NNOVA AND COMPANY vs CHAND RAHEJA AND ANR
$~15
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 03rd October, 2024
+ C.O. (COMM.IPD-TM) 417/2022
NNOVA AND COMPANY …..Petitioner
Through: Mr. Prakhar Singh, Adv.
M: 8448356140
Email: prakharadv1@gmail.com
versus
CHAND RAHEJA AND ANR. …..Respondents
Through: Mr. Birender Bhatt and Mr. Rakesh Kumar, Advs.
M: 9650479069
CORAM:
HON’BLE MS. JUSTICE MINI PUSHKARNA
MINI PUSHKARNA, J (ORAL)
1. The present petition has been filed seeking removal of the respondent no.1s registered trademark NOGA bearing registration no. 1278305 in Class 03, which is deceptively similar and identical to petitioners prior and well known registered trademark NOVA under Classes 05 and 03.
2. As per the case canvassed on behalf of the petitioner, the facts are as follows:
2.1 The petitioner is engaged in the business of manufacturing and marketing of cosmetic products and similar products under its trademark NOVA, which was originally conceived and adopted in the year 1935.
2.2 The petitioner is the registered trademark owner of variety of its products, under the name/mark NOVA in Classes 05 and 03, such as in respect of pharmaceutical preparations in Class 05 dated 16th December, 1946 and in respect of creams and brillantine creams in Class 03 dated 31st December, 2001.
2.3 Respondent is the owner of registration no. 1278305 for trademark NOGA in Class 03, having been advertised in the Trade Marks Journal No. 1324-1 and was registered on 12th November, 2005.
2.4 The respondents registered mark NOGA is deceptively similar to the petitioners prior adopted registered and well known trademark NOVA.
2.5 The respondent no.1 had fraudulently adopted the impugned mark with mala fide intention to encash upon the petitioners good will and reputation, deceive the purchasers who would be confused as to the origin of its source and assume the said goods bearing the impugned mark, to be associated with the petitioners mark NOVA.
3. When the matter was listed for hearing on the last date, learned counsel appearing for the respondent no.1 had stated that the respondent no.1 had not renewed the registration of the trademark NOGA. Further, the learned counsel had sought time to take instructions as to whether the respondent no.1 intended to renew and use the said trademark.
4. Pursuant to the last order, the respondent no.1 has filed an affidavit of undertaking regarding non-renewal of the trademark application no. 1278305 in Class 03, for the trademark NOGA. The relevant extracts from the affidavit of respondent no.1, are reproduced hereunder:
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3. I, the Respondent No.1 in the present case, do hereby state and declare that Trademark Application No. 1278305, applied for under Class 3 in the name of “NOGA”, will not be renewed by me, either in the present or at any time in the future.
4. I hereby give an undertaking that I shall not renew, nor shall I cause to be renewed the said trademark application at any time hereafter.
5. I further state and clarify that the above-mentioned undertaking is specifically in respect of Trademark Application No. Application No.1278305 only.
6. I hereby further undertake that the above-mentioned undertaking will not be breached by me at any time in the future.
7. I affirm that this undertaking has been given by me voluntarily, without any fear, pressure, or undue influence from any party whatsoever.
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5. Perusal of the aforesaid affidavit filed on behalf of respondent no.1 clearly shows that respondent no.1 has undertaken that the trademark application no. 1278305, applied for under Class 03 in the name of NOGA, will not be renewed by the respondent no.1, either in the present or any time in the future. Further, the respondent no.1 has given an undertaking that he shall not renew or cause to be renewed the said trademark application anytime hereafter.
6. Learned counsel appearing for the petitioner submits that he is satisfied with the undertaking given by the respondent no.1.
7. Considering the submissions made before this Court and the undertaking given by the respondent no.1, it is clear that registration in favour of the respondent no.1 for the trademark NOGA, cannot be sustained and cannot remain in the register of the trademarks any longer. Use of the said impugned mark by the respondent no.1 would be in contravention of the provisions of Section 11(2) of the Trade Marks Act, 1999.
8. It is further to be noted that in view of the fact that the respondent no.1s impugned mark NOGA is deceptively similar to the petitioners trade mark NOVA and is registered in relation to identical and/or same description of goods and for goods covered under the same Class, the use of the impugned mark by the respondent no.1 is likely to deceive the public and cause confusion. Thus, registration of the impugned mark also offends the provision of Section 9 (2) (a) of the Trade Marks Act.
9. Accordingly, the registration no. 1278305 in Class 03 for the trademark NOGA, registered in favour of respondent no.1, is hereby cancelled.
10. The Registrar of Trademarks is directed to remove the said entry from the register of trademarks.
11. The Registry is directed to supply a copy of the present order to the Office of the Controller General of Patents, Designs and Trade Marks of India, on E-mail Id: llc-ipo@gov.in, for compliance.
12. With the aforesaid directions, the present petition is disposed of.
MINI PUSHKARNA, J
OCTOBER 3, 2024/kr
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