AI Structured Summary
Not yet generated for this judgment
Judgment
S. Usha, J
Original rectification application has been filed for removal of the Trade Mark ""ROLLY"" under No. 1399509 in class 16 under the provisions of the
Trade Mark Act, 1999. The applicants herein are well known manufacturers and marketers of writing instruments viz., pen and ball pen, jell pen,
sketch pens, refills and parts and have been in business for more than 20 years. They are the registered proprietors of the trade mark Rolly under No.
518783 in class 16. In fact, the trade mark was applied for and registered in the name of their predecessors-in-title trading as Sanghvi and Company.
It was originally conceived by their predecessors which is an invented mark being inherently distinctive mark and therefore was accepted and
advertised in Trade Marks Journal in part A of the Register. The said mark has been renewed and is validly subsisting as on date.
In October, 1997 the said mark was assigned to the present applicants by virtue of an assignment deed dated 4th October, 1997. Subsequently, the
applicants herein filed a request on Form TM 24 to bring on record the subsequent proprietors of the Mark ROLLY.
The applicants have been using the trade mark Rolly in connection with pen, ball pen, jell pen, sketch pens, refills and parts thereof continuously and
extensively and have registered impressive sales. The said trade mark has acquired considerable reputation and has become popular in the market
among the traders and consumers. The trade mark Rolly is therefore exclusively associated with the applicants and with none else.
In July, 2003, the applicants came across the advertisement in the Trade Mark Journal No. 1, Special supplementary Journal, Volume-C Class 11 to
16 dated 14th June, 2003 for the mark ROLLY under Registration No. 593755 The applicants immediately filed the notice of opposition being
Opposition No. Cal-122646. In spite of opposition being filed and registered, the said trade mark proceeded to Registration.
The respondent herein had subsequently filed application on 16.11.2005 under No. 1399509 in class 16 which was advertised in the Trade Mark
Journal 1345 dated 1st June, 2006 due to oversight the applicants had not opposed and the Trade Mark proceeded to registration. Meanwhile, the
applicants had also taken necessary steps and had intimated the Deputy Registrar to revoke the registration which was granted under No. 593755 as
the mark was wrongly remained on the register in spite of opposition being registered as No. CAL-122646.
The applicants being aggrieved by the registration had filed this instant original rectification application on the following grounds:-
(a) The applicants' mark Rolly is an invented word, and it does not appear in any dictionary. The applicants are the registered proprietors of the mark
Rolly under registration No. 518783 by virtue of long and extensive use of the mark Rolly had acquired distinctiveness. The impugned trade mark is
identical to the applicants trade mark and therefore cannot be distinctive of the registered proprietor and therefore prohibited for registration under
Section 9(1) (a) of the Act.
(b) The impugned mark applied for registration is wrongly registered in respect of pen, ball pen, jell pen, sketch pens, refills and parts thereof which
are identical to the applicant's goods. The mark as well as the goods are identical to each other and are used or to be used in respect of identical
goods, which will be traded through the same trade channels and available at the same retail outlet. The subsequent registration will invariably deceive
or cause confusion and the innocent public will be the victims of such deception. Hence registration is prohibited under Section 9 (2) (a) of the Act.
(c) The applicants are the first adopters and users of the trade Mark Rolly since the year 1987. The mark was applied for registration as early as on
23.10.1989 and registered in the year 1994. The respondents have applied for registration in the year 1993 (593755) proposing to use the mark for the
goods falling in class 16 and therefore they are subsequent user to that of the applicants. The applicants being the prior adopters and prior registered
proprietors of the mark Rolly in respect of goods which are identical to those of the respondents, the impugned mark is registered against the
provisions of Section 11(1) (a) of the Act.
(d) The applicants' predecessors-in-title were the first to adopt and apply for the invented word mark Rolly in respect of pens, ball pens, jell pens,
refills and parts thereof etc. The trade mark is exclusively associated with the applicants and none else. Thus, the applicants alone are the registered
proprietors of the trade mark Rolly under the provisions of Section 18 (1) of the Trade Marks Act. The respondents before adopting could have
exercised the minimum caution to ascertain the availability of the mark, and the search would have revealed the prior application for the applicants'
mark Rolly. The respondents subsequently were aware of the applicants continued interest in the registered mark Rolly when they opposed the
respondents Trade Mark Rolly. In spite of prior knowledge, the registered proprietors have surreptitiously tried to obtain registration by making an
application again in the year 2005 for the same mark in respect of the same goods. The registered proprietors' adoption is therefore dishonest and
cannot claim to be the proprietors under Section 18(1) of the Act.
Hence the mark registered in No. 1399509 in class 16 has been wrongly registered in the name of the respondents.
If the impugned trade mark is allowed to remain on the register, it would place an instrument of fraud in the hands of dishonest traders, who could
be easily led to confusion by which the applicants will be put to irreparable hardship and loss.
By virtue of registration under No. 518783, the applicants are entitled to the exclusive use of their mark Rolly to the exclusion of all others. The use
of identical trade mark for identical goods would constitute infringement of the applicants registered trade mark under Section 29 (1) of the Trade
Marks Act. The respondent is not entitled to seek recourse under Section 12 and Section 34 of the Act on the grounds of honest concurrent user,
since the respondents have admittedly adopted the mark subsequent to the applicants' date of the user.
The impugned trade mark is against the provisions of Sections 9 (1) (a), 9 (2) (a), 11 (1) (a) and 18 (1) of the Act and not entitled to registration
under Sections 12 and 34 of the Act. The registration should be revoked in exercise of the discretion under Section 57 (1) of the Act.
The first respondent herein had filed their counter statement stating that the first respondent and their predecessors-in-title are engaged in the
business of manufacturing and marketing pen, ball pen, jell pen, sketch pens, refills and parts since the year 1990 under the trade mark Rolly. In the
year 1993 they started a firm viz., M/s. Swiss Writing Aids and started their business activities in the firm name. In the year 2007 they started a firm
viz., Swiss Writing Products. They have been using the trade mark openly, extensively and continuously since the year 1990 and by virtue of such long
use of trade mark it has come to be associated with the respondent.
The respondents have inadvertently claimed the user since the year 1993 whereas the mark was in use at least since the year 1990, necessary
request for amending of user since the year 1990 has been made before the Registrar of Trade Marks and the same is pending.
The respondent also stated that there were some discrepancies in the assignment deed entered into between the applicants' predecessors and the
present applicant. The rest of the averments were denied by the respondent.
On completion of the pleadings, the matter was listed for hearing and we heard Ms. Usha Chandrasekar learned counsel for the applicants and
Ms. Aparna Chakrabarthi learned counsel for the first respondent.
The learned counsel for the applicants submitted that the applicants have been using the mark since the year 1987 and applied for registration in
the year 1989 claiming the user in 1987 in class 16. The respondent had applied for registration initially in the year 1993, which was proposed to be
used on the date of application. Subsequently, in the year 2005 they had applied for the impugned trade mark registration they used since the year
1993 in the impugned application. The applicants counsel has also submitted that they had given proof of their sales turn over at page 226 marked as
Exhibit-E of the application. The applicants submitted that the registration is in contravention of Section 9 (1) (a) of the Act. The respondent's adoption
is dishonest. So, the registration is in contravention of the provisions of the Act. The sales turn over given by the respondent does not bear any
signature and cannot be valid proof to substantiate their use. The respondent though claimed to have used since the year 1993, in their application for
registration, have claimed user since 1990 in the counter statement for which there is no proof of their user since the year 1990.
The respondent in reply to the applicants' arguments submitted that the applicants cannot be a person aggrieved because the assignment deed itself
is not properly recorded and there are discrepancies in the deed of assignment. The Trade Mark Registry is not an inventive word; there was no proof
for the applicants to show that they are prior user when the deed of assignment itself is not valid.
We have heard and considered the arguments advanced by both sides.
The main issue that arises for consideration is whether the applicants are persons aggrieved. The applicants herein had opposed the respondent
registration No. 593755 for which a number was also assigned by the Trade Mark Registry which was subsequently proceeded to registration which
cannot be said to be a valid registration. The applicants herein as opponents are persons aggrieved as far as this trade mark is concerned. On perusal
of the computer status report for the trade mark Rolly under No. 593755, it is seen that the mark has been removed from the register and notified in
the Trade Mark Journal 1442. The removal could be for this reason that the mark has not been renewed after 31.3.2003.
The respondents have applied for registration of the mark ""ROLLY"" under No. 593755 on 31.3.1993 proposing to use the mark in class 16 for pen,
ball pen, jell pen, sketch pens, refills etc., The same applicant (respondent) has applied for registration of the impugned trade mark No. 1399509 in
class 16 on 16.11.2005 claiming user since 1.3.1993 for pen, ball pen, jell pen, sketch pens, refills etc. There are two different dates in both the
applications. Even if we take 31.3.1993 to be the date when the respondent had been using the mark, in the second application it cannot be from
1.3.1993. It is not clear as to how a prior date has been given in the second application (Impugned herein). That apart, the applicants application has
been filed in the year 1989 claiming user since the year 1987, for the identical mark for identical goods. When identical mark for identical goods were
already on the register, it is not clear, as to how the Registrar has proceeded to grant registration.
The respondents though claimed to have been using since the year 1993, the invoices submitted by the respondent in proof of the same have not
substantially proved. Hence the bill is of the year 1990 in the name of ""Sanjay Kanodia"". The other bills in the name of ""Swiss Written Aids"" are from
the year 1997 and there is nothing to say as to how the respondent themselves have admitted in the counter statement that they started business in
their personal name of ""Sanjay Kanodia"" since the year 1990 and in the year 1993 Mr. Sanjay Kanodia started the firm ""Swiss Written Aids"", but the
documents are only from the year 1997. This Board has cancelled the trade mark in cases where there was a wrong date of user in the application for
registration. In the instant case, we do not think we can have different opinion as regards the given date of user. For these reasons, we think that the
mark deserves to be removed from the register. It is also pertinent to mention that the Registrar ought not to have granted registration when already
an identical mark for identical goods was on the register either pending or registered. In view of the above, we think it is fit to allow the original
rectification application for removal of the impugned trade mark. Accordingly, the application is allowed with a direction to the Registrar of Trade
Marks to cancel the impugned Trade Mark registered under No. 1399509 in class 16. There shall be no order as to costs.