ORA/109/2007/TM/DEL. Case: Suresh Kumar Oswal Jain Vs Bir Prakash. Intellectual Propery Appellate Board Cases

Case NumberORA/109/2007/TM/DEL
Party NameSuresh Kumar Oswal Jain Vs Bir Prakash
CounselFor Appellant: Rakesh Tiwari and For Respondents: Kamal Kishore Arora and Gaurav Arora
JudgesK.N. Basha, J. (Chairman) and Sanjeev Kumar Chaswal, Member (T)
IssueCode of Civil Procedure, 1908 (CPC) - Section 11; Indian Evidence Act, 1872 - Sections 101, 102; Limitation Act, 1963 - Section 13; Trade Marks Act, 1999 - Sections 11, 11(6), 18(1), 33, 50(2), 9
Judgement DateMarch 06, 2015
CourtIntellectual Propery Appellate Board Cases

Order:

Sanjeev Kumar Chaswal, Member (T)

  1. 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. 757586 in class 25 to the respondent herein.

    Case of the applicant:

  2. The petitioner has claimed that his father Shri Tarsem Oswal started using the trade mark "OSWAL" from the year 1st August, 1963.

  3. The applicant claims that after their father they are using the trade mark "OSWAL" for the last 17 years. The result of effort put by their father in last 40 years is that the applicant's trade mark "OSWAL" has become well known trade mark within section 11(6) of the Act. The applicant claims huge sales under the trademark "OSWAL".

  4. The applicant further claims that the respondent has applied for the registration of the trade mark "OSWAL CLASSIC similar to the applicant. After knowing of that fact, the applicant had filed an opposition No. 34635 against the application No. 757586 in class 25. The learned Deputy Registrar of Trade Marks has granted the registration of the said trade mark "OSWAL CLASSIC" after abandoning the opposition of the applicant herein due to non prosecution.

  5. The applicant further submits that the Civil Litigation between the sister units of the applicant and the respondent is going on in District Court of Ludhiana with regard to impugned trade mark "OSWAL CLASSIC. The respondent has claimed false use and is tainted with commercial dishonesty.

  6. The respondent is not a proprietor of impugned trade mark "OSWAL CLASSIC and further the respondent has no justification of adopting the similar to the registered trade mark "OSWAL", rather the respondent has obtained registration simply to disturb the business of the applicant. Therefore, the respondent being subsequent adopter cannot claim to be a proprietor of the trade mark "OSWAL" within the meaning of the section 18(1) of the Act.

  7. As both the parties are from same place, having identical marks as well as identical goods, so, the respondent's adoption of applicant's trade mark "OSWAL" is dishonest and is not bonafide. Therefore, there are chances of confusion and deception in the market. Thus, the registration of trademark "OSWAL CLASSIC" granted to the respondent contravenes section 11 of the Act.

  8. The applicant has promoted the trade mark "OSWAL" and has built up reputation and goodwill during the long course of business and as such adoption by the respondent is a deceitful and there are chances of confusion among public in the market.

  9. The applicant has further claimed the respondent trademark "OSWAL CLASSIC" is devoid of distinctive character and has failed to achieve its distinctiveness till the filing of this application as such the impugned registration contravenes section 9 of the Act.

  10. The applicant has further claimed that litigation between the applicant and the respondent sister concern is pending in different forums, as such the present applicant is a bonafide aggrieved person to file the present application for rectification.

    Case of the respondent

  11. The respondent has claimed that he is engaged in business of various kinds of shawls, lohies, blankets and such other textile/hosiery goods since long.

  12. The respondent has further claimed that in the year of 1970, the respondent honestly and bonafidely conceived and adopted a trade mark "OSWAL CLASSIC" in respect of the aforesaid goods.

  13. The respondent has claimed that by virtue of prior adoption and regular use of the aforesaid trade mark "OSWAL CLASSIC" the respondent has earned enviable goodwill and reputation in the market.

  14. The respondent has claimed that in the year of 1993, the respondent developed an artistic-label comprising of peculiar & distinctive style, get up and format and also comprising of the aforesaid trade mark "OSWAL CLASSIC and its trade name "BALDEV RAJ MALHOTRA WEAVING FACTORY" along with some descriptive matters, and put it into commercial use.

  15. The respondent has claimed huge sales worth of few crores from the year 1970-1971. The respondent has further given figures of the sister concern using the trade mark VINAY OSWAL".

  16. The respondent in his counter statement filed the sales bill showing the use from the year 1998 and has further claimed extensive use of the trade mark "OSWAL CLASSIC.

  17. The respondent is the first and prior adopter, user promoter and the true & lawful proprietor of the aforesaid trade mark within the meaning of section 18(1) of the Act, that on account of regular use of the aforesaid trade mark, the respondent has thus gained the proprietary rights in "OSWAL CLASSIC".

  18. That the petitioner deliberately filed the notice of opposition (No. DEL -T-4635) against the respondent herein with a view to harass the respondent and paralyze the business of the respondent.

  19. That after filing of opposition, the applicant failed to adduce evidence in support of its opposition, support of his claim within the prescribed statutory time of two months. Therefore, the said opposition was abandoned under Rule 50(2) of the Trade Mark Rules 2002 by Deputy Registrar of Trade Marks.

  20. In view of the said abandonment, the Deputy Registrar of Trade Marks has allowed the registration of the respondent impugned trade mark No. 757586 in class 25 to proceed.

  21. That the applicant has admitted in his application of rectification that he was being fully aware about the respondent's prior adoption and extensive use of the aforesaid trade mark.

  22. The applicant filed a Civil Suit of 2000, before the District Judge, Ludhiana against the respondent under the provision of the Trade Mark Law and the said civil suit was dismissed as withdrawn by the applicant before the Hon'ble Court ADJ on 13th of March 2014, as such the applicant has acquiesced itself in pursuing present application against the respondent.

  23. The impugned application of the applicant is liable to be dismissed in view of the principles of acquiescence (as provided under section 33 of the Act), delay, latches, waiver & estoppels, as the respondent has regularly been doing its business of the aforesaid goods bearing the aforesaid trade mark openly, since 1970 and to the full knowledge of...

To continue reading

Request your trial