Z.S. Negi, Chairman - (1.) THE applicant has filed this application for the removal of Trade Mark No. 1350531, registered in the names of Neelesh H. Doshi Hasmukh H. Doshi, Rakesh H. Doshi, trading as Paras Electronics, from the register of trade marks or rectification of the register under Sections 47/57/125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
(2.) The applicant and its predecessors in business are stated to be engaged in the business of manufacturing and marketing coaxial cables including connectors, digital satellite, electrical and electronic accessories since the year 1997. It is claimed that the applicant, a private limited company incorporated in the year 1995 under the Companies Act, 1956 and its predecessors are the prior users, prior adopters and registered proprietors of the trade mark HARMONY which is registered under No. 1290536 as of 17.6.2004 in class 9 in respect of the above mentioned goods. They have been using trade marks consisting of and/or containing the word HARMONY since the year 1997 and the word HARMONY is the main and essential feature of applicant's corporate name. The applicant claim to be continuously using the trade mark since 1997 and owing to long, continuous and extensive use of the mark and strategic sale promotion, it has generated reputation and goodwill and thus the registered proprietors are the rightful owners of the said trade mark in respect of coaxial cables. The applicant has sought the removal of the mark from the register on the grounds, inter alia, that the registered proprietor/respondent No. 1 has obtained the registration of trade mark under a wrong classification of goods; that the registration of trade mark HARMONY is in contravention of Sections 9 and 11 of the Act; that the registration was obtained by making false claim of honest adoption and proprietorship by the respondent No. 1 and the same is in contravention of Section 18 of the Act; that the registration was obtained by fraud and misguiding the Registrar of Trade Marks and that the entry relating to the impugned mark was made without sufficient cause and is wrongly and without cause remaining on the register. The applicant claiming to be the person aggrieved has sought the removal of the impugned trade mark from the register or rectification of the register under Section 47/57 of the Act.
(3.) THE respondent No. 1, a sole proprietorship firm (which was a partnership firm earlier) filed the counter-statement denying the material averments made in the application and stating that the firm made an application No. 1350531 for registration of trade mark HARMONY along with logo on 12.4.2004 in respect of coaxial cable in class 6 claiming user since 1.4.2001. It is claimed that no fraud has been committed by the them and it is not their fault if the Registrar has registered their application in class 6 as the Registry is the final authority under Section 7 of the Act in deciding the class and that they should not be made to suffer after five years of filing the application and granting registration by the Registrar of Trade Marks. It is further claimed that the applicant and the respondent No. 1 were functioning more or less as sister concerns- both were aware of the activities of each other and two of the partners of the respondent No. 1 were also directors of the applicant. THE applicants were fully aware of the use and adoption of the mark by the respondent No. 1 and in fact joint advertisements were made in their respective names in March, 1998. THE applicant filed application for registration of the trade mark after its directors Mr. Neelesh H. Doshi and Rakesh H. Doshi resigned from the directorship in April, 2004, by making false statement that they have been using the mark since 31.12.1997, whereas they have in fact started using the for the first time in 2003-2004 only.;