Can registered mark be withdrawn from the Register because the rival mark files an appeal in IPAB claiming prior user? Is KENT GRAND trade mark similar to GRAND PLUS trademark in class 11 for water purifiers?

19 Mar Can registered mark be withdrawn from the Register because the rival mark files an appeal in IPAB claiming prior user? Is KENT GRAND trade mark similar to GRAND PLUS trademark in class 11 for water purifiers?

IPAB, Chennai decides that There is no dispute on marks being similar. Both Applicant and Respondent admit that the marks are similar and/or identical to each other. Thus the moot question is who is the prior user of the mark and is the Registration secured by the Respondent No. 1 is valid or not.

Mahesh Gupta, Petitioner V. Dilip Kumar Shukla, Respondent

. The Rectification Application is filed under Section 47, 57 and 125 of Trademark Act, 1999 for Removal of the mark ” ” under Application No. 3252338 in class 11 registered in favor of Respondent No. 1. Along with main Rectification Application the present Miscellaneous Petition vide M.P.No. 155 of 2020 for Stay of operation of Registration of Respondent No. 1 for the above impugned mark pending disposal for the main Rectification Application has been filed.

2. In the main petition, two months’ time is granted to the Respondent No. 1 to file the counter statement with an advance copy to the learned counsel for the applicant who may file the response within one month thereafter and main petition is listed for hearing on 06/04/2021.

THE CASE OF THE APPLICANT

3. The present Miscellaneous Petition has been filed seeking stay of operation of Registration until the Rectification Application finally decided. Learned Counsel for the Applicant Mrs. H. Rajeshwari has pressing the interim orders, we propose to consider the said request. We are of the view that given the present urgency, the said request is accepted. The order is passed by taking prima facie view which shall have no bearing when the matter will be decided on merit after filing of the counter statement by the Respondents and completion of pleadings in the matter.
4. It is a matter of fact that the device mark ” ” (The Impugned mark) is applied for Registration on 06/05/2016 claiming the user since 01/03/2016 and the said mark has been Registered on 15/02/2018.
5. The learned counsel for the Applicant states that the registered trademark which is identical with the Applicant’s originally created and prior adopted and used trademark “KENT GRAND+” in respect of identical goods.
6. The Applicant submitted that the Applicant is the Chairman and Managing Director of M/s. Kent RO Systems Limited., and the said company is into Healthcare Products that has been incorporated in the year 2007. The said company is manufacturing and selling Mineral RO Water Purifier Systems since the year 1999 by itself and through its predecessors. The Applicant submitted that the mark “KENT Grand+” was adopted in priority in the year 2008 by the Applicant for its uniquely shaped water purifiers. The Applicant had also applied for the Registration of the said mark “KENT Grand+” under application No. 3365313 in class 11 claiming user since 2008. The said application of the Application is pending before the Trademark Registry.
7. The Applicant submitted that in and around 1988 the mark KENT has been adopted by the Applicant to sell the Applicant’s invented device for conservation and testing of oil products and sold the said instruments under the name and style KENT OIL METERS through his company S.S. Appliances Private Limited. Thereafter the Applicant founded a partnership firm “KENT RO SYSTEMS” in the year 1999 with a vision to provide pure and healthy water to Indian homes through its products based on modern technologies at an affordable price. To turn his vision into reality, he introduced the revolutionary Reverse Osmosis (RO) based domestic water purifiers for the first time in India in the year 1999.
8. The Applicant submitted that subsequently the Applicant had incorporated the company KENT RO SYSTEMS LIMITED., which took over the business of the partnership firm. The said company was incorporated in the year 2007. The Applicant’s mark has been registered in almost all 45 classes including classes 7,11 and 35. The Applicant stated that the trademark KENT and its variants thereof are owned by the Applicant and licensed to KENT RO SYSTEMS LIMITED.
9. The Applicant submitted that over the years the Applicant and his company has evolved as market leader in providing technologically advanced health care products ranging from water purifiers, Air Purifiers, Vegetable and Fruits purifiers, Water softeners, Home Appliances, Next Generation security devices for vehicles etc.,
10. The Applicant submitted that his company was certified as ISO 9001: 2008 quality company and has been forefront on innovation and creativity and it has grown to be strong organization with offices across India and most importantly millions of satisfied customers. And over the years the Applicant company evolved as market leader by introducing technologically advanced products periodically and thus gained trust of customers and become synonymous with offering purity and durability. The Applicant has continued to use the KENT house mark and also introduced several products such as KENT GRAND+, KENT SUPREME, KENT PEARL, KENT GRAND+ New, etc., all based on the use of the mark KENT. The mark KENT GRAND+ was adopted in and around 2008 and is being used continuously since then.
11. The Applicant submitted that the mark `KENT GRAND+’ after its adoption in 2008 has been used continuously and extensively throughout India and abroad on a very large scale by the Applicant and its company KENT RO systems Ltd and the said mark “KENT GRAND+” has resultantly acquired a reputation of denoting quality, reliability by virtue of adherence to strict quality standards maintained by the Applicant.
12. The Applicant submitted that he and his company have spent a huge amount of money on publicity and advertisements of the goods sold under mark “KENT GRAND+” to popularize the same. It has become popular throughout India and has been regularly advertised on Satellite Television shows including those of Sony, ZEE TV, NDTV INDIA etc. and also through Print media in leading newspapers and journals including Times of India, Economic Times, Hindustan Times and many other regional newspapers, etc.,
13. The Applicant submitted that the annual sales for corresponding period in respect of the products bearing the trademark “KENT GRAND +” is mentioned herein below: Year, Sales in value INR (Approx) 2018-19, 2,70,90,76,500 2017-18, 2,49,90,03,000 2016-17, 2,17,16,37,000 2015-16, 2,39,62,18,500 2014-15, 2,34,16,77,000
14. The Applicant submitted that its goods under the mark “KENT GRAND+” are being widely sold not only in India but also in over 50 countries across the world such as US, UAE, Mexico etc. Consequently, the products bearing the mark `KENT GRAND+’ have come to signify the products originating from the Applicant and his company exclusively and any product bearing mark `KENT GRAND+’ or marks deceptively similar thereto is bound to confuse and deceive the public at large.
15. The Applicant submitted that, the Respondent No. 1 deals with water purifiers. Most of the products of the Respondent No. 1 are sold through online sources and e-commerce platforms. The Respondent No. 1 has fraudulently obtained registration for the word mark “GRAND PLUS” under class 11 vide registration no. 3252338 although the Applicant’s mark “KENT GRAND +” was pending before the Trademark registry. Respondent no. 1 has allegedly been using mark “GRAND PLUS” only from 2016.
16. The Applicant submitted that the impugned mark “GRAND PLUS” is identical to Applicant’s mark “KENT GRAND +”. The usages of two deceptively similar marks for the identical goods will create confusion in the minds of consumers.
17. The Applicant submitted that the Respondent has not only copied the shape of the product but copied the entire mark `GRAND PLUS’ of the Applicant. The usage of the Applicant’s word mark and the mark registered by the Respondent are compared herein below for ready reference: Applicant’s Mark (WORD MARK) KENT GRAND+ TM Application No. 3365313, Respondent’s Mark (DEVICE MARK) Trademark No. 3252338 As used by the Petitioner on their products, As registered by Respondent no.1 ,
18. The Applicant submitted that the impugned registration no. 3252338 ought not to have been granted under Section 11 (1) (a) of the Act as the impugned mark is identical with the Petitioner’s earlier trade mark and covers the same kind of goods i.e. water purifiers, that is to say, not capable of distinguishing the goods of one person from those of another person and is liable to be cancelled on this ground alone.
19. The Applicant submitted that Respondent No. 1 was served through email and speed post and appeared in the matter on 29th December 2020. The Respondent No. 1 has also filed its reply before this Hon’ble Tribunal; The main case of the Respondent is that the Applicant, being an individual, has no rights in the mark KENT GRAND+ and that though the Applicant alleges prior use, no document in this regard has been filed.
20. The Applicant submitted that Respondent No. 1 both grounds are not made out because the Applicant had coined and adopted the mark KENT GRAND+ for the first time in 2008 and the mark was licensed to KENT RO systems Ltd in 2008 and thereafter from time to time and to establish the same the Applicant has produced sufficient number of invoices, sales figures, CA certificate and other materials to demonstrate its use from 2008
21. The Applicant submitted that since none of the grounds taken by the Respondent No. 1 are made out the Applicant prayed that this Hon’ble Board may be pleased to stay the grant of the impugned trademark “GRAND PLUS” vide no. 3252338 till disposal of the Petition; REPLY OF THE RESPONDENT NO.1
22. The Respondent No. 1 appeared through its Counsel Shri. Mohan Vidhani filed its reply to the present Petition and the learned counsel Shri. Mohan Vidhani submitted that Applicant has nowhere mentioned how he is person aggrieved due to the presence of Respondent No. 1 mark in the Register and that there are no pleading in whole application about the grounds available under Section 47 and 57 of the Trademark Act, 1999 and that the Application is drafted as an opposition to the pending application.
23. The Respondent No. 1 submitted that the present petition for cancellation has been filed by Applicant in his individual capacity. Even all documents (denied and disputed) except registration certificates pertain to a company “KENT RO SYSTEMS LTD.” which is a separate legal entity and hence all such documents are irrelevant for the present proceedings. Various registrations claimed by the Applicant have apparently been registered on the basis of claimed user, whereas the Applicant does not carry on any business as such there cannot be any user.
24. The Respondent No. 1 submitted that the Applicant claims to have granted a license in favour of KENT RO SYSTEMS LTD., but there is no copy thereof filed. In fact no valid license exists. The Applicant has never used any of the intellectual property claimed including KENT GRAND+ in his individual capacity, nor has he filed any documents in proof thereof.
25. The Respondent No. 1 submitted that admittedly the Applicant has filed application being 3365313 for registration of alleged trade mark KENT GRAND+ subsequent to the registration of the impugned trade mark in favour of the Respondent no. 1. Hence, any objection of Applicant against the impugned registration under Section 9(1) (a) or 11 of Trade Mark Act is irrelevant.
26. The Respondent No. 1 submitted that the user claimed in application being 3365313 is though 17/10/2008, the same is false as Applicant has never used it in his name for any business under his individual capacity and that the plea of Applicant of being chairman in KENT RO SYSTEMS LTD. is of no relevancy as the said company is a separate legal entity.
27. The Respondent No. 1 submitted that the Applicant is guilty of suppresso veri suggestio falsi. The present petition is based upon the application no. 3365313 which has been opposed by two different entities which are pending. The Applicant is not the owner of the said trade mark pending under no. 3365313 and the same is yet to be established in the said opposition proceedings. The details of the oppositions filed against TM application 3365313 are as follows: Date, Opp. Number, Opponent Name & Address, Status 15/11/2019, 1014918, Puja Shukla,, First Floor,, Flat No. -80,, Type-A,, Pkt-17,, Sector-22,, Rohini,, Delhi., Pending 03/12/2019, 1017872, Kent Fans & Electricals (P) Ltd. Plot No. 15,, S.S.I. Industrial Area,, G.T. Karnal Road,, Delhi-110033., Pending 28. The Respondent No. 1 submitted that the present cancellation petition is suffering from the defect of delay, latches and acquiescence and even beyond limitation. It is submitted that the petitioner was knowing the use of the trade mark GRAND PLUS by the Respondent no. 1 at least since 05/10/2016, when the suit being CS(COMM) No. 1404 of 2016 was filed by the Applicant before Hon’ble Delhi High Court. It is pertinent to mention that an invoice pertaining to respondent no. 3 mentioning the trade mark “GRAND PLUS” was filed by the Applicant himself in the said suit at page 277 along with the list of document filed by the plaintiffs. The copy of the invoice is being filed with reply (See page 19. The present petition is liable to be dismissed on this sole ground. 29. The Respondent No. 1 further submitted that when the Applicant has chosen to mention about some registrations having been wrongly obtained by the Applicant, it was the duty of the Applicant to have disclosed about the fact that there are several oppositions filed against various application of the Applicant and some of the applications have been abandoned by the present Applicant and some are pending including the following
28. The Respondent No. 1 submitted that when the Applicant has chosen to give the details of the various reassertions in his name it was the incumbent duty of the Applicant to have given the details of various oppositions which are pending.
29. The Respondent No. 1 further also provided para-wise reply to the petition and denied all the averments and statements submitted by the Applicant in its petition. The Respondent No. 1 denied that the Applicant is the chairman or managing director of KENT RO SYSTEMS LTD., as claimed or otherwise. It is denied that the Applicant’s company is Healthcare Products Company incorporated in the year 2007 or has been in the business of manufacturing or selling of mineral RO water purifier systems since the year 1999 by itself or through its predecessors as claimed or otherwise. It is denied that the KENT GRAND+ was adopted in priority in the year 2008 by the Applicant for its alleged water purifies as claimed or otherwise. It is denied that the alleged purifiers of Applicant have unique shape as claimed or otherwise. The trade mark application no. 3365313 claimed by the Applicant itself has been opposed by various entities. The Applicant has not disclosed about the same for ulterior motive. The right of the Applicant is yet to be established in the said opposition proceedings. The present application is liable to be dismissed on this sole ground. The user claimed in the claimed application by the Applicant is denied and disputed. It is submitted that the Applicant has never used the same in his individual capacity as he does not have any business in his name. The Applicant is put to challenge to deny the same. Further, the claimed application is subsequent to the impugned registration and hence is of no relevancy in the present proceedings. It is pertinent to mention that the claimed application has not even been properly examined and must in fact be re-examined. The Prior application of the respondent No. 1 is not even cited in the examination report.
30. The Respondent No. 2 denied that it has fraudulently obtained registration for the word mark “GRAND PLUS” under class 11 vide impugned registration as claimed or otherwise. It is pertinent to mention that the claimed application under no. 3365313 of petitioner is subsequent to the date of filing of the application of impugned registration. Further, the user claimed by the petitioner is wrong and denied.
31. The Respondent No. 1 vehemently denied that the impugned trade mark “GRAND PLUS” was allowed by Respondent no. 2 without application of mind, unjust, improper or contrary to the well settled principles of law as claimed or otherwise.
32. The Respondent No. 1 submitted that the popularity claimed for the alleged products of Applicant or his alleged company is denied and disputed. It is denied that the Respondent no. 1 has fraudulently applied for mark GRAND PLUS to form any association between its goods with alleged non existent goods of the petitioner as claimed or otherwise. It is submitted that the Respondent No. 1 is having priority in filing of the impugned registration over the claimed application of the Applicant. Further, user claimed by the Applicant is denied and disputed. It is vehemently denied that there is any malafide on part of the respondent no. 1 in adopting the impugned mark or respondent no. 1 has any intention of gain alleged business of the Applicant as claimed or otherwise. It is submitted that the Applicant has no business of his own as claimed or otherwise. It is denied that the Respondent no. 1 is dealing in any product which is identical to any claimed design of Applicant as claimed or otherwise. The validity of the design registration under no. 219309 claimed by the Applicant is denied and disputed,, besides being irrelevant for the present proceedings.
33. The Respondent No. 1 denied that the Applicant is using the alleged mark since 2008 or any other time period as claimed or otherwise. It is submitted that the Applicant has never used the alleged trade mark as claimed or otherwise. The use claimed for TM application 3365313 is denied and disputed. The claimed application is liable to be dismissed in due course of time. In fact, the same has already been opposed by various third parties. It is submitted that the Respondent no. 1 is using the impugned trade mark since 1/3/2016 including through online e-commerce platforms and the impugned registration is perfectly valid. 36. The Respondent No. 1 submitted that the respondent No. 1 is using the impugned mark since 1/3/2016, whereas the petitioner has never used the alleged mark KENT GRAND+. The goods of the respondent no. 1 is exclusively associated with the respondent no. 1, who is carrying out his business under the impugned trade mark without any confusion or deception since 2016.
34. The Respondent No. 1 denied that any of the Applicant alleged product allegedly sold under the trade mark “KENT GRAND +” has been advertised in any newspaper as claimed or otherwise. It is submitted that none of the advertisement (denied and disputed) filed by the Applicant in the present proceedings pertains to any product of the petitioner in his individual capacity. It is vehemently denied that the impugned mark has gained any popularity among public or recognized by common public or have become customary in the current language or bonafide in the established practices of trade as claimed or otherwise. It is vehemently denied that the impugned mark is liable to be cancelled on any ground claimed by the Applicant as claimed or otherwise.
35. The Respondent No. 1 denied that the Applicant’s is prior user of the alleged trade mark as claimed or otherwise. It is denied that the Respondent no. 1 is the subsequent adopter or user of the impugned mark as claimed or otherwise. It is vehemently denied that the Applicant adopted the claimed mark KENT GRAND + in the year 2008 as claimed or otherwise.
36. The Respondent No. 1 denied that the respondent no. 1 is habitual of infringing alleged intellectual property rights of the Applicant as claimed or otherwise. It is denied that impugned registration ought not to have been granted under Section 11(1) (a) of the Act as claimed or otherwise. It is submitted that the at the time of application of the impugned registration alleged mark was not even applied for registration by the Applicant. It is submitted that the Applicant has never used the alleged mark. Respondent no. 1 is using the impugned trade mark since 2016 without any confusion and deception. The impugned registration is perfectly valid and entitle to remain present on the Register.
37. The Respondent No. 1 denied that the impugned registration ought not to have been granted under Section 9(1)(a) of the Act or is devoid of distinctive character or not capable of distinguishing the goods of the respondent no. 1 from those of another person or is liable to be cancelled as claimed or otherwise. Respondent no. 1 is using the impugned trade mark since 2016 without any confusion and deception. The impugned registration is perfectly valid and entitle to remain present on the Register. It is pertinent to mention that the Applicant is claiming to have filed alleged mark KENT GRAND+ for registration and hence it does not lie in the mouth of petitioner to challenge the impugned registration under Section 9(1) (a) of the Trade Marks Act.
38. The Respondent No. 1 denied that respondent no. 1 is using any infringing trade mark or design as claimed or otherwise. It is further denied that any of the business activities of respondent no. 1 is contrary to the provisions of Trade Marks Act or Design Act as claimed or otherwise. It is vehemently denied that the alleged trade mark KENT GRAND+ is well known or any loss or injury will be caused to the Applicant on account of use of the impugned trade mark as claimed or otherwise.
39. The Respondent No. 1 denied that the existence of the impugned registration is blocking the Trade Marks Register or causing confusion amongst the general public as claimed or otherwise. It is vehemently denied that respondent no. 1 will take any undue advantage of impugned registration to allegedly piggy back upon the alleged reputation or goodwill of Applicant as claimed or otherwise. It is submitted that the Applicant has never used the alleged trade mark and hence cannot claim any reputation or goodwill in relation to the same. It is vehemently denied that the customers will be confused in any manner on account of the use of the impugned mark by the respondent no. 1 or assume any relation between goods of the respondent no. 1 with Applicant as claimed or otherwise.
40. The Respondent No. 1 denied that any balance of convenience is in favour of the Applicant as claimed or otherwise. On the contrary balance of convenience lies in favour of the respondent no. 1. It is submitted that great harm will be caused to the respondent no. 1 who is honest and bonafide adopter of the impugned mark and user thereof since 2016 if ad interim relief as prayed in the present petition is granted in favour of the Applicant. It is submitted that the no prejudice or harm will be caused to the Applicant, if the relief as prayed for in the present petition is refused in against the Applicant and in favour of respondent no. 1. The present application is liable to be refused with costs. It is denied that the present application is filed in bonafide or in the interest of justice as claimed or otherwise.
41. The Respondent No. 1 thus stated that the present application is liable to be dismissed with costs against the Applicant and in favour of respondent no. 1.

FINDINGS OF THIS BOARD

45. We have gone through the submissions of the both the counsels and material placed on the record. It is admitted position that the Applicant is prior adopted and using the mark KENT GRAND+ as per the material placed on record; however the contention of the Respondent No. 1 is that the said adoption and usage is not by the Applicant herein but his Company which is distinct legal entity and cannot be associated with the Applicant herein.
46. The Applicant had filed additional documents exhibiting the License agreement provided by the Applicant to the Company and thereby all usage of the mark of the company is directly attributed to the Applicant.
47. There is no dispute on marks being similar/dissimilar both Applicant and Respondent admit that the marks are similar and/or identical to each other. Thus the moot question is who is the prior user of the mark and is the Registration secured by the Respondent No. 1 is valid or not.
48. The Applicant claimed the usage of the mark since 2008, however the Respondent disputed such usage as it is used by the Applicant Company and not by Applicant himself. The production of the license agreement by the Applicant mutes the said argument of the Respondent No. 1. The Respondent No. 1 claimed usage of the mark and co-existing since at least 2016 and since there were no Registration/Applications of the Applicant pending on the Register at the time of Registration of the mark by the Respondent No. 1 there is no flaw in granting Registration by the Respondent No. 2. However the language used in Section 11 of the Trademark Act, 1999, is “Earlier Trademark” and not “Earlier Registered Trademark” and thus the argument of the Respondent No. 1 that only registered marks or marks pending on the Register need to compare cannot be sustained. Section 9 of the Trademark Act, 1999 also states that if the mark is unable to distinguish with the earlier marks it cannot be proceed to Registration. Thus the earlier mark as used by the Applicant can be compared with the mark obtained Registration by the Respondent No. 1 for the purpose of ascertaining confusion and distinctiveness.
49. The Respondent No. 1 averments related to pendency of Civil Suit bearing No. C.S. (COMM) No. 1404 of 2016 filed by the Applicant herein and that is being adjudicated upon before the Hon’ble High Court of Delhi, wherein the Trademark GRAND PLUS is a subject matter of the proceedings is concerned the Apex Court in its various decisions held that it is a settled law that the issues relating to and connected with the validity of registration has to be dealt with by the Tribunal and not by the civil court and hence the same will be dealt by this Board.
50. It is admitted position that the Applicant had prior adopted the mark for his products and had invested huge amounts in sales and promotion of the same both in India and international along with endorsement of celebrities. Since both the marks are similar/identical due to extensive presence of the Applicant in national and international arena, it is likely that confusion would arise if any similar marks are adopted and used by others for their products.
51. This Board is not concerned about the opposition proceedings between the Applicant and third parties before the Respondent No. 2 which can be decided by the Respondent no.2 independently without the influence of the present order. This Board further is not dwelling into the injunction of usage of the mark by either party which is ceased with Hon’ble Delhi High Court.
52. The limited adjudication that this Board handling is the validity of the Registration of the Respondent No. 1. In view of the submissions and arguments advanced by the parties it is admitted position by both the parties that the Applicant has prior adopted and used the mark, both the marks are similar, the goods are similar/identical to each other.
53. At present, we are of the opinion that the Applicant has made out a strong prima facie case of granting the relief prayed for and thus until the Rectification Application is finally decided the operation of the registration under Application No. 3252338 in class 11 Registered under Certificate No. 1782970 in the name of Respondent No. 1 shall remain stayed.
54. At this stage, we have arrived to this conclusion only as prima facie view. Once the pleadings are filed, this Board will deal the matter accordingly on merits on such completion of pleading of the parties and shall not take any of present observations into account while dealing with the main Rectification Application. There shall be no orders as to the costs.