Delhi High Court
Nirma Limited vs Purnima Gupta And Anr on 28 September, 2022
Author: Navin Chawla
Bench: Navin Chawla
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 15.09.2022
Date of decision: 28.09.2022
+ C.O. (COMM.IPD-TM) 292/2022
NIRMA LIMITED ..... Petitioner
Through: Mr.Jatin Trivedi, Mr.Anay Amin
& Mr.Bhav Arora, Advs.
versus
PURNIMA GUPTA AND ANR ..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
1. The present rectification petition has been filed by the petitioner
seeking the rectification/removal of the trade mark 'NIMA' bearing
application no. 934534 in Class 14, registered in favour of the respondent
no. 1 for „precious metals and their alloys and goods in precious metals
of coated therewith (except cutlery, forks and spoons) jewellery, precious
stones‟. The mark of the respondent no.1 is reproduced herein below:
2. The respondent no.2 is the Registrar of Trade Marks, who has
granted said registration in favour of the respondent no.1.
Signature Not Verified
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FACTUAL BACKGROUND
3. It is the case of the petitioner that the petitioner's predecessor-in-
title coined and adopted the trade marks 'NIRMA' and 'NIMA' in the
years 1969 and 1982, respectively. The trade mark 'NIRMA' was coined
and adopted from the name of the petitioner-company's founder-
promoter's daughter 'Nirupama‟ and the trade mark 'NIMA' was coined
and adopted by dropping the letter 'R' from the trade mark 'NIRMA'.
4. The petitioner-company has been using the trade marks 'NIRMA'
and 'NIMA' for various trade segments such as toilet soaps, detergents,
liquid blue, scouring bar, shampoo, toothpaste and other chemicals, tea,
salt, spices and other food supplements. The business activities of the
petitioner also extend to cleaning preparations or chemicals, tea, salt,
spices and other food supplements. The petitioner is also involved in
business activities such as packing, marketing and distributing a variety
of goods such as clocks, flour mills, gold and silver coins and other goods
falling under Class 14, match boxes, garments like T-shirts, caps and
other products. The petitioner claims that it has also started the expansion
of its articles into various other industries such as buildings materials,
various chemicals et cetera. The petitioner gives a list of group
companies registered and a Trust created with mark 'NIRMA' and
'NIMA', in paragraph 6 of the present rectification petition.
5. The petitioner has also provided details of the year-wise statement
of export sales of goods bearing the mark 'NIRMA' up until the filing of
the present rectification petition in paragraph 9 of the petition. The
petitioner further provides details of year-wise sales and advertisement
expenditure of goods bearing the trade marks 'NIRMA' and 'NIMA',
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incurred on publicity in different media such as TV and print, the details
whereof are provided in paragraph 10 of the petition.
6. The petitioner is the registered proprietor of the trade marks
'NIRMA' and 'NIMA', in all trade mark classes, including Class 14.
The details of the petitioner's trade mark registrations under the
provisions of the Trade Marks Act, 1999 (in short, 'the Act') in Class 14
are as under:
Sr. Trademark No. Trademark Status Date of
No. Application
1. 823336 NIMA Registered 15/10/1998
2. 946625 NIMA Registered 09/08/2000
3. 422859 NIRMA Registered 05/06/1984
4. 713466 NIRMA Registered 13/06/1996
5. 713467 NIRMA Registered 13/06/1996
6. 946624 NIRMA Registered 09/08/2000
7. It is the case of the petitioner that the trade marks 'NIRMA' and
'NIMA' have been used by the petitioner continuously, openly and
uninterruptedly in not only Indian but also in international markets for
goods and services falling under Classes 1 to 42, with 'NIMA' being a
registered mark in all classes except Class 41, which at the time of filing
the rectification petition before the erstwhile-learned Intellectual Property
Appellate Tribunal (in short, 'IPAB') was still pending for registration.
8. The petitioner claims that its mark 'NIRMA' is registered in a
hundred countries, while the 'NIMA' is registered in ninety-six countries
are registered, including but not limited to Australia, Canada, Denmark,
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France, Germany, Hong Kong, Italy, Japan, Pakistan, Russia, Saudi
Arabia, Singapore, Thailand, the United Kingdom and the United States
of America.
9. The petitioner, in the present rectification petition, states that the
mark 'NIMA' has been registered as an associated mark of the trade
mark 'NIRMA'.
10. The petitioner also provides details of various legal proceedings
initiated by them across Indian as also international fora, whereby the
rights of the petitioner in the marks 'NIRMA and 'NIMA' have been
recognised and also upheld, thereby restraining various entities from
misusing and/or infringing the trade mark 'NIRMA and 'NIMA' for
goods not falling in the same class or category.
11. The learned counsel for the petitioner submits that petitioner's
trade mark 'NIRMA' has been declared to be a „well-known trade mark‟
under Section 2(1)(zg) of the Act, by virtue of being listed at Item Nos.
33 and 34 of the 'List of Well-Known Trade Marks‟ maintained by the
learned Registrar of Trade Marks.
12. The petitioner submits that they came to know of the respondent
no.1 being granted registration for their trade mark 'NIMA' vide
application no. 934534 in Class 14. In the said application, which was
published in the Trade Marks Journal dated 14.11.2003, the respondent
no.1 claimed user of the mark 'NIMA' since 01.06.2000. Aggrieved of
such action, the present rectification petition was filed.
COUNTER STATEMENT OF THE RESPONDENT:
13. In the counter-statement, the respondent no.1 claimed user of the
mark 'NIMA' since 01.06.2000 in Class 14, for „precious metals and
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their alloys and goods in precious metals or coated therewith (except
cutlery, forks and spoons), jewellery and precious stones‟ and states that
by its continuous user, the same has become sufficiently distinctive to the
trade.
COURT PROCEEDINGS IN THE RECTIFICATION PETITIONER
14. Post the abolition of the learned IPAB and upon the promulgation
of the Tribunals Reforms (Rationalization and Conditions of Service)
Ordinance, 2021, the present rectification petition was listed before the
learned Joint Registrar (Judicial) of this Court on 09.03.2022, when
notices were directed to be issued to the parties.
15. On 18.04.2022, the learned Joint Registrar (Judicial) observed that
the respondents had been served; however, none had appeared for the
respondents. The same was the position noted in the order of the learned
Joint Registrar (Judicial) on 22.07.2022.
16. On 24.08.2022, when the matter came up before this Court, the
respondents were proceeded ex-parte as none had been appearing for the
respondents. The matter was subsequently listed for hearing on
15.09.2022.
SUBMISSIONS OF THE LEARNED COUNSEL FOR THE PETITIONER
17. The learned counsel for the petitioner submits that by virtue of the
petitioner's mark 'NIRMA' being declared „well-known‟, the registration
of the respondent no.1's trade mark, being deceptively similar thereto,
deserves to be cancelled.
18. The learned counsel for the petitioner, while placing reliance on
the counter-statement filed by the respondent no.1 before the erstwhile-
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learned IPAB, has drawn this Court's attention to the sales invoices
produced by the respondent no.1 in support of the coining and adoption
of her trade mark 'NIMA'. The first invoice produced is dated
19.04.2005 and onwards. The learned counsel for the petitioner submits
that on the respondent no.1's own evidence, the respondent no.1
commenced the use of an identical trade mark in the year 2005, and its
user claim of the year 2000 in its trade mark application no. 934534 is
false, concocted and not proved.
19. The learned counsel for the petitioner submits that going by the
fact that the respondent no.1 adopted the trade mark 'NIMA' in the year
2005, and the petitioner adopted the same in the year 1982, it can be
concluded that the respondent is the subsequent adopter of the trade mark
'NIMA' by at least twenty-two years. Under such circumstances, he
reiterates that it is only just and proper to expunge the respondent no.1's
trade mark from the Trade Marks Journal.
20. Placing reliance on the judgment of this Court in Shantaben
Karsanbhai Patel & Ors. v. S.C. Jain & Anr., 2001 PTC 427 (Del), the
learned counsel for the petitioner submits that the petitioner has acquired
great reputation in its mark 'NIRMA' and therefore, the respondent no.
1's adoption of the mark 'NIRMA' in the matter is not bona fide. He
submits that in Bhavesh Mohanlal Amin v. Nirma Chemicals Works
Ltd., 2005(3) PTC 31 Guj, the High Court of Gujarat, relying upon the
fact that the plaintiff's mark 'NIRMA' was registered in various classes,
has restrained the defendant in the matter therein from using the trade
mark 'NIMA' with respect to ghar ghanti.
Signature Not Verified
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21. Placing reliance on the judgments of this Court in Piruz
Khambatta & Anr. v. Harshvardhan Modi & Ors., C.S. (OS) 1719 of
2004, and in Bloomberg Finance LLP v. Prafull Saklecha & Ors., 2013
(56) PTC 243 (Del.), he submits that the respondent no.1 cannot claim
any protection of its mark on the ground that it is used for different
goods.
22. The learned counsel for the petitioner further places reliance on the
judgment of this Court in FDC Limited v. Docsuggest Healthcare
Services Pvt. Ltd. & Anr., 2017 (69) PTC 218 (Del.) to submit that the
mark of the petitioner and the respondent no. 1 are phonetically similar
and therefore, the mark of the respondent no. 1 is liable to the expunged
from the Register of Trade Marks.
ANALYSIS AND FINDINGS
23. I have considered the submissions made by the learned counsel for
the petitioner.
24. The mark of the petitioner 'NIMA' is identical to that of the
respondent no.1. Though registered as a device mark, the word 'NIMA'
is the only and pre-dominant part of the mark of the respondent no. 1,
excepting that it is in a stylized version.
25. The mark 'NIMA' of the respondent no.1 is also deceptively
similar to the petitioner's mark 'NIRMA', the same being phonetically
similar.
26. The mark 'NIRMA' of the petitioner has also been declared to be
a „well-known trade mark‟ under Section 2(1)(zg) of the Act, by virtue of
being listed at Item Nos. 33 and 34 of the 'List of Well-Known Trade
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Marks‟ maintained by the learned Registrar of Trade Marks. The
petitioner is also a prior adopter and user of the mark 'NIMA' and
'NIRMA' as compared to the respondent no.1.
27. Section 2(1)(zg) of the Act defines a „well-known trade mark‟ as
follows:
"(zg) "well-known trade mark", in relation to any
goods or services, means a mark which has
become so to the substantial segment of the public
which uses such goods or receives such services
that the use of such mark in relation to other
goods or services would be likely to be taken as
indicating a connection in the course of trade or
rendering of services between those goods or
services and a person using the mark in relation
to the first-mentioned goods or services."
28. Section 11(2) of the Act provides that a trade mark which is similar
to an earlier „well-known trade mark‟ in India and use whereof without
due cause would take unfair advantage or be detrimental to the distinctive
character or refuse to the earlier mark, shall not be registered. Section
11(2) of the Act is reproduced herein under:
"(2) A trade mark which--
(a) is identical with or similar to an earlier trade
mark; and
(b) is to be registered for goods or services which
are not similar to those for which the earlier trade
mark is registered in the name of a different
proprietor, shall not be registered, if or to the
extent, the earlier trade mark is a well-known
trade mark in India and the use of the later mark
without due cause would take unfair advantage of
or be detrimental to the distinctive character or
repute of the earlier trade mark."
29. This Court in Tata Sons Ltd. v. Manoj Dodia & Ors., 2011 SCC
OnLine Del 1520 has held that a „well-known trade mark‟ is a mark
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which is widely known to the relevant general public and enjoys a
comparatively high reputation amongst them. It further held that when a
person uses another person's 'well-known trade mark', he tries to take
advantage of the goodwill that such a 'well-known trade mark' enjoys.
Such an act constitutes as unfair competition. It also causes dilution of a
'well-known trade mark' as it loses its ability to be unique and
distinctively identified and distinguish as one source and consequent
change in perception which reduces the market value or selling power of
the product bearing the well-known mark.
30. The petitioner is the prior, uninterrupted user as also prior
registration holder of the marks 'NIRMA' and 'NIMA'. There is an
element of deceptive similarity that exists between the registered marks
of the petitioner and the respondent no.1. The petitioner has been able to
establish its goodwill and reputation in its marks.
31. The registration of the mark 'NIMA' in favour of the respondent
no.1 is not only likely to cause deception in the mind of unwary
consumer of its association with the petitioner but would also hamper any
future plan of the petitioner to expand its business to other goods,
especially the goods being manufactured or marketed by the respondent
no.1. It will also lead to dilution of the mark of the petitioner. The same,
therefore, cannot be allowed to the registered and the registration is liable
to be cancelled.
RELIEF
32. In view of the above findings of this Court, the present rectification
petition is allowed and the mark of the respondent no.1, that is, 'NIMA'
is removed from the Register of Trade Marks.
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
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33. The respondent no.2 is directed to carry out the mandate of this
judgment and expunge the mark of the respondent no. 1, from the
Register of Trade Marks.
NAVIN CHAWLA, J.
SEPTEMBER 28, 2022/AB Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:28.09.2022C.O. (COMM.IPD-TM) 292/2022 Page 10 of 10 04:19:58