A trade mark recognized as well-known under the Trade Marks Act is protected against concurrent use by others regardless of the class of goods, particularly when evidence of rightful prior use and bona fide intent is lacking.

JUDGMENT

Amit Bansal, J.

[VIA VIDEO CONFERENCING]

1. The present petition filed under Articles 226 and 227 of the Constitution of India impugns the common order dated 22nd September, 2020 passed by the Intellectual Property Appellate Board (hereinafter referred to as the 'IPAB'), whereby the rectification/cancellation petitions bearing ORA/97/2009/TM/DEL and ORA/98/2009/TM/DEL, filed on behalf of the respondent no.3 Eveready Industries India Limited (hereinafter referred to as the 'respondent'), have been allowed, resulting in the removal of the registered trade marks No. 439233 ("EVEREADY" word per se) and No. 539621 ("EVEREADY" logo) or "" in Class-8 from the Register of Trade Marks. Vide the present petition the petitioners are challenging the impugned order passed in ORA/97/2009/TM/DEL to the extent whereby, the petitioners. registered trade mark under No. 439233 ("EVEREADY" word per se) in Class-8 was removed.

2. The facts, which emerge on a reading of the claims of the petitioners and the respondent, are set out below:

2.1 The petitioners are engaged in the business of manufacturing and marketing of hand tools sold under the trade mark/label "EVEREADY". The petitioner no.2 adopted the "EVEREADY" label in 1985 in relation to the said goods and obtained the trade mark No. 439233 ("EVEREADY" word per se) in Class-8 in respect of screw drivers and cutting pliers w.e.f. 19th June, 1985.

2.2 By virtue of the Assignment Deed dated 6th January, 2009, the petitioner no.2 assigned the rights in the trade mark "EVEREADY" in favour of the petitioner no.1 along with goodwill and reputation and by virtue of the said Deed, the petitioner no.1 had become the owner and proprietor of the said trade mark with effect from 1st April, 2005.

2.3 The respondent, on the other hand, is engaged in the business of manufacturing and trading, inter alia, in dry cell batteries, flashlights, compact fluorescent lamps (CFLs), and general service lamps (GSLs). All the products of the respondent are manufactured and sold under its brand name and trade mark "EVEREADY". The respondent is India's largest selling brand of dry cell batteries and flashlights having a share of about 46% and 80% respectively in the organized market. The respondent is the registered proprietor and owner of the trade mark "EVEREADY", which is registered under various classes of the TRADE MARKS ACT , 1999 and the respondent has been using the mark "EVEREADY" since 1942. It is further claimed that the trade mark "EVEREADY" has attained the status of "well known trade mark" within the meaning of Section 2 (1)(zg) of the TRADE MARKS ACT .

2.4 On or about 1st September, 2008, the respondent came to know about the impugned registered trade mark in favour of the petitioner no.2, when the petitioners filed their opposition against the respondent in trade mark proceedings.

2.5 As per the respondent, in the year 1985, the petitioners had fraudulently registered the trade mark "EVEREADY" under No. 439233 and in the year 1990, fraudulently registered the identical artistic logo/trade mark "EVEREADY" or "" under No. 539621.

2.6 In 2009, the respondent filed a civil suit, being CS(OS) 1422/2009 (now CS(COMM) 901/2018) before this Court and in the said suit, an interim order dated 22nd December, 2010 was passed in terms of which the petitioners were restricted from the use of the word trade mark "EVEREADY", except in respect of screw drivers and cutting pliers. Since the petitioners were already restrained by the IPAB from using "EVEREADY" device mark, n