Decided on November 16,2006



Z.S. Negi, Vice-Chairman - (1.) THESE two CO. being Nos. 18 of 1999 and 24 of 1998, which were filed under Sections 46, 56 and 107 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) in the High Court of Delhi, have been transferred by that High Court to the Intellectual Property Appellate Board pursuant to the provisions of Section 100 of the Trade Marks Act, 1999 and the Board numbered them as TRA/136/2004/TM/DEL and TRA/155/TM/DEL, respectively.
(2.) Since both the parties have filed petitions/applications for cancellation of each others trade marks, therefore, for the purpose of convenience, instead of referring the parties in the applications as petitioner/applicant and respondent No. 1, the last names of the parties are being referred to as "Shri Kishan" and "Shri Singh" in conjunction with the applicant or, as the case may be, the respondent No. 1. Shri Kishan, the applicant seeks for rectification/cancellation of the entry relating to registered trade mark 'Citizen', under No. 423100 as of 11.6.1984 in respect of electric bulbs included in class 11, in the name of Shri Singh, the respondent No. 1 and Shri Singh, the applicant seeks for cancellation Of registered trade mark 'Citizen', under Nos. 350335 as of 13.6.1979 in class 11 in respect of electric heating appliances, electric lamps, electric fans and brackets (hanging) and 350336 as of 13.6.1979 in class 9 in respect of wires (electric), cables (electric), holders (electric coil) switches (electric), chokes, fuses, kitkat (electric) and plug, tops (electric), respectively, in the name of Shri Kishan, the respondent No. 1,
(3.) SHRI Kishan, the applicant states that M/s. Citizen Electrical is his sole proprietorship firm which is the prior adopter of the trade marks Citizen and the said marks have been renewed from time to time and are valid, subsisting and conclusive throughout the country. He is using the said mark since 1976 (within the knowledge of SHRI Singh, the respondent No. 1) extensively, continuously and uninterruptedly throughout the length and breadth of this country. SHRI Kishan, the applicant claims that the trade mark Citizen on account of long, continuous, extensive use, extensive marketing network and extensive advertisement campaign and excellent quality of goods has acquired enviable reputation and goodwill amongst the purchasing public and trade which has become distinctive of the goods and business of the applicant. He claims to a person aggrieved because of filing of a Suit by SHRI Singh, the respondent No. 1 against him before the District Judge, Delhi. The main grounds of application are that the impugned registration of trade mark in the name of SHRI Singh, the respondent No. 1 is unlawful and contrary to the various provisions of the Act and registration thereof is without any bona fide intention of use as immediately preceding this application five years has expired during which there has not been any bona fide use of the trade mark in respect of goods in which it is registered. The use of the impugned trade mark by SHRI Singh, the respondent No. 1 is likely to cause confusion and deception amongst the public and trade and as such the impugned registration offends against the provisions of Section 11(a) of the Act. Further, SHRI Singh, the respondent No. 1 is not the proprietor of the trade mark, the registration of the impugned trade mark was obtained by making false statement about ownership of the mark as well as misleading claim and as such the registration is a fraud upon his vested and legal rights in the trade mark Citizen. The adoption of impugned trade mark Citizen on the part of SHRI Singh, the respondent No. 1 is dishonest and existence of such trade mark on the register affects the purity of the register.;

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