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IN THE HIGH COURT OF DELHI AT NEW DELHI
Amit Bansal, J.
DORCO Co. Ltd. – Petitioner
Versus
Durga Enterprises And Anr - Respondents
C.O. (COMM.IPD-TM) 50 of 2022
Decided On : 10-03-2023
Trademark - Rectification Petition - Sections 47, 57 and 125 of the Trademarks Act, 1999 - Summary of Acts and Sections: The court discussed the provisions of Sections 47(1)(b), 57(2), 18(1), 9(1)(a), 11(1)(a), 11(3)(b), and 11(3)(a) of the Trademarks Act, 1999. The court's decision was influenced by the interpretation of 'non-use' under Section 47(1)(b), the principles of prior user and conflicting marks under Sections 9(1)(a) and 11(1)(a), and the impact of copyright law under Section 11(3)(b). The court also considered the established goodwill and reputation of the petitioner under Section 11(3)(a).
Fact of the Case:
The petitioner, Dorco Co. Ltd., sought cancellation/removal of the trademark DORCO registered in the name of respondent no.1. The petitioner alleged non-use of the trademark by the respondent, collusion with the petitioner's distributor, and habitual trademark squatting by the respondent.
Finding of the Court:
The court found that the impugned trademark was liable to be removed for non-use, in contravention of Sections 47(1)(b) and 18(1) of the Act. The court also held that the registration of the impugned trademark was in violation of Sections 9(1)(a), 11(1)(a), 11(3)(b), and 11(3)(a) of the Act. Consequently, the court allowed the petition and removed the impugned trademark from the Register of Trade Marks.
Issues: Non-use of trademark, collusion, trademark squatting, contravention of trademark registration provisions.
Ratio Decidendi: The impugned trademark was removed due to non-use, contravention of trademark registration provisions, and dishonest adoption to trade upon the established goodwill and reputation of the petitioner.
Final Decision: The court allowed the petition and removed the impugned trademark from the Register of Trade Marks.
JUDGMENT :
AMIT BANSAL, J.
1. The present rectification petition has been filed on behalf of the petitioner seeking cancellation/removal of the trademark DORCO/
bearing registration number 1252224 and registered in the name of respondent no.1 in respect of razors and razor blades in Class 8 under Sections 47, 57 and 125 of the Trademarks Act, 1999 (hereinafter ‘Act’).
Case set up by the petitioner
2. The case set up by the petitioner in the petition is as follows:
2.1 The petitioner, Dorco Co. Ltd., is engaged in the business of manufacturing and exporting grooming products such as shaving razors, blades, kitchen knives and stationery cutters since 1955. The petitioner is Asia's market leader in respect of razors, razor blades, kitchen knives and stationery cutters etc. The petitioner is widely recognized around the world for introducing the world’s first 7-blade shaving system. The products of the petitioner are sold in 120 countries around the world.
2.2 The petitioner derived the trademark DORCO from the name of its company, Dorco Co. Ltd., and has used the said trademark in different parts of the world since 1964 and in India since 1994. The petitioner is the registered proprietor of the trademark DORCO in India in various classes, since 1994 and obtained the first registration of the aforesaid trademark on 30th November, 1994 in India. Details of the registration of the trademarks of the petitioner are given on page 3 of the petition.
2.3 In 2015, the petitioner partnered with e-commerce platform ‘Lets Shave’ to sell its products in India through www.letsshave.com. Since then, its products are available for sale on several e-commerce platforms in India such as, Amazon, Flipkart, Snapdeal, eBay etc.
2.4 The petitioner has also registered domain name www.dorco.in on 13th December, 2006, which comprises the petitioner’s trademark DORCO.
2.5 The petitioner has also been featured in popular trade magazines and newspapers with circulation in India. The petitioner has a strong presence on social networking sites such as Twitter, Instagram and Facebook.
2.6 The respondent no.1 is the partnership firm of one Mr Govind Prasad Bagaria and Ms. Rakhi Sureka. The respondent no.1 got the trademark DORCO/ (hereinafter ‘impugned trademark’) registered vide registration no.1252224 in respect of razors and razor blades in class 8 in India. The application for registration of the impugned trademark was filed on 28th November, 2003 claiming use since 1st April, 2001.
2.7 The respondent no.1 has not used the registered trademark upto three months before the date of the present rectification petition, for a continuous period of five years from the date of registration, in relation to the goods for which the registration was granted. Therefore, it is liable to be removed for ‘non-use’ in terms of Section 47(1)(b) of the Act.
2.8 The registration of the impugned trademark is obtained by the respondent no.1 in collusion with the petitioner’s distributor in Nepal, Mr. Pramod Sureka, with the dishonest and malafide intention to ride on the goodwill of the petitioner. Hence, the same is liable to be rectified under Sec 57 (2) of the Act.
2.9 Vide email dated 27th July, 2016, Mr. Pramod Sureka informed the petitioner that Govind Prasad Bagaria was well aware of the rights and reputation of the petitioner and its trademark DORCO and its formative marks. However, he demanded Rs. 15,00,000/- to assign the impugned trademark back to the petitioner.
2.10 The partners of respondent no.1 have also applied for registration of the trademarks of other international brands such as “Anfanna” and “Tarzan Boy”. Hence, the partners of respondent no.1 are habitual trademark squatters and serial infringers.
2.11 Accordingly, the present petition has been filed by the petitioner.
Proceedings in the suit
3. Notice in the present petition was issued by the Intellectual Property Appel
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The central legal point established in the judgment is the application and interpretation of various provisions of the Trademarks Act, 1999, including 'non-use', prior user, conflicting marks, copyri....
The central legal point established in the judgment is the application and interpretation of various provisions of the Trademarks Act, 1999 in determining the similarity of trademarks, dishonest adop....
The principle of acquiescence under Section 33 of the Trade Marks Act bars a prior user from claiming rights after allowing a similar mark's use for over five years, especially when the prior mark's ....
Prior use and established reputation of a trademark can lead to cancellation of later registrations that may cause consumer confusion.
A registered trade mark can be removed for non-use if it has not been used for a continuous period of at least five years by the proprietor, affirming the legal concept of 'person aggrieved.'
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