V.RAVI,TECHNICAL MEMBER - (1.) THE applicant are seeking the removal of the registered trade mark LIZER (label) of the respondent under no.1347998 in Class 14 in respect of watches, horological and chronological instruments. The grounds for removal of the impugned mark are summarized below: - The very adoption of the impugned mark was dishonest ab -initio. The trademark was registered without bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him and that there has, in fact, been no bona fide use of the trademark in relation to those goods by any proprietor thereof for the time being up to a date 3 months before the date of this application. The entry made in the register in respect of the impugned trademark is an entry made without sufficient cause and/or an entry wrongly remaining on the register. The impugned trademark was registered in violation of the provisions of Section 9(1)(a) and 9(2)(a) of the Act. The impugned trademark was also registered contrary to the provisions of Sections 11 and 18 of the Act. During the course of arguments in Notice of Motion No.3981/2007 in Suit No.2757/2007, the Respondent had relied upon the impugned registration. The applicant are, therefore, persons aggrieved' within the meaning of Sections 47 and/or 57 and 125(1) of the Act.
(2.) IN the detailed Statement of Case in support of the cancellation petition, the applicants have canvassed the following grounds in support of their case.: - The applicants are renowned manufacturers of watches over the last three decades. The original founder Shri Dalichand Gomchand Seth started the business of manufacturing of watches under the name M/s Nova Trading Company in the early eighties. In 1981, he conceived and adopted the trade mark CIZER in respect of watches, time piece etc. To get statutory protection, his company applied for and obtained registration for the trade mark CIZER under no. 381030 as of 18.09.1981. Subsequently, by an assignment deed dated 01.07.1995, the mark was assigned to the applicant who are consequently the subsequent proprietor. The applicants have huge sales of watches under the said trade mark which at present is in excess of Rs. 1.1 crores. In April 2007, the applicant learnt that the respondent herein had started marketing watches under the mark LIZER which is deceptively similar to the applicants registered trade mark. The font used by the respondent is identical to the applicants CIZER logo. This undoubtedly will tarnish and dilute the reputation and goodwill attached to the applicants trade mark. The respondent have knowingly and willfully infringed the applicants registered trade mark with dishonest intention and ulterior motive to confuse and deceive consumers into believing that his goods are that of the applicant or emanate from the applicant or in some way connected or associated with or have the consent of the applicant to use the impugned mark on the goods. Being aggrieved by the use of the trade mark LIZER by the respondent, the applicants through their attorney issued a Cease and Desist Notice on 20.04.2007 informing the respondent to stop using the mark LlZER. In response thereto the respondent by his letter dated 19.09.2007 through his advocate merely denied the contention of the applicant. However, it is pertinent to note that the respondent's advocate himself was thoroughly confused between the rival marks if one peruses the reply letter of respondent. Further, the respondent were totally silent of having obtained the registration of the trade mark LIZER. In the aforesaid circumstances, the applicant filed a suit under no 2757/2007 and took out the Notice of Motion being no 3981/2007. During the hearing on 30.11.2007, the advocate who represented the respondent without filing any formal reply or producing any document made a statement across the bar that the respondent had obtained the registration of the trade mark LIZER. However, despite this, His Lordship was pleased to restrain the respondent by himself, his agent and servant by an order and injunction from in any manner manufacturing packing, selling, using or offering for sale horological and chronological instruments, watches, time pieces, wall clock and parts thereof and watch straps bearing the trade mark LIZER or any other mark deceptively similar to the trade mark CIZER so as to pass of his goods as for the goods of the applicant. His Lordship further observed that the respondents mark was prima -facie deceptively similar to the applicants registered trade mark. Further the respondent had not filed any reply to the Notice of Motion or the written statement in the Suit. Consequently, the applicant made a search from the records of the trade marks registry and found that the impugned mark was registered claiming user from 1st March, 2005. The applicants submit that the impugned mark is devoid of any distinctive character and ought to have been refused under section 9(1) (a) read with the 18 (1) of the Act. Also, as the respondent claim just one month use prior to filing the impugned application it did not merit any consideration under Section 9(1) (proviso) of the Act. In addition, having regard to the reputation and goodwill for the applicant's trade mark CIZER, the impugned mark ought to have been barred under Section 9(2) (a) as it is likely to deceive or cause confusion and the registration is also contrary to Section 11(1)(a) of the Act. It appears that the respondents do not have any statutory license to manufacture and/ or trade in watches and the impugned mark is being used by them apparently to perpetuate tax evasion to the detriment of public exchequer. The registration violates the provision of Section 11(3) (a). Besides, no concurrent use on the relevant date has been established and therefore the benevolent provision of Section 12 cannot be invoked. The respondent being in the same trade ought to have known the applicants trade mark CIZER and consequently he has no locus -standi to apply for the registration of the impugned mark having regard to section 18(1) of the Act. The conduct of the respondent clearly shows that he has committed a fraud on the registry. The impugned registration if allowed to remain in the register will be detrimental to the rights of the applicant and against public interest. In the ongoing suits between the parties, the respondent have relied on the impugned registration and as such the applicants are persons aggrieved' within the meaning of Section 47(1), 57(2) of the Act. The registration of the impugned mark will also adversely affect the purity of the register. For the foregoing reasons, there are sufficient grounds for the Board to exercise its discretion to remove the mark LIZER from the register.
(3.) THE respondent's defence is that the impugned mark was registered by following the due process of law. The competing marks are different and so neither Section 9(1)(a) or (9)2(a) are attracted. The respondent mark consists of "LIZER WITH THE DEVICE OF L & Z" which is totally different from the applicant's mark. The respondent also have challenged the sales figures furnished by the applicant. The respondent state that the alleged cause of action (confusion) a rose after two years use by the respondent and no legal injury is sustained by the applicant. The first two letters "LI" of the impugned mark means traditional measuring unit used in China and is used as a proverb to indicate great distance or the exotic and therefore the adoption of the impugned mark is honest and bonafde. The respondent state that their mark has acquired its own identity, reputation and goodwill and is distinguishable from the applicant's mark CIZER in toto. He further asserts that due to some personal reasons, the counsel for the respondent failed to file the reply to the Notice of Motion and Written Statement in the Civil Suit and they have now submitted an affidavit in this regard to the Court. There is nothing on record to show that the applicant herein represented through one of the partners Shri Suresh Kumar Dalichand Seth is an active partner of the said firm. The respondent state that both the marks have no specific meaning and therefore the impugned registration is not contrary to Section 18(1) of the Act as alleged. Even Section 11(3)(a) would be inapplicable as the applicant has not taken any action for over two years since the respondents started using the said impugned trade mark. The applicant have also not filed the assignment deed in favour of Cizer Time Industries. In brief, no case for the removal of the impugned mark has been made out by the applicant. The mater came up before us on 12.03.2013, we have heard the arguments of the Learned counsel and gone through the pleadings and documents.;