HARBANS LAL WADHWA TRADING AS UTTAM CHEMICALS vs SUBHASH CHAND TRADING AS SUBHASH CHAND AND SONS & ANR.
$~28
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 11th December, 2023
+ C.O. (COMM.IPD-TM) 151/2023, I.As. 8813/2023, 8814/2023, 8815/2023 & 8816/2023
HARBANS LAL WADHWA TRADING
AS UTTAM CHEMICALS ….. Petitioner
Through: Mr. Nishant Mahtta and Ms. Twinkle Rai, Advs. (M. 99712 54949)
versus
SUBHASH CHAND TRADING AS
SUBHASH CHAND AND SONS & ANR. ….. Respondents
Through: Mr. Varshesh Khurana, Advocate for R-1.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. The dispute in this matter is relating to the trade mark UTTAM being used in respect of shops. The case of the Petitioner-UTTAM CHEMICALS is that it is the prior user of the mark since 1999 in respect of Washing Soap, Washing Powder, Detergent Cakes, Detergent Powders, Toilet Soap, Toilet Cleaner, Window Cleaner (Polish), Glass Cleaner, Liquid Detergents, Laundry Soap, Laundry Blue, Dish Washers & Floor Cleaning Preparations.
3. It is stated that the Respondent No.1s mark UTTAM bearing no. 2303642 has been registered since 2012, under class 3 for similar goods and services i.e., washing soap, washing powder, detergent soap etc.
4. According to the ld. Counsel for the Petitioner, it is entitled to cancellation of the Respondent No.1s mark on the ground of prior user.
5. The Petitioners trade mark application numbered 3961457 dated 1st October, 2018 is still pending before the Registrar of Trademarks. Ld.
6. Counsel for the Petitioner has placed on record certain documents including the lease deed of 13th May, 1999, certain invoices etc., in order to establish the prior use of the mark by it.
7. On the other hand, the case of the Respondent No.1 is that the Petitioner in the reply to the examination report dated 7th August, 2020, in the Trade Mark Registry had, itself, admitted that the two marks are not similar.
8. Usually, in cancellation petitions, in terms of IPD Rules, the Court need not call for evidence. However, depending on the facts of the case, if the parties are unable to prove their case on the basis of pleadings and documents on record and if the documents are disputed by the opposing party, the Court, after considering the matter, could direct that the evidence may be led in the matter, as per Rule 7 (viii) of the Delhi High Court Intellectual Property Rights Division Rules, 2022. The said rule is set out below:
7. Procedure for Original Petitions (Civil Original Petition)
Filing of evidence may be directed by the Court, only if the same is deemed necessary. The evidence shall usually be in the form of affidavits. Oral evidence including cross-examination may be directed for reasons to be recorded in the order of the Court. If oral evidence is directed, the procedure for recording of evidence and other related procedures shall be governed by these Rules as well as the Delhi High Court (Original Side) Rules, 2018. In revocation/cancellation petitions, upon framing of issues, the court may direct filing of evidence by way of affidavit.
9. After having perused the documents and the pleadings on record, this Court is of the opinion that the matter would require evidence as the Petitioner does not have a registration and is claiming rights on the basis of prior user.
10. The Petitioner would have to establish its sales figures, goodwill and invoices and other documents to establish prior use and reputation in the mark.
11. Accordingly, the following issues are framed:-
i) Whether the Petitioner is a prior user of the mark and name UTTAM in respect of shops and other related goods? OPP
ii) Whether the Petitioner enjoyed goodwill in the mark UTTAM on the date when the Respondent No.1 adopted the mark in 2012 in respect of Class 3 goods? OPP
iii) Whether the Petitioner is estopped from challenging the trade mark registration of the Respondent No.1? OPD
iv) Whether the Respondent No.1s mark bearing No. 2303642 dated 21st March, 2012 in Class 3 is liable to be cancelled/rectified? OPP
v) Reliefs.
12. Let the parties file their list of witnesses within four weeks. Petitioner to lead its evidence before the Joint Registrar by way of affidavit initially within six weeks.
13. List before the Joint Registrar for cross examination on 5th February, 2024.
14. List before the Court on 6th May, 2024.
PRATHIBA M. SINGH
JUDGE
DECEMBER 11, 2023
mr/bh
C.O. (COMM.IPD-TM) 151/2023 Page 2 of 2