Sanjeev Kumar Chaswal, Technical Member (Trade Marks)
The present petition is filed by Comite International Olympique Chateau De Vidy, Lausanne, Switzerland for removal/cancellation of trademark No. 164439 in Class 12.
Facts of the case
The Applicant is a Swiss non-profit, non-governmental organization based in Lausanne, Switzerland created by Pierre, Baron de Coubertin, on 23 June 1894, which prime responsibility, is to supervise the organizing and running of the Summer and Winter Olympic Games. The IOC is the owner of all rights in the Olympic trademarks, symbols, flag, motto, emblem, anthem, and other intangible properties associated with the Olympic Games. It coordinates the protection of these rights with the Olympic Movement.
2. The Applicant adopted the word 'OLYMPIC' as early as in the year 1894 in relation to organizing sporting events. The trademark 'OLYMPIC' has since adoption, been continuously, extensively and exclusively been used by the Applicant in relation to its services. The Applicant adopted the inherently distinctive trademark 'OLYMPIC' to distinguish its goods and services from those of its competitors at a time when no other entity was using such trademark. The said word 'OLYMPIC' is a part of the trade name of the Applicant and ever since its bonafide and honest adoption in the year 1894, the Applicant has been using the trademark 'OLYMPIC' honestly, continuously, openly, uninterruptedly, extensively and to the exclusion of others.
3. The Applicant has been organizing the modern Olympic Games and Youth Olympic Games held in summer and winter, every four years since 1896. Today the Applicant comprises membership of 100 active members, 33 honorary members and I honour member and is considered the supreme authority of the modern Olympic movement. Acting as a catalyst for collaboration between all parties of the Olympic family, from the National Olympic Committees (NOCs) the International Sports Federations (Ifs), the athletes, the Organizing Committees for the Olympic Games (OCOGs) to the TOP partners, broadcast partners and United Nations agencies, the Applicant shepherds success through a wide range of programmes and projects. On this basis it ensures the regular celebration of the Olympic Games, supports all affiliated member organizations of the Olympic Movement and strongly encourages, by appropriate means, the promotion of the Olympic values.
4. The Applicant enters into sponsoring agreements with leading companies from all sectors of the market Known as Olympic partners. Those partners are prepared to pay significant fees in order to acquire the rights to combine their signs/trade marks with names such as 'Olympic'. The Olympics' or the Olympic Symbol, Olympic Games licensing programmes and Olympic Games domestic sponsorship program are managed by the Organization Committees for the Olympic events with contribution of these sponsors and licensees. The Applicant and its related organizations, provide a range of diverse goods and services including, inter-alia, in classes 1, 2, 3, 4 ,5 ,6, 7, 10, 11, 12, 14, 16, 17, 18, 19, 25, 28, 29, 30, 32, 35, 36, 37, 38, 39, 40, 41, 42, 43 and class 44. Owing to such use, an immense goodwill and reputation has inured to the mark 'OLYMPIC' in favour of the Applicant. The IOC had for many years privileged relations with car manufacturers as such as for instance Mercedes and Audi which provide the IOC with "Official cars" and are authorized to benefit from the cars carrying the Olympic symbol and the expression "Official car of the International Olympic Committee".
5. The Applicant's sponsors include some of the most well known companies in the world including but not limited to Coca Cola, General Electric, Me Donalds, Omegam Panasonic, Proctor & Gamble, Samsung Dow and Bridgestone. The Applicant's earlier and well known trademark appears on millions of products of these sponsors and the consumers therefore see and associate the mark 'OLYMPIC' with the Applicant herein. Official partners receive exclusive marketing rights and an association with the Olympic brand. The partners may exercise these rights worldwide and may activate marketing initiatives with all the members of the Olympic Movement that participate in the partnership program.
6. The Olympic Games would not be financially viable without the financial contribution of Olympic partners and sponsors. The Applicant has one of the most effective international marketing platforms in the world, reaching billions of people in over 200 countries and territories throughout the world. Support from the business community is crucial to the staging of the Games and the operations of every organization within the Olympic Movement, the Revenue generated by commercial partnerships accounts for more than 40% of Olympic family. Each level of sponsorship entitles companies to different marketing rights in various regions, category exclusively and the use of designated Olympic images and marks.
7. In order to acquire statutory rights (in addition to pre existing common law rights), the Applicant applied for and obtained registrations in respect of the trademark 'OLYMPIC' and its variants in several classes of goods and services in India and several foreign jurisdictions. The details of the trademark registrations and pending applications in India and have been provided in the foregoing paragraphs.
8. A random search conducted on any search engine on the internet using the key words OLYMPIC reveals several links that lead to the Applicant besides the domain name registered in its favour, which is also its official website, namely, http://www.olympic.org
9. The Applicant's trademark 'OLYMPIC' and its variants appear on all the goods offered by the Applicant as well as in connection with all the activities, projects undertaken by the Applicant in several parts of the world, including India and is a well known trademark inter alia in these countries. The Applicant is world renowned by virtue of the Olympic Games it organizes, to participate in which athletes in India are selected and prepared through a rigorous process. India has taken great pride in participating in such Olympic Games since the year 1900 and has won 26 medals in various sports and athletic events held therein.
10. The National Olympic Committees (NOCs) (including the one of India) receive financial support for the training and development of Olympic teams, Olympic athletes and Olympic hopefuls indeed. The IOC distributes sponsorship programme revenue to each of the NOCs throughout the world. The NOCs are authorized by the IOC to use in their territory the Olympic properties which include the mark OLYMPIC. The Applicant's mark OLYMPIC has an illustrious history in India. Sir Dorabji Tata towards the end of 1919 first sowed the seeds for establishing a sports body at National level for promoting the Olympic Sport in united India. Sir Dorabjii Tata with the support of Dr. A.G. Noehren then Director of YMCA established the Indian Olympic Association (IOA) in 1927. Sir Dorabji Tata and Dr. Noehren have become the Founder President and Secretary General respectively of IOA.
11. Sir Dorabji Tata fielded a token contingent of 6 members i.e. four athletes and two wrestlers in the Antwerp Olympic Games in 1920. During these Games Sir Dorabji Tata was elected as a member of the International Olympic Committee (Applicant) and thus became the first IOC member in India. This talent search aroused national interest in athletics and helped to promote the organization of athletic meetings in all States and provinces in Inqjia. Sir, Dorabji Tata and Dr. Noehren run the IOA activities until 1928. The mantle was then handed over to Maharaja Bhupindra Singh of Patiala (1928-1938), and Prof. Guru Dutt Sondhi (1928-1952) respectively. Sir Dorabji Tata continued as a Applicant's member in India until his death in 1931. In 1932 Prof. Guru Dutt Sondhi, who was also the Indian representative within the International Amateur Athletic Federation, assumed his responsibilities.
12. IOA, the apex Sports Organization is responsible for the Indian contingent's participation in the Olympic Games, Commonwealth Games, Asian Games (Outdoor-Indoor-Beach) and South Asian Games. Each Olympic and Non-Olympic Sport has a Federation at the National level and are affiliated/recognized to/by IOA. The most important task in addition to sponsoring the National teams for Multi Sport Games is the staging the National Games.
13. It is needless to say that people worldwide recognize, associate and identify the trademark OLYMPIC and its variants with the Applicant alone and none else and that India is not an exception to if. By virtue of its continuous and wise spread use in relation to sports and allied activities and products, over a century, the high standard of goods and services offered there under and the extensive publicity in relation thereto, the trademark 'OLYMPIC' has acquired the status of a well known trademark in India besides having gained tremendous goodwill and enviable reputation such that the people worldwide will invariably believe that any product or services under the trademark 'OLYMPIC' originates from the Applicant and none else. The Trademark OLYMPIC has become distinctive to and has acquired secondary significance with the Applicant and Applicant alone.
14. Being the original and true adopter, bonafide user and globally associated therewith, the Applicant is the rightful proprietor of the trademark 'OLYMPIC' including variants, in statute as well as in common law. Being a part of its trading name the Trademark 'OLYMPIC' is the most valuable assets of the Applicant. Being a well known mark, the Applicant's mark is liable to be protected across all categories of goods and services. The use and registration of the Applicant's trademark 'OLYMPIC' is also prohibited according to Section 3 read with point 21 of the Schedule contained in "The Emblems And Names (Prevention of Improper Use) Act, 1950". Therefore no one except the Applicant is authorized to use the trademark 'OLYMPIC'.
15. Recently, the Applicant's attention was invited to a trademark under registration No. 164439 dated 8th June, 1954 in Class 12 for the registration of trademark 'OLYMPIC' (word) (hereinafter referred to as the impugned mark) in the name of TUBE INVESTMENTS OF INDIA LTD in respect of goods under class 12 including 'cycle saddles, cycle parts and cycle fittings none being included in other classes and all be made wholly or principally of leather,' imitation leather or plastics'.
16. Considering the Applicant is the rightful owner of the well-known trademark OLYMPIC in common law as well as the respondent No. 1 thereof in accordance with statute, the use and/or registration of any identical or deceptively similar mark such as the impugned mark by any third party including the respondent No. 1 without the permission, consent or license of the opponent is bound to be dishonest and motivated to deceive and confuse the public, who will believe that the goods of respondent No. 1 is related to or associated with the Applicant in some manner or the other. It is inevitable in view of the immense goodwill and reputation of the Applicant's well known trademark 'OLYMPIC' that the unwary consumers will assume a connection between such goods of the respondent No. 1 and the Applicant thereby leading to deception and confusion.
17. The impugned mark being visually, phonetically, structurally and conceptually identical to the Applicant's well-known trademark 'OLYMPIC', has been wrongfully registered in violation of the The Emblems and Names (Prevention of Improper Use) Act, 1950' as has been explained in the foregoing paragraphs. In fact, it is pertinent to note that in the examination report of the impugned mark it had been observed in writing that "one of the meanings of the word Olympic games". The respondent No. 2 is called upon to furnish reasons for grant of the registration of the impugned mark in violation of the "The Emblems and Names (Prevention of Improper Use) Act, 1950'.
18. The Applicant has reason to believe that the respondent No. 1 never intended to use the impugned mark in India even though it caused an application for the same to be filed in the year 1954 on a 'proposed to be used' basis. This is further established by the fact that the respondent No. 1 has not used the impugned mark in India since adoption and more specifically for at least duration of five years and 3 months from the date of filing this petition for rectification. To this date, the respondent No. 1 has not undertaken any activity to commence use of the impugned registration. Therefore, the impugned registration obtained by the respondent No. 1 herein is liable to be cancelled as the same was registered without any bonafide intention on the part of the respondent No. 1 for registration that it should be used in relation to goods of any nature whatsoever by it. The non-use of the impugned mark since the date of filing the application for registration of the same is clearly indicative of the lack of bonafide on the part of the respondent No. 1 to use the same.
19. It is submitted that the respondent No. 2, allowing the impugned trademark 'OLYMPIC' registration and the impugned mark has been renewed without any bonafide intention to use of the impugned mark in relation to goods for which the same has been registered since at least more than five years and three months from the date of present application for rectification, as such there are sufficient grounds for cancellation/removal/expunging the impugned mark registered under number 164439 in class 12 under the provisions of Section 47 (1) (b) as the impugned trademark was registered without any bonafide intention on the part of the respondent No. 1 to use the same in relation to the goods in respect of which the impugned registration was acquired.
20. It is submitted that the impugned registration ought to be cancelled from the register of trademarks under section57(2) of Trade Marks Act, being "an entry made without sufficient cause". The registration has been granted on misrepresentation of facts by the respondent No. 1 herein is liable to be rectified as the same was obtained in bad faith. The malafide and dishonest intentions of the respondent No. 1 becomes evident by the fact that contradictory statements have been made on record. The impugned registration, as is evident, has been acquired by playing fraud on the learned Registrar of Trademarks and is therefore, liable to be cancelled on this ground alone.
21. The impugned registration obtained by the respondent No. 1 is an unwarranted hardship on the Applicant, who is a "person aggrieved" within the meaning of the Trademarks Act, 1999 and who, as a member of the trade is being prevented/hindered by reason of subsistence of the impugned mark on the register from the bonafide conduct of its business activities despite being the true original and rightful proprietor of the trademark 'OLYMPIC' despite having adopted and used the same several decades prior to the alleged adoption and use. Accordingly, the impugned registration obtained by the respondent No. 1 is liable to be cancelled/removed/expunged under the provisions of section57of the Trade Marks Act, being an entry made without sufficient cause and an entry wrongly remaining on the register.
22. That the registration is disentitled to any protection in court of law. The mark is a "deceptive mark" and should not have been put on the Register. That the impugned registration obtained by the registered proprietor is causing unwarranted hardship on the Applicant as by due to the subsisting registration, the Applicant is being harmed and prejudiced in the bonafide conduct of its business activities. That the Applicant/applicant is person aggrieved. The appropriate office of the Trademarks Registry in respect of the registered trademark No. 164439 is at KOLKATA and as such, the above rectification petition is to be heard and decided by the Hon'ble Intellectual Property Appellate Board at KOLKATA.
23. Though the applicant has raised mainly three objections in the impugned application firstly without any bonafide intention to use of the impugned trademark 'OLYMPIC' in relation to goods for which the same has been registered since at least more than five years and three months from the date of present application for rectification, Secondly, the registration has been granted on misrepresentation of facts by the respondent No. 1 herein is liable to be rectified as the same was obtained in bad faith, Thirdly as per clause 21 of the Emblems and Names (Prevention of Improper Use) Act,1950'. The use of the name and emblem IOC is prohibited as per "the name and emblem of the International Olympic Committee consisting of five interlaced rings. (Inserted by the Notification No. S.0.2457 dated the 18 the August, 1978).
24. We will take up the issue each issue separately to decide the applicability of the section 47 (1) (b) and section57(2) of Trade Marks Act, further coupled with clause 21 of the Emblems and Names (Prevention of Improper Use) Act, 1950'. The respondent no.1 has failed to submit the counter statement to the application despite of the notice of the application was sent to the respondent no. 1 in the month of January 2015 since then the respondent no 1 did not submit their rebuttal as well as failed to appear before the Appellate Board on last occasions, as such due to non submission of the counter as well as non appearance on the part of the respondent no 1 or by his representative, duty cast upon on the Appellate Board to decide matter on merit.
25. The genesis of the trademark 'OLYMPIC' is originated in the early year of 1894, when the IOC had adopted the trademark 'OLYMPIC' for organizing the summer and Winter Olympic Games. The IOC has been throughout has been having all rights in the Olympic trademarks, symbols, flag, motto, emblem, anthem, and other intangible properties associated with the Olympic Games much prior to adoption by M/s. The Wright saddle company Limited incorporated in Britain, while checking and correlating the record of the applicant with of the Trademark registry, it has been found that initially the application was filed by the respondent No. 1 predecessor M/s. The Wright Saddle Company Limited before the trademark registry claiming use of the trademark 'OLYMPIC' for class 12 for cycle saddles, cycle parts and cycle fittings none being included in other classes and all be made wholly or principally of leather, imitation leather or plastics since 1916 but whereas the certificate of registration issues in the year 1956 does not mention the date of use.
26. The present status and information connected to the impugned registered trademark 'OLYMPIC' for class 12 vide certificate/application No. 164439 is being shown under user detail as "proposed to be used' which is contrary to the contents of the application as well as it raises substantial doubt on creditability of the date of its use of the impugned trademark by the respondent no 1, the affidavit of the respondent no.1/applicant in support of the trademark application in support of trademark 'OLYMPIC' for class 12. The said records do not indicate the value of the goods exported by my Company to India; however, I know that the goods so export reached very substantial proportions and in other statement in the affidavit it says that it is my belief that at least ninety per cent of the goods exported to India in the past have actually been marked with the Trade Mark "OLYMPIC" either by impressing the Mark in the material from which the goods have been made or by means of nameplates attached thereto. In addition, as stated in paragraph 4 above, the majority of goods exported to India since 1939, have also had nameplates, imprinted with the Trade Mark "WRIGHTS", attached thereto.
27. The averments made in the affidavit itself are contrary one it says the sale made to India with substantial proportions and in subsequent paragraph the affidavit says the majority of goods exported to India since 1939 contrary to the application claim of the year 1910 as such while going through to the contents of the application, which raises the substantial doubt on the creditability of the affidavit in support of the application. Nevertheless much water has flown down from the year 1954; subsequently the trademark registry has been renewing the trademark without obtaining further affidavit in support of the use of the mark.
28. Though the present respondent no. 1 has entered in to the shoes of its predecessor M/s. The Wright Saddle Company Limited through assignment deed of the year 1981 by having assignment of the trademark in favour of the present respondent no.1 herein, while going through the assignment deed it has been observed that the assignment deed also does not mention or refers the use of the trademark in India by its predecessor till the year 1981 or from the year 1910. Further the assignment deed has been entered in to the registry record after the passing of the notification in the year 1978 thereby raising the question on the tenability of the existence of the trademark, as the assignment deed has been entered in to the register in the year 1981 much later of the issuance of the notification of bringing under clause 21 of the Emblems and Names (Prevention of Improper Use) Act, 1950.
29. The applicant has invoked section 47 (1) (b) and section57(2) of Trade Marks Act, against the respondent no 1 that the respondent no 1 had not use of the mark from date of three months before the date of the application, a continuous period of five years from the date on which the trade mark is entered in the register such period there was no bona fide use in relation to those goods by any owner. Keeping in view facts of the instant case wherein non-appearance and non-submission of the respondent no 1 raises the question on usage of the trademark, in our considered the applicant is justified in invoking the section 47 (1) (b) for removal from the impugned trademark 'OLYMPIC' in class 12 from the register on ground of non-use, as the respondent no 1 has failed to rebut the allegations raised in the application, as such non rebuttal of the allegations of the applicant by the respondent no.1 makes the allegations raised herein to be deemed to be admitted. InGautam Sarup v. Leela Jetly (2008 (7) SCC 85), this Court held: (SCC p.89, Para 14). An admission made in a pleading is not to be treated in the same manner as an admission in a document. An admission made by a party to the lis is admissible against him proprio vigore." can be invoked as the respondent no. 1 has failed to rebut the allegations, in the other case in the case ofSmt. Asha Handa v. Baldev Raj Handa (reported in AIR 1985 Delhi 76)wherein in paragraph 11, it has been laid down as follows: "The principle underlying this rule is that pleadings should be specific. Rule 5 of the same order further lays down that every allegation of fact in the plaint, if not denied specifically or by necessary implication or stated to be not admitted in the pleadings of the defendant, shall be deemed to be admitted. In such an event the admission itself being proved, no other proof is necessary. Keeping in view of the judgments rendered by the apex court on rebuttal of allegations but in the present case, the respondent no. 1 chosen otherwise, the respondent did not appear nor he has rebutted the allegations in the application thereby making the allegations as raised in the applications as deemed to be admitted.
In our considered view while applying the above judgments in the present case, it is clear that the respondent no.1 has failed to rebut allegations thus in our view it is to be deem to be admitted against the resp
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ondent in favour of the applicant herein, as such the respondent has failed to establish the use of the impugned trademark from date of three months before the date of the application, a continuous period of five years from the date on which the trade mark is entered in the register such period there was no bona fide use in relation to those goods by its owner. 30. In the year 1978, the Government of India had issued a notification S.O.2457 dated the 18 the August, 1978 by inserting an clause 21 of the Emblems and Names (Prevention of Improper Use) Act, 1950 thereby prohibiting the use of name and emblem of the International Olympic Committee consisting of five interlaced rings. Despite of issuance of the notification barring the registration of the impugned mark it is surprising how the trademark registry has been continuing with renewal of the impugned trademark despite of issuance of notification prohibiting registration of the impugned trademark, in our considered opinion at least from the year 1978 the registration of the impugned trademark is in jeopardy solely due to issuance of the notification barring its registration. 31. In view of the issuance of the notification under the Emblems and Names (Prevention of Improper Use) Act, 1950' the continuing registration of the impugned trademark 'OLYMPIC' for class 12 vide certificate/application No. 164439 after issuance of the notification is contrary to the Emblems and Names (Prevention of Improper Use) Act, 1950, In our considered opinion the application of the applicant for removal of the trademark 'OLYMPIC' for class 12 vide certificate/application No. 164439 is justified. 32. Keeping in view of the extensive submissions made herein above by the applicant counsel, we are of the considered opinion that the registration of the impugned trademark 'OLYMPIC' for class 12 vide certificate/application No. 164439 granted contrary to the provisions of Sections 47 & 57 under the Trade Marks Act, 1999 as well as contrary to clause 21 of the Emblems and Names (Prevention of Improper Use) Act, 1950 thereto, as such the present original rectification application deserves to be allowed thereby directing the Registrar of Trademarks to rectify the registered 'OLYMPIC' for class 12 vide certificate/application No. 164439 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 "'OLYMPIC' for class 12 vide certificate/application No. 164439 within 15 days of the receipt of this order. Order as no costs.