Application for Rectification of Trade Mark Registry
Matter No
__________________
of 1999
In the High Court at Calcutta
Ordinary Original Civil Jurisdiction
In the Matter of Trade and
Merchandise
Marks Act 1958
And
In the Matter of an Application under
Sections 56 and 57 of the said Act for
rectification of Register of Trade Marks
And
In the Matter of Registered Trade Mark
No. 567 in Class 1 of AB Co. Ltd.
And
In the Matter of:
XY Co. Ltd. a company registered under
the Companies Act 1956 and having its
registered office at 5 White Road,
Calcutta
Petitioner
versus
AB Co. Ltd., a company registered under
the Companies Act 1956 having its
registered office at 3 A.K. Avenue, Mumbai
RC Co. Ltd., a company registered
under the Companies Act 1956 having its
registered office at 4 B.K. Avenue,
Calcutta
Registrar of Trade Marks having his
office at 15/1 Chowringhee Square,
Calcutta
The humble petition of the petitioner
above-named most respectfully
Sheweth:
1. Your petitioner is an aggrieved person by reasons of entries made in
the Register maintained by respondent No. 3 without sufficient cause as
also by an entry wrongfully remaining in the Register.
2. Your petitioner carries on business as a manufacturer of, dealer in
and exporter of Electronic goods and Computer articles both hardware and
software.
3. The first respondent is the registered proprietor of Trade Mark No. 10
in Class I in respect of Computer and Electronic articles.
4. The second respondent purports to be the licensee and permitted user
of the Registered Trade Mark UTILITY (hereinafter referred to as the
mark)
which is registered in the name of the first respondent.
5. The third respondent is the Registrar of Trade Marks having his
address as mentioned above within the jurisdiction of this Hon'ble Court.
6. Your petitioner in the year 1991 adopted the Trade Mark UNITY
hereinafter referred to as the petitioner's mark and the said adoption of the
said mark was without any knowledge of the first respondent's said mark
and has since been selling its products with the said mark UNITY.
7. Your petitioner's said mark has been used continuously and exclusively
in India and outside India since 1991 and has been widely advertised in the newspapers, journals and other publicity media and thereby it has acquired
the distinction of being the goods manufactured by your petitioner.
8.
Particulars of the newspapers, journals and other media in which the said advertisements appeared and the corresponding expenses incurred during
the last several years to popularise the products of your petitioner under
the said mark arc given in a schedule annexed hereto marked 'A'. A statement
of sales and the turnover of your petitioner's goods under the said mark are
annexed hereto marked 'B'.
9. Your petitioner made an application for registration of the said mark
in respect of the electronic goods described therein to the Trade Marks
Registry at Calcutta, the respondent No. 3. The said application was made
on 5th March 1996. The application was classified in Class I and was
numbered as 5. The application is pending registration at the Trade Marks
Registry, Calcutta. A copy of the said application with connected papers are
annexed hereto collectively marked as 'C.
10. Your petitioner was surprised to receive a cease and desist notice dated 2nd October 1997 from the Trade Mark lawyer of the first respondent calling
upon your petitioner to discontinue use of the Trade Mark UNITY and to
give an undertaking not to use the mark or any deceptively similar mark
thereto in future. Your petitioner through its Advocate's letter dated 20
th
October 1997 informed the first respondent as also the Trade Mark Lawyer
of the first respondent that the petitioner has been using the trade mark since last six years and that there has been a substantial expenditure in
making the petitioner's mark known to the general public by advertisement
and publicity. It was also stated that there was no confusion in mind of the public during the said period during which your petitioner used its mark in
the open market. It was further stated that the petitioner was using the
said mark honestly and
bona fide,
and that there was no
mala fide
intention
for utilising or trading on the goodwill or reputation, if any, of the respondent
Nos. 1 and 2. Your petitioner also specifically denied the other allegations
contained in the said notice.
11.
Without replying to the said letter of your petitioner, respondent
Nos. 1 and 2 filled a suit in the Madras High Court alleging infringement of
first respondent's said purported Trade Mark. The suit has been numbered
as 259 of 1997 and the suit is still pending before the said Hon'ble High
Court, A copy of the plaint filed in the Hon'ble Madras High Court is annexed
hereto marked 'D',
12. Your petitioner denies each and every allegation contained in the
plaint filed in the said suit at Madras. Your petitioner states that the goods sold by the respondents Nos. 1 and 2 under the first respondent's said mark were different in look and description from those of the petitioner's goods.
Further your petitioner honestly adopted and has been openly using the
said mark UNITY for the last six years and thereby your petitioner has acquired the right of concurrent registration of the mark UNITY under
s. 12(3) of the Trade and Merchandise Marks Act 1958.
13. The first respondent's registration of the mark in the records of the
Registry is in respect of a variety of goods. Many of such goods have not been marketed or sold or used in the Indian market for the last six years.
The first respondent's said mark is liable to be rectified by expunging or
deleting from the specification of the items covered by your petitioner's said
mark UNITY in accordance with the provisions of s. 16 of the said Act.
14. Your petitioner as stated above is a person aggrieved within the
meaning of s. 16 of the Trade and Merchandise Marks Act 1958 inasmuch
as your petitioner's said mark is pending registration at the Trade Marks
Registry. The first respondent has caused to be issued cease and desist notice
and also filed in the Hon'ble High Court at Madras the said suit wrongly
alleging infringement of the first respondent's said mark UTILITY.
15. Your petitioner states that the first respondent's said mark was
registered without any
bona fide
intention to use the same in respect of the
first respondent's goods for which the mark was registered. As a matter of
fact, there was no
bona fide
use of the said mark by the first respondent in
selling the goods upto a date of one month prior to the making of the present
application.
16. Prior to the date of this application for a continuous period of six
years there was no
bona fide
use of the first respondent's mark in relation
to the goods sold by your petitioner under the mark UNITY.
17. The second respondent the alleged user of the said mark of the first
respondent has also not used the said mark for any of the goods sold by the
petitioner under the mark UNITY. The second respondent is a Licensee
and not registered proprietor of the said mark of the first respondent. The
use of the mark UTILITY as alleged by second respondent cannot be the
use of respondent No. 1 within the meaning of s. 48(2) of the said Act.
During the last six years after registration of the mark of the first
respondent the said mark has not been used for any goods manufactured
by the first respondent.
18. In view of the aforesaid your petitioner states that the first respondent
obtained registration of the said mark UTILITY without any intention to
use it, either by itself or through respondent No. 2. Your petitioner states
that the first respondent's said mark is, therefore, liable to be and be removed
from the Register under s. 18 of the said Act.
19. Your petitioner states that by reasons of the aforesaid the registration
of the first respondent's said mark and the entry made in the Register by
respondent No. 3 have been without sufficient cause and the same are
unlawfully remaining on the Register. By reasons thereof the first
respondent's name and the said mark should be removed from the Register
and the Register should be suitably rectified.
20. The Trade Mark Registry of Calcutta is situated at the address given
in the Cause Title where all the records in relation to the first respondent's
Trade Marks are situated and are being maintained and as such this Hon'ble
Court has the jurisdiction to entertain, try and determine this petition.
21. Your petitioner is a person aggrieved by the entry made in the Register
of Trade Marks without sufficient cause as also by such entry wrongfully
remaining in the Register. Your petitioner states that the Register be rectified
by cancelling the first respondent's said mark or deleting from the said
mark of first respondent the goods dealt with by your petitioner.
22. Unless orders are made as prayed for herein your petitioner will
suffer irreparable loss and injury.
23. This petition is made
bona fide
and in the interest of justice.
24. Your petitioner, therefore, humbly prays Your Lordships
for the following orders:
Direction on respondent No. 3 to rectify the Register
of Trade Marks by expunging or cancelling the first
respondent's registered trade mark UTILITY being
No. 10 in Class I from the Register;
25. Alternatively, directions on respondent No. 3 to
amend and/or remove by deletion from the Register
of the goods covered by your petitioner's mark and
goods of similar and same description from the
specification of the goods included in the entry in
respect of the first respondent's Trade Mark No. 10
in Class I;
Alternatively direction on respondent No. 3 to
correct by deletion or striking out the goods covered
by the petitioner's mark UNITY and the goods of
similar description from the entry in respect of the
first respondent's Trade Mark No. 10 in Class I;
Costs of this application be paid by respondents
Nos. 1 and 2 to the petitioner;
Further orders be made and directions be given as
to this Hon'ble Court may deem fit and proper to
afford complete relief to your petitioner.
And your petitioner as in duty bound shall ever pray.
Name and address of the Advocate
Signature of
Petitioner
Verification
I,
son of
by occupation service, residing
at
do hereby solemnly affirm and say as follows:
I am the Constituted Attorney and a principal officer of the petitioner above-named. I know and I have made myself fully acquainted with the facts and circumstances of the case and am able to depose thereto. I have
due authority and competence to sign and verify this petition. I do declare
and say that the statements made in paragraphs 1 to 19 of the foregoing
petition are true to my knowledge based on information derived from records
maintained by the petitioner which I believe to be true and those mentioned
in paragraphs 20 and
11
hereinabove are my humble submissions to this
Hon'ble Court.
I sign this Verification at Court House in Calcutta on this 7th day of
November 1999.
Signed
Before me
Identified by.
Commissioner
Clerk of Advocate