IMPORTANT POINT
The court ruled that the fraudulent registration of a trademark can be annulled if the prior user establishes confusion and lack of bona fide intention by the registrant.

JUDGMENT :

AMIT BANSAL, J.

1. The present rectification petition has been filed under Sections 47, 57, and 125 of the Trade Marks Act, 1999 (hereinafter, ‘the Act’) seeking removal of the trademark ‘KIRANPARKASH’ bearing trademark registration No. 3587350 in Class 17, from the Register of Trade Marks.

PROCEEDINGS IN THE PETITION

2. Notice in the present petition was issued by the erstwhile Intellectual Property Appellate Board (IPAB) on 5th March, 2020. Despite service, the respondent no. 1 failed to appear before the IPAB. Thereafter, the present petition was received on transfer after the abolition of the IPAB pursuant to the Tribunal Reforms Act, 2021.

3. Court notice was issued to the respondent no. 1 by this Court on 6th July, 2022. Counsel for the respondent no. 1 entered appearance on 9th November, 2022 and four weeks’ time was granted to file reply. However, the counsel for the respondent no. 1 did not appear on the next date of hearing, i.e. 15th March, 2023. Accordingly, a default notice was issued to the respondent no. 1.

4. It was noted in the order dated 17th July, 2023 that the respondent no. 1 has refused service of the default notice and consequently, the respondent no. 1 was proceeded against ex-parte.

5. Neither reply has been filed on behalf of the respondent no. 1, nor has the vakalatnama been filed on behalf of the counsel for the respondent no. 1. It is indicative of the fact that the respondent no. 1 has nothing substantial to put forth on merits, by way of a response to the averments made in the petitions. Hence, the averments made in the petition are deemed to be admitted.

BRIEF FACTS

6. Brief facts relevant for adjudicating the present petition are set out below:

6.1. The petitioner, Prakash Pipes Limited, is a company incorporated under the Companies Act, 2013. The predecessor of the petitioner company, Prakash Industries Limited, was demerged vide order dated 14th March, 2019 passed by the National Company Law Tribunal, Chandigarh in terms of Rule 15 of the Companies (Compromises, Arrangements and Amalgamations) Rules, 2016 and the petitioner herein is the resulting company.

6.2. The predecessor of the petitioner company was established in the year 1980 and started using the trademark ‘PRAKASH’ in respect of its business of trading, retail, wholesale, import, export, marketing, distribution, advertisement related to PVC water storage tanks and containers, PVC pipes and fittings, PVC pipes and tubes and fittings, rubber and PVC. Thereafter, the petitioner company has been introducing new and latest technologies in its manufacturing methods with respect to the aforesaid goods.

6.3. The petitioner through its predecessor-in-interest has several registrations in respect of the trademark ‘PRAKASH’ and its other formative marks under different classes. The earliest registration of the trademark ‘PRAKASH’ dates back to the year 1991. The details of the trademark registrations of the petitioner are given below:



6.4. Additionally, the petitioner company has a copyright over the artistic work in respect of the mark ‘PRAKASH’ which is registered under No. A-55155/98 as per the provisions of the Copyright Act, 1957. The said registration remains valid and subsisting throughout India.

6.5. The petitioner’s products bearing the mark ‘PRAKASH’ had annual sales of Rs. 3,587 crores (approx.) in the year 2018-2019 in India. During the period 1985-2019, the sales of the petitioner’s products bearing the mark ‘PRAKASH’ in India are given in paragraph 11 of the petition. Due to long and continuous usage of the mark ‘PRAKASH’ the petitioner has acquired immense goodwill and reputation.

6.6. The aforementioned mark is also publicized by the petitioner on its website http://www.prakash.com and http://www.prakashplastic.in, providing extensive details of the products and business under the trademark ‘PRAKASH’.

6.7. Furthermore, the petitioner has been issuing public caution notices with respect to the other businesses using similar marks i