M/S. SHALIMAR CHEMICAL WORKS LIMITED Vs. THE REGISTRAR OF TRADE MARKS, THE DEPUTY REGISTRAR OF TRADE MARKS AND BOMBAY VARIETY STORES

JUDGEMENT

(1.) THE appellant herein are seeking the quashing/setting aside of the order and decision of the Deputy Registrar of Trade Marks Kolkata dated 26.2.2007. The respondents herein had applied for the registration of a trade mark SHALIMAR in class 23 under in 647880 in respect of Knitting wool (Cashmilon). This was accepted and published in the Trade Marks Journal and opposed by the appellant herein. The Deputy Registrar dismissed the opposition and directed the registration of the impugned mark. The case of the appellant is mentioned below: - The appellant is a leading and reputed company in India engaged in the business of manufacturing and marketing quality edible oil, toiletry, coconut oil, cosmetic products, spices of various kinds and dairy products. The appellant adopted the trade mark 'SHALIMAR' some time in 1941 from their initial trading style and have been using the said trade mark continuously since then. They have expended large sum of money in promoting and popularizing the trade mark Shalimar which has now acquired secondary meaning. They have also issued trade mark and Copyright Caution Notice from time to time in leading newspapers. Therefore, this trade mark of the appellant has become a household name. The mark has also acquired common law rights and in fact the appellant/opponent lodged more than 60 oppositions against the registration of the Shalimar trade mark by various third parties.

(2.) IN May, 2004 the appellant came to know that the respondent had applied for the registration of an identical trade mark Shalimar which was published in the TM journal dated 14th November 2003 (MEGA -V). The respondent claimed the use of Shalimar mark since January, 1985 in respect of knitting wools. A second application for a composite trade Mark Shalimar was also filed by the respondent under No. 846761 claiming user since January, 1985.

(3.) THE appellant submits that the user claimed in the impugned application is palpably false and fictitious and a fraud has been committed on the Registrar by making false claim of use of the impugned mark. The respondent had failed to establish alleged use of the impugned mark through first hand documentary evidence. The appellant submits that the impugned mark will cause inevitable confusion and deception amongst the public and will also dilute the distinctive character and repute of the appellant's trade mark.