankets, pillows and cushions, bedding, towels, clothing, readymade garments, backpacks, shoes, toys etc., under the well-known trademark /COCOMELON. The aforesaid products are available in retail outlets and toy stores across the world, as well as on the website www.cocomelon.com. The products of the petitioners are also available for sale on the global e-commerce platform, i.e., Amazon.
7.10 Thus, as a result of continuous and extensive usage, promotion enormous activities and viewership in many countries across the world, including in India, the trademark / COCOMELON, enjoys worldwide reputation and the public has come to exclusively associate the same with the petitioners.
7.11 The petitioners have been using the trademark / COCOMELON, with respect to goods and services relating to audio and video recordings featuring children’s nursery rhymes, songs, education services, entertainment services as well as for merchandise such as blankets, pillow covers, clothing, readymade garments, bag packs, shoes, toys, etc. Thus, the petitioners have acquired enviable reputation and goodwill in the mark / COCOMELON, which is distinctive and is exclusively associated with the petitioners alone. On account of extensive and continuous commercial use, the trademark / COCOMELON, of the petitioners is well-known amongst the relevant section of the public, internationally and in India.
7.12 Thus, the petitioners’ trademark / COCOMELON, has acquired goodwill and reputation internationally as well as in India and has become distinctive of the wide range of products and services, including, but not limited to audio and video recordings featuring children's nursery rhymes, songs, education services, entertainment services and merchandise such as blankets, pillow covers, clothing, readymade garments, bag packs, shoes, toys, etc.
7.13 It is the case of the petitioner that respondent no. 1 has fraudulently and frivolously obtained the registration of the impugned mark, which is liable to be rectified and expunged in order to preserve the purity of the Register of Trade Marks. It is submitted that there cannot be any reason or justification for the respondent no. 1 to have adopted the impugned trademark, except to trade upon the goodwill and reputation of the prior adopted, prior used, registered and well-known trademark / COCOMELON of the petitioners.
8. I have heard learned counsel appearing for the petitioners and in view of the fact that no appearance has been made on behalf of respondent no. 1, despite service, the respondent no. 1 has been proceeded ex-parte.
9. At the outset, this Court notes that the petitioners are the registered proprietors and owner of the intellectual property associated with the trademark / COCOMELON, across the world, including, in India. The details of the trademark registrations obtained by petitioner no. 1 for the trademark / COCOMELON, in India, as given in the petition, are as follows:
10. As per the record, the said registrations in favour of the petitioners are valid, renewed, and subsisting in the Trade Marks Register as on date.
11. This Court also notes that apart from the registrations of the trademark / COCOMELON in India, the petitioners have also obtained registrations in various jurisdictions across the globe, details of which, are as follows:
12. This Court also records the submissions made by the petitioner in the present petition, to the following effect: 12.4.[1] The Petitioners' YouTube channel under the trade mark / COCOMELON is one of the leading YouTube channels in the made-for-kids space with subscribers numbering 165 million as of September 2023. Documents evidencing the above statements are annexed herewith and marked as DOCUMENT-12 (COLLY). 12.4.[2] The Petitioners' channel under the trade mark / COCOMELON enjoys huge popularity on other social media platforms such as Facebook and Instagram where users/followers are apprised of all the latest videos, products and events of the Petitioners. The popularity of the Petitioners’ trade mark / COCOMELON is further evident from the following figures pertaining to Petitioner’s social media pages for COCOMELON: Screenshots from the Petitioners' official social media pages showing the popularity of the trade mark / COCOMELON on the same are annexed herewith and collectively marked as DOCUMENT - 13 (COLLY). 12.4.[3] In addition to the above, the Petitioners and/or their licensees under their trade mark / COCOMELON have also been felicitated with several awards and recognitions on numerous instances over the years and have garnered an impeccable reputation for themselves. The brand / COCOMELON has won a large number of recognitions and awards, some of which are enlisted herein below: Printouts of the documents showing various awards in favour of the Petitioners under the trade mark / COCOMELON are annexed herewith and collectively marked as DOCUMENT-14 (COLLY). 12.4.[4] Owing to the immense popularity of the COCOMELON YouTube channel, the Petitioners also distribute content under the trade mark / COCOMELON beyond YouTube and via other distribution methods which have become very popular. For example, the Petitioners' series content under the name/ trade mark / COCOMELON was ranked No. 1 on Netflix as the most popular show in the year 2020. Documents evidencing the same are annexed herewith and collectively marked as DOCUMENT-15 (COLLY). Owing to the popularity of the show under the trade mark / COCOMELON, the same is also aired on various video streaming platforms such as Prime Video, Hulu, Future Today, Showmax, Noga, Spacetoons, KT TV, etc. Documents evidencing the same are annexed herewith and marked as DOCUMENT-16 (COLLY). Such popularity, recognition and fame earned by the Petitioners under the trade mark / COCOMELON, has also led to the worldwide distribution and sale of COCOMELON merchandise which are sold in numerous countries of the world. xxx xxx xxx”
13. This Court further notes the submission of the petitioners that the petitioners have been using the trademark / COCOMELON with respect to not only goods and services relating to audio and video recordings featuring children’s nursery rhymes, songs, education services, entertainment services, but also, for merchandise such as blankets, pillow covers, clothing, readymade garments, bag packs, shoes, toys, etc. The submission in this regard, as made in the petition, is as under: 12.4.[5] The Petitioners have been using the trade mark / COCOMELON with respect to goods and services relating to audio and video recordings featuring children's nursery rhymes, songs, education services, entertainment services and merchandise such as blankets, pillow covers, clothing, readymade garments, bag packs, shoes, toys etc. Thus, the Petitioners have acquired enviable reputation and goodwill in the trade mark / COCOMELON, which is distinctive and is exclusively associated with the Petitioners alone. On account of extensive and continuous commercial use, the trade mark / COCOMELON of the Petitioners is wellknown amongst the relevant section of the public, internationally and in India. Printouts of online articles showing the YouTube channel under the trade mark / COCOMELON in the list of "Top 50 Most Viewed YouTube Channels Worldwide" / "Top Ten Most Subscribed Y ouTube Channels In The World" are annexed and collectively marked herewith as DOCUMENT – 17 (COLLY). xxx xxx xxx”
14. The document of registration in favour of the petitioners for the word mark ‘COCOMELON’, showing the user detail, from 26th August, 2018, is reproduced as under:
15. The certificate of registration of trademark in favour of the petitioner for the word mark ‘COCOMELON’ for various goods and services in Classes - 9 and 41, is reproduced as under:
16. Further, this court notes that the petitioners also have registration for the device mark ‘COCOMELON’ in their favour, with the user from 26th August, 2018. The document pertaining to the registration of the device mark ‘COCOMELON’ in favour of the petitioners, is reproduced as under:
17. The certificate for use in legal proceedings for the trademark as well as device mark ‘COCOMELON’, as issued by the Trade Mark Registry in favour of the petitioners, is also on record, which has been perused by this court.
18. Further, this Court has also perused the document of registration in favour of respondent no. 1, wherein, the application was made by respondent no. 1 on 30th January, 2019, with the user claim as ‘proposed to be used’. The document of registration for the mark ‘COCOMELON’ in favour of the respondent no. 1, is reproduced as under:
19. Thus, perusal of the aforesaid document clearly shows that the petitioners’ trademark and the respondent no. 1’s mark are deceptively similar. The table showing the comparison between the petitioners’ trademark and the impugned mark of respondent no. 1, is reproduced as hereunder:
20. The above comparison of the two marks clearly shows that the respondent no. 1 has adopted the impugned mark by copying the nearly identical font and colour combination, thereby, giving an overall impression of the petitioners’ trademark.
21. It is not necessary that in order to constitute infringement, the impugned trademark should be an absolute replica of the registered trademark of the petitioner. It would be sufficient if the petitioner is able to show that the trademark adopted by the respondent resembles its trademark in a substantial degree, on account of extensive use of the main features found in his trademark. Minor variations or distinguishing features of the infringing mark would not be material, in case, resemblance in the two trademarks is found to be substantial to the extent that the impugned trademark is found to be similar to the registered trademark of the petitioner (See: Greaves Cotton Limited versus Mr. Mohammad Rafi & Ors., 2011 SCC OnLine Del 2596).
22. Thus, it is clear that the adoption of the impugned mark by the respondent no. 1 is dishonest, unfair and in bad faith. The adoption of the impugned mark is likely to induce an injurious association between the goods and business of the respondent no. 1, with those of the petitioners, in the minds of the members of the trade, consumers and relevant section of the public.
23. In view of the aforesaid detailed discussion, the adoption and registration of the identical impugned mark in a nearly identical font and colour combination by the respondent no. 1, cannot stand in the Register of Trade Mark and is liable to be removed.
24. Further, the registration in favour of respondent no. 1, is in contravention of provisions of Section 11(1), Section 11(2) read with Section 29(4), Section 11(3)(a), Section 11(3)(b), Section 11(10) and 18(4) of the Trade Mark Act.
25. Accordingly, the impugned registration of the trademark bearing registration no. 4072531 in Class 24, is cancelled, and directed to be removed from the Register of Trade Marks. Rectification be carried out by the Registrar of Trade Marks, and its website be updated, in terms thereof.
26. The Registry is directed to supply a copy of the present order to the Office of the Controller General of Patents, Designs and Trade Marks of India, on E-mail Id: llc-ipo@gov.in, for compliance.
27. With the aforesaid directions, the present petition is disposed of. MINI PUSHKARNA, J SEPTEMBER 17, 2024