Case: Radiant Bearings Pvt. Ltd. Vs NRB Bearings Limited. Trademark Tribunal
| Judges | Dharam Singh, Deputy Registrar of Trade Marks |
| Issue | Intellectual Property Rights Act |
| Judgement Date | November 26, 2009 |
| Court | Trademark Tribunal |
Order:
Dharam Singh, Deputy Registrar of Trade Marks
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On 31/12/1990, M/s. Radiant Bearings Pvt. Ltd., Porbandar, Gujarat (hereinafter referred to as the 'Applicants') applied for registration of trade mark MRB in respect of "Bearings of all types included in Class 7" as 'proposed to be used' under Application No. 542750 under the provisions of The Trade & Merchandise Marks Act, 1958. Eventually, the application was advertised before acceptance in the Trade Marks Journal No. 1270 dated 1st May, 2002 at page 424.
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On 31/7/2002, M/s. NRB Bearing Limited, Dhannur, 15, Sir. P.M. Road, Fort, Mumbai 400 001 (hereinafter referred to as the 'Opponents') notified their intention to oppose the registration of the impugned trade mark on Form TM-5 on the grounds as follows:
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That the Opponents and their predecessors in business are interalia engaged in manufacturing and marketing 'Bearings' and they are marketing/selling the goods under the trade mark 'NRB' since the year 1965.
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That the letters 'NRB' constituting the mark are main and essential part of their corporate name and the Opponents are referred to and called as 'NRB'. They are the registered proprietors of the said trade mark as per following details:
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Trade Appl. No./Class Goods TM JournalMark
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NRB 538420/7 Bearing being parts 1117 of machinesNRB 339887/7
Bearings 741NRB 538421/7 Bearings 1114NRB 538422/7 Bearings 1117
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and all the registrations are valid and subsisting.
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That by virtue of long and extensive and continuous user/publicity, the trade mark 'NRB' has acquired goodwill and reputation and is exclusively associated with the Opponents' company.
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That the trade mark consisting of letters 'MRB' sought to be registered under the impugned application No. 542750 is deceptively and confusingly similar to the Opponents' reputed trade mask NRB and the goods are also the same, hence, the registration of the application is prohibited under Section 12(1) of the aforesaid Act.
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That the use of trade mark MRB by the Applicants would inevitably lead to confusion/deception in the trade and public. The buying customer is likely to assume the Opponents trade connection with the applicants and as such, they will pass off their goods as those of the opponents.
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That the Opponents' trade mark 'NRB' can be easily mistaken as MRB by the customer of average intelligence and imperfect recollection.
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That the adoption and use of the mark MRB by the Applicants is dishonest and fraudulent and the Applicants are not and cannot be considered as proprietors of the mark under Section 18(1) of the Act.
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That the trade mark MRB sought to be registered by the Applicants being deceptively similar to the opponents' trade mark NRB is neither adopted to distinguish nor capable of distinguishing the applicants' goods and the registration contravenes the provisions of Section 9(1) of the Act.
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That the Opponents were aware of the use and reputation of the Opponents' well known and reputed trade mark NRB and deliberately adopted the deceptively similar trade mark.
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The foregoing constitutes the sufficient grounds for exercise of the Registrar's discretion in the Opponents' favour; it is therefore, prayed that the impugned application be refused registration with an order as to costs in favour of the Opponents.
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On 25/11/2003, the above named Applicants filed the Counter-statement on Form TM-6 denying all and singular averments made in the Notice of Opposition except what is the matter of record relying on the grounds as follows:
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That the Applicants are a company duly incorporated under the Companies Act, 1956 and carrying on an established business of manufacturing, marketing and selling various type of 'Bearings' being parts of machines and motor land vehicles', atleast since the year 1981.
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That the Applicants, in order to distinguish their aforesaid goods from those of other manufacturers/traders, honestly adopted and started using the trade mark containing letters MRB.
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That, by virtue of honest and bonafide adoption and open, continuous and extensive user since the year 1981, the applicants are and claim to be the proprietors of the said trade mark.
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That the Applicants, to acquire the statutory rights in their trade mark applied for registration on September 28, 1983, under application No. 411249 in respect of the goods 'Bearings of all type for use in motor land vehicles falling in Class 12' and the said application was advertised in the Trade Marks Journal No. 987 dtd. 16/7/1990 and the Registrar was pleased to grant the registration of the said trade mark in the name of the applicants company w.e.f 28/9/1983; the said registration is renewed from time to time and subsisting on the register.
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That since the Applicants have already obtained registration of the trade mark MRB under No. 411249B in Class 12, the present registration in Class 7 under the impugned application is merely an extension of the registration held by them and would be contrary to any provisions of the Trade Marks Act, 1999.
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That in view of the registration granted in Class 12 as above, the notice of opposition lodged by the opponents in the present case is nothing, but an abuse of the process of law and is also otherwise devoid of merits and...
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