The central legal point established in the judgment is the significance of prior adoption and use of a trade mark, likelihood of confusion in the market, and non-use of impugned marks as grounds for cancellation of registration under the Trade Mark Act, 1999.

JUDGMENT :

AMIT BANSAL, J.

1. The present petitions have been filed seeking cancellation/removal of the following impugned marks registered in Class 7 in the name of the respondent no. 1, from the Register of Trade Marks:

i. under no. 3645519 dated 27th September, 2017

ii. under no. 2524816 dated 3rd May 2013

2. Briefly, the case set up in the petition is that Sh. Ashok Aggarwal, the father and the predecessor-in-interest of the petitioner, had started his business under the name, Vepson Engineers, and was the proprietor of the said firm. After death of Sh. Ashok Aggarwal on 17th September, 2012, Mr. Ankit Aggarwal (petitioner herein) and Mrs. Rita Aggarwal, wife of Sh. Ashok Aggarwal and the mother of the petitioner, jointly continued the said business and constituted the aforesaid firm as a partnership firm by executing a Partnership Deed dated 23rd September, 2012. After death of Mrs. Rita Aggarwal on 24th March, 2015, the petitioner became sole proprietor of the aforesaid firm.

3. The petitioner's firm is engaged in the business of manufacturing and marketing agricultural implements including cultivator shovels and parts and fittings. The mark was adopted by Sh. Ashok Aggarwal in the year 1985 and registered under no. 481168 on 16th November, 1987 in class 7. In support of this, the petitioner has filed sales invoices at page no. 39 to 57 of the petitioner's documents. The aforesaid registration lapsed in the year 2001 as the necessary renewal application was not filed due to non-receipt of the mandatory renewal notice (O-3 notice) from the Trade Mark Registry.

4. The word mark JAI KISAN was registered in the name of the petitioner and Smt. Rita Aggarwal on 14th June, 2013 under no. 2548853 in Class 7 in respect of the similar goods as mentioned above. The registration certificate granted in favour of the petitioner (page no. 17 of the petitioner's documents) records user of the petitioner since 1st April, 1985. After death of Smt. Rita Aggarwal, the petitioner became sole proprietor of the mark JAI KISAN.

5. It is averred that due to long and continuous usage of the mark JAI KISAN, the petitioner has acquired immense goodwill and reputation. The members of trade associate the aforesaid mark exclusively with the petitioner. The annual sales turnover of the petitioner from the years 2012 to 2021 is mentioned in paragraph 11 of the petition. In the year 2020-2021, the annual sales turnover of the petitioner was Rs. 6,46,77,133/-.

6. The respondent no. 1 has claimed user of the impugned marks and since the year 2011 in its application for registration but no documents have been filed on behalf of the respondent no. 1 in this regard. The respondent no. 1 has obtained registration of the impugned marks by concealing material facts and making misrepresentations, which is in contravention of provisions of the Trade Mark Act, 1999 (hereinafter ‘the Act’). A legal notice dated 26th August, 2022 was issued upon respondent no. 1 to forthwith desist the use of the impugned marks. However, no response has been received by the petitioner to the same.

7. The use of the impugned marks in relation to the similar goods is likely to cause confusion in the market and among the members of trade and is bound to cause erosion of the distinctive character of the petitioner's mark JAI KISAN. The impugned marks are neither distinctive, nor capable of distinguishing the goods of the respondent no. 1 from that of the petitioner. Therefore, the mark is liable to be removed in terms of Section 11 (1) and (2) of the Act.

8. The impugned trademark is liable to be removed for ‘non-use’ in terms of Section 47 (1) (a) and (b) of the Act, as upto three months before the date of application, a continuous period of five years from the date of registration has elapsed, during which period there has been no bonafide use of the impugned marks in relation to goods for which the registration was granted.

9. The petitioner is the prior user and owner of the mark JAI KISAN since