Bubbles Incorporated vs Mahavir Prasad Sitaram Somani And Ors.

Manmohan Singh, J

The applicant has filed the present rectification application for the removal of trade mark Twinkel's CHARLIE WAFERS (label) bearing No.

1063946 in class 30 in the name of Mahavir Prasad Sitaram Somani from the register or rectification of register under section 47/57/125 of the Trade

Marks Act. 1999. The Mark Twinkel's CHARLIE WAFERS (label) registration No. 1063946 in Class 30 in the name of Mahavir Prasad Sitaram

Somani trading as Mitesh Food Products/'[winkle Food Products of the address Gala No, 1-2-3, Amar Dye Company's Road, Gulshan Nagar, Near

Jajveer Bakery, Shahad 421 103. Maharashtra. We Bubbles Incorporated of the address Allec des Grand Places 1., 1701 Fribourg, Switzerland.

The impugned mark of the respondent No. 1 is shown as below:-

Twinkel's CHARLIE WAFERS

(label) bearing No. 1063946 in class 30

The present petition was filed for Cancellation on the grounds of non-use and bad faith adoption under section 47 and 57 of the Trade Marks Act,

1999, against the impugned mark Twinkel's CHARLIE WAFERS (label) bearing No. 1063946 in class 30 was filed on November 29, 2001 in the

name of Mahavir Prasad Sitaram Somani trading as Mitesh Food Products/Twinkle Food Products (Respondent No. 1) which was advertised in the

Trade Marks Journal No. 1358 dated December 16, 2006. The registration certificate dated December 15, 2007 was issued.

• In August 2006, the Applicant through their counsel M/s. Lall & Sethi served Respondent No. 1 with a letter calling upon Respondent No. 1 to

cease and desist from using the impugned mark and to immediately refrain from using the likeness of CHARLIE CHAPLIN and to withdraw the

application for the offending mark. Thereafter the Applicant received the Respondent No. 1's reply to their cease and desist notice wherein the

Applicant's contentions were denied and Respondent No. 1 refused to comply with any of the requisites mentioned in the cease and desist notice.

Subsequently the Respondent No. 1's counsel also forwarded copies of registration certificates, renewal certificates and copyright certificates for

various trade marks for CHARLIE and likeness of CHARLIE CHAPLIN being owned by them. It was during this time that the Applicant became

aware of the marks owned by the Respondent No. 1 which of course are in violation of the Applicant's rights. Since the Respondent No. 1 was using

the Applicant's marks without their knowledge, the Applicant decided to settle this matter amicably by asking the Respondent No. 1 to obtain a license

from the Applicant for their use of CHARLIE CHAPLIN and likeness of CHARLIE CHPLINE by paying a nominal royalty of just 2% of their

business or in the alternative an arrangement for annual fee for use was also proposed. The Counsel of Respondent No. 1 informed the Applicant that

Respondent No. 1 is not interested in paying any license fee as they have been using the mark since 1984. The Respondent No. 1 also refused to

accept that the Applicant had rights as mentioned above and challenged the validity of the agreements and went on to say that they will only stop the

misuse of CHARLIE CHAPLIN and likeness of CHARLIE CHAPLIN if Sir Charlie Chaplin himself asked them to. It is humbly submitted that the

Respondent No. 1 by virtue of this submission acknowledges that they have copied the likeness of Sir CHARLIE CHAPLIN. Further, the Applicant

through their counsels followed up with the Respondent No. 1 and their counsels through numerous phone calls and emails wherein the Respondent

No. 1 through their counsel informed the Applicant's that they are willing to stop the use of device/likeness of CHARLIE CHAPLIN and use of the

word CHARLIE. However, the Respondent No. 1 refused to withdraw the registration.

• The impugned mark is virtually identical and confusingly and deceptively similar to the well-known trademarks CHARLIE CHAPLIN and

likeness of CHARLIE CHAPLIN of the Applicant and no doubt there exists a likelihood of confusion and deception in the marks if used and/or

allowed to remain on the register. The Applicant has acquired knowledge of the Respondent No. I's impugned marks and therefore has instituted the

instant proceedings with a view to protect their rights in and to the earlier brand.

• The office of the Deputy Registrar of Trade Marks, Trade Marks Registry, Boudhik Sampada Bhavan has been entered in the Register as the

appropriate office in relation to the impugned mark hence Respondent No. 2 has appropriately been made a party to the present proceedings.

• Thereafter, the present Cancellation Petition was filed on September 22, 2012 and the same was taken on record and served on the Respondent.

The hearing appointed in the matter was adjourned as the respondent No. 1 vide Form -3 filed extension of time for filing the counter affidavit. The

Respondent No. 1 filed extension on 27.11.2012, 28.12.2013, 28.01.2014, 28.02.2014, 28.04.2014, 28.05.2014 and 28.06.2014. Pursuant to which the

Registry sent various reminders to the Respondent however, the Respondent nor the representative of the Respondent failed to appear for the hearing.

• Vide order dated September 11, 2014, passed by the Deputy Registrar, the said application of the Respondent No. I was treated as abandoned for

default.

• In the hearing, appointed on May 08, 2018, the matter was heard on the merits and order was reserved.

The Applicant was formed by the famous motion picture actor, writer, and director Mr. Chaplin to administer certain of his intellectual property

rights, including, without limitation, his trademarks and licensing rights to his name, likeness, image, right of publicity, and those of his famous

characters. The Applicant continues to administer these rights following Mr. Chaplin's death in 1977. The rights assigned to the Applicant remain valid

even after Mr. Chaplin's death.

The Applicant owns proprietary rights in and to the trade marks CHARLES CHAPLIN, CHARLIE CHAPLIN and all rights title and interest in

the name and likeness of Mr. Chaplin, CHAPLIN face design, and CHARLIE CHAPLIN signature including the rights in the CHARLES CHAPLIN

design (silhouette). The Applicant also owns the exclusive right to exploit all merchandising rights relating to Mr. Charles Chaplin, including the right to

license the use of his name, nickname, photographs, likeness, facsimile signatures, biography, endorsements and testimonials in connection with the

sale of all types of merchandise and services or other exploitation of the business of the person so licensed.

Among other things, Mr. Charlie Chaplin achieved fame for one of his film roles, namely, that of ""The Little Tramp"" or ""The Tramp,"" a ragamuffin

character wearing a baggy suit, howler hat and large shoes, and carrying a walking cane. The image of The Tramp is one that people around the

world immediately identify with Mr. Charlie Chaplin, and the name CHAPLIN is also immediately identified with him.

Mr. Charlie Chaplin and Applicant created various trademarks depicting ""The Tramp"" character. Applicant owns trademark registrations for

various depictions of ""The Tramp"" character with or without Mr. Charlie Chaplin's name and/or signature (collectively, the ""Charlie Chaplin Marks"")

throughout the world. The one that Applicant and Roy Export S.A.S use in particular as the logo of all their related Companies, and to prove that the

document/dvd/film/article is a legitimate product authorized or licensed by the Companies is this one.

On all of the Charlie Chaplin DVDs of Roy Export's films currently on worldwide release. This logo has so much come to represent products that

are ""authorized"" or ""licensed"" that it is added to unauthorized, pirated products by illegal dvd distributors, in order to make their products appear

legitimate. Example of unlicensed Charlie Chaplin DVD box distributed by Bo Ying, is annexed as Exhibit A4, Unauthorized DVDs that were the

subject of the Judgment in Roy Export's favour by the Seoul Eastern District Court (2004 No. 1100, Roy Export v. Sung Yul Cho) also carried this

logo in an attempt to pass themselves as legally licensed products. The same is annexed here as Exhibit A5).

Mr. Chaplin and the Applicant created the Earlier Trade Marks depicting Mr. Charlie Chaplin, The Applicant, with a view to obtain statutory rights

in and to the Earlier. Trade Marks, has several registrations/applications in a number of countries of the world in various classes inter alia 1, 2, 3, 4, 5,

6, 8, 9, 10, 12, 14, 15, 16, 17, 18, 19, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 42. A list of such world-wide applications/registrations for

the Earlier Trade Marks is annexed herewith as Exhibit A6. Copies of the registration certificates of some of these registrations are attached annexed

herewith as Exhibit A7.

In India the Applicant is the registered proprietor of the following trade mark, the details of the said mark are mentioned below:

The photoplays for all the films of Mr. Chaplin, were written, directed and produced by Mr. Chaplin himself. All persons, including the camera

man, involved in the production of the films were employed by Mr. Chaplin under a contract of service. The camera man in particular made the films

under directions of Mr. Chaplin and was paid valuable consideration towards the same. Mr. Chaplin owned and retained possession of the original

negatives and was accordingly the Author of the said Works. By virtue thereof and by virtue of the provisions of the Copyright Act, Mr. Chaplin

owned the copyright in the said films which were then protected as Moving Pictures/photographs.

It as in the year 1924 that Mr. Chaplin incorporated the Charles Chaplin Film Corporation to manage his business. Mr. Chaplin was the sole stock

holder director and officer of the corporation, as also a salaried employee of the company.

The Charles Chaplin Film Corporation was dissolved in 1941. The decision to dissolve was unanimous, according to the ""Unanimous Consent to

Dissolution"" document. As Mr. Chaplin was the sole stockholder of the company, the unanimous decision was therefore solely his. In order to avoid

any misunderstandings, Charles Chaplin Film Corporation executed a deed of assignment on the date of its dissolution on December 29, 1941,

assigning the copyrights and all rights and interest in all the Works to Mr. Chaplin. Mr. - Chaplin's most famous films, including THE KID, CITY

LIGHTS, THE CIRCUS, THE GOLD RUSH, MODERN TIMES and THE GREAT DICTATOR were included in the assignment document. A

copy of the Assignment Deed dated December 29, 1941 is annexed herewith as Exhibit A9.

On March 24, 1950 Mr. Chaplin transferred to MIs Celebrated Film Corporation, his entire right, title and interest in and to the motion pictures,

including but not limited to THE KID, CITY LIGHTS., THE CIRCUS, THE GOLD RUSH, MODERN TIMES and THE GREAT DICTATOR. The

transfer included the rights in the scripts, scenarios, screen treatments, shooting scripts and all other material upon which the motion pictures are based

and in all music therein contained and all contracts relating to such music. A copy of the Assignment Deed dated March 24, 1950 is annexed herewith

as Exhibit A10.

On January 2, 1954, pursuant to dissolution of Celebrated Films Corporation, all rights, titles etc. in the films were assigned back to Mr. Chaplin. A

copy of the Assignment Deed dated January 2, 1954 is annexed herewith as Exhibit A11.

On December 8, 1955 Mr. Chaplin assigned his rights, title and interest in all the motion picture photoplays, copyrights and other properties and

assets to certain films to The Roy Export Company S.A. A copy of the Assignment Deed dated December 8, 1955 is annexed herewith as Exhibit

A12. These rights were further assigned to The Roy Export Company Establishment by a deed of assignment dated December 13, 1956 by The Roy

Export Company S.A. A copy of the Assignment Deed dated December 13, 1956 is annexed herewith as Exhibit A13. The film rights were

subsequently in 2008 assigned to an intermediary company Cavel, and then these rights were further assigned to Roy Export S.A.S in Paris. A copy of

the assignment deeds evidencing the same are annexed herewith as Exhibit A14.

On February 10, 1972, Mr. Chaplin assigned to The Roy Export Company Establishment the exclusive rights to exploit all merchandising rights

relating to Mr. Chaplin including the right to license the use of his name, nickname, photographs, likeness, facsimile signatures, biography,

endorsements and testimonials in connection with the sale of all types of merchandise and services and the exclusive right to exploit the merchandising

rights with respect to certain motion pictures (listed in the Assignment) including the right to license the use of the titles and all characters, themes, and

elements of the pictures, together with all photographs and visual representations of each characters. As already mentioned, a copy of the Assignment

Deed dated February 10, 1972 is annexed herewith as Exhibit A3.

Roy Export S.A.S has granted exclusive all media distribution rights worldwide in the films it owns to M/s. MK2 SA. The company Eagle Home

Entertainment Private Ltd. in India acquired the video rights in Roy Export's films from MK2 on 04/01/2010 for a 5 year term till 24/12/2014. The

videos and dvds under this licence were manufactured and released in India bearing Applicant's trademark logo and an example thereof is annexed

herewith as Exhibit A15.

Mr. Chaplin's name and likeness, and the name and likeness of his famous characters are known to consumers worldwide through the distribution

and licensing of motion pictures, musical recordings, printed materials, and hundreds of products bearing trademarks comprising of the Earlier Trade

Marks. Annexed. herewith as Exhibit A16 is the list of current licences worldwide for the use of the Earlier Trade Marks by the Applicant and visual

examples of such merchandising, which range from tableware, metal cards and tins, books, postcards, posters, lamps, giant figurines, clothing, bags,

souvenir products, watches, textiles, and stationery.

Applicant has also entered into Licensing Agreement with Reckitt Benkiser (India) Limited on April 16, 2007 for use of the Charlie Chaplin name

and likeness for their Cherry Blossom shoe polish advertisement. The Applicant has granted Reckitt a non-exclusive right to use the Charlie Chaplin

name and likeness Property in conjunction with boot polish in the India which includes the right to utilize the Lookalike to perform as Charlie Chaplin

as ""The Little Tramp"" in Promotional Material, films, photos, illustrations or other depictions of the actor in the role to advertise the Shoe Polish product

bearing the trademark Cherry Blossom. In return Reckitt will pay to the Applicant an undisclosed percentage of their total money spent in advertising

Cherry Blossom.

In the month of January 2010, the Indian national press reported that Applicant had come to an agreement with French and Indian companies, in

particular DQ Entertainment, an animation and special effects firm based in the Indian city of Hyderabad for a series of animated shorts about

Chaplin, the Little Tramp and Charlie. The series has recently launched in India on Pogo TV channel. Copies of articles from the Indian and the UK

press are annexed as Exhibit A17, including article from Hindustan Times Mumbai, June 30, 2012 concerning the July 2012 Pogo launch.

As a representative example oil the scope of business that the companies conduct in connection with the Earlier Trade Marks, the total number of

units of Chaplin Film Titles bearing the Applicant's mark that have been distributed under licence in Video house system, video disc and DVD home-

video formats, from the initial release of the ""The Chaplin Collection"" in 2002 through the end of the third quarter of 2009 by Warner Ho* Movies in

selected worldwide regions was Total units sold worldwide excluding France and Japan 3383455 units of which total units sold in India 82515 units.

The scope of the companies' business, together with the reputation of Mr. Chaplin and the Earlier Trade Marks among consumers worldwide, makes

the companies among the highly regarded companies in the field of motion picture entertainment, and the good will associated with the companies'

licensed film and video products extends to products bearing the Earlier Trade Marks in other fields.

It is submitted that use of the Earlier Trade Marks in connection with licensed goods I services worldwide i perceived by consumers only as a

trade mark originating and denoting the pods/services of the Applicant or of Roy Export S.A.S, its affiliated company, which fact is illustrated by the

evidence attached herewith. The Applicant is the rightful owner of Earlier Trade. Marks which are recognized among consumers the world over as

brands specifically denoting and originating from the Applicant.

It is stated that by virtue of extensive use, vast publicity, advertisement, the Earlier Trade Marks have acquired a secondary meaning and an

enviable reputation all over the world, including India. The use of the Applicant's Earlier Trade Marks have been extensive not only in terms of

geographical spread involving several countries, but also in physical volume of use, so much so that the consumers across the globe are well

familiarized with the Applicant's trade mark, its goods and services. This fact has been well supported on the ground that the Applicant's

goods/services under the Earlier Trade Marks are available in several countries of the world as detailed in the foregoing paragraphs.

In addition to the above, the popularity of the Applicant's Earlier Trade Marks can further be gauged from the fact that the same have been talked

about even in the encyclopedia, Wikipedia. A copy of the relevant extracts from the encyclopedia's website http://en.wikipedia.org/wiki/Cha.rlie

Chaplin is annexed as Exhibit A18. Three of the entries concerning the fame of the Chaplin image that can be read under ""Legacy"" in the Wikipedia

article were uses under license to Applicant or to Roy Export Company Establishment,

• In 1985, Chaplin was honoured with his image on a postage stamp of the United Kingdom, and in 1994 he appeared on a United States postage

stamp designed by caricaturist Al Hirschfeld. (licensed by Bubbles Inc.)

• IBM ran a series of commercials for their personal computers during the 1980s featuring a Chaplin impersonator. (licensed by Bubbles Inc)

• In 1992, a film was made about Chaplin's life entitled Chaplin, directed by Oscar-winner Richard Attenborough, and starring Robert Downey Jr.,

in an Oscar-nominated performance and Geraldine Chaplin playing the part Charlie Chaplin's mother (which in reality was her own grandmother),

(licensed by Roy Export)

It is alleged that by virtue of extensive use and sales promotion activities carried out by the Applicant world-wide, including in India, the earlier and

well-known mark CHARLIE CHAPLIN and likeness of CHARLIE CHAPLIN has acquired an enviable goodwill and reputation. By virtue of such

long and extensive usage, the said earlier trade mark has conic to be associated and identified in the minds of dated August 18, 2006, since no

response was received from Respondent No. 1 to the said letter, a reminder letter dated October 27, 2006 was sent to the Respondent No. 1 by the

Applicant's counsel. Annexed as Exhibit A20 are the copies of the Applicant's letters dated August 18, 2006 and October 27, 2006.

Despite of receiving the aforementioned letters of the Applicant, the Respondent No. 1 decided to remain silent by not responding to the letters

thereby admitting to the Applicant's contentions.

Thereafter the Applicant received the Respondent No. 1's reply to their cease and desist notice dated August 18, 2006 through Respondent No.

1's counsel letter dated December 4, 2007 wherein the Applicant's contentions were denied and Respondent No. 1 refused to comply with any of the

requisites mentioned in the cease and desist notice, Subsequently the Respondent No. 1's counsel also forwarded vide letter dated December 29, 2007

copies of registration certificates, renewal certificates and copyright certificates for various trademarks for CHARLIE and likeness of CHARLIE

CHAPLIN being owned by them. It was during this time that the Applicant became aware of the marks owned by the Respondent No. 1 which of

course are in violation of the Applicant's right. Exhibit A21 is the copy of the Respondent No. 1's counsel's letters dated December 4, 2007 and

December 29, 2007.

Despite of service, no counter statement has been filed by the respondent No. 1. There was no appearance when the matter was taken up for

hearing.

All the averments made in the rectification petition has gone unrebutted. The respondent No. 1 has chosen not to contest the matter.

There is no evidence on record to show that the mark has been used by the respondent. It is evident that the respondent No. 1 has adopted the

impugned mark Twinkel's CHARLIE WAFERS (label) is deceptively and confusingly similar to the applicant's earlier and well-known marks, as the

impugned mark is a combination of the word CHARLIE and the likeness of CHARLIE CHAPLIN. It is clear that the adoption was bad faith

intention of the respondent No. 1.

The rival marks are deceptively and confusingly similar and this will lead to a likelihood of association with the Applicant's well-known trademarks

CHARLIE CHAPLIN and likeness of CHARLIE CHAPLIN which would include a likelihood of confusion and also likely to dilute the distinctive

character of the applicant's well-known earlier trade marks.

The impugned mark has been adopted in bad faith with intention to mislead members of trade and public and to unlawfully trade upon the

extensive fame, goodwill and reputation enjoyed by the Applicant's in its well-known earlier trademarks CHARLIE CHAPLIN and likeness of

CHARLIE CHAPLIN.

In view of the above said, we are of the opinion that the impugned mark Twinkel's CHARLIE WAFERS (label) in the name of the respondent is

wrongly remaining on the register of the Trade Marks.

Thus, the mark Twinkel's CHARLIE WAFERS (label) bearing registration No. 1063946 in class 30 is liable to be expunged from the Register of

Trade Marks under the provisions of Section 47(1)(a) and Section 57(2) of the Trade Marks Act, 1999 so in order to maintain the purity of the

Register of Trade Marks.

The prayer in the petition is allowed. Copy of the order be sent to the respondent No. 2 for taking the necessary steps for removal.