INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018
CIRCUIT BENCH SITTING AT MUMBAI
ORA/7/2008/TM/MUM
MONDAY, THIS THE 26TH DAY OF NOVEMBER, 2012
Hon'ble Ms. S. Usha … Vice-Chairman
Hon'ble Shri. V. Ravi … Technical Member
Crompton Greaves Limited,
CG House, 6th Floor,
Dr. Annie Besant Road,
Worli,
Mumbai – 400 030. … Applicant
(By Advocate – Ms. Subha Shainey)
Vs.
1. The Registrar of Trade Marks,
Office of the Trade Marks Registry,
Boudhik Sampada Bhavan,
Near Antop Hill Head PO
S.M. Road, Antop Hill,
Mumbai – 400 037.
2. Vijay Pransukhlal Soni,
Trading as Metallica Industries,
2nd Floor, Navjeevan Industrial Estate,
Oshiwara Bridge,
Jogeshwari (W)
Mumbai … Respondents
(None represented)
ORDER (No.267 of 2012)
Hon’ble Ms. S. Usha, Vice-Chairman:
The applicant is a market leader in a number of product groups in the electrical sector. They are dealing in three principal businesses that is the Industrial Systems, the Power Systems and the Consumer Products. Industrial system includes the state of the art Alternators, Railway transportation and Signaling products that cater to the needs of the Indian Railways and the Stampings which cater to a wide range of motors, fans, alternators, generators and pumps. The Power system includes manufacture and sale of all types of Power and Distribution Transformers, a wide range of Switchgears besides offering customized turn-key solutions for power quality and engineering projects that cater to larger need of OEMs. The Consumer Products includes all types of appliances, fans, geysers, luminaries and light sources for all types of indoor and outdoor environments and pumps for our agricultural sectors. The applicant’s turnover runs to Crores of Rupees.
2. The applicants conceived and adopted the trade mark Crompton which was duly coined by Col. R.E. Crompton together with Mr. Frank Parkinson whose company Crompton Parkinson Works Ltd. was the first user of the said mark in India. All rights were transferred to the applicants who became the sole proprietor. The first user dates back to 1937 when the mark was first coined. The said trade mark has been used both in India and outside in respect of various electrical goods. On account of said longstanding use with effect from 1937 the said mark has now come to be associated with the applicants only. The applicants have also adopted the trade mark Crompton Greaves and had been using the same since 1966.
3. By virtue of extensive, long and continuous use the trade mark Crompton Greaves has become distinctive and is identified with the applicants products. The applicant is also using Crompton Greaves as its trading style for more than 40 years. The have applied for and obtained trade mark registrations in classes 7 & 11. They have applied for registration in classes 8, 9 & 12 which are pending.
4. The 2nd respondent herein has copied the applicants well known and registered trade mark as well as applicants corporate name namely Crompton Greaves. The 2ndrespondent has adopted the trade mark Prompton impugned herein which closely resembles the applicant’s trade mark Crompton visually, structurally and phonetically. The impugned registration in class 9 in respect of electronic and technical apparatus etc. is causing confusion and deception among the trade and public. The goodwill and reputation enjoyed by the applicants trade mark Crompton / Crompton Greaves is getting diluted by the use and registration of the identical trade mark Prompton in the 2nd respondents name. The impugned registration is against the public interest and purity of the register of Trade Marks. The registration is without any sufficient cause and is thus wrongly remaining on the register and therefore ought to be removed.
5. The class of customers and trade channels of the applicants and the respondent are identical. The use of the almost identical trade mark Prompton by the 2nd respondent is causing deception and confusion amongst the trade and public. The registration of the trade mark “Prompton” in the name of the 2nd respondent is contrary to the provisions of Sections 11(1)(a) & 11(1)(b) of the Act.
6. The applicants trade mark Crompton / Crompton Greaves is a well known trade mark which is used and registered since 1937/1966 respectively. The applicants trade mark enjoys great reputation and goodwill. The registration of almost identical trade mark Prompton is thus bad in law as it is wrongfully adopted in bad faith with a view to take unfair advantage of and be determental to the applicants well known trade mark and is thus contrary to the provisions of Section 11(2) of the Act. In fact, use of the identical trade mark amounts to passing off of the respondents goods as and for the applicants goods and is contrary to the provisions of Section 11(3)(a) of the Act.
7. The applicant is the registered proprietor of the Copyright in the word Crompton Greaves and the respondent is therefore legally prohibited from using the registered trade mark. Any such registration is contrary to the provisions of Section 11(3)(b) of the Act. The respondent has not used the impugned trade mark in respect of electrical goods and parts thereof for a continuous period of 3 months or longer prior to the date of filing of the application for rectification and therefore ought to be removed under Section 47(1)(b) of the Act.
8. The entry relating to the trade mark Prompton is wrongly remaining on the register as it is identical to the applicant’s trade mark Crompton Greaves / Crompton. The respondents adoption is malafide per se, bad in law, in bad faith and dishonest and as such is contrary to the provisions of Section 57 (2) of the Act.
9. The trade mark “Prompton” is remaining registered without sufficient cause and ought to be removed under Section 58(2) of the Act. In the interest of maintaining the purity of the register, it is imperative that the said trade mark be expunged.
10. The notices which were sent to the 2nd respondent were returned unserved. The Board directed the applicant’s counsel to file a miscellaneous petition for substituted service. The applicants filed miscellaneous petition for substituted service as directed. Publication was effected and the respondent did not appear and were therefore set ex-parte. The counsel Ms. Subha Shainey advanced her arguments on behalf of the applicants.
11. The learned counsel submitted that the applicants adopted and used the trade mark Crompton since 1937 and since 1966 Crompton Greaves. The respondents had applied for registration of the trade mark Prompton on 23.-7.1999 claiming user since 01.01.1993. The registration certificate was issued on 16.01.2004. The applicants are prior in adoption, use and registration. The impugned trade mark is in contravention of the provisions of Section 11, 47 & 57 of the Act.
12. The counsel also submitted that the mark has not been renewed after 2009 as seen from computer generated application status reports. In this regard the counsel relied on the Boards Judgments and submitted that the respondents have not appeared and denied the ground of non use and therefore the ground of non use stands. The counsel also relied on judgment in ORA/61/2008 where the trade mark Prompton was cancelled considering the fact that the applicants are prior in adoption and use. The counsel therefore prayed that the impugned trade mark Prompton may be cancelled.
13. We have considered the arguments and have gone through the pleadings and documents.
14. Both the applicants and the respondents are carrying on business of electrical goods. The applicants mark is Crompton / Cropmton Greaves. The applicants trading style / corporate name is Crompton Greaves. The respondents mark is Prompton. The rival marks are deceptively similar. Except for the first letter, the marks are identical. The marks are phonetically similar. The applicants are into this business since 1937 using the trade mark Crompton. The respondents have claimed use of the mark only since 1993 which is definitely subsequent to that of the applicants.
15. The use of the trade mark Prompton by the respondents will injure or affect the applicants business. When a persons business is affected by the mark on the register that person is said to be a person aggrieved. The applicant herein is thus a person aggrieved.
16. Adoption of a deceptively similar trade mark is that the respondents are passing off their goods as of the applicants goods. The respondents are not before use to give any reasons for their adoption and use of an identical mark.
17. When the mark is considered to be in contravention of the provisions of the Act, then the trade mark is wrongly remaining on the register without sufficient cause. The impugned trade therefore shall be removed.
18. We do not accept the applicant’s ground of non user under Section 47(1)(b) of the Act. The impugned trade mark was applied for registration on 23.07.1999 claiming user since 01.01.1993. The mark was entered in the register on 16.01.2004. The non user of 5 years is to calculated from the date on which it is entered in the register. Here the mark was registered only in 2004. The applicant i.e. the respondent herein had time till 2009 to start using the mark. The application for rectification has been filed on 27.12.2007. Therefore the ground of non user has not been satisfied and is rejected.
19. We find that an identical trade mark for identical goods ie. Prompton for goods falling in class 9 has been filed as early as 1996 and pending on the date of this impugned order. This Board has already removed that trade mark Prompton registered under No.714516 in class 9. We are forced to express our dissatisfaction in the way the Trade Marks Registry is functioning. When an identical prior trade mark is pending it would not be correct to register a subsequent application for the same goods/services made by another applicant till the earlier application is effectively disposed or the subsequent application is based on superior claim of proved use of the mark. We also suggest the registry should as far as possible maintain seniority in disposal of pending cases unless the prior applicant has defaulted in compliance of official requirements.
20. Having considered and decided all the issues in favour of the applicant we do not think it fit to allow the mark to continue on the register. Consequently the application for rectification is allowed with a direction to the Registrar to cancel the trade mark Prompton under No.867573 in Class 9. No order as to costs.
(V. Ravi) (S. Usha)
Technical Member Vice-Chairman
(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)
