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Date of Decision: 10th March, 2023 C.A.(COMM.IPD-TM) 41/2022 and I.A. 2106/2022 (for stay)
VINOD AGGARWAL TRADING AS VANEET SALES CORPORATION ..... Appellant
Through: Ms. Purva Chugh and Ms. Sonia Sharma, Advocates.
Through: None.
JUDGMENT
1. The present petition is a civil original trademark rectification petition and has been wrongly numbered as an appeal. Accordingly, the Registry is directed to re-number the present petition as a civil original trademark rectification petition.
2. The present petition has been filed seeking cancellation/removal of the impugned trademark ‘BAL BIHAR SUPER’ (word per se), registered under no.4256368 in Class 34 in the name of the respondent no.1, from the Register of Trade Marks.
3. Briefly, the case set up in the petition is that the petitioner is engaged in the business of manufacturing and trading all kinds of unmanufactured tobacco/tobacco since the year 1990. The petitioner also has many registrations of the trademark/label ‘LAL BIHARI CHAAP’ in Class 34, details of which are given in paragraph 5 of the petition. All the aforesaid trademark registrations are valid and subsisting. The petitioner owns the copyright of the artistic work in the ‘LAL BIHARI CHAAP’ labels.
4. The petitioner has also filed its sales turnover in respect of its products from the financial year 1989-90 to 2020- 21. The turnover of the petitioner in the year 2007-08 was around Rs.11,300/-, whereas the turnover in the financial year 2020-21 was around Rs.1,82,45,136. It is claimed that approximately 85% of the turnover is from the mark ‘LAL BIHARI CHAAP’.
5. Sometime in September, 2018 the petitioner came across tobacco products bearing the trade mark ‘LAL BAHAR CHHAAP’, being manufactured by M/s Shriram Maurya Enterprise. On inquiry it came to know that one Mr. Raghupati Maurya was selling the tobacco products under a deceptively similar trademark, packaging/trade dress and has also applied for the registration of said trademark/label ‘LAL BAHAR CHHAAP’ with the Trademark Registry under application no.3822767 dated 3rd May, 2018, on a proposed to be used basis. The petitioner opposed the registration of the aforesaid mark by filing opposition on 16th October, 2018, which was not contested by Mr. Raghupati Maurya and therefore, resulted in the abandonment of his application.
6. Thereafter, the petitioner made a complaint through his dealer, Mr. Sushil Gupta at Uttam Nagar Police Station and the matter was amicably compromised by Mr. Raghupati Maurya due to the intervention of a local police. Mr. Raghupati Maurya admitted to using the trademark similar to the BANSAL petitioner's trademark/label ‘LAL BIHARI CHAAP’ and on 28th September, 2018 gave an undertaking to not manufacture and/or sell the tobacco products bearing a similar trade mark/trade dress as that of the petitioner. Mr. Raghupati Maurya also willingly handed over the infringing goods and labels available at the premises over to the dealer of the petitioner.
7. On 10th October, 2018, not even two weeks after giving the said undertaking, Mr. Raghupati Maurya filed yet another similar trademark application for trademark/label ‘BAL BAHAR CHHAP GOLD’ on a proposed to be used basis, which was again opposed by the petitioner and is pending before the Trade Marks Registry.
8. Sometime in April 2021, the petitioner came across the application no.4777955 of the respondent no.1, Mrs. Meera Devi, who is the wife of Mr. Raghupati Maurya for registration of the trademark ‘BAL BIHARI SUPER’ (device) claiming user since 5th August, 2019. The petitioner opposed the registration of the aforesaid trademark by filing opposition on 27th April,
2021.
9. The aforesaid application was associated with the word mark ‘BAL BIHARI SUPER’ registered under application no.4256368 dated 5th August, 2019 in the name of the respondent no.1, on a proposed to be used basis.
10. Accordingly, the petitioner has filed the present petition.
PROCEEDINGS IN THE CASE
11. Notice in the petition was issued on 8th February, 2022.
12. The order dated 9th November, 2022 passed by the Joint Registrar records that the respondent no.1 refused to receive the notice issued and hence, the respondent no.1 was deemed to have been served. None appeared on behalf of the respondent no.1 on 22nd December, 2022 and 27th February, BANSAL 2023 also. Despite granting an opportunity to file reply, the respondent no.1 has failed to rebut the case of the petitioner. It is indicative of the fact that the respondent no.1 has nothing substantial to urge, by way of a response to the averments in the petition.
ANALYSIS AND FINDINGS
13. I have heard the counsel for the petitioner and perused the record of the case.
14. From the facts detailed above, it is evident that Mr. Raghupati Maurya and Mrs. Meera Devi (respondent no.1), who are husband and wife, are colluding with each other. Together, both of them have filed four trademark applications which are similar to the registered trademarks of the petitioner. Three of the aforesaid applications have been filed after acknowledging the rights of the petitioner and giving an undertaking to not use the trademark ‘LAL BIHARI CHAAP’ or other similar marks. In order to get over the said undertaking, Mr. Raghupati Maurya started filing applications in the name of his wife, the respondent no.1.
15. The adoption and the use of the impugned mark ‘BAL BIHARI SUPER’ by the respondent no.1, which is very similar to the trademark ‘LAL BIHARI CHAAP’ of the petitioner, is likely to create confusion in the market. Not only is the trademark of the respondent no.1 similar to the trademark of the plaintiff but the nature of the goods of the petitioner and the respondent no.1 are identical i.e., tobacco related products falling in Class 34. 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 their association with the petitioner. Therefore, the BANSAL aforesaid registration in favour of the respondent no.1 could not have been granted in terms of Section 11 of the Trade Marks Act, 1999 (hereinafter ‘the Act’)
16. The adoption of the trademark ‘BAL BIIHARI SUPER’ by the respondent no.1 is dishonest, as is evident from the acknowledgment of the petitioner’s right in the trademark/label ‘LAL BIHARI CHAAP’ by the husband of the respondent no.1 and an undertaking to not use marks similar to those of the petitioner. Therefore, the respondent no.1 is not entitled to the benefit of Section 12 of the Act.
17. The petitioner is the prior adopter and continuous and exclusive user of the said trademark in respect of unmanufactured tobacco/tobacco since 12th February, 1990. Therefore, the trademark registered in favour of the respondent no.1 is liable to be cancelled in terms of Section 57 of the Act.
18. The impugned registration under no.4256368 in Class 34 remains on the Register of Trade Marks without sufficient cause.
19. Accordingly, the present petition is allowed and the trademark registered under application no.4256368 in the name of the respondent no.1 in Class 34 is removed from the Register of Trade Marks.
20. Pending application also stands disposed of.
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. MARCH 10, 2023 BANSAL