Raghbir Singh, Vice Chairman - (1.) THE petitioner has filed an application for removal of the trade mark 'MOUNTAIN DEW' registered under No.436257 in class 32. Petitioner at the outset has given a description of his business activities and the reputation which he has established in manufacturing packaged drinking water and marketing the same. He claims to be an aggrieved person in view of a case filed by the respondent which is pending in the City Civil Court Hyderabad as OS No.95/2004. In the said suit the respondent has sought an injunction against the petitioner from infringing the trade mark 'MOUNTAIN DEW' of the respondent. THE petitioner had also filed a case against the respondent OS No.19/2004 in the City Civil Court at Hyderabad.
(2.) The petitioner claims that the mark 'MOUNTAIN DEW' being a combination of two generic and dictionary words does not producte a distinctive mark per se. The mark 'MOUNTAIN DEW' under section 9 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) is devoid of any distinctive character and hence not eligible for registration. The respondents applied for registration of the said mark in 1985 without any bonafide use of the said mark and it is only in 2003 that they have launched this brand in India. Prior to this there was absolutely no use of the mark. Respondents have acquiesced to the use of the mark by the petitioner herein since they were all along aware of the use of the said mark by the petitioner. Thus they are estopped from claiming rights of infringement in the matter. The mark 'MOUNTAIN DEW' claimed to be the registered mark of the respondent is in fact registered in the name of more than one proprietor in the United States. The predecessors through whom the respondents have claimed the use of the mark since 1940 have themselves disclaimed exclusive use of the mark 'MOUNTAIN DEW' as a condition of registration. Respondents herein are assignees of the said mark which actually flows to them from M/s Hartman Beverage Company Limited. At the time of making of the application for registration there were other registered and common law users of the registered mark in the country of origin of the respondent. The mark consists of original words of English language which are commonly used and the mark itself is a suggestive mark. Thus the same could not have been registered without evidence of distinctiveness much less in Part A of the Register as it existed under the Act of 1958. The said entry in the Register is in breach of section 9 (1) (a) and is invalid and thus liable to be removed from the Register to maintain the purity of the Register. The mark has otherwise also become non distinctive on the date of filing of this petition since the respondents have admittedly made use thereof since 2003 only which is much later to the use of the petitioner herein. The citrus flavoured drink sold by the respondent under the impugned mark has been banned by several developing nations. The petitioner has sought the expunction of the mark on the basis of the above. Respondent in their counter statement filed on 7.7.2004 has controverted all the material averments of the petitioner. Respondent claims that by virtue of worldwide reputation in over 100 countries, vast publicity and long standing use has acquired them substantial reputation and goodwill all over the world including India. The mark is a unique combination of two words. The same have no direct reference to the carbonated citrus flavoured beverage sold under the said mark. It is arbitrary adoption in relation to carbonated citrus flavoured and thus has become distinctive of the respondent. The sales of the mark 'MOUNTAIN DEW' runs to billions of dollars and approximately 13 million US dollars per annum are spent on advertisement and promotion of 'MOUNTAIN DEW' brand. The mark was adopted in 1940 and is being used continuously since then. In fact the 'MOUNTAIN DEW' beverage was the first carbonated citrus flavoured to be sold on a national basis in the United States. The 'MOUNTAIN DEW' beverage was introduced in India on 17.1.2003 and has received tremendous response in the Indian market. The sales figure of 'MOUNTAIN DEW' since its inception till date of filing of the written statement is worth Rs.175 crores approximately. The advertisement expenditure of the respondent in relation to the brand till date approximately is Rs.18 crores. The rights of the mark 'MOUNTAIN DEW' in favour of the respondent was recognized by the Division Bench of the High Court of Delhi in O.C.J. No.1 of 1997 vide order dated 10.9.1997 whereby the order of the single judge stating that the mark 'ORANGE DEW' is not similar to 'MOUNTAIN DEW' was stayed. The respondent in that case made a statement to the Court that they would not pursue the registration of the name 'ORANGE DEW' and accordingly the appeal was disposed of on 15.3.2004. 'MOUNTAIN DEW' represents nearly 10% of Pepsi's worldwide sale and also 17% of its sale in USA. A search on the net would give thousands of results indicating the association of the respondent with the impugned mark. The plea of the petitioner that 'MOUNTAIN DEW' consists of original words and thus not entitled to registration is wrong and contrary to very many judicial pronouncements by the Courts in India. 'MOUNTAIN DEW' is an arbitrary mark. According to the well recognized classics of trade mark law , "Suggestive Mark" are in the same position as arbitrary marks and are entitled to protection without proof of secondary meaning. The courts in India in very many cases have protected common words as trade marks. The impugned mark is completely distinctive of the respondent. 'MOUNTAIN DEW' is a well known trade mark in India. The petitioner is not an aggrieved person. None of the conditions of section 57 of the Act are satisfied. The application also otherwise lacks in matter of verification and attestation and is liable to be rejected. Respondent also filed evidence in form of affidavit along with the relevant documents.
(3.) PETITIONER filed reply to counter statement of respondent on 7.10.2004 reiterating his submissions made in the petition and controverted the submissions made by the respondent in their written statement. PETITIONER also along with reply filed the affidavit of evidence and documents in support thereof.;