Also At: Unilever Home vs The Deputy Registrar Of Trade ...
2023 Latest Caselaw 12680 Mad

                                  IN THE HIGH COURT OF JUDICATURE AT MADRAS
                                               DATED: 19.09.2023
                                                   CORAM
                        THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
                                               (T)CMA(TM)/3/2023
                                              (OA/37/2010/TM/CH)
                                              (T)CMA(TM)/53/2023
                                              (OA/30/2015/TM/CH)

                     (T)CMA(TM)/3/2023:

                     M/s.Hindustan Unilever Limited,
                     (Formerly Known as Hindustan Lever Limited)
                     165/166, Backbay Reclamation Mumbai 400 025.

                     Also at: Unilever Home
                     BD Sawant Marg,
                     Chakala, Andheri, East Mumbai 400 099.            ... Appellant
                                                   -vs-

                     1.The Deputy Registrar of Trade Marks,
                       Trade Marks Registry,
                       Chennai.

                     2.P.C.Thahir,
                       Trading as Aghin Chemicals & Cosmetics,
                       13/750, Annie Hall Cross Road,
                       Calicut, Kerala - 673 002.                   ... Respondents




                     1/12


https://www.mhc.tn.gov.in/judis
                     PRAYER: Transfer Civil Miscellaneous Appeal (Trade Marks) filed

                     under Sections 91, 92 of the Trade Marks Act, 1999, praying that an

                     order be passed setting aside the impugned order dated 29th March

                     2010 passed by the Learned Deputy Registrar of Trade Marks and

                     Impugned order dated 29th March 2010 be set aside and remand

                     matter for reconsideration to the first respondent with a direction to

                     re-consider the matter on established principle of laws.



                                  For Appellant     : Mr.K.Premchandar,
                                                      Ms.Madhu Rewari,
                                                      Mr.L.Ram Prasad
                                                      for M/s.Anand and Anand

                                  For Respondent 1 : Mr.C.Samivel, SPC

                                  For Respondent 2 : Mr.Perumbulavil Radhakrishnan

                                                    **********

(T)CMA(TM)/53/2023:

M/s.P.C.Thahir, Trading as Aghin Chemicals & Cosmetics, Indian, having office at 13/750, Annie Hall Cross Road, Calicut, Kerala - 673 002. ... Appellant

https://www.mhc.tn.gov.in/judis

-vs-

1.M/s.Hindustan Unilever Limited, Hindustan Lever Limited, 165/166, Backbay Reclamation, Mumbai 400 020.

2.The Deputy Registrar of Trade Marks, Trade Marks Registry, Intellectual Property Building, Guindy, Chennai - 600 032. ... Respondents

PRAYER: Transfer Civil Miscellaneous Appeal (Trade Marks) filed

under Section 91 of the Trade Marks Act, 1999, praying to modify the

order of the Hon'ble Deputy Registrar, Trade Marks dated 29th

March 2010 passed in Application No.757598 in Class 3 in the name

of Mr.P.C.Thahir, Trading as Aghin Chemicals and Cosmetics Indian,

having office at 13/750, Annie Hall Cross Road, Calicut - 673 002,

Kerala and Opposition No.MAS-721068 filed by Hindustan Unilever

Ltd., Hindustan Lever House, 165/166, Back Bay Reclamation,

Mumbai - 400 020, to proceed for registration without any restrictive

condition such as limiting the goods as detergent powder in Class 3

for sale in Kerala only and allow this appeal.

https://www.mhc.tn.gov.in/judis For Appellant : Mr.Perumbulavil Radhakrishnan

For Respondent 1 : Mr.K.Premchandar, Ms.Madhu Rewari, Mr.L.Ram Prasad

For Respondent 2 : Mr.C.Samivel, SPC

**********

COMMON JUDGMENT

By order dated 29.03.2010 Trade Mark Application No.757598

was allowed subject to the restriction that the marks be applied only

in relation to goods sold in the State of Kerala. The opponent before

the Trade Marks Registry has assailed the order in

(T)CMA(TM)/3/2023 and the applicant has sought a modification of

the impugned order in (T)CMA(TM)/53/2023. Since both appeals

arise out of a common order, they are disposed of by this common

judgment.

https://www.mhc.tn.gov.in/judis

2. The first respondent herein applied for registration of the

following device mark

in Application No.757598, which was filed on 17.06.1997. The said

application claimed use since 02.06.1997 in relation to detergent

powder. The application was accepted for advertisement and such

advertisement was published on 01.08.2007. Pursuant thereto, the

opponent issued notice of opposition on 27.02.2008 under Opposition

No.MAS-721068. After a hearing on 10.02.2010, the order impugned

herein was issued.

3. Learned counsel for the opponent submitted that the

impugned order does not take into account the extensive evidence

https://www.mhc.tn.gov.in/judis adduced by the opponent in support of its opposition. In order to

substantiate this contention, learned counsel referred to and relied

upon certificates of registration obtained by the opponent's

predecessor-in-interest in respect of the trade mark SUNLIGHT on

19.10.1948 and the registration obtained in respect of mark SUN on

16.08.1954. Learned counsel also invited my attention to the sales

turnover and advertisement expenditure from the sale of detergent

powder / cakes / bar soaps bearing the word and device mark

SUNLIGHT between 1994 and 1997. Likewise, learned counsel also

placed for consideration the sales turnover and advertisement

expenditure between the years 1980 - 1991 from the sale of products

bearing the aforesaid marks.

4. Although the above evidence was placed before the Registrar

of Trade Marks, learned counsel contended that the operative portion

of the impugned order does not engage with the evidence on record

https://www.mhc.tn.gov.in/judis or provide any reasons for rejecting the opposition on the basis of

such evidence.

5. As regards the evidence adduced by the applicant, learned

counsel submitted that use was claimed in the application from

02.06.1997, whereas the invoices submitted by the applicant are from

01.04.1998 onwards. For the above reasons, learned counsel

concluded that the impugned order is liable to be set aside and the

matter remanded for reconsideration.

6. In response to these contentions, Mr.Perumbulavil

Radhakrishnan, learned counsel for the applicant, submitted that the

application was filed on 17.06.1997, whereas the hearing took place in

February 2010. Consequently, he contended that the applicant was

entitled to rely upon evidence of use subsequent to the date of

application. He also pointed out that the opponent had filed a Civil

Suit (C.S.No.862 of 2010) before the Bombay High Court to restrain

https://www.mhc.tn.gov.in/judis use of the mark SUN PLUS by the applicant and that the application

for interim injunction was rejected by the Bombay High Court. In

these circumstances, learned counsel concluded his submissions by

stating that the impugned order calls for interference only insofar as

restriction on the territory of use is concerned.

7. The impugned order is about 8 pages in length. However,

the operative portion thereof is confined to pages 6 to 8, and the key

conclusions from the operative portion of the order are set out below:

"The 1st objection taken by the Opponent that the Trade Mark is not capable of distinguishing the goods from the Applicants during the course of trade. I have examined the objections made by the Opponents and arguments made by the Ld' Counsel of the Applicants Kerala. Hence I am not able to sustain the objection of the Opponents under Section 11(1)(a) as a Trade Mark as a whole is different to the Opponent marks.

Moreover, the Applicants has claimed the

https://www.mhc.tn.gov.in/judis use of the mark and filed sufficient evidence to establish their concurrent use of Label mark since the adoption in respect of goods detergents. In special circumstances, the Applicants are entitled for Registration under Section 12 of the Trade Marks Act subject to the conditions as Register may think fit.

---

I have gone through the record available before the Tribunal and come to the conclusion that the Applicants have established their rights of Proprietorship atleast in the state of Kerala on the basis of long use, where the Hon'ble Court also recognized their Intellectual property rights under Trade Mark SUN PLUS. Hence, the Applicants are the proprietor of the mark SUN PLUS label under Section 18(1) of the Act. In the above circumstances I have to use my discretionary power under Section 18(4) of the Trade Marks Act, 1999 as the Applicants have established their Proprietorship under Trade Mark SUN PLUS Label in respect of detergents in the State of Kerela. Hence, the Application is accepted for Registration

https://www.mhc.tn.gov.in/judis and goods to be confined to read as detergent powder included in Class 3 for sale in the State of Kerala only.”

8. From the above, it is evident that the first conclusion of the

Registrar of Trade Marks was that the trade mark of the applicant is

different from the opponent's mark. Other than recording such

conclusion, no reasons are set out as to the basis for such conclusion.

The second conclusion is that the applicant is an honest and

concurrent user and, therefore, entitled to the benefit of Section 12 of

the Trade Marks Act, 1999. Once again, such conclusion was not

drawn after dealing with the evidence placed on record by the

contesting parties. The third conclusion is that the record discloses

that the applicant has established proprietorship in the State of

Kerala on the basis of long and extended use. This conclusion was

also drawn without engaging with the evidence.

https://www.mhc.tn.gov.in/judis

9. Consequently, the impugned order is unsustainable and is,

hereby, set aside. It is pertinent to notice that the interim application

in the suit filed by the opponent in Bombay was rejected and

although an appeal appears to have been filed against such order,

admittedly, there is no stay as on date. Therefore, the remand of this

matter for reconsideration would not come in the way of use of the

relevant mark by the applicant unless decided otherwise in appellate

proceedings. By taking these facts and circumstances into account, I

direct the Registrar of Trade Marks to provide a reasonable

opportunity to both parties and issue a reasoned order reckoning the

evidence already placed on record within a maximum period of three

months from the date of receipt of a copy of this order. Both the

appeals are disposed of on the above terms without any order as to

costs.

19.09.2023 rna Index : Yes / No Internet : Yes / No Neutral Citation: Yes/No

https://www.mhc.tn.gov.in/judis SENTHILKUMAR RAMAMOORTHY,J

rna

(T)CMA(TM)/3/2023 (OA/37/2010/TM/CH) (T)CMA(TM)/53/2023 (OA/30/2015/TM/CH)

19.09.2023

https://www.mhc.tn.gov.in/judis