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Through: Mr. Vikramjeet Singh, Advocate (through VC).
Through: Mr. Harish Vaidyanathan Shankar, CGSC
Mr. Krishnan V., Advs. for R-2.
JUDGMENT
1. This petitionunderSection47 oftheTradeMarksAct,1999 (‘theAct’) seeks removal of respondent no.1’s trademark “AL-WALIMAH” registered as trademarkno. 523217dated22nd January, 1990in Class30(‘theimpugned mark’).
2. The matterwas initiallyfiled beforethe IntellectualPropertyAppellate Board (‘IPAB’)in 2017 and was subsequently transferred to this Courtupon abolitionofIPAB in 2021. Noticewas issued torespondentno.1 buttherewas C.O. (COMM.IPD-TM) 90/2021 Page 2/14 no appearance and respondent no.1 was proceeded ex parte by order of this Court dated 1st September, 2023. While the matter was pending before the Court, petitioner was successful in two of its trademark registration applications (petitioner had filed a total of five trademark applications) and the mark “AL-WALIMAH” was registered in its favour in respect of trademark nos. 896370and1271981 for marks and respectively for goods in Class 30, namely, rice. Submissions on behalf of Petitioner
3. Petitioner’s counsel has essentially adverted to grounds under Section 47 of theAct in respect ofnon-useoftheimpugned mark by respondentno.1. Respondent no.1 filed an application for registration of the mark “AL- C.O. (COMM.IPD-TM) 90/2021 Page 3/14 WALIMAH” in Class 30 claiming user since 1st April, 1975. Since no opposition was filed post publication, the impugned mark was registered in favour of respondent no.1 on 13th November, 1995.
4. Petitioner, however, claims that the said mark was neither used by respondentno.1priorto filing of application norany timethereafter. Forease of reference, the relevant extract from Section 47 of the Act, on the basis of which this petition is asserted, is reproduced below:
C.O. (COMM.IPD-TM) 90/2021 Page 4/14 (emphasis added)
5. Further reliance is placed on Section 2(2)(c) of the Act for context of the phrase ‘use of a trademark’ which provision is extracted below: “(2) In this Act, unless the context otherwise requires, any reference— …
(c) to the use of a mark,—
(i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods;
(ii) in relation to services, shallbeconstrued asa reference to the use of the mark as or as partof anystatement about the availability, provision or performance of such services;”
6. Reliancewas also placed on thedecisionoftheHon’bleSupremeCourt in Corn ProductsRefined Companyv. Shangrila FoodProductsLtd.,(1959) SCC OnLine SC 11, in particular on para 16, where the Court observed the following: “16....Now ofcoursethepresence of a mark in the register does notprove its user all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register....”
7. On this basis, petitioner’s counsel submits that as per Section 47(1)(b) of the Act, the expiry of five years and three months would be on 13th February, 2001, much prior to the instant petition being filed. Further, it was C.O. (COMM.IPD-TM) 90/2021 Page 5/14 claimed that petitioner had established prior use of the trademark “AL- WALIMAH” and had acquired reputation and goodwill in the said mark. Grounds were also pressed, therefore, inter alia, under Sections 9(1)(a), 9(2)(a), 11(1)(a) and (b), 11(2), 11(3), 11(10)(i)and (ii), 12, and18 oftheAct. Notwithstanding various grounds urged in the petition, petitioner’s counsel effectively pressed the ground of non-use under Section 47 of the Act.
8. Petitioner claims to be the owner of mark “AL-WALIMAH” and is purportedlyin continuous and extensiveusesince 1980. It, therefore, claims to be a “person aggrieved” under Section 47 of the Act. Petitioner claims to havebeen founded in theyear 1959 and is a major strategicplayerin thefood distribution sector in the Kingdom of Saudi Arabia. Petitioner specializes in trading, distribution,and marketingof rice. It claims to be one of the reputed names in Middle East and several other countries around the world, and has relied upon various documents appended with the petition, including one particular Letter of Credit dated 20th November, 2023 for an order for export of 1500 metric tons of rice from India at a cost of USD 7.[7] million.
9. Petitioner hasalsoclaimed high levelofturnoverin relation to the“AL- WALIMAH”brandand thetabulationgiven by thepetitioner in relationto its sales figures is as under: C.O. (COMM.IPD-TM) 90/2021 Page 6/14
10. Petitioner alsoadvertisesits productsin magazines andnewspapers, and has a registered domainname www.alwalimah.com andoperates a websiteon C.O. (COMM.IPD-TM) 90/2021 Page 7/14 the said domain name.
11. Petitioner sells Indian Basmatiricemajorly in MiddleEastern countries under the said trademark “AL-WALIMAH”. Petitioner claims that the said mark means “the reception” in Arabic;and that thesaid mark is registered in favour of the petitioner in several Middle Eastern Countries. Petitioner also applied for registration of the mark “AL-WALIMAH” through five applications in India, all of which were opposed by respondent no.1.
12. Petitioner’s counsel further submits that respondent no.1 had business relations with petitioner and was, therefore, aware of the use of the mark by petitioner. Proforma invoice dated 5th May, 1995 appended with the petition was referred foranorderplaced on respondentno.1 bythepetitioner for export of 4950 metric tonnes of rice. Petitioner’s counsel submits that considering that respondent no.1 wasaware ofpetitioner’smark, they dishonestly applied for the mark in India and got the impugned registration.
13. As stated above, duringthependency ofthis petition, twodevicemarks have now been registered in favour of the petitioner, which include text and artisticwork includingthe word “AL-WALIMAH”, in Class 30. Respondent no.1 has apparently stopped appearingin the oppositionsbeforetheRegistrar of Trade Marks. Considering that these pleas are unrebutted by respondent no.1, they would be accepted for the purposes of this petition. Investigation Report C.O. (COMM.IPD-TM) 90/2021 Page 8/14
14. Relianceis also placed bypetitioner on aninvestigation reportdated 2nd February, 2024 (‘theinvestigation report’)in respect ofuseof theimpugned mark by respondent no.1. The investigation was conducted at two places – namely, Post Office Gilwali, Sangrana Sahib, Tarn Taran Road, Amritsar, Punjab -143006and 17‐A, CantonmentAmritsar, Amritsar,Punjab‐143001.
15. On the premises at Tarn Taran Road, they found a commercial unit in thenameof ‘PariAgro Exports’withits board beingdisplayed atthe location. Photographs of the same are extracted below:
16. Theinvestigatorswereapparently informed bythesecurity staff that the premiseswerebeing used as a warehouseby Pari Agro Exports for tradingof rice, and they were not familiar with the impugned mark “AL-WALIMAH”. They werefurtherinformed thatrespondent no.1hadearlier operated fromthe premises, but had vacated it some months ago, and the premises were C.O. (COMM.IPD-TM) 90/2021 Page 9/14 subsequently let out to Pari Agro Exports by respondent no.1.
17. As regards the premises at Cantonment Amritsar, it was informed by local personsthatrespondent no.1had previouslybeen runninga rice shop in the market but had left 6-7 months ago, and the shop was currently vacant. They were not awareof the impugned mark“AL-WALIMAH”. Photographs of the said premises are extracted below:
18. Market survey ofrelevantshops in Amritsarwasalsoconducted andno rice product under the impugned mark was found in the said market survey, C.O. (COMM.IPD-TM) 90/2021 Page 10/14 nor did any shopkeeper expressany knowledgein that regard. Additionally,a survey wascarried outin shops at Delhi which also led to thesameresult and it was found that noneoftheshopkeepers wereawareofthe impugned mark.
19. Accordingly, on the basis of the investigation report, the petitioner buttressed its contention relating to ‘non-use’ under Section 47 of the Act. Analysis and Conclusion
20. TheCourt has considered the submissionsmadeby petitioner’scounsel and perused the documents on record.
21. The principalquestionto beanswered in theinstantpetitionis whether theimpugned mark is liableto be removed underSection 47 oftheAct on the ground of non-use.
22. Hon’bleSupremeCourtin para26 of HardieTrading Ltd. v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92 underscored the triple test required to besatisfied for a direction for removalofa mark underSection 46 of the Trade and Merchandise Marks Act, 1958, which is pari materia to Section 47 of the Trade Marks Act, 1999. The said paragraph is extracted below: “26. Thusbeforethe High CourtortheRegistrardirects the removal of the registered trade marks they must be satisfied in respect of the following: (1) that the application is by a “person aggrieved”; (2) that the trade mark has not been used by the proprietor for continuous period of at least five years C.O. (COMM.IPD-TM) 90/2021 Page 11/14 and one month prior to the date of the application; (3) there were no special circumstances which affected the use of the trade mark during this period by the proprietor.”
23. A “person aggrieved”has been described in thefollowingterms by the Hon’bleSupremeCourt in Infosys TechnologiesLtd. v. JupiterInfosys Ltd.,
24. In view of the fact that respondent no.1 had opposed the petitioner’s applications for registrations; that petitioner is the user of the mark “AL- WALIMAH”in variouscountries and;thatthepetitioner is now theholder of two trademarkregistrationsin thesaidmark in India, thepetitioneris evidently a “person aggrieved” under Section 47 of the Act.
25. A bare reading of Section 47 of the Act reveals that a registered trademark is liable to be taken off the Register of TradeMarks ifthe mark is not used for a periodof five years and threemonthspriorto thedateof filing of the petition.
26. The investigation report, prima facie, reveals that the impugned mark was never used by respondent no.1. Furthermore, respondent no.1 also conducted a market surveyofrelevant shopsin AmritsarandDelhi;however, no riceproductunder theimpugned markwasfoundin thesaidmarket survey, nor did anyshopkeeper express anyknowledgein thatregard. This Courtfinds no reason to disbelieve the investigator’s report.
27. Considering that respondent no.1 has been proceeded ex parte and no responsehasbeen filed by it, petitioner’saverments standunrebutted. Further, theevidencewhich has been placed withregard tonon-useby respondent no.1 can be relied upon, in light of there being no repudiation of the same by C.O. (COMM.IPD-TM) 90/2021 Page 13/14 respondentno.1. Thepetitionwas filed in 2017 beforetheIPAB and till date, there is no statement or response on behalf of respondent no.1 in relation to their case. It is evident that respondent no.1is not interested in contestingthe matter.
28. Therefore, in view of the decision of this Court in Disney Enterprises Inc. v. Balraj Muttneja, 2014 SCC OnLine Del 781, no further evidence would berequiredin thismatter.This position hasbeen reiterated bytheCourt on severaloccasions,includingrecently in RussellCorpn. Australia Pty. Ltd. v. Ashok Mahajan, (2023) SCC Online Del 4796, wherein the following relevant observation was made:
29. Considering that there was business dealing between respondent no.1 and the petitioner in relation to export of rice, it is quite possible that C.O. (COMM.IPD-TM) 90/2021 Page 14/14 respondent no.1 applied for registration of the impugned mark and procured the same without petitioner’s knowledge. As per petitioner, the mark “AL- WALIMAH” is an Arabic word having a specific connotation, being used extensively in theMiddleEastby thepetitioner forrice, andhasnoassociation with respondent no. 1.
30. In view of thefacts and circumstances statedabove, asidefrom various other grounds urged, the instant petition can be allowed in terms of Section 47(1) of the Act, there being no bona fide use of the impugned mark by respondent no.1 in relation to goods in Class 30, particularly, ‘rice’.
31. Accordingly, the present petition is allowed. It is directed that the impugned mark under trademarkno. 523217dated 22nd January, 1990for the mark “AL-WALIMAH” in Class 30 be removed from the Register of Trade Marks, and the website of respondent no. 2, Registrar of Trade Marks, be updated accordingly. Thisdirection shall begiven effect to within four weeks. A copy of this decision be supplied to the Trade Mark Registry at llcipo@gov.in for compliance.
32. Petition is accordingly disposed of.
33. Pending applications, if any, are disposed of as infructuous.
34. Judgment be uploaded on the website of this Court.
ANISH DAYAL, J. C.O. (COMM.IPD-TM) 90/2021 Page 15/14 FEBRUARY 15, 2024/sm/rj