Scg Cement Co. Limited vs Cement Manufacturing Company Limited.

Manmohan Singh, J

The applicant is a Cement Manufacturing Company based in Meghalaya and is engaged in the business of manufacturing cement & allied products

and is the registered proprietor of the trade marks, comprising the expression STAR and/or STAR with the Device of Star, STARCEM, STAR

GOLD, GOLD STAR for Cement, Clinker in Class-19 under Nos. 1258696 as of 01.01.2004, 1258697 as of 01.01.2004, 1319402 as of 08.11.2004,

1319401 as of 08.11.2004, 1722943 as of 19.08.2008 and 1722942 as of 19.08.2008 and all the registrations are valid and subsisting. The applicant has

been using the trade mark STAR with the Device of Star ever since the year 2002 and has obtained various Certificates, registrations for the trade

mark STAR/STAR CEMENT that is the highest selling brand in the entire North-Eastern India and has got the presence in different parts of the

country, the applicant has effected sale of over Rs. 3000 Crores for selling the Cement Product under the mark STAR from the year 2004 to 2012.

The applicant while pursuing an application for registration of the trade mark No. 2235822 in Class-19, the applicant has come to know from the

Official Examination Report that the impugned trade mark No. 1826280 in Class-19 for the mark STAR has been registered in the name of the

registered proprietor.

The applicant has moved an application for rectification/cancellation of registered trade mark No. 1826280 in Class-19 in the name of the registered

proprietor advertised in Trade Marks Journal No. 1444, dated 16.07.2010 (being a multi-class application in Classes 1 and 19), as of 05.06.2009 for a

trade mark STAR with the Device of Star, claiming ""proposed to be used.

It is strange that the applicant having prior registered trade mark for STAR and/or its derivatives for the goods in Class-19 that trade mark has been

mentioned in the Examination Report of the impugned trade mark No. 1826280 by the examiner. Due to such omission, the impugned application

proceeded to registration and has been continuing in the Register of Trade Marks, without any bona fide cause or reason.

The applicant contended that the ""proposed to be used' trade mark STAR for Cement etc. in Class-19 could not be distinctive, or could acquire any

distinctive character on the date of registration and even on the date of filing the application for rectification, since the applicant's earlier adopted and

extensively used trade mark STAR CEMENT is existing in India. Hence the impugned registration of the trade mark STAR for Cement etc.

contravenes the provision of Section 9(2) since its use would cause deception and confusion in the minds of the consumers, particularly due to the

established use of the applicant's trade mark STAR CEMENT

The impugned registration of the trade mark STAR for Cement etc. contravenes the provision of Section 9(2) since its use would cause deception

and confusion in the minds of the consumers, particularly due to the established use of the applicant's trade mark STAR CEMENT.

The Respondent has not used the impugned trade mark STAR for Cement, nor there is any bona fide intention on the part of the registered

proprietor for the use of the impugned trade mark, which was ""proposed to be used"" on the date of application/registration and there was no document

produced at any stage (prior to the date of registration) of the proceeding establishing any use and/or intention to use the impugned trade mark. The

said registration is ex facie illegal and invalid and deserves to be cancelled from the Register.

The applicant submitted that the Section 57(2) stipulates that any person aggrieved by the absence or omission from the Register of any entry, or by

any entry made in the Register without sufficient cause, or by any entry wrongly remaining on the Register, or by any error or defect in any entry in

the Register may apply in the prescribed manner to the Appellate Board or to the Registrar and the Tribunal may make such Order for making,

expunging or varying the entry as may think fit.

In the instant case, there is clear an error and defect apparent on the record on the part of examiner, while issuing the Examination Report in

respect of the impugned trade mark wherein the prior adopted and earlier registered trademarks STAR/STARCEM/STAR with other derivatives for

the goods in Class-19 were not mentioned. The trade mark should not have been registered for any reason and has been wrongly remaining on the

Register. The impugned trade mark therefore ought to be removed for an entry wrongly made.

The applicant is for this rectification is the person aggrieved within the meaning of the Act and can maintains institute this action by the

continuance of the said registered trade mark No. 1826280 in Class-19 and has got locus-standi to file the rectification/cancellation proceeding, since

the said registration of the trade mark STAR stands in the way of the bona fide business as well as the process of registration of the trade mark

STAR in the name of the applicant The applicant is the registered proprietor of the trade mark as of 1998. Hence the applicant is ""person aggrieved

and can maintain & institute this action against the respondent, herein as it is engaged in the trade of an identical trade mark is allowed to be registered

subsequently would definitely cause damage and therefore the applicant is a ""person aggrieved, as the respondent has deliberately adopted and/or uses

the impugned trademark as a trademark with intent to take advantage of the goodwill and reputation of applicant trademark and to earn wrongful gain

from it and cause wrongful loss to the applicant.

That the respondent despite having receipt of proper service of the application for rectification and also the copy of the Miscellaneous Petition. As

per registry record the Respondent did not file any counter statement nor did documents thus the Respondent has failed to set up his case, by bringing

any materials/documents to justify the adoption of a mark is identical as of the Applicant. The respondent has not been able to justify as to how it hit

upon an identical mark as an imitation of the trademark of the Applicant. The respondent has neither filed the Counter statement, nor made any

appearance in the instant proceeding to defend his registration. As such it seems the registered proprietor does not have any interest in defending the

registration of a ""proposed to be used"" trade mark.

The applicant counsel has referred the few citations in support of his arguments M/s. M.P. Jewellers v. New M.P. Jewellers (IPAB)Â 2005 (30)

PTC 517 (IPAB) wherein the appellate Board has said ""There was sufficient evidence that the applicant had been using the trade name of M.P.

Jewellers for considerable period attaining goodwill and reputation. When considering customers and goods dealt with by both parties, the mark of the

respondent would cause confusion and deception. Cancellation of respondents registered mark ordered. In another case as observed by-

The Hon'ble Board in M.P. No. 105/2010 in ORA/95/2010/TM/AMD M/S. Sipla Limited v. Rajiv Sukhija, reported in 2012 (52) PTC 615 (IPAB),

An identical trade mark if allowed to be registered subsequently would definitely cause damage and therefore the applicant is a ""person aggrieved"". In

another case as held by Lord Herschel in Powell's TM Case, 1894 (11) RPC 4, where it can be shown that the applicant is in the same trade as the

person whose trade mark is registered and wherever it can be shown that if the trade mark if remain in the Register would or might limit the legal

rights of the applicant, then the applicant is said to be a ""person aggrieved

As held in Ciba Limited v. M. Ramalingam & S. Subramaniam, reported in AIR 1958 BOM 56, the consideration both Section AS and Section 10, it

has got to be remembered that the primary duty of the Court is towards the public and maintenance of the Purity of the Register. When a case is

sought to be made that a particular trade mark is likely to deceive or cause confusion, the contest is not so much between the parties to the litigation as

it is a contest between the party defending his right to a particular trade mark and public, and the duty of the Court must always be to protect the

public irrespective of what hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive of cause confusion.

Even otherwise the present case is fit case for intervention, where the registration has been granted contravening the trademark rules as such it is

to be removed as there is clear an error and defect apparent on the record on the part of examiner, while issuing the Examination Report in respect of

the impugned trade mark wherein the prior adopted and earlier registered trademarks STAR/STARCEM/STAR with other derivatives for the goods

in Class-19 were not mentioned in the examination report if the examiner had mentioned the registered trademarks of the applicant than the trade

mark should not have been registered for any reason.

The respondent as per registry record the Respondent did not file any counter statement nor did documents thus the Respondent has failed to set

up his case, by bringing any materials/documents to justify the adoption of a mark is identical as of the Applicant. The respondent has not been able to

justify as to how it hit upon an identical mark as an imitation of the trademark of the Applicant. The respondent has neither filed the Counter

statement, nor made any appearance in the instant proceeding to defend his registration. As such it seems the registered proprietor does not have any

interest in defending the registration of a ""proposed to be used"" trade mark. Keeping in view of the extensive submissions made herein above by the

counsel for the applicant. We are of the considered opinion that the registration of the impugned trademark ""STAR"" having registered trademark

1826280 in Class-19 in is granted contrary to the provisions of Sections 9, 11, 47 & 57 under the Trade Marks Act, 1999 and Rules thereto, as such

the present original rectification application deserves to be allowed thereby directing the Registrar of Trademarks to rectify the registered. trademark

No. 1826280 in Class-19 from the Trademark Register in order to maintain the purity of the Trademark Register.

The copy of the order is sent to the Registrar of Trademarks in order initiate necessary steps for removal of the trademark having registered

trademark 1826280 in Class-19 within 15 days of the receipt of this order.

Order as no cost