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Judgment
The Rectification Application is filed under Section 57 of Trademark Act, 1999 for Removal of the Registration No. 444393 in class 8 registered in
the name of Radhe Shyam Surekha Respondent No.1. The application for the impugned registration has been filed on 16.10.1985 n a proposed to be
used basis and the sealing date for the registration certificate is 15.11.1991.
There is no representation on behalf of the Respondents at this and on the last few hearings.
The details of the Impugned registered Trade Mark are : Trade Mark No : 444393
Class   :          8
Trade Mark     :          BELL Date of Application      :          16.10.1985
First Date of Use        Â:           Proposed to beu sed Date of Advertisement   :         Â
01.04.1991
Date of Registration    :          15.11.1991
Valid Till         :          16.10.2026
Goods :          nail clipper
The Applicant's details of Trade Mark, applied / registered in the name of Applicant herein are:
Trade Application Class Description of
Mark No/Date Goods/Services
BELL 693207/02.01.1996 nail    clippers,        caonpeners,
knives,                      Â
shovles,                   Âs Âaw s,
axe
manicure sets and all other goods
BELL 4185920/24.05.2019 Manicure sets; can openers; knifes; hair-removing tweezers; razors (non-electric); nail scissors; nail clippers; nail files;
shovels; nail clippers (electric).
FACTS OF THE CASE
About the Applicant
As per the written submissions of the Applicant, it was established in 1954 and is engaged in the manufacture and/or sale of grooming and cosmetic
products. Today, the Applicant has emerged as a pioneer in beauty implement industry in South Korea and all over the world and has also been
developing new products in order to meet the various demands of its consumers. It is one of the most reputed and leading companies in the world
engaged in design, manufacture, distribution and sale/ supply of grooming products all over the world including in India. Over the years, the Applicant
has acquired and grown brands with a continuation of innovative design, great styling and performance products, which have captured the loyalty of
consumers throughout the world including in India.
The Applicant submitted that it is the proprietor of the trade mark BELL and has been using the same since 1954 as a part of its trade name. The
Applicant has been adopted the trade mark BELL for its goods including grooming products such as nail clippers, manicure sets, etc. in the year 1980
has been using the said trade mark continuously since then.
The Applicant submitted that it has also been using a distinctive and unique logo for its trade mark BELL since May 1960. The said logo is result of
much thought and deliberation to give out an overall striking and distinctive effect and overall visual impact on the consumer.
The Applicant submitted that its goods under the trade mark/trade name/logo BELL has acquired immense popularity and goodwill amongst its
consumers, trade members and public at large. Today the Applicant has a wide reach of its products under the said trade mark/ trade name/logo in
over 90 countries including in India as it exports more than 90-94% of its products outside South Korea and is renowned for its superior quality of
products.
The Applicant submitted that it in order to protect and gain statutory protection of the trade mark/logo BELL, the Applicant has applied for and has
been accorded registration for the said trade mark/logo in various countries such as USA, Thailand, Korea, Panama, Taiwan, China, Singapore,
Vietnam, Germany, Brazil, UK, Bahrain, Cambodia, Chile, Mexico, Malaysia, Indonesia, etc. The first registration for the said trade mark dates back
to the year 1972 in Korea.
The Applicant submitted that it introduced the sale/export of its products under the said trade mark/trade name/logo BELL in India in 1990.
Besides, the Applicant also sells its goods through online marketplaces such as www.amazon.in, www.flipkart.com, www.indiamart.com etc.
specifically targeting the customers, trade members and public in India. Hence, the Applicant has established a huge physical as well as online
presence of products under the said trade name/trade mark/logo amongst the Indian consumers, trade members and public at large.
The Applicant submitted that it has invested huge amount of time, effort and financial and human resources in promoting its brand trade name/
trade mark/logo BELL extensively in India and abroad. Such marketing, advertisements and promotion of the said trade name/trade mark/logo of the
Applicant has ensured that the presence and knowledge of the said trade mark is spread throughout the world including India. A direct result of the
above mentioned marketing, advertisements and promotion is that the Applicant has garnered large sales for its goods under the said trade name/ trade
mark/logo in India. The same is evident from the sales revenues figures as well as promotional expenses incurred in India with respect to the trade
name/trade mark/logo BELL
The Applicant submitted that by virtue of the long, continuous and extensive use, rigorous promotion and advertisements, the trade mark enjoys an
extremely high level of goodwill and reputation across the globe, including in India such that the said trade mark is exclusively associated with the
Applicant. Consequently the said trade mark has become distinctive of the Applicant and the goods offered by it. This has also resulted in the
Applicant enjoying common law rights in the said trade mark. In a short span of time, the trade mark has come about to acquire formidable goodwill
and reputation amongst consumers, trade members and public at large and constitutes a valuable intellectual property of the Applicant, the right
wherein is owned and zealously guarded by the Applicant against misuse, abuse, misappropriation and misrepresentation.
The Applicant submitted that additionally, as a result of this continuous and extensive use of the trade name/trade mark/logo BELL by the
Applicant, the efforts taken by the Applicant in popularizing its brand/trade mark and goods and superior quality of the goods offered by the Applicant,
the said trade mark has acquired enormous goodwill and trans-border reputation and has come to be recognized as a well-known trade mark within
the meaning of Section 2(1) (zg) of the Trade Marks Act, 1999. Therefore, any unauthorized use of the said trade mark/trade name/logo or any
deceptively similar mark by a third party as a mark, name, logo, or in any other form whatsoever passing off and is a violation of the Applicant's rights
in the same.
About the Applicant’s Trademarks
The Applicant submitted that it has filed Trade Marks 693207 and 4185920 in India and these trade mark applications are associated with the
registered trade mark/logo (Bell Device) bearing Indian trade mark registration no. 927583 dated 26.05.2000 in class 8 dealing in goods being
manicure sets, can openers, swords, axes, nail clippers, nail scissors, nail files, hair removing tweezers, nail clippers (electric), nail files (electric), table
knives, budding knives, razor cases, hunting knives, razor (non-electric), all being goods included in class 08. The abovementioned trade mark
registration is valid, renewed and subsisting. Therefore, the Applicant has statutory right over the said trade mark BELL.
Applicant’s Case against Respondent No.1
The Applicant submitted that it came to know of the Respondent No. l's impugned mark BELL on 05.07.2019 when the Applicant received the
examination report of the Ld. Registrar to the pending application no. 4185920 for the trade mark BELL/ B E L L in class 8 wherein the impugned
mark was cited by the Ld. Registrar.
The Applicant submitted that it immediately hired a team of private investigator to ascertain the use of the impugned mark BELL by the
Respondent No. 1. On perusal of the investigation report dated 20.08.2019, it was revealed by a representative of the Respondent No. 1, that it had
been importing nail clippers under the mark BELL from Korea for supplying the same in the Indian markets. However, it stopped importing BELL nail
cutters about 6 years ago. On specific enquiry whether the Respondent No. 1 was importing unlabeled product and then adding the impugned mark
BELL on its own, it was revealed that it had been importing the Applicant's products from Korea under the trade mark BELL. It is therefore evident
that there has been no bonaide use of the impugned mark BELL in India.
lt is submitted that the Respondent No. 1 had been well-aware of the enormous goodwill and trans-border reputation attached to the trade mark
BELL and therefore, the adoption of the impugned mark BELL and the act of applying and obtaining the impugned registration is a blatant, malafide
and dishonest attempt to create an injurious association with the Applicant's goods and its trade mark BELL/ BELL. The bad faith in filing and
obtaining registration of the impugned mark is also evident from the fact that the Respondent No. 1 has never used the impugned mark in India and
has merely blocked the registration, perhaps in order to block a prior user from market entry.
The Applicant submitted that since there has been no bonafide use of the impugned mark by the Respondent No. 1, the impugned registration of
the said Respondent is causing delay in the registration of the Applicant's trade mark BELL and is bound to cause immense monetary loss to the
Applicant. Hence, the present rectification was filed by the Applicant.
Arguments Advanced by the Applicant
Learned Counsel for the Applicant Mr. Hemant Singh argued that the Respondent No. 1 filed the application for the impugned mark BELL on
16.10.1985 on a ""proposed to be used"" basis. As is confirmed in the investigation report dated 20.08.2019, there has been no bonafide use of the
impugned mark by the Respondent No. 1 for any goods or services. Rather, the adoption of the impugned mark BELL and the act of applying and
obtaining the impugned in favor of the Respondent No. 1 is a blatant, malafide and dishonest attempt to create an injurious association with the
Applicant's goods and its trade mark BELL/ BELL. The impugned application was granted registration on 15.11.1991 and already more than 5 years 3
months period, the statutory period as prescribed under Section 47 of the Trade Marks Act, 1999 has lapsed and therefore, in the absence of bonafide
use of the impugned mark BELL, the same is liable to be removed under Section 47 (1) of the Trade Marks Act.
It was argued that on account of extensive commercial use, the Applicant's goods under the trade mark/trade name/logo BELL has acquired
immense popularity and goodwill amongst its consumers, trade members and public at large. The Applicant has a wide reach of its products under the
said trade mark/trade name/logo in over 90 countries including in India as it exports more than 90-94% of its products outside South Korea and is
renowned for its superior quality of products.
It was further argued that the Applicant has obtained registration of the trade mark/logo BELL in various countries such as USA, Thailand, Korea,
Panama, Taiwan, China, Singapore, Vietnam, Germany, Brazil, UK, Bahrain, Cambodia, Chile, Mexico, Malaysia, Indonesia, etc. It is pertinent to note
that the first registration for the said trade mark dates back to the year 1972 in South Korea. Learned Counsel submitted that the Applicant sells its
goods through online marketplaces such as www.amazon.in, www.flipkart.com, www.indiamart.com etc. specifically targeting the customers, trade
members and public in India. Evidently, Applicant's trade mark BELL/ BELL enjoys enormous goodwill and reputation across the globe including
India. Therefore it cannot be disputed that the Respondent No. 1 was not aware of the Applicant's trade mark BELL as in the past, the Respondent
No. 1 was importing nail clippers under the mark BELL from Korea. Thus, the impugned registration is liable to be removed under Section 11 (3) of
The Trade Marks Act.
Learned Counsel for the Applicant argued that there is bad faith involved in adoption of the impugned mark as the Respondent No. 1 was well
aware of the Applicant's proprietary right in the trade mark BELL, being importer of nail clippers under the said mark. Thus, the impugned registration
is a bad faith adoption and liable to be removed under Section 11(10) of The Trade Marks Act.
The Applicant also argued that the impugned mark BELL has erroneously proceeded to registration. The word 'discretion' requires an actual
exercise of judgment and a consideration based on facts and circumstances, which are necessary to make a sound, fair and just determination. Such
exercise of judgment, skill and wisdom is distinguished from folly, unthinking or haste. Therefore, discretion cannot be arbitrary but must be the result
of judicial thinking. The Ld. Registrar ought to cancel registration of the impugned mark in view of the grounds mentioned hereinabove. Grant of the
impugned registration is not only arbitrary but also against public interest. In view of such dishonest and malaide adoption, the Respondent No. 1
cannot claim to be the proprietor of the impugned mark within the provisions of Section 18(1) of the Act.
COMPARISON OF THE MARKS
We have examined the Impugned Trade Mark BELL and find that the impugned mark is identical to the Applicant’s BELL trademark. The
impugned mark, therefore, cannot qualify for protection as a trademark under any circumstances as members of the trade and public would invariably
associate the same with the Applicant. Thus the impugned mark is incapable of distinguishing the Respondent No.1’s goods from those of the
Applicant.
INTENTION OF THE RESPONDENT
It is seen that the behavior of the Respondent No-1 is having copied the Applicant’s mark BELL in an identical fashion, evinces that they had
deliberately and fraudulently adopted the impugned mark in respect of the same goods and has applied for registration thereof, in order to establish a
connection between the impugned marks and the Applicant’s goodwill and reputation, and having full prior knowledge about Applicant’s
exclusive proprietorship over the BELL trademark and the reputation and goodwill attached to the Applicant’s marks. The impugned mark has
been used on same goods in a manner so as to evince malafide on the part of the Respondent No.1.
FINDINGS
We understand that the Applicant is an established Korean company with an active presence in India. Applicant has generated extensive sales for
its products under the trademark/ trade name BELL, which is evident from the fact that for the year 2018, the Applicant’s sales revenue was
USD 1.5 million. It has also been exporting its products to other countries. Today, the Applicant’s trademark/ trade name BELL has acquired
extensive goodwill and reputation in India and also, in other countries. By virtue of the same, the trademark/ trade name BELL is associated with the
Applicant and the business or products under the trade mark/ trade name BELL has acquired such goodwill and reputation that it has become
distinctive of its products/ services.
We find that the impugned mark is identical to the Applicant’s prior used and registered BELL trademark and various other trademarks
containing BELL. As was observed by Parker, J., in Re Pianotist Co.'s Application, (1906) 23 RPC 774, and further expanded on in a plethora of
subsequent cases including Roche & Co. v. Manners & Co. (P) Ltd., AIR 1970 SC 2062, Parle Products v. J P & Co. AIR 1972 SC 1359, and Cadila
Health Care Ltd. v. Cadila Pharmaceuticals Ltd. [2001 CLC 564 the Apex Court has observed that it must be seen whether there was an overall
similarity between the two names in respect of the same description of goods, both visually as well as phonetically.
Further the Hon’ble Supreme Court in Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra, [2002 2 SCC 147] laid out certain
guidelines on deceptive similarity resulting in infringement by capitalizing on the goodwill and reputation of the original trader. This was relied on in a
plethora of decisions including Standard Electricals Limited vs Rocket Electricals And Anr. 2004 (28) PTC 26 Del. In the present case, the
Respondent No.1’s mark is identical to the trademarks of the Applicant.
Hence, any use of the impugned mark ‘BELL in respect of the abovementioned goods tends to mislead the public to believe that the Respondent
No. 1’s business and goods are that of the Petitioner. Such user by the Respondent No. 1 will also dilute and debase the goodwill and reputation of
the Applicant in its BELL Mark.
Also, the Respondent No. 1 has not contested the present matter by filing its counter-statement and filed any evidence to show any kind of usage
subsequent to its impugned registration. Given the long and extensive use and promotional initiatives undertaken by the Applicant worldwide, it is
incomprehensible that the Respondent No.1 was unaware of the prior use, registrations, goodwill and reputation of the Applicant’s BELL
trademarks. Thus the adoption of the impugned mark by the Respondent No.1 for identical goods is dishonest, fraudulent and solely motivated to
encash upon the goodwill attached to the above trademark of the Applicant. It is likely to create an unmistakable impression in the minds of consumers
that the goods offered by the Respondent No.1 are somehow associated with the Applicant. Considering that the use of the impugned mark, if any,
was illegitimate, there is no acquired distinctiveness which has accrued in favour of the Respondent No.1 and hence, no protection is available to the
said registration under the provision of Section 32 of the Act.
The conduct of the Respondent No.1 shows that they have not come with clean hands in seeking the registration of the impugned Trade Mark and
therefore, the application of the impugned trade mark should be regarded as having been made in “bad faithâ€. The impugned registered trade
mark is therefore, liable to be cancelled under the provisions of Section 11 & 18 of the Act. It also offends under Section 57 of the Act. The existence
of the identical/nearly identical impugned registration which was wrongly granted is prejudicial to the Applicant’s interests.
The BELL trademarks is being used by the Applicant in India since the year 1990 and worldwide since 1954 and due to such long, continuous and
extensive use, the mark is associated solely with the Applicant and none else. No other trader can therefore register the mark in their name. The
registration of the mark in the name of Respondent No. 1 should therefore have been refused by the Respondent No. 2 as the same is against the law
of passing-off.
In view of facts and material placed on record, it is evident that the registration of the impugned trade mark has been wrongly granted by the
Respondent No. 2 and should be removed from the register as it is in breach of provisions of 11(1), 11(2), 11(3), 11(10), 12, 18(1) and 32 of the Trade
Marks Act and therefore is liable to be removed and cancelled from the Register under Section 57 (2) of the Trade Marks Act, 1999.
Respondent No.1 has not appeared in this matter. It appears that Respondent No.1 is not interested to contest the matter. The Respondent No.1 is
not the proprietor of the trade mark. User, if any, was tainted and dishonest. Thus the mark is wrongly remaining on the Register and is liable to be
removed.
In the light of above the Petition is allowed and Respondent No.2 is directed to delete the entry of registered Trade Mark Registration No. 444393
in Class 8 registered in the name of Radhe Shyam Surekha Respondent No.1 from the Register under the provisions of Section 47(1)(a) and (b) and
Section 57 of the Trade Marks Act, 1999. Copy of order be sent to the parties as well as Respondent No.2 who is directed to remove the said mark
from the Register forthwith
No costs.