The Intellectual Property Appellate Board recently removed a
trade mark that was deceptively similar to KHYBER RESTAURANT
(stylized) in a trade mark rectification filed by partnership firm
Khyber Restaurants, Mumbai in a case titled Sudheer Bahl V Khyber
Restaurant & Anr ORS/119/2011/TM/AMD. In doing so, the Board
relied on evidence filed by both the parties to establish the
priority in use. The Board also observed that when the adoption of
the mark is not honest then any amount of user, if any, does not
entitle the party to have the benefit of concurrent user under
Section 12 of the Act.
Facts before the Board: The dispute
was regarding the exclusivity of use of the trade mark KHYBER
between two restaurants. The applicant claimed the use of trade
mark KHYBER and KHYBER RESTURANT for restaurant services since the
year 1958 and had obtained registrations for the trade marks in
classes 42, 33, 32 and 16 while the Respondent started the business
under the name and style of Khyber Restaurant and Khyber in the
year 1975. The Respondent claimed that they are the honest and
bonafide users of the trade mark and with such a long usage since
1975, they are entitled for the benefit under Section 12 (honest
concurrent use) of the Act. The real test before the Board was to
see if the applicant would be injured by the presence of the
impugned trade mark.
Decision of the Board: The Board
deciding in favour of the applicant concluded that:
(a) The impugned application was advertised on 30.05.2005 and
the Respondents on 24.05.205 filed a request on Form TM-16 for
recoding their statement as to restricting their sales to the city
of Surat. This TM-16 has not been considered by the authorities
before issuing the certificate. If this was and has been
considered, the trade mark ought to have been advertised.
(b) With respect to use of the marks, the Respondent filed
various documents rental receipts, certificate of firm
registration, medical certificate of employees, sales tax receipt
etc. The Board held that the mere filing of these documents does
not prove the commercial use of the trade mark impugned. There was
no evidence in the invoice/bill to prove use since the year 1975
and therefore held that the mark is liable to be rectified.
(3) The Respondents have failed to prove their use of the mark
since 1975 and therefore mark is liable to rectified.
(4) The Respondent failed to provide the reason for adoption of
the mark. The Board held that when the adoption of the mark is not
honest then any amount of user if any does not entitle the party to
have the benefit of concurrent user under Section 12 of the Act. In
the instant case, there is no proof of the use, the ground of
concurrent use fails.
The reasoning provided by the Board is consistent with the
various other matters wherein it was held that if the applicant had
obtained the registration by wrong statement of use, the mark
should go out of the Register. Lately, the decisions of the
Intellectual Property Appellate Board have been highlighting on
establishing 'User' of a mark as claimed in deciding
rectification petitions and the stand of the Board is very clear
that the rectification petitions are allowable against the
registered proprietor if the registered proprietor is not able to
prove the actual use as claimed of registered trademark for the
goods for which the said mark is registered. Therefore, it becomes
significant for trade mark owners to maintain a brand diary
comprising evidence of use of the mark in a strict commercial
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
Department of Industrial Policy and Promotion recently issued an office memorandum pursuant to receiving representations from various stakeholders for guidance with respect to the applicability of the provisions of Section 31D of the Copyright Act, 1957.
An Invention Disclosure Form is the documentation of the invention. This is a means to document particulars of your invention and submitting it to the patent attorney who is filing your patent application.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).