INTELLECTUAL
PROPERTY APPELLATE BOARD
Guna Complex
Annexe-I, 2nd Floor, 443 Anna Salai,
Teynampet,
Chennai-600018
*****
CIRCUIT BENCH SITTING AT
KOLKATA
(FRIDAY, THIS THE 31st
DAY OF MAY, 2013)
ORA/241 &
242 /2010/TM/KOL
HON’BLE MS. S
USHA … VICE CHAIRMAN
HON’BLE SHRI. V.
RAVI … TECHNICAL MEMBER
1. M/S
Bright Electricals,
11-13-27, Park Road,
Vijayawada 520 001 (A.P. ) … Applicant
(Represented by
Advocate: Shri Ajay Amitabh Suman)
Versus
1. Mr.
Ramesh Shah,
144,C.I.T.Road,
Kolkata 700 014. … Respondent
No.1
2. The
Registrar of Trade Marks,
Trade
Marks Registry,
Kolkata 700 091. … Respondent No. 2
(Represented by Advocate: Shri H.P.
Shukla)
O R D E R
No.111/2013
SHRI
V.RAVI, TECHNICAL MEMBER:
The
applicants in this case are seeking removal of the trade mark- MEDAL
under No. 450653 in Class 09 and the same mark under No.756461 also in Class 09
of the respondent herein. The grounds for rectification are mentioned
below:-
2.
a. the
applicant is the owner & proprietor of the trade mark GOLD MEDAL and GOLD
MEDAL (label) in respect of a wide range of electrical goods since 1979
- 80 and has been using the same openly, extensively and continuously
since then.
b.
the registration
of the impugned mark has been obtained fraudulently malafidely on false claim
and assertions and so the impugned registration is illegally remaining in the
register.
c.
the trade mark
GOLD MEDAL is registered in favour of the applicant as per details mentioned
below: GOLD MEDAL and GOLDMEDAL
CAB*
Sl.No
|
Regn.No.
|
Class
|
GOODS
|
Date of registration
|
I.
|
449747
|
09
|
Wires & Cables included
In Class 9
|
17.02.1986
|
II.
|
518258
|
09
|
Wires & cables, electrical
switches, electrical meters, extension Cords, Fuse Units, Main Switches,
Electrical parts and fittings included in Class 9
|
20.10.1989
|
III.
|
518259
|
11
|
Lamps, Lighting, Heating, Steam
generating, Cooling and refrigerating apparatus and their parts thereof all
included in Class 11.
|
12.10.1989
|
IV.
|
603634
|
11
|
Installation and apparatus for
lighting, heating, cooking, ventilating, cooling and refrigerating including
electric fans, electric ovens, electric hot plates, tube lights, electric lamps
not included in class 9 emergency lamps and night lamps, lamp shades, bulb and
tube holders, air coolers, water coolers, refrigerators, air conditioners, water
heaters, geysers, immersion heaters, parts of the fittings for all
aforementioned goods.
|
10.08.1993
|
V
*
|
892522
|
09
|
Cables and wires.
|
01.12.1994
|
All the
above registered marks are duly renewed and valid upto date. Further, the
applicant are holding copyright on the original artistic work for the label
mark GOLD MEDAL under the Copyright Act.
d.
the applicant
have also obtained various government registration like Sales Tax, Central
Excise, PAN No., BIS Certificate bearing ISI mark. Their products are
manufactured under the said mark by M/s Balar Marketing Pvt. Ltd., New Delhi.
e. the
applicant is the prior and senior adopter of the trade mark GOLD MEDAL which is
used in respect of above mentioned products practically through out India and
also exported because of its high standard of quality and precision.
f. the
trade mark GOLD MEDAL has become a distinctive indicum of the applicant
for its goods and the public at large associate and identify it as the
distinguishing label that enjoys solid and enduring reputation.
g. the
respondent herein are engaged in the same or similar business and
malafidely, dishonestly and fraudulently adopted impugned trade mark MEDAL
without the prior permission, leave or licence of the applicant.
h.
the impugned mark
is phonetically, visually and structurally same or similar conveying the
essentially the basic idea of the applicant’s mark. The respondents are
passing off their goods as that of the applicant and are guilty of
unfair and unethical trade practice.
i.
the respondent
are fully aware of the rights, use and reputation of the applicant’s
trade mark at the time of adoption of the impugned mark. The said mark
has been illegally adopted out of business greed
j.
the respondent
claim to be one of the partners of M/S Medal Sales, Kolkata. The said
alleged firm has filed a frivolous application for the trade mark MEDAL under
1078443 in Class 09 which has been opposed by the applicant herein. The
respondents have not used the trade mark MEDAL independently or through the
alleged firm M/s MEDAL SALES as there is no proved contractual agreement between
them.
k.
the applicant are
‘person aggrieved’ by the illegal registration of the respondent’s impugned
mark which has caused grave, serious, irrevocable injury on a daily and
continuing basis in the market and in trade to the applicant.
l.
Objections to
both the applications are based on Section 9,11, and 18(1) of the Act.
Further, the respondents are not entitled to the benefit available under
Section 12 as there is no ‘special circumstances’ in their favour.
Under
these circumstances, the petitioner seeks removal and to expunge the entry
pertaining to the impugned trade mark MEDAL under No.756461 –in Class
09 ; and 450653 in
Class -09.
Class -09.
3. The
case of the respondent/ registered proprietor to the trade mark is as
under:-
a. the respondent
is one of the director of M/s MEDAL ELECTRONICS Pvt. LIMITED, Kolkata,. The
trade mark MEDAL was adopted by B. Ramesh Shah on 10th July, 1997 and
registered in his name. Later he gave a licence to use the said registered
trade mark to M/s MEDAL ELECTRONIC Pvt Ltd. from 26th August, 1997
and since then the mark has been in continuous use.
b. the
respondents are in the business of manufacturing & marketing of transistors,
radio, tape recorder, car stereo, cassette amplifier, sound box etc.
c. the same
mark MEDAL was registered earlier in the name of the respondent under
no.450653 in Class 09 for similar goods in 1986.
d. the
respondent is protected under section 32 of the trade Marks Act which reads as
under:
“Where
a trade mark is registered in breach of sub-section (1) of section 9, it shall
not be declared invalid if, in consequence of the use which has been made of it,
it has after registration and before commencement of any legal proceedings
challenging the validity of such registration, acquired a distinctive character
in relation to the goods or services for which it is registered. ”
e.
the respondent
have filed documentary evidence to show that the impugned mark has been used by
them since 1986 consisting of sales invoices, balance sheet, advertisement
materials and other documents in support of the registered trade mark 450653.
f.
The rest of the
counter statement is a categorical denial of all the claims and assertions made
by the applicant which are contrary to the submissions made by the respondent
and so the respondents pray that this subject rectification petition be
dismissed with costs.
4. The
evidence in support of the application is an affidavit of one Shri Praveen Kumar
Jain partner of the applicant firm. This is supported by other documents such
as copy of the registration certificate of the impugned mark along with its
journal publication; copy of the registration certificate GOLD MEDAL of the
applicant; copy of partnership deed dated 03.04.1998; year-wise sales figure
under the trade mark GOLD MEDAL; copies of bills, and invoices issued by
applicant including assessment order from Commercial Tax Department and copy of
pleadings in opposition No. Cal-736383 to application. No.1078443 in Class 09
filed by the respondent alleged firm M/s Medal Sales, KOLKATA.
5. The
documents filed along with the Counter Statement are an affidavit of Shri
Ramesh Shah the respondent herein; copy of deed of license agreement; copy of
registration certificate; copy of Memorandum & Articles of Association dated
2nd April 1986; copy of Sales Tax Registration Certificate dated
14th April 1987; copy of advertisement bills from 31.08.1989 to 2010;
copy of purchase bill from 26th November, 1986 to 2010 and copies of
sales bill from 28th November, 1987 till 2010.
6. The matter
was listed for hearing before us on 3.12.2012. We have heard the arguments of
the respective counsel, gone through the pleadings and documents. The following
authorities were relied on by the applicants and respondents.
APPLICANTS
1.
“Gandhi
Scientific Company Vs Gulshan Kumar” -2009(40) PTC 22(Del.)
Petition for
Interim Injunction - the question here was who was the prior user of the mark
–party seeking discretionary relief must come with a clean hand - in para 30
citing A. Anuradha Vs Canara Bank 2007 ALT 4581 (DB-APHC)”.—to put it
differently, a person who touches fountain of justice with tainted hand or who
makes an attempt to pollute the course of justice by making false or misleading
statements or by suppressing facts must be shown the door at threshold.”
2. “Indian
Bank Vs M/s Satyam Fibres (India) Pvt. Ltd.” – AIR 1996 Supreme Court
2592
Authorities be they constitutional, statutory or administrative possess the
power to recall their judgements or orders if they are obtained by fraud as
fraud and justice never dwell together.
3.
“Century
Traders Vs Roshan Lal Dugar & Co.” – AIR 1978 Delhi 259
The mere presence
of the mark in the register does not prove its user and is irrelevant to decide
an application for interim injunction unless evidence of use of the registered
mark is led.
4. “LT Foods
Limited & Another Vs Sulson Overseas P.Ltd.”- 2012 (51) –PTC 283 (Del.)
Plaintiff registered owner of the trade mark ‘SONA’ for rice – defendant used
‘SULSON SONA’ – plaintiff sought restraining order - prima facie evidence of
validity u/s 31 of the Act – close similarity and identify in carton, mark and
label –Clear case of infringement – application for making ad-interim injunction
absolutely allowed.
5.”DCM Shriram
Consolidated Ltd. Vs Shri Laxmi Trader and Ors.” – 2009 (41) PTC 772
(Del.)
Plaintiffs trade mark SHRIRAM for fertilizer, chemicals and agriculture
products- defendant adopted identical mark - Held, user not honest – interim
injunction made absolute.
6. “Avadh
Behari Rohatgi and G.C. Jain, JJ” – AIR 1985 Delhi 210
Plaintiff’s cycle
bells sold under the mark ‘B.K.’ - defendant using mark B.K. 81 for cycle bells
– mark held deceptively similar and likely to cause confusion – Plaintiff
entitled to temporary injunction to restrain defendant from using the said mark
– decision of Single Judge (Delhi HC) reversed.
RESPONDENT:
1. “Vishnudas
trading as Vishnudas Kishandas Vs Vazir Sultan Tobacco Co. Ltd.” - 1996
PTC (16)
If traders
actually trades or manufactures only one or some of the articles coming under a
broad classification and such traders has no bona fide intention to trade in
other goods under a class, then he should not be permitted to enjoy monopoly in
respect of all goods coming under the broad classification and thus exclude
other traders to get registration.
2. “Vardhman
Properties Limited Vs Vardhman Spinning & General Mills Ltd. &
anr. – 2008 (37) PTC 315(IPAB)
Application for removal of Vardaman – Vardaman is another name of Lord Mahavira
–Contention ‘Vardaman’ is name of a sect and part of Jain mythology and so can’t
be monopolized – applicant themselves were registered proprietor of ‘Vardhman
Group’ (word per se). Held, it does not lie in their mouth to say ‘Vardaman’ is
not registerable - no case to vary or for rectification made out.
Summary of Applicant’s Arguments
6. The Learned
Counsel began his three hour arguments by stating that the so
called ‘License Agreement’ was a fake for reasons stated earlier during hearing
for stay and a fraud is being played against the Board. The original was
produced before us for scrutiny. The applicant have been using ‘GOLD MEDAL since
1979. Their goods are electrical equipments. They own four registered trade
mark. The sales turnover under the brand GOLD MEDAL is about Rs. 13 Crores.
The respondent mark on filing date was only ‘proposed to be used’. Our
attention was drawn to respondents sales figure which are all allegedly based on
cooked up invoices. The respondent is essentially seeking to pinch the enormous
goodwill and reputation by managing to secure registration of a mark that is
bound to cause confusion and deception in the trade and amongst the pubic. All
bills and invoices have been created to save the impugned mark. Further, there
is clear inconsistency and anomaly of user claimed since 10th July,
1997 of the impugned trade mark in ORA/242/2010. How can the same owner claim
two different date of users for the same mark for the same goods by a subsequent
application?. Both the impugned marks deserve to be removed from the register
as they are hit by Sections 9, 11, 12 and 18 of the Act.
7.
Respondents’ Argument
The Learned
Counsel stated that even a ‘proposed to be used’ marks are registrable under the
Act and there is no basis to raise an objection under Section 9. Further, the
competing goods are totally different being wires, cables and Switches etc. of
the applicant as against TVs sold by the respondent. So Section 11 objection
will not apply to the instant case. Further, since the respondent have proved
user Section 47 will also not apply. The applicant are not ‘person aggrieved’
as there is no question of confusion and deception between the goods as they are
poles apart; the purchasers are different as is the market and consumers are
also different and so no question of confusion or deception arises.
8.
Rebuttal Submissions :
The counsel
argued that they are relying only on Section 57 as the Board has inherent powers
to remove the two impugned marks. The respondent’s entire case is based on
fraud which alone is sufficient to expunge these two marks.
9. The
preliminary issue to be decided is whether the applicant is a ‘Person Aggrieved’
as only a such a person is entitled to file a cancellation petition. Here, the
applicant feel it is public mischief and the impunged mark should not continue
to remain in the register. The applicant are in the same trade. The
applicants legal rights are clearly affected. They are substantially
interested in having the mark removed from the register. They have genuine
legal grievance. The applicant are desirous of maintaining the purity of the
register which is a public purpose. The applicant assert registration of the
impugned mark is contrary to law as a similar mark has been registered for
similar goods. This gives the applicant the requisite locus to file the instant
petition.
10. In the case
on hand, the grounds for removal of the two impugned marks are based only on
Section 57(2) of the Act. So our examination would be limited to removal of
‘any entry made in the register without sufficient cause, or by any entry
wrongly remaining on the register.’ Here, ‘without sufficient cause’ would be
as of the date of application for registration. The respondent’s mark MEDAL was
applied for on 6th March, 1986. The issue for consideration is
whether the registration of the impugned mark ought not to be made as of that
date. We think that should be the case. What was the compelling necessity for
the respondent to opt for MEDAL as a trade mark when he was aware of GOLD MEDAL
an established brand in the market for seven to eight years? What made the
respondent to apply for Medal as a trade mark within a month of the applicant’s
application in 1986?. These unanswered question gives rise to serious suspicion
that the respondent was always on the heel of the applicant.
11. For a cogent
understanding of the case, It will be useful to reproduce the order of another
Bench of this Board dated 01.03.2012 as the issues raised therein spilled over
in the main arguments also:
ORDER NO.90/2012
“ In these two matters
interim applications for stay have been moved. The learned counsel for the
respondent Shri H.P. Shukla submits that the Board may not grant interim orders
in rectification application and the Board has the power to grant interim orders
only in an appeal as per S.95 of the Trade Marks Act, 1999.
2. The learned counsel appearing for
the applicant Shri Pankaj Kumar on the other hand submitted that if fraud is
apparent in the respondent securing the registration, the Board may pass such
orders as are necessary and the powers of the Board shall not be restricted only
to appeals for passing interim orders.
3. . The learned counsel for the
applicant submitted that the applicants are the registered proprietors of the
mark "GOLD MEDAL" and they have been using the said mark for a considerable
duration and their mark "GOLD MEDAL" has been applied for registration on
1.04.1986 and registration was granted on 28.04.1995. The learned counsel
submitted that the case of the respondent is that they have bonafide and
genuinely adopted the mark "MEDAL". In ORA/241/2010/TM/KOL" the registration was
applied for on 06.03.1986 and registration was obtained on 08.10.2007. In
ORA/242/2010/TM/KOL registration was applied for on 30.06.1997 and registration
was granted on 23.05.2005. The learned counsel submitted that the case of the
respondent is that Ramesh Shah, one of the partners of the firm Medal Sales
conceived and adopted the trade mark honestly on 05.02.2002 and since then they
have been using the said trade mark. This is filed in the evidence in support of
the application in. the opposition proceedings with regard to another mark not
related to these ORAs. In the counter statement filed in this ORA, they have
stated that they claim that Ramesh is the Director and he has given licence to
use the said registered trade mark to Medal Electronics Private Limited from
26.08.1997 (ORA 242/2010/TM/KOL).
4. The learned counsel
submitted that to prove user the respondent herein has relied on the user by the
licensee under two alleged licence agreements one dated 18.06.1987 and
the other dated 26.08.1997. The documents produced along with the
counter statement also show sales only by Medal Electronics Private Limited
herein. His case in the counter statement is also that after the registration he
has given the licence to use to Medal Electronics which has used the mark
continuously and extensively and that he is the Director of the said Company.
Copies of the licence agreements have been enclosed in the paper book. The
learned counsel for the applicant made the following submissions:
(i) that the address of the parties
shows that the place of business is Kolkata. According to the learned counsel it
is only after 2000 that the city’s name was spelt as 'KOLKATA' and before
that it was spelt as 'Calcutta;
(ii) the learned counsel pointed out
that on the reverse of page 1 of the agreement the name of the Stamp Vendor is
the same person from whom they had purchased the stamp paper for one document of
the year 1987 and for the other document which is of the year 1997. The learned
counsel submitted that it is difficult to believe the genuineness of these
documents as the hand writing is also the same.
4. We requested the learned
counsel for the respondent to produce the original documents since as per Rule
12 of the Intellectual Property Appellate Board (Procedure) Rules, 2003, the
originals of the exhibits shall be left in the Appellate Board.
“12. Exhibits :- -
Where there are
exhibits to
affidavits, a copy each of such exhibits shall
be sent to the other party. The originals shall be left
in the Appellate Board for inspection of the other party. These shall
be produced at the hearing unless the Appellate Board otherwise
directs”.
The learned counsel
produced a document which is not the original of the document filed. However,
he submitted that he would be able to produce it if the Board so directs.
5. We find that not only the
Stamp Vendor is the same, even the two witnesses to the documents are the same
persons, one Biswajitmitra and Barun kumar Dey. It strains our credulity to
accept that two documents ten years apart, the party could have approached the
same stamp vendor and the same witnesses. However, to afford an opportunity to
the respondent, the respondent shall send the original of these two documents
addressed to the Deputy Registrar, Intellectual Property Board on or before
17.04.2012 after sending a Xerox copy of the said document to the counsel for
the applicant and after pursuing the same we will dispose of these two interim
applications and orders will be passed on 18.04.2012.
12. The petition
for stay was refused by the other Bench and both the ORAs was listed for final
hearing. At the hearing, Shri H.P.Shukla, Counsel for the respondent produced
the original bill books for scrutiny which were perused and returned.
13. From a
perusal of aforementioned facts, a few firm conclusion based on disputed facts
can be clearly inferred:
(a)
The applicant
were the first to adopt GOLD MEDAL and its variant from 1979-80 onwards.
The applicant’s earliest application under No.449794 in Class 9 dates back to
17th February, 1986 which date is prior to the respondents earliest
application under no.450653 also in Class 9 filed on 6th March,
1986.
(b)
The respondent B.
Ramesh Shah by his own admission in ORA/241/2010 adopted MEDAL as a trade mark
on 10th July, 1997 and assigned the same to M/s MEDAL ELECTRONICS
(Pvt.) Ltd. on 26th August, 1997.
(c)
The respondent
Ramesh Shah also holds another registration for the trade mark MEDAL in Class 9
as of 6th March, 1986 even though the said mark was only ‘proposed to
be used’ on the date of filing under no. 450653.
14. The
disputed facts are alleged use claimed by respondent from 1986 and also the
authenticity of license agreement. We need to examine the record to ascertain
facts. We will first look into the evidence filed in ORA/241 & 242/2010
filed by the respondent. The company M/s MEDAL ELECTRONIC(P) Ltd. was
incorporated with the Registrar of Companies on 25th March, 1986.
The company was registered as a dealer for TV set under the Central Sales Tax
Act on 14th April, 1987. Several copies of invoices towards
advertisement effected by Medal Electronics (P) Ltd from 31st August,
1989 onwards have been enclosed. Also invoices dated 21.09.1987 (Bill No.
12/87) from page 64 to page 162 are only proof of sale of TV and parts thereof
by MEDAL ELECTRONICS (P)Ltd. It is only from page 163 to page 166 (4 bills in
all) that MEDAL TV is rubber stamped boldly in the middle of the bill.
Page 163 is reproduced below for easy understanding.
Y
1
15. Other three
invoices are similar bills. Pages 167 to 240 contain even more Invoices.
Bill No.8521 most of which are not trustworthy (Page 187) is reproduced as an
example.
16. In para 5 of
the Counter Statement the year-wise sales figure and promotional expenses
under the trademark MEDAL has been furnished from 1986 - 87 onwards by
the respondent.
17. Objection
has been raised that both the impugned marks cannot be registered on absolute
grounds of refusal under Section 9 of the Act. It is true that the eligibility
to cross a hurdle on absolute ground of refusal is of a low threshold. The
simple question to be put by the Examiner at the examination stage is whether
the mark applied for is capable of distinguishing the goods/services of the
applicant? In other words does it have a distinctive character? That has to be
decided and determined by whether other traders are in competition with each
other in the market place. It should be looked at from a practical and business
like objection. As has been held in Shredded Wheats Case (1938) 55 RPC 125 at
p.145(PC) “ a word or words to be really distinctive of a person’s goods must
generally be incapable of application to the goods of anyone else”. Once the
registrar makes a determination that GOLD MEDAL is a badge of origin of a
particular manufacturer, he should not undermine his own ruling by assisting
other in the trade to extinguish that ‘Capability to distinguish’ by flooding
the register with similar trade marks. We therefore, need to take an
integrated perspective of whether the impugned mark qualifies for registration
under Section 9. Looking at the totality of the picture and given that GOLD
MEDAL is already a prior applicant at the revocation stage we have to uphold an
objection on absolute ground under Section 9. In our view, the respondent’s
mark is incapable of distinguishing the origin of their goods.
18. The
applicant has also raised objections that the impugned mark was wrongly
registered in contravention of Section 11 of the Act. The fact is on the date
of filing of the respondent’s mark, the applicant’s trade mark GOLD MEDAL was
pending. In these circumstance was the acceptance and subsequent registration of
MEDAL trade mark valid?. What would be the legal consequences of this?. Would
it not lead to deception or confusion in the market? The right test to
determine this is, on the balance of probabilities, whether a substantial number
of applicant’s customer or potential customers would be misled into purchasing
the respondent’s goods in the belief that it was that of the applicant? We do
think that will be the case here.
19. The
respondent have placed great reliance on the contention that the competing goods
are poles apart and relate to different markets and there is no question of
confusion. The respondents are in the manufacture and sale of TV business
whereas the applicants are dealing wires and cables, electrical apparatus,
air-conditioners etc. In the vile atmosphere of the market place where cut
throat competition is the order of the day these fine distinction counts for
nothing. The basic idea of the two mark GOLD MEDAL and MEDAL is the same. We
have material doubts why the impugned marks were adopted? Most lay people will
assume the respondent’s goods has something to do with applicant’s products.
Our first imperative is to ensure that there is no confusion in the market by
the presence of two similar marks in the register. In the dispensation of
justice, the standard of proof to establish confusion in the market is low.
When an established brand like GOLD MEDAL is modified and a trade mark MEDAL is
adopted for use, there is an inherent and substantial likelihood of confusion.
We also do not think the respondent are entitled to the benevolent provision of
Section 12. The root of our distrust is why did the respondent adopt and apply
for a similar mark within three weeks of filing of an application for GOLD MEDAL
in 1986? Looked at from a different perspective, the competing marks are
essentially the same as the use of ‘GOLD’ in GOLD MEDAL is only a qualifying
epithet. The registration and use in the market of the respondent’s mark MEDAL
only impairs the originality and distinctive character of the applicant’s trade
mark. When we apply the notional and fair use test, the rival trade marks are
confusingly similar. Section 11(1) would thus be a bar to the registration of
the impugned marks.
20. We all know
that as between two parties, the person who adopts the mark first will get
preferential right over the other. The applicant herein adopted the trade mark
GOLD MEDAL in 1979 and applied for its registration on 17th February,
1986. The respondent applied for registration of MEDAL some days later on
6th March, 1986 as a ‘proposed mark’. The earliest invoice of the
respondent on record is a bill (no.12/87) dated 21st September,
1987. The person who makes an application for registration must assert a claim
to be the proprietor of the trade mark and should be able to substantiate the
claim if challenged (Vitamin Ltd’s Application) 1956 RPC 1. It would appear
adoption of the impugned mark was probably influenced by the presence of the
applicant’s mark in the market 8 years before the respondent’s trade mark was
born. Even if we take that the original adoption was semi-independent, the
likelihood of deception and confusion existed from day one. What do we make of
a trader adopting the trade mark MEDAL with presumptive knowledge of GOLD MEDAL
already in the market for similar good; an expert in greed - an accursed
brood. In our view, the adoption of MEDAL as a trade mark was intentional and
not accidental to dupe potential customers in the future. A mark grows by use
and with time. The object of creating the required deception in the market is
accomplished through efflux of time and subintentional smokescreen. From
surrounding circumstances, an inference can be drawn that the adoption and use
of the trade mark MEDAL is not within the normal boundaries of fair use. One of
the cornerstone in civilized society is the general principle “Thou shall not
covet thy neighbour’s house ”. These rules and concept apply with equal force
to intellectual property. If you ‘covet’, ‘steal’ adopt or masquerade someone
else’s property or trade mark after suitable window-dressing, such an act is
basically unacceptable. Therefore, in our view both the original adoption and
subsequent use of MEDAL by the respondent is deliberate, dishonest, lacking in
probity
and not in
conformity with standards of a reasonable and honest person. GOLD MEDAL is a
recognisable sign which identifies products of the applicant falling in Class 9.
Procuring a rival trade mark through stealth mode by quietly securing
registration of a similar mark for similar goods is ultimately intended to
mislead the public and encash on goodwill of existing player. Every registered
proprietor craves for certainity and guarantee in the protection of his mark.
Every thing points to the fact that the respondent have camouflaged the
applicant’s mark to overcome legal pitfalls and exploit the power of free
market. The common man’s brain is not wired to understand the difference
between MEDAL and GOLD MEDAL. Clearly, the adoption and use of MEDAL is a
disingenuous misrepresentation and the question how the registry allowed the
mark to go in the register and its ramifications is both troubling and
unsettling. Accordingly, the claim of ownership/ proprietorship of the
impugned mark cannot be accorded to the respondent and the registration of the
two marks is also hit by Section 18(1) of the Act. We also leave open our views
on the veracity of the license agreement although everything points to the fact
that it is a suspect document.
21. In the
result both ORA 241 & 242/2010 is allowed and registered trade mark under
No.450653 and 756461 are both removed from the register. There is no order as
to costs.
(V.RAVI)
(S.USHA)
Technical
Member Vice Chairman
(Disclaimer: This order is being published for present
information and should not be taken as a certified copy issued by the
Board.)
No comments:
Post a Comment