S. Usha, Member (T) - (1.) THE application under the Trade and Merchandise Mark Act, 1958 filed in the High Court of Madras as OP No. 556 of 2001 has been transferred to the Appellate Board in terms of Section 100 of the Trade Marks Act 1999 and has been renumbered as TRA/171/04/TM/CH. THE application has been filed for rectification of the Register of Trade Marks by removal of the registered trade mark under No. 470906 in Class 24 in respect of textile goods.
(2.) The applicants are companies belonging to the TVS group of companies manufacturing wide range of goods such as air assist and full air actuation systems for automotive and non-automotive application and elements etc. and manufacturer of a wide range of two wheeler motor vehicles. The 1st applicant state that they are the registered proprietor of the trade mark TVS 50 registered under No. 372863 B in class 12 as of 27.02.1981 in respect of vehicles, apparatus for locomotive by land, air or water, mopeds, under the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The 1st applicant had permitted the 2nd applicant to use the said trade mark TVS 50 by way of license. The applicants state that by virtue of wide & extensive use of the trade mark TVS 50 sine 1980-1981 and by virtue of wide range of sales promotion activities, the said mark has acquired immense goodwill and reputation among the public and has become widely well known all over India and abroad. The sales turnover of the said goods over the years exceeds Rs. 2700 crores.
(3.) THE applicants came to know in May, 2000 from an advertisement that the 1st Respondent are registered proprietors of the trade mark TVS 50 along with the device of a two wheeler in respect of textile goods. THE applicants had issued a cease and desist notice in May 2000 to the 1st Respondent calling upon them to cease using the trade mark TVS 50 along with the device of a vehicle. THE 1st Respondent herein had sent a reply in June, 2000 declining to comply with the requirements made in the notice. THE applicants state that as they did not come across the 1st respondent's product bearing the trade mark TVS 50, they were under the belief that the 1st respondent had given up the use of the Trade Mark TVS 50. But on 16.02.2001, the applicants came to know from the Trade Mark Journal that the 1st Respondent have applied for registration of the mark. THE applicants, thereinafter filed an application for rectification on the following grounds: (a) THE registration of the impugned trade mark was in contravention of the provisions of Section 9 of the Act and as such the mark was never at any time distinctive of the goods of the 1st respondent. (b) THE registration of the impugned mark was in contravention of the provisions of Section 11 (a), (b) and (e) of the Act. (c) THE impugned mark was registered without sufficient cause and was wrongly remaining on the Register. (d) THE 1st respondent is not the proprietor of the Trade Mark TVS 50. (e) THE registration of the impugned mark will cause confusion and deception among the public. (f) THE registration has been obtained by fraud and by suppression of material facts. (g) THE registration has been obtained with dishonest intention of getting benefit from the reputation and goodwill of the applicants business. h) THE registration will cause loss and damage to the applicants business.;