Delhi High Court
Ankit Aggarwal Proprietor Of M/S ... vs Gupta Casting Fvl. Ltd. on 24 April, 2023
2023:DHC:2829
$~13-14
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision : 24th April, 2023
+ C.O. (COMM.IPD-TM) 769/2022, I.A. 18968/2022 (for stay)
ANKIT AGGARWAL PROPRIETOR
OF M/S VEPSON ENGINEERS ..... Petitioner
Through: Mr.Ashok Goel and Mrs. Manu
Aggarwal, Advocates.
versus
GUPTA CASTING FVL. LTD. ..... Respondent
Through: None
+ C.O. (COMM.IPD-TM) 770/2022, I.A. 18971/2022 (for stay)
MR. ANKIT AGGARWAL PROPRIETOR
OF M/S VEPSON ENGINEERS ..... Petitioner
Through: Mr.Ashok Goel and Mrs. Manu
Aggarwal, Advocates.
versus
M/S GUPTA CASTING PVT. LTD. AND ANR. ..... Respondents
Through: None
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
AMIT BANSAL, J. (Oral)
1. The present petitions have been filed seeking cancellation/removal of
the following impugned marks registered in Class 7 in the name of the
respondent no.1, from the Register of Trade Marks:
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
Signing Date:27.04.2023 13:19:00
2023:DHC:2829
i. under no.3645519 dated 27th September, 2017
ii. under no.2524816 dated 3rd May, 2013
2. Briefly, the case set up in the petition is that Sh. Ashok Aggarwal, the
father and the predecessor-in-interest of the petitioner, had started his
business under the name, Vepson Engineers, and was the proprietor of the
said firm. After death of Sh. Ashok Aggarwal on 17th September, 2012, Mr.
Ankit Aggarwal (petitioner herein) and Mrs. Rita Aggarwal, wife of Sh.
Ashok Aggarwal and the mother of the petitioner, jointly continued the said
business and constituted the aforesaid firm as a partnership firm by
executing a Partnership Deed dated 23rd September, 2012. After death of
Mrs. Rita Aggarwal on 24th March, 2015, the petitioner became sole
proprietor of the aforesaid firm.
3. The petitioner's firm is engaged in the business of manufacturing and
marketing agricultural implements including cultivator shovels and parts and
fittings. The mark was adopted by Sh. Ashok Aggarwal in the
year 1985 and registered under no.481168 on 16th November, 1987 in class
7. In support of this, the petitioner has filed sales invoices at page no. 39 to
57 of the petitioner's documents. The aforesaid registration lapsed in the
year 2001 as the necessary renewal application was not filed due to non-
receipt of the mandatory renewal notice (O-3 notice) from the Trade Mark
Registry.
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
Signing Date:27.04.2023 13:19:00
2023:DHC:2829
4. The word mark JAI KISAN was registered in the name of the
petitioner and Smt. Rita Aggarwal on 14th June, 2013 under no. 2548853 in
Class 7 in respect of the similar goods as mentioned above. The registration
certificate granted in favour of the petitioner (page no. 17 of the petitioner's
documents) records user of the petitioner since 1st April, 1985. After death
of Smt. Rita Aggarwal, the petitioner became sole proprietor of the mark
JAI KISAN.
5. It is averred that due to long and continuous usage of the mark JAI
KISAN, the petitioner has acquired immense goodwill and reputation. The
members of trade associate the aforesaid mark exclusively with the
petitioner. The annual sales turnover of the petitioner from the years 2012 to
2021 is mentioned in paragraph 11 of the petition. In the year 2020-2021,
the annual sales turnover of the petitioner was Rs. 6,46,77,133/-.
6. The respondent no.1 has claimed user of the impugned marks
and since the year 2011 in its application for
registration but no documents have been filed on behalf of the respondent
no.1 in this regard. The respondent no.1 has obtained registration of the
impugned marks by concealing material facts and making
misrepresentations, which is in contravention of provisions of the Trade
Mark Act, 1999 (hereinafter 'the Act'). A legal notice dated 26th August,
2022 was issued upon respondent no.1 to forthwith desist the use of the
impugned marks. However, no response has been received by the petitioner
to the same.
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
Signing Date:27.04.2023 13:19:00
2023:DHC:2829
7. The use of the impugned marks in relation to the similar goods is
likely to cause confusion in the market and among the members of trade and
is bound to cause erosion of the distinctive character of the petitioner's mark
JAI KISAN. The impugned marks are neither distinctive, nor capable of
distinguishing the goods of the respondent no.1 from that of the petitioner.
Therefore, the mark is liable to be removed in terms of Section 11 (1) and
(2) of the Act.
8. The impugned trademark is liable to be removed for 'non-use' in
terms of Section 47 (1) (a) and (b) of the Act, as upto three months before
the date of application, a continuous period of five years from the date of
registration has elapsed, during which period there has been no bonafide use
of the impugned marks in relation to goods for which the registration was
granted.
9. The petitioner is the prior user and owner of the mark JAI KISAN
since 1985 through his predecessor-in-interest and the impugned marks has
been wrongly entered in the Register and therefore, is liable to be cancelled
in terms of Section 57 of the Act.
10. Accordingly, the petitioner has filed the present petition.
PROCEEDINGS IN THE CASE
11. Notice in the present petitions were issued by this court on 2nd
December, 2022. As per the service report, the respondent no.1 was served
on 11th January, 2023. Counsel appeared on behalf of the respondent no.1 on
24th January, 2023 and four weeks were granted to file reply. Neither reply
has been filed on behalf of the respondent no.1, nor has the Vakalatnama
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
Signing Date:27.04.2023 13:19:00
2023:DHC:2829
been filed on behalf of the counsel for the respondent no.1. Today also, none
appears on behalf of the respondent no.1 even on second call. It is indicative
of the fact that the respondent no.1 has nothing substantial to put forth on
merits, by way of a response to the averments made in the petitions.
ANALYSIS
12. I have heard the counsel for the petitioner and perused the record of
the case.
13. In the present case, the respondent no.1 has failed to file
reply/counter-statement within maximum permissible period of sixty days
from the date on which the court directs filing of the said reply, in terms of
Rule 7(ix) of Delhi High Court Intellectual Property Rights Division Rules,
2022. Since the respondent no.1 has failed to take any requisite steps to
contest the present suit, it is evident that they have no defence to put forth on
merits.
14. The petitioner is the prior adopter and user of the trade mark JAI
KISAN. The petitioner has been using the said mark through its
predecessor-in-interest since the year 1985 in respect of agricultural
implements.
15. The adoption and the use of the impugned marks and
by the respondent no.1, which are very similar to the
mark 'JAI KISAN' of the petitioner, is likely to create confusion in the
market. Not only are the marks of the respondent no.1
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
Signing Date:27.04.2023 13:19:00
2023:DHC:2829
confusingly/deceptively similar to the petitioner's prior adopted, registered,
mark 'JAI KISAN', but the nature of the goods of the petitioner and the
respondent no.1 are identical, i.e., agricultural implements falling in Class 7.
16. It is clear that the adoption of the said mark by the respondent no.1 is
with the sole purpose of trading upon the goodwill and reputation of the
petitioner. The mark of the respondent no.1 is also likely to deceive unwary
consumers of its association with the petitioner. Therefore, the aforesaid
registrations in favour of the respondent no.1 are liable to be cancelled under
Section 57 of the Act.
17. The respondent no.1 has failed to rebut the contention of the petitioner
that the impugned marks were registered without any bonafide intention on
the part of the registered proprietor to use the same in relation to the
products covered by the registration. Upto a date of three months before the
date of the rectification application, a continuous period of five years and
longer has expired from the date on which the impugned marks were
registered, during which there was no use of the impugned marks in relation
to the goods covered by registrations and therefore, the mark is liable to be
removed from the Register under Sections 47(1)(a) and Section 47(1)(b) of
the Act.
18. In the judgment in Shell Transource Limited v. Shell International
Petroleum Company Ltd.¸ 2012 SCC IPAB 29, it was observed by the
IPAB that the onus of proving "non-user" is on the person who pleads the
same. However, when the applicant pleads "non-user", the respondent must
specifically deny it. Therefore, in the absence of a specific denial, it was
held that the allegations of "non-user" stood admitted.
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
Signing Date:27.04.2023 13:19:00
2023:DHC:2829
19. In the present case, the allegations of "non-user" against the
respondent no.1 stand admitted in the absence of a specific denial of the
same and the impugned marks are liable to be removed from the Register of
Trade Marks on account of "non-user" as contemplated under Sections
47(1)(a) and 47(1)(b) of the Act.
20. Accordingly, the present petitions are allowed and the impugned
marks registered under trademark application no. 3645519 and 2524816 in
the name of the respondent no.1 in Class 7 are removed from the Register of
Trade Marks.
21. The Registry is directed to supply a copy of the present order to the
Trademark Registry, at e-mail - [email protected] for compliance.
AMIT BANSAL, J.
APRIL 24, 2023
rt
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
Signing Date:27.04.2023 13:19:00
