28.04.2010 1. These petitions challenge the separate orders dated 12th January 2005 passed by the Intellectual Property Appellate Board (IPAB) dismissing the Petitioner’s appeals thereby upholding the orders dated 11th March 1999 and 11th October 2000 of the Assistant Registrar of Trade Marks (‘AR’) refusing registration of the trademark JOLEN applied for by the Petitioner. Background Facts

2. The Petitioner Jolen Inc., was formed as a partnership firm in the year 1955 in USA and later incorporated as a company in 1964. The Petitioner states that it is the proprietor of the invented trademark JOLEN coined from the names of the founders of the Petitioner company John & Evelyn. It is stated that the trademark JOLEN forms a predominant feature of the Petitioner’s corporate name and trading style. Its trademark JOLEN has been registered in more than 40 countries all over the world.

3. The Petitioner’s JOLEN crème bleach is sold extensively in various countries including countries in the Middle-East and Gulf from where a number of Indians frequently visit India and bring with them the Petitioner’s JOLEN products for their personal use and as gifts for friends and relatives. It is stated that Petitioner’s JOLEN products have been brought to India also by Indians visiting abroad. The Petitioner’s JOLEN crème bleach are extensively advertised in international magazines having large circulation in India. According to the Petitioner its JOLEN crème bleach is freely available in India in several Customs notified shops and duty free shops in India. Therefore, it is submitted that by virtue of the long, extensive and continuous use in the international market and wide publicity, the Petitioner’s trademark JOLEN enjoys great reputation and goodwill. In the above circumstances, it has been pleaded that the Petitioner’s mark JOLEN has acquired trans-border reputation which spilled over to India.

4. The Petitioner applied for registration of the trademark JOLEN in India under No. 522509 on 9th January 1990 in Class 3. Respondent No. 1 trading as M/s Hindustan Rimmer through its proprietor Shobanlal Jain and its licencee Ashok Kumar trading as M/s Cosmo International filed oppositions DEL-9820 and 9821 respectively. By an order dated 11th March 1999, the AR allowed the oppositions and rejected the Petitioner’s applications. The appeal, CM (M) No. 422 of 1999 filed in this Court by the Petitioner was transferred to the IPAB after the enactment of the Trade Marks Act, 1999 (TM Act, 1999). By the impugned order dated 12th January 2005 in TA/151/2003/TM/DEL [CM (M) 422/1999], the IPAB dismissed the Petitioner’s appeal.

5. The Respondent No. 1 Shobanlal Jain also applied for registration of the trademark JOLEN under No. 555920 in Class 3 on 6th August 1991 (as associated with the registered trademark No. 434499 in Class 3) for a wide range of cosmetic goods. The said application was opposed by the Petitioner under Opposition No. DEL 600. The AR by an order dated 11th October 2000 dismissed the Petitioner’s application and allowed the Respondent’s application for registration. The Petitioner’s appeal filed in this Court, CM (M) No. 104 of 2001 was transferred to the IPAB. By the impugned order dated 12th January 2005, the IPAB dismissed the said appeal.

6. Certain related developments need to be mentioned. It is stated that Respondents 1 and 2 obtained registration of trademark JOLEN in India under No. 434499B in Class 3 in respect of "tooth paste and perfumery". The Respondents applied for the above registration on 25th February 1985 and a registration certificate was issued on 15th November 1991. The Petitioner filed rectification petition being Del-694 on 6th May 1994 for removal of the trademark JOLEN registered in favour of the Respondents under No. 434499B. The said application is stated to be pending before the Registrar. It is submitted by the Petitioner that as long as the said opposition was pending, the present case ought not to