Madras High Court
M/S. General Mills Inc vs Intellectual Property Appellate Board on 26 August, 2014
Author: M. Sathyanarayanan
Bench: Sanjay Kishan Kaul, M.Sathyanarayanan
In the High Court of Judicature at Madras
Dated: 26.08.2014
Coram:
The Honourable Mr. SANJAY KISHAN KAUL, Chief Justice
and
The Honourable Mr. Justice M.SATHYANARAYANAN
Writ Petition No. 24262 of 2012
M/s. General Mills Inc.
A Corporation organized under the
Laws of the State of Delaware, USA
Numbr on, General Mills Boulevard
Minnesota 55426, USA. .. Petitioner
vs.
1. Intellectual Property Appellate Board
Guna Complex, Annexe 1
2nd Floor, 443, Anna Salai
Teynampet, Chennai 600 018.
2. Deputy Registrar of Trade Marks
Trade Marks Registry
IP Building, GST Road
Guindy, Chennai 600 032. .. Respondents
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PRAYER: Writ Petition filed under Article 226 of the Constitution of India praying to issue a Writ of Certiorarified Mandamus to call for the records of the first respondent in OA/100/2008/TM/CH, dated 25.11.2011 and quash the same and direct the second respondent to advertise application no.1347981 of the petitioner dated 30.03.2005 in an early issue of the Trade Marks Journal.
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For Petitioner : Mr. R. Rajesh
For Respondents : Mr. C.V. Ramachandramurthy, CGC-R2
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O R D E R
(Made by The Hon'ble The Chief Justice) The petitioner filed an application for registration of trade mark (TRIX) in Classes 29 and 30 in respect of Fruit based snack foods and Cereal based snack food and frosting. The mark was claimed to be proposed to be used as on the date of application, i.e. 30.03.2005.
2. In the course of examination by the Registry, under Section 11 of the Trade Marks Act, 1999 (hereinafter referred to as 'the Act'), an objection was raised on the ground that the said Trade Mark is absolutely identical to a prior registered trade mark in Class-30 for the same and similar specification of goods.
3. After hearing the petitioner, the application for registration was refused, vide a communication dated 20.11.2007 and the reasons for the decision, on being asked vide Application in Form TM-15 dated 04.12.2007, was supplied on 28.5.2008.
4. The petitioner preferred an appeal under Section 91 of the said Act, which has been dismissed by the impugned order dated 25.11.2011.
5. A perusal of the impugned order shows that though the petitioner had various registration certificates obtained all over the world claiming user in USA since 1910 and the application for registration in USA was filed in 1954, in India the registration was sought on proposed to be used basis. The existing registered trade mark was of Amul, which was used by them for a brief period during 1986 and thereafter, launched during August, 2007.
6. The petitioner is stated to have also preferred a suit in C.S.No.2438 of 2007 in Delhi High Court for passing off, in which interim relief is stated to have been granted, vide order dated 12.12.2007 as an ad-interim measure. The final result of the suit is not available. Mr.R.Rajesh, learned counsel for the petitioner, is unaware about its fate and 'Amul' is not before us.
7. One of the material aspects of the impugned order is that the petitioner filed a rectification application in December 2007, i.e. after the adverse order passed in the present proceedings by the Deputy Registrar, and thus, it was opined by the Board that they could not rely on the pendency of the rectification proceedings. In this behalf, learned counsel points out that there is a subsequent development, inasmuch as the rectification proceedings before the IPAB have succeeded, vide order dated 16.07.2012 and a direction has been passed to the Registrar of Trade Marks to cancel the trade mark registered in Class-30 of the Amul. M/s.Amul (Kaira District Cooperative Milk Producers Union Ltd.) thereafter preferred a Special Civil Application No.13455 of 2012 before the High Court of Gujarat and vide a detailed order dated 08.11.2012, that petition has been dismissed.
8. In view of the subsequent developments, learned counsel for the petitioner confines his prayer to the matter being remanded before the Registrar of Trade Marks for re-consideration of the issue of advertising the mark of the petitioner in view of these orders passed aforesaid, whereby the mark of Amul stands cancelled.
9. We are inclined to grant this relief, as the very premise of the impugned orders is the existence of an identical mark duly registered in favour of third party/Amul. The subsequent development arising from rectification proceedings instituted by the petitioner show that the mark has been cancelled by the IPAB, which has been upheld by the Gujarat High Court. The result is that no such mark exists on record. The mark of the petitioner was never advertised. If it is advertised, any party would still have the right to file opposition and thus, that aspect can be investigated in case such opposition is filed.
10. We, thus, set aside the impugned order dated 28.05.2008 of the Deputy Registrar as well as the order dated 25.11.2011 of the IPAB and remand the matter before the Registrar of Trade Marks to proceed in accordance with the said Act, taking into consideration the subsequent developments of the rectification of the identical trade mark, which was already registered.
11. The writ petition accordingly stands allowed, leaving the parties to bear their own costs.
[S.K.K., CJ] [M.S.N., J.]
ATR 26th August, 2014.
To
1. Intellectual Property Appellate Board
Guna Complex, Annexe 1
2nd Floor, 443, Anna Salai
Teynampet, Chennai 600 018.
2. Deputy Registrar of Trade Marks
Trade Marks Registry
IP Building, GST Road
Guindy, Chennai 600 032.
THE HON'BLE THE CHIEF JUSTICE
and
M. SATHYANARAYANAN,J.
ATR
W.P. No. 24262 of 2012
26.08.2014