MNC’s Trademark revoked for Non-Use on Indian User’s Application

Name of the Case: M/s. Pops Food Products (P) Ltd. (Petitioner) vs. M/s. Kellogg Company (Respondent) [TRA/159/2004/TM/DEL]

Decided on: January 6, 2012.

Facts of the Case: Petitioner is the proprietor of the trademark POPS under Nos. 342674, 342675, 342676 in classes 30, 29 and 30 respectively for its goods viz. Chewing Gum, Bubble Gum, Dairy Products etc. and has acquired a goodwill for itself through usage and advertisement of such mark for a long period of time, so as to have created a general public perception of the mark being associated with its goods. Respondent had intimated the Petitioner of it being the proprietor of trademark POPS in relation to cereal derived breakfast food and of its intention to oppose the Petitioner’s registration, and possibilities of settlement provided the Petitioner restricted its goods to specified goods. The Petitioner in turn has sought rectification by removal of Respondent’s mark from the Register.

Petitioner’s contentions: Respondent has not made any use of the mark in India nor does it have bona fide intention to do so. Although the products for which the marks are used are not identical, yet they are all bought across the country through the same trade channel and by the same class of customers, who, especially children, would be inclined to buy POPS Cereals thinking that the mark belongs to the manufacturer of Bubble Gum and Chewing Gum with whom they are familiar. The Petitioner also submitted conclusive documentary evidence to prove that POPS Chewing Gum and Double Bubble Gum are sold across the country.

Respondent’s contentions: The Respondent argued that the Petitioner had not proven continuous use of the mark POPS, while the Respondent had adopted the mark (the marks CORN POPS-638273, COCO POPS-758864, SNAP, CRACKLE, POP-345988, POP-TARTS-516460) in 1941 internationally and gained subsequent good will by its use. Although Respondent is yet to use its mark in India, the latter has gained parallel reputation and trans-border goodwill owing to Indians travelling abroad and the Respondent intends to use the mark subsequently in India. Moreover, Petitioner’s use of the mark being limited to products like Chewing Gums and Bubble Gums only, the Petitioner cannot have any cause for grievance against the Respondent since there is no scope of mistaking the Respondent’s products for the Petitioner’s.

The Respondent also cited several cases such as:
Jupiter Infosys Limited vs. Infosys Technologies Limited (In TRA/25-27/2003/TM/CH) [stating that in case of proving non-use, in the present day world of commerce and industry a manufacturing industry can neither be commenced nor established over night];
Revlon vs. Rajendra Kumar Dhawan [the initial onus of proving non-user is to be established by applicant for rectification through cogent evidence];
Kamat Hotels (India) Limited vs. Royal Orchid Hotels Limited (In ORA 216-217/2008/TM/CH) [stating that law requires proof of both no bonafide intention to use and no bonafide use];
Osram Gesellschaft Mit Beschrankter Haftung Vs. Shyam Sunder & Ors. (2002 (25) PTC 198 (Del) (DB) [a registered trade mark holder cannot in law claim exclusive monopoly rights for its trade mark as extended to goods of all descriptions falling within the same class in which its sole and solitary product falls.];
Hardie Trading Limited and Anr. Vs. Addisons Paint and Chemicals Limited (2003 (27) PTC 241(SC)) [In cases of rectification on the grounds of non-use, there was no reason to limit the user to use on the goods or to sale of goods bearing the trademark].

Judgment: Reference was made to the Milment Oftho Industries case [2004 (28) PTC 585 (SC)], wherein the Supreme Court had held earlier that in case of conflict between usage of a mark by a company within India and off-shore use by another company, public interest must not be imperilled, although multinational corporations, who have no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian Company by not permitting it to sell a product in India, if the Indian Company has genuinely adopted the mark and developed the product and is first in the market. Thus, the ultimate test should be who is first in the market. The judiciary also showed considerable insight in concluding that while the Respondent’s contention that business cannot be started overnight has merit and that the person who alleges non-user (in this case the Petitioner) should bear the burden of proof, yet in this case, given the Respondent’s admission of non-use till date, the Petitioner needs not submit additional proof of the same. Nor did the Court find any bona fide intention of use of the mark by the Respondent within India, given how no step had been taken towards the same within the 22 years since the date on which the Respondent had registered said marks.

Order: The Petitioner’s contentions for rectification are accepted and the Respondent’s marks are ordered to be removed from the Trademark Register.