Back
2022 Supreme(Del) 2045
IN THE HIGH COURT OF DELHI
Vibhu Bakhru, Amit Mahajan, JJ.
Sanjay Chadha Trading as Eveready Tools Emporium - Appellant
Versus
Union of India - Respondent
LPA 388 of 2022 and CM Nos. 28178 of 2022 & 28183 of 2022
Decided On : 27-10-2022
The central legal point established in the judgment is the protection of well-known trademarks and the consequences of dishonest adoption of trademarks to take unfair advantage of their reputation and goodwill.
Headnote:
Trademark - Well-Known Trademark - Trade Marks Act - Section 2(1)(zg), Section 11(2)(b) - The court discussed the well-known trademark 'EVEREADY' and its extensive use, goodwill, and reputation. It also examined the dishonest adoption of the trademark by the appellant and concluded that the registrations in favor of the appellant were liable to be canceled.
Fact of the Case:
The appellant, a sole proprietor, filed an appeal against the rejection of his petition to impugn the cancellation of the word mark 'EVEREADY' by the Intellectual Property Appellate Board (IPAB). The appellant claimed to have used the trademark 'EVEREADY' for hand tools since 1985, while respondent no.3 claimed significant reputation and goodwill for the same trademark in relation to dry cell batteries, flashlights, and other products.
Finding of the Court:
The court found that the trademark 'EVEREADY' was well-known and had substantial goodwill and reputation. It also found that the appellant and/or the Predecessor had dishonestly adopted the trademark to take unfair advantage of its reputation and goodwill. The court dismissed the appeal and all pending applications.
Issues: The issues included the extensive use, goodwill, and reputation of the trademark 'EVEREADY', the dishonest adoption of the trademark by the appellant, and the cancellation of the registrations in favor of the appellant.
Ratio Decidendi: The court's decision was based on the finding that the trademark 'EVEREADY' was well-known and had substantial goodwill and reputation, and that the appellant and/or the Predecessor had dishonestly adopted the trademark to take unfair advantage of its reputation and goodwill.
Final Decision: The court dismissed the appeal and all pending applications.
JUDGMENT
Vibhu Bakhru, J.
INTRODUCTION
1. The appellant - who carries on business as a sole proprietor under the name M/s Eveready Tools Emporium - has filed the present intra-court appeal, inter alia, impugning a judgement dated 17.02.2022 (hereafter `the impugned judgement') passed by the learned Single Judge, whereby the appellant's petition [being W.P.(C)-IPD No. 12/2021 captioned Sanjay Chadha Trading as Eveready Tools Emporium & Anr. v. Union of India & Ors.], was rejected.
2. The appellant had preferred the aforesaid petition under Articles 226 and 227 of the Constitution of India impugning an order passed by the Intellectual Property Appellate Board (hereafter `IPAB') on 22.09.2020 (hereafter `the IPAB order'), whereby the IPAB ordered that the appellant's trademark registrations being the word mark "EVEREADY" (Trademark Registration no. 439233) and the device mark "
" (Trademark Registration no. 539621) be removed from the Register of Trademarks.
3. The IPAB order was passed pursuant to the rectification/cancellation petitions bearing nos. ORA/97/2009/TM/DEL and ORA/98/2009/TM/DEL, filed by respondent no.3 - Eveready Industries India Limited.
4. The appellant has confined the present appeal to impugn the cancellation of the word mark "EVEREADY" (Registration no. 439233), under Class 8; and, he accepts cancellation of the device mark "" (Trademark Registration. no. 539621)
FACTUAL CONTEXT
5. The appellant states that he is engaged in the business of manufacturing and marketing of hand tools, sold under the trademark "EVEREADY" since the year 1985.
6. The appellant claims that in the year 1978, his mother (respondent no. 4, hereafter referred to as `the Predecessor') commenced business as a sole proprietor, under the name `Everest Tools Industries'.
7. On 19.06.1985, the Predecessor applied for registration of the mark "EVEREADY" under Class 8 by a Trademark Application bearing no. 439233, in relation to screwdrivers and cutting pliers being hand tools. The registration, as sought for by the Predecessor, was granted. Subsequently, on 08.11.1990, the Predecessor applied for registration of the device mark "" under Class 8 by a Trademark Application bearing no. 539621, in relation to hand tools. This too was granted.
8. Respondent no.3 states that it was incorporated on 20.06.1934 and is engaged in the business of manufacturing and trading in, inter alia, dry cell batteries, rechargeable batteries, flashlights, general lighting products and small home appliances. It claims that it is one of the most reputed FMCG companies and one of the pioneers to manufacture dry cell batteries and flashlights in India.
9. Respondent no. 3 states that on 28.10.1942, it applied for registration of the mark "EVEREADY" under Classes 9 and 11. It claims that its trademark "EVEREADY" has gained significant reputation and goodwill amongst the general public and is now a well- known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999 (hereafter `the Trade Marks Act'). Additionally, the trademark "EVEREADY" also forms a prominent part of its corporate name.
10. It is stated that sometime in the year 1994, respondent no.3 (then known as Union Carbide India Limited) applied for registration of the trademark "EVEREADY" under Class 8 by a Trademark Application bearing no. 641191. The Trademark Registry issued Examination Report no. 31312 dated 11.11.1999 citing registration of similar marks in favour of the Predecessor: Trademark Registration no. 439233 (under Class 8 in respect of screwdrivers and cutting pliers) and Trademark Registration no. 539621 (in respect of hand tools).
11. In response to the said report, by a letter dated 25.03.2000 sent by its attorney, respondent no.3 amended its application to exclude screw drivers and cutting pliers. Respondent no. 3 further states that in the month of September, 2008, it was apprised of the trademark adopted by the Predecessor.
12. Thereafter, by an Assignment Deed dated 06.01.2009
