Jahangir Biri Factory Pvt. Ltd. v. Mohd. Dildar Hossain and Registrar of Trade Marks

2018 (76) PTC 479 (IPAB)

Brief Facts:

• As per the Applicant, Applicant had adopted the mark ‘HOWRAH BIDI (LABEL)’ in the year 1941 and started to use the same from 1995. Applicant had applied for the registration of its trademark under Application No. 736949 in the year 1996. However, the said application could not be pursued.

• Thereafter, the Applicant applied for the registration of its trademark “HOWRAH BIDI (LABEL)” in the year 2005 under Application No.1401112 which was granted registration.

• In the year 1997, Respondent No. 1 started using the mark ‘HOWRAH BIDI NO. 202 (LABEL)’ which was deceptively similar to that of Applicant’s mark. The Respondent No. 1 also obtained a trade mark registration for its mark through application bearing number 1760000.

• The present order pertains to the decision of the IPAB on the rectification petition filed by the Applicant against the mark of the Respondent No. 1.

Applicant’s Core Contention forming basis of this order:

• In the Examination Report dated 6th June, 2009 issued by the Trade Mark Registry, Kolkata upon the Respondent No. 1, the registered trademark of the Applicant i.e. No. 1401112 “HOWRAH BIDI No. 102 (LABEL)’ which was already valid subsisting and existing on the record on the date of examination was never cited as a conflicting mark and therefore the whole examination process is vitiated.
• If the mark of the Applicant would have been cited, the present application of Respondent No. 1 could not have been registered owing to the bar contained in section 11(1) of the Act unless Respondent No. 1 was able to establish honest concurrent-user of the mark registered.

Tribunal’s Observations:

• Section 11 of the Trade Marks Act, 1999 lays down several grounds for refusal of a trade mark is a mandatory provision.
• After filing of the application, search is to be conducted by the Respondent No. 2 as to whether any earlier trade mark is registered or pending. The same are mandatorily to be cited/referred in the Examiner’s Report.
• It is the duty of Respondent No. 2 to examine the earlier registered trademarks as well as the pending applications otherwise the rights of the owner/registered owner shall be affected and the entire system will be collapsed.
• Respondent No. 2 is bound to comply the mandatory provisions of Sections 9 (Absolute grounds for refusal of registration), 11 ( Relative grounds for refusal of registration), 12 (Registration in the case of honest concurrent use, etc.) and Section 18 (Application for registration) of the Act and Rule 37 (Acknowledgement and Search) of the Trade Marks Rules.
• The registration granted for the trademark ‘HOWRAH BIDI NO.202’ by ignoring the mandatory provisions of the Trade Marks Act, 1999 constitutes violation of such provisions and hence no proper registration has been done.

The Respondent No. 1’s trade mark was therefore rectified. However, the IPAB clarified that it is not expressing any opinion on merits of the case (as the contention of Respondent No. 1 was that it was prior user and real owner) and deciding the Petition purely on the basis of a valid objection.

Author: Ms. Amanya Shree Gangawat, Amity University, Kolkata