INDARMAL M SOLANKI vs RAKESH GUPTA AND ANR
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 1st December, 2023
+ C.O. (COMM.IPD-TM) 369/2021
INDARMAL M SOLANKI ….. Petitioner
Through: Ms. Pritika Juneja, Mr. Abhilash Gupta, Mr. Jay Shah, Advs. (M. 9871354113)
versus
RAKESH GUPTA AND ANR ….. Respondents
Through: Mr. Harish Vaidyanathan Shankar, CGSC, with Mr. Srish Kumar Mishra, Mr. Alexander Mathai Paikaday, Mr. Krishnan V., Advs. (M. 9810788606)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. The present rectification petition under Section 57 of the Trade Marks Act, 1999 has been filed by the Petitioner-Indarmal M Solanki seeking cancellation of mark EL PASO bearing trade mark no. 1553984 dated 30th April 2007 in Class 25 registered in the name of the Respondent No. 1-Sh. Rakesh Gupta (hereinafter, impugned mark/ impugned registration).
3. The extract of the Trade Mark Journal No. 1413 dated 1st April 2009 containing the said mark is set out below:
4. The Petitioners grievance is that the Petitioner is the registered proprietor of the mark ELPASO and ELpaso for readymade garments both under Class 25 bearing application nos. 2111871 and 2111872. The details of the Petitioners registered marks is set out below:
Trade Mark
ELPASO
ELpaso
Category
Word
Word
Application no.
2111871
2111872
Date
8th March 2011
8th March 2011
Class
25
25
Status
Registered
Registered
Journal No.
1730 dated 1st February 2016
1730 dated 1st February 2016
User detail
1st January 1997
1st January 1997
Renewed upto
8th March 2021
8th March 2021
5. The further case of the Petitioner is that the mark ELPASO was adopted by the Petitioner in May, 1996 along with another proprietor-Sh. Praveen Jain. The Petitioner is Mr. Indarmal M. Solanki, trading under the name and style of Anant Apparels. Mr. Praveen Jain thereafter retired from the said firm, and the Petitioner continued as a proprietor. As on date, the Petitioner is the registered proprietor of the mark ELPASO, and also the prior user of the mark. The Petitioners marks are stated to have been registered on 24th August 2016 during the pendency of this petition.
6. Notice has been issued in this matter on several occasions i.e. 18th January 2018, 12th July 2022, 18th January 2023, and the Respondent No.1 has been served on 10th April 2023. However, there is no appearance on behalf of the Respondent No. 1. Today also none appears for the Respondent No.1.
7. The user claimed by the Respondent No. 1 in the impugned registration is of 26th September, 2002. The mark is identical, goods for which the mark is intended to be used in Class 25 are identical and the Plaintiff is the prior user of the mark.
8. Considering that the impugned mark EL PASO, is a mark identical to the Petitioners mark was registered by the Respondent No.1, and is intended to be used for identical goods in Class 25, and targets the same consumer segment, the impugned registration could cause public confusion, and unfairly disadvantage the Petitioner. Therefore, the Petitioner is clearly a person aggrieved under the Trade Marks Act, 1999.
9. The mark ELPASO being also registered in favour of the Petitioner, the impugned registration would be violative of Sections 9 and 11 of the Trade Marks Act, 1996.
10. The ld. Counsel for the Petitioner highlighted that the impugned mark had not been renewed by Respondent No.1 since 30th April, 2017. Accordingly, the mark is liable to be removed from the register in terms of Section 47 of the Trade Marks Act, 1999. The impugned mark was valid upto 30th April 2017, and has not been renewed since. Further, despite repeated notices, the Respondent No.1 has chosen to not appear in the present proceedings. Considering these circumstances, the impugned mark ELPASO bearing no. 1553984 dated 30th April 2007 deserves to be removed/cancelled. Ordered accordingly.
11. Let the order cancelling the mark ELPASO and removing the same from the Register of Trade Marks be reflected on the website of the office of CGPDTM within four weeks.
12. Issue notice.
13. Mr. Alexander, ld. Counsel accepts notice for CGPDTM. The present order be communicated to the office of the CGPDTM on email and given effect to within four weeks.
14. Let the Registry communicate a copy of the present order to the office of the Controller General of Patents, Designs & and Trademarks of India on the e-mail- llc-ipo@gov.in for compliance of this order. The record of the present appeal be also emailed or despatched to the said office.
15. The present petition, along with all pending applications is disposed of in the above terms.
PRATHIBA M. SINGH
JUDGE
DECEMBER 01, 2023/Rahul/dn
C.O. (COMM.IPD-TM) 369/2021 Page 2 of 2