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Judgment
K.N. Basha, J
This application is preferred by the applicant seeking for the relief of removal, expunging and cancellation from the Register of the Trade Mark, the
impugned trade mark ""Brothers Gulfgate"" along with the logo bearing No. 1574327 in Class 42 registered as per the impugned registration certificate
dated 27.02.2007. This application was taken on file by the Registry and thereafter, the notice was served on the respondent and the respondent
represented through the counsel by name Shri. S. Balachandran and filed the Vakalatnama. But the fact remains that subsequently, the very same
counsel for the respondent Shri S. Balachandran, K. Rajasekaran and Shri T.K. Anuradha submitted a letter dated 04.07.2013 addressed to the
Deputy Registrar, IPAB, Chennai stating that they have received the notice informing the date of hearing and with reference to this matter they have
stated that they are not receiving any response and instructions from the respondent and as such they are withdrawing from the proceedings with a
request that any further communication on the subject to be addressed directly to the respondent.
It is pertinent to note that as per the order of this Board on 05.07.2013, the Registry was directed to issue notice directly to party and post the
matter on 25.07.2013. This Board passed another order dated 25.07.2013 stating that the notices sent to the respondent returned un-served and it is
also observed that one cover was sent to Kozhikode and the other to the Branch at Aykkapadth House. But there is no response, as a result, the
respondent was set ex-parte as per the order dated 25.07.2013.
It is seen that at the instance of this Board, the applicant was directed to file certain documents to prove their use of the trade mark ""Gulfgate"" and
certain time was stipulated namely till 10.09.2013.
The learned counsel for the applicant submitted that they are filing additional documents today and they are ready for arguments in the main matter.
The applicant is represented by its counsel Shri K. Premkumar, and Shri Babu Karukapadath and both of them made their submissions, in order to
substantiate the contention raised in the application.
The perusal of the application discloses that the main grounds raised by the applicant are hereunder:
(1) The impugned registration obtained by the respondent is identical to the prior registered trade mark ""Gulfgate"" along with the logo bearing
registration number as 1298752 in Class 42 of the Applicant and as such the adoption of the identical trade mark by the Respondent is likely to cause
confusion and deception amongst the customers/public.
(2) The impugned trade mark ""Brothers Gulfgate"" along with the logo is a step towards misrepresentation and amounts to misappropriation of the
goodwill and reputation. Consequently, the registration is in violation of the provisions of Section 9(2) (a) and Section 11(1) of the Trade Marks Act,
1999.
(3) The respondent has been using the impugned trade mark dishonestly, illegally and maliciously by adopting the name ""Gulfgate"" alongwith the logo
and further trying to usurp into the legal rights of the applicant over the mark ""Gulfgate"" along with its logo.
(4) The applicant also preferred a Civil Suit before the Hon'ble District Court, Kozhikode and obtained an order of injunction in OS No. 1 of 2008
dated 31.01.2008 and the said order was not challenged by the respondent by preferring any appeal. From the date of grant of injunction in the suit the
respondent is not using the impugned trade mark ""Brothers Gulfgate.
Shri. K. Premkumar, learned counsel for the applicant vehemently contended that the applicant is using the trade mark namely ""Gulfgate Hair
Fixing Private Limited"" as early as from the year 2003 and their trade mark was registered as per the registration certificate dated 26.07.2004 and on
the other hand the respondent has got the registration of impugned trade mark only on 29.06.2007, suppressing and concealing the fact of registration
of trade mark of the applicant more particularly mentioning the trade mark as ""Gulfgate"". It is the contention of the learned counsel for the applicant
that by adding the word Brothers, the respondent is deliberately misusing and abusing the trade mark of the applicant namely the ""Gulfgate"", with a
view to deceive and mislead the customers and in order to show as if the applicants trade mark and their trade mark are one and the same and as a
result the trade of the applicant is very much affected and the applicant has been put to great hardship. It is further contented that the applicant has
established its trade marks, not only in India but also in abroad namely Dubai and Middle East countries.
The learned counsel for the applicant would also place strong reliance on the additional documents filed namely the copies of the advertisement
published in the Gulf Newspapers and various other Newspapers and its translated copy in order to highlight the applicants trade mark was so familiar
right from the year 2003 and its existence continuously till date.
It is contented that the impugned registration of the trade mark is a clear violation of the provision under Section 11, 9(2)(a) and 11(1) of the Trade
Marks Act, 1999.
In addition to the above submissions, Shri. Babu Karukapadath, learned counsel for the applicant would also submit that as on date after obtaining
the order of the injunction from the Civil Court, the respondent restrained themselves from using their trade mark impugned in this proceeding.
We have carefully considered the contentions put forward by the learned counsel for the applicant and thoroughly scanned through the entire
materials available on record including the additional document filed and relied by the applicant apart from perusing the certificate of registration of
trade mark of the applicant as well as the respondent.
At the outset, it is to be stated that though the respondent appeared before this Board through his advocates, subsequently he has deliberately
avoided and evaded to receive the notice and appear before this Board, which makes it crystal clear that he is not interested in pursuing the impugned
registration of the trade mark in his favour. Therefore, considering the conduct of the respondent, the Board already set the respondent ex-parte and
even thereafter, the respondent has not taken any steps to set aside the ex-parte order.
Now coming to the merits of the claim of the applicant, we find that there is much force in their contention. The first and foremost point to be
borne in mind of this Board is that the applicant has obtained the registration of its trade mark as early as on 26.07.2004 and whereas the respondent
has obtained registration of the impugned trade mark only on 29.6.2007. We cannot lose sight that the respondent by adding a word Brothers has
deliberately used the word ""Gulfgate"" in order to confuse the customers namely public by adopting the identical trade mark as that of the applicant. It
is also relevant to note that the applicant registration of trade mark was not only registered as early as on 26.07.2004, but the additional document
relating to the advertisements in respect of the trade mark of the applicant given in the Gulf Daily Newspapers, makes it crystal clear that the
applicant is using its trade mark continuously for a substantial period right from the year 2003 till date. At this juncture, it is relevant to refer the
following provisions under Section 9(2)(a), 11(1)(a) (b) and 11(2)(a)(b).
Section 9(2)(a)
Absolute grounds for refusal of registration-
2) A mark shall not be registered as a trade mark if-
(a) it is of such nature as to deceive the public or cause confusion;
Section 11(1)(a)(b) and 11(2)(a)(b)
11 Relative grounds for refusal of registration-
(1) Save as provided in section 12, a trade mark shall not be registered if, because of-
(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of
confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
(2) A trade mark which-
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different
proprietor, shall not be registered, if or to the extent, the earlier trade mark is a well-known trade mark in India and the use of the later mark without
due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.
In our considered view, the reading of the above said provisions would make it abundantly clear that a trade mark shall not be registered if the
same is of such nature as to deceive the public or cause confusion and its identity with a earlier trade mark which is a well known trade mark and use
of the latter mark without due cause would take unfair advantage or detrimental to the distinctive character or repute of the earlier trade mark. In
view of the reasons assigned by us earlier, the impugned trade mark was registered in flagrant violations of the above said provisions and as such the
same is liable to be cancelled.
It is also relevant to note that the applicant has obtained an order of injunction by filing a Civil Suit O.S. No. 1 of 2008 dated 31.01.2008 and the
respondent has not chosen to challenge the said order till date. It is also brought to the notice of this Board by the learned counsel for the applicant that
after the order of injunction, the respondent has stopped using the impugned trade mark.
The yet another important point in this case is that though the respondent has sought for registration of the impugned trade mark they have not
complied with the mandatory requirement of searching by making a request to the Registrar of Trade Marks in respect of the trade mark under which
they are seeking the registration as per provision under the Rule 24 of the Trade Marks Rules, 2002 (hereinafter referred to as rules).
It is relevant to refer the said provision of Rule 24 of the rules, as hereunder:
Rule 24
Request to Registrar for search
(1) Any person may request the Registrar, in Form TM-54 to cause a search to be made in respect of a trade mark relating to specified goods or
services classified in any one class in the Fourth Schedule to ascertain whether any trade mark is on record which resembles the trade mark in
respect of which the request is made. The Registrar shall cause such search to be made and the result thereof shall be communicated ordinarily to the
person making the request within thirty working days of the receipt of such request:
Provided, that the Registrar shall cause an expedited search report to be issued ordinarily within seven working days on a request in Form TM-71 on
payment of five times the ordinary fees for such search.
(2) If, within three months from the date of communication of the result of the search aforesaid, an application is made for the registration of the trade
mark in question and the Registrar takes objection on the ground that the trade mark resembles a trade mark, which was not disclosed in the search
but was on record on the last of the dates on which the search was made, the applicant shall be entitled, on giving notice of withdrawal of the
application within the period mentioned in rule 39, to have repaid to him any fee paid on the filing of the application.
(3) Any person may request the Registrar, in Form TM-60 to cause a search to be made and for issue of certificate under sub-section (1) of section
45 of Copyright Act, 1957 (14 of 1957) to the effect that no trade mark identical with or deceptively similar to such artistic work, as sought to be
registered as copyright under the Copyright Act, 1957 (14 of 1957) has been registered as a trade mark under the Trade Marks Act, 1999 (47 of
1999) in the name of, or that no application has been made under that Act for such re-registration by any person other than the applicant. The
certificate shall ordinarily be issued within thirty working days of the date of request:
Provided, however, the Registrar may call for a statement of requirements from the applicant and if the requirements are not complied within two
months from the date of such calling of the statement, the request in Form TM-60 may be treated as abandoned.
(4) The Registrar may cancel the certificate issued under sub-rule (3) after giving notice and stating the grounds on which the Registrar proposes to
cancel the certificate and after providing reasonable opportunity of being heard.
(5) Subject to proviso to sub-rule 3 or sub-rule 4, the Registrar shall ordinarily within seven working days issue an expedited search certificate under
sub-section (1) of section 45 of the Copyright Act, 1957 (14 of 1957) on a request received in Form TM-72 on payment of five times the ordinary fee
for such search.
(6) Before abandoning the request in Form TM-60 or TM-72, as the case may be, for noncompliance of the statement of requirements when called
for, the Registrar shall offer an opportunity of being heard in the matter.
Reading the above provision makes it crystal clear that it is obligatory on the part of the applicant for registration of the trade mark to seek a request
of search in order to find out any similar trade mark having been registered/pending in the Registry.
At this juncture, it is relevant to refer yet another provision under Rule 37, which reads hereunder:
Rule 37(1) and (2)
Acknowledgement and search-(1) Every application for the registration of a trade mark in respect of any goods or services shall on receipt, be
acknowledged by the Registrar. The acknowledgment shall be by way of return of one of the additional representations of the trade mark filed by the
applicant alongwith his application, with the official number of the application duly entered thereon.
(2) Upon receipt of the application for registration of trade mark, the Registrar shall cause a search to be made amongst the registered trade marks
and amongst the pending applications for the purpose of ascertained whether there are on record in respect of the same goods or services or similar
goods or services any mark identical with or deceptively similar to the mark sought to be registered and the Registrar may cause the search to be
renewed at any time before the acceptance of the application but shall not be bound to do so.
Reading the above said provision more particularly Rule 37(2) makes it abundantly clear that the Registrar is, on application for registration of the
trade mark and after the acknowledgement of the same mandatorily required to cause a search to be made amongst the registered trade marks and
amongst the pending applications for the purpose of ascertaining whether there are on record in respect of the same goods or services or similar goods
or services any mark identical with or deceptively similar to the mark sought to be registered.
As far as the case on hand is concerned, neither the respondent made any search request nor the Registering Authority has taken any efforts by
causing a search to verify and find out any similar trade mark has been registered or not. It is pertinent to state that there is absolutely no doubt that
the impugned trade mark used by the respondent certainly resembles, reflects and is identical to the registered trade mark of the applicant. As it is
very much evident on the face of the impugned trade mark and the trade mark of the applicant that both the trade marks contain the main and popular
name ""Gulfgate Hair Care"". Such being the position, the non verification of the earlier trade mark in the register in order to find out whether a similar
registration of trade mark was registered or not assumes much importance. Therefore we have no hesitation to hold that there is a flagrant violation of
the provisions under Rule 24, Rule 37(2) and accordingly the impugned trade mark is liable to be cancelled and removed from the register. For the
foregoing reasons, the application is allowed with a direction to the Registrar to remove the trade mark registered under No. 1574327 in Class 42. The
applicants are directed to pay a sum of Rs. 2000/- towards costs of allowing the additional documents. Registry is directed to issue certified copy of
this order to the applicant only on payment of the costs.