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Judgment
Prabha Sridevan, J
1 . The application seeks the removal of the mark POGO (LABEL) bearing No. 1288638 in class 30.
The applicant is engaged amongst other things in the production and distribution of entertainment programme and related merchandise. They own
and operate the ""Cartoon Network"" and ""POGO"" Programme. POGO is a programme for children who are the targeted at audiences. It is a very
popular channel. The applicant is the registered proprietor of a family of POGO and POGO formative trade marks. This includes POGO design. By
virtue of registration and as per Section 31 of the Trade Marks Act, 1999 (hereinafter referred to as Act), the marks are prima facie evidence of their
validity. The applicant has also applied for registration of POGO and POGO formative trade marks. POGO was launched on 1st January, 2004 in
India. The launch was publicized extensively and the media reports have been annexed as Annexure-D. The programmes are very highly popular and
some of the POGO award winning programmes promotes learning and development.
In 2004, the POGO channel introduced POGO amazing Kids Awards where children could vote for their favorites amongst nominees in several
categories. This was introduced to recognize child prodigies and to acknowledge the achievements of children in various areas. By any standards
POGO is a well known trade mark as per Section 2(zg) of the Act. The applicant learnt from the Trade Marks Journal 1337 dated 1st December,
2005 that the respondent had applied for the trade mark under No. 1288638 in Class 30. This trade mark is identical to the applicants. It was
advertised only as a word mark. Thereafter a corrigendum was issued where the trade mark was advertised as a stylized logo mark with a word
POGO written in script identical to the applicants. Since there is a substantial variation in the mark originally applied for, there ought to have been re-
advertisement as per Section 20 of the Act instead of a mere corrigenda.
The applicant filed Notice of Opposition. The computer records of the Trade Marks Registry show that this was taken on record. But yet, the trade
mark was advertised as registered without hearing the opponent i.e. applicant herein. The online record of the Trade Marks Registry showed the
trades mark as ""Opposed"" even though it had been registered. The applicant therefore sent a cease and desist notice dated 28.09.2006. The applicant
received a reply dated 9.10.2006 stating that the trade mark had been registered. So, on 08.01.2008, the applicant filed a cancellation petition. The
applicant's agents were informed orally by the Trade Marks Registry that since the status of the subject application was shown as opposed, the
cancellation petition cannot be taken on record. The applicant re-filed the cancellation petition, since there was no communication from the Registry
about the pending opposition. This time, the officials noted ""not registered cannot be entered"". The applicant also filed an application under the RTI
Act, there was no reply. The applicant filed an appeal to which again there was no reply. On 07.04.2008, the applicant received a letter stating that no
opposition can be filed against the corrigenda. The applicant having no option filed W.P. No. 7474 of 2009 for quashing the registration certificate or
for taking the notice of opposition on record. On 30.10.2009, the Hon'ble Delhi High Court restrained the respondent from using the registration
certificate. Finally on 11.03.2010, the Hon'ble Delhi High Court disposed off the writ petition, restraining the respondent from using the registration
certificate till the stay application is heard by the Hon'ble Board and also directed the applicant to file a revocation application before this Hon'ble
Board. Therefore this application has been filed.
5 . According to respondent the applicant had filed this beyond the time provided under the Act and had acquiesced in the impugned mark for a
continuous period of five years in the use of the trade mark. The trade mark of the respondent was registered in June 2004. The present application
was filed in March 2010. Therefore it should be rejected. It is submitted that the goods for which the respondent had obtained registration of the mark
were not made only for children but for every section of the society. Nobody will believe that the respondent's goods which have been in existence for
a long time, belong to the applicant. The applicants provide entertainment services whereas the goods of the respondent are Candy etc. which belong
to a completely different category and therefore no injury will be caused to the applicant. There is no proof of confusion. He referred to various
judgments where when the goods belonged to different classes, registration was allowed. The respondent prayed that the rectification petition should
be dismissed.
6 . The learned counsel for the applicant submitted that the applicant had launched the POGO TV Channel with wide publicity. The word POGO was
in a stylized script and unique to the applicant and submitted that when the respondent originally applied for the word mark, the applicant inadvertently
missed it. It is only when the corrigenda was published that they noted it and immediately steps were taken for cancellation.
7 . The learned counsel also referred to the various events that took place after the applicant had filed its opposition. The Registry communications
had clearly misled the applicant and he had to resort to steps of even filing application under the RTI Act before he could resort to the appropriate
remedy. The learned counsel submitted that the adoption is clearly dishonest and therefore the rectification should be allowed.
The learned counsel for the respondent was asked why they had chosen the word POGO, we were told that the word PO in Punjab means push
and go means go, therefore they have chosen it. The learned counsel filed his written submission and reiterated that the class of goods was totally
different and there was no likelihood of confusion.
We have head both the counsel. We do not think it necessary to go into the merits of the matter for this following reason. The impugned trade mark
was originally advertised as a word mark. By issuance of corrigenda it has been changed to a label mark.
We think when there is a substantial change in the mark it ought to have been re-advertised calling for the objections, but here it has been notified.
In view of the above, the matter is remanded back to the Trade Marks Registry directing the Registrar to re-advertise the trade mark and to deal
with the matter in accordance with law. Miscellaneous petition Nos.54/2010 and 29/2011 are therefore disposed off.