Mahesh Gupta vs Dilip Kumar Shukla

Year,Sales in value INR (Approx),,

2018-19,"2,70,90,76,500",,

2017-18,"2,49,90,03,000",,

2016-17,"2,17,16,37,000",,

2015-16,"2,39,62,18,500",,

2014-15,"2,34,16,77,000",,

Trade Mark,Appl_ No.,Class,Status

KENT,1442722,9,Pending

KENT,1443184,30,"Application

abandoned

KENT,1443188,12,Pending

KENT,1443189,13,Opposed

KENT,1443192,17,"Application

abandoned

KENT,2007659,7,Pending

KENT,2007660,7,Pending

KENT,2007661,7,Pending

KENT,2007662,11,Pending

KENT,2007663,7,Pending

KENT,2007665,7,Pending

KENT,2007666,7,Pending

KENT,2007668,11,Pending

KENT GOLD,2007669,11,Pending

KENT,2007670,11,Pending

KENT,2007673,11,Pending

KENT,2007674,11,Pending

KENT,2007675,11,Pending

KENT,2007676,11,Pending

KENT TAP GUARD,2067252,7,Pending

KENT OILLESS FRYER,4029369,11,Pending

submitted that the Applicant has never used the alleged mark. Respondent no. 1 is using the impugned trade mark since 2016 without any confusion,,,

and deception. The impugned registration is perfectly valid and entitle to remain present on the Register.,,,

The Respondent No.1 denied that the impugned registration ought not to have been granted under Section 9(1)(a) of the Act or is devoid of,,,

distinctive character or not capable of distinguishing the goods of the respondent no. 1 from those of another person or is liable to be cancelled as,,,

claimed or otherwise. Respondent no. 1 is using the impugned trade mark since 2016 without any confusion and deception. The impugned registration,,,

is perfectly valid and entitle to remain present on the Register. It is pertinent to mention that the Applicant is claiming to have filed alleged mark,,,

KENT GRAND+ for registration and hence it does not lie in the mouth of petitioner to challenge the impugned registration under Section 9(1)(a) of,,,

the Trade Marks Act.,,,

The Respondent No.1 denied that respondent no. 1 is using any infringing trade mark or design as claimed or otherwise. It is further denied that,,,

any of the business activities of respondent no. 1 is contrary to the provisions of Trade Marks Act or Design Act as claimed or otherwise. It is,,,

vehemently denied that the alleged trade mark KENT GRAND+ is well known or any loss or injury will be caused to the Applicant on account of use,,,

of the impugned trade mark as claimed or otherwise.,,,

The Respondent No.1 denied that the existence of the impugned registration is blocking the Trade Marks Register or causing confusion amongst,,,

the general public as claimed or otherwise. It is vehemently denied that respondent no. 1 will take any undue advantage of impugned registration to,,,

allegedly piggy back upon the alleged reputation or goodwill of Applicant as claimed or otherwise. It is submitted that the Applicant has never used the,,,

alleged trade mark and hence cannot claim any reputation or goodwill in relation to the same. It is vehemently denied that the customers will be,,,

confused in any manner on account of the use of the impugned mark by the respondent no. 1 or assume any relation between goods of the respondent,,,

no. 1 with Applicant as claimed or otherwise.,,,

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The Respondent No.1 denied that any balance of convenience is in favour of the Applicant as claimed or otherwise. On the contrary balance of,,,

convenience lies in favour of the respondent no. 1. It is submitted that great harm will be caused to the respondent no. 1 who is honest and bonafide,,,

adopter of the impugned mark and user thereof since 2016 if ad interim relief as prayed in the present petition is granted in favour of the Applicant. It,,,

is submitted that the no prejudice or harm will be caused to the Applicant, if the relief as prayed for in the present petition is refused in against the",,,

Applicant and in favour of respondent no. 1. The present application is liable to be refused with costs. It is denied that the present application is filed in,,,

bonafide or in the interest of justice as claimed or otherwise.,,,

The Respondent No.1 thus stated that the present application is liable to be dismissed with costs against the Applicant and in favour of respondent,,,

no. 1.,,,

FINDINGS OF THIS BOARD,,,

We have gone through the submissions of the both the counsels and material placed on the record. It is admitted position that the Applicant is prior,,,

adopted and using the mark KENT GRAND+ as per the material placed on record; however the contention of the Respondent No.1 is that the said,,,

adoption and usage is not by the Applicant herein but his Company which is distinct legal entity and cannot be associated with the Applicant herein.,,,

The Applicant had filed additional documents exhibiting the License agreement provided by the Applicant to the Company and thereby all usage of,,,

the mark of the company is directly attributed to the Applicant.,,,

There is no dispute on marks being similar/dissimilar both Applicant and Respondent admit that the marks are similar and/or identical to each other.,,,

Thus the moot question is who is the prior user of the mark and is the Registration secured by the Respondent No.1 is valid or not.,,,

The Applicant claimed the usage of the mark since 2008, however the Respondent disputed such usage as it is used by the Applicant Company",,,

and not by Applicant himself. The production of the license agreement by the Applicant mutes the said argument of the Respondent No.1. The,,,

Respondent No.1 claimed usage of the mark and co-existing since at least 2016 and since there were no Registration/Applications of the Applicant,,,

pending on the Register at the time of Registration of the mark by the Respondent No.1 there is no flaw in granting Registration by the Respondent,,,

No.2. However the language used in Section 11 of the Trademark Act, 1999, is “Earlier Trademarkâ€​ and not “Earlier Registered Trademarkâ€​",,,

and thus the argument of the Respondent No.1 that only registered marks or marks pending on the Register need to compare cannot be sustained.,,,

Section 9 of the Trademark Act, 1999 also states that if the mark is unable to distinguish with the earlier marks it cannot be proceed to Registration.",,,

Thus the earlier mark as used by the Applicant can be compared with the mark obtained Registration by the Respondent No.1 for the purpose of,,,

ascertaining confusion and distinctiveness.,,,

The Respondent No.1 averments related to pendency of Civil Suit bearing No. C.S. (COMM) No. 1404 of 2016 filed by the Applicant herein and,,,

that is being adjudicated upon before the Hon’ble High Court of Delhi, wherein the Trademark GRAND PLUS is a subject matter of the",,,

proceedings is concerned the Apex Court in its various decisions held that it is a settled law that the issues relating to and connected with the validity,,,

of registration has to be dealt with by the Tribunal and not by the civil court and hence the same will be dealt by this Board.,,,

It is admitted position that the Applicant had prior adopted the mark for his products and had invested huge amounts in sales and promotion of the,,,

same both in India and international along with endorsement of celebrities. Since both the marks are similar/identical dueÂ,,,

to extensive presence of the Applicant in national and international arena, it is likely that confusion would arise if any similar marks are",,,

adopted and used by others for their products.,,,

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This Board is not concerned about the opposition proceedings between the Applicant and third parties before the Respondent No.2 which can be,,,

decided by the Respondent no.2 independently without the influence of the present order. This Board further is not dwelling into the injunction of,,,

usage of the mark by either party which is ceased with Hon’ble Delhi High Court.,,,

The limited adjudication that this Board handling is the validity of the Registration of the Respondent No.1. In view of the submissions and,,,

arguments advanced by the parties it is admitted position by both the parties that the Applicant has prior adopted and used the mark, both the marks",,,

are similar, the goods are similar/identical to each other.",,,

At present, we are of the opinion that the Applicant has made out a strong prima facie case of granting the relief prayed for and thus until the",,,

Rectification Application is finally decided the operation of the registration under Application No. 3252338 in class 11 Registered under Certificate No.,,,

1782970 in the name of Respondent No.1 shall remain stayed.,,,

At this stage, we have arrived to this conclusion only as prima facie view. Once the pleadings are filed, this Board will deal the matter accordingly",,,

on merits on such completion of pleading of the parties and shall not take any of present observations into account while dealing with the main,,,

Rectification Application. There shall be no orders as to the costs.,,,

List the main Rectification Application on 06/04/2021.,,,