ROLEX S.A. Vs. ROLEX SALES

JUDGEMENT

(1.) THIS is an application under section 50 of the Copyright Act, 1957 for expunction of an entry under registration number A -56865/99. The matter was heard at New Delhi on 28th January, 2009. Petitioner in its application for rectification has submitted that it is holding world wide various trade mark registrations relating to its mark ROLEX in relation to watches. It came across the information relating to respondent No. 1 having filed applications for trade mark registrations and accordingly filed opposition thereto on 3rd February, 2004 and thereafter a few more applications filed by the respondent No. 1 to which the petitioner gave its notice opposition thereto subsequent to the first notice of opposition aforesaid. Respondent No. 1 in its counter statement dated 2nd February, 2005 to the notice of opposition in relation to respondent's trade mark application No. 760640 averred as to its holding impugned copyright registration number A -56865/99. In response to Cease and Desist notices dated 29th November, 2003 and 17th January, 2004 sent by the petitioner, respondent No. 1 had replied per its counsel's letter dated 28th January, 2004 that it had obtained registrations under trade mark registration number 461072 dated 1st October, 1986 relating to ROLEX for use in relation to pipes after obtaining consent of the petitioner in 1986. Petitioner has submitted for the; expunction of the impugned entry on the ground of lackness of originality and violation of statutory provisions in relation to rule 16(3) of the Copyright Rules, 1958.

(2.) RESPONDENT No. 1 in his written statement has submitted that the impugned work is different and unique. It contains the letters RFP representing his trade name ROLEX Fuel Pipes. He has submitted that the petitioner had vide its letter dated 26th August, 1991 had written to him about the alleged infringement of its trade marks. Respondent has submitted that, in reply to that letter, his attorney, Mahatta and Company, had written about the adoption of trade mark ROLEX by the predecessors of the respondent and its popularity. According to the respondent, the petitioner felt satisfied and had accordingly replied to him. Records about the letter sent and reply received are not traceable with the respondent.

(3.) PETITIONER in its rejoinder has reiterated its submissions in petition and has emphasized that, as per respondent's own submissions, it was aware about the interest of the petitioner in the subject matter ROLEX as back as 1991. Petitioner has generally denied the averments of the respondent in its written statement.