V.RAVI,TECHNICAL MEMBER - (1.) THE applicant herein are seeking the removal from the register the seven trade marks namely Appln. No. 666089 in Class 18; Appln. No. 666076 in Class 05; Appln.No.666090 in Class 19; Appln.No. 666103 in Class 27; Appln. No. 666096 in Class 34; Appln.No.666081 in Class 10 and Appln.No. 66091 in Class 20 of the respondent. All the impugned marks have been filed on the same date by the respondent on a proposed to be used' basis for a vast spectrum of goods available in the market falling in that particular class under the International Classification of goods which is something that is beyond the resource management of any company thus setting the stage for a wonderous legal brawl. (in Hindi called Mara Mari'). It is the applicants case that this attempt by the respondents is contrary to the intention of the Act and against the laws laid down by the Hon'ble Supreme Court. The impugned trade marks are not distinctive both at the time of filing and its subsequent registration nor it has acquired distinctiveness till date. The applicant, therefore, pray that the impugned marks be removed from the register forthwith for detailed reasons mentioned in the Statement of Case accompanying the cancellation petition.
(2.) THE applicants main ground for seeking cancellation of the seven registered trade marks are summarized below: - The applicant is a company incorporated in South Korea and carrying on business in India through its wholly own subsidiary Taegu Tec India Pvt. Ltd. The applicants are carrying on the business of manufacturing various types of metal cutting tools and accessories under the trade mark TAEGU TEC and TT which is sold in numerous countries throughout the world. They have manufacturing facilities as also local subsidiaries in 52 countries. They are selling different products relating to metal cutting tools and related accessories falling in Class 1 and 7. The applicants are carrying on business under the corporate name and trading style TAEGU TEC bearing the trade mark Taegu Tec and TT which is represented in stylish and distinctive manner. The trade mark Taegu Tec and TT is used in 20 countries since September, 1998. It is registered in both Classes 1 and 7 in over 22 countries and in India in Class 7 under no.832337 which registration is valid, renewed and still subsisting. The applicants have spent enormous money in research and development constantly innovating machine tools with cutting edge technology. The mark has acquired reputation and goodwill in India by virtue of its use since 2000 and the goods sold by them is known as TAEGU TEC and demanded by the name TT. Thus the marks Tageu Tec and TT are recognized as well known throughout the world and in India. It has come to the notice of the applicants who have entered the Indian market in a big way that the respondent/registered proprietor of the seven impugned marks falling in various classes do not manufacture any of the products falling in the said classes and has not sold or marketed a single product under the impugned marks despite obtaining registration thereof and have illegally secured registration of the logo TT in all 42 classes as admitted by them in other proceedings without dealing in any of the goods (except those falling in Class 25) in respect of which it is registered. The applicant received a legal notice on 15.01.2002 from the respondent herein to cease and desist use of the trade mark TT and the respondent later filed a suit in the Hon'ble Delhi Court and obtained an ex -parte order of injunction which has since been vacated. Although the respondent/ registered proprietor are solely dealing with only goods falling in Class 25 (and that too largely in respect of hosiery products) they have in fact secured registration in all 42 classes despite the fact they have simply no business, goods, infrastructure, or market or use for sustaining the registration of the respondents seven impugned marks. The applicant who are expanding their business in India are facing numerous oppositions from the respondent in respect of various applications filed by them despite not carrying on any business whatsoever in the Indian market. Thus for instance, the respondent/ registered proprietor herein filed opposition to trade mark applications no 832336, 832338 and 832339 and yet it has failed to disclose any document in support of its alleged use in class 20. Similar is the case of several other oppositions which are awaiting adjudication in the trade marks registry. It is clear from the above that the registered proprietors have no bona fide intention to use the impugned seven registered trade marks and have secured its registration solely with the intention to block the marks and to take unjust advantage of the provisions of the Act. A trade mark can be kept alive in the register perpetually only by its use in the Indian market. The applicant submits that registration of all these seven impugned marks have been obtained in bad faith. The registration of the impugned marks are contrary to the provisions of section 9, 11 and 18 of the Act and disentitled to protection under the law. The applicants therefore pray that all the seven impugned marks may be forthwith removed from the register as they are wrongly remaining in the register and without sufficient cause.
(3.) THE case of the respondent/ registered proprietor is briefly as follows: - v. The respondent has been carrying on business in India under the trading style TT Industries since 1968 bearing the trade mark "Image". This trade mark is the House Mark and is the principal trade mark of the respondent and their entire business revolves around it. The impugned mark has been used since 1964 by the predecessor in interest of the respondent namely M/s Tarun Textiles Pvt. Ltd., The respondents submit that they were the first in adopting and using the impugned trade mark in relation to the products in which it is embossed and therefore it has acquired a secondary meaning. The impugned mark is unique to the respondent with the monogram TT depicted within an onion like device registered in all classes in India. In view of its expanding business, the respondent formed a public limited company styled TT Limited (formerly known as Tirupathi Text Knit Limited) and under the said corporate banner have achieved great success. The respondent have entered into a License User Agreement with TT Limited permitting the use of the trade mark TT for various goods in India and abroad. In the course of trade the respondents have also adopted various other similar trade marks such as "T Tex", "TTT", "TTI", "TITI", "TEE TEE" etc. In view of the diversification of its business, the respondents have secured registration of the trade mark "Image" in more than 150 applications in all 42 classes. They also own at least 25 copyright registrations which are still valid and subsisting. The trade mark "Image" has become synonymous with the respondents business and enjoys enormous goodwill due to huge publicity over the last 40 years made by the respondent. v. The impugned mark has also been registered in neighbouring countries like Pakistan, Bangladesh, Sri Lanka and Nepal and also widely acclaimed internationally in many other countries due to export of respondents goods. It is the practice of the respondent to initiate legal proceedings against any person who seeks to imitate and or use the monogram "Image" to safeguard its interest. They have filed many infringement proceedings in different civil and criminal forums all over India. They have also initiated opposition proceedings against many applicants before the Registrar of Trade Marks. In fact the applicants application for registration of the trade mark TT, Tageu Tec in Class 1 under no. 832338 was refused by the Registrar holding that the applicants herein are not the proprietor of the trade mark TT. The respondent has refuted the alleged claim of Taegu Tec and TT being internationally well known. All the claims and contentions made by the applicants are denied and disputed as purely motivated and self serving. The statement of the applicant that Tageu Tec TT are used in India since 2000 are wrong, baseless and they relied on concocted documents. In application no. 832339 in Class 7 which was opposed by the respondent herein, the applicant failed to establish any user of the trade mark TT till 2003 in any part of the world. The purported registration of the applicant under no. 832337 in class 7 was obtained by the applicant unlawfully by misrepresenting facts before the Registrar. The use of the trade mark TT by the applicant, if any, are commercially unfair, unlawful and through unauthorized channels. The respondents state that a company which was born in 1998 having sporadic sales of their product for metal cutting tools bearing a falsified trade mark are making bogus claims of their mark being well known. Such claims are totally hollow, wild, preposterous, extravagant and manifestly superfluous. The applicants are somehow determined to filch the established proprietary right of the respondents trade mark "Image". Due to the adamant attitude of the applicants the respondent filed a suit before the Hon'ble Delhi Court which restrained the applicants from using the trade mark TT. However, due to technical reasons, more specifically the absence of the learned counsel appearing on behalf of the respondent, the injunction order was vacated and the respondent therefore filed a fresh application for injunction and the matter is now sub judice. The applicants are trying to restrict the respondent's business under the impugned mark solely to class 25 which is against real state of affairs of the respondent's company. The respondent have been forced to file oppositions against the applications filed by the applicant under No.832338 and 832339 which have been severally and independently decided by the two different Registrars refusing both the applications. Applicants are not aggrieved person' since they have no subsisting interest in the trade mark TT and it does not have any locus standi to file the impugned cancellation petition. All the grounds raised by the applicants are flimsy, unfounded, untenable, disputed, sham, improper and unsustainable in law. The entire petition is frivolous, ill precise and ill founded based on malicious and reckless allegations and whimsical claims. The respondent submits that the trade mark "Image" has acquired secondary significance and is capable of distinguishing the goods of the respondent and the question of distinctiveness cannot be reopened in the instant proceeding. They further state that the impugned mark is well and truly covered within the definition of well known trade mark in view of the vast and overwhelming presence of the impugned mark for the last 40 years. The entire petition is unwarranted, unsustainable, untenable both in facts and law. The instant rectification proceedings cannot be entertained as it is totally unlawful, oppressive and aimed with the sole aim of embarrassing the respondent. The matter was listed for hearing on 14.06.2013. We have heard the detailed arguments of both the learned counsel, gone through the pleadings and records.;