Case Note & Summary
The petitioner, M/s.Sree Lakshmi Balaji Industries, filed a petition under Sections 47, 57, and 125 of the Trade Marks Act, 1999, seeking removal/rectification/expungement of the registered trademark 'Ayyappan Brand' under No.899178 in class 30 owned by the first respondent, Sri Lakshmi Venkateswara Rice Industries. The dispute arose from an infringement suit filed by the first respondent against the petitioner in O.S.No.3 of 2012 before the District Court, Bellary, concerning the use of a pictorial representation of Lord Ayyappa on rice products. During the pendency of that suit, the petitioner filed this rectification petition before the Intellectual Property Appellate Board on 01.04.2016, which was later transferred to the Madras High Court. The petitioner argued that the user date in the application (14.01.1999) differed from that in the advertisement (13.07.1992), and no evidence of amendment was provided, constituting a contravention under Section 57(1). Additionally, the petitioner contended that the registered mark as depicted differed significantly from the mark actually used by the first respondent, and no evidence of use of the registered mark was provided, making it liable for removal for non-use under Section 47. The first respondent opposed the petition, but the court found that the first respondent failed to provide any evidence of use of the mark as registered or to explain the discrepancy in user dates. The court allowed the petition, ordering the removal of the impugned trademark from the Register.
Headnote
A) Trade Marks Act - Rectification - Non-Use - Section 47 - The petitioner sought removal of the respondent's registered trademark 'Ayyappan Brand' for non-use as the mark used differed significantly from the registered mark and no evidence of use of the registered mark was provided. The court held that the registered proprietor failed to prove use of the mark as registered, warranting removal for non-use (Paras 2.2, 4).
B) Trade Marks Act - Rectification - Contravention of Statute - Section 57 - The petitioner contended that there was a discrepancy in the user date recorded in the application (14.01.1999) and the advertisement (13.07.1992), and no evidence of amendment was provided. The court held that such discrepancy amounts to contravention of the statute justifying rectification under Section 57(1) (Paras 2.1, 4).
Issue of Consideration
Whether the registered trademark 'Ayyappan Brand' under No.899178 in class 30 should be removed/rectified/expunged from the Register on grounds of non-use and discrepancy in user date.
Final Decision
The court allowed the petition and ordered the removal/rectification/expungement of the entry pertaining to the impugned Trade Mark 'Ayyappan Brand' under No.899178 in class 30 from the Register.
Law Points
- Rectification of trademark for non-use under Section 47
- rectification for contravention of statute under Section 57
- discrepancy in user date as ground for rectification
- non-use of registered trademark as registered
- burden of proof on registered proprietor to show use
- removal of trademark for non-use
Case Details
(T)OP(TM) No. 234 of 2023
Mr.R.Sathish Kumar for Mr.Ramji.G (Petitioner), Mr.A.K.Rajaraman and Mr.B. Karthick (R1), Mr. Rajesh Vivekanandan, Deputy Solicitor General (R2)
M/s.Sree Lakshmi Balaji Industries
Sri Lakshmi Venkateswara Rice Industries, The Registrar of Trademarks
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Nature of Litigation
Rectification petition under Sections 47, 57, and 125 of the Trade Marks Act, 1999, seeking removal/rectification/expungement of a registered trademark.
Remedy Sought
Petitioner sought removal/rectification/expungement of the entry pertaining to the impugned Trade Mark 'Ayyappan Brand' under No.899178 in class 30 from the Register.
Filing Reason
Discrepancy in user date between application and advertisement, and non-use of the trademark as registered.
Previous Decisions
The first respondent had filed O.S.No.3 of 2012 before the District Court, Bellary for infringement of its registered trademark. The petitioner filed this rectification petition before the IPAB on 01.04.2016, which was later transferred to the High Court.
Issues
Whether the registered trademark is liable to be removed for non-use under Section 47 of the Trade Marks Act, 1999?
Whether the discrepancy in user date amounts to contravention of the statute warranting rectification under Section 57 of the Trade Marks Act, 1999?
Submissions/Arguments
Petitioner argued that the user date in the application (14.01.1999) differs from that in the advertisement (13.07.1992) and no evidence of amendment was provided, contravening Section 57(1).
Petitioner argued that the registered mark as used differs significantly from the mark as registered, and no evidence of use of the registered mark was provided, making it liable for removal under Section 47.
First respondent failed to provide evidence of use of the mark as registered or to explain the discrepancy in user dates.
Ratio Decidendi
A registered trademark is liable to be removed for non-use under Section 47 of the Trade Marks Act, 1999, if the registered proprietor fails to prove use of the mark as registered. Additionally, a discrepancy in the user date between the application and advertisement, without evidence of amendment, constitutes a contravention of the statute warranting rectification under Section 57(1).
Judgment Excerpts
The first respondent has failed to provide any evidence that an application for amendment of the user date was filed and accepted by the Registrar of Trade marks.
When the trade mark as registered is compared with the trade mark as used, there are significant differences. The first respondent has failed to provide any evidence for use of the trade mark as registered.
Procedural History
The first respondent filed O.S.No.3 of 2012 before the District Court, Bellary for trademark infringement. During its pendency, the petitioner filed this rectification petition before the Intellectual Property Appellate Board on 01.04.2016. The petition was later transferred to the Madras High Court and renumbered as (T)OP(TM) No. 234 of 2023.
Acts & Sections
- Trade Marks Act, 1999: 47, 57, 125, 107
