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Judgment
AMIT BANSAL, J. (Oral)
The present rectification petition has been filed under Sections 57 read with Section 47(1) of the Trade Marks Act, 1999 seeking cancellation/removal of the trademark “GANESH HARA MATAR” (Device) (hereinafter ‘Impugned Mark’)registered under Class30 bearing registration number 1314228.
BRIEF FACTS
The case set up by the Petitioner is as follows:
The Petitioner began its business under the trade mark “GANESH” in the year 1936 through its predecessor partnership firm “Ram Gopal Ram Ratan” having its business at 88 Burtolla Street Kolkata – 700 007.
The Petitioner since the year 1936, through its predecessor, has been engaged in the business of manufacturing and exporting goods inter alia Atta, Maida, all the wheat products, Suji, Besan, Salia, Coffee, Tea, Cocoa, Sugar Rice, Pulses, Tapioca, Sago, Artificial Coffee, Flour and preparations made from Cereals, Yeast, Baking Powder, Salt, Mustard, Sauces and Spices, Edible Oils and Fats, Pulses, Roasted Grains, 3-D Snacks and various other edible products falling in different classes under the Trade Marks Act, 1999 (hereinafter ‘the Act’).
In the 1950s the business of the partnership firm ‘Ram Gopal Ram Ratan’ wastransferred to the firm ‘Ganesh Flour Mills’. On 9th March 2000, the company‘Ganesh Wheat Products Private Limited’’ was incorporated and the business of‘‘Ganesh Flour Mills’ was taken over by the said company. Further, on 4th January2011,name of the company was changed to ‘Ganesh Grains Private Limited’ andthereafter the same was again changed to ‘Ganesh Grains Limited’ on 5thFebruary 2011.
In order to obtain statutory protection over its trade mark “GANESH” and itsvariants, the Petitioner applied for its first trade mark application in the 1950s and since then the Petitioner has obtained over 85 trade mark registrations in its favour for the mark “GANESH” and the “GANESH” formative variants under various classes. (Reference is made to the list of trademarks granted in favour of the Petitioner @ Volume II Pg.383 of this petition)
The Petitioner due to the continuous and extensive use of the trade mark“GANESH” and “GANESH” formative markssince the year 1936 has garnered immense goodwill and reputation in the trade mark “GANESH”.
The goodwill and reputation of the Petitioner can be evidenced via the salesturnover and promotional expenditure of the Petitioner for its business under thetrade mark “GANESH”.In the year 2019--2020 (up to January 2020), the sales turnover and advertisement expenditure of the Petitioner were Rs.3,81,78,56,249/- and Rs.3,81,32,590/-, respectively.
In September 2020, the Petitioner came across the Impugned Mark of the Respondent No.1 i.e., “GANESH HARA MATAR” (device) – “ ” in respect of ‘namkeen, dalmoth, snacks, preparation made from cereals’registered via trademark application number 1314228 in Class-30.
Subsequently, the Petitionerproceeded to file the present petition before the erstwhileIntellectual Property Appellate Board (IPAB) alleging that the impugned mark of the Respondent No.1 isdeceptively similar to the Petitioner’s trade mark “GANESH” which had beenregistered in relation to identical/similar goods.
PROCEEDINGS IN THE PRESENT SUIT
This matter has been received on transfer from the erstwhileIntellectual Property Appellate Board (IPAB) pursuant to a government notification dated 22nd April 2021, being Notification No. F. No. P-24017/28/2021-IPR-I whereby the IPAB was dissolved and it was mandated that all pending appeals and other matters before the IPAB would be transferred to the concerned High Court.
Notice was issued by this Court in this petition vide order dated 15th January 2024.
Subsequently, vide order dated 22ndOctober, 2024, Respondent No.1 has been proceeded against ex-parte.
Written note of arguments has been filed on behalf of the Petitioner.
Mr Ankur Sangal, appearing on behalf of the Petitioner has made the following submissions:
I. The Petitioner is the prior adopter and first user of the trade mark “GANESH” in respect of food products, the user began in the year 1936.
II. The impugned mark is violative of Section 9(2)(a) of the Act as it is likely to deceive the public and cause confusion in the market due to its similarity with the Petitioner’s mark “GANESH” being used in respect of same goods.
III. The impugned registration is contrary to Section 11(1)(b) of the Act as the impugned mark is structurally, visually and phonetically similar to the Petitioner’s prior mark “GANESH” and also amounts to passing off the Respondent No. 1’s as those of the Petitioner.
IV. The Respondent No.1 does not manufacture any goods that fall under Class 30 despite having registered the impugned mark. The user claim of Respondent No.1 is false and, therefore, Respondent cannot claim to be owner of the mark under Section 18 of the Act.
ANALYSIS AND FINDINGS
I have heard the counsel for the Petitioner and examined the record of the case.
Despite being served, Respondent No.1 has chosen not to defend the present case and, therefore, has not entered appearance.
The petition has been duly verified and is also supported by the affidavit of the PPetitioner. In view of the fact that no reply has been filed on behalf of the respondents, all the averments made in the petition have to be taken to be admitted. It is trite law that in the absence of any denial to the averments made in the petition, the same have to be taken as admitted.
A perusal of the record would show that Respondent No.1 did not file any invoices or any other documents evidencing the user of the impugned mark. Therefore, the mark is liable to be removed on the ground of non-user.
In this regard, reference may be made to an earlier decision passed by this Bench in DORCO Co. Ltd. v. Durga Enterprises and Another, 2023 SCC OnLine Del 1484 wherein this Court had ordered the removal of the mark on the ground of non-user. The relevant observations from DORCO (supra) are set out below:
“8.In the judgment in Shell Transource Limitedv.Shell International Petroleum Company Ltd.¸ 2012 SCC IPAB 29, it was observed by the IPAB that the onus of proving “non-user” is on the person who pleads the same. However, when the applicant pleads “non-user”, the respondent must specifically deny it. Therefore, in the absence of a specific denial, it was held that the allegations of “non-user” stood admitted.
9.In the present case, the allegations of “non--user” against the respondent no.1 stand admitted in the absence of a specific denial of the same and the impugned trademark is liable to be removed from the Register of Trade Marks on account of “non-user” as contemplated under Section 47(1)(b) of the Act.
10.From the facts detailed above, it is clear that the petitioner is the proprietor of the impugned trademark. The respondent no.1 cannot claim to be the proprietor of the impugned trademark as there is nothing to show as to how the impugned trademark has been adopted by the respondent no.1. Therefore, the application for registration of the impugned trademark is in contravention of Section 18(1) of the Act. In fact, the registration of the petitioner’s identical mark in respect of similar goods, was pending in India and was also cited as a conflicting mark in the examination report issued in the application for registration of the impugned trade mark. Therefore, as per Sections 9(1)(a) and 11(1)(a) of the Act, the registration of the impugned trademark could not be granted.” [Emphasis applied]
Furthermore, based on the averments made in the petition and the evidence on record, the Petitioner has established that it is the prior registered proprietor and a prior user of the mark ‘GANESH’ and its other formative marks since the year 1936 through its predecessor.
The adoption and the use of the impugned mark by Respondent No.1, which is very similar to the trademark ‘GANESH’ of the Petitioner, is likely to create confusion in the market. Not only is the trademark of the Respondent No.1 confusingly/deceptively similar to the Petitioner’s prior adopted/ registered trademark ‘GANESH’ or its formative marks but the nature of the goods of the Petitioner and the Respondent No.1 are identical, i.e.,edible food products falling in Class 30.
In view of the discussion above, it is clear that the impugned mark has been adopted by Respondent No.1 dishonestly to trade upon the established goodwill and reputation of the Petitioner and to project itself to be associated with the Petitioner. Therefore, the continuation of the impugned registration on the Register of Trade Marks is in contravention of the provisions of Section 11 of the Act and is liable to be cancelled under Section 57 of the Act.
Accordingly, the present petition is allowed and the impugned trademark registration under the trademark application no. 1314228 in the name of Respondent No.1 in Class 30 is removed from the Register of Trade Marks.
A copy of the order be sent to the Respondents through e-mail. The Registry is directed to supply a copy of the present order to the Trademark Registry, at e-mail – “[email protected]” for compliance.