Kewal Krishan Talwar vs Rakesh Pal Goel And Ors.

M.H.S. Ansari, J

Instant rectification application is filed under Section 32, 46 and 56 of the Trade and Merchandise Marks Act, 1958 (for short the Act) seeking

rectification of the entry pertaining to the registered Trade Mark No. 508827 in class 11.

Instant rectification application was filed before the Delhi High Court, where it was registered as CO. No. 16/2001 and consequent upon its transfer

in terms of Section 100 of the Trademarks Act, 1999 it was transferred to this Appellate Board where it has been re-numbered as TRA

89/2004/TM/DEL.

When notice of hearing was issued by the Registry of this Board to the respective parties, Shri Rakesh Pal Goel, respondent/registered proprietor

sent a letter dated 06.07.207 stating as under:

We acknowledge the receipt of your letter No. TR 89/2004/TM/DEL/1265 dated 12.06.2007 and in reply there-to submit as under:

We enclose herewith the photo copy of the orders Delhi High Court Dated 16.9.2005.

We do not want to proceed with the application further. Therefore we hereby withdrawn our above noted application and request you to treat the

same as withdrawn with no order as to cost.

Thereafter, order sheet dated 27.04.2007 shows that none appeared on behalf of the respondents. Order sheet dated 10.07.07 show that the vakalat

filed on behalf of respondent No. 1 was withdrawn.

On 12.12.2007 none appeared on behalf of the respondent No. 1 registered proprietor. Shri Shailen Bhatia, learned Counsel for the applicant filed

the Xerox copy of the orders of High Court of Delhi in suit CS (OS) No. 1140/2001 dated 16.09.05. It was submitted by Shri Shailen Bhatia, learned

Counsel for the applicant that the respondent No. 1-registered proprietor being the defendant No. 1 in the said suit CS (OS) No. 1140/2001 suffered a

decree of permanent injunction with respect to the trade mark in question and that the decree, being a consent decree, the trade mark in question

(PALCO) is liable to be removed from the Register in terms of Section 11(e) of the Trade and Merchandise Marks Act, 1958.

Instant matter requires to be considered in the light of the earlier Trade and Merchandise Marks Act, 1958 in view of Section 159(4) as it was a

proceeding pending in High Court at the commencement of the Trade Marks Act, 1999.

We consider it appropriate to extract certain observations from the judgment dated 16.09.2005 passed in CS (OS) No. 1140/2001 which are to the

following effect:

The statement of the plaintiff has been recorded today in terms whereof the plaintiff is confined the relief to prayer a to c of para 23 of the plaint.

These are injunctive reliefs on account of the grievance of the plaintiff that the defendant has trade in the similar nature of goods under a deceptively

similar trademark.

The defendant No. 1 has also appeared in the court and is willing to suffer a decree in terms of prayers a to c of para 23 of the plaint, so long as the

plaintiff does not claim other reliefs, etc.

The operative portion of the decree reads as under:

...it is ordered that a decree for permanent injunction be and the same is hereby passed in favour of the plaintiff and against the defendants in terms of

prayer (a) to (c) of para 23 of the plaint restraining the defendants its partners as the case may be, its servants, agents, dealers, distributors and all

other acting for and on its behalf from:

(a) Manufacturing, exporting, selling, offering for sale, exhibiting, advertising, directly or indirectly dealing with sanitary and bathroom fitting or

cognate/allied goods under the trade mark PALCO or any other identical/deceptively similar mark to the Plaintiff's mark PARKO amounting to

infringement of registered trade mark No. 222935 in class 11.

(b) Manufacturing, exporting, selling, offering for sale, exhibiting, advertising, directly or indirectly dealing in sanitary and bath fittings or cognate/allied

goods under the trade mark PALCO or any other identical/deceptively similar mark to the Plaintiff's mark PARKO or from doing any other thing as is

likely to lead to confusion or deception thereby resulting in passing of the Defendants goods as those of the plaintiff.

(c) Selling, exhibiting goods bearing the trade mark PALCO or any other deceptive, identical trade mark to the Plaintiff's registered Copyright titled as

PARKO under No. A35648/82.

In the instant application, the relief for rectification claimed is based inter-alia on the grounds that the applicant is the sole proprietor of the firm M/s

Parkash Brassware Industries which has been using the trade mark 'PARKO' since 1958 in respect of various bathroom and sanitary fittings. The

said trade mark of the applicant has been registered under No. 222935 in class 11. The said trade mark 'PARKO', it is further averred, has acquired

immense reputation and goodwill in the market by extensive publicity, details of advertisement expenses incurred year to year have been set out in the

application. The details of the customers to whom the sanitary and bathroom fittings under the said trademark 'PARKO' have been supplied by the

applicant have also been stated. It is further averred that the applicant on coming to know that a trade mark 'PALCO' has been advertised in the

Trade Marks Journal in the name of respondent No. 1, the applicant filed opposition. It is the case of the applicant that the impugned trade mark

'PALCO' by the respondent No. 1 is bound to cause confusion and deception amongst the purchasing public and trade. It is asserted that the trade

mark 'PALCO' is identical/deceptively similar to the applicant's registered mark 'PARKO' and the goods covered by the two trade marks are

identical.

Having considered the submissions made by Shri Shalien Bhatia, learned Counsel for the applicant, we are of the view that as the respondent No.

1-registered proprietor of trade mark 'PALCO' has willingly suffered a decree of permanent injunction, instant rectification application should be

disposed of in accordance therewith instead of once again going into merits. Suffice it to state that in the light of the decree of court, the trade mark

'PALCO' is disentitled to protection in court. It is, therefore, a fit case, in our opinion, where the instant rectification application should be allowed by

directing the expunging of the mark 'PALCO' from the register.

It is accordingly directed that the learned Registrar of Trade Marks shall rectify the Register in regard to the entry pertaining to the registered

trade mark under No. 508827 in class 11 by expunging the same.

The rectification application is accordingly allowed in terms of the above, however, with no order as to the costs. A copy of this order be sent to

the Registrar of Trade Marks.