Kerala High Court
Kalpaka Builders Private Limited vs Intellectual Property Appellate Board on 11 January, 2024
Author: P Gopinath
Bench: P Gopinath
IN THE HIGH COURT OF KERALA AT ERNAKULAM
PRESENT
THE HONOURABLE MR. JUSTICE GOPINATH P.
THURSDAY, THE 11TH DAY OF JANUARY 2024 / 21ST POUSHA, 1945
WP(C) NO. 26986 OF 2012
PETITIONER:
KALPAKA BUILDERS PRIVATE LIMITED
IST FLOOR, CASSAGRANTE BUILDING,
DESHABHIMANI JUNCTION, KALOOR, KOCHI,
REPRESENTED BY ITS MANAGING DIRECTOR MR.M.V.SUNIT.
BY ADV. SRI.BENOY K.KADAVAN
RESPONDENTS:
1 INTELLECTUAL PROPERTY APPELLATE BOARD
GUNA COMPLEX, ANNEXURE 1, 2ND FLOOR, 443,
ANNASALAI, TEYNAMPET, CHENNAI-600 018.
2 THE REGISTRAR OF TRADEMARKS
TRADEMARK OFFICE, G.S.T.ROAD, GUINDY,
CHENNAI. 600 018.
3 R.V.ABDUL MAJEED
S/O.MUHAMMED PUTHANPURAYIL, KARAKKAD.P.O,
GURUVAYOOR, TRICHUR DISTRICT, KERALA. 680 101.
BY ADVS.
S.MANU, ASG OF INDIA
SRI.N.AJITH - R3
GEETHA P.MENON
P.B.KRISHNAN
P.B.SUBRAMANYAN
THIS WRIT PETITION (CIVIL) HAVING COME UP FOR ADMISSION ON
11.01.2024, THE COURT ON THE SAME DAY DELIVERED THE FOLLOWING:
WP.(C.)NO.26986 OF 2012
2
JUDGMENT
Dated this the 11th day of January, 2024 The petitioner has approached this Court challenging Ext.P6 order of the Intellectual Property Appellate Board, cancelling the trademark registration granted to the petitioner under No.1374072 in class 37 and remanding the matter to the Trademark Registry for considering the application for grant of trademark made by the petitioner, from the stage before acceptance and to dispose of the same in accordance with law.
2. The circumstances which compelled the Appellate Board to take such a view are spelt out in Ext.P6 order. It appears that, the matter reached the Appellate Board at the instance of the 3 rd respondent herein, who was aggrieved by the granting of the word mark 'Kalpaka' to the petitioner. The Board, on examination of records found that the publication, WP.(C.)NO.26986 OF 2012 3 which is a mandatory requirement in terms of the provisions contained in Section 20 of the Trademarks Act, 1999, had been done only in respect of the word mark 'Kalpaka', whereas the trademark granted to the petitioner was a device mark. The learned counsel appearing for the petitioner has extensively referred to the provisions of the Trademarks Act, and to the documents produced before this Court to contend that the 3rd respondent was only objecting to the grant of trademark over the word 'Kalpaka'. It is submitted that the fact that there was a mistake at the hands of the officials of the Trademark Registry in advertising the mark, cannot be seen as prejudicial to the petitioner in any manner, especially when the matter was brought before the Board at the instance of the 3rd respondent, who was objecting to the word 'Kalapaka' and not to the device mark, which forms part of the trademark registration granted to the petitioner.
WP.(C.)NO.26986 OF 2012 4
3. Learned Counsel appearing for the 3rd respondent would, on the other hand contend that, a reading of the order of the Board would suggest that the trademark registration granted to the petitioner had been set aside, on the clear finding that there was a contravention of the provisions regarding publication. It is submitted that the said order does not call for any interference, as the Board has only remitted the matter for fresh consideration to the Trademark Registry, with a direction to the Trademark Registry to continue the said application from the stage of publication.
4. Having heard the learned counsel appearing for the petitioner, the Central Government Standing Counsel for respondents 1 and 2, and the learned Counsel appearing for the 3rd respondent, I am of the view that, the petitioner has not made out any case for grant of relief against Ext.P6 order of the Intellectual Property Appellate Board. A reading of WP.(C.)NO.26986 OF 2012 5 Ext.P6 order of the Board will suggest that on examination of the records, the Board had come to the conclusion that there was a difference in the trademark registration granted to the petitioner and the mark which was published. It is found that, it is clear on a perusal of the documents that while the petitioner was actually granted trademark registration with a device mark, the advertisement carried only the words 'Kalpaka' and did not carry the device mark at all. In such circumstances, I cannot find any fault with the order passed by the Intellectual Property Appellate Board.
The writ petition fails and is accordingly dismissed, especially taking note of the fact that the Appellate Board has only remanded the matter for fresh consideration of the Trademark Registry. Considering the fact that, Ext.P6 order of the Intellectual Property Appellate Board was issued on 18.05.2012, the Trademark Registry shall take further WP.(C.)NO.26986 OF 2012 6 steps as directed by the Board, within a period of six months from the date of receipt of a certified copy of this judgment.
Sd/-
GOPINATH P. JUDGE NB/11-1 WP.(C.)NO.26986 OF 2012 7 APPENDIX OF WP(C) 26986/2012 PETITIONER EXHIBITS EXHIBIT P1 TRUE COPY OF THE CERTIFICATE OF INCORPORATION ISSUED TO THE PETITIONER EXHIBIT P2 TRUE COPY OF CERTIFICATE OF REGISTRATION OF THE TRADEMARK 'KALPAKA' ISSUED BY THE REGISTRAR OF TRADEMARKS, CHENNAI EXHIBIT P3 TRUE COPY OF THE JUDGMENT OF DISTRICT COURT, THRISSUR IN O.S.2/2009 FILED BY THE 3RD RESPONDENT EXHIBIT P4 TRUE COPY OF NOTICE OF OPPOSITION RAISED BY THE PETITIONER AGAINST THE 3RD RESPONDENT'S TRADEMARK APPLICATION NO.1853287 EXHIBIT P5 TRUE COPY OF THE APPLICATION FOR REMOVAL ORA/ 166/09/TM/CH OF THE PETITIONER'S TRADEMARK FROM THE REGISTER FIELD BY THE 3RD RESPONDENT EXHIBIT P6 TRUE COPY OF THE ORDER PASSED BY THE INTELLECTUAL PROPERTY APPELLATE BOARD RESPONDENTS' EXHIBITS: NIL TRUE COPY P.A. TO JUDGE