Calcutta High Court
Super Smelters Ltd vs Rekha Tayal &Anr on 17 December, 2024
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
OCD-19
IPDATM/4/2024
IN THE HIGH COURT AT CALCUTTA
COMMERCIAL DIVISION
ORIGINAL SIDE
Super Smelters Ltd.
Versus
Rekha Tayal &Anr.
Before:
The Hon'ble Justice RAVI KRISHAN KAPUR
Date: 17thDecember 2024
Appearance:
Mr. Sourojit Dasgupta, Advocate
Mr. Dhruv Chadha, Advocate
Mr. Victor Dutta, Advocate
for the petitioner
The Court: Despite substituted service, the respondents
remain unrepresented even in the second call.
This is an application filed for rectification under section 47
(1)(a) read with section 57(1) and (2) of the Trade Marks Act, 1999.
Briefly, the applicant is a leading manufacturer and
distributor of TMT Bar and Rods primarily used in the metal industry.
Such goods have been classified under Class 6 of the International
Nice Classification.
In or about 1999, the petitioner had coined and adopted the
mark “SUPER SHAKTI” where the word “SUPER” is an essential and
distinctive feature of its product. The petitioner has been extensively,
continuously and uninterruptedly using such marks since 1999. It is
contended that, due to superior quality of its product “SUPER SHAKTI”
has gained immense goodwill and reputation in the market. The
petitioner is also the prior adopter and lawful owner and proprietor of
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the said mark. The petitioner had also contemporaneously appliedfor registration of the mark “SUPER SHAKTI” in various forms and has
been granted registration thereof. The Details of the various
registrations granted in favour of the petitioner in respect of the said
mark “SUPER SHAKTI” are set out hereinbelow:
Application/ Date Class Mark Status
Registration (Graphical representation)
No
Registered
2431526 22.11.2012 6
Registered
3447329 03.07.2017 6
Registered
4412279 14.12.2020 6
Registered
4412280 14.09.2020 6
The impugned mark “SUPER SHAKTI” was filed for
registration on April 24, 2023 and the same was granted on 13 March,
2024. Admittedly, the impugned mark has never been used. It is
alleged that the impugned mark has been registered with the ulterior
and oblique intent of trafficking and taking advantage of the
petitioner’s trademark. It is contended that the impugned mark is
phonetically identical and deceptively similar. There is every likelihood
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of deception and confusion. The impugned mark is in respect of thesimilar goods. In view of the above, the registration granted in favour
of the private respondent is liable to the cancelled. Accordingly, the
petitioner has applied for cancellation of the registration granted in
favour of the impugned mark.
For convenience, the relevant sections of the Trade Marks
Act, 1999 and the Rules framed thereunder are set out hereinbelow:
“47. Removal from register and imposition of
limitations on ground of non-use. – (1) A registered trade
mark may be taken off the register in respect of the goods or
services in respect of which it is registered on application
made in the prescribed manner to the Registrar or the [High
Court] by any person aggrieved on the ground either –
(a) that the trade mark was registered without any bona
fide intention on the part of the applicant for registration
that it should be used in relation to those goods or services
by him or, in a case to which the provisions of section 46
apply, by the company concerned or the registered user, as
the case may be, and that there has, in fact, been no bona
fide use of the trade mark in relation to those goods or
services by any proprietor thereof for the time being up to a
date three months before the date of the applicant; or
57. Power to cancel or vary registration and to rectify
the register. – (1) On application made in the prescribed
manner to the [High Court] or to the Registrar by any person
aggrieved, the [Registrar or the High Court, as the case may
be], may make such order as it may think fit for cancelling
or varying the registration of a trade mark on the ground of
any contravention, or failure to observe a condition entered
on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from
the register of any entry, or by any entry made in the
register without sufficient cause, or any entry wrongly
remaining on the register, or by any error or defect in any
entry in the register, may apply in the prescribed manner to
the [High Court] or to the Registrar, and the [Registrar or the
High Court, as the case may be,] may make such order for
making, expunging or varying the entry as it may think fit.”
“Rule 33. Examination, Objection to acceptance, hearing. –
(1) The Registrar Shall cause the application to be examined as
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per provisions of the Act, wherein a search shall also be
conducted amongst the earlier trade marks, registered or applied
for registration, for the purpose of ascertaining whether there are
on record in respect of the same goods or services or similar
goods or services any trade mark identical with or deceptively
similar to the trade mark applied for. The Registrar may cause
the re-examination of the application including research of earlier
trade marks at any time before the acceptance of the application
but shall not be bound to do so.”
The Examination Report relied on by the Registrar in
granting the registration of the impugned mark does not take into
consideration the fact that the prior mark of the petitioner SUPER
SHAKTI was already on the Register. This is a glaring error and
omission in the grant of the impugned registration in favour of the
respondent no. 1.
The adoption and registration of the impugned mark is
nothing but a deliberate and wilful attempt to ride on the goodwill and
reputation of the petitioner’s mark “SUPER SHAKTI”. The same cannot
by any stretch of imagination be said to be coincidental or bona fide.
The respondent no.1 could not have even contemplated adopting the
impugned mark without being aware of the petitioner’s prior
registration. It is obvious that the respondent no.1 has acted in bad
faith and with dishonest intent in adopting the impugned mark which
is deceptively identical to the petitioner’s mark “SUPER SHAKTI”. The
impugned mark mars the purity of the Register and continuance of the
same is against public interest.
Even a cursory examination of the data base of the respondent
authorities would reveal the existence of the petitioner’s mark. There is
no mention of the petitioner’s mark in the First Examination Report
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relied on by the respondent authorities in granting the
impugned registration and this is fatal. The impugned mark is
phonetically, alphabetically and deceptively similar to that of the
petitioner’s product. The impugned mark is also being used in respect
of identical and similar goods. There is every likelihood of confusion
and deception if the respondent no.1 is permitted to use the impugned
mark. In view of the above, the impugned registration of the mark
“SUPER SHAKTI” bearing Trade Mark Registration No.5909429 in
class 6 in its entirety could not have been allowed by the respondent
no.2.
In such circumstances the registration of the impugned
mark is in material contravention of the Act and the Rules framed
thereunder.
The petitioner has been able to demonstrate a strong prima
facie case on merits. The balance of convenience and irreparable injury
is also in favour of granting prayers as prayed for herein.
In view of the above, there shall be an order in terms of
prayers (a) and (b) of the Notice of Motion. The ad interim order dated
1st October 2024 stands confirmed to the above extent.
With the above directions, IPDATM/4/2024 stands
disposed of.
(RAVI KRISHAN KAPUR, J.)
R. Bose
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