At, Intellectual Property Appellate Board
By, THE HONOURABLE MR. JUSTICE K.N. BASHA
By, CHAIRMAN & THE HONOURABLE MR. SANJEEV KUMAR CHASWAL
By, TECHNICAL MEMBER
For the Applicant: Kewal Kishore Arora, Advocate. For the Respondent: None.
(CIRCUIT SITTING AT DELHI)
ORDER (No.158 of 2015)
K.N. Basha, Chairman:
This application is filed for the removal of trade mark BHANGRA TOP under registration No.1333138 in Class 29 registered in the name of respondent.
2. Mr. Kewal Kishore Arora, the learned counsel for the applicant is present today. The respondent in respect of serving notice neither appeared in person nor through any advocate. It is pertinent to note that the ORA itself was filed as early as in the year 2009 and the verification of the records of the registry reveals that the earlier notice was sent on 6/1/2009 itself but till date the first respondent has not raised his little finger either to appear or to file the counter statement. Therefore, we are constrained to proceed with the matter on merits.
3. The applicant has come forward with this application seeking for the relief of rectification of the impugned trade mark registered under No.1333138 trade mark ‘BHANGRA TOP’ in Class 29.
4. The case of the applicant is that they are the registered proprietor of the trade mark BHANGRA in class 29 and also the subsequent proprietor of registered trade mark Bhangra Brand in class 29 dealing in Mustered oil and other Edible Oils, Fats and Oil Khal right from the year 01/10/1998. The said trade mark was conceived and adopted by the predecessor of the applicant 23 years back. The said registration of the trade mark Bhangra Brand and its use and also the subsequent proprietorship of the applicant was well known to the respondent herein. The said trade mark is a well known trade mark also having transborder reputation. The applicant has the proprietor of trade mark of Bhangra Brand under registration No.441699 in Class 29 relating to the goods Mustered Oil and under the trade mark Bhangra under registered No.0355874 in class 29 relating to the goods in Mustered and other Edible oils for the last several years. The applicant also produced the certificates of basic registration of their trade mark along with their application and they have also produced the sales bills to establish their turn over. It is stated that the very adoption of the impugned trade mark by the respondent is tainted with dishonestly and the same is wrongly registered and wrongly remaining on the register on the trade marks. The respondent is adopted the trade mark with the motive of trading and trampling upon the hard and goodwill of the reputation of the applicant. The respondent has no bonafide intention to use the trade mark.
5. The applicant claimed that the impugned trade mark ‘Bhangra Top’ of the first respondent is phonetically, visually identical and deceptively similar to that of the registered trade mark viz. Bhangra Brand and Bhangra also. Therefore, it is prayed that the impugned trade mark is liable to the rectified and removed from the register.
6. The learned counsel for the applicant would contend that the pleadings and averments stated in the application have not been denied by the filing any counter till date by the respondent herein. It is contended that the applicant has established their reputation and continuous use of their trade mark Bhangra Brand and Bhangra for more than 23 years. It is pointed out they have also produce the sufficient record to establish their business and their goodwill and reputation. The learned counsel would point out that the impugned trade mark Bhangra Top is phonetically, visually similar to that of the trade mark Bhangra Brand and Bhangra as such the same is liable to be removed or rectified on the ground of deceptive similarity. It is further contended that both the trade marks of the applicant and the respondent are registered under the same class 29 in respect of the same goods viz. Mustered Oil and Edible Oil etc.
7. We have given our careful consideration to the contentions put forward by the learned counsel for the applicant and perused the entire materials available on record.
8. The fact remains that inspite of serving notice to the respondent as early as in the year 2009 and even in respect of today’s hearing and as well as earlier hearing dated 24/03/2015, the respondent has not shown any interest in pursuing this matter not even appearing or engaging the counsel to represent and they have not filed any counter to dispute the specific pleas of prior adoption, continuous use and the alleged deceptive similarity in respect of the trade mark and as well as in respect of the goods as claimed by the applicant till date.
9. The crux of the question involved in this matter is whether the impugned trade mark Bhangra Top is similar and identical to the registered trade marks of the applicant viz. Bhangra Brand and Bhangra.
10. The perusal of the materials available on record and as well as the certificates of registration makes it crystal clear that the impugned trade mark of the respondent viz. Bhangra Top is visually and phonetically similar to that of the applicant’s registered trade marks Bhangra Brand and Bhangra and both the trade marks have been registered under Class 29 in respect of the similar goods viz. Mustered Oil and Edible Oil etc. Therefore, we have no hesitation to hold that allowing the impugned trade mark to remain in the register would certainly lead to chaos and confusion among the consumers as even the consumers are also be the same.
11. It is pertinent to note that the applicant has established that they are the prior adopter and user and they got the registration of their trade mark Bhangra Brand and Bhangra as early as in the year 1985 and whereas the impugned trade mark Bhangra Top was registered by the respondent only in the year 2006 and the application was filed in the year 2005. It is not seen whether the respondent has sought for search as a contemplated under Rule 37(2) of the Trade Marks Rules, 2002 and if there was a search it could have been very well revealed about the earlier registration of the applicant’s trade mark. We have no hesitation to hold that in the instant matter that there is a flagrant violation of the mandatory provision under Rule 37(2) of the Trade Marks Rules, 2002 which reads hereunder.
37. Acknowledgement and Search. – (2) Upon receipt of the application for registration of trade mark, the Registrar shall cause a search to be made amongst the registered trade marks and amongst the pending applications for the purpose of
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ascertaining whether there are on record in respect of the same goods or services or similar goods or services any mark identical with or deceptively similar to the mark sought to be registered and the Registrar may cause the search to be renewed at any time before the acceptance of the application but shall not be bound to do so. 12. In view of the aforesaid reasons, the Rectification Application No.ORA/1/2009/TM/DEL is allowed. Consequently the Registrar of Trade Marks, New Delhi is directed to remove the trademark BHANGRA TOP from the register under registration No.1333138 in Class 29 registered in the name of respondent within a period of six weeks from the date of receipt of the order copy of this Bench.