The main legal point established in the judgment is the requirement for evidence of goodwill and reputation in the Indian market to establish the spillover of transnational reputation for a trade mark.

JUDGMENT

Amit Bansal, J. The present rectification petitions have been filed on behalf of the petitioner company in the year 2018 seeking rectification of the trade mark register by removal of registrations granted in favour of the respondent no.1 in respect of trade mark `ALPHARD. in (i) Class 9 in relation to car radios/stereos, navigation apparatus for vehicles; (ii) Class 12 in relation to automobiles and various car accessories and (iii) Class 27 in relation to automobile carpets, bearing registration no.3093216, 3093218, 3093219 respectively. The aforesaid petitions were originally filed before the erstwhile Intellectual Property Appellate Board (IPAB), however, due to the enactment of the Tribunals Reforms Act, 2021, the petitions have been placed before this Court.

2. Notice in the aforesaid rectification petitions was issued by the IPAB on 8th February, 2019. Counter statements thereto have been filed on behalf of the respondent no.1 and rejoinder has been filed on behalf of the petitioner company.

3. Since all the three petitions raise similar issues, they are being decided by way of a common judgment.

BRIEF FACTS

4. Briefly, the case set up by the petitioner company is as under:

4.1, The petitioner company, incorporated in Japan, is an automotive manufacturer and operates throughout the world. The vehicles of the petitioner company are sold in more than 170 countries and the petitioner company conducts business worldwide with 53 overseas manufacturing companies in 28 countries and regions.

4.2. The petitioner company entered the Indian market in a joint venture with the Kirloskar Group in 1997 known as Toyota Kirloskar Motor Pvt. Ltd. and set up manufacturing facilities in India.

4.3. The petitioner company owns various distinctive and well-known trademarks, one of which includes the trade mark `ALPHARD'. The aforesaid trade mark was adopted by the petitioner company in the year 1986 and a luxury MUV under the said brand was launched in the year 2002.

4.4. Though, the petitioner company's vehicle under the trade mark `ALPHARD' has not yet been formally launched in India, the same has been available in the country for the last many years on account of direct imports by Indian residents. The earliest registration of the petitioner company's mark `ALPHARD. dates back to 1986 and the said trade mark is registered in various jurisdictions, such as Japan, China, Singapore etc.

4.5. The petitioner company has sold more than 8,50,000 units under the trade mark `ALPHARD' since its launch in 2002. The details of sales figures as well as advertising and promotional expenses incurred by the petitioner company from 2002-2017 have been given in the petition.

4.6. The petitioner company's trade mark `ALPHARD' is well-known throughout the world and has acquired a secondary meaning with the people associated with the trade associating the same with the petitioner.

4.7. The petitioner company applied for registration of the trade mark `ALPHARD' on a `proposed to be used basis' on 21st November, 2017 and the same has been objected to by the Registry.

4.8. The respondent no.1 obtained registration of the trade mark `ALPHARD. under Classes 9, 12 and 27 on 5th November, 2015 on a `proposed to be used basis'.

4.9. Adoption of the petitioner company's trade mark by the respondent no.1 in relation to goods in the allied/cognate field has been done in a mala fide manner so as to trade upon the petitioner company's goodwill and reputation.

5. The case of the defendants in the counter statement can be summarized as under:

5.1. Respondent no.1 is the prior user and bona fide adopter of the trade mark `ALPHARD. for goods under Classes 9, 12 and 27 since the year 2015.

5.2. The respondent no.1 coined and adopted the trade mark `ALPHARD. in the year 2015 and since its adoption, the respondent no.1 has been continuously and extensively using the said trade mark.

5.3. The aforesaid trade mark has been used by the respondent no.1 along with its sis