Court : Trademark
Reported in : (2005)(30)PTC188Reg
..... here, an inference can be easily drawn that the applicant for rectification has adopted the said trade mark in respect of their goods to encash the goodwill and reputation acquired by the registered proprietors' well known trade mark toshiba and determined as such under clause (1) of sub-section (6) of section 11 of the trade marks act, 1999.27. ..... appellate board by any person aggrieved on the ground either- (a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him or, in a case to which the provisions of section 46 apply, by the company concerned or the registered user, as the case may be, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the ..... that the mere non-user of a trade mark for the period mentioned in clause (a) of section 46(1) would make a trade mark liable to be taken off the register, it would result in great hardship and cause a large number of trade marks to be removed from the register because the moment one month has elapsed after the registration of a trade mark has been ordered, a trade rival can make an application on the ground set out in clause (a) of section 46(1) claiming that there has been no bona fide use of the mark up to a date one month before .....
Tag this Judgment!Court : Trademark
Reported in : (2005)(31)PTC275Reg
..... the objections raised in the notice of opposition come within the ambit of sections 9(1)(a), 9(2)(a), 11(1), 11(3) and 18(1) of the trade marks act, 1999 (hereinafter referred to as act). ..... that the applicants are not entitled to registration of the trade mark banzo as they are not honest and concurrent users within the meaning of section 12(3) of the act.7. ..... 591019 under the statutory of the trade marks act, 1999 the mark in question is entitled to the protection in the court of law. ..... section 11(1) of the act provides that subject to the provisions of section 12 of the act a trade mark shall not be registered if its identity with an earlier trade mark and similarity of goods or services covered by the trade mark or its similarity to an earlier trade mark and similarity of goods or services covered by the trade mark, because it is likely to cause confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. ..... of the same, there is no evidentiary value of evidence with regard to use under section 129 of the act, 1999 and as such, no reputation and goodwill of the mark can be assessed, whereas the applicants have adduced a cogent evidence stating advertisement and promotional expenses and annual sales of their goods under the mark runs into crores of rupees and established the use of the impugned trade mark claimed since the year 1988, because ultimately the onus is on the applicants .....
Tag this Judgment!Court : Trademark
Reported in : (2005)(31)PTC198Reg
..... the present case, the applicant has filed tm-16 within the provisions of section 22 of the trade marks act, 1999 and rule 41 to amend the user and expression in relation thereto. ..... advocate present at the hearing on behalf of the applicants submitted that after incorporation under the company law in the year 1998, the applicant company filed the impugned application for registration directly claiming the user since 1999 and has been continuously using the trade mark reliance on its goods since then. ..... section 22 with corresponding provisions of rule 41 deals with correction of an error or an amendment of an application for registration of trade mark whether before or after acceptance of the application but before the registration of the mark by way a request on form tm-16 with prescribed fee and the registrar is empowered to allow the said request until amendment sought amounts to be a substantial ..... registrar may, on such terms as he thinks just, at any time, whether before or after acceptance of an application for registration under section 18, permit the connection of any error in or in connection with the application or permit an amendment of the application." 5 ..... that rule 91 speaks about an application to be made by registered user and in the present matter, the applicant is not registered user. ..... pointed out that rule 97 provides for an application for correction of the register and this is not the case of correction of the register, but to amend the application for registration. .....
Tag this Judgment!Court : Trademark
Reported in : (2002)(24)PTC738Reg
..... and their products only; (iv) having regard to the established user and reputation associated with the opponents' trade marks, the use of the applicants mark will result in deception and confusion and, therefore, the impugned mark is prohibited under provisions of section 11(a) and 11(e) of the act; (v) that the impugned trade mark is neither adapted to distinguish nor capable of distinguishing the goods of the applicants and, therefore, the registration of the impugned mark is contrary to section 9 of the act; (vi) that the applicants have dishonestly and with mala ..... device of dog with the words his master's voice in its entirity and the adoption of the impugned mark is dishonest and they cannot claim to be proprietor of the trade mark within the meaning of section 18(1) of the act; (vii) that the registration of the trade mark applied for by the applicants will be contrary to sections 9, 11 and 18 (1) of the trade & merchandise marks act, 1958 ; and (viii) the opponents therefore seek that the registrar should exercise his discretion adversely to the applicants and refuse the ..... thus, the opponents by reason of their registered trade marks referred to above for a definite class of goods can claim exclusive right only to the use of trade mark in relation to those goods in respect of which the trade marks are registered, and not in respect of all classes and kinds of goods.24. ..... the evidence in reply is again by way of an affidavit dated 26.4.1999 of the aforesaid ian hanson. .....
Tag this Judgment!Court : Trademark
Reported in : (2002)(25)PTC694Reg
..... through different media and the superior quality of the goods sold under the trade mark elephant brand, great reputation and goodwill have accrued to the said trade mark; (v) having regard to the established user and reputation associated with the opponent's trade mark, the use of the impugned mark will result in deception and confusion and, therefore, the registration of the mark applied for will be contrary to the provisions of sections 11(a) and 11(e) of the act; (vi) that the mark sought to be registered by the applicants under application no. ..... 397696b consists of the device of an elephant is identical with/deceptively similar to the opponent's reputed and registered trade mark mentioned above; (vii) that the impugned mark is neither adapted to distinguish nor capable of distinguishing the goods of the applicants and, therefore, it fails to qualify for registration under section 9 of the act; (viii) that the applicants cannot claim to be proprietors of the trade mark within the meaning of section 18(1) of the act; and (ix) the registration of the impugned mark would be contrary to sections 9, 11(a), 11(e), 12(1), 18(1) and 18(4) of the trade & merchandise marks act, 1958.3. .....
Tag this Judgment!Court : Trademark
Reported in : (2003)(26)PTC284Reg
..... the opponent stated that the hon'ble high court of delhi has granted injunction against the applicant from using the trade mark duke in respect of electrical accessories and the opponent has also filed one complaint under section 81 of the act against the applicant for misrepresenting the trade mark as registered without having any registration in favour of the applicant. ..... further stated that the use of trade mark duke by the applicant in respect of similar description of goods for which the applicant is seeking registration shall cause confusion and deception as to the source of origin of goods and in case, if the trade mark applied for is allowed to be registered the same is likely to deceive or cause confusion in the minds of the purchasers keeping in view of the long use, reputation of the opponents goods under the registered trade mark duke in respect of similar description ..... court of bombay dismissed the appeal of the appellant and confirmed the order passed by the learned deputy registrar of trade marks wherein the application was refused considering the fact that the applicant is misrepresenting the trade mark as registered without securing registration in his favour and the learned deputy registrar of trade marks hold that the user of the mark was tainted with dishonest inspite the fact that the applicant admitted the same as honest mistake. ..... on 7,12.1999, the applicat filed their counter statement generally denying all the material allegations as contained in the .....
Tag this Judgment!Court : Trademark
Reported in : (2002)(25)PTC134Reg
..... have no case, yet they do not appear to be keen for registration of the impugned trade mark as they have neither attended the hearing fixed in respect of interlocutory petition as well as the final hearing and countered the arguments advanced by the learned advocate on behalf of the opponents, nor convinced this tribunal as to how and why the impugned trade mark is not deceptively similar to the opponents' registered trade mark and thus, they appear to have lost their interest in prosecuting the ..... as regards objection raised under section 11(e) of the act, in view of my findings that the impugned trade mark is deceptively and confusingly similar to the opponents' registered trade mark, and the adoption of the impugned trade mark is false and dishonest, the mark applied for is not entitled for protection in the court of ..... which is deceptively similar to the opponents' said registered trade mark and the goods in respect of which the impugned trade mark is sought to be registered are the same as those covered under the registration of the opponents' said trade mark. ..... that by reason of the use and reputation of the opponents' said registration, the use and registration of the impugned trade mark is likely to deceive or cause confusion among the pubic and trade and the mark is not registrable under section 11(a) of the act. ..... the evidence filed is not considered satisfactory so as to admit the applicants' claim for registration under section 12(3) of the act on honest concurrent user. .....
Tag this Judgment!Court : Trademark
Reported in : (2002)(24)PTC654Reg
..... mark applied for is almost identical to that of the opponents aforesaid registered trade marks, namely, toshiba and is in respect of the same or same description of goods in both the applications, namely, class 9 application and class 7 application, as that of the opponents goods under aforesaid registration, hence the registration of the mark applled for is also prohibited by operation of section 12(1) of the act ..... there appears to be a contradiction here between the legislative policy requiring "user" for trade mark protection against in infringement and the liberal approach extending protection to trade marks irrespective of user and abovesaid limitations in this country on the strength of reputation abroad hardly known in india excepting those who ..... the applicants filed evidence in support of their application by way of an affidavit dated 28th december, 1999 separately in both the cases in the name of shri d.p.suri, annexing therewith common exhibits separately running into 79 pages of the ..... applicants, not there is any request by the applicants for inspection of the originals of the exhibits in accordance with provisions of rule 57 of the rules.the perusal of the affidavit dated 28th december, 1999 filed by the applicants in the name of shri d.p. ..... del-9860 on 23.4.1999 by way of an affidavit dated 23rd april, 1999, both affidavits in the name of same debjeet gupta, constituted attorney of the opponents, annexing with both the affidavits the common exhibits, consisting of 427 .....
Tag this Judgment!Court : Trademark
Reported in : (2003)(26)PTC367Reg
..... section 12(1) of the act prohibits in specific terms, the registration of trade mark which is likely to deceive or cause confusion by virtue of similarity of trade marks already registered in the name of a different proprietor in respect of same goods or goods of the same description ..... as the applicants have claimed a meagre user and as on the date of application, the mark has been used for a short period of only one year and two months, the applicants are not entitled for registration under the provisions of section 12(3) of the act. ..... , the user, whatsoever claimed since 19.3.1981 by them has not been proved and thus, they totally failed to make out a prima facie case of registration under section 12(3) of the act. ..... it is well settled that when an opposition under section 11(a) is based on the alleged use and reputation of the opponents' trade mark, before the objection can be sustained, it is necessary for the opponents to establish a reputation in trade in connection with the said mark, before the tribunal or court will proceed to consider whether having regard to that reputation the possibility of confusion upon reasonable user of the mark applied for will arise as held in arthur fairest application (1951) 68 rfc 179 at page 207 ..... further, the user claimed by the applicants is not admitted by the opponents, in any case, alleged user is not bona fide as the adoption of the mark by the applicants is dishonest ab initio in view of prior adoption and use of their mark by the .....
Tag this Judgment!Court : Trademark
Reported in : (2006)(32)PTC225Reg
..... however keeping in view the use and reputation of the opponents' registered trade mark, the use of the impugned mark undoubtedly is likely to cause confusion and deception during the course of trade and hence prohibited for registration under section 11 of the act and the issue is decided accordingly. ..... the very adoption of the impugned mark under these circumstances by the applicant is nothing but a dishonest attempt on his part to trade and benefit from the goodwill and reputation already enjoyed by the opponents in their world famous trade mark and, therefore, he cannot claim its proprietary right and that the use of the same shall also cause deception and confusion during the course of trade and hence prohibited for registration under section 11 read with section 9 of the act. ..... lodged by the above named opponent objecting to the registration of the impugned mark on the following grounds :- that the opponents are in an established international business and dealing, manufacturing and merchandising of soft drinks, beverages, concentrates, syrups and food products as well as clothing accessories and are using a world famous trade mark 'pepsi' which enjoys an international reputation and goodwill including india and that they are the registered proprietors of the same in class 32 under nos ..... she stated that the word 'pepsi' is one of the world's best known brands and qualifies as a well-known trade under section 11(2) to section 11(10) under the new trade marks act, 1999. .....
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