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Judgment
S. Usha, J
The original rectification application is for the removal of the Trade Mark ""Hans Smart"" registered under No. 763522 in Class 6 under the provisions
of the Trade Marks Act, 1999. The applicant is engaged in the business of manufacturing and marketing various iron/steel structural including joints,
channels, H-Sections, T-Sections etc. under the Trade Mark Raj, Samrat, Raj Moti, Raj Sartaj, Swaraj, etc. since 1987. Within the short span of
around 17 years, the applicant's sales has reached an annual turnover of Rs. 11,028 crores. The applicants goods are marketed all over India and are
predominantly used in the construction business and engineering activities.
The applicants adopted and used the Trade Mark ""Smart"" since 01.04.1987. On account of extensive marketing and continuous use, the trade mark
'Smart' has acquired formidable goodwill and reputation among the public. On 01.08.1989, the applicant filed an application for registration of the trade
mark ""Smart"" under No. 514249 in class 9 in order to secure statutory protection.
The steel structure marketed by the applicant under the trade mark ""Smart"" has become extensively popular amongst the class of customers and
the trade concerned with such business over past several years which is evident from the sales figures 1987-1988- Rs. 128.89 lakhs and in 2003-2004-
Rs. 661.70 lakhs. The applicants had incurred substantial expenses for the sale promotional schemes and advertising.,
On account of prior adoption and extensive and exclusive use, the trade mark ""Smart"" has become distinctive of the applicant's goods. The applicant
is therefore the propounder of the trade mark, having exclusive right to use the said trade mark. The use of any identical or deceptively similar trade
mark is bound to cause confusion and deception among the trade and public. If used by others, the public would be misled to think that the goods
manufactured by them are the goods of the applicants. This misrepresentation would amount to passing off.
The first respondent is also engaged in the business of manufacturing and marketing steel structural including joints and channels. The respondent
has adopted a deceptively similar/identical trade mark ""Hans Smart"" for identical goods. The impugned trade mark ""Hans Smart"" is visually identical to
the applicant's trade mark ""Smart"". The use of the impugned trade mark is bound to cause confusion and deception.
The adoption and use of the trade mark ""Hans Smart"" by the respondent is mala fide, dishonest and fraudulent and solely motivated to encash upon
the goodwill and reputation of the applicant that vest in the trade mark ""Smart"". The respondent adopted the impugned trade mark being aware of the
applicant's trade mark.
The confusion and deception on account of use of the impugned trade mark by the respondent is inevitable as the goods are identical and the class
of customers purchasing such goods are illiterate or semi literate having average intelligence and belonging to small towns, semi urban areas and rural
belts; most of these goods falling in class 6 are purchased by farmers, masons, building contractors etc., A consumer on account of imperfect
recollection is bound to be deceived into purchasing the respondents goods when offered instead of the applicants, thereby causing loss or injury to the
customers as well as to the applicants business and goodwill.
In the second week of December, 2004, the applicants came to know that the respondents goods having the trade mark ""Hans Smart"" are being
sold in the market. Though in September 2004, there was some news about the proposed launch of the respondents' product, but such goods were not
available. On 19.01.2005, the applicant filed a Civil Suit for permanent injunction restraining the respondents from using the trade mark ""Hans Smart
in C.S. No. 38 if 2005 before the Hon'ble High Court of Delhi. The Hon'ble High Court of Delhi was pleased to pass an interim order which continues
till date.
The first respondent filed their written statement in which they had disclosed the fact that the impugned trade mark ""Hans Smart"" was registered.
The applicant therefore being aggrieved filed the instant rectification application on the ground that the registration is wrongly granted and is wrongly
remaining on the register being in contravention of Sections 9(2)(a), 11(1), 11(2), 11(3), 11(10) & 57(2) of the Act. The mark is therefore liable to be
rectified.
The above matter was listed for hearing on 18.07.2013. The notice sent to the respondent was returned with an endorsement ""left"". The counsel
for the applicant undertook to send the notice by Speed Post with Acknowledgement due and by Courier for the hearing on 19.08.2013. The second
notice sent by courier has been received by the respondent whereas by Speed Post, it has been returned with an endorsement ""unserved"". The
counsel for the applicant filed an affidavit in proof of service. We therefore set the respondent ex-parte and heard the applicants' counsel.
The learned counsel for the applicant Mr. Sachin Gupta reiterated whatever was stated in the application for rectification.
We have heard and considered the arguments and have gone through the pleadings and documents.
The applicant's main contention was that the trade mark ""Smart"" and ""Hans Smart"" are deceptively similar for identical goods and therefore they
are aggrieved. The applicants hence filed a Civil Suit and obtained an order of interim injunction. The deceptively similar trade mark for identical goods
ought not to continue on the register. The marks are similar for identical goods. When we hold so, then by such use by the respondent would result in
the applicant being aggrieved, the applicant is therefore a person aggrieved and can file and maintain application for rectification.
The other ground of the applicant is that only in 2004 they came across an advertisement about the respondent's launch of the products under
impugned trade mark ""Hans Smart"" which led to the filing of the civil suit. The respondents though have entered appearance and filed their written
statement in the Civil Court have not entered appearance nor have they filed their counter statement. In these proceedings the respondents have
merely denied the averments made in the plaint. The only contention of the respondent is that advertisement/the article about the launch of the product
in September, 2004 is the one which has been created by the applicant and the news information about the launch was not issued by the respondent
In fact, the Hon'ble High Court of Delhi has passed an order of interim injunction restraining the respondents from using the trade mark dated
19.01.2005 in Civil Suit No. 38 of 2005. The counsel for the applicant would submit that the respondents have not taken any steps for vacating the
order. We think after the interim orders, the respondents could not have continued using the trade mark and probably that is the reason for the
respondents to have not appeared before us also.
The respondents have filed the impugned application for registration on 26.06.1997 claiming user since 1993 and have obtained registration on
12.09.2003. From the records, it is seen that the respondents have advertised about their launch only in September, 2004. If that is the case, then the
user claimed in the application for registration as 1993 is a wrong statement. This Board in several matters has removed the trade mark for wrong
date of use. While that be so, we definitely cannot have a different view as regards the date of user.
The other point would be even if we consider the advertisement was created by the applicant; the respondents have not appeared before us and
proved their use since 1993. The reason for the respondent not appearing before us could be that they are already under an order of injunction since
the year 2005. The respondents must not be using the trade mark and are not interested in pressing the registration. For the reasons stated above, we
do not think it necessary to allow the mark to continue on the register. Accordingly, the application for rectification is allowed with a direction to the
Registrar to cancel the Trade Mark under No. 763522 in Class 6 from the register of Trade Marks.