Registration of a trademark can be revoked if it is found to be deceptively similar to a prior, distinctive mark, prioritizing consumer protection against confusion.

JUDGMENT :

TUSHAR RAO GEDELA, J.

1. The present petition has been filed under Sections 47 , 57 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as ‘the Act’) seeking removal, cancellation and rectification of the entry in the Register of Trade Marks with respect to the impugned trademark AiC ARUN bearing Trade Mark No.1524226 dated 17.01.2007 in Class-7, registered in the name of respondent no.1/M/s. Alka Industrial Corporation which was advertised in the Trade Marks Journal No.1431-0 on 01.01.2010 at Page 1175 of the said Journal.

2. Shorn of unnecessary details, the facts stated by the petitioner are that the petitioner is the prior adopter and registered proprietor of the trademark ARUN which was adopted by the predecessor-in-interest of the petitioner in the year 1962 for sewing machines and parts thereof included in Class-7. Petitioner claims that on 24.04.1996, the said trademark was registered in the petitioner’s name. On that basis, the petitioner claims long, uninterrupted and continuous prior use.

3. On 24.04.1976, the trademark ARUN was registered in Class-7, vide registration no.314271, the area of allotment being the States of Gujarat, Maharashtra, Karnataka and Tamil Nadu. The petitioner asserts that vide registration no.431317B dated 21.12.1984, the trademark ARUN was registered in Class-7 exclusively for the remaining parts of the country. The same trademark ARUN was yet again registered in Class-20 vide registration no.1023094 on 04.07.2001. In the interregnum, on 16.06.1999, vide registration no.A-56/255/99, the label/wrapper/sticker of ARUN written in artistic manner was also registered.

4. Petitioner claims that since adoption of the trademark ARUN, it has been put to use uninterruptedly and continuously by the petitioner. Petitioner claims to have spent huge amounts of money every year on advertisement and promotion of the goods manufactured by the petitioner for popularizing the trademark ARUN.

5. In order to protect and safeguard its interests in the said trademark and also to prevent piracy by unscrupulous manufacturers and traders, the petitioner had issued numerous caution notices in the newspapers so as to make the general public aware and not be misled by misuse of its trademark ARUN. For abundant precaution, the petitioner claims to have issued numerous circulars to various sewing machines manufacturers, dealers and traders’ associations, intimating them about the registration of the trademark ARUN in its favour so as to make even the persons in the same trade aware of the legal status of the said trademark.

6. That apart, the petitioner claims to have taken legal action and filed various suits against individuals, firms and other entities who attempted to infringe and misuse the trademark. Petitioner claims that the suits were successfully decreed in its favour.

7. On the aforesaid basis, petitioner asserts that on account of prior adoption, long, continuous and extensive use coupled with extensive advertisement, enormous sales and strict quality control, the trademark ARUN has not only acquired goodwill and reputation in the market amongst the ultimate purchasers but also has become distinctive to the goods and business of the petitioner.

8. So far as the respondent no.1 is concerned, the petitioner alleges that the respondent no.1 intentionally, deliberately and with a malafide motive to trade upon the goodwill and reputation of the trademark ARUN, adopted the deceptively similar and confusing impugned tra