S. Jagadeesan, J. (Chairman) - (1.) THE petitioner filed this petition under Section 56 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act), seeking cancellation of the registered trade mark No. 496423 in class 34 of the respondent herein. Originally, the petition was filed in the High Court of Delhi at New Delhi in CO No. 1/1994 and the same stood transferred to this Appellate Board and numbered as TRA/145/2004/TM/DEL.
(2.) The petitioner is seeking the cancellation of the registered trade mark of the respondent stating that the petitioner has been engaged in the business and manufacture and selling various varieties of tobacco since 1929. In the year 1958, the petitioner adopted the trade mark BABA in relation to chewing tobacco and non tobacco products such as Pan masala, perfume, etc. and the said trade mark has been used both in India as well as foreign countries by the petitioner for over three decades. The mark of the petitioner has a substantial international reputation due to the long tenure of extensive use. Further, the said mark is exclusively associated with the goods of the petitioner company. The petitioner has registered the mark BABA in U.K. as on 5.12.1988, in USA as on 12.6.1990 and in Canada as on 10.2.1989. In India also, it had been registered in various classes. The petitioner came to know that the respondent had adopted the mark RISHIBABA for chewing tobacco/zafrani patti. The use of the mark BABA with any prefix or suffix is bound to cause confusion or deception among the purchasers of chewing tobacco. Immediately on coming to know of the adoption of the said mark RISHIBABA by the respondent, the petitioner filed a suit for permanent injunction and the High Court of Delhi granted an order of injunction on 16.7.1991 restraining the respondent from marketing and selling chewing tobacco or zafrani patti using the mark BABA. In the meanwhile, the respondent, clandestinely applied for the registration of the impugned mark and the same was advertised in the Trade Marks Journal dated 16.12.1990. The petitioner filed the notice of opposition. However, by oversight, the time for filing the notice of opposition had expired and consequently, the same was deemed to have been abandoned. On 12.2.1993, when the suit was listed for hearing, the petitioner came to know about the registration of the impugned mark in favour of the respondent. Since, the impugned mark was registered wrongly and is wrongly remaining on the Register the same is liable to be cancelled. The petitioner also raised the plea that the impugned mark is visually and phonetically similar to the petitioner's mark and as such, the respondent wants to take advantage of the reputation and goodwill enjoyed by the petitioner. The impugned mark is liable to be cancelled as the registration of the same is in violation of Sections 11(a) and 11(e) of the said Act. When the respondent was restrained by way of injunction in suit No. 2010/1991 on the file of the High Court of Delhi from using the impugned trade mark, the registration has been obtained by the respondent by concealing the fact of injunction. The respondent is not a lawful proprietor of the impugned mark and s such, the registration is in violation of Section 18(1) of the Act. The adoption of the impugned mark by the respondent is only with malafide intention. This application for rectification has been filed immediately on coming to know about the registration of the impugned mark. The first respondent filed a reply stating that the petitioner did not state in the petition that he is an aggrieved person to invoke Section 56 of the Act. In the absence of any such averment, the petition is liable to be dismissed in limine. The petitioner having failed to oppose the registration of the impugned mark, it is not open to them to file this petition for rectification as it will amount to latches on the part of the petitioner. The petitioner having knowledge about the process of registration, it is not open to them to plead the knowledge of registration on the basis of the evidence produced by the respondent in the suit. The respondent also denied the averments of the petitioner with regard to the use of their mark since 1958. The registration in foreign countries of the petitioner's mark has nothing to do with this petition since the burden is on the petitioner to establish that the petitioner is the owner of the mark and the impugned mark is similar to that of their mark. In the absence of any evidence and material regarding proprietorship and use of the petitioner, the petition is liable to be dismissed. Moreover, the impugned mark RISHIBABA cannot be said to be identical with the mark of the petitioner BABA. The marks are distinguishable both phonetically as well as visually. The prefix of the word RISHI makes the marks distinguishable and any purchaser may be able to identify the goods. Hence, there is absolutely no merit in the petition.
(3.) THE petitioner filed a rejoinder to the reply of the respondent reiterating the grounds stated in the petition and also denied certain averments made in the reply.;