Document Fragment View

Matching Fragments

1. An application is made praying to expunge or cancel the registration of the trade mark 'BIG BABOL' under No. 383562 in class 30 in respect of confectionery, chewing and bubble gum under the provisions of Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act).

2. The applicants have been in the business of manufacturing and marketing a wide range of sweets and confectioneries including bubble gum. The applicant's predecessors were carrying on business for a long time. The business was in fact carried on by Bakemans Industries Limited. Pursuant to the scheme of arrangement granted in C.P. Nos. 12 and 13 of 1997 & C.P. Nos. 865 and 866/97 by the Hon'ble High Court, Delhi by order dated 25.2.1997 the assets and liabilities of the confectionery division of Bakemans Industries Limited were transferred and vested with the Heritage Bharat Ltd. The name Heritage Bharat Limited was subsequently changed to Candico (I) Ltd., the present applicant herein.

3. The applicant's predecessor has been using the trade mark 'THE BIG BUBBLE' along with its conjunction with the words 'Bakemans' 'Loco Poco' or 'Freedom' since 1989 and by the present applicants since 1997. The sales turnover of the applicant's goods bearing the trade mark 'THE BIG BUBBLE' along with the other words have been to several lakhs of rupees.

4. The applicant received a legal notice dated 16.04.1998 from the first respondent herein calling upon the applicant to cease and desist from using the words 'THE BIG BUBBLE' as the first respondent had been manufacturing and marketing products bearing the trade mark 'BIG BABOL'. The applicant herein being aggrieved by the notice, filed a suit against the first respondent before the District Court at Nagpur to restrain them from using the trade mark 'BIG BABOL'. The applicants had also taken out an application for an order of interim injunction to restrain the first respondent from using the trade mark 'BIG BABOL' which was deceptively similar to the applicant's mark 'THE BIG BUBBLE'. The Hon'ble District Court was pleased to grant an order of interim injunction. The first respondent moved an application to vacate the order of injunction and had the order vacated. The applicant filed appeal against the said order before the Hon'ble High Court at Bombay (Nagpur Bench) and the same is pending whereas no order of stay was granted.

e) the first respondent did not use the trade mark for a period of five years and one month prior to the filing of the rectification petition; and

f) the entry of the mark on the Register was made without sufficient cause and was wrongly remaining on the Register.

6. The first respondent filed the counter statement denying the various allegations made in the application for rectification. The first respondent was also marketing and manufacturing of confectionery including chewing gum and bubble gums and candies under the trade mark 'BIG BABOL'. The first respondent's mark 'BIG BABOL' was registered in Italy under No. 318104 as early as 1979. The first respondent has its subsidiary companies in various countries including India which have been selling chewing gums and bubble gums under the trade mark 'BIG BABOL' for which applications for registration have been filed and the same are either registered or pending.

13. The matter was taken up for hearing in the Circuit Bench at Mumbai on 18.9.2007. We have heard Ms. Anuradha Salhotra learned Counsel for the applicant and Shri Rahul Chitnis learned Counsel for the first respondent.

14. The learned Counsel for the applicant contended that they have been using the trade mark 'BIG BUBBLE' since the year 1989. The applicant pointed out to the sales figures given in the application for rectification to show that their business had rapidly improved.

15. Learned Counsel for the applicant further submitted that they received a notice dated 16.4.1998 calling upon the applicants to desist from using the trade mark 'BIG BUBBLE' where neither the date of user nor any mention of the trade mark rights was made. The applicant acquired the right through its predecessors to use the mark 'BIG BUBBLE' as a descriptive term as well as a trade mark.