RAJ KUMAR SHARMA vs SANDEEP KUMAR & ANR.
$~3 to 5
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.O. (COMM.IPD-TM) 36/2021
RAJ KUMAR SHARMA ….. Petitioner
Through: Mr. S.K. Bansal, Adv.
versus
SANDEEP KUMAR & ANR. ….. Respondents
Through: Ms. Garima Sachdeva and Mr. Hansdeep Singh for Respondent 1
+ C.O. (COMM.IPD-TM) 37/2021
RAJ KUMAR SHARMA ….. Petitioner
Through: Mr. S.K. Bansal, Adv.
versus
SANDEEP KUMAR & ANR. ….. Respondents
Through: Ms. Garima Sachdeva and Mr. Hansdeep Singh for Respondent 1
+ C.O. (COMM.IPD-TM) 38/2021
RAJ KUMAR SHARMA ….. Petitioner
Through: Mr. S.K. Bansal, Adv.
versus
SANDEEP KUMAR & ANR. ….. Respondents
Through: Ms. Garima Sachdeva and Mr. Hansdeep Singh for Respondent 1
CORAM:
HON’BLE MR. JUSTICE C.HARI SHANKAR
O R D E R (O R A L)
% 17.10.2023
C.O. (COMM.IPD-TM) 36/2021, C.O. (COMM.IPD-TM) 37/2021 & C.O. (COMM.IPD-TM) 38/2021
1. The petitioner in these petitions filed an application for registration of the device mark in class 35 on 31 August 2020 to cover retail shop or online retail shop of food items, mobile retail food store services.
2. While the said application was pending, Respondent 1 applied on 1 February 2021 for registration of the PIZZA GALLERIA word mark. Registration of the PIZZA GALLERIA word mark was granted to Respondent 1 by the Registry of Trade Marks on 5 July 2021.
3. Aggrieved thereby, the petitioner petitioned this Court by means of CO (COMM. IPD-TM) 39/2021 (Raj Kumar Sharma v. Sandeep Kumar & Anr.) under Section 57 of the Trade Marks Act, 1999, seeking rectification of the Registry of Trade Marks by removal, therefrom, of the registration granted to Respondent 1 for the word mark PIZZA GALLERIA. It was contended that the wordmark PIZZA GALLERIA was deceptively similar to the device mark in respect of which an application seeking registration had already been filed by the petitioner prior to the filing of the application filed by the petitioner on 31 August 2020, prior to the filing of the application, by Respondent 1, for registration of the word mark PIZZA GALLERIA on 1 February 2021. As such, it was contended that the petitioners application was an earlier trademark within the meaning of Section 11(4) of the Trade Marks Act and that, therefore, as the word mark PIZZA GALLERIA and the device mark were deceptively similar and were likely to result in confusion in the mind of the ordinary customer, the registration of the word mark PIZZA GALLERIA, as granted to Respondent 1 on 5 July 2021, be declared illegal.
4. On the basis of an understanding which was arrived at between the parties during the hearing, this Court, vide judgment dated 30 January 2023, disposed of CO (COMM. IPD-TM) 39/2021 in the following terms:
24. As I have already held that the grant of registration to Respondent 1 of the impugned PIZZA GALLERIA word mark on 5th July 2021 is violative of Section 11(1)(b) of the Trademarks Act, the said word mark is liable to be removed from the register. However, as Mr. Sonker has restricted his challenge, in the present petition, to the use, by the defendant, of the impugned PIZZA GALLERIA mark in the city of Rewari, I direct the rectification of Registration No. 4842932 granted to Respondent 1 for the word mark PIZZA GALLERIA on 5th July 2021 to be rectified by inserting, therein, a disclaimer disallowing the use of the said mark, by the defendant, in the city of Rewari, while retaining the right of the defendant to use the mark elsewhere in the country.
5. Subsequently, the petitioner moved IA 15550/2023 in CO (COMM. IPD-TM) 39/2021, for a correction of the judgment dated 30 January 2023 by disallowing the use of the mark PIZZA GALLERIA by the defendant in the district of Rewari, rather than the city of Rewari. Notice stands issued in the said application, which is now listed on 31 October 2023.
6. Ms. Garima Sachdeva, learned Counsel for Respondent 1, on instructions from her client who is present in person, is agreeable to a modification of para 24 of the judgment dated 30 January 2023 by replacing the words city of Rewari with district of Rewari. Para 24 of the judgment dated 31 January 2023 in CO (COMM. IPD-TM) 39/2021 would thus read as under:
24. As I have already held that the grant of registration to Respondent 1 of the impugned PIZZA GALLERIA word mark on 5th July 2021 is violative of Section 11(1)(b) of the Trademarks Act, the said word mark is liable to be removed from the register. However, as Mr. Sonker has restricted his challenge, in the present petition, to the use, by the defendant, of the impugned PIZZA GALLERIA mark in the district of Rewari, I direct the rectification of Registration No. 4842932 granted to Respondent 1 for the word mark PIZZA GALLERIA on 5th July 2021 to be rectified by inserting, therein, a disclaimer disallowing the use of the said mark, by the defendant, in the district of Rewari, while retaining the right of the defendant to use the mark elsewhere in the country.
7. As such, IA 15550/2023 in CO (COMM. IPD-TM) 39/2021 is taken up today itself, and allowed in the aforesaid terms.
8. In view of the said statement made by Ms. Sachdeva, Mr. Bansal, on instructions, is agreeable to these petitions being disposed of in identical terms.
9. All these petitions, therefore, are disposed of by directing rectification of the concerned registration numbers 4842933, 4842934 and 4842931 dated 5 July 2021 granted to Respondent 1 for the marks PG PIZZA GALLERIA, PG PIZZA GALLERIA, /PG PIZZA GALLERIA, by inserting a disclaimer, disallowing the use of the said marks, by the defendant, in the district of Rewari, while retaining the right of the defendant to use the marks elsewhere in the country.
10. Mr. Bansal also submits that Respondent 1 has filed an opposition against application No. 4632565 dated 31 August 2020. Ms. Sachdeva undertakes on behalf of her client, who is present in person, to withdraw the said opposition.
11. Ms. Sachdeva also submits that the petitioner has been advertising the defendants outlets on boards which are set up outside their premises. Mr. Bansal undertakes, on behalf of his client, that if any such advertisement is reflected on any such board, it would immediately be taken down.
12. All these petitions stand disposed of in the aforesaid terms.
C.HARI SHANKAR, J
OCTOBER 17, 2023
ar
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