Prabha Sridevan, Chairman - (1.) THIS application No.1012263 is for removal of the trade Mark MARC. The Trade Mark in class 9 is in the name of the respondent. The application was dated 28.5.2001 and the date of user claim was from 1.4.2001.
(2.) THE applicant is Marc Enterprises' and according to them they have marks already on the register under No.420735 class 9, 420736 class 2 and 420737 class 7, all of them from 16.4.1984. The applicant claims similarity in lieu of the necessity marks in favour of the applicant. The applicants are engaged in the business of manufacturing of electrical accessories and fittings and electrical equipments, electrical appliances, electronic products and instruments of domestic wires etc. In 1981 they adopted the Marc with it is distinct letter, style, font and placement of the alphabets used continuously and openly and have been renewed from time to time. The sales and advertisements figures are huge and as on date the sales are about Rs.250 crores The applicant was not aware of the advertisement of the respondent's mark otherwise notice of opposition would have been filed. It was only when the applicant served with the written statement, which was filed by the respondent in C.S(OS).No.1059 of 2005 that they became aware of the registration. This suit was filed by the applicant against the respondent, for infringement and passing off. The applicant claims that he would be grievously prejudiced by the continuance of the impugned mark and prayed that it would be removed. The following documents were filed by the applicant. Ex.P -R1 which is the registration certificate of the respondent; Exhibit P -1 which is the copy of examination report in which one of the objections is that the mark is personal name; Ex.P -R 2 is the impugned trade mark of the respondent. Ex.P1 (collty.) Is the trade mark/labels of the applicant. Ex.P2 (collty.) copy of the legal proceedings, certificates and renewals by the applicant;. Ex. P -3 (collty.) of the different trade mark application of the applicant; Ex.P -4 is the copy of the excise registration in favour of the applicant; Ex.P -5 is the petitioner's registration from the Bureau of Indian Standards and Ex.P -6 (collty.) are advertisements made by the applicant.
(3.) IN the counter statement the respondent claimed that they had conceived and adopted a distinctive trade mark in or about April, 2001 and specifically claimed that the applicant was never using the mark in respect of the goods mentioned in class 9. The applicant is only manufacturing water heater and marketing of fans under the trade mark REMI' CROMPTON' USHA' and INOVA'. The registered trade mark MARC' which is impugned herein is entirely different in structure, writing style, device and font etc. There are several manufacturers using the word "Marc", which is a mere misspelling of the word MARC'. In the examination report, the applicant's mark was not shown and after filing of the evidence of user, the respondent/applicant was advertised. It was not opposed. It is prayed that the mark shall not be removed. One Shri Gaurav Arya, the sole proprietor of the respondent had filed the counter affidavit. The documents filed by the respondents are Ex.R. -1 which is a copy of the letter issued by the Bureau of Indian Standards dated 18.8.2011; Ex. R -2 is the registration certificate; EX.R -3 is the copy of the examination report; EX.R4 is the letter, which is from the Trade Mark Register; Ex.R -5 is the print out from the MCA website showing several entries having the word Marc''; Exhibit R -6 is the print out from the Just dial website also showing the names of companies with the word Marc' and Ex. R -7 are promotional materials and invoices and the earliest is November, 2004. Then there are invoices from the page 62 to 78 of the paper book which are all handwritten and the earliest invoice is of the year 2004. Ex.P -8 is Form B. Then we have computerized print out invoice from page 99, which are all from the year 2011 onwards, This is the evidence filed by the respondent.;