V.RAVI,TECHNICAL MEMBER - (1.) THE applicant is a proprietary concern and is engaged in the business of manufacturing and marketing pressure control walls and regulators, filters, safety shut off system and instrument systems for the last four decades. They are doing extensive business all over India and their products are widely exported. The applicants seek removal of the registered mark NIRMA under no.422864 (in Class 6) of the respondent. The main ground for cancellation are summarised below: The applicant assert that they are the proprietors of the trade mark NIRMAL with a device since 1973. This mark was inspired and coined from the first name NIRMALA w/o Shri Dinkarrai. V. Desai a former partner of the applicant firm. The applicant had applied for the registration of the trade mark with device under no.1009559 in Class 6 which was opposed by the respondent herein being opposition No.BOM -164430 mainly on the ground of deceptive similarity with registered trade mark NIRMA in Class 6. The Registrar of Trade Marks had refused the applicant's application for registration which has been appealed before the Board and is pending adjudication. The applicants are therefore person aggrieved' within the meaning of the Act. The applicants state that the respondent have not used the impugned mark NIRMA for any of the goods falling in Class 6 and in fact used its registration as an instrument of fraud to deprive rightful proprietors from acquiring valuable statutory protection of its mark. There has been no use of the impugned mark till date by the respondent registered proprietor nor is there any bonafide intention to use the impugned mark for the goods covered under the said class. In fact more than five years and three month have passed since the impugned mark is entered in the registered without any use of the same. Objection to the impugned mark is based on section 9(1)(a), 18(1), 47(1) (a) and (b) of the Act. The impugned registration has been made with a malafide motive of blocking bonafide and actual users of other marks. Further, the respondent is not entitled for the benefit of Section 32. As an alternative plea, the impugned registration also offends Section 11(3) of the Act.
(2.) THE case of the respondent is briefly indicated below: The respondents are engaged in the business of manufacturing and marketing various industrial and consumer goods and the impugned trade mark NIRMA is well known in the market. The respondents have registered NIRMA in all 42 classes under the Trade Marks Act. The impugned mark was adopted in 1969 from the promoters daughter's name Nirupama. The respondent are mainly engaged in the manufacture of toilet soap, liquid blue, shampoo, detergents and other chemicals. The respondents has recently acquired a US based company styled "Searless Valley Minerals". This company is among the top seven producers of Soda ash in the world which is used in the manufacturing of detergent, glasses and water treatment. The company also owns 31 miles railway track; 6 Electrical engines carrying 1600 railway wagon etc. One of its subsidiary deals with mineral operation. The respondents further state that in 2003 they had signed an MOU with the Government of Gujarat under Vibrant Gujarat Summit to set up a cement project in Gujarat for which 268 acres of land have been provided by the State Government. In addition, NIRMA has undertaken a host of activities in education and social development area including contribution towards running of schools, colleges both within and outside the State. The respondent is also home to one of the largest pharmaceutical and medical company in Asia spread over 650 acres. In fact the brand NIRMA is the largest in India's detergent market and it holds 38 % share. NIRMA is registered in 100 countries and sold through two million retailer to over 400 million consumers. The corporate name NIRMA Limited is also registered under the Companies Act 1956 and listed both at the Bombay Stock Exchange and National Stock Exchange. The respondent mark NIRMA is also registered under the Copyright Act,1957. The respondents have been very vigilant in protecting its trade mark NIRMA. As many as 17 applications before the Registrar of Trade Marks for NIRMA have been opposed by them and have been either abandoned or withdrawn by the applicant. The respondent are also the proprietors of the trade mark NEEMA in as many as 96 countries. The respondents are also diversifying their business into goods falling in class 6 either by themselves or through its subsidiary company in US. The respondent have taken on long lease of 30 years nine mines in order to extract limestone from them and has obtained in -principle approval' for the same. The respondent state that the present rectification application is filed by NIRMAL Industrial Control Pvt. Limited whereas NIRMAL Industries are described as the proprietor. Thus there has been mis -joinder of parties which is a major defect in the present petition. The applicant have not produced the alleged Partnership Deed dated 03.02.2000 wherein NIRMAL Company has been inducted as a partner. Further, no documents have been produced to support the dissolution of Partnership Deed. Thus the applicant cannot be regarded as the proprietor of trade mark NIRMAL. The Registrar of Trade Marks has already refused the application for registration of the NIRMAL as a trade mark in view of the prior registration of the impugned mark. The respondents trade mark NIRMA was born in 1969 whereas the applicant's mark NIRMAL was born in 1973. Both the parties are in the same market and therefore there is bound to be public confusion by the use of the applicant's mark in the market. None of the grounds raised by the applicant is tenable and the impugned application for rectification is liable to be dismissed with exemplary costs.
(3.) REBUTTAL : The applicants vehemently deny all the averments made by the respondents in their counter statement and reiterate and reaffirm all the issues and contentions raised in the application for rectification. The applicants submit that the respondent have never used the impugned trade mark for any of the goods covered and falling in Class 6. The respondents are mainly in the business of manufacturing and marketing detergent and soaps and never used NIRMA in relation to control valves. Further, the claim that the impugned mark is used for consumer products and consumer durables by the respondent is a palpably false statement. Besides, the acquisition of a company namely "SEREAL VALLEY MINERALS (SVM) is irrelevant for the purpose of present proceeding. Also, the booklet of SVM (Annexure C') provides only details of its mining activity and nowhere in the said booklet anything is mentioned about the respondent. The applicant's specifically deny that the respondents are doing any business in respect of goods in which the applicants are manufacturing and trading. The applicant's own trade mark NIRMAL is recognized in trade and business as an accomplished brand. Concerning the 17 opposition filed by the respondent and cited in the Counter Statement none of the cases has been disposed of on merit after adjudication and all the applications have been either abandoned or withdrawn. The reference to NEEMA trade mark of the respondent is irrelevant for the present proceeding. The applicants state that the registration in other countries will not purify the taint of excessive monopoly and protection sought by the respondent in respect of goods for which they have no intention of ever using the impugned trade mark. The Annual Report (Annexure D') does not prove any use in respect of the goods covered under the impugned registration. The applicants reiterate that the respondents have no case on merit and are trying to side track the real issue by padding up wholly irrelevant documents which have no bearing to the case on hand. The applicant also deny that the subject rectification petition is required to be rejected at the threshold for want of clarification /ownership in the mark NIRMAL. A bare perusal of the petition makes it amply clear that NIRMAL Industry is a proprietary concern wherein NIRMAL Industrial Controls Pvt. Ltd. is its sole proprietor. The applicant also state that the respondents have applied for the registration of the impugned mark NIRMA in class 6 only in 1984 as a proposed mark' whereas the applicants mark NIRMAL is in continuous use since 1973. Thus, the applicants are the prior user of the trade mark NIRMAL and are entitled to the protection of Section 34 as their trade mark has been honestly and independently conceived at least 12 years prior to the respondent's trade mark. Further, the applicant state that the order of the Registrar in the opposition has already been challenged and an appeal is pending being appeal No. 07/2010 before the Board. The respondents are misinterpreting the order of the Registrar by giving a one sided picture of the findings. Regarding other technical objections raised by the respondent, the applicant state that the partnership deed is a legal document and it is just a copy and not an extract from Registrar of Firms that requires to be notarized. The applicants state that the respondents are trying to misguide the Board by filing voluminous and totally irrelevant documents showing purported use of NIRMA whereas in truth there is not a single document in the compilation to show any use for any of the goods covered in Class 6. Besides, the sales figure of Rs. 1905 crores of the respondent purportedly in respect of processed minerals are in fact not goods covered by the impugned registration in Class 6 as actually processed mineral falls in Class 1. The respondents have been in the pharma business only very recently. In short this is a fit case to invoke provision of the Section 47(1)(a ) and (b) and expunge the impugned mark from the Register. The impugned mark has not acquired any distinctiveness in relation to the goods for which it is registered. There is no ulterior motive in the institution of the present proceeding. The applicants are person aggrieved and the impugned mark needs to be removed from the register without any further delay. The respondents have filed a Miscellaneous Petition to take on record additional documents. The grounds for this is to rely on some very old records which could not be traced earlier and have a vital bearing on the outcome of the proceeding. The respondent pray that in the interest of justice the MP should be allowed and the additional documents by way of bills and invoices should be taken on record.;