Registered trademarks can be removed for non-use exceeding five years, reinforcing the burden of proof on the registered proprietor to demonstrate genuine usage.

ORDER :

N. SENTHILKUMAR, J.

This Petition has been filed to pass an order to allow the rectification application and to remove the Trade Mark Number 2222788 of October 20, 2011 for the mark “PREMIO” in class 11 from the Register.

2.The case of the Petitioner is as follows:

2.1.The Petitioner, a publicly listed company incorporated under the Indian Companies Act, 2013, operates from its registered office in Mumbai and its regional office in New Delhi. This petition is filed through its authorized representative, Mr. Keshav Sharma, Manager (Legal), who has been empowered by a Power of Attorney deed dated December 18, 2018 to sign, file, verify, and pursue this rectification petition.

2.2.The Petitioner is involved in the manufacturing, marketing and distribution of consumer electrical products including fans, lighting fixtures, home appliances, pumps etc., The Petitioner also exports these products worldwide and their goods are known for high quality and are sold under a house brand “CROMPTON”. In the year 2015, pursuant to a judgment of the Bombay High Court, the Petitioner’s predecessor company viz., Crompton Greaves Limited (CGL) was demerged into two companies, one of which is the Petitioner viz., Crompton Greaves Consumer Electricals Ltd. The Petitioner had made huge investment in promoting its goods and services to ensure strong consumer recognition. In the year 2020, the Petitioner planned to launch fans under the brand name “PREMION"and it has filed a trademark application for the mark PREMION and the same is still pending. However, during January 2021, the Petitioner came to know about the trademark “PREMIO,” owned by the 1^st Respondent, which was cited in the examination report given in respect of the Petitioner’s application.

2.3.Though the 1^st Respondent obtained registration for the mark PREMIO in the year 2013 and claiming usage from 2011, the Petitioner found that the 1^st Respondent has not sold any goods under this mark and there is no commercial use of the mark PREMIO. An all India survey conducted by the Petitioner confirmed that no PREMIO brand products are available in the market.

2.4.The PREMIO mark was registered without bonafide intention and it has not been used for more than five years. Since the 1^st Respondent’s unused mark is now obstructing the Petitioner’s PREMION mark, the Petitioner is eligible as a “person aggrieved” under the Act to file the present application.

3.The case of the 1^st Respondent is as follows:

3.1.The rectification application is not maintainable as the Petitioner adopted the mark “PREMION” in bad faith. According to the 1^st Respondent, though the Petitioner was fully aware that the 1^st Respondent already owns the registered trademark “PREMIO” (No. 2222788), the petitioner proceeded to adopt and use a deceptively similar mark for the same kind of goods with a malafide intention.

3.2.When the 1^st Respondent adopted the mark PREMIO, the Petitioner has knowingly selected a confusingly similar mark, violating the Respondent’s rights. The Petitioner is not a “person aggrieved” under the Trade Marks Act. If at all the Petitioner wanted to use the Trademark PREMION, they should have taken appropriate measures to cancel the Trademark of the 1^st Respondent and thereafter use the said Trademark. The Petitioner had no right to use the st Trademark PREMION as a fait accompli against the 1 Respondent to cancel its registration. The Petitioner has acted in bad faith and has invaded the 1^st Respondent's right born out of Intellectual exercise and is trying to take advantage of the 1^st Respondent’s trademark by adopting an iden