(CIRCUIT BENCH SITTING AT DELHI)
ORDER (No.8 of 2012)
Prabha Sridevan, Chairman:
1. This application is for the removal of the trademark POPS No 507137 in class 30.
2. The applicants are the proprietor of the marks POPS under Nos. 342674, 342675, 342676 in classes 30, 29 and 30 respectively. They are all old marks and are valid and subsisting. They have established a reputation goodwill and name under the above mark for their goods, being Chewing Gum, Bubble Gum, Dairy Products. If this mark is used in relation to above goods and/or cognate goods public is likely to think that those goods are the applicant’s.
3. The applicant has spent a great deal on advertisement and publicity. The applicant received a registered notice from the respondent’s counsel dated 25.11.2000 claiming to be the proprietors of trademark POPS in relation to cereal derived breakfast food and of their intention to oppose the applicant’s registration, and that they would settle the matter if the applicant restricted its goods to specified goods. To this the applicant gave a reply seeking the full particulars of the registration. A month later the respondent gave a reply.
The applicant sought rectification of the mark.
4. The respondent denied all the averments. The applicant has not proved its user to show the continuous user of the mark POPS. The respondent had adopted the impugned mark in 1941 internationally, and has gained immense reputation and good will. The applicant cannot be said to be aggrieved because if at all there is use by the applicant it is restricted to Chewing Gums and Bubble Gums. The respondent is the proprietor of the marks CORN POPS-638273, COCO POPS-758864, SNAP, CRACKLE, POP-345988, POP-TARTS-516460. The respondent’s mark has acquired substantial goodwill and it has been used since 1941. The respondent had taken all the factors into consideration, and had offered to settle the dispute. The respondent’s mark though not in use here has acquired transborder reputation due to Indians travelling to international destination
5. The learned counsel for the applicant submitted that though he had not received specific instructions from the applicant, the respondents have not made any use of the mark nor do they have any bonafide intention to use. He submitted that though the mark of the applicant has been registered for Chewing Gum and Bubble Gum and respondents mark is for Cereals, they are all bought across the country through the same trade channel and by the same class of customers and children especially would be inclined to buy POPS Cereals thinking that the mark belongs to the manufacturer of Bubble Gum and Chewing Gum with whom they are familiar. The learned counsel submitted that there is absolutely no evidence of use.
6. The learned counsel for the respondent strenuously urged that Kelloggs, the respondent have such a formidable international reputation, on the basis of parallel reputation and transborder goodwill. She submitted that no one would mistake the respondent’s products to belong to the applicant and in any event the respondent goods are totally different from the goods covered by the applicant’s trade mark and the applicant has produced no evidence of sale of goods which are similar to the respondent goods. The application is not bonafide and deserves to be dismissed.
7. As regards Non-user the leaned counsel for the respondent cited several decisions.
In TRA/25-27/2003/TM/CH - Jupiter Infosys Limited vs. Infosys Technologies Limited dated 19.9.2011. This Board had cited American Home Products case 1986 1 SCC 465 to show how non-user should be viewed, and that in the present day world of commerce and industry a manufacturing industry can neither be commenced nor established over night. The leaned counsel earnestly urged that the respondent has every intention to commence using the mark in India.
In Ahuja’s Intellectual property Cases Vol 1995 p. 30 - Revlon vs. Rajendra Kumar Dhawan the Hon’ble Calcutta High Court had held that the initial onus of proving non-user is to be established by applicant for rectification through cogent evidence. The learned counsel for the respondent submitted that the applicant had not produced any evidence to prove non-user.
In ORA 216-217/2008/TM/CH - Kamat Hotels (India) Limited vs. Royal Orchid Hotels Limited - this Board had held that law requires proof of both no bonafide intention to use and no bonafide use. The learned counsel submitted that this has not been proved by the applicant.
In ORA/108/2006/TM/CH - Nitin P. Jain Vs. Titan Industries Limited was relied for the same purpose.
2002 (25) PTC 198 (Del) (DB) High Court of Delhi – Osram Gesellschaft Mit Beschrankter Haftung Vs. Shyam Sunder & Ors.was cited for the purpose as a matter of fact a registered trade mark holder cannot in law claim exclusive monopoly rights for its trade mark as extended to goods of all descriptions falling within the same class in which its sole and solitary product falls. ' If that is permitted then it would tantamount to preventing the other traders and manufacturers to get registered their distinctive articles which also fall under the same class of general classification. Appellant’s trade mark in class 11 no doubt has been used on a large scale but for electric lamps only. But as already pointed out above the electric lamps by no stretch of imagination can be equated with room heaters, hot air circulators, domestic backing ovens, fans etc. nor these can fall in the same category of goods. Moreover, respondent’s goods in class 11 are not marketed through a common trade channel. Those goods which the respondent wants to get registered in class 11 are marketed as distinct articles of use in different manner. In common trade channels such articles are not only held different and distinct articles but are marketed separately.'
In AIR 1974 Delhi 40 (V 61 C 10) – Nestle’s Products Limited and Ors Vs. M/s. Milkmade Corporation and Anr. it was held 'that the defendant’s goods are dealing in biscuits and toffees which are not produced by the plaintiffs and so there was no likelihood of confusion. According to the learned counsel for the respondent the applicants are engaged only in manufacturing bubble gums and chewing gums and not cereal based foods and therefore they cannot seek rectification.'
In MIPR 2008 (2) 0384 the Hon’ble Delhi High Court – M/s. Mare Enterprises Pvt. Ltd., Vs. M/s. Five Star Electricals (India) and Anr. held that 'if a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and has no bonafide intention to trade in or manufacture or articles which also falls under the said broad classification, he should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification. Further, he could not preclude other traders or manufacturers to get registration or separate and distinct goods which may also be grouped under the broad classification. Therefore, no case is made out for issuing injunction either against the Plaintiff or against the Defendants from using the trade mark/logo MARC.'
In 2003 (27) PTC 241(SC) – Hardie Trading Limited and Anr. Vs. Addisons Paint and Chemicals Limtied - the Hon’ble Supreme Court dealt with the approach to be adopted in cases of rectification on the grounds of non-use and that there was 'no reason to limit the user to use on the goods or to sale of goods bearing the trademark'.
In 1997 4 SCC 201 Vishnudas Trading as Vishnadas Kishendas Vs. Vazir Sultan Tobacco Co. Limited, Hyderabad and Anr. - the Hon’ble Supreme court held that 'If trader or manufacturer actually trading in or manufacturing only one or some of the articles or goods under a trade mark and has no bonafide intention to trade in or manufacture the other articles or goods falling under that class but has obtained registration of its trade mark under that class which covers several other articles or goods, held, registration liable to be rectified by confining it to the specific articles or goods which are actually intended to be traded in or manufactured.'
8. The applicant has produced documents to show sale of POPS Chewing Gum and POPS Dubble Bubble Gum from 1987 and the supply is to dealers all over the country like Cuttack, Belgaum, Dimapur in Assam, Asansol in West Bengal, Ranchi, Dehradun, Mangalore, Secunderabad, Kanpur, Bhutan, Varanasi, Allahabad, Jabalpur, Nasik, Pune, Arunachal Pradesh, Coimbatore, Delhi etc. So we may justifiably conclude POPS Chewing Gum and Double Bubble Gum are sold across the country.
9. There is absolutely no evidence of sale/use by the respondent and the respondent’s counsel submitted that they have every intention to use and that is why relevance was placed on American Home Products where it is held that manufacture and commencement of business cannot happen over night.
10. The Supreme Court has held inMilment Oftho Industries case, 2004 (28) PTC 585 (SC)
'The Court has to keep in mind the possibility that with the passage of time, some conflict may occur between the use of the mark by the Applicant in India and the user by the overseas company. The Court must ensure that public interest is in no way imperilled……
However, one note of caution must be expressed. Multinational corporations, who have no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian Company by not permitting it to sell a product in India, if the Indian Company has genuinely adopted the mark and developed the product and is first in the market. Thus, the ultimate test should be who is first in the market.'
11. We accept that business cannot be started over night and we cannot also take a view different from the settled position of law that the person who alleges non user should prove non user. But in this case, the counsel for the applicant admits that till date the mark has not been used and when the mark is 'proposed to be used' mark, we do not think that the applicants need to prove a case which stands proved by admission. The mark was applied 16th march 1989 as 'proposed to be used'. It was published on 1st July 1994 and till date ie. from 1989 till date there is not one evidence of use. On the contrary, it is admitted that they intend to use. The fact that they are registered in other countries is not relevant for us. Even the judgments relied on by the respondent are that industries cannot be started over night cannot be applied. The respondent claims that it is breakfast giant in the world and if right from 1989 to 2011 ie. for almost 22 years there is no evidence of use and it can only mean that there is no bonafide intention to use. There is not even any correspondence to show that there has been some attempt to commence use of the mark in I
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ndia. 22 years is a long time and it speaks for itself that there has been no bonafide intention to use. We cannot brush aside the contention of the applicant that though Bubble Gum and Cereal may not be goods coming under the same class, they are all goods sold in super market and the possibility of confusion cannot be ruled out. In any event, the respondent who has not used the mark nor demonstrated a bonafide intention for 2 years, cannot insist on the mark remaining on the register. The mark was registered in 1995. The application for rectification was filed on January 2001 after a lapse 5 years and 1 month during which period there was no user. In short, a) the respondent applied for registration of their mark in 1989 as proposed to be used mark and has not used it till date. b) There is no evidence of sale in the country from 1989 to 2011, the respondent has neither used nor shown any evidence of commencing the business. c) when the respondent itself admits that the mark has not been used then the question of proof of non user is unnecessary. 12. For above reasons, we find that the mark deserves to be removed from the register and accordingly TRA/159/2004/TM/DEL is allowed.