Full Text
Date of Decision: 27th August, 2024 C.O. (COMM.IPD-TM) 319/2022
HYUNDAI MOTOR INDIA LIMITED .....Petitioner
Through: Mr. Manish Biala and Mr. Devesh Ratan, Advs.
M: 9810333571 Email: manish@anandandanand.com
Through: Mr. Srish Kumar Mishra, Mr. Alexander Mathai Paikaday and Mr. Sagar Mehlawat, Advs.
M: 7800932000 Email: hvscgscdhc@gmail.com
JUDGMENT
1. The present rectification petition has been filed for rectifying/cancelling the trademark registration no. 1389640 in Class 11 for the mark registered in the name of respondent no.1.
2. The case of the petitioner, as canvassed in the petition, is as follows: i. The petitioner forms part of the internationally renowned Hyundai Group engaged in manufacturing automobiles (Cars). Whereas, the Hyundai Group was founded in 1947, as Hyundai Engineering and Construction Company in Korea, the Hyundai Motor Company was established in 1967 in Korea. ii. The petitioner‟s parent company, Hyundai Motor Company, Korea uniquely adopted the word „ELANTRA‟ in the year 1990/1991 internationally in relation to their goods and business. Thus, the petitioner being the original and unique originator of the mark „ELANRA‟ is entitled to use the said mark, to the exclusion of all others. iii. The petitioner started manufacturing their goods under the trademark „ELANTRA‟ at their factory near Chennai, India in 2002, and introduced their car under the name „ELANTRA‟ in the year 2003 in the D-Segment, that is the premium sedan. iv. The petitioner‟s product under the mark „ELANTRA‟ has won several awards and accolades. The „ELANTRA‟ mark, and products of the petitioner, have been regularly advertised and promoted in both print and electronic media internationally, ever since its inception in 1990/1991, and in India since 2002/2003, by the petitioner. v. The petitioner is the proprietor of registered trademark „ELANTRA‟ word mark as well as label since 1990, 2004 and 2007, as per the table given in the plaint. vi. The petitioner has huge turnover from the sale of the car of the petitioner, under the mark „ELANTRA‟. vii. The respondent registered the impugned trademark, i.e.,, which is similar to the prior registered trademark of the petitioner. Therefore, the said mark of the respondent cannot be allowed to continue in the trademark register being similar to the prior registered mark of the petitioner.
3. None appears for respondent no.1, despite service of notice.
4. Attention of this Court has been drawn to the affidavit of service, wherein, it shows that service has been effected upon respondent no.1, on the E-mail, which is registered on the website of the Ministry of Corporate Affairs (“MCA”).
5. Thus, this Court is of the view that valid service has been effected upon respondent no.1. In these circumstances this Court has proceeded to hear the present matter.
6. I have learned counsel appearing for the petitioner, as well as respondent no.2.
7. At the outset, it is to be noted that the petitioner is the registered proprietor of the mark „ELANTRA‟ in India under Class 12, details of which, are as follows:
8. Thus, it is clear that the petitioner has registrations of its trademarks „ELANTRA‟ from the year 1990, onwards.
9. This Court notes the submission made by learned counsel appearing for the petitioner that the petitioner continues to use its trademark „ELANTRA‟, even today.
10. This Court also notes the sale volumes of the petitioner under the mark „ELANTRA‟ since its launch in India, as given in the petition, which is as follows:
11. This Court also notes the various awards that have been conferred upon the petitioner for its product, under the mark ELANTRA.
12. Perusal of the submissions made in the petition and the documents on record, show that the petitioner has priority in adoption of the mark „ELANTRA‟ and the same has been used continuously and extensively by the petitioner. It is also to be noted that the petitioner not only has registrations for the trademark „ELANTRA‟ in India, but in several other countries.
13. This Court notes that the mark ELANTRA was adopted by the petitioner in India in the year 2002/2003 and internationally in the year 1990-1991 by the parent company of the petitioner. Further, it is to be noted that the mark ELANTRA is a coined and uniquely invented mark, which has no relation to the goods and is thus, inherently distinctive.
14. The document pertaining to the registration of trademark „ELANTRA‟ in favour of the respondent no.1, is reproduced as under:
15. Perusal of the aforesaid shows that the date of the application of the respondent no.1‟s mark is 05th October, 2005, with user detail from 18th July, 2005.
16. This Court notes the submission made by learned counsel appearing for the petitioner that the petitioner has not come across any usage of the respondent‟s mark ELANTRA, by the said respondent.
17. It is clear that adoption and proposed use of a visually, phonetically and structurally identical mark ELANTRA is likely to cause confusion and/or deception in the relevant segment of the market and amongst the consumers amounting to passing off of the products of the respondent no.1, as those of the petitioner. It would be logical for any person to associate the products of the respondent no.1 bearing the mark ELANTRA, with those of the petitioner.
18. This Court also notes that in view of the prior adoption and registration in favour of the petitioner, such registration in favour of the respondent no.1 or use of the said mark by the said respondent would amount to misrepresentation and misappropriation of the petitioner‟s goodwill and reputation and act as unfair competition.
19. Thus, this Court is of the view that the impugned mark is liable to be expunged from the trademarks register, as the said entry has been made without any sufficient cause and wrongly remains on the register of the trademarks. It is to be noted that petitioner is the owner of the trademark „ELANTRA‟ and various ELANTRA formative trademarks by virtue of prior adoption, continuous and extensive use thereof. Therefore, the petitioner has acquired the exclusive rights to the use of the trademark by virtue of being a prior registered proprietor of the trademark „ELANTRA‟ and ELANTRA formative trademarks in India.
20. Accordingly, it is held that the impugned mark was registered in contravention of the provisions of Section 11(1) of the Trade Marks Act,
1999. The impugned mark is identical to the petitioner‟s trademark „ELANTRA‟ and various ELANTRA formative marks in their entirety.
21. It is further to be noted that while the trademark of the petitioner is registered in Class 12, the mark of the respondent no.1 registered in Class 11. It is to be noted that refrigeration system and air conditioning in the car, for which the respondent no.1 has registered the trademark in its favour, is similar and cognate to the goods of the petitioner.
22. Accordingly, following direction are issued: i. The trademark no. 1389640 in Class 11 for the mark „ELANTRA‟, registered in favour of respondent no.1, is hereby cancelled. ii. The respondent no.2, i.e., the Registrar of Trademark is directed to rectify its register, accordingly. The said information, be also uploaded, on its website.
23. The Registry of this Court is directed to communicate a copy of this Order to the Registrar of Trade Marks, at Email: llc-ipo@gov.in, for compliance.
24. With the aforesaid directions, the present petition is disposed of. MINI PUSHKARNA, J AUGUST 27, 2024