The Hindu Business Line : Non-use of trademark can lead to its removal

A BARODA-based food products manufacturing company's trademark was removed from the Register of Trade Marks after it was found that the firm was a `non-user' of the mark as per the law.

The Intellectual Property Appellate Board, which had a sitting at Ahmedabad, held that the firm could not establish the bona fide use of the impugned mark `PRIYA' for more than five years and one month prior to the date of filing of a rectification petition. Hence, the said mark was liable to be removed.The Appellate Board, consisting of Mr Justice S. Jagadeesan, Chairman, and Dr Raghbir Singh, Vice-Chairman, which disposed of a petition filed by Ushodaya Enterprises Ltd, Hyderabad, seeking rectification of the Register by removing the trade mark `PRIYA' noted that the Madras High Court, while hearing the petitioner, observed that against the prima facie evidence produced by the petitioner about the scale of their exports and the extent of their advertisement, the first respondent (Modern Food Products, Baroda) did not choose to produce any material evidencing the use of the impugned mark.

The petitioner filed an application for removal of the first respondent's trade mark registered in 1983, 1990 and 1992 for squash, juices, syrup & beverage, pickles & chutneys, canned fruits & vegetables, tomato ketchup & cornflakes. The petitioner said they were doing business since 1974 and adopted the trademark `PRIYA' for their goods from 1979-80. They were doing good business in India and abroad and turnover during 1997-98 was Rs 1,881.66 lakh.

The petitioner had raised several grounds in the petitions, but the counsel confined to Section 46 (1) of the Trade & Merchandise Marks Act, 1958 which stipulated that non-use of registered mark for five years and one month prior to filing of rectification proceedings would entail removal of the mark from the Register.

The first respondent denied all the averments of the petitioner and contended that the petition for rectification was barred by limitation and also by acquiescence. Further, the prayers in the petition were vague and not clear as to what was the rectification to be made. Rule 54 of the Rules about filing evidence was not followed, and the petition was barred by limitation since the opposition filed by the petitioner at the time of registration of trademarks was rejected.

The Board held that no material was available in the trade about use of the impugned marks, and as such they were not used.

It was for the first respondent to produce evidence in support of their contention. The absence of denial of averment in the petitions itself was more than enough for disposal of the petitions.

The Board said that the petitioner had established non-user of impugned marks by the first respondent for the statutory period, which consequently made the marks liable to be removed.

The petitions were allowed and Registrar of Trade Marks, Ahmedabad was directed to rectify the Register of Trade Marks by removing trademark of first respondent `PRIYA'.

Article E-Mail :: Comment :: Syndication :: Printer Friendly Page