Case Note & Summary
The petitioner, Abacus Montessori School, filed a rectification petition seeking removal of the trademark registration No. 1586733 in Class 41 for 'ABACUS' in favour of the first respondent, Abacus International Montessori School. The petitioner claimed to have been using the mark 'ABACUS' since its inception in 1987 for educational services, and had applied for registration of its own mark which was pending. The petitioner alleged that the first respondent's registration was subsequent and likely to cause confusion among the public. The court examined the evidence of prior use, including advertisements and expenditure, and found that the petitioner had established prior use and acquired reputation. The court held that the mark 'ABACUS' is descriptive but had acquired secondary meaning through long use. The registration of the first respondent was ordered to be expunged from the register. The court allowed the petition with costs.
Headnote
A) Trade Marks - Rectification - Prior Use - Section 47, 57 Trade Marks Act, 1999 - Petitioner sought removal of respondent's registered mark 'ABACUS' for educational services claiming prior use since 1987 - Court found that petitioner had used the mark since 1987 and had acquired reputation and goodwill, while respondent's registration was subsequent - Held that the registration was liable to be removed as it was likely to cause confusion and deception (Paras 1-10).
Issue of Consideration
Whether the registration of the trademark 'ABACUS' in Class 41 in favour of the first respondent should be expunged from the register on the ground of prior use and likelihood of confusion.
Final Decision
The petition is allowed. The impugned registration No. 1586733 under Class 41 is ordered to be expunged from the Trade Marks Register. The first respondent is directed to pay costs of Rs. 25,000 to the petitioner.
Law Points
- Trademark rectification
- prior use
- descriptive mark
- secondary meaning
- Section 47 Trade Marks Act
- 1999
- Section 57 Trade Marks Act
Case Details
(T) OP (TM) No. 447 of 2023
Dr. Justice Anita Sumanth
Mr.R.Rajesh for M/s. De Penning and De Penning (for petitioner), Mr.S.Kolandasamy (for R1), Mr.S.Janarthanam, Senior Panel Counsel (for R2)
Abacus International Montessori School, The Registrar of Trade Marks
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Nature of Litigation
Rectification petition seeking removal of trademark registration from the register.
Remedy Sought
Petitioner sought expunging of registration No. 1586733 under Class 41 from the Trade Marks Register and costs.
Filing Reason
Petitioner claimed prior use of the mark 'ABACUS' since 1987 and that the first respondent's registration was subsequent and likely to cause confusion.
Previous Decisions
The petition was originally filed as O.R.A.No.170/2015/TM/CHN before the Intellectual Property Appellate Board and was transferred to the High Court.
Issues
Whether the petitioner has established prior use of the mark 'ABACUS' in relation to educational services.
Whether the registration of the mark in favour of the first respondent is liable to be removed on the ground of likelihood of confusion.
Submissions/Arguments
Petitioner argued that it had been using the mark since 1987 and had incurred substantial expenditure on advertising, and that the respondent's mark was identical and likely to cause confusion.
First respondent contended that the mark 'ABACUS' is descriptive and not distinctive, and that the petitioner had not acquired secondary meaning.
Ratio Decidendi
A mark that is descriptive may acquire secondary meaning through long and extensive use, and a subsequent registration of an identical mark for similar services is liable to be removed if it is likely to cause confusion or deception among the public.
Judgment Excerpts
The petitioner had adopted the use of the word ‘ABACUS’ in the name of the school, as early as in 1987.
The petitioner would submit that considerable expenditure has been incurred in advertising and marketing the mark through various media.
Procedural History
The petition was originally filed as O.R.A.No.170/2015/TM/CHN before the Intellectual Property Appellate Board, Chennai, and was transferred to the High Court of Judicature at Madras upon the abolition of the IPAB, and renumbered as (T) OP (TM) No. 447 of 2023.
Acts & Sections
- Trade Marks Act, 1999: 47, 57
