S. Usha, Member (T) - (1.) THE above application is for rectification of the trade mark registered under No. 573598 in class 14 in the name of Titan Industries Limited under the provisions of Trade Marks Act, 1999 (hereinafter referred to as the Act).
(2.) The applicant, a partnership firm were engaged in the business of manufacturing and marketing wrist watches in the eastern States of India since the year 1991. The applicant adopted the word 'SONA' and started using the same in the year 2002 for their watches and for the watches having gold plating / plating of gold. The word 'SONA' means gold in Hindi language. The word 'SONA' is a highly descriptive and laudatory one. There is a great demand for gold plated watches among the public. 'SONA' is common to trade and it has direct reference to the character and quality of goods. There are several manufacturers of watches using the descriptive and common word 'SONA'. No single manufacturer can claim monopoly over the word 'SONA' and it is a generic name for gold plated watches. The respondent herein had filed a civil suit before the High Court of Delhi in CS (CO) 1577/2003 wherein the respondent had pleaded that the defendant's / applicant's trade mark 'SONA' is deceptively similar to that of the plaintiff's/ respondent's trade mark 'SONATA'. The applicant herein and defendant in the civil suit had filed their written statement stating that there is no similarity between the words SONA and SONATA and as such there is no possibility of confusion being caused. The respondent herein filed an application before the Delhi High Court for amendment to carry out the fact that their trade mark SONATA had been registered. Aggrieved by the fact of registration, the applicant has moved for rectification of the registered trade mark 'SONATA'.
(3.) THE applicant had filed the rectification on the following grounds that: (a) the registered trade mark was not distinctive on the date of registration; (b) the registration was contrary to the provisions of Section 18 of the Act as the respondents were never the proprietors of the trade mark; (c) the registration of the trade mark was contrary to the provisions of Sections 9, 11, 18, 47 and 57 and other provisions of the Act; (d) the registration offends against Sections 9 and 11 of the Act on the date of registration and on the date of commencement of these proceedings as the proprietor has given a false and incorrect date of user; (e) the respondent has obtained the registration by fraud as they were aware of the word 'SONA' being used by various other firms; (f) the registered trade mark was wrongly remaining on the register without any sufficient cause; (g) the impugned trade mark registration was liable to be set aside on the ground that the trade mark 'SONATA' had a direct reference to the character and quality of the goods; (h) the impugned trade mark was not distinctive nor capable of distinguishing the goods of the respondent as the mark was only proposed to be used on the date of application for registration; (i) the marks 'SONATA' and 'SONA' are similar; (k) the respondent has not used the trade mark in relation to the goods for which it is registered for a continuous period of five years prior to date of filing the application for rectification and that the provisions of Section 47 of the Act are attracted; (l) the impugned trade mark has never been used for the goods as specified in the classification of goods; and (m) the mark is liable to be rectified on the grounds stated in Section 47(1) (a) and (b) of the Act.;