This article has been written by Mohd Aman Khan Afghani pursuing the Diploma in IPR and Media and entertainment law from LawSikho. This article has been edited by Prashant Baviskar (Associate, Lawsikho) and Ruchika Mohapatra (Associate, Lawsikho).
The Judgment in the case of M/s Eveready Industries India Limited Vs. Mrs. Kamlesh Chadha was delivered by the Intellectual Property Appellate Board (“IPAB”) on 22.09.2020. This Judgment was delivered by the IPAB after two rectification petitioners were filed in IPAB by the Petitioner with respect to the registration of two Trademarks, i.e. word ‘Eveready’ and the Logo ‘EVEREADY’. Many sections of the Trademarks Act, 1999 were analyzed along with their implications on the similar cases as mentioned above.
Facts of the case
The Applicant in the above case was Eveready Industries India Limited, and it is one of the renowned FMCG Companies incorporated in 20.06.1934 and it is engaged in the manufacturing and trading of dry cell batteries, packet tea, flashlights, CFL’s, insect repellants, etc. It is pertinent to mention that the aforesaid company holds the proprietary rights with respect to the Trademark “EVEREADY” and also are the owner of the same brand name and the are using the above brand name and trademark since 28.10.1942 for their business purposes like for selling their goods and products etc.
It very important to consider here that the aforesaid Company which is the Petitioner/Applicant in the above case was using the Trademark “EVEREADY” for a very long time and this Trademark forms an important part of the aforesaid Company as the whole goodwill of the company is being held by the Trademark “EVEREADY” and this Trademark only distinguishes the products and services of the Applicant company from that of others. The aforesaid company was exclusively using the Trademark “EVEREADY” in an uninterrupted manner in India and throughout the whole world. It is also pertinent to mention that the Company has earned a huge goodwill and reputation with the above Trademark and this Trademark has become a “Well known Trademark ” under the Trademark Act, 1999 under Section 2(1)(zg).
The Petition was filed by the Petitioner as in 1985. The respondent somehow got registered an identical trademark in their favor. Again in 1990, an identical or similar Trademark was registered by the Respondent in respect of goods such as hand tools, screwdrivers, cutting pliers, etc.
So a dispute arose as both the Companies claimed that the Trademark ‘EVEREADY’ belongs to them and as a result, a Petition/Application was filed by Eveready Industries before IPAB.
Issue between the parties
The main issue between the Parties was who is the true owner of the Trademark “Eveready”, whether the Petitioner/Applicant or the Respondent?
Contentions of the Petitioner/Applicant
- Petitioner/Applicant contended that the Respondent has got Trademark “Eveready” fraudulently registered in their favour.
- Petitioner/Applicant contended that from the start the Respondent’s were involved in such fraudulent practices of registering such well-known Trademarks.
- Petitioner/Applicant pleaded that the assignment deed which was signed between Mrs. Kamlesh Chadha and Mr. Sanjay Chadha dated 6.01.2009, was not even valid as M/S Everest Tools was not even in existence at that time.
- Petitioner/Applicant contended that the Respondent has filed a false affidavit.
- They contended that the Trademarks of the Respondent are supposed to be cancelled as they have admitted that the “Eveready” is a common trademark.
- The Petitioner/Applicant submitted that in the suit before Delhi High Court in 2009 against Mr. Kamlesh Chaddha titled as Eveready Industries India Ltd Vs. Mr. Sanjay Chaddha & Anr., wherein the respondents were asked to refrain from using the Mark “EVEREADY ” for goods except for pliers and screwdrivers.
Contentions of the Respondents
- Respondents contended that the Trademark “EVEREADY” was their bonafide trademark and they adopted it with honest intention and were using the same until and unless the injunction was granted against them.
- They contended that the above trademark was continuously used by them since 1985.
- Respondents contended that the Petitioner/Applicant are willing to create a monopoly in their favour with respect to the aforesaid Trademark.
- Respondents contended that the Petitioner/Applicant could nowhere prove that they are using the above stated Trademark.
- Respondents contended that the Petitioner/Applicant was aware of the fact that the above Trademark has been used since 2000 and therefore the Petitioners were stopped from registering the same.
- Respondents also contended that the Petitioner/Applicant nowhere proved that the above Trademark is a well known Trademark.
Reasoning of IPAB in the above case
- IPAB has stated that the Petitioner/Applicant were successful in proving that “EVEREADY” is a well known Trademark. IPAB analyzed Section 11 of the Trademarks Act which talks about well-known Trademarks.
- IPAN gave the reasoning that sufficient evidence was submitted by the Petitioner/Applicant which proves that the Respondent was wrong in claiming that they were unaware of the Petitioner’s/Applicant’s Trademark.
- IPAB cited many cases also in favor of the Petitioner/Applicant.
Judgment by IPAB
The IPAB held that the Petitioner/Applicant was the aggrieved party in the above case as the marks were wrongly on the register of the Trademarks and it was directed by the IPAB that both the Trademarks which were registered by the Respondent should be removed from the Register of the Trademarks and in this way, IPAB allowed the Petition/Application which was filed by the Petitioner/Applicant against the Respondent.
From the facts and contentions and the judgment of the above case, it can be observed that the basic allegation was that of a theft of a Trademark and the theft was alleged by the Petitioner/Applicant against the Respondent. It was also observed that the IPAB has very well considered the evidence of both the Parties and it has also taken into consideration the contentions which were levelled by both the parties against each other. So looking into consideration it seemed as if both the parties were right in their own sphere but after seeing the reasoning of the IPAB and the Judgment it was observed that the registration process hold a very important position or it could also be said that the registration is the process which requires continuous observation and monitoring and each and every aspect has to be seen very critically. The contentions were proved by taking into consideration the dates of the registration, the other issue which was in question was that the Trademarks were identical and similar. In the above case, the Trademark of the Respondent was found to be identical to that of the Petitioner’s/Applicant’s mark and therefore Section 33 of the Trademark Act, 1999 was not to be applied so that the Respondent could take its undue advantage. In the case of Daimler Benz Akteigesselschaft and Anr. Vs. Hydo Hindustan (1994) 14 PTC 0 287, it was held that a person who in a deliberate manner, wants to extract the benefit from someone else’s goodwill or reputation in relation to products, cannot avail protection through Trademark.
On the basis of the facts stated before it and the evidence submitted for it, the IPAB has decided and allowed the rectification and ordered for the removal of both the Trademarks of the Respondent from the Trademark register. However, the important point to note is that the Registrar has not fulfilled his duty under Section 25(3) of the Trademark Act, where it is stated that before the renewal of the Trademark the Registrar is shall send the notice to the Registered Proprietor of the Trademark, and the Trademark was renewed in 1992 and 1999, but after that, no notice was sent by the Registrar and as a result, the Registration got lapsed. It has to be considered that Section 25 has not been complied with and it is a fault on the part of the Registrar. So ignoring Section 25 is something that puts a doubt on the reliability of the Judgment which was passed by IPAB.
IPAB has considered each and every aspect of the case and has taken into consideration every minute detail related to the case. It has also considered each and every contention levelled by the parties against each other,analyzed the legal position as well relevant case laws prevailing in our country so that it can pass a well-reasoned judgment in the current matter. But the issue which was there was pertaining to Section 25 which was ignored in the Judgment and because of that, it can be said that it is the missing thread in the Judgment which was passed by the IPAB. So towards the end, the IPAB can be said to have taken into consideration everything which was required to be considered by it but still ignoring or not considering the compliance of Section 25 of the Trademark Act is something which puts a big question mark on the credibility of the Judgment which was passed by the IPAB.
- https://indiankanoon.org/doc/1914967/#:~:text=(3)%20At%20the%20prescribed%20time,may%20be%20 obtained%2C%20and%2C%20if.
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