Dorco Co Ltd vs Durga Enterprises And Anr on 10 March, 2023

[Cites 11, Cited by 0]

Delhi High Court

Dorco Co Ltd vs Durga Enterprises And Anr on 10 March, 2023

1. The present rectification petition has been filed on behalf of the petitioner seeking cancellation/removal of the trademark DORCO/ bearing registration number 1252224 and registered in the name of respondent no.1 in respect of razors and razor blades in Class 8 under Sections 47, 57 and 125 of the Trademarks Act, 1999 (hereinafter „Act‟).

Signature Not Verified Digitally Signed By:AMIT BANSAL

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                               2023/DHC/001821




Case set up by the petitioner

2. The case set up by the petitioner in the petition is as follows:

2.1 The petitioner, Dorco Co. Ltd., is engaged in the business of manufacturing and exporting grooming products such as shaving razors, blades, kitchen knives and stationery cutters since 1955. The petitioner is Asia's market leader in respect of razors, razor blades, kitchen knives and stationery cutters etc. The petitioner is widely recognized around the world for introducing the world‟s first 7-blade shaving system. The products of the petitioner are sold in 120 countries around the world.

2.2 The petitioner derived the trademark DORCO from the name of its company, Dorco Co. Ltd., and has used the said trademark in different parts of the world since 1964 and in India since 1994. The petitioner is the registered proprietor of the trademark DORCO in India in various classes, since 1994 and obtained the first registration of the aforesaid trademark on 30th November, 1994 in India. Details of the registration of the trademarks of the petitioner are given on page 3 of the petition.

2.3 In 2015, the petitioner partnered with e-commerce platform „Lets Shave‟ to sell its products in India through www.letsshave.com. Since then, its products are available for sale on several e-commerce platforms in India such as, Amazon, Flipkart, Snapdeal, eBay etc. 2.4 The petitioner has also registered domain name www.dorco.in on 13 th December, 2006, which comprises the petitioner‟s trademark DORCO.

Signature Not Verified Digitally Signed By:AMIT BANSAL

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2.5 The petitioner has also been featured in popular trade magazines and newspapers with circulation in India. The petitioner has a strong presence on social networking sites such as Twitter, Instagram and Facebook.

2.6 The respondent no.1 is the partnership firm of one Mr Govind Prasad Bagaria and Ms. Rakhi Sureka. The respondent no.1 got the trademark DORCO/ (hereinafter „impugned trademark‟) registered vide registration no.1252224 in respect of razors and razor blades in class 8 in India. The application for registration of the impugned trademark was filed on 28th November, 2003 claiming use since 1st April, 2001.

2.7 The respondent no.1 has not used the registered trademark upto three months before the date of the present rectification petition, for a continuous period of five years from the date of registration, in relation to the goods for which the registration was granted.

Therefore, it is liable to be removed for „non-use‟ in terms of Section 47(1)(b) of the Act.

2.8 The registration of the impugned trademark is obtained by the respondent no.1 in collusion with the petitioner‟s distributor in Nepal, Mr. Pramod Sureka, with the dishonest and malafide intention to ride on the goodwill of the petitioner. Hence, the same is liable to be rectified under Sec 57 (2) of the Act.

2.9 Vide email dated 27th July, 2016, Mr. Pramod Sureka informed the petitioner that Govind Prasad Bagaria was well aware of the rights and reputation of the petitioner and its trademark DORCO and its Signature Not Verified Digitally Signed By:AMIT BANSAL C.O. (COMM.IPD-TM) 50/2022 Page 315:05:52 Signing Date:14.03.2023 of 7 2023/DHC/001821 formative marks. However, he demanded Rs. 15,00,000/- to assign the impugned trademark back to the petitioner.

2.10 The partners of respondent no.1 have also applied for registration of the trademarks of other international brands such as "Anfanna" and "Tarzan Boy". Hence, the partners of respondent no.1 are habitual trademark squatters and serial infringers.

2.11 Accordingly, the present petition has been filed by the petitioner. Proceedings in the suit

3. Notice in the present petition was issued by the Intellectual Property Appellate Board (IPAB) on 18th January, 2018. However, the respondent no.1 failed to appear before IPAB despite service. Thereafter, the present rectification got transferred to this Court after coming into effect of Tribunals Reforms Act, 2022 and the Court notice was issued to the respondent no.1 by this Court on 25th January, 2022. It is noted in the order dated 6th October, 2022 that the respondent no.1 refused to accept notice and that the same amounted to service.

4. Subsequently, an application for substituted service was filed by the petitioner and the same was allowed and the respondent no.1 was directed to be served by way of publication. The affidavit of service has been filed on behalf of the petitioner and the same is taken on record. Therefore, the respondent no.1 is deemed to have been served. None has appeared on behalf of the respondent no.1, nor any reply/counter-statement has been filed on behalf of the respondent no.1. It is indicative of the fact that the respondent no.1 has nothing substantial to put forth on merits, by way of a response to the averments made in the petition.

Signature Not Verified Digitally Signed By:AMIT BANSAL

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Analysis and Findings

5. I have heard the counsels for the parties and perused the record of the case.

6. In order to determine whether the trademark of the respondent no.1 is identical to the trademark of the petitioner, it would be apposite to refer to the two competing trademarks, as set out below:

Petitoner‟s Trademarks Defendant‟s Trademarks

7. The impugned trademark was applied for registration by the respondent no.1 claiming user since 1st April, 2001. However, upto a date of three months before filing the present rectification petition, a period of five years have elapsed from the date of registration of the impugned trademark, during which there has been no bonafide use of the impugned trademark in relation to the goods for which the registration was granted.

8. In the judgment in Shell Transource Limited v. Shell International Petroleum Company Ltd.¸ 2012 SCC IPAB 29, it was observed by the IPAB that the onus of proving "non-user" is on the person who pleads the same. However, when the applicant pleads "non-user", the respondent must specifically deny it. Therefore, in the absence of a specific denial, it was held that the allegations of "non-user" stood admitted.

9. In the present case, the allegations of "non-user" against the respondent no.1 stand admitted in the absence of a specific denial of the same and the impugned trademark is liable to be removed from the Register Signature Not Verified Digitally Signed By:AMIT BANSAL C.O. (COMM.IPD-TM) 50/2022 Page 515:05:52 Signing Date:14.03.2023 of 7 2023/DHC/001821 of Trade Marks on account of "non-user" as contemplated under Section 47(1)(b) of the Act.

10. From the facts detailed above, it is clear that the petitioner is the proprietor of the impugned trademark. The respondent no.1 cannot claim to be the proprietor of the impugned trademark as there is nothing to show as to how the impugned trademark has been adopted by the respondent no.1. Therefore, the application for registration of the impugned trademark is in contravention of Section 18(1) of the Act. In fact, the registration of the petitioner‟s identical mark in respect of similar goods, was pending in India and was also cited as a conflicting mark in the examination report issued in the application for registration of the impugned trade mark. Therefore, as per Sections 9(1)(a) and 11(1)(a) of the Act, the registration of the impugned trademark could not be granted.

11. The registration of the impugned trademark is also in contravention of Section 11(3)(b) of the Act, as its use would be prevented in India by virtue of the law of copyright, as the petitioner is the original owner of copyright in the impugned trademark, which is also registered as a trademark in its favour in Korea since 2002 and thereafter, in Turkey, China and Ukraine.

12. The grant of registration of the impugned trademark by the respondent no.2 is against the principles of Section 11(3)(a) of the Act, as there is no dispute that the petitioner is the prior user of the impugned trademark since 1994 in India and across the world since 1964. Due to such a long, continuous and extensive use, the impugned trademark is solely associated with the petitioner. Therefore, the registration of the impugned trademark should have been refused by the respondent no.2.

Signature Not Verified Digitally Signed By:AMIT BANSAL

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                              2023/DHC/001821

13. In view of the discussion above, it is clear that the impugned trademark has been adopted by the respondent no.1 dishonestly to trade upon the established goodwill and reputation of the petitioner and to project itself to be associated with the petitioner. The nature of the impugned trademark is such that it will deceive the public and create confusion as regards the source of the goods manufactured and sold under the impugned trademark.

14. Accordingly, the present petition is allowed and the impugned trademark registered under trademark application no.1252224 in the name of the respondent no.1 in Class 8 is removed from the Register of Trade Marks.

15. A copy of the order be sent to the respondents through e-mail. The Registry is directed to supply a copy of the present order to the Trademark Registry, at e-mail - [email protected] for compliance.

AMIT BANSAL, J.

MARCH 10, 2023
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                                                         Signature Not Verified
                                                         Digitally Signed By:AMIT
                                                         BANSAL

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Delhi High Court