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1993 Supreme(Online)(Bom) 21
BOMBAY HIGH COURT
, J
Eagle Potteries Private Ltd. (M/s.) v. Eagle Flask Industries Pvt. Ltd.
Petition No. 14 of 1989
For the Petitioners: Mr. Mehta
For the Respondents: Mr. Daruwalla
A registered trademark can be rectified based on proven non-use or lack of intention to use, with the burden of proof resting on the party claiming non-use.
Headnote:(A) Trade Marks Act - Section 54 - Rectification of a trademark - Petition for expunging the registered trade mark "Eagle and Device of Eagle" from the register or restricting the goods specification - The Court held that no use had been established for period consequent to registration in respect of certain goods - Need for proving use or intention to use the mark by the registered owner was emphasized. (Paras 18-46)
(B) Onus of proof - The burden lies on the party asserting non-user and must be strictly discharged, particularly in matters impacting valuable rights of registered proprietors. (Paras 32-45)
Facts of the case:
The Petitioners claimed rectification of the registered trade mark by asserting no use by the Respondents in respect of certain goods. They argued for the deletion of specific items from the registration specification.
Findings of Court:
The extensive use by the Respondents demonstrated the goods were of the same description, validating their claims.
Issues: Whether the extensive use of the mark by the registered owner constitutes use on goods of the same description.
Ratio Decidendi: The Court determined that the Petitioners did not satisfactorily prove non-use of the registered mark, leaning towards the Respondents' claims of continuous use.
Result: Petition dismissed.
| Table of Content |
|---|
| 1. petitioners seek trademark rectification due to non-use. (Para 1 , 2 , 12 , 18) |
| 2. use of associated trademarks may demonstrate equivalence for registration. (Para 20 , 21 , 34) |
| 3. evaluation of goods of same description considers nature, use, and trade channels. (Para 39 , 44) |
1. By this Petition, the Petitioners seek rectification of the Trade Mark Registry by having Trade Mark "Eagle and Device of Eagle" registered under No. 237136 in Class 21 expunged from the Records of the Register. In the alternative, it is also prayed that the above mentioned Mark be rectified by deleting from the specification of the goods "Glassware, Porcelainware and Earthenware", so that the registration is restricted only to "Thermally insulated containers for food, water and beverages included in class 21".
2. The facts are as follows :
In 1954 one Shivji and Co. which was a partnership firm of the present Directors of the 1st Respondents entered into an Agreement with one Eagle Bottle Manufacturing Co. Pvt. Ltd. of Japan. Pursuant to this Agreement EBMC was incorporated in India. The shareholdings of that Company was owned 1/3rd by Shivji and Co., 1/3rd by Sale Mohamed Padamsee (a partnership firm) and 1/3rd by Eagle Bottle Manufacturing Company.
3. It would appear that on 11th December 1954, an exhibition of pottery and glass was held. In that Sale Mahomed Padamsee and Co. had displayed glassware and enamelware. This is shown by an advertisement in the Times of India which is annexed as Ex. 'A1' to the Affidavit - in - Sur rejoinder dated 2nd April 1992. At this time, Shivji and Co. had also displayed vacuum flasks under the brand name "Eagle".
4. On 9th October 1956 Eagle Vacuum Bottle Manufacturing Co. Pvt. Ltd. (for short hereinafter referred to as EVBMCo.) was incorporated. The Corporate name "Eagle" was shown in a logo having an Eagle perched on a Globe with the word "Eagle" running through the Globe.
5. The pottery and glass exhibition was again held on 17th December 1956. Again Sale Mohamed Padamsee and Co. exhibited its glass and enamelware. This time in the Times of India (of that date) there was an advertisement showing that Eagle vacuum bottles were being manufactured in India.
6. On 12th May 1958 EVBMCo. registered two Trade Marks with the Eagle brand device in Class 21 under No. 185010. On 18th November 1959, the said EVBMCo. also registered Trade Mark No. 193366 again consisting of the device of Eagle with the word "Eagle" in Class II. This was for "ice safes installations in heating and cooking in Class II."
7. On 22nd August 1966 the said EVBMCo. got registered the impugned mark in class 21 for "Thermally insulated containers for food, water and beverages; glassware, porcelianware and earthenware included in class 21". This mark consists of the device of a head of Eagle with the word "Eagle" written underneath it. On the same day, i.e., on 22nd August 1966, the said EVBMCo. also got registered the same mark under No. 23135 in Class II for "Installations for heating, cooking and cooling ice safes".
8. By an Order dated 7th July 1976 passed in Company Application No. 15 of 1974 in Company Petition No. 57 of 1976, the said EVBMCo. was amalgamated with one Topaz Glass Private Limited and the name was changed to Topaz Glass Private Limited.
9. On 17th May 1978 pursuant to an. Order of the Registrar of Company dated 22nd May 1977, the name of Topaz Glass Private Limited was changed to Eagle Flask Pvt. Ltd.
10. The Petitioner Company was incorporated on 18th August 1982. The Petitioners claim that they adopted the Trade Mark "Eagle" and the device of Eagle for bone Chinaware and pottery in August 1982. They claim that they have been using this mark on bone Chinaware and pottery since that date. The sales figures disclosed by the petitioners are as follows :
11. At this stage it is relevant to note that the mark of the Petitioners consist of a "Flying Eagle" with the words "Eagle Potteries" underneath it in a semi - circular fashio
