Madras High Court
Vinsa Electricals Private Limited vs Polar-Mohr Maschinenvertriebs on 26 June, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 26.06.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
(T)OP(TM) No.97 of 2023
(ORA/191/2013/TM/CHN)
VINSA ELECTRICALS PRIVATE LIMITED
Registered Office at:
51, Ezra Street, 2nd Floor,
KOLKATA-700 001 ...Petitioner
-Vs-
POLAR-MOHR MASCHINENVERTRIEBS
GESELLSCHAFT GMBH & CO. KG
(A company incorporated under the laws of Germany)
Hattersheimer Strasse 16-36,
D-65719, Hofheim/Taunus
GERMANY ... Respondent No.1
ADDRESS FOR SERVICE IN INDIA
M/s. CHANDRAKANT M. JOSHI
Patent & Trade Mark Attorneys,
501, Vishwa Nanak, Chakala Road,
Andheri (East)
MUMBAI-400 099.
REGISTRAR OF TRADE MARKS
Trade Marks Registry,
Intellectual Property Rights Building,
1/12
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Industrial Estate SIDCO RMD,
Godown Area G.S.T.Road, Guindy,
CHENNAI-600 032. ... Respondent No.2
Prayer: This transfer original petition (Trade Marks) filed under
Sections 47, 57 and 125 of the Trade Marks Act, 1999, praying that:
(i) the entry relating to the impugned trademark/label
“POLAR” registered under No.1445891 in Class-07 may be removed,
cancelled and expunged from the Register of Trade Marks
(ii) Costs of the proceedings may be awarded in favour of
the petitioner and against the respondent
(iii) for such further and other relies as this Court deems
just and proper in the facts and circumstances of the case.
For Petitioner : Mr.M.K.Miglani
For R1 : No appearance
For R2 : Mr.M.Marthikeyan, SPC for R2
**********
ORDER
By this petition, the petitioner seeks to rectify the register of
trade marks by expunging the entry relating to the registration of
trade mark No.1445891 in Class - 7 in respect of the following mark:
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2. By order dated 17.11.2023, it was recorded that the bailiff's
report of 11.10.2023 records that notice was served on the first
respondent through its agent in India on 11.10.2023. After further
recording that M/.s. N.D.Kasthuri and G.Ramji, Advocate, appeared
on behalf of the first respondent at the hearing on 12.10.2023 and
stated that they have no further instructions, learned counsel for the
Registrar of Trade Marks was directed to ascertain whether the first
respondent has communicated a change of agent or change of
address for service in India. At the subsequent hearing on
12.12.2023, learned counsel for the Registrar of Trade Marks
reported that no change of address or change of agent was
communicated to the Trade Marks Registry. Therefore, it was
recorded that the matter would be proceeded with in the absence of
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the first respondent. Thus, the matter has proceeded since then in the
absence of the first respondent.
3. The petitioner asserts that it adopted and used the trade
mark 'POLAR' in the year 1972 and has used the trade mark openly,
honestly and continuously since then. It is further stated that the
trade mark is applied to a range of products including electric fans,
washing machines, mixies, lamps, lights and fixtures and even
marbles and tiles. The petitioner further states that its sales turnover
is substantial and that it was 2118.43 lakhs in financial year 2009-10
through Polar Industries Limited and Rs.6140.17 lakhs in the same
financial year through Polaron Marketing Limited. As regards
advertising expenses, it is stated that a sum of Rs.80.16 lakhs was
expended for this purpose in the financial year 2009-10 by Polaron
Marketing Limited and a sum of Rs.37.20 lakhs by the petitioner.
4. According to the petitioner, the contesting respondent made
several other attempts to obtain registration of the trade mark
'POLAR' and 'POLAR MOHUR' in India. On each of those occasions,
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the petitioner opposed the application. Eventually, those applications
were deemed to be abandoned because the contesting respondent
either did not file evidence in support of the application or did not
attend hearings in relation thereto.
5. Learned counsel for the petitioner referred to documents in
support of the above assertions and submitted that the petitioner has
established that it has acquired enormous goodwill through the
extensive sale and marketing of its range of products. He further
submits that the first respondent applied for and obtained
registration of a deceptively similar mark by asserting use since
23.03.1992. Learned counsel contends that such assertion of use is
false. In spite of filing a counter statement with supporting
documents while these proceedings were pending before the
erstwhile Intellectual Property Appellate Board (the IPAB), learned
counsel submits that no evidence of use was submitted. Instead, he
points out that the first respondent had placed on record search
reports relating to other marks containing the element 'POLAR' or
variants thereof. He submits that many of the marks listed in such
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search reports were rejected or abandoned and, in any event, such
search reports do not constitute evidence of use.
6. In view of the reputation and goodwill of the petitioner and
the use of the mark in relation to a range of products which cut across
classes, learned counsel submits that the petitioner is entitled to seek
rectification under Section 57. In view of non-use of the impugned
mark, he submits that a case is also made out for rectification under
Section 47. In this connection, by referring to the judgment of the
Division Bench of the Delhi High Court in Suresh Kumar Jain v.
Union of India and another, 2012 (49) PTC 287 (Del.), learned
counsel submits that the Delhi High Court upheld the decision of the
Single Judge affirming the order of the IPAB, wherein the
registration on the basis of a false assertion of use was cancelled.
7. Learned counsel for the Registrar of Trade Marks made brief
submissions in response. He pointed out that the first respondent
seems to apply the impugned mark in relation to paper cutting
equipment. He also submits that there does not appear to be any
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evidence of use in India although it is possible that the product may
be imported and sold in India.
8. In proceedings before the erstwhile IPAB, prior to the
transfer of these proceedings to this Court, the first respondent had
filed a counter statement. In the counter statement at paragraph 3, in
relevant part, the first respondent stated as under:
“The Respondent No.1 are carrying on
this business without any interruption from
any body ever since 23.03.1992. The
Respondent No.1 company is openly,
extensively and continuously using the
registered impugned trade mark “POLAR
(LABEL)”.
Various documents were exhibited by the first respondent along with
the counter statement as Exhibits A to F. On examining these
exhibits, any evidence of use is conspicuous by its absence. Instead,
the petitioner has placed on record the registration certificate in
relation to the impugned mark, registrations obtained by the
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petitioner for the impugned mark in other jurisdictions outside India
and search reports relating to applications for registration of marks
as evidence that deceptively similar marks find place in such search
reports. As regards these search reports, it is noticeable that they
relate to marks which were registered, withdrawn, objected to,
abandoned and the like. The Hon'ble Supreme Court concluded in
Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959
SCC OnLine SCC 11 that reliance on search reports as evidence of use
is misconceived and that parties are required to place on record
actual evidence that the mark is being applied to products which are
available in the market.
9. The petitioner is the registered proprietor of the mark
'POLAR' and its variants in relation to a range of products. The first
respondent has obtained registration of a device mark containing the
word 'POLAR' written in a stylised manner. As such, the petitioner
qualifies as a 'person aggrieved' not only for purposes of prosecuting
the petition under Section 57 but by also meeting the higher
threshold under Section 47 of the Trade Marks Act, 1999 (the TM Act)
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10. Under Section 47 (1)(a) of the TM Act, if a trade mark were
to be registered without any bona fide intention on the part of the
applicant to use the mark in relation to the relevant goods or services
and, in fact, there were no bona fide use of the trade mark in relation
to those goods or services up to a date three months before the date of
the application, the entry relating thereto is liable to be removed.
Under clause (b) of sub-section (1) of Section 47, if the impugned
mark has not been used for a continuous period of five years or
longer up to a date three months prior to the date of presentation of
the petition, the petitioner would be entitled to removal of the
impugned mark.
11. In this case, registration was obtained by asserting use since
23.03.1992. As noticed earlier, the first respondent failed to provide
any evidence of use in spite of filing a counter statement along with
supporting documents. Therefore, a case is made out for removal of
the mark under both clauses (a) and (b) of sub-section (1) of Section
47. Under Section 57(1) of the TM Act, any person aggrieved may
apply to the Registrar or High Court to cancel or vary the registration
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on the ground, inter alia, of any contravention or failure to observe
condition(s) entered on the register in relation thereto, and, under
Section 57(2) thereof, if an entry were to be made on the register
without sufficient cause or, even if made with sufficient cause, if its
continuance on the register is without sufficient cause, rectification is
warranted.
12. The first respondent had represented to the Registrar of
Trade Marks that the relevant mark had been used since 23.03.1992,
whereas no evidence of use appears to have been placed either before
the Registrar of Trade Marks or even before this Court. Therefore, the
entry was made on the assumption that the relevant mark is being
used from 23.03.1992. In the absence of any evidence of use of the
relevant mark, the entry relating to the mark on the register
undoubtedly continues on the register without sufficient cause.
13. For reasons stated above, this petition is allowed by
directing the Registrar of Trade Marks to expunge the entry relating
to Trade Mark No.1445891 in Class 7 from the Register of Trade
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Marks. This exercise shall be completed within 30 days from the date
of receipt of a copy of this order. There shall be no order as to costs.
26.06.2025
Index : Yes/No
Internet : Yes/No
Neutral
Citation : Yes/No
kal
To
THE REGISTRAR OF TRADE MARKS
Trade Marks Registry,
Intellectual Property Rights Building,
Industrial Estate SIDCO RMD,
Godown Area G.S.T.Road, Guindy,
CHENNAI-600 032.
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SENTHILKUMAR RAMAMOORTHY J.
kal
(ORA/191/2013/TM/CHN)
26.06.2025
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