S. Jagadeesan, Chairman - (1.) THIS is an application filed by the applicant in O.P. No. 72/2003 before the High Court of Judicature at Madras, under Sections 46 and 56 read with Sections 9, 11 and 32 of the Trade and Merchandise Marks Act, 1958, for rectification of the Register of Trade Marks by expunging the trade mark "Trident device" under No. 615694-B, dated 4.1.1994 in class 29 of the first respondent. After the constitution of this Board under the Trade Marks Act, 1999, the said O.P. No. 72/2003 filed in the High Court of Madras was transferred to this Board for disposal.
(2.) The case of the applicant is that they are the leading manufacturers and marketers of Ghee and other related products since 1972. They adopted a distinctive trade mark device in respect of their Ghee products. The said trade mark label adopted by applicant consists of the device of "Trident within a circle of flames and the word "SAKTHF printed in an artistic background. They also obtained the authorization to use the certified mark 'Agmark' in 1976 and the same is valid till today. The said distinctive trade mark label of the applicant consisting of the Trident device has become highly distinctive of the products of the applicant and the applicant has become absolute owner of the said trade mark and is also entitled for the exclusive right to use the said trade mark label to the exclusion of all others. The applicant, in order to safeguard their rights against the infringers has filed a suit C.S. No. 181/2002 against M/s. ABT Industries and C.S. No. 182/2002 against M/s. Sakthi Trading Company and the same are pending on the file of the High Court of Madras. From the counter filed in an application for injunction in C.S. No. 181/2002 by M/s. ABT Industries, the applicant came to know that the first respondent has obtained the registration of the impugned trade mark device in respect of Ghee and other products in class 29 of the Trade and Merchandise Marks Act, 1958. The applicant's trade mark having become distinctive, no one else is entitled to use or adopt any trade mark device which is identically or deceptively similar to that of the applicant's trade mark device. The use of the impugned trade mark by the first respondent would create great confusion in the minds of traders as well as the public. The applicant has also applied for the registration of its Trident device with the trade mark label "SAKTHI". The first respondent is not the proprietor or the owner of the impugned trade mark within the meaning of Section 18(1) of the Act and as such, the same ought not to have been registered in their name. Consequently, the first respondent's trade mark is liable to be removed from the Register of the Registrar of Trade Marks.
(3.) THE first respondent has filed their counter stating that the first respondent is a company incorporated under the Companies Act, 1956 and they are engaged in carrying on their business such as, manufacturing and marketing of Sugar, Soya products etc. THE Sakthi Finance Pvt. Ltd., is a member of Sakthi Group, a leading industrial group in South India and is well known all over India and abroad. Sakthi Finance Ltd. was established in the year 1956 with a business of finance having its branch offices in various states such as Tamil Nadu, Kerala, Karnataka, Andhra Pradesh, Maharashtra, Pondicherry and Delhi. THEy are carrying on the business for the past more than 42 years. THE Soya division of the first respondent is manufacturing and selling Soya bean flour, Prawn teed, Mulberry feed, etc. under the trade mark "Sakthi". Sakthi Automobiles was established in the year 1958 which is a dealer of Telco. Sakthi Textile Ltd. was established in the year 1957 at Pollachi. Sakthi Estates belongs to the first respondent group having Coffee and Cardamom estates at Valparai in Tamil Nadu. Sakthi Auto Components Ltd. manufactures top quality castings. Sakthi Foundation is a charitable trust set up in the year 1981 and is financed by the first respondent. Sakthi Institute of Technology offers various engineering courses. Sakthi is a multi faceted group having commercial industrial and financial facets. It plays significant role in major industries such as Sugar, Textile, Estates, Transport, Foundry, Finance, Softwares, synthetic gems, milk, food products, in addition to educational and charitable institutions. THE Sakthi Group's turn over in the year 1982 was Rs. 86.48 crores which has leaped into Rs. 400 crores in the year 1990. THE Chairman of Sakthi Group of Companies is also popularly known and referred to in the press as "Sakthi" Mahalingam. Sakthi forms predominant feature of the corporate name/trading style/institution name of various companies, charitable, educational and financial institutions belonging to Sakthi group of companies. THE trade mark of Sakthi and the device of Trident are the house marks of the first respondent. THE trade mark Trident device is also prominently displayed in all the premises of the first respondent business, its correspondence, letter heads, vehicles etc. THE said trade mark has been used by the group of companies of the first respondent since 1956. THE first respondent has also denied the use of similar Trident device by the applicant. Further, it is stated in the counter that the Trident device used by the first respondent is not identical with that of the trade mark of the applicant. Both are having their own distinctiveness and there is no confusion either in the minds of the traders or the public.;