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Judgment
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S. Usha, J
The original rectification application has been filed for removal of the trade mark ""NEUTRON"" registered under No. 1330529 in class 37 under the
provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
The applicant is carrying on business as manufacturer and/or marketer and/or service provider of telecommunication equipments and systems,
computer related net working and data communication equipments and software including ""Key Telephone System"" (EPABX) (wireless) equipments,
Video/Audio conferencing equipments, multiplexers, multi-channel voices recorders, modems, line drivers etc. The applicant is the registered
proprietor of the trade mark ""NEUTRON"" under No. 519318 in class 9 in respect of electrical and electronic apparatus, instruments and processing
equipments include in class 9, computers and telecommunications. The applicant has applied for registration of the trade mark ""NEUTRON"" in classes
37, 38 & 42.
The applicants adopted and are using the trade mark ""NEUTRON"" since the year 1986. The applicants are carrying on their business under the
name and style of Neutron Electronic Systems Pvt. Ltd. The word NEUTRON is the applicants leading and essential part of their trading style. The
applicants were initially carrying on business of installation, maintenance, repairs and sale of telephone system, wireless (VHF) equipments and other
telecommunication equipments. Since the year 1988-89 they started manufacturing and selling modems, push button dialers and line drivers under the
trade mark NEUTRON. The applicants are the first to offer and/or sell video and/or audio conferencing equipments in India. The applicants have
taken efforts to popularize their said business and have spend substantial sum towards sales promotion. Due to long, continuous and extensive use the
trade mark NEUTRON has become associated in the course of the trade and public with the applicant and none else.
The applicant's trade mark has acquired enviable reputation and goodwill and has thus become a well known trade mark. The impugned registration is
likely to cause confusion and deception among the public as the marks and goods are similar/identical. The applicants became aware of the
Respondent's registration from the reply in a civil suit for infringement of trade mark filed by the applicant against the Respondent before the Hon'ble
High Court of Bombay. The Hon'ble High Court was pleased to grant an order of ad-interim injunction which continuous till date.
Being a person aggrieved the applicant is entitled to maintain this application for rectification. In order to maintain the purity of the Register and not
only in the interest of the applicant but also in the interest of the public the application has been filed on the following grounds:
(a) the impugned registration is not valid and subsisting;
(b) the entry has been made without sufficient cause;
(c) the entry is wrongly remaining on the register;
(d) confusion and deception between the rival marks would be inevitable;
(e) the registration is contrary to the provision of the Act;
(f) the registration has been obtained suppressing the material facts;
(g) the applicants being the prior adopter and users of the trade mark, the Respondents cannot be the proprietors of the trade mark;
(h) the impugned registration is disentitled to protection in a court of law;
(i) the impugned trade was not distinctive or capable of being distinguished;
(j) the impugned registration is in contravention of the provision of the Act;
The applicant therefore prays that the application for rectification ought to be allowed cancelling/remaining the impugned trade mark registered under
No. 1330329 in class 37 from the register of trade marks.
The Respondent filed their counter statement denying all the allegations made in the grounds of rectification application. The Respondents
commenced the use of the trade mark in the year 1997 and have been continuously using the same without any interruption. The services are totally
different. The Respondents are the rightful owners of the trade mark NEUTRON. They have honestly and with bonafide intention adopted the trade
marks in the year 1997. It is denied that there has been suppression of material facts in obtaining the registration. Under Section 12 of the Act, the
Respondent being an honest and concurrent user of the trade mark, is entitled for registration. The registration is not in contravention of the provisions
of the Act. The application for rectification therefore be dismissed with costs.
The applicant in rejoinder denied the averments made in the counter statement.
We heard Shri Om Prakash Jha, counsel for the applicant. None appeared for the Respondent. The notice sent to the Respondent was returned
unserved but the counsel was served with the notice of hearing. As there was no appearance on behalf of the Respondent, they were set ex parte,
and the matter was heard.
Learned Counsel for the applicant submitted that they adopted the trade mark NEUTRON as early as 1986 and had been using the same
continuously without any interruption, whereas the Respondent adopted the trade mark only in the year 1997 which is their own admission in the
counter statement. They further stated that they had filed suit for infringement and passing off against the Respondent herein and obtained an order of
ad-interim injunction as early as 2006 which is still continuing. The marks and the goods being similar, there was every possibility of confusion and
deception being caused. As the trade and business were the same, the applicant was a person aggrieved and had filed an application for rectification.
We have heard the counsel for the applicant and have gone through the counter statement.
An application for rectification can be filed and maintained only by a person who is aggrieved by the registration of the trade marks. Any trader
who is in any way injured or restrained in his business or embarrassed by the registration of the mark will be a person aggrieved. In Powell's Trade
Mark, (1894) 11 RPC 4 at 7, Lord Herschell stated as follows:
Wherever it can be shown, as here, that the Applicant is in the same trade as the person who has registered the Trade Mark, and wherever the Trade
Mark, if remaining on the Register, would, or might, limit the legal rights of the Applicant, so that by reason of the existence of the entry on the
Register he could not lawfully do that which, but for the existence of the mark upon the Register, he could lawfully do, it appear to me he has a locus
standi to be heard as a person aggrieved.
The fact that the trader deals in the same or similar class of goods and services and could use the impugned trade mark is prima facie sufficient
evidence of his being aggrieved. The applicant herein is dealing in the similar business under an identical trade mark is a person aggrieved and has the
locus standi to file and maintain an application for rectification.
In the instant case, there is no doubt the rival marks are identical for similar goods. In such a case, the possibility of confusion and deception is
certain and not likely. The registration granted in favour of the Respondent is therefore in contravention of the provisions of Section 11 of the Act.
The Respondents admitted statement is that they adopted the trade mark in the year 1997, whereas the 1st invoice filed by them is of the year
2003 and not earlier. The applicants use is of the year 1986 which is prior to that of the Respondents. Even if assuming the Respondents are from
1997 they are subsequent to that of the applicants. Priority in adoption and use of the trade mark is superior to priority in registration. A person is
entitled to carry on his business in his own name so long as he does not do anything to cause confusion with the business of another and so long as he
does it honestly. The use of the trade mark on its registration would make the public or trade to think that it is the applicants goods as there are in the
market prior to that of the Respondents. Therefore the Respondents impugned registration is liable to be rectified.
The Respondents claim of proprietorship is also false in our opinion. The applicants are the prior adopters and users of the trade mark and
therefore the Respondents are not the proprietors of the trade mark. The Respondents have adopted the applicants trade mark only to trade upon and
earn profits upon the goodwill and reputation earned by the applicants. The Respondent is therefore not entitled for registration under Section 18(1) of
the Act. The registration is in contravention of the provisions of Section 18 of the Act.
In view of the above mentioned observations, we are of the opinion that the impugned registered trade mark NEUTRON is to be removed from
the register of Trade Marks. Accordingly, the original rectification application is allowed with a direction to the Registrar of Trade Marks to
cancel/remove the trade mark ""NEUTRON"" registered under No. 1330529 in class 37 from the register of Trade Marks. There shall be no order as to
costs.