SAROOP PRAKASH NAYAR Vs. CHESEBROUGH PONDS INC
INTELLECTUAL PROPERTY APPELLATE BOARD
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Z.S. Negi, Vice-Chairman -
(1.) THIS petition/application had been filed by the petitioner/applicant in the High Court of Delhi for cancellation/ removal of the trade mark registered under Nos. 173564, 210282 and 262427 all in class 3 which are registered in the name of respondent No. 1. The High Court of Delhi has, in pursuance of Section 100 of the Trade Marks Act, 1999, transferred the same to the Intellectual Property Appellate Board which has been numbered by this Board as TRA/l/2005/TM/DEL.
(2.) The respondent corporation which is incorporated under the laws of New York, United States of America has obtained registration of the above mentioned trade marks 'POND'S' with descriptive words 'Dream flower talc' subject to disclaimer, in the case of No. 173564 that registration of this Trade Mark shall give no right to the exclusive use of the floral design and in the case of No. 262427 that registration of this Trade Mark shall give no right to the exclusive use of the device of a container. In compliance with the requirements of the provisions of the Foreign Exchange Regulation Act, 1973 and order of the Reserve Bank of India, the respondent corporation formed a company on 5.5.1977 under the Companies Act, 1956, namely Pond's (India) Private Limited, [now converted to Pond'(India) Limited] and that company is user of the trade marks in India as a registered user (though application for registration of registered user is pending registration).
The applicant at the outset has described his business activities and the reputation which he has established since 1970 in marketing his goods talcum powder under the trade mark 'PANAMA' with descriptive words 'Bloom Flower Talc/Deluxe Talc' and decorative, floral design with pink colour back ground and the distinguishing feature of his container is a twig of rose flower with the device of a blooming rose in an oval shape. The applicant holds copyright registrations Nos. A-29525 and A-21494, both of 1978 under the Copyright Act, 1957 with regard to the artistic designs of his containers. The applicant claims to be an aggrieved person in view of a case filed by the respondent No. 1 which is pending in the High Court of Delhi as Suit No. 1271 of 1981 and seeks cancellation/removal of trade marks of the respondent from the register on the grounds that the registration of the impugned trade marks are descriptive and laudatory with regard to talcum powder and as such are contrary to the provisions of Section 9 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) on the date of their registration and on the date of filing the rectification application. Further, the trade marks are in non-use in respect of goods in India, the respondent has no bona fide intention to use the marks in India at the time of registration and even till date and in any case the use of the trade marks by the Pond's (India) Limited can not constitute the use by the registered proprietor in India. The respondent corporation has neither made any bona fide use of the trade mark in India nor has used for more than five years and one month as' on the date of filing of this application and that the respondent was neither the proprietor of the trade mark on the date of its registration nor it is so till date and thus the registrations were made in contravention of the provisions of Section 18(1) of the Act and are wrongly remaining on the register. It is also stated that the registration of the impugned trade marks were made subject to disclaimer of the floral design and the device of the container, as these were and still are common to trade, but the respondent is making extravagant and unauthorized claims on the score of the said registration and, therefore, the applicant in particular and other traders in general are embarrassed by the said registrations reaming on the register.
(3.) RESPONDENT No. 1 filed reply to the petition/application and thereafter petitioner/applicant filed replication to reply filed by the respondent No. 1. Lastly affidavit by way of evidence affirmed on 31.8.1998 by constituted attorney of respondent No. 1 was filed. The application came up for hearing, when Shri R.N. Prabhakar, Advocate represented the applicant and Shri Sanjay Jain, Senior Advocate alongwith Ms. Krishna Arora represented respondent No. 1.;
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