ORA/126/2012/TM/CH and M.P. Nos. 396/2012 and 127/2013 in ORA/126/2012/TM/CH. Case: Hypnos Limited Vs Hosur Coir Foam Pvt. Ltd. and Ors.. Intellectual Propery Appellate Board Cases
| Case Number | ORA/126/2012/TM/CH and M.P. Nos. 396/2012 and 127/2013 in ORA/126/2012/TM/CH |
| Counsel | For Appellant: Sushant Singh and For Respondents: Kalyan, Sarthak Saran and Sarada Kalakadi |
| Judges | K.N. Basha, Chairman and Sanjeev Kumar Chaswal, Member (T) |
| Issue | Trade Marks Act, 1999 - Sections 10, 11, 11(1), 11(2), 11(3), 11(6), 11(9), 12, 18, 2(1)(zg), 47(1)(a), 57, 57(2), 9, 9(2) |
| Judgement Date | April 16, 2015 |
| Court | Intellectual Propery Appellate Board Cases |
Order:
Sanjeev Kumar Chaswal, Member (T)
In the instant case, the applicant has preferred a rectification application before the Board, thereby challenging the grant of registration certificate for the trade mark No. 1544245 in class 20 to the respondent herein.
Case of the applicant
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The applicant is a family run business incorporated in 1926 and now it is a limited company in United Kingdom.
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The applicant is one of the most renowned manufacturer of uniquely designed, hand-crafted and technologically highly advanced beds, mattresses, pillows etc.
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The applicant is a registered proprietor of the mark 'HYPNOS' (word). The applicant claims that the mark 'HYPNOS' was first adopted by as a trade mark several decades ago in relation to its products beds and bedding, like mattresses, pillows etc. and other allied products.
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That owing to the popularity of applicant's brand 'HYPNOS' which was adopted as the dominant and distinguishing part of the applicant's company name in 1988 and the said name is being used as trade mark in respect of its goods on an international scales too.
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The applicant has international affiliations world over through its associated company which has commercial business and operations in United Kingdom, U.S.A., Canada, Germany, Australia, Taiwan, Austria, Czech Republic, Greece, Holland, Hungary and Switzerland, etc.
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The applicant's trade mark and brand 'HYPNOS' has an excellent reputation and goodwill and it is exclusively identified and associated with the applicant alone. The worldwide operations of Hypnos Limited cater to highly specialized market and consumers namely royal palaces and estates, luxury and boutique hotels, cruise liners, yacht, spa and serviced apartments. Some of consumers of the applicant are prestigious clubs, hotels and hotel chains world wide over.
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The applicant has supplied Hypnos beds to Premier Inn Bangalore in the year 2008-2009 and to Premier Inn Delhi in the year 2010 against direct order placed with Hypnos Limited, United Kingdom.
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The applicant initiated dialogues with Shri Balaji Industries of F-61-62, Sidhgul Industrial Area, Haridwar, Uttarakhand for a collaboration for manufacture and marketing of the applicant's HYPNOS beds in India in the year 2011.
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Due to superior quality, extensive and continuous use including wide publicity and promotion of the applicant's products bearing the mark 'HYPNOS', the applicant's said trademark has acquired factual distinctiveness and has become inextricably linked with the applicant's products only. The use of trade mark 'HYPNOS' in relation to said goods or related goods would connote and denote the applicant as the source thereof. Therefore, the applicant trademarks 'HYPNOS' is well known within the ambit of Section 2(1)(zg) of the Trade Marks Act 1999.
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That by virtue of its first worldwide use coupled with trans border reputation, the applicant's trademark 'HYPNOS' is the earlier trade mark within the meaning of section 11 of the Trade Marks Act, 1999, which clearly indicate that the applicant's 'HYPNOS' is a well known trade mark in India. The definition of well known trade mark as prescribed under section 2(1)(zg) of the Trade Marks Act, 1999 reads as under
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Still to attain statutory protection to its mark, the applicant has obtained registration in many countries. Further the applicant has applied for registration of the trade mark 'HYPNOS' and the said application is pending in India under application No. 2127838 in class 20 in respect of the furniture, beds, bed bases, bed castors, bed glides, bed headboards, sofa beds, bedding namely mattresses, pillows, duvets, sheets, pillow cases, valances, duvet covers etc. The above said application of the applicant is pending for registration before the Registrar of Trade Marks, Kolkota.
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The registered proprietor/respondent had dishonestly adopted and applied for registration of the impugned trade mark 'HYPNOS' which is an internationally well known mark exclusively associated with the applicant, the second respondent is admittedly the exclusive licensee of the first respondent/registered proprietor of the trade mark 'HYPNOS'.
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The first and second respondent jointly filed a civil suit bearing No. 3396 of 2011 before the said civil court Bangalore against the applicant as well as against the business associates Shri Balaji Industries Private Limited with whom the applicant has entered into an agreement of collaboration to manufacture and market the Hypnos beds in India.
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The said Civil Suit lodged for the act of infringement of the first respondent's impugned registered trade mark 'HYPNOS' under registration No. 1544245 in class 20. The suit of the respondents is a frivolous action lodged by the registered proprietor and its licensee to unlawfully usurp our rights over the internationally well known trade mark 'HYPNOS'. The said civil suit is being appropriately defended by the applicant and is pending before the above said civil court.
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The applicant is a prior adopter and user of the well known mark 'HYPNOS' in respect of the above mentioned goods using in world market. Therefore, the registered proprietor/respondent could not claim proprietorship to the impugned trade mark which has contrary to section 18 of the Trade Marks Act, 1999.
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The registered/proprietor respondent has obtained registration of the trade mark by making false claims of proprietorship and misleading statements. The registered proprietor/respondent must have been fully aware of the reputation and goodwill adopted by the applicant's trade mark 'HYPNOS', when the registered proprietor/respondent adopted the identical trade mark in respect of identical goods in the year 2007.
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The impugned registered trade mark is being identical to the applicant's internationally well known mark and which is also registered in relation to identical goods, thus stands in violation of the relevant provisions as stated in section 11 of the Act.
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The adoption of the impugned trade mark 'HYPNOS' by the respondent is tainted with dishonesty and no amount of use of the impugned registered trade mark by the registered proprietor/respondent can be inured to the benefit of the registered proprietor. Therefore, the registered proprietor/respondent is not entitled to claim any right to the registration under section 12 of the Act.
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The registered proprietor/respondent registered the trade mark 'HYPNOS' or impugned trade mark 'HYPNOS without any bonafide intention or in fact, there has been no bonafide use and the trade mark up to a date of 3 months before the date of this application and as such the impugned mark is liable to be expunged under section 47(1)(a) of the Act.
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The registered proprietor/respondent has obtained the registration by making false and misleading statement. Therefore, the legal validity of the trade mark is being vitiated and the impugned trade mark entry remains wrongly on the trade mark register and so remains without sufficient cause hence registration is liable to be expunged from the Trade Mark Registry under section 57(2) of the Act.
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The impugned trade mark of the registered proprietor/respondent is registered wrongly without any benefit to the public, on the other hand, the impugned registration is contrary to public interest, and hence the mark is liable to be expunged under section 57 of the Act.
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The registered proprietor/respondent had applied for registered mark, knowing fully well that the applicant company is the proprietor of the mark 'HYPNOS' in respect of the identical goods. The registered proprietor/respondent has obtained registration of the trade mark solely to derive unlawful commercial gains at the cost of the applicant's company. As such, the trade mark registration is liable to be cancelled.
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The applicant's company mark 'HYPNOS' is well known worldwide and consumers as well as members of the public and trade associate the mark 'HYPNOS' in respect of the goods related with the applicant's company only. Therefore, existence on the registration of identical trade mark in the name of different entities are detrimental to the applicant's business interests as the applicant is true and bonafide proprietor of internationally well known trade mark 'HYPNOS' in respect of the above said goods.
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The registered proprietor/respondent has mischievously filed the suit based on the impugned registered trade mark, thus the applicant's company is a 'person aggrieved' by the impugned registration and very much within its right to file rectification application against the impugned registered trademark.
Case of the Respondent
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The respondent is a well known company incorporated in Indian company Act 1956 and is the proprietor of the registered trade mark 'HYPNOS' bearing No. 1544245 under class 20 for selling mattresses and other related products. The registration of trade mark 'HYPNOS' is valid and subsisting.
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The respondent has filed the application for registration of the mark 'HYPNOS' on 28/03/2007 and since 16th October, 2008 the respondent have been continuously using the impugned trade mark in relation to the products as mentioned above.
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The respondent No. 1 has carried out due diligence while adopting the mark 'HYPNOS' and after obtaining the registration, the respondent No. 1 gave exclusive license to respondent No. 2 to use the registered trade mark 'HYPNOS' in India and since its introduction by the respondent No. 2 in the market in the year 2008, the respondent No. 2 has been using continuously and extensively the trade mark? HYPNOS' in India for selling sleep comfort products.
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The respondent No. 2 as exclusive license, extensively advertising and promoting the brand 'HYONOS' in print and other media and due to outstanding quality of its products and exclusive promotion of its brand 'HYPNOS' the respondent No. 2 has received tremendous response from the public at large.
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The respondent has became aware that the registered trade mark...
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