IMPORTANT POINT
The impugned mark can be removed from the register for non-use under Section 47 of the Trade Marks Act, and a 'person aggrieved' has the standing to seek such removal.

JUDGMENT

1. This petition under Section 47 of the Trade Marks Act, 1999 (`the Act') seeks removal of respondent no.1's trademark "AL-WALIMAH" registered as trademark no. 523217 dated 22nd January, 1990 in Class 30 (`the impugned mark').

2. The matter was initially filed before the Intellectual Property Appellate Board (`IPAB') in 2017 and was subsequently transferred to this Court upon abolition of IPAB in 2021. Notice was issued to respondent no.1 but there was no appearance and respondent no.1 was proceeded ex parte by order of this Court dated 1st September, 2023. While the matter was pending before the Court, petitioner was successful in two of its trademark registration applications (petitioner had filed a total of five trademark applications) and the mark "AL-WALIMAH" was registered in its favour in respect of trademark nos. 896370 and 1271981 for marks and respectively for goods in Class 30, namely, rice.

Submissions on behalf of Petitioner

3. Petitioner's counsel has essentially adverted to grounds under Section 47 of the Act in respect of non-use of the impugned mark by respondent no.1. Respondent no.1 filed an application for registration of the mark "AL-WALIMAH" in Class 30 claiming user since 1st April, 1975. Since no opposition was filed post publication, the impugned mark was registered in favour of respondent no.1 on 13th November, 1995.

4. Petitioner, however, claims that the said mark was neither used by respondent no.1 prior to filing of application nor any time thereafter. For ease of reference, the relevant extract from Section 47 of the Act, on the basis of which this petition is asserted, is reproduced below:

"47. Removal from register and imposition of limitations on ground of non-use.-(1) A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the Registrar or the [High Court] by any person aggrieved on the ground either-

(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him or, in a case to which the provisions of Section 46 apply, by the company concerned or the registered user, as the case may be, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application; or

(b) that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being:"

(emphasis added)

5. Further reliance is placed on Section 2(2)(c) of the Act for context of the phrase `use of a trademark' which provision is extracted below:

"(2) In this Act, unless the context otherwise requires, any reference-

...

(c) to the use of a mark,-

(i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods;

(ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services;"

6. Reliance was also placed on the decision of the Hon'ble Supreme Court in Corn Products Refined Company v. Shangrila Food Products Ltd., (1959) SCC OnLine SC 11, in particular on para 16, where the Court observed the following:

"16. ...Now of course the presence of a mark in the register does not prove its user all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register