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Judgment
S. Usha, J
The applicants have filed the instant rectification application for removal of the trade mark "DHUNSERI" Tea Label registered under No. 620878 in Class 30 under the provisions of the Trade Marks Act, 1999. The applicants are carrying on an established business of manufacturing and marketing of tea since the year 1916. Initially the company was incorporated under the name "DHUNSERI" Tea Company Limited which was changed to Dhunseri Tea and Industries Limited, which then changed to Dhunseri Tea Limited with effect from 16.06.1970. The name was further changed to Dhunseri Petrochem & Tea Limited with effect from 01.07.2010.
The appellants have been marketing their goods under the trade mark Dhunseri since 1916 (in respect of tea). The applicants have also been using the trade marks-Dhunseri-word mark being the essential part of each of the trade marks. The other marks are "Dhunseri Lal Ghora" and "Dhunseri Kala Ghora". The goods under these trade marks are in high demand. The sales figures run to several lakhs of rupees.
The trade marks have been popularized through extensive advertisement, promotion and marketing and for such purposes not only huge sum of money but also considerable time and effort have been expended.
In view of long and continuous use since 1916 and extensive advertisement, promotion and marketing, the trade marks have became exclusively associated with the applicant and the members of trade and public associate the mark with the applicant and with none else.
The applicants are registered proprietors of the trade marks Dhunseri Kala Ghora under No. 476284, Dhunseri under No. 695890, Dhunseri Kala Ghora under No. 696165, Dhunseri Lal Ghora under No. 696166, Dhunseri under No. 703359 and Dhunseri under No. 1238389. The applicants have also registered the copyright. They are Lal Ghora under No. A.53869/97, Kala Ghora under No. A.53867/97, Dhunseri Gold Dust under No. A.54296/97 and Dhunseri Gold leaf under No. A.54295/97.
Due to excellent quality of the product, long user and extensive publicity and promotion each of the said trade marks has acquired enormous reputation and goodwill among the trade and public in India. The applicant for rectification has been vigilant in taking action against infringers and has issued certain notices and cease and desist notice to unscrupulous traders. The applicant has also lodged a complaint before the Registrar of Companies against one trader for using the word "Dhunseri" as part of its corporate name. By order dated 10.9.2004, the Regional Director-Department of Company Affair was pleased to direct the said trader to delete the word "Dhunseri" from its corporate name.
In or about 2007 the applicant came to know that one "Dhunseri Plantations Private Limited" was trading under the trade mark "Dhunseri". The applicant immediately filed a suit for injunction in T.S. No. 2138 of 2007. No injunction order was granted. Being aggrieved by the refusal order of injunction, the applicant moved the Hon'ble High Court of Calcutta in FMAT No. 165 of 2008. On 16.05.2008, the Hon'ble High Court of Calcutta was pleased to grant an order of interim injunction. Finally, the suit was decreed.
In or about October, 2009, the applicant came to know that one Deep Barbore is carrying on business under the name and style of Dhunseri Tea Factory in Assam. The applicant filed a Civil Suit in T.S. No. 3646 of 2009 for injunction. The court was pleased to pass an interim order.
Due to the above facts, the applicants' trade marks have become a well known mark within the meaning of Section 2(zg) of the Act.
In or about 1995, the applicant filed a Civil Suit in T.S. No. 93 of 1995 against one Kamlesh Tea Company and obtained an order of injunction. Again in the year 2001, the applicant filed a further suit against the said "Kamlesh Tea Company" before the Hon'ble High Court of Calcutta on a fresh cause of action being C.S. No. 358 of 2001. By an order dated 19.07.2001, the Hon'ble High Court was pleased to grant an order of injunction. The said "Kamlesh Tea Company" continued to use the trade mark and therefore the applicant filed a Contempt Application and on hearing the applicant, the Calcutta High Court passed an order imposing penalty upon the said Tea Company by an order dated 12.07.2002. Thereafter, they stopped using the trade mark. By an order dated 09.12.2003, the suit was allowed and the application for vacating the injunction order was dismissed.
Very recently, in April 2011, a search was conducted in the Trade Marks Registry and it was found that the impugned registration was granted in favour of the respondent under No. 620878 in Class 30. The application was filed on 28.02.1994 claiming user since 01.04.1990 and registered in 2005. Such registration is in utter violation of the injunction order passed by the District Court and the Hon'ble High Court of Calcutta.
The respondents being aware of the applicants goodwill and reputation, have adopted and used the impugned trade mark only with an ulterior motive to infringe the applicants established trade mark.
The product tea is usually purchased by common consumer-people casually having imperfect recollection and therefore possibility of confusion leading to deception is certain. The applicants are the prior adopter and user of the trade mark and therefore no trader is entitled to use any trade mark either identical or similar to that of the applicants trade mark.
The following are the grounds of rectification:-
a) The impugned trade mark was wrongly registered and is wrongly remaining on the register;
b) the respondents are not the proprietor of the trade mark;
c) The respondents have obtained registration by making false statements;
d) The impugned registration is in contravention of the provisions of Sections 2(1), (i) (v) & 2(1)(zb) of the Act;
e) The impugned trade mark is not distinctive of the registered proprietor at the time of application for registration and has not become distinctive and acquired distinctiveness. The impugned trade mark is devoid of any distinctive character and therefore is in contravention of Section 9(1)(a) of the Act;
f) The impugned trade mark is of such a nature as to deceive the public or cause confusion under Section 9(2)(a) of the Act;
g) The impugned trade mark is identical/deceptively similar to the applicants mark and therefore there exists a likelihood of confusion among the trade and public under section 11(1) of the Act;
h) The registration is contrary to the provisions of Section 11(3)(a) of the Act, as the impugned trade mark is restrained by an order of the court;
i) The registration is contrary to the provisions of Section 11(3)(b) of the act and is liable to be prevented by virtue of law;
j) The impugned trade mark is identical/deceptively similar to the applicants well known trade mark;
k) The respondents are not entitled to protection under Section 12 of the Act;
i) The registration is contrary to Section 18 of the Act, as the respondents are not the proprietor of the trade mark;
m) The existences of the impugned trade mark in the register affects the purity of the register; and
n) the registration was made and is remaining in the register without sufficient cause.
The applicants being in the same trade have suffered and continue to suffer irreparable damage and injury due to the impugned registration.
The notice sent to the respondents was served and they entered appearance through a counsel but the vakalatnama was not filed. They also filed a request in Form 3 for extension of time to file the counter statement on 05.12.2011. The registry of this Board sent a defect notice on 07.12.2011 and 20.01.2012. The respondents have till date not rectified the defect. The matter was listed on 06.09.2013 for final hearing. The notice was received by the respondent but there was no representation on behalf of the respondent either in person or through their counsel. The respondents were therefore set ex parte, and we heard the applicants on merits.
The learned counsel for the applicant reiterated all that was stated in the application for rectification. The counsel finally relied on the judgment of this Board in M/s. Pawan Kumar Sushil Kumar Agro (P) Ltd., Vs. M/s. Shriniwas Jhawar & another (ORA/168/2011/TM/DEL.) dated 4th January, 2013.
We have heard and considered the arguments of the applicants counsel and have gone through the documents.
We did not have the benefit of hearing the respondents. We are not aware as to the reason for the adoption of the deceptively similar trade mark. The respondents were restrained by an order of injunction as of the year 1995 itself. There was a subsequent order of restraint in the year 2001 passed by the Hon'ble High Court of Calcutta dated 09.12.2003. In view of all these orders, the respondent could not have used the said trade mark. For this reason, the mark deserves to be removed.
The impugned trade mark was registered in the year 2005, on which date the respondents were under an order of restraint in C.S. No. 358 of 2001, before the High Court of Calcutta. The respondents had moved an application for vacating the injunction order and the same was dismissed on 09.12.2003. There is no representation on behalf of the respondent to say that whether they have challenged the order of dismissal. We have to therefore consider the same to have reached finality without challenge.
We would like to quote the observation made in ORA/168/2011/TM/DEL. (supra), wherein in paragraph 20 it was held as follows:
In retrospect, we feel had greater care be taken at the Examination or Acceptance stage at the registry, the matter could have been disposed off long ago. By 'greater care' we suggest that the accepting officer in the registry spend a few minutes perusing the ratio of various case laws (in this case letter marks) presumably uploaded the citation module of decided cases, which will curb the proliferation of mounting Oppositions. Examiners and accepting officers should keep learning the fascinating craft of balancing equities and propositions of trade marks law on a sustained basis. If genuine efforts are made, it will greatly improve the quality of examination by adopting a standard predictable operating procedure and contribute to the purity of the register.
As stated above, if efforts were taken to check the register before the acceptance order is passed, this mark would not have been registered. The impugned trade mark is a label mark which is similar to that of the applicants mark and confusion is certain.
We also are of the view that the respondents who were under an order of injunction should have informed the Registrar about the same. The mark in our view shall be cancelled for suppression of material facts. For the above stated reasons, the impugned trade mark deserves to be cancelled. Accordingly, the application for rectification is allowed and the Registrar is directed to expunge the trade mark registered under No. 620878 in Class 30. There shall be no order as to costs.