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Judgment
S. Usha, Technical Member
The above rectification applications have been filed to cancel the trade marks ""SUNDROP and ""SUNDROP BOND"" registered under Nos.
1163369 and 1164563 respectively in Class 25 under Sections 57 and 125 of the Trade Marks Act, 1999 (in short the Act).
The applicant company was incorporated in the year 1986 and is a leading manufacturer and seller of edible oils in India which was earlier known
as ITC Agro Tech Ltd. The said trade mark ""SUNDROP"" was initially adopted by ITC Agro Tech in the year 1988 and was registered under the
provisions of the Act as of 28.07.1988 in respect of edible oil under No. 495065. Apart from the said registration the applicant and its predecessors
had obtained registration either as a word mark or along with a device in respect of Classes 29 and 32 mentioned hereunder:
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By deed of assignment dated 16.10.1997 the trade mark ""SUNDROP"" was assigned in favour of the applicant. By continuous and long use the
trade mark has acquired a high reputation among the public, by which the consumers and traders associate the goods bearing the trade mark
SUNDROP"" with the applicant alone and with none else. By high reputation and various registrations the applicant's mark has acquired a status of a
well known trade mark as per the provisions of Sub-section (6) of Section 11 of the Act.
The applicant further submits that the well known marks deserve a broader scope of protection against unauthorised use. Famous marks are to be
protected. The applicant has spent crores of rupees in advertising expenses and their sales turnover runs to several crores of rupees.
The applicant has filed this application to remove the trade mark on the following grounds:
(a) The respondent No. 1 is not the proper claimant of the trade mark and cannot trade upon the goodwill and reputation of the applicant.
(b) The applicant has exclusive right as a proprietor of the mark and has to be protected.
(c) The impugned trade mark is likely to cause confusion and that 'the mark has been registered in contravention of the provisions of Section 11 of the
Act.
(d) The adoption of the trade mark by the respondent is dishonest.
(e) The registration of the trade mark is in contravention of the provisions of Section 9(2) of the Act.
(f) The registration and misuse of the trade mark amounts to act of passing off and infringement of copyright,
(g) And the trade marks, if not cancelled, would reduce the capacity of the applicant's famous mark.
The applicant has filed a civil suit bearing C.S. (OS) No. 1334 of 2004 before the Hon'ble High Court of Delhi and hove obtained an order of ad-
interim injunction dated 13.08.2005. The applicant is on aggrieved person within the meaning of Section 57 of the Act as the applicant's common law
and statutory rights are being affected by the mark of the respondent No. 1 being on the Register of Trade Marks.
The applicant, on the above mentioned grounds, prays that the applications be allowed and the registrations be cancelled.
The hearing notice sent to the respondent No. 1 was returned with an endorsement 'LEFT' and the applicant took out an application for substituted
service on the respondent No. 1 in Miscellaneous Petition No. 130/06 and the same was allowed and publication for hearing on 21.01.08 was effected.
None appeared for the respondent No. 1 and the said respondent No. 1 was set ex parte. The matter was heard at the Circuit Bench at Kolkata on
18.06.08. Shri Anil Shunglu, learned Counsel appeared for the applicant. Both the matters namely ORA/5/06/TM/KOL and ORA/6/06/TM/KOL were
heard together as both the applicant and respondent and the issue to be decided were one and the same.
The learned Counsel for the applicant submitted that they had started business of manufacturing and processing edible oil since the year 1986 and
adopted the trade mark ""SUNDROP"" in the year 1988 and had been using the same continuously and exclusively ever since that date without any
interruption. The adoption of the trade mark by the respondent No. 1 is not honest and has got to be expunged from the register.
The counsel brought to our notice the list of various trade mark applications mentioned in para 9 of the application. He also brought to our notice
the sales figures and advertisement expenses mentioned in the application.
The counsel for the applicant further submitted that the trade mark ""SUNDROP"" is a well known mark and has acquired high reputation among
the public. The counsel, therefore, prayed that the application for rectification be allowed.
We have heard and considered the arguments of the applicant's counsel. We shall first deal with the issue as to whether the applicant is an
aggrieved person and has a locus standi to file an application for rectification. It is a general principle of law that an opposition to the registration of a
trade mark can be filed by any person as per the provisions of Section 21 of the Act whereas an application for rectification can be filed only by the
person aggrieved. Though aggrieved person has not been defined under the Act, it has been liberally construed by various courts. In Powel's Trade
Mark (11 RPC 4), it was held that ""wherever it can be shown that the applicant for rectification is in the same trade as the person whose registered
trade mark is sought to be removed, and as he is not lawfully able to do certain things. he has the locus standi. He could not lawfully do these things
because of the existence of the trade mark upon the Register. Such a person has a right to be heard as a person aggrieved."" The test is that the
persons who are in some way or the other substantially interested in having the mark removed from the register are persons aggrieved. Here in the
instant case, the applicant though has pleaded to be in existence since 1986 and has pleaded that they adopted the trade mark in the year 1988 has not
produced a single document to that effect. Moreover, the applicant claims to have applied for registration of the trade mark ""SUNDROP"" along with
the device either as a label mark or as a word mark (list enclosed in the application) which does not mention as to whether it is still pending or
registered. No cogent evidence also filed to prove user. In such circumstances we have no other option except to consider the person as not an
aggrieved person.
The other issue namely registration has been granted in contravention of the provisions of Section 9 and 11 of the Act have also to be negatived.
Though the applicant has only made a pleading in the application there is nothing to substantiate the same either by arguments or document. Even
though we had no benefit of hearing the other side, the applicant has not filed any document to prove that the registration has been in contravention of
the provisions of Section 9 and 11 of the Act. The applicant, though has pleaded and submitted that the trade mark ""SUNDROP"" is a well known
mark, has not filed any documentary evidence to that effect. As far as the sales figures are concerned, just mentioning the same will not amount to
soles as it is not supported either by any bills or invoices or any auditor's certificate or by some affidavits of dealers. We only have before us the
impugned registration certificate bearing Nos. 1163369 and 1164563 filed along with the application for rectification. Apart from that the applicant has
given a list of applications filed before the Trade Mark Registry. It is not clear whether they are registered or pending. Going by the principles laid
down by the Hon'ble Supreme Court in Corn Products case, mere existence of mark on the register will not amount to user.
Accordingly, we find no merits in the applications for rectification and they ore, therefore, dismissed. No order as to the costs.