India: Madras High Court On Defensive Trademark Registration

Last Updated: 22 August 2018
Article by S.S. Rana & Co. Advocates

The Madras High Court in the case of N. Ranga Rao & Sons v. Shree Balaji Associates & Ors. held that N. Ranga Rao was not entitled to oppose the registration of Shree Balaji Associates' mark. The Court further held that 'Unless the word is an invented word coined by a person out of his own effort and thought process, he cannot prevent and exclude others from using the generic and common word by holding it within his folds by not putting it to use for a long time from the date of registration of the said trademark. The words 'Cycle' and 'Brand' used in N. Ranga Rao's mark were generic words, which were not been used in the class it was registered. Nobody can prevent others from using a mark by keeping it in one's folds without making use of it.'

Brief Facts

  • M/s. N. Ranga Rao. (hereinafter referred to as 'the Petitioner') was engaged in the business of manufacturing and marketing incense (agarbathi) sticks and dhoop sticks for more than half a century. It was claimed to be a pioneer in the field.
  • It was submitted by the Petitioner that it had honestly conceived and adopted the trademark 'CYCLE BRAND' with the device of 'Cycle' in 1954 and had been continuously using the said trademark domestically and internationally without any interruption from anyone.
  • It was brought to the notice of the Petitioner that an application for registration of identical trademark in Class 21 was filed by Shree Balaji Associates (hereinafter referred to as 'Respondent No. 1') in respect of brooms. The application was opposed by the Petitioner.
  • The Deputy Registrar of Trademarks (hereinafter referred to as 'Respondent No. 3') allowed the opposition of the Petitioner and rejected the application filed by Respondent No. 1.
  • The Respondent No. 1 appealed before the Intellectual Property Appellate Board (hereinafter referred to as 'Respondent No. 2') against the order of the Respondent No. 3.
  • Vide order dated January 4, 2013, (hereinafter referred to as the 'impugned order') the Respondent No. 2 allowed the appeal filed by Respondent No. 1 thereby rejecting the opposition of the Petitioner.
  • Aggrieved by the same, the Petitioner thus filed the writ petition before the Madras High Court (hereinafter referred to as 'the Court') to restrain Respondent No. 1 from registering its trademark.

Issue

  • Whether the Petitioner was justified in objecting to the registration of the Respondent No. 1's mark?
  • Whether the Petitioner had established that their CYCLE BRAND trademark is a 'well known mark'?

Petitioner's Contentions

  • It was contended that it had applied for the trademark registration of the mark 'CYCLE BRAND' in Class 3 and all the other classes to safeguard its interest. It also obtained registration of its labels including the trademark 'CYCLE BRAND' with device of Cycle under the Copyright Act, 1957.
  • It was submitted that the trademark was used continuously and extensively since 1954 owing to which a substantial reputation and a valuable goodwill had been accrued to the Petitioner.
  • It further submitted that the trademark became one of the most sought-after brand in terms of reputation in India with respect to agarbathis, dhoop sticks, etc., and the consumers identify the trademark CYCLE BRAND with the device of Cycle only with the Petitioner and no one else.
  • It contended that Respondent No. 2 held that its trademark was a well-established brand in the agarbathi industry for over many decades.
  • It further submitted that its trademark consisted of both the word 'Cycle' and the device of 'Cycle' and Respondent No. 1's trademark also had both the word "Cycle" and device of "Cycle".
  • Highlighting Section 11 (10) (i) of the Trade Marks Act, 1999 (hereinafter referred to as 'the Act') it contended that the only requirement was that the marks should to be identical or similar for a well-known trademark to be protected.
  • It contended that even assuming without admitting that Respondent No. 2 had not determined its mark to be a well-known trademark, its mark deserved to be determined on account of the long, continuous and extensive use of the said trademark.
  • Highlighting Section 11 (10) (ii) it submitted that the Registrar needs to take into consideration the bad faith involved either of the applicant or the opponent affecting the rights relating to the trademark while protecting as well-known trademark, which was completely ignored by Respondent No. 2.
  • It submitted that when the two trademarks appear to be similar, the Court should look at the overall similarity and not just the minute cosmetic change made deliberately by the Respondent. Looking at the overall similarity, the Respondent No. 1 had not only copied the word 'cycle' but also the device of 'Cycle'.

Respondent Contentions

  • Respondent No. 1 contended that it had honestly adopted the mark with particular artistic work design and get up for brooms and other articles for cleaning purposes and had since been using the mark extensively, thereby making the mark distinctive.
  • Respondent No. 1 further submitted that the device of Cycle was common to trade since large number of manufacturers were using it for various goods and services. It also submitted that the device of 'Cycle' used by the Petitioner was dissimilar from its image of a Ladies Cycle.
  • It further argued that the Petitioner was using the mark only for Agarbathis under Class 3 and not for brooms or cleaning materials. However, it was using it only for brooms and other articles for cleaning purposes under Class 21. Therefore, the Petitioner cannot claim monopoly over a device of 'Cycle'.
  • It also highlighted Section 46 of the Act and submitted that if a mark was registered without a bonafide intention to use the mark in relation to those goods for which the mark has been registered, or if the applicant fails to use the mark for a continuous period of five years and one month, the mark should be removed from the Register of Trade Marks.
  • It also threw light on the fact that the defensive registration was done away with under the Act and the concept of a well-known trademark was introduced. It was alleged that no evidence was adduced by the Petitioner to show that the Petitioner's mark is a well-known mark.

Court's Decision

  • The Court opined that the defensive registration in all the Classes and in particular in Class 21 is nonest in law since Section 47 of the Trade & Merchandise Marks Act, 1958 which dealt with Defensive Registration pertained only to invented words which have become well known and not to the devise (picture) of a 'Cycle' or even the Word 'Cycle', which are common to trade and not invented by the Petitioner.
  • The Court agreed that it was an undisputed fact that Respondent No. 1 had never used the trademark with reference to 'Glasswares, domestic utensils, containers trap parts', though they hold trademark registrations for the same.
  • Taking note of the decision in the case of Vishnudas Trading Vs. Vazir Sultan Tobacco co. Ltd,1 it was held that non-user of the trademark should not be allowed to enjoy monopoly, otherwise, he will indulge in mischief of trafficking in Trademark and prevent all bone fide user of such common word.
  • On the question of defensive registration, the Court held that, 'It was obvious that neither the word 'Cycle' or 'Brand' were invented words and so did not qualify for defensive registration. Further, a device of 'Cycle' cannot also be termed invented since 'Cycle' was a common use equipment and an image of a 'Cycle' cannot be claimed to be invented. Therefore, the Petitioner had no right in respect of the trademark 'Cycle Brand' or devise of 'Cycle' in respect of all them goods listed under the 'Nice Classification'.
  • On the question of Petitioner's mark being 'Well-Known', the Court held that, 'A reading of Section 11(6) makes it clear that while considering whether the mark is a well-known trade mark, the relevant factors to be take into consideration are i) knowledge or recognition of the Trade Mark in relevant sections of the public as a result of promotion of the mark, ii) duration, extent and geographical area of use and promotion through publicity and iii) record of successful enforcement of the rights in the Trade Mark, in particular the extent to which the mark has been recognized as well-known by any Court or Registrar. In the instant case, no evidence was adduced by the Petitioner to show that the petitioner's mark was a well-known mark.'

Footnote

1. 1997(4) SCC 201

For further information please contact at S.S Rana & Co. email: info@ssrana.in or call at (+91- 11 4012 3000). Our website can be accessed at www.ssrana.in

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