Delhi High Court - Orders
Rong Thai International Group Co. Ltd vs Ena Footwear Pvt. Ltd. And Anr on 4 September, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~3
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.O. (COMM.IPD-TM) 100/2021
RONG THAI INTERNATIONAL GROUP CO. LTD. ..... Petitioner
Through: Ms. Aparna Jain and Mr. Abhishek
Sharma, Advs. (M: 9810296002)
versus
ENA FOOTWEAR PVT. LTD. AND ANR. ..... Respondents
Through: Mr. Ashok Goel & Mr. Anshul Goel,
Advs. for R-1. (M: 9711344971)
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 04.09.2023
1. This hearing has been done through hybrid mode.
2. The present rectification petition relates to the trademark 'BAOJI'. The Petitioner is a Thailand based company, which claims to be using the said mark since 2002.
3. The basis of the name of the Petitioner is a historic city BAOJI in China. According to the Petitioner, it has registered mark 'BAOJI' in various countries including Thailand, China, Laos, Myanmar, Malaysia, Philippines, Vietnam and Cambodia. It also has a domain name www.baojithai.com registered since 12th September, 2012.
4. The Petitioner has obtained registration for the logo mark bearing no.2983910 dated 11th June, 2015 in class 18. However, The Petitioner's Trade Mark Application in class 25 for clothing, footwear and leather, was applied for but refused. The said application by the Petitioner was filed after filing of the present rectification petition. The case of the Petitioner is that it has revenue of more than $ 6 million.
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5. On the other hand, the case of the Respondent is that the Respondent has registered the trademark 'BAOJI'. However, there is no usage of the mark 'BAOJI' by the Respondent in India. The Petitioner places reliance upon the report of the investigator which was commissioned by the Petitioner. The conclusion of the investigator's report is as under:
"During the course of investigation, no product under the mark BAOJI by M/s Ena Footwear came to light. Mr. Rohit Sharma of the company, on enquiry about BAOJI Shoes, told that they do not manufacture any product under the mark BAOJI. During market survey also, no such product was noticed."
6. On behalf of the Respondent, Mr. Goel, ld. Counsel submits that the word 'BAOJI' is registered in favour of the Respondent and that the Respondent has been using the said mark since 2000. It is further claimed by the Petitioner that the mark was removed from the Register of Trade Marks but was thereafter restored. However, the Respondent submits that within the statutory prescribed period, the mark has been renewed and was not removed from the register. He further submits that the documents showing user are not available with it due to a fire in the factory of the Respondent. Mr. Goel also relies upon Section 33 of the Trade Marks Act, 1999 to claim prior user.
7. The Petitioner however argues on the basis of an investigation report that the Respondent is not at all using the mark as informed by the Director. Considering the overall facts, this Court is of the opinion that the statement of Mr. Rohit Sharma, director/promoter deserves to be recorded.
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/09/2023 at 16:09:22
8. Considering the nature of the disputes, the parties are free to explore the possibility of amicable resolution.
9. Accordingly, list before the Delhi High Court Mediation and Conciliation Centre on 22nd September, 2023 at 3:00 pm. Competent officials of both the parties, empowered to take decisions, to take part in proceedings before the Mediation Centre either virtually or physically.
10. List before the Court on 5th January, 2024. On the said date, Mr. Rohit Sharma shall remain present.
PRATHIBA M. SINGH, J.
SEPTEMBER 4, 2023/dk/am This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/09/2023 at 16:09:22