SHRI V.RAVI - (1.) THE applicants herein are seeking the removal from the Register of trade marks of application No. 1457787 in Class 34. The trade mark in question is GOPAL Chhap and the device of Lord Krishna and Cow. ( label/mark). The grounds for rectification are summarised below: -
(2.) THE applicants are the registered proprietors and the owner of the trade mark/label with the device of Lord Krishna which has been used since 1950. They hold many registration with the device of Lord Krishna in Class 34. It is being used in respect of flavoured chewed tobacco, pan masala and other tobacco products. The word Gopal' is the permanent & essential features of the trade mark of the applicant. The applicants have registered it both in English and Hindi along with device of Lord Krishna. i) They are also the owners of several copyright registration in respect of GOPAL ZARDA & GOPAL LABEL. ii) To expand their business, the applicant entered into a Trade Mark & Copyright Licence agreement in 2004 with M/s Flakes -N -Flavours and later in 2007 with M/s Gopal Corporation Limited. iii) The applicant through its licensee have been continuously promoting its sale of the said goods and the business under the said trade marks/labels through different media such as trade journals, trade literatures etc. iv) The applicants have furnished sales turn over in respect of tobacco products under the trade mark GOPAL and the Lord Krishna device from 1995 to 2006 and also the advertisement expenses for the said period. v) In view of the foregoing, the applicants are the recognized owner & proprietor of GOPAL and the Lord Krishna Device ( in English and Hindi) in respect of tobacco related products serving as source of origins of their goods. vi) Applicants are also very vigilant in taking infringement action to protect their IP rights that vest in the trade mark GOPAL (English and Hindi) and the LORD KRISHNA LABEL. vii) The respondent herein have adopted an identical/deceptively similar trade mark GOPAL CHHAP (DEVICE OF KRISHNA & COW LABEL) in relation to snuff, tobacco and tobacco articles. viii) This adoption is dishonest as in each and every respect the adopted mark is phonetically, visually, structurally identical. Therefore the respondent cannot be proprietor of the impugned mark. ix) The respondents trade mark which was advertised in the Trade Marks Journal No.1373 escaped the notice of the applicant and hence the applicants are seeking the immediate cancellation of the impugned trade mark. x) The dishonest adoption and registration of the impugned mark is actuated with a clear intention to encash on the goodwill and reputation of the applicants trade mark. xi) As the resemblance between the two marks are so close, the adoption and use is clearly a deliberate imitation. An unwary purchaser of tobacco products from the lower strata of society and other gullible people are bound to be deceived while dealing with and purchasing the respondent's goods and business under the impugned trade marks on the impression that it is emanating from the applicants source or that some vital links exist between the applicant and the respondent. Innocent purchaser would be deceived and irreparable loss caused to the trade and consuming public. xii) In view of the prior adoption and registration of an identical mark for the same products, the registration of the impugned mark is bad in law. It is contrary to the provisions of Section 9, 11,12, 18, 47 and 57 the Trade Marks Act, 1999. Therefore, the impugned registration of the respondent is void ab -initio. xiii) In the light of the foregoing, the applicants pray that the impugned trade mark be removed from the Register.
(3.) THE case of the respondent is as follows: - (i) The present rectification application is not maintainable as the applicant is not a person aggrieved' within the meaning of the Section 57 of the Act. There is no ground favourable to remove the impugned mark. The respondents' label/mark is totally different and distinct with its unique colour combination artwork, device of Lord Krishna and Cow packaging and overall get up and, therefore, the impugned mark is inherently distinctive of the respondent's goods. The respondent is in the business of snuff whereas the applicant's are into tobacco and zarda and there is no conflict between rival mark and the goods. ii) The respondent is using the impugned mark since 1960 openly and extensively and uninterruptedly without any objection. iii) There is no complaint of confusion or deception for the last four decades and the present petition is merely to harass the respondent. The respondent has been using the trade mark GOPAL since 1960 initially through its predecessor and subsequently by the respondent himself without any complaint of confusion or objection from the market. The applicant has not objected to the use and registration of the respondents mark Lord Krishna for more than four decades on account of confusion or deception. The present application is therefore barred by the principle of estoppel. iv) The impugned mark is an auspicious symbol and is used by many traders for different products and the applicant cannot claim exclusive rights over the word mark GOPAL or the device of Lord Krishna and the Cow it being publici juris. v) Documentary evidence produced by the applicant is full of discrepancies. For instance, there are different partners in different applications sought by the applicant and the ownership status is not clear. Further, many invoices produced are illegible and not reliable. Also a large number of the invoices are hand -written. Most of the invoices do not contain the word GOPAL and hence irrelevant and none of the invoices is for the goods in respect of which the respondent are the registered proprietor. Also, the licence agreements with the applicants are not reliable as they are in respect of different marks for totally different goods. vi) The registered trade mark of the applicant is in respect of products other than snuff' and are easily distinguishable. vii) The respondents predecessor M/s Jagjivandas Bhanji Dani & Co., (also known as J.B. Dani & Co.) had honestly coined and adopted the mark/label GOPAL in a special and particular manner along with a full picture of Lord Krishna with cow having a different and distinct colour combination and get up in the year 1960 . Their predecessor were the owners of the registered trade mark GOPAL label along with the device of Lord Krishna and cow under application No. 415478 since 1984. The respondents have applied for another application under No. 1457787 in their own name being the impugned mark. It is hard to believe that applicant's are not aware of this. viii) The present rectification suffers from delay, laches and acquiescence and the applicant is estopped by his own conduct from taking objection. The respondent have been in the market for over four decades. The respondent further states use of numeral is common to tobacco trade. Thus the allegation of confusion or deception are totally baseless. The respondent vehemently deny all statement, averment or claim of the applicant. Thus application No. 268259, 331481 and 333612 of the applicant are for totally different goods bearing different mark. The respondent is doing business in SNUFFS'. On the date of application respondent s mark was distinctive of his goods. Any use or registration or reputation of applicants mark are irrelevant for the present proceedings. It is in the interest of justice, equity and good conscience to dismiss the present rectification application. From the record, it is obvious that the applicant hold more than 40 registration for the word Gopal in Class 34. But not all is accompanied by the device of Lord Krishna or cow. Yet at least 16 of these 40 are device mark containing the picture of Lord Krishna and Cow. However, one noteworthy feature of these registration is almost 37of 40 (over 92% of registered trade mark) is in respect of Chewing Tobacco (Zarda), the rest being for pan masala and betel spice and gutka. The other point to note is the very vast and consistently impressive annual sales figure of over Rs. 100 Crs since 2000 achieved by the applicant for a whole range of tobacco products. The applicant have proved the ability to protect statutory rights by securing injunction in several cases. Further, their advertisement expenses in 2005 -06 for instance was over Rs. 44 lakhs. All these show the tremendous goodwill enjoyed by the applicant in respect of his registered trade mark.;