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The Hon’ble High Court of Delhi in the case Adidas AG v Union of India and Anr vide W.P.(C) 3125/2013 set aside the impugned ex parte order by IPAB dated 28th December 2012 and remanded the matter to IPAB for fresh consideration.
BRIEF FACTS OF THE CASE:
In the instant case, Petitioner has trademark “RESPONSE” with respect to footwear and apparels has garnered worldwide goodwill and reputation. Petitioner’s trademark “RESPONSE” is registered in various countries including USA and Germany in 1993 and 1995 respectively. It came to the Petitioner’s notice that the mark Response has been already registered by the Respondent. Thus the Petitioner filed application for rectification of the impugned mark by the Respondent on the ground that the mark had been registered “without any good cause or bonafide intention to use the mark” and thus is liable to be removed under section 47 of the Trade Marks Act, 1999. IPAB by order dated 28th December 2012 dismissed the application stating that the petitioners in this case have not satisfied as to how they are aggrieved person; and there is confusion or deception among the public. In these circumstances, IPAB did not think it fit to remove the trade mark from the register. Thus the application was therefore dismissed. Being aggrieved by the order, the Petitioners filed writ petition challenging the impugned order by IPAB.
ARGUMENTS ON BEHALF OF PETITIONER:
It was argued by the Petitioner by virtue of number of registrations for the mark “RESPONSE” and the long and continuous use of the said mark by the petitioner in the course of its business, the mark “RESPONSE” has attained distinctiveness in relation to footwear and it has come to be associated solely with the petitioner and no one else.
It was further argued on behalf of the petitioner that respondent no.2 had never appeared before the IPAB and even in the present proceedings it has not filed any response. Moreover the respondent No.2 has not even renewed its mark since 2011.
The Hon’ble Court held that the expression “person aggrieved” is a term of wide amplitude and an applicant for registration whose trademark has been objected or refused by reason of prior registration by a third party of the same or similar or identical mark for the same goods or description of the goods or whose application for registration is opposed on the basis of prior registration of the same or similar mark by the registry is a person aggrieved. It was further observed that the finding of IPAB that even when the marks and goods are identical, there is no person aggrieved is contrary to law.
It was also found that though the IPAB has given a finding that there is no evidence of use of the mark “RESPONSE” by the petitioner, yet it has itself held that the use, if any, is post 2005. Consequently, this Court opined that the finding given by the IPAB is contrary to facts of the case. Moreover, the effect of the use post 2005 has not been analyzed. Accordingly, the impugned order dated 28th December, 2012 of the IPAB was set aside and the matter was remanded back to the IPAB for reconsidering the matter in accordance with the law. The matter was accordingly directed to be listed before IPAB for direction on 4th April, 2016.
About the Author: Mr. Abhijeet Deshmukh, Trade Mark Attorney, Khurana & Khurana, Advocates and IP Attorneys and can be reached at: Abhijeet@khuranaandkhurana.com.