Case Note & Summary
The appellant, Ganesh Consumer Products Ltd., filed an appeal under Section 91 of the Trade Marks Act, 1999, against an order dated 11.09.2024 passed by the Registrar of Trade Marks, Chennai. The Registrar had rejected the appellant's opposition and granted registration of a device mark bearing No.1831646 in Class 30 to the second and third respondents, who are partners of Shankar Industries. The appellant contended that the respondents failed to establish their claim of user since 1992. The partnership deed filed by the respondents only evidenced the formation of the firm in 1992, not use of the mark. The Chartered Accountant certificate did not refer to or enclose underlying documents, and the invoices filed were from 2002 onwards and did not show use of the registered device mark. The appellant had adduced evidence of use since 1992, which pre-dated the respondents' use. The court agreed with the appellant, holding that the respondents failed to prove use of the mark. The impugned order was set aside, and the Registrar was directed to revoke the registration and remove the mark from the register.
Headnote
A) Trade Marks - Opposition Proceedings - Burden of Proof - Section 91 Trade Marks Act, 1999 - The appellant opposed registration of a device mark on grounds of prior use and lack of evidence of use by the applicants. The Registrar rejected the opposition and granted registration. On appeal, the High Court held that the respondents failed to establish their user claim as the partnership deed and Chartered Accountant certificate did not constitute evidence of use of the mark, and invoices from 2002 did not show use of the registered device mark. The appellant's evidence of use since 1992 was accepted. Held that the impugned order was set aside and the mark was directed to be removed from the register. (Paras 2-6) B) Trade Marks - Evidence of Use - Sufficiency - Section 91 Trade Marks Act, 1999 - The court examined the evidence filed by the respondents, including a partnership deed from 1992, a Chartered Accountant certificate without underlying documents, and invoices from 2002 onwards. The court found that none of these documents proved use of the specific device mark applied for. The partnership deed only showed existence of the firm, not use of the mark. The CA certificate did not refer to or enclose supporting documents. The invoices did not bear the device mark. Held that the respondents failed to discharge the burden of proving use of the mark. (Paras 2-4)
Issue of Consideration
Whether the Registrar of Trade Marks was justified in rejecting the opposition and granting registration of the device mark No.1831646 in Class 30 to the respondents, despite the appellant's claim of prior use and the respondents' failure to provide adequate evidence of use.
Final Decision
The appeal is allowed. The impugned order dated 11.09.2024 is set aside. The first respondent is directed to revoke the registration of Trade Mark No.1831646 in Class 30 in the names of the second and third respondents and remove the corresponding entries from the Trade Mark Register. No costs. Consequently, the connected miscellaneous petition is closed.
Law Points
- Trademark registration
- Opposition proceedings
- Burden of proof of use
- Evidence of use
- Prior user
- Section 91 Trade Marks Act 1999
