The basic facet of a trademark is to express the bondage of the product with the manufacturer/user of the mark. Registration of trademark is not an essential criterion but registration enables the registrant to file a suit for infringement where as non-registrant would be entitled only to a relief of passing off. The prominence is awarded to usage of the mark than to registration. It is an accepted fact that even two identical marks can co exists if bona fide usage for a period of time could be proved. Non-usage of the mark on the other hand, would lead to rectification of the marks.
This prominence awarded to usage of mark was reflected in the case Venkata Rama Rao Avvas & Others v. American Cyanamid Company & Ors. 2007 (34) PTC 282 (IPAB) wherein the Intellectual Property Appellate Board reiterated the importance of usage in order to sustain the trademark.
Facts of the Case
The first applicant claims to have adopted the mark ‘AGRI GOLD’ in early 1994 and is engaged in the business of insecticides, larvicides, fungicides, pesticides etc. The first applicant later on got the second and third applicants incorporated under the Companies Act, 1956. The second applicant was incorporated with the objective of promoting corporate cultivation where as the third applicant is engaged in producing organic manure. The first applicant had filed application for the mark ‘AGRI GOLD’ and the same has been accepted for advertisement. But when one of the applications for chemicals under Class-1 was advertised, the second respondent forwarded notice stating that they are the registered trademark owners in India and abroad for the mark ‘ARGOLD’ in respect of insecticides, larvicides fungicides etc and alleged that the use of ‘AGRI GOLD’ would amount to infringement and passing off. But on further perusal of the matter the applicants found that the mark ‘ARGOLD’ was not registered in the name of second respondent but registered in the name of American Cyanamid Company. The second respondent clarified the position by stating that the mark is registered in the name of the predecessor in interest. The applicants on conducting an enquiry found that the mark ‘ARGOLD’ has not been used either by the first respondent or by the second respondent for any of the goods for which they claim right.
Aggrieved by the threatening notice issued against the applicants and the fact that they have invested huge amount for the promotion, the applicants preferred an application for rectification of the trademark ‘ARGOLD’.
The main ground of argument for rectification is that the first respondent on the date of filing application for registration has no bona fide intention of using the word mark ‘ARGOLD’ and that the second respondent has not used the mark continuously for a period of five years and three months. It is further contented that the first respondent have no business establishment and neither they have any licencee to use the mark and the threat against the applicants is illegal in nature. The applicant further contented that the mark registered in the name of the respondents is used with mala fide intentions for preventing bona fide traders like the applicant.
On the other hand the second respondent claims to be part of the BASF Group and that the trademark ‘ARGOLD’ is a reputed brand and is continuously used in the past years. The main contention of the second respondent was that the application is premature in nature and that the applicants are not aggrieved persons to initiate the proceedings.
The court paced reliance on National Bell Co. (P) Ltd. and Anr. v. Metal Goods Mfg. Co. Ltd and Anr. PTC (Suppl.) (1) 586 (SC) where it was held that the persons aggrieved includes even the rivals or persons who are in some way or the other substantially interested in having the mark removed from the register or persons. The Court observed that as the impugned mark was entered only in 2003, the requirement of 5 years and three months mandate by Section 47 (1) shall not apply, but the court placed reliance on the non-usage of the mark and upheld the application for rectification and directed the Registrar to remove the registration of the respondents from the register.
The fundamental objective of a mark is to identify a product with that of the registrant and if there is no usage of the mark, the very objective of the mark becomes futile and hence the court placed strong reliance on the usage of the mark rather than the registration of the mark.
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