In the case of Shyam Traders v Spatial Commercial (P)
Ltd. an application for the removal of a trade mark had been
filed to stay/ restrain the effect and operation of the registered
trademark during the pendency of the rectification application.
M/s Shyam Traders (Applicant) carried on their business of
manufacture and trade of pan masala and tobacco mixed pan masala
(Gutkha), under the registered trade mark 'SHYAM BAHAR',
and on account of it's prior adoption and continuous use by
them the Applicants were the proprietors of the said mark.
It was alleged that Spatial Commercial (Respondent) had adopted
the impugned trade mark 'SHYAM BAHAR' which was
identical and deceptively similar to that of the Applicant's
trade mark. Further, that the registration of the trade mark
'SHYAM BAHAR' by the Respondents had been secured by
mala fide intentions and by playing fraud upon the
registrar of Trade Marks.
In this regard the Intellectual Property Appellate Board (IPAB)
in its Order cited that the registration granted to the respondent
ought to be removed under the following grounds:
Because the respondent's adoption was dishonest and that
the applicants were proprietors of the identical trade mark on the
date of application for registration of the impugned trade
Because the impugned trade mark would have caused confusion and
deception, as the rival marks were deceptively similar.
Because the impugned trade mark had not acquired any
Because the impugned registration was contrary to the
provisions of sections 9,11 and 18 of the Act.
Because the impugned mark did not have any user at the time of
filing of the application for registration.
Because the impugned mark was on the Register without
sufficient cause and was wrongly remaining in the Register.
Because it was in the interest of the purity of the Register
that the impugned trade mark be removed.
Because there was no special circumstances or any other reason
which was in favour of the respondent.
Because the applicant was a person aggrieved and could maintain
The Respondent contented that the Applicant was not a person
aggrieved within the meaning of provisions of the Act, and had
filed the application out of business jealousy and for the purpose
of harassing the Respondent. The respondent further relied on the
grounds of rectification and stated that the contents made in the
grounds were frivolous. The claim of adoption and use since 1986
was wrong, for the Applicant had concealed the fact that the
opposition proceedings were pending as regards the registrations
relied on by the applicant.
It was contended on behalf of the Applicant that registration
for the impugned trade mark was made in the year 2003 claiming user
since 1985 for which no proof had been filed and that the defendant
had obtained the impugned registration by fraud. Further, the
Applicant had filed a suit in the year 1998 where a compromise was
entered into between the parties where the Defendant had given up
the rights of the impugned trade mark and admitted the
Applicant's proprietorship. By this compromise made and the
deed of assignment entered into in 2003 the trade mark 'SHYAM
BAHAR' was assigned by S.S Trading in favour of M/s Spatial
Commercial Private Limited.
The IPAB observed that the main issue for consideration was to
see whether the applicant was a person aggrieved and had locus
standi to file and maintain an application for rectification.
The Board opined that the Applicant was a person aggrieved since he
was engaged in the same trade as the respondent and was likely to
be injured in his trade by the registration complained of. With
regard to the allegation that respondent had obtained registration
by playing fraud, it was noted that when S.S Trading had given up
their right in the trade mark as early as 1999, they could not have
assigned in the year 2003. Only if the assignor had a right in the
mark, the assignee i.e. the present respondent could have claimed
user since 1985 as a subsequent proprietor.
It was thus held that having given up the right in the trade
mark, S.S Trading had no right to assign the trade mark in favour
of the Respondent. The respondent coming to know of the fact that
the assignor had given up their right could not have proceeded with
the application for registration. The Respondent had, therefore,
played fraud on the registrar in obtaining the registration. The
impugned mark was thus wrongly remaining on the Register without
sufficient cause and had to be cancelled.
The Board accordingly directed the Registrar of Trade Marks to
remove/cancel the trade mark 'SHYAM BAHAR' from the
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