Application For Rectification Of Trade Mark Registry Deed Format

Application For Rectification Of Trade Mark Registry

Application For Rectification Of Trade Mark Registry Deed Format

Matter No. …….. of 1999

In the High Court at Calcutta

Ordinary Original Civil Jurisdiction

In the Matter of Trade and Merchandise Marks Act 1958

And

In the Matter of an Application under Sections 56 and 57 of the said Act for rectification of Register of Trade Marks.

And

In the Matter of Registered Trade Mark No. 567 in Class 1 of AB Co. Ltd.

And

In the Matter of:

XY Co. Ltd. a company registered under the Companies Act 1956 and having its registered office at 5 White Road, Calcutta             

……………… Petitioner

versus

1.  AB Co. Ltd., a company registered under the Companies Act 1956 having its registered office at 3 A.K. Avenue, Mumbai

2. RC Co. Ltd., a company registered under the Companies Act 1956 having its registered office at 4 B.K. Avenue, Calcutta

3. Registrar of Trade Marks having his office at 15/1 Chowringhee Square, Calcutta

  …………… Respondents

To

The Hon’ble Mr. ……………………

Chief Justice and His Companion

Justices of the said Hon’ble Court

The humble petition of the petitioner

above-named most respectfully

Sheweth:

1. Your petitioner is an aggrieved person by reasons of entries made in the Register maintained by respondent No. 3 without sufficient cause as also by an entry wrongfully remaining in the Register.

2. Your petitioner carries on business as a manufacturer of, dealer in and exporter of Electronic goods and Computer articles both hardware and software.

3. The first respondent is the registered proprietor of Trade Mark No. 10 in Class I in respect of Computer and Electronic articles.

4. The second respondent purports to be the licensee and permitted user of the Registered Trade Mark Utility (hereinafter referred to as the mark) which is registered in the name of the first respondent.

5. The third respondent is the Registrar of Trade Marks having his address as mentioned above within the jurisdiction of this Hon’ble Court.

6. Your petitioner in the year 1991 adopted the Trade Mark Unity hereinafter referred to as the petitioner’s mark and the said adoption of the said mark was without any knowledge of the first respondent’s said mark and has since been selling its products with the said mark unity.

7. Your petitioner’s said mark has been used continuously and exclusively in India and outside India since 1991 and has been widely advertised in the newspapers, journals and other publicity media and thereby it has acquired the distinction of being the goods manufactured by your petitioner. Particulars of the newspapers, journals and other media in which the said advertisements appeared and the corresponding expenses incurred during the last several years to popularise the products of your petitioner under the said mark are given in a schedule annexed hereto marked ‘A’. A statement of sales and the turnover of your petitioner’s goods under the said mark are annexed hereto marked ‘B’.

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8. Your petitioner made an application for registration of the said mark in respect of the electronic goods described therein to the Trade Marks Registry at Calcutta, the respondent No. 3. The said application was made on 5th March 1996. The application was classified in Class I and was numbered as 5. The application is pending registration at the Trade Marks Registry, Calcutta. A copy of the said application with connected papers are annexed hereto collectively marked as ‘C’.

9. Your petitioner was surprised to receive a cease and desist notice dated 2nd October 1997 from the Trade Mark lawyer of the first respondent calling upon your petitioner to discontinue use of the Trade Mark unity and to give an undertaking not to use the mark or any deceptively similar mark thereto in future. Your petitioner through its Advocate’s letter dated 20th October 1997 informed the first respondent as also the Trade Mark Lawyer  of the first respondent that the petitioner has been using the trade mark since last six years and that there has been a substantial expenditure in making the petitioner’s mark known to the general public by advertisement and publicity. It was also stated that there was no confusion in mind of the public during the said period during which your petitioner used its mark in the open market. It was further stated that the petitioner was using the said mark honestly and bona fide and that there was no mala fide intention for utilising or trading on the goodwill or reputation, if any, of the respondent Nos. 1 and 2. Your petitioner also specifically denied the other allegations contained in the said notice.

10. Without replying to the said letter of your petitioner, respondent Nos. 1 and 2 filled a suit in the Madras High Court alleging infringement of first respondent’s said purported Trade Mark. The suit has been numbered as 259 of 1997 and the suit is still pending before the said Hon’ble High Court. A copy of the plaint filed in the Hon’ble Madras High Court is annexed hereto marked ‘D’.

11. Your petitioner denies each and every allegation contained in the plaint filed in the said suit at Madras. Your petitioner states that the goods sold by the respondents Nos. 1 and 2 under the first respondent’s said mark were different in look and description from those of the petitioner’s goods. Further your petitioner honestly adopted and has been openly using the said mark unity for the last six years and thereby your petitioner has acquired the right of concurrent registration of the mark unity under s. 12(3) of the Trade and Merchandise Marks Act 1958.

12. The first respondent’s registration of the mark in the records of the Registry is in respect of a variety of goods. Many of such goods have not been marketed or sold or used in the Indian market for the last six years. The first respondent’s said mark is liable to be rectified by expunging or deleting from the specification of the items covered by your petitioner’s said mark unity in accordance with the provisions of s. 16 of the said Act.

13. Your petitioner as stated above is a person aggrieved within the meaning of s. 16 of the Trade and Merchandise Marks Act 1958 inasmuch as your petitioner’s said mark is pending registration at the Trade Marks Registry. The first respondent has caused to be issued cease and desist notice and also filed in the Hon’ble High Court at Madras the said suit wrongly alleging infringement of the first respondent’s said mark utility.

14. Your petitioner states that the first respondent’s said mark was registered without any bona fide intention to use the same in respect of the first respondent’s goods for which the mark was registered. As a matter of fact, there was no bona fide use of the said mark by the first respondent in selling the goods upto a date of one month prior to the making of the present application.

15. Prior to the date of this application for a continuous period of six years there was no bona fide use of the first respondent’s mark in relation to the goods sold by your petitioner under the mark unity.

16. The second respondent the alleged user of the said mark of the first respondent has also not used the said mark for any of the goods sold by the petitioner under the mark unity. The second respondent is a Licensee and not registered proprietor of the said mark of the first respondent. The use of the mark utility as alleged by second respondent cannot be the use of respondent No. 1 within the meaning of s. 48(2) of the said Act. During the last six years after registration of the mark of the first respondent the said mark has not been used for any goods manufactured by the first respondent.

17. In view of the aforesaid your petitioner states that the first respondent obtained registration of the said mark utility without any intention to use it, either by itself or through respondent
No. 2. Your petitioner states that the first respondent’s said mark is, therefore, liable to be and be removed from the Register under s. 18 of the said Act.

18. Your petitioner states that by reasons of the aforesaid the registration of the first respondent’s said mark and the entry made in the Register by respondent No. 3 have been without sufficient cause and the same are unlawfully remaining on the Register. By reasons thereof the first respondent’s name and the said mark should be removed from the Register and the Register should be suitably rectified.

19. The Trade Mark Registry of Calcutta is situated at the address given in the Cause Title where all the records in relation to the first respondent’s Trade Marks are situated and are being maintained and as such this Hon’ble Court has the jurisdiction to entertain, try and determine this petition.

20. Your petitioner is a person aggrieved by the entry made in the Register of Trade Marks without sufficient cause as also by such entry wrongfully remaining in the Register. Your petitioner states that the Register be rectified by cancelling the first respondent’s said mark or deleting from the said mark of first respondent the goods dealt with by your petitioner.

21. Unless orders are made as prayed for herein your petitioner will suffer irreparable loss and injury.

22. This petition is made bona fide and in the interest of justice.

Your petitioner, therefore, humbly prays Your Lordships for the following orders:

(a) Direction on respondent No. 3 to rectify the Register of Trade Marks by expunging or cancelling the first respondent’s registered trade mark utility being No. 10 in Class I from the Register;

(b) Alternatively, directions on respondent No. 3 to amend and/or remove by deletion from the Register of the goods covered by your petitioner’s mark and goods of similar and same description from the specification of the goods included in the entry in respect of the first respondent’s Trade Mark No. 10 in Class I;

(c) Alternatively direction on respondent No. 3 to correct by deletion or striking out the goods covered by the petitioner’s mark unity and the goods of similar description from the entry in respect of the first respondent’s Trade Mark No. 10 in Class I;

(d) Costs of this application be paid by respondents Nos. 1 and 2 to the petitioner;

(e) Further orders be made and directions be given as to this Hon’ble Court may deem fit and proper to afford complete relief to your petitioner.

And your petitioner as in duty bound shall ever pray.

Name and address of the Advocate                                                       Signature of Petitioner

Verification

I, ……………………… son of ……………………… by occupation service, residing at ………………….. do hereby solemnly affirm and say as follows:

I am the Constituted Attorney and a principal officer of the petitioner above-named. I know and I have made myself fully acquainted with the facts and circumstances of the case and am able to depose thereto. I have due authority and competence to sign and verify this petition. I do declare and say that the statements made in paragraphs 1 to 19 of the foregoing petition are true to my knowledge based on information derived from records maintained by the petitioner which I believe to be true and those mentioned in paragraphs 20 and 22 hereinabove are my humble submissions to this Hon’ble Court.

I sign this Verification at Court House in Calcutta on this 7th day of November 1999.

                                                                                                                        Signed

Before me                                                                                             Identified by…………

Commissioner                                                                                       Clerk of Advocate

Application For Rectification Of Trade Mark Registry Deed Format

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