AI Structured Summary
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Judgment
Â,1998,1999,2000,2001,2002
Advertising and
marketing (in millions)",$152.5,$149.6,$162.7,$179.0,$189.1
Net Sales (In Billions),$1.74,$1.88,$2.14,$2.38,$2.65
countries of the world. The trade mark along with the artistic work (device) is also registered in the United States of America. The learned Counsel,,,,,
for the applicant drew our attention to the list (Annexure P-5) of the countries where the trade mark 'ST.IVES' are registered and renewed upto date.,,,,,
The learned Counsel for the applicant submitted that on perusal of the Memorandum of Association of the first respondent it is clear that they,,,,,
were only in the business of readymade garments. The learned Counsel further stated that they had been very vigilant in taking action against various,,,,,
infringers and have successfully prevented them by an order of the Court. The applicants also brought to our notice all the annual reports, invoices,",,,,,
advertisements running to 300 pages (page 51 to 336) of the type set of documents to prove their sales figures. In particular the learned Counsel,,,,,
referred to document in page 105 to say how their business had flourished and the sales rapidly increased which in the year 1999 was $ 1.98 billion.,,,,,
Learned Counsel for the applicant further submitted that the rival marks namely 'ST.IVES' and 'ST.EVES' were phonetically similar and that there,,,,,
was every possibility of confusion being caused. He relied on the following judgments in support of his case:,,,,,
i) 2002 (24) PTC 121 (SC) Mahendra & Mahendra Paper Mills Ltd. v. Mahindra and Mahindra was relied on to say that their mark had acquired,,,,,
worldwide reputation and the use by any person is likely to create an impression of trade connection with the applicants as held in this case.,,,,,
ii) Daimler Benz Aktiegesellschaft and Anr. v. Hybo Hindustan was relied on in support of his contention that even though goods were different,,,,,
possibility of confusion was very much present and hence should be restrained.,,,,,
iii) 2005 (31) PTC 635 ST. Ives Laboratories Inc. v. Indo Cosmesi Pvt. Ltd. was relied on to say that they were vigilant and had taken necessary,,,,,
steps to take legal action against infringers and were also successful in their action. The applicants were successful in restraining the defendant in that,,,,,
case who were using a phonetically similar mark namely 'Mt. Ives' against 'ST.IVES'. In this case the defendant after several adjournments to file,,,,,
written statements failed to comply with the same and remained ex parte.,,,,,
The learned Counsel for the applicant concluded the arguments by stating that the registration was granted illegally by the Registrar of Trade,,,,,
Marks, and the registration granted was in contravention of the provisions of Section 9 and Section 11 of the Act, as the adoption was dishonest, the",,,,,
provisions of Section 12 of the Act will not be of any benefit to the first respondent and prayed that the mark be removed from the Register of Trade,,,,,
Marks.,,,,,
We have heard the learned Counsel for the applicant and have carefully perused the documents placed before us.,,,,,
At the first instance, we observe that the applicant has not pleaded in his application on what grounds the registered trade mark 'ST.EVES' has got",,,,,
to be rectified. Except for a bald statement no goods are available on enquiry and even if available would be only insignificant. We also find that there,,,,,
is no clear pleading as to how the applicant is an aggrieved person within the definition of the Act. In this regard we quote a passage from the Trade,,,,,
and Merchandise Marks Act by Shri P. Narayanan - 4th Edition at page 355, para 21.19 which would be instructive:",,,,,
21.19 Persons whose interests are affected. An application for rectification can only be made by a person aggrieved. The expression ""person",,,,,
aggrieved"" has been construed liberally by English Courts while dealing with the corresponding provisions, under the English Acts. Thus persons who",,,,,
are aggrieved persons who are in some way or the other substantially interested in having the mark removed from the Register, or persons who would",,,,,
be substantially damaged if the mark remained. Whenever it can be shown that the applicant is in the same trade as the person who has registered the,,,,,
trade mark and wherever the trade mark, if remaining on the register, would or might limit the legal rights of the applicant, so that by reason of",,,,,
existence of the entry on the register, he could not lawfully do, he has a locus standi to be heard as a person aggrieved. Any trader is in the sense of",,,,,
the statute, ""aggrieved whenever the registration of a particular trade mark operates in restraint of what would otherwise have been his legal rights.",,,,,
From the above, we are of the view that the onus was on the applicants to prove that when the impugned mark is allowed to continue on the",,,,,
Register, how it would affect his rights. Here we find that the applicant is not facing any legal threat and also that there is no material evidence placed",,,,,
before us for the same, there is absolutely no cause of action for filing the application for rectification. In such circumstances, the applicant cannot be",,,,,
considered to be an aggrieved person. When that is so, there is absolutely no merits in the present application.",,,,,
As regards the issue of deception and confusion is concerned, the burden lies on the applicant to prove that there will be confusion if the mark is",,,,,
allowed to continue. The applicant herein had not produced any cogent evidence before us for the same. The applicant has in fact filed before us,,,,,
voluminous documents which are only annual reports, advertisements and invoices. On perusal of the documents it is seen that there has been no sale",,,,,
in India. Even going by the well settled principles of the Apex Court that if the sale is established abroad and no exact sale in India, except the",,,,,
advertisement will be sufficient through various magazines circulated in India, the applicant's documents i.e., the magazines produced do not bear any",,,,,
name or date and hence cannot be given weightage to. It is not clear as to the name of the magazine and where those magazines are widely circulated,,,,,
The Division Bench of the Madras High Court has in 1999 PTC (19) DB 123 Caesar Park Hotels & Resorts Inc. v. Westinn Hospitality Services Ltd.,,,,,
considered whether transborder reputation is an important factor in the matter of protection of marks. The learned Judges have decided the issue of,,,,,
transborder reputation based on actions like advertisements in prominent newspaper, appointment of travel agents etc. The courts have held that there",,,,,
should be some visible activity in acquiring reputation in India. Here, in the instant case we do not find such action on the part of the applicant to say",,,,,
that their reputation is being affected by the first respondent's mark remaining on the Register.,,,,,
Be that so, even going by the observations of Apex Court in Milment Oftho Industries and Ors. v. Allergan Inc. 2004 (28) PTC 585 (SC)",,,,,
Multinational companies which has no intention of coming to India or introducing their product in India should not be allowed to trouble 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. The ultimate test should be who is first in the market.""- the applicants have not given the exact date of user to say that they are first in the",,,,,
market. On perusal of the documents, the date of user varies from one application to the other. In fact the user in India is proposed one in the year",,,,,
1992 and the user in USA is 1978 in the Trade Mark Certificate and 1972 in the Copyright Certificate. The applicant thus do not satisfy the,,,,,
observations of the Apex Court to say that they are first in the market.,,,,,
The applicants have produced some judgments reported and most of them unreported to show that they had been very vigilant in taking action,,,,,
against infringers and have been successful in obtaining favourable orders. Here we find that the applicants have been successful in the absence of,,,,,
respondent i.e., has only obtained ex parte, orders.",,,,,
Considering the above, we are of the view that the applicants have not made out a prima facie case for the mark to be removed from the Register",,,,,
of Trade Marks. Moreover in an application for rectification to expunge / remove the trade mark from the Register, the onus always lies on the",,,,,
applicant to prove his case by producing cogent evidence. The applicants failed to make out any ground for rectification except making some vague,,,,,
statements which are not sufficient to consider the claim of the applicants.,,,,,
For the foregoing reasons, the application deserves no merit and accordingly the same is dismissed. However, there shall be no order as to costs.",,,,,
As the main application itself has been disposed of, M.P. No. 72/2005 does not survive and becomes infructuous.",,,,,