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2023 Supreme(Del) 443
IN THE HIGH COURT OF DELHI AT NEW DELHI
Amit Bansal, J.
Loreal India Pvt. Ltd. - Petitioner
Versus
Rajesh Kumar Taneja Trading As Innovative Derma Care and Anr. – Respondents
C.O. (COMM.IPD-TM) 497 of 2022
Decided On : 23-03-2023
For the Petitioner:Mr. S.K. Bansal and Mr.Ajay Amitabh Suman, Advocates
For the Respondent:Mr. Pramod Kumar Singh and Ms. Priya Nagpal, Advocates, Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat and Mr.Alexander Mathai Paikaday, Advocates
The court emphasized the importance of considering marks as a whole and the lack of similarity between competing marks in trademark disputes.
Headnote:
Trademark - Cancellation Petition - Trademarks Act - Section 12, Section 11 - The court discussed the erroneous issuance of the Examination Report and Trademark Registration Certificate, the rights of the respondent in case of Registry errors, and the lack of similarity between the competing marks. The court emphasized the importance of considering marks as a whole and the lack of grounds for rectification.
Fact of the Case:
The petitioner sought removal of the trademark 'CLARIWASH' registered in the name of the respondent from the Register of Trademarks, claiming prior use of 'Clari' formative marks and errors in the respondent's registration process.
Finding of the Court:
The court found that the erroneous issuance of the Examination Report and Trademark Registration Certificate did not fault the respondent, emphasized the respondent's rights in case of Registry errors, and concluded that there were no grounds for rectification.
Issues: The issues involved prior use of 'Clari' formative marks, errors in the respondent's registration process, and the similarity between the competing marks.
Ratio Decidendi: The court emphasized the importance of considering marks as a whole, the lack of similarity between the competing marks, and the respondent's rights in case of Registry errors.
Final Decision: The petition was dismissed with no order as to costs.
JUDGMENT :
1. The present cancellation petition has been filed on behalf of the petitioner seeking removal of impugned trademark ‘CLARIWASH’ registered under No.1950938 in Class 03 in the name of the respondent no.1 from the Register of Trademarks.
CASE SET UP BY THE PETITIONER
2. The case set up in the petition is as under:
2.1. The petitioner is the registered proprietor of various trademarks with the word “Clari”, details of which are given in paragraph 4 of the petition. The petitioner is engaged in the business of manufacture and sale of a wide range of hair care, skin care, toiletries and beauty products.
2.2. The “CLARIWASH” mark was adopted in 2010 by the petitioner and has been used along with the other “Clari” formative marks.
2.3. The first of the “Clari” formative marks were adopted by a company by the name of Cheryl’s Cosmeceuticals Pvt. Ltd. [hereinafter “Cheryl’s Cosmeceuticals”] in 2009. The petitioner acquired Cheryl’s Cosmeceuticals in 2013 by way of a Deed of Assignment and Asset Transfer Agreement.
2.4. By virtue of the said Deed of Assignment and Transfer Agreement, the reputation and goodwill related to various “Clari” formative marks stood transferred to the petitioner.
2.5. The petitioner is the prior user of the “Clari” formative marks from the year 2009 on account of the user of his predecessor.
2.6. The respondent no.1 applied for registration of the trademark “CLARIWASH” in Class 03 on 16th April, 2010 showing user from 16th November, 2009. However, the first invoice filed on behalf of the respondent no.1 is dated 10th May, 2010, which is after the registration of the “Clari” formative marks. On the other hand, the registration granted in favour of the petitioner in respect of trademark “CLARI-FI” is of 3rd February, 2010 with user from 1st April, 2009.
2.7. It is further submitted that the respondent no.1 cannot claim the benefit of concurrent user under Section 12 of the Trademarks Act as there was no use by the respondent no.1 at the time of the trademark application. The trademark application was filed on 16th April, 2010 and the earliest invoice filed on behalf of the respondents is of 10th May, 2010.
2.8. The Examination Report dated 3rd January, 2012 issued by the Registrar of Trade Marks wrongly notes the mark of the respondent no.1 as “CHARIWASH” instead of “CLARIWASH”. Based on the aforesaid Examination Report, the Certificate of Registration of Trade Mark was issued in favour of the respondent no.1 for the word mark “CHARIWASH”. However, subsequently, the Certificate was modified by the Registry to “CLARIWASH”.
2.9. The procedure adopted by the Registry in changing the Registration Certificate of word mark from “CHARIWASH” to “CLARIWASH” was an erroneous. Having discovered the error, the Registry should have proceeded for a fresh examination for the mark “CLARIWASH”. Reliance in this regard is placed on the orders of the Intellectual Property Appellate Board (IPAB) in Vans Inc. USA v. Fateh Chand Bhansali and Anr., 2020 SCC OnLine IPAB 44 and Prajapati Constructions Ltd. v. Manoj Ramanand Prajapati and Anr., 2018 SCC OnLine IPAB 313.
CASE SET UP BY THE RESPONDENT
3. The case set up by the respondent no.1 is as under:
3.1. The respondent no.1 has filed a suit for infringement of the registered trademark “CLARIWASH” of the respondent no.1 against the petitioner, which is pending before the District Courts, Tis Hazari.
3.2. Even though the Examination Report was in respect of the mark “CHARIWASH”, the Trademark Journal correctly published the mark “CLARIWASH” and not “CHARIWASH”. In May, 2012, the Trademark Registry erroneously issued Trademark Registration Certificate for the word mark “CHARIWASH”. The respondent no.1 immediately filed an application to rectify the said clerical error and accordingly, the Trademark Registry rectified the error and issued a fresh Trademark Registration Certificate for the correct word mark “CLARIWASH”. Reliance is placed on the judgment of a Coordinate Bench in Epsilon Publ
