K.N.BASHA,CHAIRMAN - (1.) THIS application is preferred by the applicant seeking, the relief of rectification of the impugned trade mark "USA PRO" under registration No.1345642 in Class 25 on the ground of non -user under Sections 47 and 18 (1) and 57 of the Trade Marks Act, 1999.
(2.) IN this matter the applicant has impleaded the two respondents? viz., (1) USA PRO LIMITED; (2) The Registrar of Trade Marks, Chennai. It is seen that the first respondent is the Registered Proprietor of the trade mark "USA PRO" on the date of filing the application for rectification i.e., on 13.2.2013. The applicant also produced the latest position or status of the impugned trade mark by way of website status as on 2.6.2014 and the same reflects that the impugned trade mark is continued to be in the Register under the name of the first respondent as proprietor of the impugned trade mark. It is also seen from the website status produced by the applicant that the name of the agent is mentioned as "M/s. Kochhar & CO., (5039) Suite No.503, Fifth Floor, Raheja Towers, 177, Anna Salai, Chennai -600 002." The first respondent registered the said trade mark in respect of the goods covered under Class 25 viz., outer clothing, sports and leisure wears. Therefore the applicant has rightly impleaded the registered proprietor of the impugned trade mark as the first respondent in this matter.
(3.) THE Registrar of IPAB on receipt and scrutiny of the application sent a communication dated 9.4.2013 to the applicants Attorney pointing out a defect viz., furnishing the address of service in India in respect of the first respondent. The Attorney responded the said communication by sending its reply dated 23.4.2013 furnishing the address of service in India of the registered proprietor viz., the first respondent as per the advertisement of the impugned mark in the Trade Marks Journal M/s.Kochhar & Company, Advocates and Legal Consultants, at Suite No.503, Fifth Floor, Raheja Towers, 177, Anna Salai, Chennai -600 002. In the same communication addressed to the Registry it is mentioned that the website of the trade mark registry also gives the above mentioned address, as the Address for Service in India of the registered proprietor. Thereafter the registry numbered the application in ORA/227/2013/TM/CH and sent notice to the first respondent viz., to the address for service in India and as stated above on 24.7.2013. The registered post acknowledgement was received by the registry shows that the said notice was received by the first respondent on 25.7.2013. The Registry also sent a similar notice to the second respondent, The Registrar, Trade Mark, Chennai and the same was received by the second respondent on 17.7.20013. Thereafter the original records reveal that without filing any vakalath by the first respondent, the learned counsel M/s.Anand and Anand filed Form -3 on 23.9.2013 seeking for extension of time for filing counter statement. The Registry pointed out the defects through its communication dated 5.11.2013 stating that the learned counsel should file a properly stamped and signed vakalathnama. On receipt of the said communication M/s. Anand and Anand as per their communication dated 18.12.2013 sent a properly stamped vakalathnama by mentioniong the first respondent name as "M/s.USA PRO IP LIMITED", Unit -A, Brook Park East, Shirebrook NG20 8RY, United Kingdom. At this juncture, it is to be stated that the registry while pointing out the defect as stated above through its communication dated 5.11.2013 mentioned the name of the first respondent only as "USA PRO LIMITED". Though the learned counsel filed vakalath in the name of USA PRO IP LIMITED they have not clarified as to how they put the said name, who is not a party to the proceedings as per the application filed by the applicant. In view of the deceptive similarity between "USA PRO LIMITED" and "USA PRO IP LIMITED" as there is only one word "IP" was inserted in between the "USA PRO LIMITED", the Registry due to inadvertence received vakalathnama and took the application filed seeking for extension of time for filing counter statement. It is to be stated that the learned counsel for the third party USA PRO IP LIMITED as stated above filed four extension applications for the respective period and the Board as per order dated 3.1.2014 granted extension up to 24.1.2014 with a condition that no further extension will be given. The registry communicated the said order to M/s.Anand and Anand on 6.1.2014. However, the learned counsel sought for further extension from 27.1.2014 to 25.2.2014 along with the scanned counter statement. In view of such conduct of non -compliance of the conditions imposed earlier, the Board directed the registry to list the matter for hearing. It is pertinent to highlight the above sequence of events as per the table hereunder: - "Table" ;