S. Jagadeesan, J. (Chairman) - (1.) THE applicant has filed this application under sections 56 and 46 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) to expunge from the Register of Trade Marks the trade mark No.99919 in class 30 registered in favour of the first respondent herein or alternatively the said registration may be varied by inserting a condition that no exclusive right is granted by registration No.99919 in class 30 to the first respondent in respect of the word 'NABISCO'. Originally the application was filed in the High Court of Calcutta in A. No.4/1998 which was transferred to this Board in compliance of section 100 of the Trade Marks Act, 1999.
(2.) The case of the applicant is that the applicant is a registered firm under the Indian Partnership Act under the name and style of Royal Snacks Food Products. It is having its principal place of business at Siliguri, West Bengal. It is carrying on the business of manufacturing and marketing quality biscuits for human consumption ever since 1988. It is selling its products with the following trade marks / brand:- a) The word 'Royal' enclosed in thick borders both ends being closed by semi-circles and devices of a crown in the middle top of the name 'Royal' being used since 1989; b) The word 'NABISCO' being used since the year 1993; c) 'NABISCO NASTA' the label mark being used since the year 1993; d) NABISCO ORANGE being used since the year 1994; e) NABISCO BUTTER CRISPS used since the year 1998; f) SONY MITHA NAMKEN the label mark used since the year 1993 and g) SONY SNEX a label being used since the year 1993 after obtaining necessary approvals from the appropriate authorities. The specimen copies of the said labels have been annexed to the petition and marked as A (a) to A (g). The product of the petitioner are sold in the States of West Bengal, Bihar, Assam, Tripura, Mizoram, Meghalaya, Nagaland, Manipur and Arunachal Pradesh and their adjoining areas. The applicant is the first person to use the mark 'NABISCO' in India and by virtue of their uninterrupted use of the said trade mark it acquired distinctiveness in respect of its products and it is the lawful proprietor of the mark. The applicant on 17.1.1994 and 26.2.1998 applied for registration of the trade marks NASTA NABISCO, NABISCO and SONY under application Nos.616684 and 792995 under the Act and the same are pending before the Trade Marks Registry, Mumbai. The said marks are exclusively associated with the applicant and it had also attained goodwill and reputation. On or about 13.1.1995 the applicant came to know that a similar mark was being used by third parties, causing deception in the minds of the public and passing-off their products as those of the applicant. Since the identity of the offender could not be detected, the applicant caused Trade Mark and Copyright Caution Notices to be published in the newspapers. The photocopies of the same were annexed with the application as 'B' series. The applicant after conducting enquiries found that one Puranmal Maheshwari trading as Puranmal Maheshwari, one Hanuman Prosad Jain trading as Hanuman Parsad Mahindra Kumar and one Bhagwan Das Jetwani trading as Baba Confectionery in collusion and conspiracy amongst themselves were responsible for the said offending acts. The applicant filed a title suit before the District Court at Darjeeling in T.S. No.1 of 1995. The applicant also lodged a complaint against Bhagwan Das Jetwani trading as Baba Confectionery under section 156(3) of the Code of Criminal Procedure before the Chief Judicial Magistrate at Kishanganj, Bihar. The said complaint was registered as case No. 18C/95 and the police were directed to take appropriate action. The business place of the said Bhagwan Das Jetwani was raided by the police and incriminating materials viz., labels, dyes, biscuits with the mark 'NABISCO NASTA' were seized from the custody of the accused. However, during investigation the accused died and the case came to an end.
(3.) WHILE so, the applicant received a letter / notice dated 28.4.1998 signed on behalf of the first respondent calling upon the applicant to desist forthwith from using the trade mark 'NABISCO' or any other trade mark similar thereto in respect of biscuit or other related products and also use of the word 'ROYAL' and the letters NBC as its trade marks and also to withdraw from the market all biscuits bearing the said trade marks 'NABISCO' and NBC inter - alia, alleging that the said trade mark 'NABISCO' was the trade name, house mark and principle trade mark of the first respondent. On enquiry the applicant found that the claim of the first respondent was not supported by facts and no product with the said brand 'NABISCO' or 'Royal' of the first respondent were found in the market. The applicant sent a suitable reply. The applicant's notice was drawn to a trade mark comprising a label with word RITZ as its principal feature, and the word NABISCO enclosed within oval shaped border placed in the left hand top corner of the said label registered under No.189438 in class 30 in favour of National Biscuit Company of USA indicating the mark 'proposed to be used' on the date of registration. Being aggrieved the applicant filed an application in form TM-26 prescribed by rule 94 of the Trade and Merchandise Marks Rules, 1959 for the rectification of the Register or removal of the said trade mark from the Register inter-alia, under sections 46, 47(4) and 56 of the said Act with the Registrar of Trade Marks, Calcutta.;