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Judgment
Manmohan Singh, J
SCA Hygiene malaysia bhd., 3 jalan gicing huln 28/33, hicom industrial estate sector c, 40400 shah alam, malaysia, has filed the four Rectification
petitions for removal of following Trade marks
a) Trade mark No. 1645891 in class 05- DRAPANTZ (Label)
b) Trade mark No. 1645890 in class 10- DRYPERS (Label)
c) Trade mark No. 1645892 in class 10- DRYPANTZ (Label) and
d) Trade mark No. 1645889 in class 05- DRYPERS (Label)
Facts and law points are almost common in all the above mentioned petitions, thus all are decided by common single order.
FACTS:
a) It is alleged by the petitioners that the petitioner SCA hygiene Malaysia sdn Bhd was founded on 27 November, 1929 by Ivar Kreuger and is
now one of the world's leasing consumer product manufacturers in the field of hygiene, tissue paper and packaging. The petitioner has 52,000
employees in about 60 countries with an annual sales turnaround of EUR 11.5 billion. The petitioner's claims a share of sales in about 90 countries.
b) The Petitioner is one the world's largest players in personal care products and the global market leader in personal care products. The Petitioner
has a portfolio of global, regional and local brands. Tena - the brand for incontinence care - generates sales of more than EUR 1 billion annually, and is
a world leader in personal care. In baby diapers, the petitioners is the market leader in the Nordic region, with its Libero brand accounting for a market
share of more than 60%, and is also displaying rapid growth in Russia and parts of Eastern Europe. In Southeast Asia, the Petitioners holds a leading
position with its 'Drypers' brand and in South America, the petitioner leads with the 'Pequenin' brand. In feminine care, the Petitioner is the market
leader in the Nordic region, as well as in large and rapidly expanding markets in Latin America. The Libresse, saba, 'Nosotras and Nana' brands are
supported by Petitioner's global brand platform.
c) The Petitioner is the third largest player in the European market, having market share of 12%. In the Nordic region, the Petitioner has more than
60% of the market share with its Libero brand, which is also growing rapidly in Russia and parts of eastern Europe. The Petitioner also holds leading
positions in parts of Southeast Asia and Latin America. The Petitioner markets baby diapers in 70 Countries.
d) The Petitioner has received the highest score in a sustainability index that evaluates how companies work long-term with environmental and human
fights issue. The Petitioner has been selected as a component of the DJSI STOXX. The DJSI STOXX track the European sustainability Indexes are
the first global indexes (launched in 1999) tracking the financial performance of the leading sustainability-driven companies worldwide. Based on the
cooperation of Dow Jones Indexes, STOXX Limited and SAM provide asset managers with reliable and objective benchmarks to mange sustainability
portfolios.
e) For three consecutive years, the Petitioner has been named as one of the world's most ethical companies by the Ethisphere Institute. According to
the Institute, the ranking list recognizes companies that go beyond malting statements about doing business ""ethically"" and actually translate those
words into action.
f) The Petitioner has continuously, exclusively and extensively been using the trade mark in several parts of the world including India, so much so that
the trade mark has acquire distinctiveness and any reference to the trade mark 'DRYPANTZ' is connected with Petitioner and Petitioner only. The
mark 'DRYPANTZ' was adopted and is being used by the Petitioner in respect of its goods and sendees way before the mark was applied for by
Respondent No. 1.
g) The trade mark DRYPANTZ of the Petitioner has been used in several jurisdictions across the world including but not limited to USA, Australia,
New Zealand, Philippines, Malaysia, Singapore, Indonesia, Fiji and India for the past several years by several millions consumers.
h) The Petitioner has also made several trade mark applications which are pending/acquired registrations in several jurisdictions as mentioned above
including India. The said pending/registered trade marks are valid, renewed and subsisting as on date.
i) The Petitioner is also the applicant for Application No: 1941196 in Class 03, 05 and 16. The Petitioner commenced usage of the mark
'DRYPANTZ' in India as early as 2006. In the normal course of its business, the Petitioner has been exporting various goods including those under the
mark 'DRYPANTZ' and has been using the same continuously ever since, in India.
j) The trade mark 'DRYPANTZ' of the Petitioner is a well known trademark in every country mentioned above and is recognized by the public inter
alia by virtue of promotion of the trade mark inter alia by way of advertising and publicity in various processes. The mark 'DRYPANTZ', by constant
and extensive usage by the Petitioner has become synonymous with the Petitioner.
k) The Petitioner is the registrant of the web portal www.sca.com & www.drypantz.com where comprehensive information about the Petitioner and
the products of the Petitioner are available. The website act as a gateway to millions of peoples around the globe to access information about the
goods of the Petitioner. The efforts have been taken by the Petitioner to transcend to a new level in terms of sustainability will also be apparent at a
glance at the website. The very fact that the Petitioner operates a website under the mark 'DRYPANTZ' is proof enough of the significance attached
by the Petitioner to the former.
l) The Petitioner's goods under the mark 'DRYPANTZ' has become known and is recognized world-wide due to the laudable efforts of the Petitioner
to promote the mark 'DRYPANTZ'. Such efforts of the Petitioner have resulted in the mark 'DRYPANTZ' becoming synonymous with the
Petitioner. Furthermore, by virtue of extensive popularity of the Petitioner worlds-wide, the Petitioner's trade mark is exclusively associated with the
Petitioner and the Petitioner alone and has acquired an enviable reputation and goodwill. The Petitioner's trade mark is well-known in India and was
well-known on the date of the impugned application and hence it is entitled to the protection afforded to a well known trade mark as defined under
Section 2 (zg) of the Trade Marks, Act, 1999.
It is the case of the Petitioner that in addition to the above, the Petitioner's products bearing the mark 'DRYPANTZ' are also sold through online
web portals namely web shops to several consumers across the globe without any regional boundaries. All the above websites are easily and readily
accessible from all over the world including India. The business scope of the Petitioner has no boundaries and this could be inferred from the fact that
the Petitioner has huge revenue turnovers and has expends significant resources in publicity and advertisement of the goods under the trade mark
'DRYPANTZ'.
The Petitioner is become an aggrieved party to file the present petition, when it discovered that the Respondent No. 1 is claiming to the proprietor of
trade mark registrations for the trademark application for other well known trademarks of the Petitioner namely 'DRYPERS' in classes 05 and 10 the
details of which given below:
It is alleged that the sole purpose of obtaining the registrations appears to be use the same offensively against the Petitioner and at no stage was
there any bonafide intention on part of the respondent No. 1 to use the marks in connection with any good in these classes. It is further stated the
Petitioner has been continuously, exclusively and extensively using the Well-known mark 'DRYPANTZ' since early 2006 in India, and due to its
popularity, goodwill and reputation has acquired tremendous distinctiveness, so much so that it is solely associated with the Petitioner only. The
Petitioner has been vigilant in safeguarding its intellectual property rights over the mark 'DRYPANTZ' and has acquired registrations across several
jurisdictions across the globe. It is also stated that the relevant and requisite evidence showcasing the popularity and goodwill of the mark
'DRYPANTZ' of the Petitioner has already been elaborated by way of submitting Affidavit and Evidence in Support of the rectification petition at the
time of filing the same in February 14, 2013 by the Petitioner before this Hon'ble board.
It is pleaded that the Respondent No. 1 has wrongly claimed their proprietorship over the impugned mark and the impugned mark is wrongly
remaining in the Register of Trade Marks and is registered without any sufficient cause as per Section 57(2) of the Act. It is stated that the impugned
mark was applied without any bona-fide intention to use the mark in relation to the goods applied for therein. The Respondent No. 1 had no intention to
use the impugned mark as the impugned mark is also ought to be removed due to non-renewal of the impugned mark as on January 25, 2018.
Evidently, the impugned mark due to its non-usage is ought to be removed as per Section 47 of the Act.
The rectification petition filed on above-mentioned grounds were served to the Respondent No. 1 by the Registry of IPAB, Chennai on June 26,
2013. It is further stated the statutory deadline to file the Counter Statement by the Respondent No. 1 was 2 (two) months from the receipt of the
cancellation petition viz. August 26, 2013. But the Respondent No. 1 had failed to file the Counter Statement within the time of 2 (two) months as
mandated under the rules. Subsequently, matter was fixed for hearing it was noticed that no counter statement was filed within prescribed period of
two months. Four years already had been passed there is no application for extension of time had been filed by the Respondent. As such the right to
file the counter statement stand also closed.
When the matter was listed on May 8, 2018 before the circuit bench in Mumbai, once again no one appeared on behalf of the Respondent No. 1
and the Counsel for the petitioner argued the matter before us and also filed the written submissions. All the plea of the petitioners made in the
application have gone unrebutted. There is no evidence of user of trade marks registered by respondent No. 1 in classes 5 and 10. The present
rectifications are also filed under sections 47 of the Act.
From the pleadings and material place in record by the applicant it is clear that the impugned registration is liable to be rectified as the same was
obtained in bad faith. The Petitioner is the prior adopter and user of the trademark 'DRYPANTZ' is several parts of the world. The registered
proprietor has also failed to produce any evidence of user. The claim of respondent No. 1 about the proprietary ship is false and frivolous. It appears
to us that on the date of all four applications, the respondent No. 1 was aware about the existence of trademarks of the applicant.
It is evident that the registered proprietor of the impugned mark never intended to use the mark. The respondent No. 1 has neither used it in the
past nor has any intention to use the mark in relation for the goods in class 10 and 5 for which the trademarks are registered.
As the Respondent No. 1 has failed to contest the four rectifications it seems that the Respondent No. 1 has abandoned the marks which can be
inferred from the fact he had not produced any evidence to about the user in relation to the goods covered under the registration in class 10 and 5.
The malafide act of the registered proprietor of the impugned trade mark has resulted in undue hardship and causing grievance to the Petitioner
who is the proprietor of the trade mark 'DRYPANTZ'.
If the marks shall remain on the Register of Trade Marks, the same would cause confusion and deception. The Petitioner has applied for the
registration of the trade marks 'DRYPANTZ' in India with bonafide intention of using the said mark in India. The Petitioner herein is the registered
proprietor of the well know trade mark DRYPANTZ in several other countries around the world. Thus the petitioner is the aggrieved party with in the
provision of section 47 of the Act.
The Accordingly, the prayer made in the four application for rectifications of the impugned registration proprietor is liable to be allowed in order
maintain the purity of register and in exercise of the discretion of this Appellate Board, Even if it is the mark will remain on the register it would cause
is confusion and deception among the general public as to the source of the goods under the trade marks.
The prayer made in all four rectification is allowed as the Respondent No. 1 is not the proprietor of the trade marks. The entries of all four marks
of the respondent is ordered to be deleted.
Copy of order be sent to Respondent No. 2 for taking the necessary steps.
No cost.