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HIGH COURT OF DELHI
Date of Decision: 24th April, 2023 C.O. (COMM.IPD-TM) 769/2022, I.A. 18968/2022 (for stay)
ANKIT AGGARWAL PROPRIETOR OF M/S VEPSON ENGINEERS ..... Petitioner
Through: Mr.Ashok Goel and Mrs. Manu Aggarwal, Advocates.
Through: None C.O. (COMM.IPD-TM) 770/2022, I.A. 18971/2022 (for stay)
MR. ANKIT AGGARWAL PROPRIETOR OF M/S VEPSON ENGINEERS ..... Petitioner
Through: Mr.Ashok Goel and Mrs. Manu Aggarwal, Advocates.
Through: None
JUDGMENT
1. The present petitions have been filed seeking cancellation/removal of the following impugned marks registered in Class 7 in the name of the respondent no.1, from the Register of Trade Marks: i. under no.3645519 dated 27th September, 2017 ii. under no.2524816 dated 3rd May, 2013
2. Briefly, the case set up in the petition is that Sh. Ashok Aggarwal, the father and the predecessor-in-interest of the petitioner, had started his business under the name, Vepson Engineers, and was the proprietor of the said firm. After death of Sh. Ashok Aggarwal on 17th September, 2012, Mr. Ankit Aggarwal (petitioner herein) and Mrs. Rita Aggarwal, wife of Sh. Ashok Aggarwal and the mother of the petitioner, jointly continued the said business and constituted the aforesaid firm as a partnership firm by executing a Partnership Deed dated 23rd September, 2012. After death of Mrs. Rita Aggarwal on 24th March, 2015, the petitioner became sole proprietor of the aforesaid firm.
3. The petitioner’s firm is engaged in the business of manufacturing and marketing agricultural implements including cultivator shovels and parts and fittings. The mark was adopted by Sh. Ashok Aggarwal in the year 1985 and registered under no.481168 on 16th November, 1987 in class
7. In support of this, the petitioner has filed sales invoices at page no. 39 to 57 of the petitioner’s documents. The aforesaid registration lapsed in the year 2001 as the necessary renewal application was not filed due to nonreceipt of the mandatory renewal notice (O-3 notice) from the Trade Mark Registry.
BANSAL
4. The word mark JAI KISAN was registered in the name of the petitioner and Smt. Rita Aggarwal on 14th June, 2013 under no. 2548853 in Class 7 in respect of the similar goods as mentioned above. The registration certificate granted in favour of the petitioner (page no. 17 of the petitioner’s documents) records user of the petitioner since 1st April, 1985. After death of Smt. Rita Aggarwal, the petitioner became sole proprietor of the mark JAI KISAN.
5. It is averred that due to long and continuous usage of the mark JAI KISAN, the petitioner has acquired immense goodwill and reputation. The members of trade associate the aforesaid mark exclusively with the petitioner. The annual sales turnover of the petitioner from the years 2012 to 2021 is mentioned in paragraph 11 of the petition. In the year 2020-2021, the annual sales turnover of the petitioner was Rs. 6,46,77,133/-.
6. The respondent no.1 has claimed user of the impugned marks and since the year 2011 in its application for registration but no documents have been filed on behalf of the respondent no.1 in this regard. The respondent no.1 has obtained registration of the impugned marks by concealing material facts and making misrepresentations, which is in contravention of provisions of the Trade Mark Act, 1999 (hereinafter ‘the Act’). A legal notice dated 26th August, 2022 was issued upon respondent no.1 to forthwith desist the use of the impugned marks. However, no response has been received by the petitioner to the same.
BANSAL
7. The use of the impugned marks in relation to the similar goods is likely to cause confusion in the market and among the members of trade and is bound to cause erosion of the distinctive character of the petitioner’s mark JAI KISAN. The impugned marks are neither distinctive, nor capable of distinguishing the goods of the respondent no.1 from that of the petitioner. Therefore, the mark is liable to be removed in terms of Section 11 (1) and (2) of the Act.
8. The impugned trademark is liable to be removed for ‘non-use’ in terms of Section 47 (1) (a) and (b) of the Act, as upto three months before the date of application, a continuous period of five years from the date of registration has elapsed, during which period there has been no bonafide use of the impugned marks in relation to goods for which the registration was granted.
9. The petitioner is the prior user and owner of the mark JAI KISAN since 1985 through his predecessor-in-interest and the impugned marks has been wrongly entered in the Register and therefore, is liable to be cancelled in terms of Section 57 of the Act.
10. Accordingly, the petitioner has filed the present petition.
PROCEEDINGS IN THE CASE
11. Notice in the present petitions were issued by this court on 2nd December, 2022. As per the service report, the respondent no.1 was served on 11th January, 2023. Counsel appeared on behalf of the respondent no.1 on 24th January, 2023 and four weeks were granted to file reply. Neither reply has been filed on behalf of the respondent no.1, nor has the Vakalatnama BANSAL been filed on behalf of the counsel for the respondent no.1. Today also, none appears on behalf of the respondent no.1 even on second call. It is indicative of the fact that the respondent no.1 has nothing substantial to put forth on merits, by way of a response to the averments made in the petitions.
ANALYSIS
12. I have heard the counsel for the petitioner and perused the record of the case.
13. In the present case, the respondent no.1 has failed to file reply/counter-statement within maximum permissible period of sixty days from the date on which the court directs filing of the said reply, in terms of Rule 7(ix) of Delhi High Court Intellectual Property Rights Division Rules,
2022. Since the respondent no.1 has failed to take any requisite steps to contest the present suit, it is evident that they have no defence to put forth on merits.
14. The petitioner is the prior adopter and user of the trade mark JAI KISAN. The petitioner has been using the said mark through its predecessor-in-interest since the year 1985 in respect of agricultural implements.
15. The adoption and the use of the impugned marks and by the respondent no.1, which are very similar to the mark ‘JAI KISAN’ of the petitioner, is likely to create confusion in the market. Not only are the marks of the respondent no.1 BANSAL confusingly/deceptively similar to the petitioner’s prior adopted, registered, mark ‘JAI KISAN’, but the nature of the goods of the petitioner and the respondent no.1 are identical, i.e., agricultural implements falling in Class 7.
16. It is clear that the adoption of the said mark by the respondent no.1 is with the sole purpose of trading upon the goodwill and reputation of the petitioner. The mark of the respondent no.1 is also likely to deceive unwary consumers of its association with the petitioner. Therefore, the aforesaid registrations in favour of the respondent no.1 are liable to be cancelled under Section 57 of the Act.
17. The respondent no.1 has failed to rebut the contention of the petitioner that the impugned marks were registered without any bonafide intention on the part of the registered proprietor to use the same in relation to the products covered by the registration. Upto a date of three months before the date of the rectification application, a continuous period of five years and longer has expired from the date on which the impugned marks were registered, during which there was no use of the impugned marks in relation to the goods covered by registrations and therefore, the mark is liable to be removed from the Register under Sections 47(1)(a) and Section 47(1)(b) of the Act.
18. In the judgment in Shell Transource Limited v. 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 must specifically deny it. Therefore, in the absence of a specific denial, it was held that the allegations of “non-user” stood admitted.
BANSAL
19. In the present case, the allegations of “non-user” against the respondent no.1 stand admitted in the absence of a specific denial of the same and the impugned marks are liable to be removed from the Register of Trade Marks on account of “non-user” as contemplated under Sections 47(1)(a) and 47(1)(b) of the Act.
20. Accordingly, the present petitions are allowed and the impugned marks registered under trademark application no. 3645519 and 2524816 in the name of the respondent no.1 in Class 7 are removed from the Register of Trade Marks.
21. The Registry is directed to supply a copy of the present order to the Trademark Registry, at e-mail - llc-ipo@gov.in for compliance. AMIT BANSAL, J. APRIL 24, 2023 BANSAL