AI Structured Summary
Not yet generated for this judgment
Judgment
V. Ravi, Technical Member
In these proceedings, the applicant are seeking cancellation of 565826 in Class 21 of the respondent herein. The trade mark in question is CYCLE
Brand. The grounds for the same are indicated below:
a. the applicants are engaged in the business of manufacture and sale of BROOMS. They have adopted the trade mark CYCLE BRAND with a
particular artistic work and design for their products.
b. the respondent are the registered proprietor in respect of device of CYCLE in Class 21 for ""hollow-ware articles, glassware, domestic utensils
containing LR trays and parts thereof"".
c. the respondent had opposed the application of the applicant under no. 1360436 in class 21 which was allowed and the said application was refused
by the Deputy Registrar of Trade Marks, Chennai and an appeal against the said order is the subject matter of the appeal in OA/19/2009/TM/CH
heard along with this petition.
d. The respondent had obtained registration of CYCLE brand in class 21 under No. 565826 on a 'proposed to be used' basis on the date of filing on
20.01.1992 which was subsequently registered on 15.11.2001. The impugned mark under attack is still valid and subsisting. The applicants state that
this registration has been merely obtained to prevent bonafide users from using the trade mark CYCLE BRAND and it amounts to a restraint on trade
and accordingly the impugned mark is liable to be removed from the register. The applicants further state that the registration of the impugned mark
has been obtained fraudulently by making a false statement of use before the Registrar. The applicants are, therefore, person aggrieved by the
registration of the impugned mark which is liable to be expunged from the Register under Section 47(1)(a) & (b) read with Section 50(2) of the Act.
The defence of the respondent/registered proprietor is summarised below:
a. The respondents are carrying an established business in the manufacture & sale of incensed sticks (agarbathis) since long and are the registered
proprietor of CYCLE BRAND trade mark. They have secured registration in respect of the artistic work on the said label CYCLE BRAND also
under the Copyright Act, 1957. The respondents are doing extensive business since 1954 and have applied for registration in all 45 classes under the
Act and secured registration in most classes including Class 21. The respondents have furnished sales figure concerning the turn over under the
impugned mark along with the advertisement expenses incurred. On the date of the subject rectification, the respondent had a turn over exceeding Rs.
200 crores and have incurred advertisement expenses in excess of Rs. 6 crores per annum. They have also been very vigilant in safeguarding their
trade marks rights under the impugned mark and have instituted a number of infringement suit successfully obtaining favourable order from various
courts in India. Accordingly, the respondents state that the impugned trade mark CYCLE BRAND has become a well known trade mark within the
meaning of Section 2(1)(zg) read with section 11(8) & Section 11(10) of the Act. They further state that applicants have not filed any verification
affidavit duly verifying the averments made in the rectification petition and on this ground alone the application is liable to be rejected in limini. The
applicants have dishonestly copied the opponents well known mark and therefore cannot claim to be a 'person aggrieved' and entitled to file the
present application for rectification. The respondent also state that the registration of the impugned mark CYCLE BRAND in class 21 was granted
after taking account the long user of the trade mark used as their House Mark since 1954. By virtue of long, continuous and extensive use of the
impugned mark by the respondent, it has become distinctive of their products only. No case for cancelling the impugned trade mark has been made out
and therefore the subject application should be refused and the applicant is not entitled to the relief claimed under section 47(1)(a) & (b) and 50(1)
clause (ii) of the Act as alleged.
On the preliminary issue of 'person aggrieved' the applicant are in the business of manufacturing and selling 'brooms for cleaning purposes' falling in
Class 21 while the respondent are largely confined to manufacture and sale of 'agarbathis' (incense stick). These relate to two completely different
markets with no connection with each other. Various Courts have held that whenever an applicant is in the same trade he can invoke cancellation
proceedings. The trade mark cycle brand is registered by the respondent for 'Hollow-ware articles, glassware, domestic utensils containing LR trays
and parts thereof ' falling in Class 21. The applicant's business of brooms also falls in Class 21. The applicants are essentially in the broom business.
The reason for seeking cancellation of the impugned mark is both goods fall in Class 21 of the International classification of goods and services.
Classification are merely general indication relating to the field to which, in principle, the goods or services belong. Often goods falling in the same
class are totally unrelated and at other times goods falling in different classes may be analogous. In the instant case the rival goods as is evident have
nothing to do each other. We have already dealt in detail why the respondent's mark cannot be refused registration in OA/19/2009/TM/CH. For the
same reasons, we do not rectify the mark. ORA/08/2012/TM/CH is dismissed. There is no order as to costs.