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IN THE HIGH COURT OF DELHI AT NEW DELHI
Prathiba M. Singh, J.
Roopak`s Pik And Pay – Appellant
Versus
The Registrar of Trademarks – Respondent
C.A.(COMM.IPD-TM) 37 of 2021
Decided On : 12-07-2023
Trade Marks Act - Appeal against rejection of trade mark application - Section 91(1) of the Trade Marks Act, 1999 - [2807794] - The court set aside the impugned order rejecting the trade mark application, as most of the cited marks belonged to the appellant's family and there were no third-party marks cited in the examination report. The appellant's mark was allowed to proceed for advertisement in the Trade Marks Journal.
Fact of the Case:
The appellant filed an appeal against the rejection of their trade mark application under Section 91(1) of the Trade Marks Act, 1999. The rejection was based on the presence of similar marks cited in the Search Report. The appellant's family members were involved in disputes related to the mark 'ROOPAK', and there was a previous court order permitting the appellant to use the mark 'ROOPAK'S PIK N PAY' and 'ROOPAK'S'.
Finding of the Court:
The court found that most of the cited marks belonged to the appellant's family, and there were no third-party marks cited in the examination report. As a result, the impugned order rejecting the trade mark application was set aside, and the appellant's mark was allowed to proceed for advertisement in the Trade Marks Journal.
Issues: Rejection of trade mark application based on cited marks, disputes within the appellant's family regarding the mark 'ROOPAK', and the relevance of previous court orders in permitting the use of the mark 'ROOPAK'S PIK N PAY' and 'ROOPAK'S'.
Ratio Decidendi: The presence of cited marks belonging to the appellant's family and the absence of third-party marks in the examination report influenced the court's decision to set aside the impugned order and allow the appellant's mark to proceed for advertisement.
Final Decision: The appeal was allowed, and the appellant's trade mark application was accepted, with the clarification that the observations in the order would not bind any opposition proceedings, if filed, against the application.
JUDGMENT
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. The present appeal has been filed by the Appellant- Roopak's Pik-N- Pay under Section 91(1) of the Trade Marks Act, 1999 challenging the impugned order dated 30th August, 2019 passed by the Respondent No. 1- the Registrar of Trade Marks (`the Registrar') by which the Appellant's trade mark application No. 2807794 in Class 35 (hereinafter, `the application') has been rejected. The details of the application are as under:
| Number | Date | Mark | Goods in Class 35 |
| 2807794 | 12/09/2014 | ROOPAK'S PIK-N-PAY | Advertising, Business Management, Business administration, office functions, display, exhibition, trading and marketing services in relation to preserved, dried and cooked fruits and vegetables, jellies, jams, fruit sauces, eggs, milk and, milk products, dairy products, dry fruits, popcorns, edible oils, ghee, pickles and fats, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments), spices, ice, atta, maida, sooji, besan, rice, namkeens, biscuits, maize, noodles, pizza, rusk, corn flakes, Mineral water, aerated water, non-alcholic drinks, fruit drinks, fruit juices, syrups and other preparations for making beverages. |
3. The present appeal was originally filed before the Intellectual Property Appellate Board (`IPAB') in 2020, and thereafter was transferred to this Court 2021 upon the abolition of the IPAB.
4. The grounds for rejecting the application are the presence of other similar marks cited by the Respondent No. 1 in the Search Report dated 11th July 2016 with the name ROOPAK and/or ROOPAK STORES. The Search Report is as follows:
[IMG]
5. Ld. Counsel for the Appellant, Mr. Puvesh Buttan submits that all the marks cited in the above Search Report belong to his family comprising of his father-Mr. Satpal Gulati and other family members. Further, there have been disputes between the Appellant and his other family in relation to the mark `ROOPAK' resulting in a suit CS(COMM) 741/2017 titled Roopak Stores Pvt. Ltd. v. Roopaks Pik-N-Pay.
6. In the said suit, an application for interim injunction was filed by `Roopak Stores Pvt. Ltd' in which Mr. Satpal Gulati is a director. This Court vide order dated 25th March, 2019 and 17th July 2019 observed that the Appellant herein shall be permitted to use the mark `ROOPAK'S PIK N PAY' and ROOPAK'S and no other variants. The relevant portion of the said order is set out below:
"8. As noted above, the defendants have placed on record invoices which show user of the label ROOPAK'S which relate back to the year 1994. They have also pointed out to the reply filed before the Trade Mark Registry. The defendants had filed an application for registration of the mark ROOPAK'S PIK N PAY, objections were filed by the plaintiffs. In the reply to the objections, a plea has been taken by the defendants that they had annual sales figures under the mark ROOPAK'S in 1993-94 of Rs. 23.63 lakhs, in 1994-95 Rs.54.42 lakhs and so on. Prima facie, it appears that the defendants have been using the mark ROOPAK'S since 1993-94.
9. In my opinion, at this stage, after a prima facie user of the trade mark ROOPAK'S PIK N PAY and mark ROOPAK'S for 25 years, it is not possible for the court to injunct the defendants from using the trade mark/name ROOPAK'S PIK N PAY or using the label ROOPAK'S.
12. I restrain the defendants to use any variants of the mark ROOPAK'S PIK N PAY or ROOPAK'S. The defendants will also file their annual accounts in court including accounts since the year 1993-94 regarding the use of the mark ROOPAK'S within a period of six weeks. It is also ordered that the trial be expedited. Parties will share the cost of the appointment of the Local Commissioner to expedite the trial."
7. Mr. Harish Vaidyanathan Shankar, ld. CGSC submits that this order may not hav
The court considered the ownership of cited marks and the absence of third-party marks in the examination report as key factors in allowing the appellant's trade mark application.
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The impugned order safeguarded the appellant's interest by keeping the contentions on merits open, despite allowing the TM-16 applications.
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