Full Judgment Text
IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on: 05.01.2018
+ W.P.(C) 2828/2013 & CM No. 5325/2013
KELLOGG COMPANY ..... Petitioner
versus
POPS FOOD PRODUCTS (P) LTD. ..... Respondent
Advocates who appeared in this case:
For the Petitioner : Mr N. K. Anand and Mr Raunaq Kamath.
For the Respondent : Mr Ashok Mittal.
CORAM
HON’BLE MR JUSTICE VIBHU BAKHRU
JUDGMENT
VIBHU BAKHRU, J
1. The petitioner has filed the present petition, inter alia , impugning an
order dated 06.01.2012 (hereafter „the impugned order‟) passed by the
Intellectual Property Appellate Board (hereafter „IPAB‟), whereby the
registration of the petitioner‟s trademark “POPS” bearing Registration No.
507137 in class 30 (hereafter „the impugned mark‟) has been directed to be
removed from the Register of Trademark. The impugned order was passed
on an application filed by the respondent alleging non-use of the said
Trademark.
2. According to the petitioner, the impugned order is erroneous as the
respondent was not a person aggrieved and, therefore, could not maintain
an application for rectification of the registration in respect of the
impugned mark. The petitioner further claims that IPAB had erred in not
W.P.(C) 2828/2013 Page 1 of 13
appreciating that the petitioner intended to use the trademark in question in
India.
3. Briefly stated, the relevant facts necessary to address the controversy
involved in the present petition are as under:-
3.1 The respondent is the proprietor of the registered trademark “POPS”
under registration nos. 342674, 342675 and 342676 in classes 30, 29 and
30 respectively. The respondent has been using the said trademark for its
goods being chewing gum, bubble gum and dairy products. The respondent
asserts that its trademarks have acquired substantial goodwill and
reputation in the market.
3.2 The petitioner was the registered proprietor of the impugned mark
(trademark “POPS” bearing registration no. 507137 in class 30). It is the
petitioner‟s case that it had adopted the said trademark internationally in
the year 1941. The petitioner is also the proprietor of the registered
trademark “CORN POPS” bearing registration no. 638273, “COCO POPS”
bearing registration no. 758864, “SNAP CRACKLE PPP” bearing
registration no. 345988 and “POP-TARTS” bearing registration no.
516460. The petitioner also asserts that its trademarks have acquired
substantial goodwill in the international market.
3.3 The impugned mark was registered in favour of the petitioner on
16.03.1989 and was subsisting in the petitioner‟s name for the past 22
years.
3.4 The respondent also made an application for registration of a
trademark “POPS” in class 30, which was published in the Trademark
Journal no. 1232 (Supplement) dated 08.10.2000. The respondent‟s
W.P.(C) 2828/2013 Page 2 of 13
application also included use for confectionery. This was not acceptable to
the petitioner and, therefore, the petitioner caused a legal notice dated
25.11.2000 to be served on the respondent indicating its intention to
oppose the respondent‟s application. According to the petitioner, the
respondent‟s application also covered goods in which the petitioner was
interested.
3.5 Thereafter, certain communications were exchanged between the
parties. In July, 2001, the respondent filed a petition before this Court for
expunging the impugned mark from the register. This petition was
transferred to the IPAB and was subsequently allowed by the impugned
order dated 06.01.2012.
4. The IPAB found that there was no evidence of sale of goods by the
petitioner under the impugned mark from 1989 to 2011 and further the
petitioner had also not shown any evidence that it intended to use the
impugned mark. In view of the above, the IPAB decided to rectify the
register by expunging the impugned mark.
5. Mr N. K. Anand, learned counsel appearing for the petitioner
advanced arguments on broadly three fronts. First, he submitted that
respondent was not a “person aggrieved” and, therefore, was not entitled to
maintain the petition for rectification of the impugned mark. He submitted
that the respondent had been using the trademark “POPS” in relation to
chewing gum and bubble gum, which were completely different products
and, therefore, the registration of the impugned mark did not affect the
interest of the respondent in any manner. He relied upon the decisions of
the Supreme Court in Hardie Trading Ltd. and Anr. v. Addisons Paint
and Chemicals Ltd. : (2003) 11 SCC 92 and Infosys Technologies Ltd. v.
W.P.(C) 2828/2013 Page 3 of 13
Jupiter Infosys Limited and Anr. : (2011) 1 SCC 125 , in support of his
contentions.
6. Second, he contended that the parties had agreed to settle the
disputes in terms of an agreement, whereby the petitioner had agreed to
confine the use of the trademark to “cereal based breakfast food”. He
submitted that the respondent had also written a letter to the IPAB
mentioning that the parties were settling their disputes. He submitted that
thereafter, the respondent desired to sell all its plant, machinery, goodwill
₹
and the registered trademarks to the petitioner for a sum of 12 crores.
However, the petitioner was not willing to purchase the plant and
machinery and the business of the respondent and, therefore, the
respondent resiled from the agreement. He contended that the respondent
was required to establish that it was an aggrieved person not only at the
time when the application for rectification was made but also at the time
when the final order was passed. Since the respondent had agreed to sell its
business, it was no longer a person aggrieved at the time when the
impugned order was passed.
7. Third, he contended that the IPAB was required to examine whether
the impugned trademark had been registered on the ground of any
contravention of the Act and was also required to decide any question that
may be necessary or expedient in connection with rectification of the
register. He submitted that the IPAB had failed to consider any other
aspects and had simply directed removal of the impugned trademark on the
ground of “non-use”. He submitted that the petitioner was also using other
trademarks such as CHOCOS, FROOT LOOPS, SNAP! CRACKLE!
POP!, POP-TARTS, SPECIAL K, RICE KRISPIES, NUTRI-GRAIN etc.
W.P.(C) 2828/2013 Page 4 of 13
and, therefore, the petitioner‟s impugned mark could not be removed for
“non-use”.
Reasons and Conclusions
8. At the outset, it is necessary to refer to Section 47 of the Trademarks
Act, 1999 (hereafter „the 1999 Act‟), which is pari materia to Section 46 of
the Trade and Merchandise Act, 1958 (hereafter „the 1958 Act‟). Section
47 of the 1999 Act, is set out below:-
“ 47. Removal from register and imposition of
limitations on ground of non-use. —
(1) A registered trade mark may be taken off the register
in respect of the goods or services in respect of which it is
registered on application made in the prescribed manner to
the Registrar or the Appellate Board by any person
aggrieved on the ground either—
(a) that the trade mark was registered without any bona
fide intention on the part of the applicant for
registration that it should be used in relation to those
goods or services by him or, in a case to which the
provisions of section 46 apply, by the company
concerned or the registered user, as the case may be,
and that there has, in fact, been no bona fide use of
the trade mark in relation to those goods or services
by any proprietor thereof for the time being up to a
date three months before the date of the application;
or
(b) that up to a date three months before the date of the
application, a continuous period of five years from
the date on which the trade mark is actually entered
in the register or longer had elapsed during which the
trade mark was registered and during which there
was no bona fide use thereof in relation to those
goods or services by any proprietor thereof for the
time being:
W.P.(C) 2828/2013 Page 5 of 13
PROVIDED that except where the applicant has been
permitted under section 12 to register an identical or
nearly resembling trade mark in respect of the goods or
services in question, or where the tribunal is of opinion
that he might properly be permitted so to register such a
trade mark, the tribunal may refuse an application under
clause (a) or clause (b) in relation to any goods or services,
if it is shown that there has been, before the relevant date
or during the relevant period, as the case may be, bona
fide use of the trade mark by any proprietor thereof for the
time being in relation to—
(i) goods or services of the same description; or
(ii) goods or services associated with those goods or
services of that description being goods or services, as
the case may be, in respect of which the trade mark is
registered.
(2) Where in relation to any goods or services in respect
of which a trade mark is registered—
(a) the circumstances referred to in clause (b) of sub-
section (1) are shown to exist so far as regards non-
use of the trade mark in relation to goods to be sold,
or otherwise traded in a particular place in India
(otherwise than for export from India), or in relation
to goods to be exported to a particular market outside
India; or in relation to services for use or available
for acceptance in a particular place in India or for
use in a particular market outside India; and
(b) a person has been permitted under section 12 to
register an identical or nearly resembling trade mark
in respect of those goods, under a registration
extending to use in relation to goods to be so sold, or
otherwise traded in, or in relation to goods to be so
exported, or in relation to services for use or
available for acceptance in that place or for use in
that country, or the tribunal is of opinion that he
W.P.(C) 2828/2013 Page 6 of 13
might properly be permitted so to register such a
trade mark, on application by that person in the
prescribed manner to the Appellate Board or to the
Registrar, the tribunal may impose on the
registration of the first-mentioned trade mark such
limitations as it thinks proper for securing that
registration shall cease to extend to such use.
(3) An applicant shall not be entitled to rely for the
purpose of clause (b) of sub-section (1) or for the
purposes of sub-section (2) on any non-use of a trade
mark which is shown to have been due to special
circumstances in the trade, which includes
restrictions on the use of the trade mark in India
imposed by any law or regulation and not to any
intention to abandon or not to use the trade mark in
relation to the goods or services to which the
application relates.”
9. In Hardie Trading Ltd. and Anr. v. Addisons Paint and Chemicals
Ltd. ( supra ), the Supreme Court had explained that three essential
conditions are required to be satisfied before removal of a registered
trademark is directed. First, that the application has been made by a person
aggrieved; second, that the trademark in question has not been used by the
proprietor for a continuous period of at least five years and three months
prior to the date of application; and third, that there are no special
circumstances which would justify the non-use of the trademark in
question. The Supreme Court had also explained that the aforesaid
conditions must be established seriatim. The relevant extract of the said
judgment is set out below:-
“26. Thus before the High Court or the Registrar directs the
removal of the registered trade marks they must be satisfied
in respect of the following:
(1) that the application is by a “person aggrieved”;
W.P.(C) 2828/2013 Page 7 of 13
(2) that the trade mark has not been used by the proprietor
for a continuous period of at least five years and one
month prior to the date of the application;
(3) there were no special circumstances which affected
the use of the trade mark during this period by the
proprietor.
27. The onus to establish the first two conditions obviously
lies with the applicant, whereas the burden of proving the
existence of special circumstances is on the proprietor of the
trade marks. These conditions are not to be cumulatively
proved but established seriatim. There is no question of the
third condition being established unless the second one has
already been proved and there is no question of the second
one even being considered unless the High Court or the
Registrar is satisfied as to the locus standi of the applicant.”
10. In view of the above, the principal issue to be addressed is whether
the petitioner is a person aggrieved. In Hardie Trading Ltd. and Anr. v.
Addisons Paint and Chemicals Ltd. ( Supra ), the Supreme Court had
explained that the expression “person aggrieved” as used in Section 46 of
the 1958 Act ( pari materia to Section 47 of the 1999 Act) was materially
different from the connotation of the said expression as used under Section
56 of the 1958 Act (which is pari materia to Section 57 of the 1999 Act).
The Court had observed that Section 56 of the 1958 Act contemplated
situations where the registration should not have been granted or was
incorrectly granted. These situations included: (a) contravention of failure
to observe a condition for registration; (b) absence of an entry; (c) an entry
made without sufficient cause; (d) a wrong entry; and (e) any error or
defect in the entry. The Court further explained that such types of actions
were commenced to maintain “the purity of the register” and thus had an
element of public interest. In this context, the expression “person
W.P.(C) 2828/2013 Page 8 of 13
aggrieved” would necessarily have a wider sweep. However, there was no
element of public mischief in favour in rectification of a register under
Section 46 of the 1958 Act (Section 47 of 1999 Act) and thus, the person
aggrieved in the context of removal of trademark on account of non-use
would necessarily mean a person who is interested in removal of the
impugned mark.
11. The Supreme Court referred to the following passage from the
decision of the House of Lords in Powell’s Trade Mark : 1894 11 RPC 4 ,
in its decision:
“... although they were no doubt inserted to prevent
officious interference by those who had no interest at all in
the register being correct, and to exclude a mere common
informer, it is undoubtedly of public interest that they
should not be unduly limited, inasmuch as it is a public
mischief that there should remain upon the register a mark
which ought not to be there, and by which many persons
may be affected, who, nevertheless, would not be willing to
enter upon the risk and expense of litigation.
Whenever it can be shown, as here, that the applicant is in
the same trade as the person who has registered the trade
mark, and wherever the trade mark, if remaining on the
register, would, or might, limit the legal rights of the
applicant, so that by reason of the existence of the entry on
the register he could not lawfully do that which, but for the
existence of the mark upon the register, he could lawfully
do, it appears to-me he has a locus standi to be heard as a
person aggrieved.” (emphasis added)
12. The Supreme Court held that the tests as indicated in the above
quoted passage would be applicable to determine whether the applicant
was a person aggrieved within the meaning of Section 46 of the 1958 Act.
W.P.(C) 2828/2013 Page 9 of 13
13. Undoubtedly, the respondent was required to establish that it was a
person aggrieved in order to maintain its application under Section 47 of
the 1999 Act. It is apparent from the facts that the respondent had clearly
discharged this burden. First of all, the respondent was also registered
proprietor of the trademark “POPS”, which it is using in respect of
chewing gums and bubble gums. The respondent had applied for the
registration of the impugned trademark in respect of confectioneries as
well and that had resulted in disputes between the parties.
14. Secondly, the respondent had also explained that some of the trade
channels, which are used to distribute breakfast cereals are also used for
distribution of chewing gums and bubble gums. Both the products are
mainly used by children and it is not difficult to understand the
respondent‟s apprehension that the children who purchase its products
were likely to associate the impugned mark used in respect of breakfast
cereals with the respondent. In the aforesaid context, the respondent had
contended that the use of the trademark “POPS” - which is being used by
respondent for several years - by any other person would result in the
dilution in value of the respondent‟s trademarks.
15. Lastly and more importantly, the petitioner had caused a legal notice
to be served to the respondent expressing its intention to oppose the
respondent‟s application for registration of the trademark, and thus, it was
hardly open for the petitioner to contend that the respondent has no interest
in the removal of the impugned mark. If the petitioner itself felt that the
respondent‟s application of the trademark “POPS” would affect its right,
which was asserted, inter alia , on the strength of registration of the
W.P.(C) 2828/2013 Page 10 of 13
impugned mark, it can hardly urge that the respondent was not affected by
the registration of the impugned mark.
16. In view of the above, this Court is unable to accept that the
respondent did not satisfy the narrow test of being a person aggrieved as
used under Section 47 of the 1999 Act.
17. The contention that the parties had settled the disputes is also not
persuasive, as admittedly no formal agreement was executed between the
parties. The petitioner has itself stated that the respondent was insisting
that its goodwill and business be purchased as a part of the settlement,
which was not acceptable to the petitioner. Thus, although, it does appear
that the parties had held certain negotiations for an amicable settlement,
this Court is unable to accept that a final settlement was concluded
between the parties.
18. Finally, there appears to be no dispute that the petitioner has not
used the impugned mark upto three months prior to the date of the
application. The application for registration of the impugned mark was
made on 16.03.1989 indicating that use of the impugned mark was
proposed. There is no material placed on record before the IPAB which
would indicate that the petitioner had used the impugned mark in this
country. The IPAB had considered the above and held as under:-
“11. We accept that business cannot be started over
night and we cannot also take a view different from the
settled position of law that the person who alleges non user
should prove non user. But in this case, the counsel for the
applicant admits that till date the mark has not been used
and when the mark is “proposed to be used” mark, we do
not think that the applicants need to prove a case which
th
stands proved by admission. The mark was applied 16
W.P.(C) 2828/2013 Page 11 of 13
march 1989 as “proposed to be used”. It was published on
st
1 July 1994 and till date i.e. from 1989 till date there is
not one evidence of use. On the contrary, it is admitted that
they intend to use. The fact that they are registered in other
countries is not relevant for us. Even the judgments relied
on by the respondent are that industries cannot be started
over night cannot be applied. The respondent claims that it
is breakfast giant in the world and if right from 1989 to
2011 i.e. for almost 22 years there is no evidence of use
and it can only mean that there is no bonafide intention to
use. There is not even any correspondence to show that
there has been some attempt to commence use of the mark
in India. 22 years is a long time and it speaks for itself that
there has been no bonafide intention to use. We cannot
brush aside the contention of the applicant that though
Bubble Gum and Cereal may not be goods coming under
the same class, they are all goods sold in super market and
the possibility of confusion cannot be ruled out. In any
event, the respondent who has not used the mark nor
demonstrated a bonafide intention for 2 years cannot insist
on the mark remaining on the register. The mark was
registered in 1995. The application for rectification was
filed on January 2001 after a lapse 5 years and 1 month
during which period there was no user.
In short,
a) The respondent applied for registration of their mark
in 1989 as proposed to be used mark and has not used
it till date.
b) There is no evidence of sale in the country from 1989
to 2011, the respondent has neither used nor shown
any evidence of commencing the business.
c) when the respondent itself admits that the mark has
not been used then the question of proof of non user is
unnecessary.
12. For above reasons, we find that the mark deserves to
be removed from the register and accordingly
TRA/159/2004/TM/DEL is allowed.”
W.P.(C) 2828/2013 Page 12 of 13
19. This Court finds no infirmity with the aforesaid view. The petition
is, accordingly, dismissed. The pending application is also disposed of.
20. The parties are left to bear their own costs.
VIBHU BAKHRU, J
JANUARY 05, 2018
RK/ pkv
W.P.(C) 2828/2013 Page 13 of 13