INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018
CIRCUIT BENCH SITTING AT NEW DELHI
M.P. NOS. 54/2010 & 29/2011 IN ORA/49/2010/TM/DEL
AND
ORA/49/2010/TM/DEL
FRIDAY, THIS THE 11TH DAY OF NOVEMBER, 2011
Hon’ble Smt. Justice Prabha Sridevan … Chairman
Hon’ble Ms. S. Usha … Vice-Chairman
The Cartoon Network, Inc.,
1050 Techwood Drive, NW
Atlanta, Georgia 30318
U.S.A. … Applicant
(Represented by Shri Naval K. Kastia)
Vs
Satya Narain Sharma,
H.No.573, Gali No.37,
Onkar Nagar, C – Trinagar,
New Delhi – 110 052. … Respondent
(Represented by Dr. D.D. Sharma)
ORDER (No. 194/2011)
HON’BLE SMT. JUSTICE PRABHA SRIDEVAN, CHAIRMAN:
1. The application seeks the removal of the mark POGO (LABEL) bearing No.1288638 in class 30.
2. The applicant is engaged amongst other things in the production and distribution of entertainment programme and related merchandise. They own and operate the “Cartoon Network” and “POGO” Programme. POGO is a programme for children who are the targeted at audiences. It is a very popular channel. The applicant is the registered proprietor of a family of POGO and POGO formative trade marks. This includes POGO design. By virtue of registration and as per Section 31 of the Trade Marks Act, 1999 (hereinafter referred to as Act), the marks are prima facie evidence of their validity. The applicant has also applied for registration of POGO and POGO formative trade marks. POGO was launched on 1st January, 2004 in India. The launch was publicized extensively and the media reports have been annexed as Annexure-D. The programmes are very highly popular and some of the POGO award winning programmes promote learning and development.
3. In 2004, the POGO channel introduced POGO Amazing Kids Awards where children could vote for their favorites amongst nominees in several categories. This was introduced to recognize child prodigies and to acknowledge the achievements of children in various areas. By any standards POGO is a well known trade mark as per Section 2(zg) of the Act. The applicant learnt from the Trade Marks Journal 1337 dated 1st December, 2005 that the respondent had applied for the trade mark under No.1288638 in Class 30. This trade mark is identical to the applicants. It was advertised only as a word mark. Thereafter a corrigenda was issued where the trade mark was advertised as a stylized logo mark with a word POGO written in script identical to the applicants. Since there is a substantial variation in the mark originally applied for, there ought to have been re-advertisement as per Section 20 of the Act instead of a mere corrigenda.
4. The applicant filed Notice of Opposition. The computer records of the Trade Marks Registry show that this was taken on record. But yet, the trade mark was advertised as registered without hearing the opponent ie. applicant herein. The online record of the Trade Marks Registry showed the trades mark as “Opposed” even though it had been registered. The applicant therefore sent a cease and desist notice dated 28.09.2006. The applicant received a reply dated 9.10.2006 stating that the trade mark had been registered. So, on 08.01.2008, the applicant filed a cancellation petition. The applicant’s agents were informed orally by the Trade Marks Registry that since the status of the subject application was shown as opposed, the cancellation petition cannot be taken on record. The applicant re-filed the cancellation petition, since there was no communication from the Registry about the pending opposition. This time, the officials noted “not registered cannot be entered”. The applicant also filed an application under the RTI Act, there was no reply. The applicant filed an appeal to which again there was no reply. On 07.04.2008, the applicant received a letter stating that no opposition can be filed against the corrigenda. The applicant having no option filed W.P. No.7474 of 2009 for quashing the registration certificate or for taking the notice of opposition on record. On 30.10.2009, the Hon’ble Delhi High Court restrained the respondent from using the registration certificate. Finally on 11.03.2010, the Hon’ble Delhi High Court disposed off the writ petition, restraining the respondent from using the registration certificate till the stay application is heard by the Hon’ble Board and also directed the applicant to file a revocation application before this Hon’ble Board. Therefore this application has been filed.
5. According to respondent the applicant had filed this beyond the time provided under the Act and had acquiesced in the impugned mark for a continuous period of five years in the use of the trade mark. The trade mark of the respondent was registered in June 2004. The present application was filed in March 2010. Therefore it should be rejected. It is submitted that the goods for which the respondent had obtained registration of the mark were not made only for children but for every section of the society. Nobody will believe that the respondent’s goods which have been in existence for a long time, belong to the applicant. The applicants provide entertainment services whereas the goods of the respondent are Candy etc. which belong to a completely different category and therefore no injury will be caused to the applicant. There is no proof of confusion. He referred to various judgments where when the goods belonged to different classes, registration was allowed. The respondent prayed that the rectification petition should be dismissed.
6. The learned counsel for the applicant submitted that the applicant had launched the POGO TV Channel with wide publicity. The word POGO was in a stylized script and unique to the applicant and submitted that when the respondent originally applied for the word mark, the applicant inadvertently missed it. It is only when the corrigenda was published that they noted it and immediately steps were taken for cancellation.
7. The learned counsel also referred to the various events that took place after the applicant had filed its opposition. The Registry communications had clearly misled the applicant and he had to resort to steps of even filing application under the RTI Act before he could resort to the appropriate remedy. The learned counsel submitted that the adoption is clearly dishonest and therefore the rectification should be allowed.
8. The learned counsel for the respondent was asked why they had chosen the word POGO, we were told that the word PO in Punjab means push and go means go, therefore they have chosen it. The learned counsel filed his written submission and reiterated that the class of goods were totally different and there was no likelihood of confusion.
9. We have head both the counsel. We do not think it necessary to go into the merits of the matter for this following reason. The impugned trade mark was originally advertised as a word mark. By issuance of a corrigenda it has been changed to a label mark.
10. We think when there is a substantial change in the mark it ought to have been re-advertised calling for the objections, but here it has been notified.
11. In view of the above, the matter is remanded back to the Trade Marks Registry directing the Registrar to re-advertise the trade mark and to deal with the matter in accordance with law. Miscellaneous petition Nos.54/2010 and 29/2011 are therefore disposed off.
(S. Usha) (Justice Prabha Sridevan)
Vice-Chairman Chairman
SRK
(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)
