ORA/150/2007/TM/CH. Case: Prime Plast Vs Prime Teleextrusions Ltd.. Intellectual Propery Appellate Board Cases

Case NumberORA/150/2007/TM/CH
Party NamePrime Plast Vs Prime Teleextrusions Ltd.
CounselFor Appellant: K.K. Sharma and For Respondents: S. Balachandran
JudgesK.N. Basha, J. (Chairman) and Sanjeev Kumar Chaswal, Member (T(Trade Marks))
IssueTrade Marks Act, 1999 - Sections 11(1), 11(3), 12, 18(1), 47, 9(1), 9(1)(a), 9(2)(a)
Judgement DateMarch 09, 2015
CourtIntellectual Propery Appellate Board Cases

Order:

K.N. Basha, J. (Chairman)

  1. This application is preferred by the applicant seeking for the relief of rectification of the impugned trade mark "PRIME" registered under No. 1084386 under class 17 with a prayer to expunge the impugned trade mark from the register of Trade Marks, Chennai.

  2. The case of the petitioner is that they are engaged in the business under the name and style as M/s. Prime Plast manufacturing and marketing of High Density Polyethylene Equipment Pipes (hereinafter referred as HDPE Pipes) and other plastic pipes right from the year 1992. The trade mark "PRIME" is a reputed and well known trade mark from the year 1992. They have earned name and fame having excellent sale turn over.

  3. The applicant also filed an application for registration of the trade mark on 07/11/1996 under application No. 722255 in class 17 claiming user since 04/06/1992. As the said trade mark was objected by the Registrar of Trade Marks the said application was withdrawn. The applicant filed fresh application for the registration of the trade mark on 11/11/2003 under application No. 1248901 and the respondent herein filed opposition. The same was rejected on 18/02/2009. The respondent has not challenged the order by preferring an appeal. The applicant has obtained registration certificate in their favour on 10/03/2009.

  4. Meanwhile the respondent got the registration of the impugned trade mark under application No. 1084386 in class 17 in respect of the identical goods manufactured and marketed by the applicant herein. The said factor necessitated the applicant herein to file the present rectification application under section 9(1)(a), 9(2)(a), section 11(3) and 18(1) of the Trade Marks Act, 1999.

  5. The first respondent herein filed their counter to the application filed by the petitioner denying the claims of the applicant. It is stated by them that even earlier to the present company their family was running Prime Petrochemicals Private Ltd. and Prime Polymers from the year 1996. The present respondent's company is manufacturing and marketing plastic pipes under the brand name "PRIME" from 16/08/2000. It is stated that the expression plastic pipes is a very broad term which includes (a) PVC (Poly Vinyl Chloride) pipes, (b) PP-R (Poly Prolylene Random) pipes, (c) MDPE Pipe (Medium Density Poly ethylene) pipes, (d) PLB HDPE pipes - Pre-Lubricated HDPE telecom ducts, (e) HDPE pipe - High Density Polyethylene, (f) Sprinkler HDPE pipe.

  6. The respondent has also given the details of their turn over from the year 2000 to 2005. It is further stated in the counter that the applicant is dealing only in HDPE Pipes as per the application filed by them before the Registrar of Trade Marks and as such they are entitled to use trade mark "Prime" only for HDPE Pipes. The respondent also denied any malafides in adoption of "PRIME". Lastly it is stated that the applicant cannot claim the exclusive right to use the trade mark "PRIME" which is a common word.

  7. On the basis of the respective pleas raised by the applicant as well as the respondent, the learned counsel for the applicant and the learned counsel for the respondent have put forward their contentions.

  8. Mr. Sharma, the learned counsel for the applicant would vehemently contend that the impugned trade mark of the first respondent herein is liable to be rectified and removed from the register...

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