K. Ramapandi, Trading As Tamil Nadu Oil Industries And Vasanthi And Co. vs S. Anandraj, Trading As Tamil Nadu Organics Industries And The Registrar Of Trade Marks

S. Usha, J

The instant application is for removal of the trade mark 'SUNOLA' registered under No. 1178358 in class 29 in respect of refined edible oils under

the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

The applicant is the marketer of edible refined oil under the trade mark 'SUNOLA'. They had been using the trade mark continuously and

extensively without any interruption whatsoever since December 2001. The applicant is the registered proprietor of the trade mark 'SUNOLA' along

with a unique colour scheme and get up.

In the year 2005, the applicant became aware of the respondent's use of the impugned trade mark. Immediately, the applicant filed a civil suit

before the Hon'ble High Court of Madras and obtained an order of interim injunction restraining the respondent from using the trade mark which

continues till date. In the meanwhile, the respondent had filed an application for registration of the impugned trade mark claiming user since

01.04.2002. The respondent, whereas in the suit had claimed user since June, 2003. The impugned trade mark was advertised in the Trade Marks

Journal mega 5 at page 6564 which was not legible and the mark could hardly be ascertained. The applicant, therefore, could not oppose the same for

this reason.

When the applicant came to know of the respondent's application the applicant filed a complaint before the Registrar under Section 19 of the Act

for rejecting the application published in the Trade Marks Journal as a similar mark was already on the Register. As no reply was received the

applicant again had written to the Registrar for necessary action. As the applicants did not receive any reply, they approached this Appellate Board

for removal of the impugned trade mark from the Register of Trade Marks. The grounds of rectification are:

(a) the impugned trade mark is wrongly remaining on the register without sufficient cause;

(b) the applicants are prior registered proprietors of the impugned trade mark and the registration granted is not valid;

(c) the use of the impugned trade mark by the respondent would amount to passing off and hence is prohibited registration under Section 11 of the

Act;

(d) the registrar erred in granting registration without passing any orders in the complaint under Section 19 of the Act filed by the applicant;

(e) the Registrar ought not to have proceeded for registration based on an unclear advertisement in the Trade Marks Journal.

The respondent No. 1 filed his counter statement denying the various allegations made in the grounds of rectification. The application for

rectification is not maintainable. The averment that the applicant came to know of the registration only recently is false. The applicant is not trading in

the name of Sunola but New Sanola and also that the rival trade marks are not similar. There is no merits in the application and is liable to be

dismissed.

The counsel for the applicant filed their reply to the counter statement denying the averments made therein.

The matter came up before this Appellate Board for final hearing on 21.04.2010. Learned counsel Ms. Gladys Daniel appeared for the applicant

and Shri P.N. George Graham, learned counsel appeared for the respondent No. 1.

The learned counsel for the applicant submitted that the rival marks were label marks and were deceptively similar. The applicants filed a civil suit

and the Hon'ble High Court of Madras was pleased to grant an order of injunction which continues till date. The only defence of the respondent was

that there was no opposition filed by the applicant which the impugned trade mark was advertised in the Trade Marks Journal. The counsel also

brought to our notice the Trade marks Journal Advertisement at page 145 of the typed set of documents. The counsel stated that the advertisement

was not clear and hence could not file opposition immediately.

The counsel further submitted that the respondent's adoption was not honest. The applicants were prior in user and the respondents have copied the

applicant's trade mark. The applicants have filed an invoice of the year 2002 to prove their user whereas the respondent has not produced any

document to prove their user.

The learned counsel for the respondent submitted that even though the applicants contended that they had filed a complaint under Section 19 of the

Act, no notice was served on the respondent. In fact, the applicant had filed a notice of opposition but the same was refused to be taken on record as

it was time barred. The applicant failed to prefer an appeal against the said order. The respondent No. 1 denied the applicant's user since the year

2001 and stated that their user is only from the year 2004.

In rejoinder to the respondents arguments the counsel for the applicant cited some judgements in support of their contention that rights of the prior

user is to be protected than the subsequent user. She relied on the Sumeet Judgement to say that there can be only one source and one proprietor.

We have heard and considered the arguments of both the counsel and have carefully gone through the pleadings and documents.

The main issue that arises for consideration before going into the merits of the rectification application is regarding defective advertisement. In

Ashoka Dresses v. Bonn's Shirts and Anr 2000 PTC 161 it was held that 'The very purpose of an advertisement in the Trade Marks Journal is to

provide complete information in respect of the trade mark advertised, so that the public at large may receive a clear information in respect of the trade

mark. If, however, an advertisement gives incomplete information in respect of the particulars of the trade mark advertised or gives an incorrect

information regarding any material particular a prospective opponent is deprived of the opportunity of getting full information regarding the trade mark

and also is deprived of the opportunity of filing an effective opposition. Therefore, an incorrect advertisement which amounted to misrepresentation is

required to be cancelled.'

The case mentioned above is squarely applicable to the case on hand. On a bare perusal of the impugned Trade Marks Journal advertisement the

mark 'SUNOLA' is not visible and also other descriptive matters are not clear. We agree with the contentions of the applicant that if the

advertisement was clear and visible they would have had an opportunity to oppose in time. In view of the above, we are of the considered opinion that

the registration granted ought to be cancelled.

We, therefore, remand the matter back to the Registrar of Trade Marks for re-advertisement. The application will be put back to the stage before

acceptance. The application thereafter be decided as to whether the application be accepted or not after hearing the applicant/respondent herein. The

matter then be re-advertised if permissible for effective opposition. The rectification application is, therefore, disposed off in the above terms with no

order as to costs.