Z.S. Negi, Chairman - (1.) THIS is an application filed by the applicant through its Power of Attorney Agent for removing, canceling and expunging of the trade mark, 'ZENART' under No. 830693 in class 14 registered in the name of the respondent, from the register under Section 47/57/125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
(2.) The brief facts as stated in the application is that M/s Habeeb Mujeebur Rahaman and Thaikai Asghar Ahmed Mohamed S. have been carrying on an established business in manufacturing and selling clocks, watches and their accessories and spare parts for long time at Hong Kong in the name and style of Commerce De Orient. During the course of the said business they had honestly conceived and adopted trade mark ZENART, written in an artistic manner in respect of the goods mentioned here before. The trade mark ZENART was got registered in Hong Kong under No. 05353 of 1997 as of 6.12.1995 in class 14 in the name of Habeeb Mujeebur Rahaman and Thaikai Asghar Ahmed Mohamed S. trading as Commerce De Orient, a partnership organized and existing under the laws of Hong Kong. By the deed of assignment dated 8.10.2002, M/s. Commerce De Orient assigned the trade mark to M/s. Thaika Sahib, Habeeb Mujeebur Rahaman, Habeeb Syed Mohamed Mukrim and Sabeeha trading as M/s GEM DE ORRIENT and that M/s GEM DE ORRIENT has been brought on record as the subsequent proprietors of the trade mark. The subsequent proprietor of the trade mark ZENART has appointed Mashreq International LLC of Dubai to act as its agent worldwide and authorised to further register the brand ZENART internationally in its name and act as its owners. It is further stated that the applicant has obtained registration of trade mark ZENART in Korea, State of Kuwait, U.A.E. (Government of Dubai) and Switzerland and the said registrations are in force. It is stated that the applicant has been selling its products through its Indian company M/s. Mashreq International Trading Co., Chennai in India continuously and extensively since 1.1.2003 and has applied for registration of trade mark ZENART written in an artistic manner under application No. 1240755 in class 14, which has been advertised, before acceptance, in the Trade Marks Journal No. 1339 Suppl. (1) dated 15.2.2006. It is averred that the registered proprietor/respondent has copied the well established trade mark of the applicant with malafide intention to trade upon the reputation earned by the applicant's trade mark and obtained registration behind the back of the applicant. The applicant has sought the removal/cancellation of the respondent's registered trade mark on the grounds, inter alia, that the respondent's mark is not adapted to distinguish its products in terms of Section 9 of the Act; that the registered trade mark of the respondent is identical and is a virtual copy of applicant's well established and well-known trade mark offending the provisions of Section 11 of the Act; that the predecessor in title of the applicant and the applicant are the prior adopters and users of the trade mark ZENART and have registered the same in various countries which entitles protection to its mark as per the various International Conventions; that the respondent is not the proprietor of the trade mark; that the respondent is not entitled to claim registration under Section 12 of the Act; that the respondent has obtained registration by fraudulently and making material misstatement about its proprietorship over the trade mark and that the respondent's mark has been registered without any sufficient cause and remaining on the register without sufficient cause. The applicant has further averred that the registered mark of the respondent is causing an embarrassment to the applicant in its business besides loss of goodwill and reputation. Since the applicant is engaged in the same business as that of the respondent and in the goods for which the impugned mark is wrongly registered. In view of the facts stated here before, the applicant claims to be the person aggrieved to institute the present application and prayed that in the interest of justice and purity of register, the impugned entry be removed from the register.
(3.) THE notice dated 16.4.2007 in Form C under Rule 10 of the Intellectual Property Appellate Board (Procedure) Rules, 2003 issued to the respondent had been received back undelivered and therefore the applicant was directed to serve on the respondent a copy of application along with the enclosures but the copy of application sent to the respondent by the applicant has also been received back undelivered with an endorsement "Left". On an application M.P. No. 140/2007 being filed by the applicant for an order for substituted service on the respondent by way of publication in any of the daily newspapers at Mumbai, this Appellate Board had passed the following order: Accordingly, it is directed that service of notice in the main matter, be served upon respondent by substituted service by way of publication in one of the daily newspapers published at Mumbai and having large circulation. Returnable date to be specified in the notice for appearance of parties at our sitting at Mumbai on 31.03.2008. THE notice was, accordingly, published in the Business Standard, Mumbai Edition dated 27.02.2008 but despite that the respondent has neither filed any counter-statement nor appeared on the date of hearing on 31.03.2008 at Mumbai. THErefore, the rectification application was heard in the absence of the respondent.;