Trademark

IPAB removes trade mark Nirma from Metal Products Category


The detergent major Nirma was recently hauled up by the IPAB for its monopolistic attitude regarding the ownership of trademark Nirma. The dispute arose from Nirma Chemical Works’ registration of the mark Nirma in Class 6 which relates to metal goods. Interestingly, Nirma has registered the mark under all 42 classes. In this particular case, Nirmal Industrial Control sought to register the trade mark ‘Nirmal’, which was met with opposition from Nirma on grounds of deceptive similarity between the marks Nirmal and Nirma. The applicant(Nirma Industrial Works) stated that the respondent(Nirma Chemicals) had not used the mark for any of the goods mentioned under class 6, and sought removal of the mark Nirma from the register also. The IPAB struck down the mark from the Register. The Bench of S Usha and V Ravi criticised the Registrar in refusing a plea for registration of the mark Nirmal. The IPAB stated that trade marks are the hallmark of originality but Nirma’s conduct showed “excessive monopolistic problems” and “an absolutist position taken by the registry.”

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The applicant  asserted  that they were the proprietors of the trade mark Nirmal since 1973.  The Registrar of Trade Marks had refused the applicant’s application for registration which was appealed against in the present case. The applicants stated that there was neither use of impugned mark till date, exceeding the maximum stipulated period of five years, nor was there any bonafide intention to use the mark. Evidently, the registration was made with a mala fide intent of blocking genuine use of marks. The respondents applied for the registration of ‘Nirma’ under class 6 only in 1984 as a ‘proposed mark’ whereas the applicants mark Nirmal had been in continuous use since 1973.   Removal was pleaded on the grounds of section 47(1)(a) and section 47(1)(b).

The Respondents contended that they conducted business in diverse sectors ranging from manufacture of detergents and soap to minerals extraction facility in the US. Thus, they tried to make out a case for probable use of the mark ‘Nirma’ in the near future. The respondents also raised some technical issues with the application. Furthermore, the respondents contended that the trade mark Nirma was a well known mark included in the list of well known marks notified by the Registrar of Trade Marks.

The IPAB held that the applicants were undoubtedly the prior users of the mark, and that the respondents had only entered the business of mineral extraction as late as 2006. Further, none of the documents tendered by the respondent showed any proof of use of the trade mark NIRMA for any of the goods for which it was registered in Class 6. The IPAB  also said that the officials had erred hugely when they held that Nirma is deceptively similar to Nirmal : “The registry  should not  act as a hand holding emissary of well-known marks but should stay focused on the merits of each case.” Another gem in the order was “How the registry deluded itself in holding ‘NIRMA’ and ‘NIRMAL’ are one and the same is beyond our comprehension?” The Board concluded by ordering the removal of the mark Nirma on the ground of valid cases made out under sections 47(1)(a) and 47(1)(b).

You can read the order here.

Anubha Sinha

Anubha Sinha

Anubha Sinha - @anubhasinha_ on Twitter — is a graduate of Dr. RML National Law University, Lucknow, and presently works at the Centre for Internet and Society. She also blogs on www.cis-india.org

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