Raghbir Singh, Vice Chairman - (1.) OP No. 304 and O.P. No. 305 of 2003 were filed in the High Court of Judicature at Madras and the same have been transferred to this Board in terms of Section 100 -of the Trade Marks Act, 1999 and have been numbered as TRA/39/2003/TM/CH and TRA/40/2003/TM/CH respectively.
(2.) Shri Narayanan learned counsel for the petitioner and Shri A.A. Mohan, learned counsel for the first respondent appeared in the hearing held at Chennai. The petitioner herein above claims to be in the business of beauty products in Chennai and Bangalore at various outlets. She claims to have started her business in 1981. She, having come to know in February 2003 that 'KANYA' is a brand owned by the first respondent for beauty products, filed CS/36/03 in the High Court of Judicature at Madras that, since the name 'KANYA' had acquired high level of commercial reputation for the plaintiff in running beauty parlours, relief of permanent injunction restraining the defendant from in any manner passing off its goods with the trade mark 'KANYA' by using the petitioner's name be issued. The petitioner on a study conducted by her came to know that the first respondent had two trade marks for the word 'KANYA', namely, No. 584307B for certain beauty products and No. 598586B for herbal medicinal formulations registered in its favour on 6.11.1992 and 3.6.93 respectively. The petitioner claims that as per documents produced by the first respondent it has used the 'KANYA' label for marketing anti-lice hair preparation in 1993 and there is no further evidence of its continuous use after February, 1994. First respondent has not taken any licence under the Drugs and Cosmetics Act which is essentially required for these products. In an advertisement mela hosted by the first respondent on 22.2.03 in Chennai, the first respondent circulated a hand out 'CAVINKARE Reality show brief wherein information was given to the effect that herbal anti-lice product which was withdrawn was contemplated to be revived as a brand in the hair care category. Thus, the petitioner concludes that the two trade marks obtained by the first respondent in 1992-93 had been abandoned in 1994 and since then it has not used those marks. The petitioner claims of having used the brand 'KANYA' for carrying on the business of beauty parlours since December, 1981. Marketing of beauty products hair care and skin care by the first respondent are bound to create wrong impression of their origin. The petitioner claims that the two marks of the first respondent are in violation of Sections 9, 11, 12 and 18(1) of the Act and thus those are disentitled to protection in a court of law. There is a non-user of both the marks since 1994. Mark No. 598586B in class 5 has never been used. The cause of action for rectification application arose in 1994 when the first respondent abandoned the use of the trade mark and on 22.2.2003 when it declared in an advertisement mela in Chennai that it intends re-launching a product in the name of 'KANYA' after a lapse of nine years.
(3.) FIRST respondent in his counter statements filed on 29.12.03 in both the cases has disputed the claims of the petitioner. The first respondent claims that the news item about the re-launch of the programme carried out in the newspapers on 15.2.03 was indeed an expansion of its business and had nothing to do with the revival of the abandoned brand 'KANYA'. FIRST respondent denied having committed any act of passing off. FIRST respondent alleged that the petitioner's business is a service industry and the respondent holds registration in class 3 and class 5 in respect of the trade mark 'KANYA' word and label respectively. Whereas the petitioner holds registration in class 16 for the trade mark 'KANYA BEAUTY PARLOUR' with hand mirror device in respect of paper articles, stationery etc. FIRST respondent submitted that he had taken a licence from the Drug Controller for the manufacture of these products.;