Back
2017 Supreme(Del) 3562
IN THE HIGH COURT OF DELHI AT NEW DELHI
VIBHU BAKHRU, J.
VIVEK KOCHHER & ANR – PETITIONER
VERSUS
M/S KYK CORPORATION LTD & ANR. – RESPONDENTS
W.P.(C) 2496 OF 2012
DECIDED ON : 03-11-2017
For the Petitioner:Mr Satish Kumar and Mr Umesh Mishra, Advocates
For the Respondents:Mr Aayushmaan Gauba, Advocate, Mr Sanjeev Narula, CGSC with Ms Anumita Chandra, Advocate for UOI.
The central legal point established in the judgment is that the registration of a trademark obtained by a false statement and fraud should be rectified.
Headnote:
Trademark - Rectification of Registration - Trademarks Act, 1999 - Section 18, Section 2(1)(zg) - The court discussed the impugned order passed by the Intellectual Property Appellate Board (IPAB) allowing rectification of the Registration with respect to the trademark 'KYK'. The court analyzed the evidence presented by both parties regarding the use of the trademark 'KYK' and concluded that the petitioners were unable to establish the claim of user on the basis of which registration of the impugned marks was granted. The court also referred to previous judgments where it was held that the registration of a trademark obtained by a false statement and fraud should be rectified.
Fact of the Case:
The petitioners challenged an order passed by the IPAB allowing rectification of the Registration with respect to the trademark 'KYK'. The IPAB found that the impugned mark, registered in favor of the petitioners, was identical to the trademark used by KYK Corp in respect of similar goods and the registration of the mark in favor of the petitioners is likely to cause injury to KYK Corp. The petitioners claimed to have been using the trademark since 1996 and 2000, but were unable to establish their use for the period claimed by them.
Finding of the Court:
The court found that the petitioners were unable to establish the claim of user on the basis of which registration of the impugned marks was granted. The court also referred to previous judgments where it was held that the registration of a trademark obtained by a false statement and fraud should be rectified.
Issues: The issues revolved around the evidence of the petitioners' use of the trademark 'KYK' prior to 2005 and the establishment of a trans-border reputation by KYK Corp.
Ratio Decidendi: The court's decision was based on the lack of evidence presented by the petitioners to establish their claim of user for the trademark 'KYK'. The court also referred to previous judgments where it was held that the registration of a trademark obtained by a false statement and fraud should be rectified.
Final Decision: The petition was dismissed, and no order as to costs was made.
VIBHU BAKHRU, J.
1. The petitioners - who claim to be carrying on the business under the name and style of M/s V.K. Automobiles and M/S KYK International respectively - have filed the present petition impugning an order dated 10.02.2012 (hereafter ‘the impugned order’) passed by the Intellectual Property Appellate Board (hereafter 'IPAB'), allowing the applications filed by respondent no.1 (hereafter 'KYK Corp') for rectification of the Registration with respect to the trademark 'KYK' (hereafter 'the impugned mark').
2. The IPAB passed the impugned order as it came to the conclusion that the impugned mark, registered in favour of the petitioners, was identical to the trademark used by KYK Corp in respect of similar goods and the registration of the mark in favour of the petitioners is likely to cause injury to KYK Corp. The IPAB further noted that the registration of the impugned mark was granted in favour of the petitioners in class 12 and class 7 on the basis of a claim that they had been using the said trademark in respect of goods under Class 12 since 1996 and in respect of Class 7 since 2000. However, the petitioners had been unable to establish their use for the period claimed by them and thus, the registration of the impugned mark was liable to be cancelled.
3. The petitioners have challenged the impugned order principally on the ground that the IPAB’s finding that there was no evidence regarding the petitioners' use of the impugned mark prior to 2005 is ex facie erroneous.
4. Briefly stated, the relevant facts necessary to address the controversy are as under:-
4.1 KYK Corp. is a company incorporated under the laws of Japan and its principal office is located at Sakai City, Japan. KYK Corp claims that it was founded by one Mr. Kiyosias Yamamoto and was originally incorporated in the year 1952 under the name Kabusikikaisiya Yamakei Bearing Limited and the trademark KYK was coined by using the first letters of its corporate name. KYK Corp claims that the impugned mark was put to commercial use in 1952 and although the corporate name of KYK Corp underwent a change in 1982 and thereafter in the year 2000 (when it was changed to its current name), it continued to use the trademark KYK in respect of its goods. KYK claims that it has been exporting its goods to several countries since 1953 and has also expanded its market to India.
4.2 It is not disputed that the trademark KYK is registered in the name of KYK Corp in class 7 and/or 12 in Bangladesh, China, Taiwan, Iran, Japan, Korea and Singapore. KYK Corp has also filed applications for registration of the trademark KYK in India - application No. 1460575 in Class 7 and the application no. 1460576 in Class 12 - which were advertised in the Trade Marks Journal on 01.08.2008. KYK Corp also asserts that its mark, KYK, is a well known trademark as defined under Section 2 (1)(zg) of the Trademarks Act, 1999 (hereafter ‘the Act’)
5. Petitioner no.1 and 2 are brothers. Petitioner no.1 claims to be carrying on the business under the name and style of M/s V.K. Automobiles and petitioner no. 2 claims to be carrying on the business under the name and style of M/s KYK International. The petitioners claim that they were earlier constituent partners of a firm M/s KYK Bearing International and were engaged in the business of marketing and selling automobile parts and fittings including bearings, filters, gear and gear parts, v-belts, fan belts, etc. Petitioner no.1 claims that he acquired the impugned trademark registered in class 12 along with its goodwill from the firm M/s KYK Bearing International in terms of an agreement dated 25.08.2000.
6. It is also stated that the impugned mark was first adopted by petitioner no.1 in 1996 for automotive goods; at the material time the petitioners were partners of the firm M/s KYK Bearing International. The petitioners claim that petitioner no.2 has also been using the impugned trademark with the permission of petitioner no.1 and has adopted the sa
