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Judgment
S. Jagadeesan, J
The applicant has filed this application under sections 56 and 46 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the
Act) to expunge from the Register of Trade Marks the trade mark No. 99919 in class 30 registered in favour of the first respondent herein or
alternatively the said registration may be varied by inserting a condition that no exclusive right is granted by registration No. 99919 in class 30 to the
first respondent in respect of the word 'NABISCO'. Originally the application was filed in the High Court of Calcutta in A. No. 4/1998 which was
transferred to this Board in compliance of section 100 of the Trade Marks Act, 1999.
The case of the applicant is that the applicant is a registered firm under the Indian Partnership Act under the name and style of Royal Snacks Food
Products. It is having its principal place of business at Siliguri, West Bengal. It is carrying on the business of manufacturing and marketing quality
biscuits for human consumption ever since 1988. It is selling its products with the following trade marks / brand:-
a) The word 'Royal' enclosed in thick borders both ends being closed by semi-circles and devices of a crown in the middle top of the name 'Royal'
being used since 1989;
b) The word 'NABISCO' being used since the year 1993;
c) 'NABISCO NASTA' the label mark being used since the year 1993;
d) NABISCO ORANGE being used since the year 1994;
e) NABISCO BUTTER CRISPS used since the year 1998;
f) SONY MITHA NAMKEN the label mark used since the year 1993 and
g) SONY SNEX a label being used since the year 1993 after obtaining necessary approvals from the appropriate authorities. The specimen copies of
the said labels have been annexed to the petition and marked as A (a) to A
(g). The product of the petitioner are sold in the States of West Bengal, Bihar, Assam, Tripura, Mizoram, Meghalaya, Nagaland, Manipur and
Arunachal Pradesh and their adjoining areas. The applicant is the first person to use the mark 'NABISCO' in India and by virtue of their uninterrupted
use of the said trade mark it acquired distinctiveness in respect of its products and it is the lawful proprietor of the mark. The applicant on 17.1.1994
and 26.2.1998 applied for registration of the trade marks NASTA NABISCO, NABISCO and SONY under application Nos.616684 and 79299 under
the Act and the same are pending before the Trade Marks Registry, Mumbai. The said marks are exclusively associated with the applicant and it had
also attained goodwill and reputation.
On or about 13.1.1995 the applicant came to know that a similar mark was being used by third parties, causing deception in the minds of the public
and passing-off their products as those of the applicant. Since the identity of the offender could not be detected, the applicant caused Trade Mark and
Copyright Caution Notices to be published in the newspapers. The photocopies of the same were annexed with the application as 'B' series. The
applicant after conducting enquiries found that one Puranmal Maheshwari trading as Puranmal Maheshwari, one Hanuman Prosad Jain trading as
Hanuman Parsad Mahindra Kumar and one Bhagwan Das Jetwani trading as Baba Confectionery in collusion and conspiracy amongst themselves
were responsible for the said offending acts. The applicant filed a title suit before the District Court at Darjeeling in T.S. No. 1 of 1995. The applicant
also lodged a complaint against Bhagwan Das Jetwani trading as Baba Confectionery under section 156(3) of the Code of Criminal Procedure before
the Chief Judicial Magistrate at Kishanganj, Bihar. The said complaint was registered as case No. 18C/95 and the police were directed to take
appropriate action. The business place of the said Bhagwan Das Jetwani was raided by the police and incriminating materials viz., labels, dyes, biscuits
with the mark 'NABISCO NASTA' were seized from the custody of the accused. However, during investigation the accused died and the case came
to an end.
While so, the applicant received a letter / notice dated 28.4.1998 signed on behalf of the first respondent calling upon the applicant to desist
forthwith from using the trade mark 'NABISCO' or any other trade mark similar thereto in respect of biscuit or other related products and also use of
the word 'ROYAL' and the letters NBC as its trade marks and also to withdraw from the market all biscuits bearing the said trade marks 'NABISCO'
and NBC inter - alia, alleging that the said trade mark 'NABISCO was the trade name, house mark and principle trade mark of the first respondent.
On enquiry the applicant found that the claim of the first respondent was not supported by facts and no product with the said brand 'NABISCO' or
'Royal' of the first respondent were found in the market. The applicant sent a suitable reply. The applicant's notice was drawn to a trade mark
comprising a label with word RITZ as its principal feature, and the word NABISCO enclosed within oval shaped border placed in the left hand top
corner of the said label registered under No. 189438 in class 30 in favour of National Biscuit Company of USA indicating the mark 'proposed to be
used' on the date of registration. Being aggrieved the applicant filed an application in form TM-26 prescribed by rule 94 of the Trade and Merchandise
Marks Rules, 1959 for the rectification of the Register or removal of the said trade mark from the Register inter-alia, under sections 46, 47(4) and 56
of the said Act with the Registrar of Trade Marks, Calcutta.
5 . In order to protect the applicant's lawful right in the trade mark 'NABISCO' the applicant filed a suit against the first respondent on the file of
District Court of Darjeeling in TA No. 3/1998 praying for declaration of the applicant's title in the said trade mark and for permanent injunction
restraining the first respondent from threatening the applicant or his agents etc., connected with its business, with an action or proceeding for the
alleged infringement of the trade mark 'NABISCO' or 'Royal' or NBC in respect of biscuits. Inter-alia the applicant also filed an application under
order 39, rules 1 and 2 read with section 151 of the Code of Civil Procedure for an interim order pending the suit. In the meanwhile the applicant
received a letter dated 30.5.1998 from the counsel of the first respondent informing the applicant that the first respondent had filed a suit TS No.
4/1998 on 29.5.1998 in the court of the District Judge at Barasat against the applicant and obtained an interim order of injunction restraining the
applicant from using the trade mark under caption 'NABISCO'. The applicant also came to know about application No. 551839 filed by the first
respondent for registration of the word 'NABISCO' and the applicant filed its objection. The impugned trade mark which is deceptively similar to that
of the applicant's trade mark titled 'NABISCO', NABISCO NASTA' 'NABISCO BUTTER CRIS has been registered and is contrary to the
provisions of sections 9, 11(a), 11(e) and 18(1) of the said Act. The impugned mark was only proposed to be used on the date of registration and is still
not in use and as such the impugned trade mark attracts the provisions of section 46(1) (a) and (b) read with section 56 of the said Act. Further, the
said mark was registered by fraud without any intention to use thereof by the first respondent. Hence it is undesirable that the mark should continue to
be in the Register and consequently the mark is liable to be removed or expunged from the Register.
The first respondent's power of attorney filed an affidavit in opposition stating that the first respondent company was found in or about 1898 and for
over 50 years or more their biscuits and other relative packagings had depicted on them the letters 'NBC' being abbreviation of the original name of
the first respondent known as National Biscuit Company. The name 'NABISCO' was coined by taking the prefix ""Na"", ""Bis"" and ""Co"" of each word
of its old name. The main product of the first respondent has been biscuits. But during the past few years it has also been manufacturing and marking
a large variety of other food products. The first respondent was having 28 biscuit plants around the world and in over 13 countries it holds number 1 or
number 2 position in biscuits in terms of market share. The products of the first respondent are marketed throughout the world through its subsidiary or
associate companies as well as widespread dealer network globally and its products bearing the said trade mark are available at leading stores and
other select shops throughout the world. The said mark has become distinctive of the first respondent's goods and has come to be understood by the
trade and public in India and abroad as being its goods. The goodwill of the first respondent's mark and its global reputation is integrally connected with
the said mark, name and goods and as such the first respondent has acquired proprietorship in exclusive use of the mark and name worldwide. The
website of the first respondent set up in November, 1995 is accessible to the public all over the world including in India and the said website gives
details of its various products and brands and covers a variety of attractive schemes and interest information. The said website is visited by a number
of persons from all over the world including India and thereby the name 'NABISCO' is well-known to persons even in the countries where product of
the first respondent is not available and the name 'NABISCO' is exclusively identified with first respondent. The first respondent obtained registration
of the mark in respect of their goods in about 146 countries across the world and in India the registration of the trade mark 'NABISCO' was obtained
as early as 1.8.1944. The name 'NABISCO' being an invented word is capable of distinguishing the business and products of the first respondent and
their annual global sales equivalent to over Rs.35,000 crores. The first respondent had exclusively advertised its trade mark in media and forms such
as TV, newspapers, magazines, inflight magazines, journals, reports extends worldwide. The annual advertisement expenses runs to Indian Rs.10,000
crores. The first respondent at all material times have / had honest and bonafide intention of using its trade mark 'NABISCO' in India and therefore
the registration of the trade mark 'NABISCO' wa renewed by the first respondent from time to time and the same is still subsisting.
7 . In or around December 1997 the first respondent established contact with a marketing company in India, namely, Lotus Chocolate Company,
Hyderabad and the contact was established through Nabisco International Limited, Hon Kong. After ascertaining the details as to the background and
activities of the said Lotus Chocolate Company, the first respondent sent a consignment of biscuits and cookies under a proforma invoice dated
9.1.1998. The said samples were shown around to retailers and distributors in Bangalore city through M/s Choco Marketing Private Limited at
Bangalore who are a distribution company of M/s Lotus Chocolate Company. The trade mark 'NABISCO' enjoys considerable trans border reputation
and goodwill among the related trade and public by virtue of availability of foreign magazines containing the first respondent's advertisements over its
products bearing the trade mark 'NABISCO'. In third week of April, 1998 the first respondent came to know about the business and products of the
applicant with the trade mark 'NABISCO' and immediately a cease and desist notice was issued to the applicant. After exchange of notices the first
respondent filed a suit TS 4/1998 on the file of District Court Barasat and obtained an order of injunction on 28.5.1998 restraining the applicant from
using the trade mark 'NABISCO'. The applicant though filed a suit TS 3/1998 on the file of District Court of Darjeeling, the learned District Judge did
not grant any interim order. Hence the present application for rectification is nothing but a counter blast to the suit TS 4/1998 filed by the first
respondent on the file of District Court, Barasat. The rest of the affidavit of the agent of the first respondent in support of its opposition contains only a
denial of the averments contained in the petition filed by the applicant. In fact those denials are covered in the general statement of facts and there is
no need to extract or repeat the same. The only averment to be dealt with is that the applicant had adopted the trade mark 'NABISCO' with dishonest
intention and as such it is not entitled to have the benefit of the user, however long it may be.
We heard learned counsel Shri Sanjiv Banerjee assisted by Shri A.M.Saha and Shri Sumith Goyal for the applicant and learned counsel Shri Ranjan
Bachawat, assisted by Shri Banerjee, Shri A.Mukherjee and Shri D.Ghosh for the first respondent.
9 . Learned counsel for the applicant contended that the deed of power of attorney executed by the agent is invalid because the Assistant Secretary of
the first respondent executed the power of attorney in favour of the agent. There is absolutely no evidence on record that such Assistant Secretary of
the first respondent had authority to execute the power of attorney in favour of the agent. He also contented that the Assistant Secretary of the first
respondent having executed the power of attorney in a foreign country, it should be accompanied duly with the Embassy certificate to have the validity
and in the absence of such Embassy certificate the power of attorney is of no use. Apart from this, on merits he contended that the first respondent
obtained the registration in 1944 in respect of the disputed mark 'NABISCO'. The first respondent did not use the same in India till 1998, whereas the
applicant has been using the mark for its products since 1993. The evidence produced by the first respondent did not establish the use of the mark
'NABISCO' by them and they relate to the corporate name of the first respondent and it is trading its goods with the applicant's name and as such the
first respondent has not established the use of the mark 'NABISCO' prior to the use by the applicant. Consequently the impugned mark of the first
respondent has to be expunged from the Register of Trade Marks. In support of his contention he relied upon the following judgements - Cluett
Peabody & Co. Inc v. Arrow Apparals 1998 PTC 156 at pg.177 para 29, Latha C.Mohan v. Cavinkare Pvt.Ltd,2004 PTC 340 at pg.346, Yabushiki
Kaisha Toshiba (Toshiba Corporation) v. Toshibha Appliances Co., 1994 IPLR 79 at 84,88 and 93 and Jupiter Infosys Ltd. v. Infosys Technologies
Ltd. 2004 IPLR 291 at pg.295.
On the contrary, the learned counsel for the first respondent contended that the first respondent got the registration of the impugned mark in 1944.
The said mark is not only the trade mark in respect of the goods but is also the trade name of the first respondent. The applicant filed suit TS 3/1998
on the cause of passing-off action against the first respondent and as such it is not open to the applicant now to plead that the impugned mark was
never put to use and by filing the said suit, virtually the applicant had admitted the use of impugned mark by the first respondent. He also contended
that with regard to the validity of the power of attorney, the judgement relied upon by the learned counsel for the applicant is of no use in the absence
of any allegation of fraud. His further claim is that the impugned mark being the corporate name or the trade mark in the website of the first
respondent is enough to establish the user even if there is no actual user of the same. The samples admittedly sent to India itself will amount to use of
the impugned mark in India. Even otherwise the actual availability of the goods or the actual use of the impugned mark is unnecessary and it would
suffice if the applicant has attained reputation and goodwill in respect of the impugned mark through the advertisements or other sources available in
India and he also relied upon the judgements in the case of J.N. Nicholas (Vimto) v . Rose Thirstle and Anr. reported in 1994 Kol. 43 para 20 and
2003 (11) SCC 92 at 97 and 98 in the case of Hardie Trading Ltd. And Anr. V Addisons Paints & Chemicals and in the case of N.R.Dongre v.
Whirlpool Corporation 1996PTC 583. He also contended that the mere non use of the impugned trade mark is not sufficient and it is for the applicant
to establish that the first respondent has intended to abandon the same or otherwise, no presumption of non user can be drawn.
By way of reply learned counsel for the applicant relied upon judgements E.I. Du Pont De Nemours & Co of USA v. Zip Industries Private
Limited 2004 PTC 174, E.I. Du Pont De Nemours & Co of USA v. Gemini Distilleries Ltd., 2004 PTC 663 and contended that the first respondent
never used the impugned mark in India till 1998 and also there is no piece of evidence on behalf of the first respondent that it attained any reputation in
respect of the mark in India or the same has acquired any distinctiveness in respect of their goods and consequently the mark is liable to be expunged.
We have carefully considered the pleadings, evidence and arguments of both the counsel. The issues for consideration are;
a) Whether the applicant is the prior user than that of the first respondent and thereby entitled for the protection of its mark 'NABISCO'?
b) Whether the first respondent's impugned mark is liable to be expunged on the ground of non user in accordance with section 46 of the Act?
c) Whether the applicant is estopped from pleading the non-use of the impugned mark by the first respondent by their conduct in filing the suit TS 3/98
on the cause of action of passing off against the first respondent?
d) Whether the power of attorney executed by the first respondent in favour of the agent is null and void?
In a rectification proceeding the burden is on the applicant to prove its case of earlier user. Once it is established then it is for the first respondent
to establish its use of the registered mark. The registration is not the absolute right. Merely because the first respondent had obtained the registration
of the impugned mark in 1944 and renewed the same and kept it alive till date would amount to monopoly of the mark without being put to use and in
such a case the impugned mark of the first respondent is liable to be expunged. We cannot lay down the principles in a better manner that that of his
Lordship S.H.Kapadia of Bombay High Court who had laid down in the case of Cluett Peabody & Co. Inc v. Arrow Apparals 1998 PTC 156 and
hence we extract the same for our use:-
Registration enables the registered proprietor to sue for infringement of registered trade mark irrespective of the fact whether it is used or not used.
Registration confers on the proprietor a monopoly right over the use of the mark. But, proprietary rights in a trade mark acquired by use are superior
to rights obtained by registration under the Act. This is the main defence put up on behalf of the defendants in this Notice of Motion. Therefore, prior
user of the marks should be protected against monopoly rights conferred by the Act (pages 5 & 6 of Narayanan). A trade mark has no meaning even
if it is registered unless it is used in relation to goods. Otherwise, its non-use may lead to its death. A trade mark which drops out of the use dies.
Where there are no goods offered for sale, there is no use of a trade mark.
The mark can loose its distinctiveness by non-user [para 26 of Narayanan]. Therefore, the enforcement of the Right of exclusive use of a trade mark
will depend on continuous use of the mark by the proprietor. If he fails, piracy will result and the mark will become common the trade because there is
no exclusive ownership of the symbol constituting a trade mark apart from the use of it in respect of vendible goods, particularly in context of
principles governing them. Acquisition of proprietary right is different from enforcement of rights /reliefs.
The applicant has stated that they are using the trade mark 'NABISCO' along with other marks since 1994 and filed the application for registration in
1998. 'NABISCO NASTA' label is claimed to be used from the year 1993; 'NABISCO BUTTER CRISP being used from 1998; the mark 'ROYAL'
is being used since 1989 and the mark 'SONY' from the year 1993. In the affidavit filed in opposition at para 35 the first respondent has stated as
follows:-
With reference to para 1 of the said application I say that it is admitted by the petitioner that it is carrying on its business of manufacturing biscuits
only since 1988 and used the trade mark 'NABISCO' in 1993 while the first respondent uses the said trade mark for the last over 50 years with global
reputation and goodwill.
Nowhere in the affidavit filed in support of the petition, the first respondent denied the averments of the applicant that they used the trade mark
'NABISCO' since 1993. In fact the applicant's claim itself is that they are using the same since 1993 and they filed the application for registration in
1994 which is pending consideration. Hence it is to be taken that the first respondent has admitted the plea of the applicant that they are using the
mark 'NABISCO' since 1993. The applicant also produced annexure B series, the caution notice in various newspapers. Annexure G is in respect of
'ROYAL, SONY and NABISCO' marks. From pages 49 to 52 the invoices relating to th year 1990 establishes the use of the mark 'ROYAL'. At
page 53 the challan dated 10.11.1993 relates to the mark 'NABISCO' in respect of thin biscuits. The said challan refers to other items also. Similarly
page 54 of the annexure to the application refers to 'NABISCO NASTA'. It is dated 25.10.1994. Similarly page 55 of the annexure to the application
refers to 'NABISCO NASTA' dated 24.3.1996. Page 56 of the annexure refers to 'NABISCO NASTA' which is dated 18.3.1996. Page 57 of the
annexure refers to 'NABISCO NASTA' in a shorter form which is dated 8.2.1997. These invoices or the challans were not challenged by the first
respondent and in fact as extracted earlier in their affidavit of opposition they accepted the plea of the applicant about its use of the mark 'NABISCO'
since 1993. But however the claim of the first respondent is that they are the prior user for the past 50 years, having registered the impugned mark in
1944.
The plea of the applicant is that the first respondent never used the mark in India and the mark has no distinctiveness in respect of first
respondent's products in India. Further the first respondent has no reputation or goodwill either by the availability of their product in India or otherwise.
Now we have to consider the evidence of the first respondent in respect of use of their mark in India. Before referring to the evidence it is
worthwhile to refer to the averments in the affidavit filed in support of opposition. In para 12 of the affidavit filed in support of the opposition the first
respondent has stated as follows:-
By reason inter-alia, of long use and extensive publicity referred to hereafter, the said trade mark has come distinctive of the respondent No. 1's
goods and has come to be understood by the trade and public in India and abroad both within and outside the jurisdiction of your learned court as
meaning the respondent No. 1's goods.
(i) In para 13 the first respondent has clearly stated that the website set up in November, 1995 and is accessible to the public. Since the website
contains the details of various products, brands and covers a variety of attractive schemes, the impugned mark 'NABISCO' is well-known to persons
who visit the said website, even in the countries where no product of the first respondent is available and the impugned mark is exclusively identified
with the first respondent.
(ii) In para 19 of the affidavit it is stated that the first respondent has extensively advertised the trade mark 'NABISCO' in media and forms such as
TV, newspapers, magazines, inflight magazines, journals, reports having coverage extensively worldwide.
(iii) In para 21 the first respondent has stated that at all material times the first respondent have/ had honest and bonafide intention of using its trade
mark 'NABISCO' in India and therefore the registration of the trade mark 'NABISCO' was renewed by the first respondent from time to time and the
same is still subsisting.
(iv) In para 22 it is stated that after the liberalization regime in India the first respondent started seriously working its strategy for entering the Indian
market through its divisions based in South East Asia.
(v) In para 23 and 24 it is stated that in or about December, 1997 the first respondent was able to establish contact with a marketing company in India,
namely, Lotus Chocolate Company of Hyderabad. The contact was established through 'NABISCO' Limited, Hong Kong and after ascertaining
details as to the background and activities of the said Lotus Chocolate Company the first respondent sent a consignment of biscuits and cookies under
a proforma invoice dated 9.1.1998. The said samples were shown around to retailers and distributors in Bangalore city through M/s Choco Marketing
Private Limited at Bangalore who are a distribution company of the said Lotus Chocolate Company.
(vi) In para 26 it is stated that the trade mark 'NABISCO' enjoys considerable trans-border reputation and goodwill among the related trade and public
by virtue of availability of foreign magazines containing the first respondent's advertisements over its products bearing the trade mark.
(vii) By way of annexure-A to the said affidavit the first respondent filed the website communication under the heading ""THE MUSEUM
WELCOME TO 'NABISCO's ARCHIVES"" and ""NABISCO TECHNOLOGY SOLUTIONS"" from page 27-34 and these are dated 22.8.1998.
Annexure 'B' consists a list of various countries where the first respondent had registered the mark 'NABISCO'. Annexure-'C' is the certificate of
registration of the impugned mark in India. Annexure 'E' relates to renewal. Annexure 'G' relates to advertisements of the first respondent company.
Annexure 'H' relates to negotiation with the Lotus Chocolate Company for distribution.
From the above documents it is clear that there is no piece of evidence in respect of the use of the impugned mark by the first respondent in India
earlier to 1993 when the applicant started to use the mark 'NABISCO'.
Learned counsel for the first respondent relied upon the judgements reported in 1994 Kol 43 M/s J.N.Nicholas (Vimto) Ltd. v . Rose & Thirstle &
Anr., 2003 (11) SCC 92, Hardie Trading Ltd. & Anrv. Additions Paints & Chemicals Ltd., and N.R.Dongre v. Whirlpool Corporation 1996 PTC 583
to contest that actual use is not necessary in order to attain reputation and goodwill of a mark. Of course on this ground he also tried to distinguish the
judgements relied upon by the learned counsel for the applicant. In 1996 PTC 583 - Whirlpool case, the Supreme Court held that no actual use is
necessary. But however it should be established that the mark has attained distinctiveness in respect of the goods of the manufacturer and also had
attained reputation through advertisements, that is, the people or the public should be aware about the availability of such a mark even though the
product may not be available. As extracted above the first respondent has stated that the marks have been advertised in various magazines and media
like the TV etc. But there is absolutely no material before us that the first respondent had made advertisements in any one of the forms as pleaded by
them. Even in respect of magazines the first respondent did not furnish at least the names of the magazines and also did not produce copies of the
same. There is no material about the circulation of those magazines in India. In the absence of any evidence to establish that the public have
knowledge about the impugned mark, it cannot be said that the first respondent had attained reputation or goodwill in respect of the mark in India and
thereby the actual use can be inferred. Hence in respect of issue (a) we find it in favour of the applicant that they are the earlier user of the trade
mark 'NABISCO' and in respect of (b) and (c) we find that the first respondent did not use the trade mark from the date of registration till the date of
filing of this application. Consequently, the impugned mark of the first respondent is liable to be expunged.
With regard to the issue of estoppel, we have to carefully say that for the civil law generally, the same is applicable and we cannot apply the said
principles in respect of the question involved in the Trade and Merchandise Marks Act more particularly to the facts of this case. The duty of the
Registrar is to maintain the purity of the Register by not registering any mark which would cause confusion and deception among the public or among
the trade and also to remove such of those trade marks which are wrongly remaining in the Register. Once we come to the conclusion that by non-
user the impugned mark of the first respondent cannot be allowed to remain in the Register of Trade Marks any longer, it is for us to direct expunging
of the same in order to main purity of the Register of Trade Marks. Hence the plea of estoppel cannot be applied here. When a case is sought to be
made out that a particular trade mark is likely to deceive or cause confusion, the contest is not so much between the parties to the litigation as it is a
contest between the party defending his right to a particular trade mark and the public and the duty of the Tribunal must always be to protect the
public irrespective of the hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive and cause confusion.
So far as the validity of the deed of power of attorney is concerned we would like to refer section 85 of the Evidence Act which clearly specify
that there is a presumption in respect of the validity of the power of attorney deed if it is established that the same
Is executed before an appropriate authority. The rebuttal evidence is permissible. But in this case there is no rebuttal evidence with regard to the non
validity of the power of attorney and as such we have to hold that the power of attorney executed by the first respondent is quite valid.
It may be worthwhile to refer to the latest judgement of the Supreme Court in Milment Oftho Industries and Ors v. Allergan Inc. 2004 (28) PTC
585 (SC):-
However, one note of caution must be expressed. Multinational Corporations who have no intention of coming to India or introducing their product in
India should not be allowed to throttle an Indian company by not permitting it to sell a product in India, if the Indian company has genuinely adopted the
mark and developed the product and is first in the market. Thus, the ultimate test should be who is first in the market.
The above principle is squarely applicable to the facts of this case because the applicant having registered the trade mark 50 years back never tried to
use the same in India till 1998 when it made an attempt to send the samples alone. Till date the appellant did not establish use of the said mark in India
and hence its conduct is nothing but to create a monopoly by registration of the trade mark and without using the same. The trans border reputation
will come into play only when the mark is not registered in India. But once the mark is registered in India then the registered proprietor has to comply
with the requirements of the Trade and Merchandise Marks Act, 1958. In view of the same the actual use is a statutory requirement and it should be
complied with. The non use of the mark, makes the same liable to be cancelled. It is clear from the above extract portion of the judgement and also it
has been made very clear in the order of this Board in Latha C.Mohan v. Cavinkare Pvt. Ltd. Ltd., 2004 PTC 340 (IPAB) that the expression
bonafide use"" implies that there has been a real and genuine use of the mark.
For the reasons stated above, the application for rectification is allowed and the first respondent's trade mark 'NABISCO' registered under No.
99919 on the file of Trade Marks Registry, Kolkata is directed to be expunged. However, there will be no order as to costs.