- (1.) THE applicant is a company dealing with the business of manufacturing bleaching preparations, soaps, cosmetics etc,. The marks are label marks containing the words AYU' and are in respect of goods of different classes, namely ORA/163/2008/TM/DEL - - No. 764262 - AYUVIT in class 31 ORA/164/2008/TM/DEL - - No. 764260 - AYUMIN in class 31 ORA/165/2008/TM/DEL - - No. 727421 - AYUPET in class 5 ORA/90/2012/TM/DEL - - No. 639617 - AYURVET in class 5
(2.) THE applicants claim that they are the proprietors of the distinctive/invented trade mark Ayur and have been using it continuously, exclusively and extensively from the year 1984. They claim that it is a well known trade mark as has been defined in the Trade Marks Act, 1999. They claim that by continuous, extensive and exclusive use with large scale advertisements and publicity it has become a well known mark. The applicants activities include treatment for various diseases namely, the Panchakarma treatment. They are running an Institute called Ayur Academy of Natural Beauty. Diploma Courses and Certificate Courses are conducted in this Institute. They have registered their services under this mark in various countries and in various classes. In Three -N -Products Vs. Yash PTC 2002 at p. 580 the Hon'ble Delhi High Court has held that Ayur is an invented word which can be exclusively owned by a party without proof of its having acquired secondary significance. The applicant has given the sales figures of their products including their products under the mark Ayur from 1984 onwards. They have spent a considerable amount in popularizing the trade mark and the applicant has given details of the advertisement expenses. The applicant has filed several suits against various parties who have been seeking registration of identical or deceptively similar marks. The applicant has given details of documents to show use of their mark. They have also entered into agreements with others regarding the trade mark. According to their pleadings, the impugned marks must be removed.
(3.) THE respondent had filed its counter statement. It was originally incorporated as Dabur Ayurvet Limited. Subsequently, it changed its name to Ayurvet Limited. The respondent claims to be a premier organization in animal health care sector. It has won many awards. It started marketing and sale of veterinary medicines and food stuff for animals. It has obtained manufacturing licenses. It has honestly coined the mark Ayuvit from the word Ayur which signified "life" and vit coined from vitamins. The invented mark is a coined mark and it was applied on 13/04/1997. As regards Ayupet, they claim that Ayur was derived from the word Ayurvet (their trade name) from which they took Ayu and also from the basic nature of medicine Ayurvedic and the suffix part Pet for pet animals for whom the respondent manufacturers its medicines. As regards Ayumin, it is stated that the prefix part Ayur derived from Ayurvet and Ayurvedic and Min is taken from mineral / vitamins. As regards Ayurvet, it is stated that the prefix part is from Ayur which signifies life and Vet derived from veterinary. According to them, this mark was adopted first on 12/10/1992 then they started use of the mark in relation to veterinary preparations from 01/01/1993. The respondent has also given their sales figures. According to them, the applicant is not an aggrieved person since he has no product or business pertaining to animal feed supplements and the application has been filed for ulterior and malafide motives. In 1994, the applicant had sent a cease and desist notice to the respondent requiring the respondent to remove the word Ayuvet which was replied by a letter dated 23/08/1994. Thereafter, the applicants chose not to initiate any proceedings. The present act of filing the application is therefore clearly malafide. It is also stated that the applicant's oppositions were dismissed by the Registrar on 26/05/2009 and the appeals before the IPAB were also withdrawn, without prejudice to take action in accordance with law against the applicant, for any other remedy in respect of the corporate name of the applicant. According to the respondent, in these circumstances, this application will have to be dismissed. The learned counsel Mr. Perumbulavil Radhakrishnan submitted that the registration has been got on misrepresentation, hence must be removed. The applicants' marks are the earlier marks and therefore S. 11 will apply. The marks cannot be registered. The applicant has been prosecuting the other imitators and protecting their mark diligently. There is no sufficient cause for the mark to remain on the register. The marks which are subject matter of ORA/165/2008/TM/DEL and ORA/90/2012/TM/DEL shall be removed in view of S. 47 of the Act. The manufacturing licence is availed only from 2005 whereas the user claimed is from 1999 for which there is no evidence. The brochures that are filed as evidence do not concern Ayuvit in ORA/163/2008/TM/DEL. There is not a single invoice. There is no user from 1997. As regards ORA/90/2012/TM/DEL, the use is from only 2000. In ORA/164/2008/TM/DEL, the learned counsel submitted that the user from 1997 is not proved. Basically it has been the contention of the applicant that they are the prior users of the word Ayu and Ayur and there is no use by the respondent from the date as claimed. Since there will be deceptive similarity between the impugned marks and the applicant's marks, the impugned marks ought not to have been registered.;