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1 - 10 of 16 (0.24 seconds)Section 56 in The Trade And Merchandise Marks Act, 1958 [Entire Act]
The Trade And Merchandise Marks Act, 1958
Latha C. Mohan vs Cavinkare Pvt. Ltd. And Anr. on 7 July, 2004
The above principle is squarely applicable to the facts of this case because the applicant having registered the trade mark 50 years back never tried to use the same in India till 1998 when it made an attempt to send the samples alone. Till date the appellant did not establish use of the said mark in India and hence its conduct is nothing but to create a monopoly by registration of the trade mark and without using the same. The trans border reputation will come into play only when the mark is not registered in India. But once the mark is registered in India then the registered proprietor has to comply with the requirements of the Trade and Merchandise Marks Act, 1958. In view of the same the actual use is a statutory requirement and it should be complied with. The non use of the mark, makes the same liable to be cancelled. It is clear from the above extract portion of the judgement and also it has been made very clear in the order of this Board in Latha C.Mohan v. Cavinkare Pvt. Ltd. Ltd., 2004 PTC 340 (IPAB) that the expression "bonafide use" implies that there has been a real and genuine use of the mark.
N.R. Dongre And Ors vs Whirlpool Corporation And Anr on 30 August, 1996
17. Learned counsel for the first respondent relied upon the judgements reported in 1994 Kol 43 M/s J.N.Nicholas (Vimto) Ltd. v. Rose & Thirstle & Anr., 2003 (11) SCC 92, Hardie Trading Ltd. & Anr v. Additions Paints & Chemicals Ltd., and N.R.Dongre v. Whirlpool Corporation 1996 PTC 583 to contest that actual use is not necessary in order to attain reputation and goodwill of a mark. Of course on this ground he also tried to distinguish the judgements relied upon by the learned counsel for the applicant. In 1996 PTC 583 - Whirlpool case, the Supreme Court held that no actual use is necessary. But however it should be established that the mark has attained distinctiveness in respect of the goods of the manufacturer and also had attained reputation through advertisements, that is, the people or the public should be aware about the availability of such a mark even though the product may not be available. As extracted above the first respondent has stated that the marks have been advertised in various magazines and media like the TV etc. But there is absolutely no material before us that the first respondent had made advertisements in any one of the forms as pleaded by them. Even in respect of magazines the first respondent did not furnish at least the names of the magazines and also did not produce copies of the same. There is no material about the circulation of those magazines in India. In the absence of any evidence to establish that the public have knowledge about the impugned mark, it cannot be said that the first respondent had attained reputation or goodwill in respect of the mark in India and thereby the actual use can be inferred. Hence in respect of issue (a) we find it in favour of the applicant that they are the earlier user of the trade mark 'NABISCO' and in respect of (b) and (c) we find that the first respondent did not use the trade mark from the date of registration till the date of filing of this application. Consequently, the impugned mark of the first respondent is liable to be expunged.
Cluett Peabody & Co. Inc. vs Arrow Apparals on 24 October, 1997
13. In a rectification proceeding the burden is on the applicant to prove its case of earlier user. Once it is established then it is for the first respondent to establish its use of the registered mark. The registration is not the absolute right. Merely because the first respondent had obtained the registration of the impugned mark in 1944 and renewed the same and kept it alive till date would amount to monopoly of the mark without being put to use and in such a case the impugned mark of the first respondent is liable to be expunged. We cannot lay down the principles in a better manner that that of his Lordship S.H.Kapadia of Bombay High Court who had laid down in the case of Cluett Peabody & Co. Inc v. Arrow Apparals 1998 PTC 156 and hence we extract the same for our use:-