Z.S. Negi, Vice-Chairman -
(1.) THIS application has been filed by the applicants under sections 47/57/125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) for rectification of trade mark 'ARGOLD' in class-5 under No. 261864 as of the date 11.03.1994, in respect of insecticides, larvicides, fungicides, pesticides, preparations for killing weeds and destroying vermin, registered in the name of the first respondent, by removal of the said mark from the register.
(2.) It is stated that the first applicant adopted the mark 'AGRI GOLD' in early 1994 and subsequently on finding that no name or similar name in the Register of Companies, got the second and third applicants incorporated under the Companies Act, 1956. The second applicant was incorporated with the objective of promoting corporate cultivation. The third applicant is engaged in producing organic manure using the process of Vermi compost. All the fertilizers manufactured by the third applicant have been marketed with the trade mark 'AGRI GOLD' and they have been received well in the market. The applicants have spent substantial sums of money in advertising the trade mark 'AGRI GOLD' through various media. The trade mark 'AGRI GOLD' is indisputably connected with the applicants and their group of companies since 1995.
The first applicant filed application Nos. 935849 dated 30.06.2000 and 1051710 dated 12.10.2000, both in class-1 and application No. 1051709 dated 12.10.2001 in class-5 for registration of the trade mark AGRI GOLD. All the applications have been accepted for advertisement. When one of the trade mark applications, namely, application No. 935849 dated 30.06.2000 for chemical products used in the industry, science, photography, agriculture, horticulture, forestry, manure (natural and artificial), fire extinguishing compositions, tempering substances and chemical preparations for soldering; chemical substances for preserving food stuffs; tanning substances, adhesive substances used in the industry was advertised, before acceptance, in the Trade Marks Journal No. 1327 (Supplement 3), dated 17.1.2005. The Trade Marks Agents for the second respondent sent a notice on 17.06.2005 claiming that the second respondents are the registered trade mark owner in India and around the world for the word mark ARGOLD with respect to insecticides, larvicidies, fungicides, pesticides, herbicides, preparations for killing weeds and destroying vermin and also alleged that use of the mark AGRIGOLD will tantamount to infringement and passing off. On that score, the counsel for the second respondent illegally instructed the first applicant to delete forthwith agriculture, horticulture, forestry, manure (natural and artificial), from the description of goods for which the applicants claimed proprietary right for the word mark AGRIGOLD. The applicants found from the Journal No. 1287 (Supplementary 3) that the trade mark ARGOLD was not registered in the name of the second respondent but registered the name of a different proprietor (American Cyanamid Company). On insistence by the first applicant for the production of the registration certificate and proof for the use of the mark ARGOLD in India by the second respondent, their counsel replied that the trade mark No. 621864 is not in their name but in the name of their predecessors in interest. The second respondent claimed that steps have been taken to bring their name as the subsequent proprietor of that registered Trade Mark. The applicants through their business net work investigated in respect of the use of the mark ARGOLD but it was found that the mark ARGOLD has not been used either by the first respondent or by the second respondent for any of the goods for which they claim proprietary right. As such the mark registered is liable to be removed for non-use continuously for a period of 5 years and 3 months on the date of filing this application on the following among other grounds that the applicants have already invested huge sums of money to promote their business particularly in the field of agriculture, horticulture, fertilizes, etc, in very large scale. Since the counsel for the second respondent has issued the threatening notice, the very existence of the applicants' business is in danger, hence, the applicants are the aggrieved persons to initiate the proceeding for removal of the mark on the ground of non-use of the mark ARGOLD continuously for over five years and three months.
(3.) THE grounds for rectification taken are that the first respondent, on the date of filing application for registration on 11.03.1994 has no bona fide intention to use the word mark ARGOLD in respect of the goods for which they claim proprietary right and that the second respondent has not used the mark continuously for five years and three months on the date of filing this petition and, hence, the mark is liable to be rectified for non-use and no bona fide intention to use; that the first respondent claims proprietary right but has no business establishment India or they are not having any licencee to use the mark to carry the business in India with the mark ARGOLD in relation to the goods in respect of which they claimed proprietary right; that the second respondent without registration in their name the mark ARGOLD in respect of agriculture, horticulture, forestry, manure (natural and artificial) has illegally threatened the applicants to remove the above description of goods. This threat of legal action has affected the applicants' business in large extent. It is further averred that the mark registered illegally in the name of the first respondent is used for the purpose of preventing the bona fide traders like the applicants and it is registered for the purpose of trafficking on Trade Mark; that the mark which is liable to be rectified for non-use is non-est in eye of law and such a mark cannot be assigned for the purpose of causing injuries against bona fide traders like the petitioners and that the mark registered illegally in the name of the first respondent which is used for groundless threat is liable to be rectified, apart from non-use or no bona fide intention to use the mark continuously for 5 years and 3 months.;