K.N.BASHA,CHAIRMAN - (1.) THIS application is filed by the applicant for the rectification / removal of the trade mark of the respondent in respect of NATRAJ bearing Registration No.324345 in Class 16 from the register of trade marks.
(2.) THE case of the applicant is that the applicant is a partnership firm which was originally constituted in the year 1965 with Shri Babu Lal S/o Shri Devi Ram and Shri Chet Ram S/o. Shri Babu Lal. The said partnership underwent several changes and as on the date of filing the application in the year 2005 Shri Dal Chand and Shri Manohar Lal both are the sons of Shri Babu Lal and Shri Raju Koli S/o. Shri Chet Ram and Smt. Madhu W/o. Late Shri Ramesh Kumar are the partners of the applicant firm. All the partners of the applicant firm were family members of Shri Babu Lal. The applicant firm is engaged in the business of manufacturing and marketing of mathematical instruments including geometry boxes right from the year 1965.
(3.) IT is the case of the applicant that they have adopted and are using the trade mark DO PHOTO BRAND NATRAJ Label and NATRAJ Label in respect of the above said goods. They are the prior and continuous user of the said trade mark from the year 1965. The said trade marks have already become distinctive and associated with the applicant in view of its long, continuous, extensive and exclusive use from the year 1965. The applicant has applied for the registration of the above said trade marks as per application No.376866 in class 16 under the Fourth Schedule of the Trade and Merchandise Marks Act, 1958 in the month of June 1981 but the said application could not be pursued and the same was abandoned. The respondent registered the trade mark NATRAJ under No.324345 in Class 16. It is claimed by the applicant that the respondent namely the registered proprietor was a selling agent of the applicant. The impugned trade mark is identical and deceptively similar to the applicant's trade mark/label. The adoption and use of the impugned trade mark by the respondent is dishonest, malafide and fraudulent. The applicant also instituted a Civil Suit in Suit No.1236 of 2004 on the file of the Hon'ble Delhi High Court against the respondent seeking for a decree of permanent injunction restraining the defendant namely the respondent herein from using the trade mark NATRAJ Label and the said suit is pending for disposal. It is stated in the suit that the respondent as a defendant has acknowledged the rights of the applicant in the said trade mark but stated that the applicant had surrendered its rights in the said trade mark in favour of the respondent, on the basis of the letter dated;