V.RAVI - (1.) THE applicants in this case are seeking removal of the trade mark - MEDAL under No. 450653 in Class 09 and the same mark under No.756461 also in Class 09 of the respondent herein. The grounds for rectification are mentioned below: -
(2.) A . the applicant is the owner and proprietor of the trade mark GOLD MEDAL and GOLD MEDAL (label) in respect of a wide range of electrical goods since 1979 - 80 and has been using the same openly, extensively and continuously since then. b. the registration of the impugned mark has been obtained fraudulently malafidely on false claim and assertions and so the impugned registration is illegally remaining in the register. c. the trade mark GOLD MEDAL is registered in favour of the applicant as per details mentioned below: GOLD MEDAL and GOLDMEDAL CAB* Sl.No Regn.No. Class GOODS Date of registration I. 449747 09 Wires & Cables includedIn Class 9 17.02.1986 II. 518258 09 Wires & cables, electrical switches, electrical meters, extension Cords, Fuse Units, Main Switches, Electrical parts and fittings included in Class 9 20.10.1989 III. 518259 11 Lamps, Lighting, Heating, Steam generating, Cooling and refrigerating apparatus and their parts thereof all included in Class 11. 1 2.10.1989 IV. 603634 11 Installation and apparatus for lighting, heating, cooking, ventilating, cooling and refrigerating including electric fans, electric ovens, electric hot plates, tube lights, electric lamps not included in class 9 emergency lamps and night lamps, lamp shades, bulb and tube holders, air coolers, water coolers, refrigerators, air conditioners, water heaters, geysers, immersion heaters, parts of the fittings for all aforementioned goods. 10.08.1993 V * 892522 09 Cables and wires. 01.12.1994 All the above registered marks are duly renewed and valid upto date. Further, the applicant are holding copyright on the original artistic work for the label mark GOLD MEDAL under the Copyright Act. d. the applicant have also obtained various government registration like Sales Tax, Central Excise, PAN No., BIS Certificate bearing ISI mark. Their products are manufactured under the said mark by M/s Balar Marketing Pvt. Ltd., New Delhi. e. the applicant is the prior and senior adopter of the trade mark GOLD MEDAL which is used in respect of above mentioned products practically through out India and also exported because of its high standard of quality and precision. f. the trade mark GOLD MEDAL has become a distinctive indicum of the applicant for its goods and the public at large associate and identify it as the distinguishing label that enjoys solid and enduring reputation. g. the respondent herein are engaged in the same or similar business and malafidely, dishonestly and fraudulently adopted impugned trade mark MEDAL without the prior permission, leave or licence of the applicant. h. the impugned mark is phonetically, visually and structurally same or similar conveying the essentially the basic idea of the applicant's mark. The respondents are passing off their goods as that of the applicant and are guilty of unfair and unethical trade practice. i. the respondent are fully aware of the rights, use and reputation of the applicant's trade mark at the time of adoption of the impugned mark. The said mark has been illegally adopted out of business greed j. the respondent claim to be one of the partners of M/S Medal Sales, Kolkata. The said alleged firm has filed a frivolous application for the trade mark MEDAL under 1078443 in Class 09 which has been opposed by the applicant herein. The respondents have not used the trade mark MEDAL independently or through the alleged firm M/s MEDAL SALES as there is no proved contractual agreement between them. k. the applicant are person aggrieved' by the illegal registration of the respondent's impugned mark which has caused grave, serious, irrevocable injury on a daily and continuing basis in the market and in trade to the applicant. l. Objections to both the applications are based on Section 9,11, and 18(1) of the Act. Further, the respondents are not entitled to the benefit available under Section 12 as there is no special circumstances' in their favour. Under these circumstances, the petitioner seeks removal and to expunge the entry pertaining to the impugned trade mark MEDAL under No.756461 -in Class 09 ; and 450653 in Class -09.
(3.) THE case of the respondent/ registered proprietor to the trade mark is as under: - a. the respondent is one of the director of M/s MEDAL ELECTRONICS Pvt. LIMITED, Kolkata,. The trade mark MEDAL was adopted by B. Ramesh Shah on 10th July, 1997 and registered in his name. Later he gave a licence to use the said registered trade mark to M/s MEDAL ELECTRONIC Pvt Ltd. from 26th August, 1997 and since then the mark has been in continuous use. b. the respondents are in the business of manufacturing & marketing of transistors, radio, tape recorder, car stereo, cassette amplifier, sound box etc. c.the same mark MEDAL was registered earlier in the name of the respondent under no.450653 in Class 09 for similar goods in 1986. d. the respondent is protected under section 32 of the trade Marks Act which reads as under: "Where a trade mark is registered in breach of sub -section (1) of section 9, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration and before commencement of any legal proceedings challenging the validity of such registration, acquired a distinctive character in relation to the goods or services for which it is registered. " e. the respondent have filed documentary evidence to show that the impugned mark has been used by them since 1986 consisting of sales invoices, balance sheet, advertisement materials and other documents in support of the registered trade mark 450653. f. The rest of the counter statement is a categorical denial of all the claims and assertions made by the applicant which are contrary to the submissions made by the respondent and so the respondents pray that this subject rectification petition be dismissed with costs. The evidence in support of the application is an affidavit of one Shri Praveen Kumar Jain partner of the applicant firm. This is supported by other documents such as copy of the registration certificate of the impugned mark along with its journal publication; copy of the registration certificate GOLD MEDAL of the applicant; copy of partnership deed dated 03.04.1998; year -wise sales figure under the trade mark GOLD MEDAL; copies of bills, and invoices issued by applicant including assessment order from Commercial Tax Department and copy of pleadings in opposition No. Cal -736383 to application. No.1078443 in Class 09 filed by the respondent alleged firm M/s Medal Sales, KOLKATA.;