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Judgment
The Rectification Application is filed under Section 47 and 57 of Trademark Act, 1999 for Removal of the Registration No. 1784902 for the mark
“ â€in Class 7 in the name of Respondent No.1. The application for the impugned registration has been filed on 13/02/2009 claiming use
since 21/02/1985 and the sealing date for the registration certificate is 09/02/2011.
There is no representation on behalf of the Respondents at this and on the last few hearings.
The details of the Impugned registered Trade Mark are :
Trade Mark No : 1784902
Class     : 7
Trade Mark      :
Date of Application      :
13/02/2009
First Date of21/02/1985
Use           :
Date of01/06/2010
Advertisement        Â
:
Date of Registration : 09/02/2011
Valid Till         : 13/02/2029
Goods   : all types of sewing machines and part
thereof except needles included in class 07
The Applicant's details of Trade Mark, applied / registered in the name of Applicant herein are:
a. Registered under No.172782 dated 24/01/1956 in respect of Sewing Machines and parts thereof (except Needles) included in Class 07.
b. Registered under No.402005 dated 26/02/1983 in respect of Sewing machines, embroidery machines, leather stitching machines etc.
c. Registered under No.467934 dated 19/02/1987 in respect of over lock machines and parts thereof.
FACTS OF THE CASE
About the Applicant
As per the written submissions of the Applicant, it is a partnership concern consisting of two partners namely Shri Dayal Das and his son Shri
Ramesh Kumar and engaged in the business of manufacturing, marketing, distribution and sale of a wide variety of Sewing Machines and Parts
thereof, etc. and which business is being carried on continuously and extensively by the Applicant firm since the month of January, 1954.
The Applicant submitted that since the inception of the said trade mark DURBY in respect of sewing machines and parts thereof, etc. it has come
to exclusively denote and connote the goods and products of the Applicant firm and none else. Applicant submitted its sales figures from 1981 upto
2013.
About the Applicant’s Trademarks
The Applicant submitted that it is the registered proprietor of the trade mark ‘DURBY’ registered under No.172782, No.402005 and
No.467934 All the aforementioned registrations are duly renewed and are valid and subsisting till date. .
Applicant submitted that apart from having acquired statutory rights in respect of its trade mark DURBY by virtue of registration under the statute
is also the prior adopter and prior user of the said distinctive trade mark DURBY and no person without the leave, license or consent of the applicant
has any right to use or reproduce the trade mark DURBY or any other trade mark deceptively similar thereto in respect of identical or ‘DURBY'.
The use of any identical or deceptively and confusingly similar trade mark ' DURBY' by anybody else in relation to the aforesaid goods or any other
goods allied and cognate thereto is bound to cause confusion and deception in the minds of purchasing public at large and the same would further
dilute the distinctiveness of the applicant's invented trade mark DURBY thereby harming the vast goodwill and reputation that the applicant firm has
earned due to the consistent use of the trade mark DURBY for more than half a century. The purchasing public at large and people involved in the
trade have come. about to identify and recognize the trade mark ' DURBY' as that of the applicant in respect of the aforesaid goods.
Applicant also submitted that by virtue of the excellent standard and quality maintained by the applicant in respect of its aforementioned goods and
further due to the continuous and extensive use of the trade mark 'DURBY' by the applicant, the same has acquired tremendous goodwill and unique
reputation and goods bearing the said trade mark DURBY of the applicant are highly1 demanded .and recognized by the purchasing public as
manufactured by the applicant and none-else. The said trade mark 'DURBY' is exclusively associated with the goods of the applicant's manufacture
and a mere mention of the mark DURBY in respect of sewing machines and parts thereof brings to the minds of the purchasing public and trade the
products and merchandise of the applicant firm and none else.
Applicant’s Case against Respondent No.1
The Applicant submitted that on 15/07/2014 when Mr. Ramesh Kumar of the applicant firm was inspecting the records of the Trade Marks
Registry on its website in order to ascertain the upto date status of the applicant firm's aforementioned 3 registered trade marks, he accidentally hit
upon the details of the respondent No.1'.s impugned registered trade mark DURBEY under no.1784902.
The Applicant then made efforts to procure the impugned• goods of the Respondent No.1 but it seems that the Respondent No.1 has not
commenced manufacturing/ marketing•-any sewing machines and parts thereof bearing the impugned registered trade mark DURBEY and the
Applicant was unable to lay its hands on the aforesaid impugned product.
ARGUMENTS ADVANCED BY THE APPLICANT
Learned Counsel for the Applicant argued that the respondent no.1 has malafidely and mischievously added the alphabet E' between the last two
alphabets B & Y of the registered trade mark ' DURBY' of the applicant thereby making no appreciable difference in the visual, structural and
phonetic components of the two marks and the proposed use, if any, of the impugned trade mark DURBEY by the Respondent No.1 is bound to
create confusion/deception amongst the trade and public who are well aware of the trade mark DURBY of the Applicant.
Learned Counsel for the Applicant further argued that the Respondent No.2 while examining the impugned application of the Respondent No.1
under Rule-37 of the Trade Marks Rules, 2002 failed to cite the said prior registrations of the applicant as conflicting marks under Section-11 of the
Act and consequently the registration so obtained by the Respondent No.2 is violative of the mandatory statutory provisions of the Trade Marks Act,
1999 and is liable to be cancelled.
Learned Counsel for the App' licant also argued that the Respondent No.1 in its impugned registration has claimed a User since 21.02.1985 but
has failed to file any documentary evidence in suppo.rt of the said user.
According to the applicant's information the said claimed user by the. re.s. Ipondent no.1 is false and untrue and the impugned registered trade mark
DURBEY was never used by the Respondent no.1 since 21.02.1985 and the respondent no.1 is guilty of committing an offence for falsification of
entries in the Register under Section-109 of the Trade Marks Act, 1999 in as much as the respondent no.l has made or caused to be made a false
entry in the Register. The Applicant also submitted that Respondent No.1 has not only applied for the impugned registered trade mark DURBEY
claiming user since 21.02.1985 but had also applied for the registration of the trade mark SINGAR RINDER No. 1769111 in Class 7 and USNA
under No. 1784905 in Class 7 no.1784905 in class-7 in respect of sewing machines and :parts thereof, etc. and which applications on objections being
raised were abandoned by the respondent no.1. it is apparent that the conduct of the respondent no. is fraudulent and the respondent no.1 is in the
habit of copying the lead manufacturers including that of the applicant.
COMPARISON OF THE MARKS
We have examined the Impugned Trade Mark  and find that the impugned mark is deceptively similar to the Applicant’s
DURBY trademarks. The impugned mark, therefore, cannot qualify for protection as a trademark under any circumstances as members of the trade
and public would invariably associate the same with the Applicant. Thus the impugned mark is incapable of distinguishing the Respondent No.1’s
goods from those of the Applicant.
INTENTION OF THE RESPONDENT
It is seen that the behavior of the Respondent No-1 is having copied the key phonetic element DURBY of the Applicant’s mark, with the
addition of only one other letter, in in a manner that evokes no contrast, phonetically or visually, evinces that they had deliberately and fraudulently
adopted the impugned mark in respect of similar and allied goods and has applied for registration thereof, in order to establish a connection between
the impugned marks and the Applicant’s goodwill and reputation, and having full prior knowledge about Applicant’s exclusive proprietorship
over the DURBY series of trademarks and the reputation and goodwill attached to the Applicant’s marks. The impugned mark has been used on
similar and allied goods in a manner so as to evince malafide on the part of the Respondent No.1.
Although the Respondent No.1 has claimed user since 21/02/1985 for the trade mark DURBEY the Respondent no.1 has not appeared before us
and filed documents to establish usage and according to the Applicant, has not marketed and/or used its products from the date of its registration or
atleast for the statutory period as prescribed under -47(2) of the Trade Marks Act .
FINDINGS
We find that the impugned mark is deceptively similar to the Applicant’s prior used and registered DURBY trademark and the same is devoid
of any distinctive character and is not capable of distinguishing the goods of the Respondent No.1. The Applicant is the prior adopter, prior user and
prior registered proprietor of the trademark ' DURBY' registered under Nos.172782 dated 24.01.1956, 402005 dated 26/02/,1983 and 467934 dated
19/02/1987 in respect of identical goods falling in Class-07.
As was observed by Parker, J., in Re Pianotist Co.'s Application, (1906) 23 RPC 774, and further expanded on in a plethora of subsequent cases
including Roche & Co. v. Manners & Co. (P) Ltd., AIR 1970 SC 2062, Parle Products v. J P & Co. AIR 1972 SC 1359, and Cadila Health Care Ltd.
v. Cadila Pharmaceuticals Ltd. [2001 CLC 564 the Apex Court has observed that it must be seen whether there was an overall similarity between the
two names in respect of the same description of goods, both visually as well as phonetically. Mere addition of one letter E in DURBY to form
DURBEY will not make the impugned mark dissimilar from that of the Applicant since both marks are the same phonetically and visually. In this
regard, the reliance is placed on Ruston and Hornsby Ltd. Vs. Zamindara Engineering Co., 1970 AIR(SC) 1649, wherein the Defendant was using the
mark ‘RUSTAM INDIA’ and the Hon’ble Supreme Court of India observed that- “8 If the respondent's trade mark is deceptively
similar to that of the appellant the fact that the word 'INDIA' is added to the respondent's trade mark is of no consequence and the appellant is entitled
to succeed in its action for infringement of its trade mark.†This was also relied on in Greaves Cotton Limited V. Mohammad Rafi &ors, 2011 (46)
PTC 466 (Del.)
The adoption of the impugned trade mark ""DURBEY"" by the Respondent No.1 is with an intention to ride on the goodwill of the Applicant. The
impugned trade mark ""DURBEY"" is visually, phonetically and/or structurally near identical to the prior adopted and prior registered trade mark
DURBY"" of the Applicant and if used, is bound to lead to confusion and deception amounting to passing off. The continuing registration of the
impugned trade mark 'DURBEY' is bound to interfere with the applicant's exclusive legitimate rights to use its aforesaid registered trade mark
'DURBY'.
Respondent No.1 has not proved its usage claim of 21.02.1985 by any documentary evidence. Further the Respondent No.1 has also attempted to
fasley register other trade marks of companies in this field apart from the mark DURBY of the applicant. Therefore the Respondent No.1 has no
bonafide intention of using the impugned registered trade mark in relation to the goods applied for on the date of filing of the application for the
registration of the said impugned trade mark. The Hon’ble Supreme Court in Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra,
[2002 2 SCC 147] laid out certain guidelines on deceptive similarity resulting in infringement by capitalizing on the goodwill and reputation of the
original trader. This was relied on in a plethora of decisions including Standard Electricals Limited vs Rocket Electricals And Anr. 2004 (28) PTC 26
Del. In the present case, the Respondent No.1’s mark is deceptively similar to the trademarks of the Applicant.
We note that the goods covered under the impugned marks are similar to the Applicant’s goods covered under various registrations. Hence,
any use of the impugned mark in respect of the abovementioned goods in CLASS 7 tends to mislead the public to believe that the Respondent No.
1’s business and goods are that of the Applicant. Such user by the Respondent No. 1 will also dilute and debase the goodwill and reputation of the
Applicant in its DURBY mark.
Given the long and extensive use and promotional initiatives undertaken by the Applicant worldwide, it is incomprehensible that the Respondent
No.1 was unaware of the prior use, registrations, goodwill and reputation of the Applicant’s DURBY trademarks. Thus the adoption of the
impugned mark by the Respondent No.1 for conflicting goods is dishonest, fraudulent and solely motivated to encash upon the goodwill attached to the
above trademarks of the Applicant. It is likely to create an unmistakable impression in the minds of consumers that the goods offered by the
Respondent No.1 are somehow associated with the Applicant. Considering that the use of the impugned mark, if any, was illegitimate, there is no
acquired distinctiveness which has accrued in favour of the respondent No.1 and hence, no protection is available to the said registration under the
provision of Section 32 of the Act.
The conduct of the Respondent No.1 shows that they have not come with clean hands in seeking the registration of the impugned Trade Mark and
therefore, the application of the impugned trade mark should be regarded as having been made in “bad faithâ€. The impugned registered trade
mark is therefore, liable to be cancelled under the provisions of Section 11 & 18 of the Act. It also offends under Section 57 of the Act. The existence
of the identical/nearly identical impugned registration which was wrongly granted is prejudicial to the Applicant’s interests.
The DURBY trademarks is being used by the Applicant in India since the year 2001 and worldwide since 02/01/1954 and due to such long,
continuous and extensive use, the mark is associated solely with the Applicant and none else. No other trader can therefore register the mark in their
name. The registration of the mark in the name of Respondent No. 1 should therefore have been refused by the Respondent No. 2 as the same is
against the law of passing-off. Respondent No.2 has however not cited the Applicant’s earlier similar registered trade mark 'DURBY' registered
under no.172782 dated 24/01/1956, 402005 dated 26/02/1983 and 467934 dated 19/02/1987 all in class-07 and consequently the said impugned trade
mark of the respondent is liable to be taken off the register on this account also.
In view of facts and material placed on record, it is evident that the registration of the impugned trade mark has been wrongly granted by the
Respondent No. 2 and should be removed from the register as it is in breach of provisions of 9(1)(a), 9(2)(a), 11(1), 11(2), 11(3), 11(10), 12, 18(1) and
32 of the Trade Marks Act and therefore is liable to be removed and cancelled from the Register under Section 47 and 57 (2) of the Trade Marks
Act, 1999.
Respondent No.1 has not appeared in this matter. It appears that Respondent No.1 is not interested to contest the matter. The Respondent No.1 is
not the proprietor of the trade mark. User, if any, was tainted and dishonest. Thus the mark is wrongly remaining on the Register and is liable to be
removed.
In the light of above the Petition is allowed and Respondent No.2 is directed to delete the entry of registered Trade mark No. 1784902 for the
mark “ â€in Class 7 in the name of Respondent No.1 from the Register under the provisions of Section 47(1)(a) and (b) and Section 57
of the Trade Marks Act, 1999. Copy of order be sent to the parties as well as Respondent No.2 who is directed to remove the said mark from the
Register forthwith
No costs.