Judgment:
1. The facts of that matter are that NIRMA CHEMICAL WORKS LIMITED, an Indian Company has been using the name Nirma in or about 1969 as both their corporate name & their principal brand under which they market their products. The products are exported to several countries worldwide. The company, CAMY SOAP & OIL COMPANY started trading in Malawi in the supply to the market of soap under the name NIRMA in 1996. The trademark was registered in 1998 under PART A, of the Trade Mark Act (Cap. 49:01) by CAMY SOAP C/o OIL COMPANY.2. NIRMA CHEMICAL WORKS LIMITED therefore, in this matter is seeking for expangement of the trademark No 77/98 from the register because the continued existence of the trademark in the register is interfering with the company's legitimate use of the trademarks NIRMA & NIMA, the subject of trademark application Nos. 274/99 and 275/99.
3. Having examined and considered the above facts and arguments advanced by NIRMA CHEMICAL WORKS LTD & CAMY SOAP & OIL LIMITED, I have observed that NIRMA CHEMICAL WORKS LTD evidence in support of their application is as follows: a. That 'NIRMA' is a word originally invented and conceived by M/S NIRMA CHEMICAL WORKS, the predecessors in title of the company in 1969.
b. That the registered proprietor had full knowledge of the trademark prior to its registration.
4. I will first address the assertion that 'NIRMA' is an invented word as such NIRMA CHEMICAL WORKS has exclusive right of use over it. CAMY SOAP COMPANY has submitted that the word 'NIRMA' is not an invented word but only refers to an Indian girl. I cannot speculate that I know the meaning of the word but to deal with this issue, I will be guided by the Trademarks Act and other authorities. Section 2 of the Trademark Act defines a trademark as a: 'Mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate a connection in the course of trade between the goods and some person having the right to either as proprietor or as registered user to the mark, whether with or without any indication of the identity of that person.' 5. The fundamental point in the definition is that the mark must be used in relation to goods so as to indicate a connection in the course of trade between the goods and some person who is proprietor of the mark or registered user of it. In this respect common sense can dictate that there is a connection between the name of the company that is NIRMA CHEMICAL WORKS LTD and the trademark 'Nirma'. This connection is crystal clear and I think any reasonable person will observe the connection.
6. In this case, I think it does not matter whether the word was invented or not. In the case of Eastman Photographic Materials Company Limited's Application (1898) AC 571, a House of Lords decision, Lord Hershel had this to say: 'I do not think the quantum of invention is at all material - An invented word is allowed to be registered as a trademark, not as a reward of merit, but because its registration deprives no member of the community of the rights which he possesses to use the existing vocabulary as he pleases. It may, doubt sometimes be difficult to determine whether a word is an invented word or not. I do not think that as foreign word is an invented word simply because it has not been current in our language.' 7. The registered proprietor, therefore in this case were supposed to prove that the use of the trademark 'Nirma' by NIRMA CHEMICAL WORKS deprives them of the use of the word in such a way that they also has the right to use the word. The registered proprietor did not produce evidence or the reason why the name 'Nirma' should not be exclusively used by NIRMA CHEMICAL WORKS. No evidence has been submitted as to the uniqueness of the Indian girl they claim is the owner of the word 'Nirma'. Going further, the registered proprietor did not present the reason why he chose to use this word apart from all the names in India and he has not deduced the reason why every Indian citizen is entitled to use the word.
8. The contention advanced by the applicant that the registered proprietor had full knowledge of the trademark before registering it in 1998 is another important point which need to be examined. Mr. Gaffar has denied any knowledge of the trademark prior to registration of the trademark No. 77/98. But I think the fact that the trademark 'Nirma' has been a household name in India since 1969 and that Mr. Gaffar is an Indian rational who only left India in 1984 should be taken into account. The mark has been advertised in Newspapers and TV stations in India and in directories which were sent all over the world. The applicant has firmly established that their trademark transcends terminal boarders both in sales and advertisement. I can also take JUDICIAL NOTICE of fair population of Asian Community in Malawi. I am not trying to impute knowledge of the trademark on Mr. Gaffar prior to the registration of trademark No. 77/98 but the above facts could act as guidelines.
9. In the case of Jolen Inc. v. Doctor and Co., 2002 (25) PTC 29 : 2002 (3) RAJ 241 (Del) the Supreme Court stated that advertisement in other countries is sufficient if the trademark has established its reputation and goodwill in the country of its origin and in countries where it is registered. That even the advertisement of a trademark without existence of goods in the market is also to be considered as use of the trademark.
10. Business persons involved in the same trade I think have knowledge of each other. I do not think that I will be wrong considering the above facts to conclude that Mr. Gaffar had knowledge of the trademark prior to registration of the trademark No. 77/98.
11. The argument that the trademark NIRMA is registered or pending in other countries is not pervasive enough as this is not a convention application. It is a local application. Malawi is a country unfortunately is a member state to only a few treaties on intellectual property hence it is very difficult for foreign manufacturers to protect their trademarks. But this should not promote infringement of other people's trademarks as reputation and goodwill in matters of Trademarks are not built in a day, they are built over a period of time and by reason of the huge cost, incurred by advertisement. Therefore, these trademarks should be protected at all cost. Therefore, in this respect the argument by Mr. Gaffar that he has the exclusive right to use the trademark here in Malawi cannot be supported.
12. Finally Section 37(1) of the Trademarks Act empowers the Registrar of Trademarks to order the expangement of a trademark from the Registrar on one or more of several grounds including that it is an entry made in the register without sufficient cause or is an entry wrongly remaining on the register.
13. Therefore, in this case, my opinion is that the trademark No. 77/98 should be expunged from the register as it is an entry made without sufficient cause. As this has been a fair tussle, each party should bear their own costs.