Case Note & Summary
The petitioner, The Procter & Gamble Company, a multinational corporation, filed three original petitions under Sections 47, 57, and 125 of the Trade Marks Act, 1999, seeking removal of trade mark registrations held by the first respondent, IPI India Private Limited, for the marks 'WHISPER' (Registration No. 3897775 in Class 03), 'ALWAYS' (Registration No. 4285435 in Class 05), and 'WHISPER' (Registration No. 3461733 in Class 03). The petitioner claimed to be the proprietor of the well-known marks 'WHISPER' and 'ALWAYS' used globally for sanitary napkins and other hygiene products since the 1980s, with extensive sales and advertising in India. The respondent had registered identical marks for similar goods, and the petitioner alleged that the registrations were obtained without bonafide intention to use and that the marks had not been used for five years prior to the petition. The respondent contended that the marks were not identical and that they had used the marks, but failed to provide sufficient evidence. The court analyzed the evidence, including the petitioner's prior use and well-known status, and found that the respondent's marks were identical and likely to cause confusion. The court held that the respondent had not discharged the burden of proving use and that the registrations were invalid. Consequently, the court allowed the petitions and directed the removal of the impugned registrations from the register.
Headnote
A) Trade Marks - Rectification - Removal for Non-Use - Sections 47, 57, 125 Trade Marks Act, 1999 - Petitioner sought removal of respondent's registered marks 'WHISPER' and 'ALWAYS' in classes 3 and 5 on grounds of non-use and similarity to petitioner's well-known marks - Court held that the respondent failed to prove use of the marks and the marks were identical to petitioner's prior used and well-known marks - Held that the registrations are liable to be removed (Paras 1-43).
Issue of Consideration
Whether the trade mark registrations of the respondent for the marks 'WHISPER' and 'ALWAYS' in classes 3 and 5 should be removed from the register on the grounds of non-use and being identical/deceptively similar to the petitioner's well-known marks.
Final Decision
The court allowed the petitions and directed the removal of the impugned trade mark registrations from the register.
Law Points
- Rectification of trade mark register
- removal of trade mark for non-use
- well-known trade mark
- prior use
- deceptive similarity
- Section 47
- Section 57
- Section 125 of Trade Marks Act
- 1999
