Well-known trade marks enjoy protection against deceptive similarity, and prior users can seek cancellation of later registrations that cause confusion or dilution.

JUDGMENT

Navin Chawla, J. The present rectification petition has been filed by the petitioner seeking the rectification/removal of the trade mark `NIMA' bearing application no. 934534 in Class 14, registered in favour of the respondent no. 1 for `precious metals and their alloys and goods in precious metals of coated therewith (except cutlery, forks and spoons) jewellery, precious stones'. The mark of the respondent no.1 is reproduced herein below:

2. The respondent no.2 is the Registrar of Trade Marks, who has granted said registration in favour of the respondent no.1.

FACTUAL BACKGROUND

3. It is the case of the petitioner that the petitioner's predecessor-in-title coined and adopted the trade marks `NIRMA' and `NIMA' in the years 1969 and 1982, respectively. The trade mark `NIRMA' was coined and adopted from the name of the petitioner-company's founder-promoter's daughter `Nirupama' and the trade mark `NIMA' was coined and adopted by dropping the letter `R' from the trade mark `NIRMA'.

4. The petitioner-company has been using the trade marks `NIRMA' and `NIMA' for various trade segments such as toilet soaps, detergents, liquid blue, scouring bar, shampoo, toothpaste and other chemicals, tea, salt, spices and other food supplements. The business activities of the petitioner also extend to cleaning preparations or chemicals, tea, salt, spices and other food supplements. The petitioner is also involved in business activities such as packing, marketing and distributing a variety of goods such as clocks, flour mills, gold and silver coins and other goods falling under Class 14, match boxes, garments like T-shirts, caps and other products. The petitioner claims that it has also started the expansion of its articles into various other industries such as buildings materials, various chemicals et cetera. The petitioner gives a list of group companies registered and a Trust created with mark `NIRMA' and `NIMA', in paragraph 6 of the present rectification petition.

5. The petitioner has also provided details of the year-wise statement of export sales of goods bearing the mark `NIRMA' up until the filing of the present rectification petition in paragraph 9 of the petition. The petitioner further provides details of year-wise sales and advertisement expenditure of goods bearing the trade marks `NIRMA' and `NIMA', incurred on publicity in different media such as TV and print, the details whereof are provided in paragraph 10 of the petition.

6. The petitioner is the registered proprietor of the trade marks `NIRMA' and `NIMA', in all trade mark classes, including Class 14. The details of the petitioner's trade mark registrations under the provisions of the Trade Marks Act, 1999 (in short, `the Act') in Class 14 are as under:

7. It is the case of the petitioner that the trade marks `NIRMA' and `NIMA' have been used by the petitioner continuously, openly and uninterruptedly in not only Indian but also in international markets for goods and services falling under Classes 1 to 42, with `NIMA' being a registered mark in all classes except Class 41, which at the time of filing the rectification petition before the erstwhile-learned Intellectual Property Appellate Tribunal (in short, `IPAB') was still pending for registration.

8. The petitioner claims that its mark `NI