An application for the removal of a mark MATESHWARI which was filed by one M/s Shiv Kumar Sushil Kumar Tea Enterprises Pvt. Ltd. ("Shiv Kumar")- owners of the mark MADHUSHREE on the grounds of similarity between MADHUSHREE and MATESHWARI and non-use of the latter. Both these parties are involved in the business of processing and marketing of tea and have trademarks that are the stylized forms of "MADHUSHREE" and "MATESHWARI" respectively. The said application was dismissed by the Intellectual Property Appellate Board ("the Board") for lack of adequate evidence supporting Shiv Kumar's contentions. Here, the Board sought an opportunity to briefly assess as to what constitutes "Use" of the trademark.

According to Shiv Kumar, MADHUSHREE was being extensively used by it, making it prior and senior adopter of the same. MADHUSHREE is also registered under the Copyright Act. The Board noted that upon a bare perusal and assessment of the two contending marks, both the marks were stylized distinctively and were dissimilar.

The second ground in the application for removal of MATESHWARI was that it had not been commercially used for more than 5 years and was therefore liable to be removed as per trademark laws. The Board relied upon the Supreme Court's view in a case wherein the Court had laid down that the word "use" can involve actions other than actual sale of goods or services It is not only non-use, but also an intention to abandon the mark that is to be proven by the applicant seeking removal. In view of the same, the Board stated that since the intention to abandon was not proven adequately it has decided to dismiss the said application for removal on the ground of non-use.

2 noteworthy points in this precise Order are that use does not only constitute actual sale and that along with non-use it is important to put forth evidence supporting an intention to completely abandon the mark for it to be successfully removed from the trademarks' register.

Compiled by: Adv. Sachi Kapoor | Concept & Edited by: Dr. Mohan Dewan

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