Honble Shri Z.S. Negi, Chairman:
The applicant has filed the above two rectification applications seeking removal of trade marks âRALLIS + Snake Device under No.195300 and 195299, respectively, from the register of trade marks or rectification of the register under section 47/57 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
2. The applicant, a proprietorship company, is engaged in an old and established business of manufacturers and merchant of all varieties of electric fans since October, 1999. The applicant is an ISO 9001:2000 certified company and the quality of its products is beyond reproach and it is the registered proprietor of the trade mark âRALLY, written in a special and peculiar manner, under No.1213190 in class 11 in respect of fans for sale in South India. It is stated that the registered trade mark of the applicant is the subject matter of the rectification proceedings, being ORA/105/2006/TM/CH filed by the respondent No.2 herein, for the removal of the applicants aforesaid trade mark from the register of trade marks. The applicant requests in the present application that the facts and matters stated in the aforesaid rectification proceedings in support of the applicants registered trade mark may be considered as part and parcel of the present application as if the same are specifically set out herein. It further requests that the evidence in support of the applicants registered trade mark in the aforesaid proceedings be considered for the purposes of the present proceedings also. The applicant is stated to be defending suit C.S. No.293 of 2006 instituted by Rallifan Limited and Rallifan Power Appliances Private Limited before the High Court of Calcutta. The said suit is instituted by the plaintiff claiming to be the assignee of respondent No.1 in the business relating to manufacture and sale of electrical fans. Respondent No.2 in both the aforesaid proceedings has sought to rely upon, inter alia, the subsistence and validity of the impugned registered trade mark. The applicant is, therefore, a person aggrieved within the meaning of sections 47 and 57 of the Act and has locus standi to institute the present proceedings.
3. The applicant has sought for the removal / expunction/rectification of the trade mark on the grounds, inter alia, that the impugned registered mark is the corporate name of respondent No.1 and the alleged business, i.e. , electric fan, carried on by the respondent No.2 is under a wholly different trade mark, that is to say RALLIFAN. Respondent No.1 ought to have been fully aware of the fact that the impugned registered trade mark has never been used in relation to the goods and as such the impugned mark was registered with no bonafide intention to use the same in relation to goods for which registration was obtained. Further more, there has in fact been no bonafide use of the impugned trade mark in relation to goods by the respondent No.1 or another party. It is claimed that the respondent No.2 have, subsequent to the transfer of the relevant business from respondent No.1 to respondent No.2, abandoned the impugned registered trade mark. The respondent No.1 has purportedly transferred the relevant business in the year 1992 and as such a continuous period of 15 years have admittedly elapsed during which period there has been no bondafide or otherwise use of the impugned registered trade mark. The impugned trade mark continues to be a source of confusion, apart from being a tool for deception, oppression and harassment. Notwithstanding the fact that the mark has never been used or has been abandoned, the impugned registration thereof is being relied upon by the parties, other than the registered proprietor with a view to stifle the competition and to engage in unfairly competitive trade practices in the market. Therefore, the impugned entry is wrongly remaining on the Register and the same is liable to be expunged. Furthermore, from Annexure C-1(which is on the record) it is evident that there are several restrictions for the mark RALLIS in class 11 and the impugned registration has become a source of confusion and the impugned registration has lost the entitlement to remain on the Register.
4. The copies of rectification applications and notice for filing their counter-statements were sent to the respondents on 17.07.2007 and the same have been received by the respondents, including the respondent No.1, on 25.07.2007 but no counter-statement has so far been filed by the respondent No.1. However, respondent No.2 has filed a memo stating that the respondent No.2 is not the proprietor of the impugned mark and the rectification applications deserve to be dismissed without prejudice to the rights and contentions of respondent No.2 as the impugned mark is not valid and subsisting because the impugned mark has not been renewal and has been removed from the register. It is further stated that there is no cause of action for filing the rectification application and we pray that the rectification application be dismissed in limnie as not maintainable and infructuous. Under the above circumstances, it is further submitted that nothing survives for determining by this Appellate Board in the instant rectification application and hence it is humbly prayed that this Appellate Board may be pleased to dismiss this rectification application and thereby render justice.
5. We have heard both the learned counsel for the applicant and the respondent No.2. There is no representation from the respondent No.1. The respondent No.1 has neither filed the counter-statement nor has represented at any of the hearings so far fixed by this Appellate Board. In the hearing on 28.7.2008 when the M.P.Nos. 19 and 20/2008 came up for hearing, there was no representation from respondent No.1 and the counsel for the applicant urged this Appellate Board on a number of grounds to allow the rectification applications, but this Appellate Board declined to allow the rectification applications on the ground that without affording another opportunity to the respondent No.1, especially when memo is filed on behalf of respondent No.2 and the mater was again posted for hearing on 11.08.2009. On 11.08.2009 the counsel for applicant and counsel for respondent No.2 were present and as usual there was no representation from respondent No.1. Having the circumstances in view, we have heard the matter exparte.
6. Having heard both the learned counsel; after going through the pleadings and having no interest shown by the respondent No.1, we are of the view that the impugned trade marks are not used and when a trade mark is not used for a long time in connection with any goods in respect of which registration is obtained the mark it loses its distinctiveness. It is averred that there has been no bona fide use of the impugned trade mark since the purported transfer of business in the year 1992. Notably the respondent No.2 has filed two memos both dated the 3rd day of October, 2007 submitting, amongst others, that the second respondent is not the proprietors of the impugned trade marks. The respondent No.2 has also averred in the memos that the rectification applications deserve to be dismissed since the marks are valid and subsisting as the impugned marks have not been renewed and have been removed from the register. On the other hand, the applicant in paragraph 4 of both the Statement of Case has stated that the impugned marks are currently subsisting on the register and in proof thereof furnished a copy each of a recent search report relating to trade mark No. 195300 and advertisement published in the Trade Marks Journal No. 282 dated 1.3.1961 and a copy each of a recent search report relating to trade mark No. 195299 and advertisement published in the Trade Marks Journal No. (not legible) dated 1.5.1962. In view of this, we are not prepared to accept the submission that the rectification applications be dismissed. Since the recent copies of search reports show that the trade marks are registered, the implication is that the trade marks are still subsisting. There is no rebuttal to the averments made by the applicant in the rectification applications, therefore, we are inclined to allow the rectification applications to preserve the purity of the register, which is in the public interest.
7. In view of the above, the rectifications applications are allowed and the Registrar of Trade Marks is directed to remove the trade marks registered under Nos.195300 and 195299, both in class 11, from the Register of Trade Marks. However, there shall be no order as to costs.