INTELLECTUAL PROPERTY APPELLATE BOARD
(CIRCUIT SITTING AT AHMEDABAD)
MONDAY, THIS THE 25th DAY OF JUNE, 2012
Hon’ble Ms.S. Usha … Vice Chairman
Hon’ble Shri V. Ravi … Technical Member
4/688, Nochipalayam Road
TIRUPUR-641605. … Applicant
(By Advocate: Shri Gurvinder Singh)
1. Kejriwal Yarns (P) Ltd.
3147, 3rd Floor
SURAT-395002. … Respondent No.1
2. Registrar of Trade Marks
Ahmedabad. … Respondent No.2
(By Advocate: None for R1)
Hon’ble Ms.S. Usha, Vice-Chairman:
Application for removal of the trade mark “CRYSTAL” registered under No.1213531 in Class 23 under the provisions of the Trade Marks Act, 1999 (‘Act’ in short).
2. The applicants herein are engaged in the business of manufacture and sale of variety of textile articles including ready made garments, hosiery, knitted under wears, knitted garments, sports wear, swimming wear, athletic wear etc. The applicant’s predecessor adopted the trade mark “CRYSTAL” in the year 1971 in respect of the above mentioned goods. They have been using the same continuously and extensively since then. The public and the trade identify the goods bearing the trade mark “CRYSTAL” as that of the applicant. The applicants have spent huge amount towards promotional expenses of their trade mark. The expenditure runs to several lakhs of rupees. The applicants are prior in adoption and by such long, continuous and extensive use their trade mark has acquired tremendous enviable and an unimpeachable reputation and goodwill amongst the public and trade.
3. The applicants trade mark being highly publicized has acquired a well known reputation in the minds of the public. The trade mark itself has become well known and as such the reputation accrued to the said trade mark is not only confined to the goods for which the applicant have made use of the said trade mark but also extends and spills over to all other goods including those that are cognate or allied in nature. The applicant’s trade mark has thus become highly distinctive of their goods.
4 The applicants have acquired statutory rights to the exclusive use by virtue of registrations granted under the provisions of the Trade Marks Act, 1999 (‘Act’ in short). The applicants have registered the trade mark “CRYSTAL” in various classes. As such they have registered the trade mark “CRYSTAL” along with the logo and device. The said registrations have been renewed and are subsisting as on date. The applicants have not only obtained trade mark registrations but have also obtained registrations of the artistic work under the Copyrights Act.
5. The applicants trade mark is a well known trade mark and the use by the respondent would amount to taking unfair advantage of or detrimental to the distinctive character of the applicant’s trade mark. Any purchaser is likely to wonder as if threads and yarns bearing the trade mark “CRYSTAL” have originated from the applicant’s source of manufacture. The goods in which the applicant deals cannot be manufactured without yarns and threads. The impugned registration under No.1213531 in Class 23 has been obtained dishonestly, malafidely and in bad faith. The impugned registration is likely to cause confusion and deception. The impugned registration has been wrongly obtained and is wrongly remaining in the register without sufficient cause. The registration is in violation of the principles of law, equity and good conscience. The impugned registration is in contravention of the provisions of Section 9,11 and 18 of the Act. The respondents have never used the trade mark and as such the registration has been wrongly obtained and wrongly remaining on the register. The trade mark has not been used up to the date of three months prior to the date of the institution of the present proceedings. The registration has been obtained by playing fraud. The registration has been obtained by concealing the material facts and by making misrepresentation before the Registrar.
6. We have heard the learned Counsel for the applicant. In spite of service of the notice, the respondent was not present in the earlier occasion and for today’s hearing. The respondent was therefore set ex parte and we heard the applicant.
7. The learned Counsel for the applicant submitted that the applicant adopted and used the trade mark “CRYSTAL” since the year 1971. The applicants are the registered proprietors of the trade mark both word mark and device mark. They are the proprietors of the artistic work. The applicants are engaged in the business of manufacturing and selling various textile articles. The applicants have given their sales figures which runs to several lakhs of rupees.
8. The Counsel further submitted that the impugned application has been filed on 11.07.2003 claiming user since 16.03.1998. The respondents have not filed their counter statement denying the applicants use nor have they filed any evidence of their user at least since 1998. The respondent’s trade mark is neither distinctive nor capable of being distinguished and therefore is in contravention of the provisions of Section 9 of the Act. The respondent has obtained registration in bad faith. The respondent has not used the trade mark and the mark therefore deserves to be removed for non-use.
9. The applicants being the prior user of the trade mark is aggrieved by the registration of an identical trade mark for identical goods.
10. We have considered the arguments and gone through the pleadings and documents carefully.
11. The Counsel relied on several judgments which we are not going into as we shall deal with the matter on the facts of the case.
12. The application for registration of the impugned trade mark has been filed on 11.07.2003 claiming user since 16.03.1998. The respondent though is aware of this proceedings has not filed any counter statement nor has appeared before this Board to prove their case. The respondents have not produced any evidence in proof of their use since 1998 as claimed in their application for registration.
13. The main ground of the rectification petition is that the respondents have not used the trade mark after registration. The respondents are aware of the proceedings and had in fact filed their reply to the Miscellaneous Petition No.61 of 2010 for substituted service. The respondents probably are not using the trade mark and that could be the reason for them not filing their counter statement as well for their non appearance.
14. The applicant’s trade mark “CRYSTAL” has been on the register since 1991 for identical goods even before the respondent adopted and used the trade mark. We therefore think that the impugned trade mark is wrongly remaining on the register.
15. Accordingly, ORA/204/2007/TM/AMD is allowed with a direction to the Registrar of Trade Marks to remove the trade mark “CRYSTAL” registered under No.1213531 in Class 23 from the register of Trade Marks. There shall be no order as to costs.
(V. Ravi) (S. Usha)
Technical Member Vice-Chairman
(This order is being published for present information and should not be taken as a certified copy issued by the Board.)