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The present case is Overseas Pvt. Ltd. v KRBL Ltd and Anr. The applicants sought to remove the respondent’s registered trade mark ‘BEMISAL’ (868081/class 30). The said mark has been registered in respect of rice as a “proposed to be used” trade mark. A prayer for stay under S. 95 from giving effect to the mark was also asked for. The IPAB denied removal and held in favour of the respondent’s descriptive mark.
The applicant contended:
• The word ‘Bemisal’ which means ‘matchless’ is a description of quality of goods hence cannot be trademarked as per S. 9 (2) of the Trademark Act. Section 9 lays down various categories of words that cannot be trademarked e.g. words that a devoid of distinct character, which designate kind, quality, values, geographical origins etc.
• The applicant has been using the name ‘Bemisal’ since 1993 in respect of its rice trade, even before the Respondent adopted the mark in 1999. Hence registration is contrary to S. 11 and the respondent wrongly claimed to be the proprietor of the mark under S. 18 (1).
The respondents contended:
• They have honestly, continuously, openly and commercially been using the trade mark ‘Bemisal’ for the sale of their products including rice since 1999. The respondents have built goodwill throughout the world with respect to their rice trade. Also, apart from the impugned mark the respondents are also the proprietors of two other pending marks Bemisal under nos. 1120954 and 1482415.
• It was contended that even though the mark was descriptive on the date of its adoption, it has acquired distinctiveness on the date of rectification and adjudication. This being the case, the objections raised under S. 9 fails as the mark is now protected by virtue of S. 32. S. 32 creates an exception whereby any mark which has been registered in breach of S. 9 will not be invalid if it has acquired distinctiveness after registration and before legal proceedings challenging its validity are initiated.
• Further, the respondents did not know that the applicant existed in the market until 2010. In June 2010 it came to the knowledge of the respondents that the applicant who was engaged in the same trade was also conducting business under the name ‘Bemisal’. Being aggrieved by the activities of the applicant the respondent filed a civil suit C.S (OS)946/2010 for the infringement and passing off of their trade mark by the applicant before the District Court, Saket, New Delhi. The Court granted ex parte interim injunction against the applicant on 6th July, 2010 restraining the applicant from the using the trade mark Bemisal.
• It was also contended that the documents produced by the applicants stating use since `1993 were forged and manipulated and the instant petition was initiated so that the applicant could wriggle out of the restraint order.
The balance of convenience, according to the IPAB, was in favour of the respondents. The documents produced by them showing rice export to several countries including: Kuwait; Baharain; New Zealand; Saudi Arabia; Canada and the value of its aggregated domestic sale figure (over Rs. 69 crores) convinced the Board of its extensive sale in and outside India.
More importantly, these figures also helped the IPAB establish that the respondent’s mark had acquired secondary significance. Holding that the test under S. 9 has been relaxed as it is the market that determines a good trademark, it can be inferred that descriptive marks can be registered provided they acquire distinctiveness before legal proceedings are initiated. To quote “The old theory that some trademarks are incapable of distinguishing the goods/services and can never serve as a badge of origin has been now relaxed under the current Act. It is the market place that determines what is good trade mark subject only to the limitation that the name of goods or services can never be regarded as a trade mark – example apple for apple (goods) or hotel for hotel (services). The threshold test under Section 9 is very minimal indeed.”