Gna Sons And Ors. vs Umesh Narang

The present rectification application is filed for the rectification of the register and to expunge the entry relating to registration No. 1177825 in class 12, on the ground that the entry is made without sufficient cause and is wrongly remaining on the register in breach of various provisions of the Trade Marks Act, 1999. Case of the applicant:

a. The applicant is a GNA Sons, a partnership firm who is manufacturers and/or sellers of parts & fittings of motor vehicles including Rear axle shafts assembles for all type of vehicles for supply to retail, wholesale and replacement market and for supply to original equipment manufacturing in respect of heavy vehicles and tractors and all other parts and fittings etc. The applicant in the year 1952, the trade mark EYE along with the device of EYE was adopted in relation to the goods of its manufacture and sale. The trade mark(s) EYE (word per se and logo) have continuously and extensively been used in the course of the trade since 1952 firstly by the applicant predecessor in interest and title and thereafter by the applicant No. 1 on account of the Assignment deed dated 18th October 1999.

b. The applicant holds statutory rights to the exclusive use of the trade mark(s) 'EYE' and device thereof on account of the registration granted under the provisions of the Act.

c. The trade marks 250777 (SP-1), 262548, 479544 and 480217 were originally registered in the name of predecessor in interest and tide of the applicant M/s. Guru Nanak Auto engineering & Foundry Works, Bundala, Jalandhar and whose name stood changed from time to time and lastly as Guru Nanak Auto Enterprises Ltd., O.T. Road, Goraya, Distt. Jalandhar, Punjab. The name of Guru Nanak Auto Enterprises Ltd. was duly recorded as subsequent registered proprietor of the trade mark(s) 'EYE' (word per se and logo).

d. By a Deed of Assignment dated 18th October, 1999, all rights, interest & title pertaining to the trade mark(s) 'EYE' (word per se and logo) with slight modification of specification of goods as per mutual agreement between the assignor and assignee were assigned alongwith the goodwill of the marks and business in which the said marks had been used in favour of applicant No. 1, GNA Sons and the name of the applicant No. I have duly been recorded as subsequent registered proprietor of the trade marks in pursuance of the request filed on form TM-23.

e. The applicant No. 1 is entitled to the benefit of use and registration of the trade mark(s) 'EYE' as the assignment of the marks took place along with the good will of the marks and the business in which the same had been used in the course of trade by its predecessor in interest and title.

f. The trade mark(s) EYE and device thereof is registered under the provisions of the Trade and Merchandise Act, 1958/The Trade marks Act, 1999 under No. 250777 (SF-I), 262548, 479544 and 480217 in class 12. The earliest valid and subsisting trademark is registered on 30th July 1968 under registration No. 250777 (SP-1) in class 12.

g. The applicant No. 1 has established large and extensive sales of its goods under the trade mark "EYE" during the past years and has also spent considerable amount on the publicity and sales promotion thereof during the past years and by virtue of priority in adoption and use, the petitioner has acquired and retained an exclusive right to the use of the Trade Mark "EYE" in respect of the goods.

h. The trade mark(s) EYE and device thereof during the course of time and by virtue of immense publicity given to it by the petitioners, have become well known trade mark(s) and as such the reputation accrued to the said trade mark(s) is not confined to the goods for which the applicants have made use of the said mark(s) but also extends to all other goods including those as are cognate and allied in nature and/or goods of the same description.

The Respondent No. 1 is the registered owner of the trade mark EYE under No. 1177825 in the name of Umesh Narang and Dinesh Narang partners of the firm. The registration was obtained in respect of Bicycles, Try Cycles, Parts & Accessories including Tyres and Tubes for Use in Bicycles for Sale in India & for Exports in Class 12.

The applicant submits that the respondents impugned trade mark consist of device of 'EYE' which is identical and/or deceptively similar to the trade marks(s) 'EYE' and device of 'EYE' trade mark used by the petitioners. It is submitted that not only the respondent has taken the trade mark 'EYE' (word per se and logo) of the applicant but has also used the impugned trade mark in respect of similar goods in class 12. With a view to cash upon the tremendous reputation and goodwill of the applicant in the said mark. It is also submitted that the obtaining registration of the impugned trade mark under No. 1177825 in Class 12 for identical goods on part of the respondent was in bad faith and with ulterior motive to trade upon the Petitioner's reputation in the trade mark 'EYE' and device in respect of parts & fittings of motor vehicles to earn profits in an illegal manner.

In the name of Endurance Systems (India) Private Limited was filed on 24/02/2003 with a false claim of user since 01/04/1999. As a matter of fact, the name applied for registration was merely proposed to be used on the date of application.

It cannot be denied that the impugned mark is identical and/or deceptively similar to the registered trademarks of the applicant. The goods in respect of which the respondent are similar. The device is being used by the applicant and continuously since 1952 as alleged. Thus the registration of the impugned trade mark is in contravention of the Provisions of Section Nos. 9, 11 and 18 of Act.

No evidence of user has been filled by the respondent No. 1. As a matter of fact, the respondent despite of service not contested the matter. As per record, there is no user. The applicant claim of non-user has not been rebutted by the respondent No. 1, who had no bonafide intention to use the mark, as applied for registration, in respect of any specification of goods for which it was applied for registration or was actually registered and the said mark was registered without any bonafide intention on the part of the respondent No. I, in relation to the goods in respect whereof the registration had been obtained. There has, in fact, been no bonafide use of the registered trademark in relation to any of the goods for which the mark is registered. The impugned mark is liable to be rectified and removed from the registration in terms of the Provisions of Section 47(1) (a) of the Trade Marks Act, 1999.

Thus, the impugned mark is also liable to be rectified and/or removed from the register under Section 47(1) (b) of the Trade Marks Act, 1999 as a continuous period of more than 5 years and three months, prior to the date of the institution of the present Rectification Proceedings, has elapsed during which the impugned mark was registered and during which there was no bonafide use thereof in relation to any specification of goods for which the impugned mark was applied for registration or was actually registered in order to maintain the priority of the registrar.

The respondent has also failed to submit the written submissions and infact, the respondent had failed to plead his case or file its counter with regard to their usage of impugned registered trademark after obtaining its registration, as such in our opinion the respondent has not use of the trade mark(s) trade mark 'EYE' and the device in respect of parts & fittings of motor vehicles, the Application No. 1177825 in Class 12 in the course of the trade.

Thus the impugned registration is contrary to the provisions of Section 47(1) (a). The registration of the impugned trademark 'EYE' and the device remains on the register without sufficient cause thus the existence of the impugned entry in the Register of Trademarks affects the purity of the Register of Trademarks.

It is a matter of record that the Appellate Board fixed impugned matter for hearing on 25/11/2016 before the Deputy Registrar IPAB at Delhi. The respondent was notified about the said hearing by letter dated 24.10.2016. The respondent did not appear before the Deputy Registrar IPAB on 19.12.2016. The final hearing in the petition was fixed before the Board on 08.02.2018 and parties were notified about the said date of hearing vide notice dated 15.01.2018. The respondent was duly served with the notice.

Again on 08.02.2018, when the matter was called for hearing, the applicant appeared through its counsel Mr. Amarjit Singh along with Mrs. Kajal Arora. The respondent did not appear and was not represented by any counsel at the time of hearing.

The Appellate Board has provided ample opportunities to the respondent herein, despite having been given an opportunity to file the counter statement and evidences, the respondent has also failed to establish any bonafide use of the impugned trade mark during the period of 5 years and 3 months prior to the institution of Rectification Petition or even make allegation of bonafide use of the impugned mark.

The applicant trade mark "EYE" in respect of parts and fittings for motor land vehicles was in use and prior to the date of filing of the application for registration of the impugned trade mark by the respondent. The respondent, was thus not the proprietor of the trade mark "EYE" on the date of the filing of the application for registration of the impugned mark contravening the section 18 of the Act. As the application for registration of trade mark No. 250777 dated 30.07.1968 was an earlier mark/application in respect of identical mark in respect of same and similar description of goods in the name of applicant has section 11 of the Act.

The applicant counsel has referred the citations to buttress his pleadings and arguments in the matter of M/s. Shell Transource Limited v. Shell International Petroleum Company Ltd., 2012 SCC IPAB 29: [2012] Hon'ble Intellectual Property Appellate Board 25 Para 14. We have considered the rival submissions and the materials before us. There is no disagreement with the position that he who pleads nonuser must prove it. But when the applicant has pleaded non-user, the respondent must specifically deny it stating the facts on which he denies non-user. In the absence of specific denial we can only hold that the allegations stands admitted.

The another case referred by the applicant in the matter of M/s. Satnam Overseas v. Sant Ram & Co., (2014) 14 SCC 782 : (2015) 1 SCC (Civ) 412 : 2014 (57) PTC 220 (SC) wherein the 8. Section 46(1)(b) provides that up to a date one month before the date of the application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to the goods for which it was registered by the proprietor for the registered trade mark. The onus to prove non-use rests upon the applicant who has filed the application for rectification.

As the respondent has failed to contest its case despite having been given an opportunity to file the counter statement and evidences chose to remain silent in the absence of any counter statement and/or denial of any of the material averments made in the petition, respondent has not submitted the denying the material facts pleaded by the petitioner in the Rectification Petition.

In view of the non-representation of the respondent, apparently, the entry relating to the registration of impugned trade mark was wrongly made at the first instance and was wrongly remaining on the register. Therefore the registration of the impugned mark of the respondent is liable to be cancelled and the Registrar is liable to rectify by removal of the registration of the impugned trade mark No. 1177825 in class 12. We are of the considered opinion that there has been no bonafide use of the trademark 'EYE' and the device under the impugned registration Application No. 1177825 in Class 12 in relation to the said goods, for which the mark is registered up to date three months before the date of the application and thus the impugned registration of trademark application No. trademark 'EYE' under application No. 1177825 in Class 12 is contrary to the provisions of Section 47(1)(a).

Therefore the registration of the impugned trademark application No. 1177825 for 'EYE' in Class 12 remains on the register without sufficient cause thus the existence of the impugned entry in the Register of Trademarks affects the purity of the Register of Trademarks. Order as no cost.