V.RAVI,TECHNICAL MEMBER - (1.) THE applicants are seeking the removal of the registered trade mark No. 551738 in Class 25 of the respondent. The trade mark in question is VAGABOND. The grounds for seeking cancellation of the impugned mark is summarised below: v The applicant is a huge conglomerate present in many countries and carrying on an old established international business of manufacturing and marketing "Clothing, foot wear and head gear". The applicants are the proprietor of the trade mark VAGABOND which forms the most memorable and dominant part of its corporate name. The trade mark VAGABOND has been registered in many countries including UK, US, JAPAN, RUSSIA, Canada, Singapore etc. It was first registered in US on 16.11.1937. This mark enjoys extensive and continuous international use since 1972. The mark has been popularized through print and electronic media and VAGABOND is allegedly a well known mark in India. Copies of brouchers, posters, catalogues, photographs from big fairs and advertisement material issued since 1985 duly authenticated and certified by the advertising agency are furnished. Due to prolonged use and advertisement, the trade mark VAGABOND squarely comes within the definition of well known trade mark under Section 2 (1)(zg) read with Section 11(6) of the Trade Marks Act, 1999. The applicant have applied for the registration of the trade mark VAGABOND in Class 25 under No.1014191 which was opposed by the respondent herein claiming to be the proprietor of the impugned trade mark under no 551738. The impugned mark is registered in the name of respondent no.1 and as respondent no.2 has been officially recorded as a subsequent proprietor and because respondent no.2 has not given any details in the notice of opposition of how he claims to be proprietor of the impugned mark VAGABOND in India, both respondent no. 1 and respondent no. 2 have been impleaded as necessary parties in these proceedings. v The applicant have successfully cancelled and also opposed the trade mark registration VAGABOND of respondent in many countries. The applicant is the original adopter and the rightful owner and proprietor of the trade mark VAGABOND within the meaning of the Section 18(1) of the Act. The impugned mark was filed on 29th May, 1991 on a "proposed to be used" basis. On being served with a copy of notice of opposition in August, 2005, the applicant through their business network in India investigated into the use of the impugned mark and found that it has never been used by the respondent. The applicants are in the same trade as the respondent and their application is facing legal hurdle as it has been opposed by the respondent herein and hence the applicant are person aggrieved to initiate cancellation proceedings. The applicants are seeking cancellation of the impugned mark under Section 47 and 57 of the Act on the following ground: a. there is no bonafide intention on the part of the respondent to use the impugned mark. b. The respondent have no business establishment or infrastructure in India nor do they have any distributor or license agreement to use the mark and the impugned registration is blocking the genuine proprietor from seeking statutory protection under the Act. The impugned mark has been wrongly registered as the respondent are not the proprietor of the trade mark VAGABOND and is not distinctive of the goods and therefore offends Section 9 of the Act. This is a case of the triple identity and the impugned mark offends section 11(1), 11(2) and 11(3) of the Act and continues to wrongly remain in the register affecting the purity of the Register. The registration has been obtained malafidely solely for the purpose of trafficking in the trade mark. Any step taken to record the 2nd respondent as subsequent proprietor is liable to be stayed in view of the pending rectification. The respondent has no principal place of business in India and services, if any, has to be made through their agent at New Delhi. In the aforesaid circumstances, the applicant pray that the impugned mark be removed from the register. c. The evidence in support of cancellation petition includes inter -alia: (i) A list of 41 countries wherein the trade mark VAGABOND has been registered along with the registration certificate as proof thereof (ii) the International Registration under the Madrid Protocol (iii) Auditors Certificate concerning turnover in several important countries (iv) Copies of brouchers, posters, catalogues, photograph of big fairs held in Germany and advertisement materials etc. all of which are clear evidence that the grievances of the applicant are bona fide and correct that the respondent are seeking to milk the established goodwill of the applicant's established trade mark with considerable cunning. The best of minds of the trade marks registry rose to the bait and allowed the impugned mark to go to the register. As a result the applicant are presented with a fait accompli with a message to the applicant, it is too late for you to enter the Indian market. The devasting implication of registration of a stolen mark is all too obvious. d. The respondents have not filed any counter statement. The matter was listed for hearing initially on 18.07.2013 when the respondent was absent and it was posted once again on 21.08.2013 when the respondent was again absent and therefore the respondent was set ex -parte. The applicants counsel was present and argued his case.
(2.) WE have gone through the records and the pleadings. This is a straight forward case by a genuinely aggrieved person. The well -known dictum is that if the applicant at the time of making the application had knowledge that the mark as applied for or a similar mark had already been used by another trader in relation to similar goods, then the claim to proprietorship made by him is false and fraudulent [See Gynomin (1961) RPC 408; Vitamin's Appln. (1956) RPC 1 and Brown Shoe's Appln. (1959) RPC -29]. The root of any trade mark application is an assertion under Section 18(1) "claiming to be the proprietor thereof" of the mark applied for. That claim has been challenged in this proceeding and it has not been traversed by the respondent herein.
(3.) THE Apex Court has held in "Milment Ortho Industries and Ors. Vs Allergan Inc." - 2004(28) PTC 585 SC that the mere fact that the party has not used the mark in India would be irrelevant if they were first in the world market. The applicants have used the trade mark outside India and have proved their intention to use in India by filing an application for registration. The applicant's use outside India is not in dispute. The conduct of the respondent in the instant case speaks for itself leaving the applicant shell shocked giving the signal that imposters can set up any claim in the registry. The substantial purpose of the trade marks law in India is to ensure orderly marketing of goods and services. Registration of the impugned mark only defeats this objective. The impugned mark is a blatant copy of the applicant's trade mark VAGBOND and should be removed from the register forthwith. Accordingly, ORA/82/2006/TM/DEL is allowed and registered trade mark 551738 in Class 25 is removed from the register. There is no order as to costs.;