S. Jagadeesan, J. (Chairman) - (1.) THE applicant has filed this application under Sections 57 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) for rectification of the registered trade mark No.684635 of the first respondent herein by cancelling the same and to expunge the said registered trade mark from the Register of Trade Marks.
(2.) The main averments in the application filed by the applicant are that the applicant, formerly known as National Biscuit Company, used the name NABISCO as its trade mark. The said word was coined by taking the prefix Na, Bis and Co of each word of its old name. The applicant company was found in the year 1989 and for about 50 years or more, its biscuits and the relative packaging had depicted on them the letters NBC being an abbreviation of the original name of the applicant. In 1941, the word NABISCO was introduced in place of the letters NBC and in 1952, NABISCO was introduced. In 1971, the National Biscuit Company officially changed its name to NABISCO. Philip Morris Companies Inc. a parent company of the world leader in food and snacks, the Kraft Foods in the year 2000 acquired the NABISCO holdings and thereby the NABISCO brands have been integrated into the Kraft Foods business worldwide. The management of Nabisco activity in India has been through Kraft Foods International Export Sales Group. The Kraft Foods International Export Sales Group manages the market by controlling distribution of Nabisco products through selected third party in- country Distributors as a US Wholesaler. The applicant has over 28 biscuit plants around the world and its products are sold throughout the world in about 74 countries through duty free shops and by small importers in their respective countries. The product of the applicant is therefore available throughout the world including in India in the major general stores in the major cities in India. The trade mark Nabisco is well known to persons all over the world including India and is exclusively identified by the applicant since the same is the house mark and the trading name and as such has global reputation. The said mark was registered in India covering Biscuits in registration No.99919 dated 1.8.1944 and the same was renewed periodically from time to time and is still valid and subsisting. The global sales of the applicant are around Rs.35,000 crores and its expenditure is over Rs.10,000 crores. The annual sale figures of the applicant for India for the period 1998 to 2002 are as follows: JUDGEMENT_81_TLIP0_20050.htm The applicant's products are advertised in major newspapers and magazines throughout the world. The applicant came to know in April, 1998, that the first respondent was wrongly and illegally marketing its products under the applicant's trade mark NABISCO and in spite of legal notices requesting the first respondent to desist from using the said mark, the first respondent continued. The first respondent is a habitual imitator of popular brands. M/s. Priya Food Products Ltd. initiated legal proceedings against the first respondent. The applicant also filed a suit TS No.4/1998 on the file of the District Court, Barasat, for the relief of permanent injunction restraining the first respondent herein from infringing with the registered trade mark of the applicant and also for injunction restraining the first respondent herein from passing off the trade mark NABISCO. By order dated 29.5.1998, the learned District Judge, granted interim injunction restraining the first respondent from using the applicant's registered trade mark within the jurisdiction of the District Court. The first respondent also filed a suit against the applicant in TS No.3/1998 on the file of the District Court, Darjeeling, for similar relief of injunction. The learned District Judge dismissed the application of the first respondent for interim injunction. On 30.7.2001, the first respondent filed an application for rectification in T No.858/1998 on the file of the High Court of Calcutta and the same is pending. The first respondent on 20.6.2003 filed an application in the suit filed by the applicant, for amendment claiming to be the registered proprietor of the disputed trade mark NABISCO and on coming to know of the said registration, the applicant filed this application for rectification of the said trade mark on the following grounds: 1. The impugned mark was wrongly registered and wrongly remains on the register; 2. The first respondent is not the registered proprietor of the impugned mark; The first respondent got the impugned mark registered by making false statements, false affidavit and false documents as well as wrong averments;
(3.) THE first respondent's mark was not distinctive of the registered proprietor at the time of the application and registration;;