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Green Valley Biscuits Pvt. Ltd. v/s Hasmukhrai & Co.

    Application No. 633470 & Opposition No. Cal-59542

    Decided On, 28 July 2005

    At, Registrar of Trade Marks Kolkata

    By, THE HONOURABLE MR. M.C. GUPTA
    By, DRTM

    For the Opposition: Shri T.N. Daruwalla, Advocate.



Judgment Text

M.C. Gupta, DRTM:

1. A label mark consisting of the word `SOCIETY' with the words `FOUR ACES' was sought for registration in class 30 under Application No. 633470 dated 11.7.1994 by the above named Applicants. The mark was claimed to be used sine 1.4.1994. Eventually the application was advertised before acceptance under Section 20(1) proviso vide Trade Marks Journal No. 1251 dated 16.7.2001 at page 1651.

2. On 5.8.2001 a notice of opposition on Form TM-5 was lodged by the above named Opponents objecting to the registration of the impugned mark on the following grounds:

That the Opponents are carrying on business of manufacturing and marketing and exporting of tea under various trade marks and are registered proprietors of the word `SOCIETY' and label under Nos. 498406 and 530893 as of 1988 and 1990 respectively and that an application under No. 577911 in class 30 is already advertised and is pending under opposition and that the Opponents registered trade mark `SOCIETY' label and word are extensively used and advertised throughout the country and, therefore, are exclusively identified and associated with the Opponents and hence under these circumstances, the registration of the impugned mark, which is practically identical to the aforesaid registered trade mark of the Opponents, is likely to cause confusion or deception during the course of trade and, therefore, prohibited for registration under Section 11 read with Section 12 of the Act.

3. That the very adoption of the impugned mark by the Applicants consisting of the word `SOCIETY' is nothing but a dishonest attempt on their part of the Applicants to trade upon and benefit from the goodwill and reputation already enjoyed by the Opponents in their registered trade mark hence they cannot claim its proprietary rights under Section 18(1) of the Act. The Opponents took objections to the registration of the impugned mark under Sections 9,11,12 and 18 of the Act and also prayed for exercise of the direction, adverse to the Applicants, under Section 18(4) of the Act.

4. In the counter-statement filed on 13.6.2002 the Applicants denied the various averments of the Opponents and stated that the word `SOCIETY' is adopted in respect of `dalmut' in February, 1971 and is being used continuously and extensively. It is stated by the Applicants that the impugned mark was accepted for registration at the pre-advertisement stage only after consideration of the evidence of use and reputation. Rest of the counter-statement contains `mere denial of the Opponents' averments.

5. The Opponents filed their evidence under Rule 50 (old Rule 53) vide their letter dated 25.9.2002/ The Applicants did not file any evidence in support in spite of due opportunity given to them for the purpose. Hence, the matter was set down for hearing which took place on 25.7.2005 in presence of Shri T.N. Daruwalla, Advocate for the Opponents and none was present for the Applicants. The Applicants did not even file any request on Form TM-7, expressing their desire to be present at the hearing.

6. Shri T.N. Daruwalla learned advocate for the Opponents submitted that the Opponents are objecting to the presence of the word `SOCIETY' in the impugned label which has been adopted by the Applicants with an ulterior motive on their part of trade upon and benefit from the goodwill and reputation already enjoyed by the Opponents in their well reputed and used registered trade marks the stated that the rival goods are also allied and cognate goods and, therefore, the registration of the impugned mark is prohibited for registration under Section 11 read with Section 12 of the Act. He stated that the Applicants appear to have lost interest in prosecuting the impugned application as they have not filed any evidence in support and they have also not filed any request on Form TM-7, expressing their desire to be present at the hearing and in fact no one was present on behalf of the Applicants at the hearing.

7. I have considered the submissions of Shri Daruwalla and have gone through the records. The presence of the word `SOCIETY' in the impugned label is evidently objectionable in view of the Opponents' prior registration and use in their registered trade mark `SOCIETY' for the allied and cognate goods. The Applicants have failed to furnish any explanation as to how the word `SOCIETY' has been adopted and used by them in the impugned label. The Applicants are claiming use of the word `SOCIETY' since the year 1971 but have not filed any supporting evidence in these proceedings. They were also not present at the hearing and no request on Form TM-7 was filed by them, expressing their desire to be present at the hearing. All these factors are nothing but points to the facts that they are not interested in prosecuting the impugned application-A ground for exercise of the discretion of this Tribunal adverse to them and the same is exercise accordingly by way of refusing the impugned application. Even otherwise the impugned mark is mandatorily prohibited for registration in terms of Section 11 of the Act. The Applicants have a

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lso failed to furnish any reasonable and plausible explanation as to how and why they have adopted the word `SOCIETY' in the impugned label. In view of these facts they cannot even claim the proprietary right in the word `SOCIETY' in the impugned label and the issue is decided accordingly. 8. In view of the foregoing, the Opposition No. CAL-59542 is allowed with costs and the Application No. 633470 in class 30 is refused registration. The Opponents are entitled to a costs of Rs. 1750/- (Rupees One Thousand Seven Hundred Fifty) only of these proceedings.
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