The main legal point established in the judgment is the application of Section 47 and Section 57 of the Trade Marks Act, 1999 to establish non-use, bad faith registration, and habitual squatting of well-known marks by the Respondent.

JUDGMENT

Prathiba M. Singh, J. This hearing has been done through hybrid mode.

Background and Facts

2. This present petition has been received on transfer from the Intellectual Property Appellate Board (IPAB), upon the enactment of the Tribunals Reforms Act, 2021. The Petitioner-M/s Russell Corp Australia Pty Ltd. seeks cancellation of the registered trademark of the Respondent - Ashok Mahajan trading as M/s Deal International, Jalandhar and also removal of the said mark from the Register of Trade Marks. The said prayers have been filed in accordance with Section 47 and Section 57 of the Trade Marks Act, 1999 (hereinafter `the Act'). The details of the trademark which is impugned in the present petition is as under:

3. The Petitioner which is a part of the Russell Brands, LLC Group (formerly known as Russell Corporation) is a leader in the sporting goods industry, apparel and uniforms being manufactured and sold for various sporting activities at national and international levels as also household sporting goods. The Petitioner and other members of the Russel Brands Group sell athletic uniforms, apparel, athletic footwear, sporting goods and athletic equipment in several countries of the world since the year 1902. The brands used by the Petitioners and other members of the Russel Brands Group are SPALDING, RUSSELL ATHLETIC, JERZEES, AAI, HUFFY SPORTS, DUDLEY and SHERRIN.

4. As per the petition, the brand name SHERRIN was adopted in 1879 by Mr. Thomas William Sherrin who opened a factory in Australia and established the company, namely, T.W. Sherrin Pty Ltd. The Company designed and manufactured specially shaped footballs for use in Australian Football. The said special shape was thereafter accepted by the Australian Football League and went on to become the standard shape and size for football in Australia. The SHERRIN business has changed hands over the years and has now been acquired by Russell Brands, LLC in 2003.

5. The Petitioner continues to make footballs for the Australian league and in fact sources footballs from Jalandhar, India and various other locations. The Plaintiff has filed various applications as also obtained registration for the mark `SHERRIN' internationally.

6. As per the Petitioner, sometime in 2016, the Plaintiff is stated to have become aware of the Respondent No. 1-M/s Deal International Pvt. Ltd. which had filed an application for the mark `SHERRIN' bearing application no. 2654471 in Class 35. The said mark was opposed by the Petitioner by filing a notice of opposition dated 23rd March, 2016. In those proceedings, the Petitioner realised that the Respondent also had a registered trademark bearing no. 1534670 in Class 28. Subsequently, the Respondent No.1 has also opposed the trademarks of the Petitioner. The present petition has thus been filed seeking variation of the register and cancellation\rectification of the Respondent No. 1's registered trademark `SHERRIN'.

Submissions

7. Ld. counsel for the Petitioner - Mr. Prashant Gupta submits that the Petitioner seeks cancellation on two grounds. Firstly, on non-use under Section 47(1)(a) of the Act and bad faith registration under Section 57 of the Act and secondly on the ground that the Respondent No. 1 is a habitual squatter of well-known marks. It is his submission that the mark has itself been fully copied especially, when it is derived from surname of the founder of the Petitioner. It is also averred that the style of writing of the impugned mark being identical to that of the Petitioner shows that the mark has been registered in bad faith. It is also not distinctive of the Respondent's product. In support of his assertion that the Respondent No.1 is a habitual squatter of well-known marks, ld. Counsel for the Petitioner cites the examples of the same are KOOKABURRA, Buffalo