M/S. Bright Electricals vs Sharda Rani Champa Lal Jain, Trading As M/S. Banson Cable And The Registrar Of Trade Marks

S. Usha, J

The application has been filed for the removal of the trade mark SILVER MEDALE under No. 802748 in Class 9 under the provisions of the Trade Marks Act, 1999. The applicants are prior adopters, users and registered proprietors of the trade mark GOLD MEDAL and GOLD MEDAL CAB. They are using the trade mark as word per se and as a label mark in respect of wide range of electrical goods including electrical appliances, electrical accessories and fittings, wire and cables and switches since the year 1979-1980.

The applicants have obtained registration of the trade mark GOLD MEDAL under Nos. 449747 in Class 9 & 518258 in Class 9 in respect of Wires & Cables and other goods and under Nos. 518259 and 603634 in Class 11 in respect of Wires & Cables. The said registrations are validly subsisting as on date. The applicant's sales runs to several crores of rupees. The applicants have spent enormous amounts towards publicity and promotion.

The applicants maintain high standard of manufacturing. Their trade mark has acquired distinctiveness by long use. The trade mark has become synonymous with the goods and business of the applicants. The applicant's trade mark is widely advertised and therefore the said trade mark enjoys solid and enduring reputation in the market.

The respondent No. 1 is engaged in the same business of manufacturing and marketing of wires and cables. They have malafidely, dishonestly and fraudulently adopted the trade mark SILVER MEDALE impugned herein. They have not used the trade mark in relation to the goods commercially and in the course of trade since the filing of the application for registration. The alleged user since 01.04.1995 is false. The respondent No. 1 has never used the trade mark.

The respondent No. 1 is not the proprietor of the trade mark. The respondent No. 1 trade mark is identical and deceptively similar to the applicants trade mark in all respects like phonetically, visually and structurally. The respondent No. 1 adoption is dishonest. The respondent No. 1 has dishonestly adopted the impugned trade mark with a view to cause deception and confusion in the market and to pass of its goods as that of the applicants.

The impugned trade mark SILVER MEDALE was published in the Trade Marks Journal with a condition that the respondent No. 1 will have no exclusive rights in the word "Silver". The only essential part remains in the impugned trade mark is MEDALE which is identical with the applicants trade mark.

The applicants are persons aggrieved by the illegal, misuse of the impugned registration. Because of the impugned entry on the register, the applicant is suffering and shall continue to suffer.

The grounds of rectification are that:

1) the applicants are the true and lawful proprietors of the trade mark gold medal;

2) the respondents have obtained the impugned registration fraudulently and malafidely;

3) the respondents are not using the trade mark in respect of the goods;

4) the adoption of the impugned trade mark is dishonest and fraudulent;

5) the respondents played fraud while obtaining registration;

6) the impugned trade mark is non distinctive and is incapable of being distinguished;

7) the said registration is in contravention of the provisions of Section 9 of the Act;

8) the impugned trade mark is identical and deceptively similar to the applicants trade mark;

9) the impugned trade mark is identical and is likely to cause confusion and deception in the market;

10) the applicant is the prior adopter and exclusive user of the trade mark;

11) the respondents are guilty of passing of;

12) the respondents have not used the trade mark for a period of more than five years and three months prior to the filing of this rectification application;

13) the respondents have obtained registration without any intention to the use the trade mark;

14) the impugned registration is in contravention of the provisions of sections 9, 11, 12 & 18 of the Act;

15) the impugned registration is void ab-initio;

16) the entry has been made without sufficient cause and is wrongly remaining on the register;

17) it is in the interest of justice and in the interest of purity of the register the impugned entry be removed; and

18) it is in the interest of justice, equity and good conscience that the impugned trade mark be removed.

The notices sent to the respondents were returned on several occasions with an endorsement as "left" or "no such addressee" and therefore as per the directions of the Board, the applicant effected publication. The respondents were not present and we have therefore set the respondents ex-parte. We heard the applicants.

We heard Shri Saurabh Kapoor, learned counsel for the applicant. None appeared on behalf of the respondent during the circuit bench sitting held at Delhi on 23rd August, 2013.

The learned counsel for the applicant reiterated whatever were stated in the application for rectification. The counsel relied on few judgments in support of his case.

1) 2007 (35) PTC 28 (Del.) -High Court of Delhi-Izuk Chemical Works v. Babu Ram Dharam Prakash. The rival marks are Moon Star and Super Star. The word Star is the essential part of the trade mark and the same has been copied. It was also emphasized that the likelihood of confusion and deception was present.

2) ORA/241-242/2010/TM/DEL-IPAB Order No. 111/2013 dated 31st May 2013--M/s. Bright Electricals v. Mr. Ramesh Shah and others.-the trade mark gold medal was in use since the year 1986. When the essential part of the mark is adopted by any other person possibility of confusion is certain.

3) AIR 1986 SC 137-American Home Products Corporation v. Mac Laboratories Private Limited and Ano ther.-The registration gives an exclusive right to the registered proprietor.

4) AIR 1978 Delhi 250-Century Traders v. Roshan Lal Duggar & Co. and others-Prior adopter and user gets a better title than the subsequent user.

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

The applicants have filed this application for rectification as they are affected by the impugned trade mark. The marks are GOLD MEDAL and SILVER MEDAL. The marks are deceptively similar as well as the goods are same. Both the customers and the trade channels are the same. The applicant's case is that they had adopted and had been using the trade mark since 1979-1980, whereas it is an admitted position that the respondents have been using the trade mark only since 01/04/1995. In view of the above reasons, it is clear that the applicants are aggrieved by the impugned registration and therefore can file and maintain an application for rectification.

On perusal of the applicant's evidence, it is seen that the applicants have been using the trade mark since 1981 at least. The applicants are the registered proprietors of the trade mark GOLD MEDAL as of 17/02/1986. The respondents are using the deceptively similar trade mark SILVER MEDAL since 01/04/1995 which is subsequent to that of the applicants. The applicants are therefore the prior adopters and users of the trade mark and their rights are to be protected.

The other ground was non use of the trade mark by the respondents. The respondents are not before us to defend their case by placing any evidence before us to satisfy the claim of use. The respondents are therefore not using the trade mark and probably that is the reason for their absence. Even assuming they were present to defend the case, their use if at all can be only from the year 1995 and not earlier which definitely will be subsequent to the applicant's use. Having accepted all the grounds in favour of the applicant, there is no reason to reject/dismiss the application for rectification. Accordingly, the rectification application is allowed with a direction to the Registrar of Trade Marks to remove the trade mark registered under No. 802748 in Class 9. Accordingly, miscellaneous petition No. 201/2011 is disposed of. There shall be no order as to costs.