Roopak’s Pik and Pay v. The Registrar of Trademarks

1. This hearing has been done through hybrid mode.

2. The present appeal has been filed by the Appellant- Roopak’s Pik-N- Pay under Section 91(1) of the Trade Marks Act, 1999 challenging the impugned order dated 30th August, 2019 passed by the Respondent No. 1the Registrar of Trade Marks (‘the Registrar’) by which the Appellant’s trade mark application No. 2807794 in Class 35 (hereinafter, ‘the application’) has been rejected. The details of the application are as under:- Number Date Mark Goods in Class 35 2807794 12/09/2014 ROOPAK'S PIK-N-PAY Advertising, Business Management, Business administration, office functions, display, exhibition, trading and marketing services in relation to preserved, dried and cooked fruits and vegetables, jellies, jams, fruit sauces, eggs, milk and, milk products, dairy products, dry fruits, popcorns, edible oils, ghee, pickles and fats,, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments), spices, ice, atta, maida, sooji, besan, rice, namkeens, biscuits, maize, noodles, pizza, rusk, corn flakes, Mineral water, aerated water, non-alcholic drinks, fruit drinks, fruit juices, syrups and other preparations for making beverages.

3. The present appeal was originally filed before the Intellectual Property Appellate Board (‘IPAB’) in 2020, and thereafter was transferred to this Court 2021 upon the abolition of the IPAB.

4. The grounds for rejecting the application are the presence of other similar marks cited by the Respondent No. 1 in the Search Report dated 11th July 2016 with the name ROOPAK and/or ROOPAK STORES. The Search Report is as follows:

5. Ld. Counsel for the Appellant, Mr. Puvesh Buttan submits that all the marks cited in the above Search Report belong to his family comprising of his father-Mr. Satpal Gulati and other family members. Further, there have been disputes between the Appellant and his other family in relation to the mark ‘ROOPAK’ resulting in a suit CS(COMM) 741/2017 titled Roopak Stores Pvt. Ltd. v. Roopaks Pik-N-Pay.

6. In the said suit, an application for interim injunction was filed by ‘Roopak Stores Pvt. Ltd’ in which Mr. Satpal Gulati is a director. This Court vide order dated 25th March, 2019 and 17th July 2019 observed that the Appellant herein shall be permitted to use the mark ‘ROOPAK’S PIK N PAY’ and ROOPAK’S and no other variants. The relevant portion of the said order is set out below:-

7. Mr. Harish Vaidyanathan Shankar, ld. CGSC submits that this order may not have been placed before the Respondent No. 1.

8. A perusal of the Examination Report dated 17th August 2016 and the Search Report dated 11th July 2016 it appears that save for one, all the other marks cited against the Appellant’s mark belong to ‘ROOPAK STORES PVT. LTD’, its sister concerns or the family members of the Appellant. There is no cited mark belonging to any third-party mark in the Examination Report. The only third-party mark cited has already been abandoned.

9. In view thereof, the Appellant’s mark deserves to proceed for advertisement in the Trade Marks Journal published by the Respondent No.1. Accordingly, the impugned order is set aside.

10. Let the Appellant’s application bearing no. 2807794 in Class: 35 in the name of Appellant-ROOPAK'S PIK-N-PAY be accepted and be advertised in the Trade Marks Journal.

11. It is, however, made clear that observations in this order shall not bind any opposition proceedings, if filed, against the Appellant’s application for grant of a trade mark.

12. The appeal is allowed in the above terms. It is made clear that if there are already objections filed by any party against other trademark applications of the Appellant, the present order would not apply to those proceedings.

PRATHIBA M. SINGH JUDGE JULY 12, 2023/mr/dn