ORDER
S. Usha, Member (T)
1. The applicant herein filed an application for removal of the trade mark ‘ST.EVES’ registered under the Trade marks Act, 1999 (hereinafter referred to as the Act) under No. 635144 in class 25 in respect of readymade garments, footwears and headgears from the Trade Marks Register. M.P.No. 72/2005 has been filed to stay / injunct the effect and operation of registered trade mark ‘ST.EVES’ during the pendency of the application for rectification.
2. The applicant is a corporation organized and existing under the laws of State of Delaware, United States of America. The applicant corporation was engaged in the business of manufacturing, distributing, sale and trade of cosmetic and toiletry products, hair care products, namely, conditioners, sprays, styling products, mousses and gels, skin care products, namely, skin and hand creams, skin and facial lotions, cleansing creams, emollients, moisturizers, shower gels, wrinkle removing skin care products and beauty masks, soap and cleansing products, namely, soaps, facial scrubs, bath and shower gels, liquid soaps for hands, face and body, deodorants and antiperspirants. The applicants herein had honestly conceived and adopted the trade mark ‘ST. IVES’ along with an artistic work and also using the same as a corporate name since 1978.
3. The applicant’s trade mark ‘ST.IVES’ is duly registered in India under the Act under No. 568913B in class 3 as of 06.03.1992 in respect of cosmetics, namely, hair care and skin care products. The applicant’s trade mark ‘ST.IVES’ has been registered in United States of America. In addition, the applicant’s mark is registered in more than 100 counties of the world. The applicant’s trade mark ‘ST.IVES’ in an artistic manner is registered under the Copyright Act.
4. The applicants have been using the trade mark since 1978 without any interruption and have thus gained reputation and goodwill among the public. By such long use, the applicant’s trade mark has acquired distinctiveness. The applicant’s trade mark is a well known trade mark within the meaning of Section 2(1)(zg) of the Act. The applicants have been promoting their sales through various medias by spending huge amounts towards the same. The net sales and advertisements are
(IN THOUSANDS, EXCEPT PER SHARE DATA)
1998
1999
2000
2001
2002
Advertising and marketing (in millions)
$152.5
$149.6
$162.7
$179.0
$189.1
Net Sales (In Billions)
$1.74
$1.88
$2.14
$2.38
$2.65
From the above, it is seen that there has been a steady increase in the net sales. By goodwill and reputation the applicant’s mark has not only gained popularity in India but also outside India and has thus acquired transborder reputation through travelling trade and industry.
5. The applicants have been protecting their trade marks by initiating legal action against firms which are violating the applicant’s trade mark ‘ST.IVES’. The applicants as registered proprietors have exclusive rights over the trade mark and that no one had the right to use the said mark, identical or similar.
6. The first respondent has adopted the trade mark ‘ST.EVES’ in respect of readymade garments, footwears and headgears. The applicants submitted that though the first respondents have registered their trade mark ‘ST.EVES’ which is phonetically and deceptively similar to that of their trade mark ‘ST.IVES’, the applicants were not able to get the goods bearing the impugned mark. The marks are identical and are similar in every aspect and the goods are of the same nature.
7. The applicant became aware of the impugned registration under No. 635144 in class 25 in respect of readymade garments, footwears and headgears. The applicant being aggrieved by the said registration have taken out an application for removal of the mark from the register on the grounds that:
a) The mark when advertised in the Trade Marks Journal was not noticed by the applicants, otherwise would have opposed the registration before the Registrar of Trade Marks.
b) On enquiry in the market, the applicants were not able to find any of the respondent’s goods and found that they had not started using the impugned mark, though registered.
c) On perusal of the articles and Memorandum of Association of the first respondent, the applicant became aware that the goods were same and similar.
d) The first respondent’s adoption and use of the trade mark is in violation of applicant’s registered trade mark rights and is an unfair trade practice.
e) The first respondent being aware of the applicant’s use and reputation of the trade mark have adopted the similar mark which is illegal.
f) The first respondents have adopted the impugned trade mark with a view to take advantage of the reputation of the applicants and thus to pass off their goods as that of the applicants. There is every possibility of confusion and deception being caused.
g) The adoption of the impugned mark by the first respondent is dishonest and amounts to fraud.
8. The matter was taken up for hearing on 10.08.2007 at the Circuit Bench in New Delhi. Learned Counsel Shri S.K. Bansal assisted by Shri Saurabh Kapoor appeared on behalf of the applicant. None appeared on behalf of the first respondent in spite of receipt of hearing notice.
9. Learned Counsel for the applicant drew our notice to the Trade Mark Journal advertisement of the applicant for registration under No. 635144. He pointed out that the mark was in use only for a period of three months as on the date of application and as such had not acquired distinctiveness. He further submitted that the applicant’s mark ‘ST.IVES’ was registered under No. 568913B in class 3 as early as 1992. He also submitted that the marks, namely ‘ST.EVES’ of the first respondent and ‘ST.IVES’ of the applicant were phonetically and deceptively similar. The first respondent’s mark was registered in class 25. He further contended that the goods, though were in different classes, the trade channels were the same. The counsel submitted that they had been using the trade mark ‘ST.IVES’ since the year 1978 and that their mark has been registered in more than 100 countries of the world. The trade mark along with the artistic work (device) is also registered in the United States of America. The learned Counsel for the applicant drew our attention to the list (Annexure P-5) of the countries where the trade mark ‘ST.IVES’ are registered and renewed upto date.
10. The learned Counsel for the applicant submitted that on perusal of the Memorandum of Association of the first respondent it is clear that they were only in the business of readymade garments. The learned Counsel further stated that they had been very vigilant in taking action against various infringers and have successfully prevented them by an order of the Court. The applicants also brought to our notice all the annual reports, invoices, advertisements running to 300 pages (page 51 to 336) of the type set of documents to prove their sales figures. In particular the learned Counsel referred to document in page 105 to say how their business had flourished and the sales rapidly increased which in the year 1999 was $ 1.98 billion.
11. Learned Counsel for the applicant further submitted that the rival marks namely ‘ST.IVES’ and ‘ST.EVES’ were phonetically similar and that there was every possibility of confusion being caused. He relied on the following judgments in support of his case:
i) 2002 (24) PTC 121 (SC) Mahendra & Mahendra Paper Mills Ltd. v. Mahindra and Mahindra was relied on to say that their mark had acquired worldwide reputation and the use by any person is likely to create an impression of trade connection with the applicants as held in this case.
ii) Daimler Benz Aktiegesellschaft and Anr. v. Hybo Hindustan was relied on in support of his contention that even though goods were different possibility of confusion was very much present and hence should be restrained.
iii) 2005 (31) PTC 635 ST. Ives Laboratories Inc. v. Indo Cosmesi Pvt. Ltd. was relied on to say that they were vigilant and had taken necessary steps to take legal action against infringers and were also successful in their action. The applicants were successful in restraining the defendant in that case who were using a phonetically similar mark namely ‘Mt. Ives’ against ‘ST.IVES’. In this case the defendant after several adjournments to file written statements failed to comply with the same and remained exparte.
12. The learned Counsel for the applicant concluded the arguments by stating that the registration was granted illegally by the Registrar of Trade Marks, and the registration granted was in contravention of the provisions of Section 9 and Section 11 of the Act, as the adoption was dishonest, the provisions of Section 12 of the Act will not be of any benefit to the first respondent and prayed that the mark be removed from the Register of Trade Marks.
13. We have heard the learned Counsel for the applicant and have carefully perused the documents placed before us.
14. At the first instance, we observe that the applicant has not pleaded in his application on what grounds the registered trade mark ‘ST.EVES’ has got to be rectified. Except for a bald statement no goods are available on enquiry and even if available would be only insignificant. We also find that there is no clear pleading as to how the applicant is an aggrieved person within the definition of the Act. In this regard we quote a passage from the Trade and Merchandise Marks Act by Shri P. Narayanan – 4th Edition at page 355, para 21.19 which would be instructive:
21.19 Persons whose interests are affected. An application for rectification can only be made by a person aggrieved. The expression “person aggrieved” has been construed liberally by English Courts while dealing with the corresponding provisions, under the English Acts. Thus persons who are aggrieved persons who are in some way or the other substantially interested in having the mark removed from the Register, or persons who would be substantially damaged if the mark remained. Whenever it can be shown that the applicant is in the same trade as the person who has registered the trade mark and wherever the trade mark, if remaining on the register, would or might limit the legal rights of the applicant, so that by reason of existence of the entry on the register, he could not lawfully do, he has a locus standi to be heard as a person aggrieved. Any trader is in the sense of the statute, “aggrieved whenever the registration of a particular trade mark operates in restraint of what would otherwise have been his legal rights.
15. From the above, we are of the view that the onus was on the applicants to prove that when the impugned mark is allowed to continue on the Register, how it would affect his rights. Here we find that the applicant is not facing any legal threat and also that there is no material evidence placed before us for the same, there is absolutely no cause of action for filing the application for rectification. In such circumstances, the applicant cannot be considered to be an aggrieved person. When that is so, there is absolutely no merits in the present application.
16. As regards the issue of deception and confusion is concerned, the burden lies on the applicant to prove that there will be confusion if the mark is allowed to continue. The applicant herein had not produced any cogent evidence before us for the same. The applicant has in fact filed before us voluminous documents which are only annual reports, advertisements and invoices. On perusal of the documents it is seen that there has been no sale in India. Even going by the well settled principles of the Apex Court that if the sale is established abroad and no exact sale in India, except the advertisement will be sufficient through various magazines circulated in India, the applicant’s documents i.e., the magazines produced do not bear any name or date and hence cannot be given weightage to. It is not clear as to the name of the magazine and where those magazines are widely circulated The Division Bench of the Madras High Court has in 1999 PTC (19) DB 123 Caesar Park Hotels & Resorts Inc. v. Westinn Hospitality Services Ltd. considered whether transborder reputation is an important factor in the matter of protection of marks. The learned Judges have decided the issue of transborder reputation based on actions like advertisements in prominent newspaper, appointment of travel agents etc. The courts have held that there should be some visible activity in acquiring reputation in India. Here, in the instant case we do not find such action on the part of the applicant to say that their reputation is being affected by the first respondent’s mark remaining on the Register.
17. Be that so, even going by the observations of Apex Court in Milment Oftho Industries and Ors. v. Allergan Inc. 2004 (28) PTC 585 (SC) “Multinational companies which has no intention of coming to India or introducing their product in India should not be allowed to trouble an Indian company by not permitting it to sell a product in India, if the Indian company has genuinely adopted the mark and developed the product and is first in the market. The ultimate test should be who is first in the market.”- the applicants have not given the exact date of user to say that they are first in the market. On perusal of the documents, the date of user varies from one application to the other. In fact the user in India is proposed one in the year 1992 and the user in USA is 1978 in the Trade Mark Certificate and 1972 in the Copyright Certificate. The applicant thus do not satisfy the observations of the Apex Court to say that they are first in the market.
18. The applicants have produced some judgments reported and most of them unreported to show that they had been very vigilant in taking action against infringers and have been successful in obtaining favourable orders. Here we find that the applicants have been successful in the absence of respondent i.e., has only obtained exparte orders.
19. Considering the above, we are of the view that the applicants have not made out a prima facie case for the mark to be removed from the Register of Trade Marks. Moreover in an application for rectification to expunge / remove the trade mark from the Register, the onus always lies on the applicant to prove his case by producing cogent evidence. The applicants failed to make out any ground for rectification except making some vague statements which are not sufficient to consider the claim of the applicants.
20. For the foregoing reasons, the application deserves no merit and accordingly the same is dismissed. However, there shall be no order as to costs. As the main application itself has been disposed of, M.P. No. 72/2005 does not survive and becomes infructuous.