Manmohan Singh, J
1. ADIDAS AG of ADI-DASSLER-STRABE 1-2, 91074 HERZOGENAURAC, Federal Republic of Germany has filed the rectification petition to
the Trade Mark No. 472388 in Class-24 registered in the name of Keshav H. Tulsiani 26/28, Old Hanuman Lane, 2nd Cross Lane, Ramlal ka Sancha,
Ground Floor, Kalbadevi Road, Mumbai-400002.
2. The brief facts are that respondent No. 1 filed application for an identical mark ADIDAS on 19th May 1987 as proposed to be used basis in respect
of textile piece goods included in class 24' in respect of textile piece goods.
3. The petitioner's predecessor-in-interest had filed an opposition to application No. 472388 (now registered mark) in class 24 (being Opp No. BOM-
8932). The said opposition was dismissed by the Assistant Registrar vide order dated Feb 22, 1999.
4. The petitioner filed an appeal against the order to the Bombay High Court (misc. petition No. 23 of 1999 and interim petition No. 30 of 1999). The
Bombay High Court vide order dated Feb 18, 2000 in the Interim Petition No. 30 of 1999 stayed the operation of the Assistant Registrar's order and
ordered the Registrar not to register the mark under Application No. 472388 in class 24.
5. By order dated Feb 7, 2002 the Bombay High Court allowed the Applicant's. Appeal abd remitted the matter back to Assistant Registrar if
trademarks for consideration. The Order is reproduced hereunder:-
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
MISCELLANEOUS PETITION NO. 23 OF 1999
Adidas Salmon Ag. Petitioners
V/s.
Keshav H. Tulsaini & Anr. Respondents
Shri H.W. Kane with Shri Rahul Kadam for Petitioners
Shri R.M. Kadam with Shri Vinog Bhagat for Respondents.
CORAM : D.K. Deshmukh J.
DATE: 7TH FEBRUARY 2002
P.C.:-
1. By this petition, the petitioners challenge the order dated 22nd February 1999 passed by the Assistant Registrar of Trade Marks. By that order, the
Assistant Registrar has dismissed the opposition filed by the petitioners to the application filed by the respondent No. 1 for registration of trade mark.
The first submission that is made by the learned counsel for the petitioners is that the Assistant Registrar has totally excluded from consideration an
affidavit filed on behalf of the petitioners by Shri Gabriele Dirian dated 9th December, 1993 in relation to the trade mark in question from 1978
onwards. The learned counsel submits that non consideration of this vital affidavit amounts to non-application of mind to relevant material on record.
The learned counsel appearing for respondent No. 1 is not in a position to show that the affidavit of Shri Gabriele Dirian has been considered by the
Assistant Registrar. It thus appears that the affidavit of Shri Gabriele Dirian, which is admittedly on record, has not been considered by the Assistant
Registrar, it would be appropriate to remit the proceedings back to the Assistant Registrar for de novo consideration of the opposition on behalf of the
petitioners. The petition therefrom succeeds in part and is allowed, the order impugned dated 22nd February, 1999 is set aside. The Registrar is
directed to consider the opposition No. Bom/8932 submitted by the petitioners in accordance with law. Petition is disposed off.
Parties to act on the copy of this duly authenticated by the Associate/Personal Secretary as true copy.
Certified copy expedited.
6. The matter was pending consideration by the Assistant Registrar and in the meanwhile the mark has been registered as respondent No. 1,
knowingly about the interim order, he was able to obtain the registration certificate contrary to the order dated 7.2.2002 of Hon'ble High Court of
Bombay.
7. The registration certificate for the impugned mark was issued even though the matter was pending with Assistant Registrar of Trademarks,
Mumbai on 29th September, 2006 and opposition proceedings become infructuous.
8. The petitioner in view of issuance of registration certificate filed present cancellation petition at IPAB on 7.4.2011 for removal of the entry of the
registered trademark No. 472388 which was obtained during the pendency of proceedings.
9. Official letter issued taking cancellation petition on record to both parties.
10. The petitioner had also chosen to file the suit against Respondent No. 1 in September, 2011 at Delhi High Court [CS (OS) 2292 of 2011].
Subsequently, it was converted to Commercial Suit CS (Comm) 582 of 2018.
11. Ex-parte interim injunction granted in favour of the Petitioner restraining the Respondent No. 1 from using adidas mark by the Hon'ble High Court.
The said interim order is still continuing. The matter is at the trial stage.
12. Before this tribunal, Miscellaneous Petition (MP/214/2012) filed by petitioner to bring additional documents on record in the rectification petition on
29th March, 2012. On 26th July, 2012, official letter issued by IPAB taking Miscellaneous Petition filed by Petitioner on record.
13. When the matter listed for hearing at IPAB (Mumbai Bench) on 23.2.2017 before Deputy Registrar, Respondent No. 1 appeared and submitted
that he has not received any documents in the past from IPAB and sought time to file reply to the counter statement. The Deputy Registrar mentioned
that as per IPAB's records cancellation petition was dispatched to him and no reply was filed. The Respondent No. 1 was directed to file written reply
to explain why extension of time should be granted to file counter statement and adjourned the hearing.
14. Counter statement along with Miscellaneous Petition was filed by Respondent No. 1 to condone the delay in filing the Counter Statement on
17.8.2017. The prescribed period for filing the counter-statement as per Act is two months. In case sufficient-cause is shown, the time can be
extended by the respondent. In the present case, the rectification was filed in April, 2011 after the service, no counter-statement was filed nor prior to
2017, the application for Form-5 for extension of time was sought. The respondent No. 1 was fully aware in the year 2011-12 that the rectification has
been filed against his trademark as the said fact was mentioned in Civil Suit. Even in the affidavit filed by the respondent No. 1, there was an
admission in this regard. The said affidavit was filed along with MP in 2017.
15. Counter statement along with Miscellaneous Petition received by petitioner, IP Attorneys (counsel for Petitioner) from Meghna Rao (counsel of
Respondent No. 1).
16. Reply to Miscellaneous Petition filed by counsel of Petitioner on 9.2.2018.
17. Matter listed for hearing at IPAB (Mumbai Bench) on 8.5.2018. The hearing was attended by counsel of Petitioner and Respondent No. 1 was
present in person. IPAB dismissed Miscellaneous Petition and imposed costs of Rs. 20,000 on the Respondent No. 1 to be paid to the Petitioner.
Further, the counter statement was disallowed and listed the matter for final arguments on 9th August, 2018.
18. Copy of the order is reproduced hereunder:-
Intellectual Property Appellate Board
Gunna Complex Annexure-1,443 Anna Salai,
Teynampet, Chennai-600 018.
Misc. Petition No. ORA./131/2011/TM/MUM & MP No.
Appeal No: 214/2012 in ORA/131/2011/TM/MUM
Applicant/Appellant Representative
ADIDAS AG RANJAN NARULA ASSOCIATES
Versus
Respondent Representative
KESHAVH. TULSIANI
THE REGISTRAR OF TRADE MARKS
CORAM
HON'BLE SHRI JUSTICE MANMOHAN SINGH : CHAIRMAN
HON'BLE SHSRI SANJEEV KUMAR CHASWAL : TECHNICAL MEM-BER(TM)
ORDER SHEET
08.05.2018
Counsel for the Applicant : Mr. Ranjan Narula
Counsel for the Respondent : Mr. Mayur S. Gala
1. The applicant filed the present rectification petition on 07/04/2011 for removal of trade mark No. 72388 in class 24 registered in the name of
respondent No. 1. Admittedly when the mark was advertised in the Trade Mark Journal, the applicant filed the notice of opposition. However, the
same was dismissed by the Registrar of Trade Marks by order dated 22/02/1999.
2. The applicant thereafter filed an appeal against the said order before the Hon'ble High Court of Bombay being M.P. No. 23 of 1999. The Hon'ble
Bombay High Court by order dated 18/02/2000 granted the interim order in favour of the applicant. Ultimately, on 07.02.2002, the Hon'ble Bombay
High Court allowed the appeal and remanded the matter, back to the Assistant Registrar of Trade Mark. By that time, the registration certificate was
already issued in favour of the respondent No. 1.
3. The applicant had no option to file the present rectification petition. In August, 2017 the respondent No. 1 filed the Miscellaneous Petition for
Extension of Time/Condonation of Delay as well as the counter statement.
4. As per rules, the counter statement is to be filed within two months from the date of receipt of the notice in the rectification petition.
5. In the Miscellaneous Petition for Extension of Time, there are two statements made by the respondent in Para A, it is stated that the applicant has
not been served in the matter till date. Therefore, the counter statement could not be filed.
6. However, the following statement were made in Para B is here under:
'B. That it is only during the proceedings of the infringement suit being 'CS (OS) No. 2292 of 2011 instituted by the Applicant herein sometime in the
month of September, 2011 before the Hon'ble Delhi High Court and upon reading the Plaint of the Applicant herein in the said suit, the respondent No.
1 for the very first time come across the mention of the present proceedings filed on 07th April, 2011 by the applicant herein before the Hon'ble
Tribunal as stated by the Applicant herein in paragraph No. 29 of the said Plaint.
As a matter of fact that the said two statement are made by the respondent No. 1 by way of affidavit, in case both the statement are read together, it
is evident that there is a untrue statement made on the part of the respondent No. 1 who was aware about the filing of the rectification in the month of
September, 2011 as the pleadings are pending before the Hon'ble High Court of Delhi where the respondent No. 1 is under injunction.
7. We have informed that the said interim order still continue where the respondent No. 1 still contesting the suit.
8. In view of the specific statement made in Para B of the affidavit of the respondent No. 1 had clear that there is a delay of more than 6 years in
filing the counter statement.
9. Before filing the Miscellaneous Petition as well as the counter statement, no application for extension of time was sought by the respondent No. 1.
Thus, it is clear that the statement made by the respondent No. 1 by way of affidavit was incorrect statement.
10. The affidavit, it is duly signed by him as well as attested by Notary. Thus, the present Miscellaneous Petition is dismissed with the cost of Rs.
20,000/-.
11. The respondent is warned that in future he will take care about the statement made. Since the Miscellaneous Petition is dismissed. Consequently,
the counter statement of the respondent No. 1 cannot be taken on record. Therefore, the right to file the counter statement is closed.
12. List the present petition for final argument on 09/08/2018, Both the parties are allowed to file the written synopsis. The cost shall be paid by the
respondent No. 1 to the counsel for the applicant by the next date.
19. On 9th August, 2018, the hearing took place and the order was reserved.
20. Let me now consider the case on merit on the case of grounds of rectification and supporting documents filed:
a) The Petitioner and their subsidiaries and affiliates are one of the world leaders in the sporting goods industry. Petitioner's products are distributed in
more than 160 countries worldwide including India.
b) The trade mark adidas was coined in the year 1949 as a combination of Adi & Dassler. The adidas trade mark being a combination of the first
name and surname of the founder is an invented mark and is entitled to the highest degree of protection. The Petitioner has been using the adidas
trade mark in relation to its products continuously and extensively since the year 1949. Copy of the catalogues of the Petitioner's products bearing
adidas mark for years 1960, 1964 and 1970 are filed as Exhibit B. Also catalogues for the years 1986, 1999-2000 are filed.
c) The Petitioner's well known trade mark adidas is also registered in several countries around the world. Copy of few registration/renewal
certificates of adidas marks in Thailand, Singapore, Germany, Philippines, Malaysia, Britain, UK is filed as Exhibit C. The earliest registration in
Singapore dates back to the year 1958. Further, Petitioner owns another registration in Singapore since 1970. The adidas mark is also registered in
Philippines since 1971. The registration certificate notes that the adidas mark has been used in Philippines since 1st October 1970. The adidas mark is
registered in Malaysia since 1970. List of worldwide registrations for adidas marks is also a part of Exhibit C. The earliest registration of adidas mark
dates back to the year 1954.
d) The Petitioner's products under adidas brand have been endorsed by football teams and leading football clubs such as Bayern Munich of Germany,
AC Milan of Italy and Real Madrid of Spain to name a few. In fact, in 1958 and 1962 World Cup Football, a majority of national teams wore the shoes
manufactured by the Petitioner. Every World Cup since 1970 has been played with an adidas football being the official World Cup ball. In Tennis,
some of the biggest stars including Rod Laver, Steffi Graf, Ana Ivanovic, Novak Djokovic wear the shoes/apparel bearing the trademark adidas.
e) The successful Indian Tennis duo of Learider Paes and Mahesh Bhupathi and Sania Mirza have endorsed the products of the Petitioner. Sachin
Tendulkar wears the products of the Petitioner. Muhammed Ali (greatest Boxer of all time), wore adidas shoes. Copy of extracts from
newspapers/magazines evidencing endorsement of adidas brand by David Beckham, Leo Messi (Football superstars), Novak Djokovic (Tennis),
Sachin Tendulkar (Cricket) and Mohammad Ali (Boxing) is filed as Exhibit D. Copy of promotional material bearing adidas trademark of the Petitioner
is filed as Exhibit F.
f) Due to the global success of its adidas branded products, they are widely recognized all over the world. adidas is a valuable asset to the Petitioner's
business and enjoys enviable goodwill and reputation amongst the purchasing public. The figures reflecting the Petitioner's net sales (worldwide) for
the years 2000 -- 2009 are provided in paragraph 8 of the affidavit. The Petitioner has spent huge sums of money on advertisement and sales
promotion of its adidas products.
g) As per survey conducted, the Petitioner's adidas mark has been declared as a well-known trade mark in Russia. Copy of the survey report
declaring adidas as well-known in Russia is filed as Exhibit H. Further, the Petitioner's adidas mark has been recognized as well known in Thailand
and Portuguese. Copy of decisions recognizing adidas mark as well known in other jurisdictions is filed as Exhibit G.
h) The Petitioner's products bearing adidas mark are freely available in India since 1989 and have been well known to people in India for a long time.
Even before that Indians traveling abroad brought these products for their personal use and for gifts to their friends. The goods under the adidas mark
are available in duty free shops on Indian Airports and other (sic) Hong Kong, Thailand, Dubai and Singapore which are popular tourist destinations
and have large Indian ex-pat population. Hence, even prior to 1989, the trademark adidas was well known because of purchase and import of their
products by Indians traveling abroad, extensive broadcast of sporting events either sponsored by the Petitioner or where players uses the Petitioner's
products and extensive advertisement in newspapers and magazines abroad which were freely available in India. Copy of sale invoices for the years
1996 to 2010 issued by Petitioner's subsidiary in India filed along with MP 214/2012 are available. Additionally, news articles bearing adidas mark have
regularly appeared in print and online media. News articles in various newspapers/magazines in India bearing adidas mark are available. The articles
were published in News Today, Deccan Herald, Statesman, Indian Express, Business Line and various other publications. Additionally, various Indian
cricketers have appeared in advertisements bearing adidas products. For instance - Sachin Tendulkar, Zaheer Khan, Virender Sehwag and Ashish
Nehra. Please refer to page Nos. 53 to 91(A) filed along with MP 214/2012. List of sports persons and few Indian Premier League teams (T-20
cricket tournament hosted in India) promoting adidas products is available on record. i) The Petitioner has also filed extracts from the annual returns
for one years 2005-2006, 2006-2007, 2007-2008, 2008-2009 of Adidas India Marketing Private Limited (Petitioner's Indian subsidiary) is filed as
Exhibit I. Copy of newspaper clippings bearing references to Petitioner's adidas trademark is filed as Exhibit J.
21. Admittedly, the petitioner is registered proprietor of the adidas trademarks in India, details are as follows:
Copies of the registration certificates of registration Nos. 538067, 538066, 271863 and 271864 are filed.
22. The petitioner trade mark adidas is also registered in a number of countries around the world. The earliest registration for the mark dates back to
the year 1954.
23. It is alleged that the petitioner products under adidas brand have been endorsed by the French World Cup Football winning squad, the Spanish and
German national football teams, leading football clubs such as Bayern Munich of Germany, Olympique de Marseille of France, AC Milan of Italy and
Real Madrid of Spain to name a few. The legendary footballer, Franz Beckenbauer, the only sportsman to be both a captain and coach of a World
Cup football winning squad, endorsed the products of the applicant as do the present stars, David Becham of England, Zinedine Zidane, the hero of the
French World Cup final, and Patrick Kluivert of Netherlands. In fact, in the 1958 and 1968 Word Cup Football, a majority of national teams wore the
shoes manufactured by the petitioner. Every World Cup since 1970 has been played with an adidas football being the official World Cup ball. In
Tennis, some of the biggest stars including Rod Laver, Steffi Graf, Ana Ivanovic, Noval Djokovic wear the shoes/apparel bearing the trademark
adidas. The successful Indian Tennis duo of Leander Paes and Mahesh Bhupathl endorse the products of the petitioner. Arguably the greatest Boxer
of all time, Muhammed All, wore adidas shoes. Also arguably the best batsman in the world and the Indian legend Sachin Tendulkar wears the
products of the plaintiff, adidas shoes are also worn by middle and long distance athletic champion Haile Gebrselassi and Noureddine Morceli. The LA
Lakers basketball star Kobe Bryant wears adidas shoes and New Zealand's national rugby team, popularly referred to as the ""All Blacks"", wear
adidas branded shirts.
24. The petitioner submits that due to the global success of its adidas branded products, they are widely recognized all over the world. Due to the
maintenance of exacting and constant high standards of quality and effectiveness, Applicant's adidas-branded goods have the distinction of being one
of the Applicant's best known and popular products, and the mark adidashas become a source Identifier for the Applicant and its group of companies.
Needless to say, adidas is a valuable asset to the Applicant's business given the Immeasurable reputation and goodwill amongst the purchasing public.
Reproduced in the table below, are figures reflecting the Applicant's (worldwide) net sales for the period 2000 -- 2009:
25. It is specifically alleged that the petitioner has spent huge sums of money on the advertisement and sales promotion of its adidas product and by
virtue of long, continuous and extensive use all over the world and the promotion of the trade mark adidas, the Applicant has earned substantial
goodwill and reputation-worldwide. The Applicant's adidas branded running shoes are one of the most well-known and sought after running shoes In
the world. The Applicant's adidas branded shoes are well recognized for their durability and traction world over. As a result thereof, the public and the
members of the trade have come to associate the said trade mark with the Applicant to the exclusion of all others. Moreover, factors such as the
consistently superior quality, proven efficacy of the product, the strict quality control and the high technical standards applied by the Applicant in the
course of their business have also contributed tremendously in building an enduring public trust for the Applicant' business and products. I say that the
Applicant's mark adidas is a well-known mark as envisaged under the provisions of Section 2(1)(zg) and the relevant provisions of Section 11 of the
Trade Marks Act, 1999. In view of the above, the adidas mark is entitled to protection against any misappropriation by third parties. Further the
Applicant's adidas mark has been recognized as well known in various jurisdictions across the world. Also, as per the surveys conducted in different
countries across the world, the Applicant's adidas mark is well known.
26. The popularity and the fame of the applicant's adidas trade mark have also transcended the physical boundaries and have acquired trans-border
reputation in India. The reputation and fame of the applicant's trade mark has also extended throughout the territory of India on account of availability
of goods in every city of India and world over due to the extensive advertisements and other promotional activities by the applicant for the past several
years. The advertising of the said product has targeted all age groups, and the applicant has spent a considerable amount by way of promotional
expenses on the products sold under the said trade mark adidas. The notoriety of the applicant's mark in India if further strengthened by the fact that
the applicant is regularly quoted in leading newspapers/magazines for its popularity and success in the Indian sports footwear, apparel, and accessories
market.
27. By virtue of prior international registration, immense reputation, actual use and sales in India, spill-over of the said reputation into India, long-
standing use, vast publicity and promotion, the trademark adidas of the Applicant has earned substantial goodwill and reputation and members of the
trade and the public associate the said trademarks with the Applicant and no one else. The reputation and goodwill of the trade mark adidas extends
throughout India and abroad.
28. In view of the nature of evidence filed, we are of the considered view that the Petitioner's adidas mark is a well-known mark as envisaged under
the provisions of Section 2(1)(zg) of the Trade Marks Act, 1999. Copy of the brand rankings in Business week (Indian magazine), and Interbrand
(independent brand ranking organization) to prove that adidas brand is consistently ranked amongst Top 100 Global Brands is filed as Exhibit K. The
adidas brand was ranked 70 in 2001, 68 in 2002, 67 in 2003, 69 in 2004, 69 in 2005, 68 in 2007 in Business week magazine. Further, it was ranked No.
71 in Best Global Brands, 2006 and Best Global Brands, 2007. Copy of few judgments passed by Delhi High Court in the year 2005 in favour of the
Petitioner and restraining the defendants from using marks identical/deceptively similar to ADIDAS mark are also filed.
29. Person aggrieved
The following are reasons given:-
i) The applicant's predecessor In interest had filed an opposition to application number 472388 (now registered mark) In class 24 (being Opp No.
BOM-8932). The said opposition was dismissed by the Assistant Registrar vide order dated Feb 22, 1999.
ii) The applicant preferred an appeal against the order to the Bombay High Court (misc. petition No. 23 of 1999 and Interim petition No. 30 of 1999).
The Bombay High Court vide order dated Feb 18, 2000 in the Interim Petition No. 30 of 1999 stayed the operation of the Assistant Registrar's order
and ordered the Registrar not to register the mark under Application No. 472388 in class 24.
iii) By order dated Feb 7, 2002 the Bombay High Court allowed the Applicant's Appeal and remitted the matter back to Assistant Registrar of
trademarks for consideration,
iv) The matter was pending consideration by the Assistant Registrar and in the meanwhile the mark has been wrongly registered. Thus applicant is a
person aggrieved by existence of an identical mark Adidas on the register.
30. From the material placed on record by the petitioner, it is evident that the Respondent No. 1 must be aware about the trademark of petitioner who
has no explanation for adoption of the impugned mark. The Respondent No. 1 was fully aware of the Petitioner's well known trade mark adidas at the
time of adoption of the impugned mark in 1987 considering the Petitioner's adidasmark has been registered in India since 1971 and used in India since
1989. The Respondent No. 1 is not a bona fide proprietor of the impugned mark under Section 18(1) of the Act. Its adoption was tainted and in order
to encash goodwill and reputation associated with the Petitioner's prior used, registered and well-known adidas trademark. The filing of application for
registration itself was fraud as on the date of application, the claim was fraudulent and tainted. It is settled proposition that the stolen property cannot
become rightful property in any manner.
31. The mark applied was proposed to be used. The respondent No. 1 was under injunction since 2011, for the last seven years the interim order is
continuing. It is settled law that if adoption of identical mark to the famous and well known trade mark or rightful party, the adoption itself was bad. In
the present case, adidas of petitioner amounts to gross violation of the common law and statutory rights of the Petitioner in adidas mark. The impugned
mark is likely to cause deception and confusion amongst trade and public and dilute distinctive character of the Petitioner's well known trademark
adidas, In the opposition proceedings as well as in the rectification proceedings, the relevant date of user claimed is the date of application. In the
present case, on the date of application, there was no user at all. The application was filed as proposed to be used. The subsequent user, if any, is
irrelevant even-otherwise the respondent No. 1 is under injunction since 2011.
32. The subsequent adoption of an identical mark for similar goods by the Respondent No. 1 is bound to cause confusion and deception in the minds of
members of the trade and public as to the source or origin of the goods under it. The registration of the impugned mark is contrary to the provisions of
Section 9(2)(a) of the Act which prohibits registration of a mark if it is of such a nature so as to deceive public or cause confusion.
33. The confusion and deception on account of subsequent adoption of identical impugned mark in respect of similar goods is inevitable. It is likely to
create unmistakable impression in the minds of consumers that goods of the Petitioner belong to or are somehow associated with the Respondent No.
1; which is absolutely false. Therefore, subsequent adoption of the impugned mark by Respondent No. 1 is illegitimate and aimed at causing confusion
and deception in the course of trade. Therefore, the registration of impugned mark of the Respondent No. 1 is barred by Section 11(1) of the Act. It is
submitted that the Petitioner has also filed a suit for passing off and trade mark infringement against the Applicant at Delhi High Court CS (COMM)
582 of 2018. By order dated 19th September 2011, the Court held that Petitioner has established prima facie case and granted ex-parte interim
injunction restraining the Respondent No. 1 from using adidas name.
34. The adidasmark has been extensively used by the Petitioner since 1949 worldwide and since 1989 in India. On account of its extensive use in
various jurisdictions including India, the Petitioner's mark adidas is exclusively associated with it and fulfills the criteria of a well-known mark laid
down under the Act. Taking into account the immense popularity of the Petitioner's mark adidas, the Respondent No. 1 has no plausible reason for
subsequent adoption of an identical impugned mark for similar goods except with a view to derive undue advantage. Thus, if registration is granted to
the impugned mark, it would be detrimental to distinctive character or repute of the Petitioner's mark adidas. Therefore, registration of the impugned
mark in favour of Respondent No. 1 is in contravention of Section 11(2) of the Act.
35. In the present case, no doubt, the goods of the petitioner were available all point of time in every part of India, directly and indirectly. Even prior to
the date of application for registration filed by the respondent No. 1 who has applied as proposed to be used, the goods were also being advertised in
well-known magazines and other modern media. The principles of trans-border reputation were recognized by the Supreme Court in the case of N.R.
Dongre v. Whirlpool Corporation, (1996) 5 SCC 714 : 1996 (16) PTC 583 (SC), wherein it was stated:
10. Even advertisement of trademark without existence of goods in the market is also to be considered as use of the trademark. It is also not
necessary however that the association of the plaintiffs marks with his goods should be known all over the country or to every person in the area
where it is known best
36. It is the admitted position that the Supreme Court has clearly held that the real test for establishing prior use is to determine who is first in the
world market. In the case of Milmet Oftho Industries & Ors. v. Allergan Inc., (2004) 12 SCC 624, the Supreme Court has held as under:
The Court has to keep in mind the possibility that with the passage of time, some conflict may occur between the use of the mark by the Applicant in
India and the user by the overseas company. The Court must ensure that public interest is in no way imperiled. It must also be remembered that
nowadays goods are widely advertised in newspapers, periodicals, magazines and other media which is available in the country. This results in a
product acquiring a worldwide reputation. Thus, if a mark in respect of a drug is associated with the Respondents worldwide it would lead to an
anomalous situation if an identical Mark in respect of a similar drug is allowed to be sold in India. However one note of caution must be expressed.
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."" (para 8)
In the present case, the marks are the same. They are in respect of pharmaceutical products. The mere-fact that the Respondents have not been
using the mark in India would be irrelevant if they were first in the world market."" (para 9)
37. In the case of Cadbury U.K. Limited & Anr. v. Lotte India Corporation Ltd., reported in 2014 (57) PTC 422 (Delhi) speaking through my
respected brother Dr. Justice S. Murahdhar wherein the decision of law relating to trans-border"" reputation has been further strengthened and has
been taken to another level wherein the court has not merely relied upon the decision of Milment (supra) and Whirlpool (supra) but has also extended
the principle of trans-border reputation by observing that the existence of a merchant on web pages which are of foreign origin and social media are
sufficient to show the trans-border nature of reputation without having any activity in India at the relevant time. Though it is very broad extension of
the concept of trans-border reputation, but it is a question of fact in each case as to how the internet documents are sufficient to show the global
character of the trademark and the reputation attached to the same. The impact of the said decision which has been given very recently is yet to be
seen and analyzed by the other Courts in India in the upcoming times. Effectively, the concept of trans-border reputation and goodwill is interesting in
academic sense. However, due to advent of internet media, international travel, the insistence on the localized business as well as trans-border
reputation is nowadays more or less dealt with in a kind of presumptive approach rather than by actual establishment of the same. As the international
businesses grow and proximity between the markets would increase, over the time this concept will become weaker and on one good day world will
be treated as one market and injunction order could be passed against the registered proprietor on the basis of unregistered trademark in an action of
passing off as held in the case of Whirlpool (supra).
38. For the nature of business and goods are involved, the both set of goods clothing and readymade almost similar, it is apparent that there is an
inevitable deception, consumers are likely to erroneously assume that the Petitioner has either licensed, invested or is somehow associated with the
products of the Respondent No. 1 under the impugned mark. The registration and use, if any of the impugned mark by Respondent No. 1 would lend
legal sanctity to the Respondent No. 1's attempt to pass off its goods and business as and for those of the Petitioner. Not only will it seriously injure,
public interest, it will also irreparably damage Petitioner's goodwill and reputation associated with the mark adidas. Hence, the impugned mark ought to
be removed under Section 11(3) of the Act.
39. As far as common fields of activities of business of two parties are concerned, description of goods are almost the same. Clothing, textiles goods
are sold and purchased by the same customer. They are sold in the same market and shops. Actually, readymade garments are made of textiles and
clothing. The classification of goods are mainly meant for guideline purpose. Still since the contention is raised the said issue is being dealt with, though
it is not argued on behalf of the defendants that there could not be any confusion and deception, rather the defendants' claim is that they are the first
user and prior adopter and user of the mark in question. Even otherwise, law in this regard is quite settled.
(i) In the case of Essel Packaging Ltd. v. Essel Tea Exports Ltd., 1999 PTC (19) 521, the High Court of Bombay held that common field of activity is
not conclusive for deciding whether there can be passing off action, although at one point of time the said test was treated as conclusive. It was held
that with the passage of time the law of requirements common field of activity in a passing off action has undergone a radical change and as such
there was no requirement for a common field of activity to found a claim on passing off action, because the real question in each of such cases is,
whether there is, as a result of misrepresentation, a real likelihood of confusion or deception of the public and consequent damage to the plaintiff is
likely to be caused and if that is taken to be the test then the focus is shifted from the external objective test of making comparison of activities of the
parties, to the state of mind of public, in deciding whether it will be confused.
(ii) In the case of Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142 : 1950-2000 (22) PTC (Suppl) (1) 13 (SC), the
Supreme Court held as under:
20. It is true that in both the above-mentioned cases the two competing trademarks were absolutely identical which is not the case here. But that in
our opinion makes no difference. The absolute identity of the two competing marks or their close resemblance is only one of the tests for determining
the question of likelihood of deception or confusion. Trade connection between different goods is another such test. Ex hypothesis, this latter test
applies only when the goods are different. These tests are independent tests. There is no reason why the test of trade connection between different
goods should not apply where the competing marks closely resemble each other just as much as it applies, as held in the ""Black Magic"" and ""Panda
cases, where the competing marks were identical. Whether by applying these tests in a particular case the conclusion that there is likelihood of
deception or confusion should be arrived at would depend on all the facts of the case.
(iii) In the case of Bajaj Electricals. Limited v. Metals and Allied Products and Anr., AIR 1988 Bombay 167 : 1988 (8) PTC 133 (Bom), the Court
held as under:
8. Mr. Tulzapurkar submitted that it is not really necessary to consider different judgments of the House of Lords because Lord Denning had also
observed that the defendants would have no defence if the user of the name of the defendants is likely to deceive irrespective of the fact whether the
user was honest and that conclusion of Lord Denning is also approved by Lord Devlin who was in minority. Mr. Tulzapurkar submitted that in the
present case, there is a specific evidence on record that the word ""Bajaj"" was used by the defendants dishonestly and deliberately with a view to take
advantage of the reputation earned by the plaintiffs. The learned counsel referred to us to a passage at p. 408 in Kerly's Law of Trademarks and
Trade Names, Twelfth Edition, and submitted that once intent to deceive is established, then the defendants could not claim that they were entitled to
use word ""Bajaj"" as a trading sign. In support of the submission, the learned counsel invited our attention to the brochure (Ex. 'G' annexed to the plaint)
wherein the defendants have claimed that Bajaj quality is well accepted and appreciated internationally. Mr. Tulzapurkar points out and it is not in
dispute that the defendants have never marketed their goods abroad, nor have they even claimed that their goods are sold all over the country. Mr.
Tulzapurkar is right and we agree with the learned trial Judge that the brochure published in the year 1987 is issued with a view to cause deception or
confusion in the mind of the customers. The word 'Bajaj' has quite a great reputation in the country and abroad and the publication of the brochure in
year 1987 clearly indicates that the defendants were not honest in the use of the word ""Bajaj"" and an attempt was made to pass off their goods with
the mark ""Bajaj"" with the intention to secure advantage of the reputation earned by the plaintiffs. The submission of Mr. Tulzapurkar was controverted
by Mr. Cooper by urging that the goods manufactured by the plaintiffs and the defendants are totally different and, therefore, there is no cause or
apprehension that the use of the word ""Bajaj"" is likely to cause deception or confusion in the mind of the public. Mr. Cooper submitted that the articles
manufactured by the defendants are utensils and those marketed by the plaintiffs are electrical goods or appliances and, therefore, it is unlikely that the
purchasers of utensils would be confused by the use of the word ""Bajaj"" on the articles of the defendants. The learned counsel submitted that the
plaintiffs' goods are sold under registered mark under Class 11, while the goods manufactured by the defendants fall under Class 21. Class 11 refers
to installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, and other purposes, while Class 21 refers to small
domestic utensils and containers (not of precious metal nor coated therewith), The submission of Mr. Cooper is that as the articles manufactured by
the plaintiffs and the defendants are different, the question of deception would not arise. It is not possible to accept the submission. The articles
manufactured by the plaintiffs and the defendants are kitchen wares and are commonly used in almost every kitchen in this country. The mere fact
that the articles manufactured by the contesting parties are different in nature is no answer to the claim that the defendants are guilty of passing off.
We entirely agree with the conclusion recorded by the learned trial Judge that there is identity of the goods, the mark and the consumer and the goods
manufactures by both the plaintiffs and the defendants are sold under one shop. Mr. Cooper complained that the electric goods manufactured by the
plaintiffs and the stainless steel utensils manufactured by the defendants are not sold in one shop. The submission is not accurate because it is
common experience that kitchenware or kitchen appliances like mixers, grinders, pressure cookers, and stainless steel utensils are sold in the same
shop. At this interim stage, we are not prepared to accept the submission of Mr. Cooper on this count and we see no reason to take different view
from that of the learned single Judge on this aspect. In our judgment, prima facie, it is clear that the defendants have intentionally and dishonestly tried
to pass off their goods by use of name ""Bajaj"".
The confusion and deception in the present case is so apparent. It is also a fact that despite of closing the right to file the counter-statement, the
matter is being decided on merit as per the scheme of the act. The classification is merely a guiding factor. Once if confusion and deception is
apparent, no justification of falling the goods in different class is wholly immaterial. Even otherwise, in the present case, adidas is a well-known trade
mark and hence it cannot be used by third party in relation to any description of goods.
40. The respondent No. 1 has not filed the counter statement in prescribed period of time. In the Miscellaneous petition to bring on record the counter
statement, the affidavit filed was incorrect. The Respondent No. 1 has no justification for subsequent adoption of the impugned mark which is identical
to Petitioner's prior used, prior registered and well-known trade mark adidas. Evidently, the Respondent No. 1 intends to derive unfair advantage of
the goodwill and reputation enjoyed by the Petitioner in its trade mark adidas. The subsequent adoption of identical impugned mark by the Respondent
No. 1 amounts to misappropriation of the goodwill and reputation enjoyed by the Petitioner in its trade mark adidas. The impugned registration is liable
to be rejected under Section 11(10) of the Act.
41. The relevant date of user is always on the date of application. At the time of filing of the application, the application was filed as proposed to be
used. The cancellation of the impugned mark will not cause inconvenience to the Applicant. In any case, the adoption of the impugned mark is
illegitimate as it seeks to misappropriate the goodwill and reputation associated with the Opponent's prior used adidas trade mark. Thus, the
Respondent No. 1 cannot take the benefit of the provision of Section 12 of the Act. The language of section 12(3) of Trade and Merchandise Act
speaks for itself that the user must be honest and concurrent. In the present case, the mark applied for was proposed to be used and the adoption was
dishonest on the fact of record.
42. The Respondent No. 1 has no explanation for adoption of the impugned mark but to trade and benefit from the extensive reputation and goodwill
enjoyed by the Applicant. The Respondent No. 1 was fully aware of the Petitioner's well-known mark adidas and adopted identical impugned mark,
thus he cannot claim to be bona fide proprietor within the meaning of Section 18(1) of the Act especially since its adoption is tainted and aimed to
trade upon and benefit from the goodwill and reputation associated with Applicant's adidas trademark. The oral explanation given by the respondent
No. 1 is baseless and without any substance.
43. The Hon'ble Delhi Court in ""Hindustan Pencils Pvt. Ltd. v. India Stationery: AIR 1990 Delhi 19: 1989 (9) PTC 61 (Del) has observed as under:
Paragraph 31 ""..If a party, for no apparent or a valid reason, adopts, with or without modifications, a mark belonging to another, whether registered or
not, it will be difficult for that party to avoid an order of injunction because the Court may rightly assume that such adoption of the mark by the party
was not an honest one. The Court would be justified in concluding that the defendant, in such an action, wanted to cash in on the plaintiffs name and
reputation and that was the sole, primary or the real motive of the defendant adopting such a mark"".
Paragraph 39 ""Any infringer who uses or adopts someone else's mark must be aware of the consequences which may follow. The defendants ran the
risk in using a mark which belonged to someone else. It continued its business un-interruptedly for a number of years before any action was taken by
the plaintiffs against it.
44. The contentions of the Petitioner and the documents filed along with rectification petition remain unrebutted as counter statement not having been
taken on record is deemed not to have been filed. In the circumstances, the averments in the rectification petition and the documents filed by the
Petitioner are deemed to be admitted by the Respondent No. 1. Moreover, the documents filed by the Petitioner clearly prove that it is prior adopter of
adidas mark (since 1949) and registered proprietor of the adidas mark worldwide including in India. The adidas mark has been registered since 1971
and used since 1989 in India. The subsequent adoption of the impugned mark in 1987 and registration certificate issued in the year 2006 is clearly
illegitimate and the registration is wrongly remaining on the Register.
45. The conduct of the Respondent No. 1 establishes that it was intentional dishonest adoption of the impugned mark by the Respondent No. 1. Thus,
it is obvious that the impugned mark has been adopted to encash upon Petitioner's prior adopted, registered and well-known adidas mark.
46. In the light of above, we are of the considered view that the entry made in the register without sufficient cause and/or is an entry wrongly
remaining on the Register. Therefore, liable to expunged under Section 57 of the Act. The Petitioner is a ""person aggrieved"" by the existence of the
impugned mark for the reasons already mentioned in the petition and accompanying statement of case. The existence of the impugned mark on the
Register is not only prejudicial to Petitioner's own interests, but also public at large.
47. In order to maintain the parity of the register, the impugned mark i.e. registration of the impugned mark is liable to be removed.
48. Accordingly, the impugned mark adidas registered under No. 472388 in class 24 in the name of respondent No. 1 is removed from the Register of
Trade Mark. The respondent No. 2 is directed to take the necessary steps forthwith for removal.
Plea of recusal raised by the respondent No. 1
49. Mr. Ranjan Narula, learned counsel appearing on behalf of petition has informed that after passing the order dated 8.5.2018 whereby the
respondent No. 1's MP was dismissed; he had filed the writ petition before the Hon'ble High Court wherein he has made false scandalous allegations
which are uncalled for. Even at the time of hearing, the similar request was made.
50. All the matters are decided on merit. IPAB have no Vice Chairman or any other technical member. The Chairman who was earlier practicing as
an advocate between (1980-2008) on IP side before elevation as a Judge to the bench of Hon'ble High Court. During the 28 years of practice on IP
side, he has appeared and argued hundreds of matters pertaining to Trademarks, copy right and patent matters almost on behalf of all solicitor
companies in India and abroad (or appeared against them) apart the matters received from the clients directly.
51. We may also clarify that adidas was never the client of Chairman or the Member. Both do not appear for said client in any court in India.
Therefore, at the same time, merely on the basis of false and frivolous allegations or by threat and pressure, we have decided not to succumb to the
unreasonable demand. Therefore, the matter is being decided on merit despite of having no rebuttal of the case of the petitioner nor any pleadings on
behalf of respondent No. 1.
52. In the case of Subrata Roy Sahara v. Union of India & Ors. reported in AIR 2014 SC 3241, the Hon'ble Supreme Court of India speaking through
Justice J.S. Khehar has held, while confirming the view of the High Court of Delhi, that a party cannot insist on a Judge for recusal. It has become a
new trend emerging when the party who has a weak case on merit try to play mischief in this manner. His Lordship held as under:-
9. But Mr. C.A. Sundaram, another Senior Counsel representing the petitioner, distanced himself from the above submissions. He informed the Court,
... I am not invoking the doctrine of bias, as has been alleged..."" We are of the view, that a genuine plea of bias alone, could have caused us to
withdraw from the matter, and require it to be heard by some other Bench. Detailed submissions on the allegations constituting bias, were addressed
well after proceedings had gone on for a few weeks, the same have been dealt with separately (under heading VLH, ""Whether the impugned order
dated 4.3.2014, is visited on account of bias?) Based on the submissions advanced by learned counsel, we could not persuade ourselves in accepting
the prayer for recusal.
10. We have recorded the above narration, lest we are accused of not correctly depicting the submissions, as they were canvassed before us. In our
understanding, the oath of our office, required us to go ahead with the hearing. And not to be overawed by such submissions. In our view, not hearing
the matter, would constitute an act in breach of our oath of office, which mandates us to perform the duties of our office, to the best of our ability,
without fear or favour, affection or ill will. This is certainly not the first time, when solicitation for recusal has been sought by learned counsel. Such a
recorded peremptory prayer, was made by Mr. R.K. Anand, an eminent Senior Advocate, before the High Court of Delhi, seeking the recusal of Mr.
Justice Manmohan Sarin from hearing his personal case. Mr. Justice Manmohan Sarin while declining the request made by Mr. R.K. Anand, observed
as under:
The path of recusal is very often a convenient and a soft option. This is especially so since a Judge really has no vested interest in doing & particular
matter. However, the oath of office taken under Article 219 of the Constitution of India enjoins the Judge to duly and faithfully and to the best of his
knowledge and judgment, perform the duties of office without fear or favour, affection or ill will while upholding the constitution and the laws. In a
case, where unfounded and motivated allegations of bias are sought to be made with a view of forum hunting/Bench preference or brow-beating the
Court, then, succumbing to such a pressure would tantamount to not fulfilling the oath of office.'
The above determination of the High Court of Delhi was assailed before this Court in R.K. Anand v. Delhi High Court, (2009) 8 SCC 106 : 2009 AIR
SCW 6876). The determination of the High Court whereby Air. Justice Manmohan Sarin declined to withdraw from the hearing of the case came to
be upheld, with the following observations:
53. Hon'ble Supreme Court speaking through Mr. Justice Khehar once pronounced in The Recusal order in NJAC case Supreme Court Advocates-
on-Record Association and another v. Union of India Writ Petition (Civil) No. 13 of 2015, decided on October 16, 2015, that:-
A Judge may recuse at his own, from a case entrusted to him by the Chief Justice. That would be a matter of his own choosing. But recusal at the
asking of a litigating party, unless justified, must never be ace acceded to. For that would give the impression, of the Judge had been scared out of the
case, just by the force of the objection. A Judge before he assumes his office, takes an oath to discharge his duties without fear or favour. He would
breach his oath of office, if he accepts a prayer for recusal, unless justified. It is my duty to discharge my responsibility with absolute earnestness and
sincerity. It is my duty to abide by my oath of office, to uphold the Constitution and the laws. My decision to continue to be part of the Bench, flows
from the oath which I took, at the time of my elevation to this Court.
54. In the case of Ganesh Ramkisan Bairagi v. Parwatabai Tukaram Appa Landge & Ors. reported in 2016 (4) ABR 699, Hon'ble Mr. Justice R.K.
Deshpande had this to observe and hold:-
14. Again, at this stage, Sh. M.V.V. Bhangde, the learned counsel for the appellant/defendant No. 2, submits that the office be given direction not to
list the matters in which he is appearing for any of the parties before this Court. In other words, he submits that I should recuse from taking up the
matters wherein Shri. V.V. Bhangde is appearing for any of the parties. The submission shocks my conscience, particularly when it suddenly came
from a regular practitioner from this Court, who was being looked at as an experienced and responsible officer of the Court. The entire arguments in
this matter went on smoothly, patiently and with interest. After conclusion of the arguments, both the learned counsel were asked as to whether they
intend to make any additional submissions, and thereafter the dictation commenced as per the usual practice. I need not delve upon any further and 1
refrain from making any comments against Shri. V.V. Bhangde. However, the increasing trend need to be commented upon; so as to caution the
lawyers and the litigants about the consequences of it, which can be avoided.
15. A lawyer has his own choice of appearing before the Court presided over by a particular Judge to conduct the matter. If his matter is listed before
the Court where he does not want to appear, he is at liberty return such matter and/or fees to his chent and can ask him to engage some other lawyer
or he may refuse to accept the matter if he has not already filed his vakalatnama. A judge may also recuse himself from taking up the matters of the
lawyers with whom he is closely related or where his conscience does not permit him to take up the matters of some lawyers. In these situations,
there may not be any problem either with a Judge or a lawyer, but where the Court passed an order against a particular lawyer not to appear in his
Court, it takes a colour of penalty or punishment to such a lawyer, which may result in taking some disciplinary action against him by the Bar Council
of India or of State, which issued him a Stand of Practice. Such a stage by a Court may be construed of black-listing of a lawyer. Seldom, such event
occurs, and the Courts also normally avoid it.
16. A tendency has started growing amongst lawyers to dictate a Judge to recuse from taking up his matters when the decision goes against his client
or his wavelength does not match with the Judge or he does not find comfort in conducting the matter or for some such reasons. This is an insult
personally to a Judge. Such reactions are normally experienced when the lawyers take heavy fees from their clients with an assurance to bring the
result of the cases in then-favour or to impress upon the clients sitting in the court room during the course of hearing, the boldness which he possesses
to browbeat the Court. If a lawyer exercises his choice of not conducting the matter, he loses his client and fees, which he does not want to do. If a
Judge accedes to such demand of a lawyer for recusal, the effect is threefold (i) the confidence of a lawyer to browbeat the Court is boosted (ii) a
lawyer gets rid of the Court where he finds discomfort in conducting the matter, and (Hi) it creates an additional source of income for him, from the
other lawyers and the litigants, who do not want their matters listed or dealt with by such a Judge. This promotes the practice of Bench hunting. No
system of justice can tolerate such practice by a lawyer and the same is required to be curbed and deprecated.
17. Recently, in the judgment, which I have delivered in Civil Revision Application No. 26 of 2016 on 6-6-2016 (Satish Mahadeorao Uke v. The
Registrar, High Court of Bombay, Bench at Nagpur, Nagpur). I have observed in para 25 thereof as under:
25. A Judge may recuse at his own choice from a case entrusted to him by the Chief Justice and it would be a matter of his own choosing. But
recusal at the asking of the litigating party, unless justified, must never be acceded to. This is what the Apex Court has held recently in NJAC case
instituted by the Supreme Court Advocates on Record Association and Another v. Union of India, reported in 2015 (11) SCALE 1 : (2015 AIR SCW
5457). The question of recusal is normally decided by a Judge on the basis of his personal or private interest in the subject-matter of the litigation, his
intimacy with the party/parties to a Us before him, his perception about conflict of interest in taking up the matter, and his own conscience. Such
decision does not depend upon the dictates of lawyers or litigants.......
18. Recusal to take the matters to be conducted by some lawyers, is a matter of Judge's own choosing and it cannot be at the dictates of the lawyers.
What a Judge has to see is that he performs his duty of deciding the matters before him without fear or favour, affection or ill will. He has to keep in
mind the principle that the justice should not only be done, but it must appear to have been done. The decision of recusal to take the matters of
lawyers, depends upon the Judge's personal relations or intimacy with such lawyers, and his own conscience to decide a case by observing the oath
which he has taken while occupying the position as a Judge. Ultimately, a Judge is also a human being and the Judges come from different strata of
the Society, having their own views, ideas, angle or perception, based on the varied individual experience in life, which may or may not match with
each other's or with some lawyers or litigants. However, this cannot be a reason to avoid conducting the matters listed before such a Judge or the
Judges. Once the constitutional authority of a Judge or the Judges to adjudicate the matters is accepted, it cannot be lowered down by asking him or
them to recuse to hear and decide the matter.
19. To prevent a Judge or the Judges from performing his or their duties in this fashion causes distraction of attention in the judicial proceedings, which
amounts to interference in the course of justice. Merely because a lawyer, litigant or public at large feels that the approach adopted or a decision is
wrong, the authority or the force of the decision does not get eroded. A wrong decision in the matter is equally enforceable like a correct decision. If
the Constitution and the laws provide a remedy to get such decision corrected in a higher forum, such a remedy can be availed. Even a wrong decision
becomes final, binding and enforceable like a correct decision, if there is no remedy available. The lawyers, litigants or public at large cannot run away
from such decision and they have to be cautioned about the authority of the Courts
Violation of orders passed by Hon'ble Bombay High Court
55. The respondent No. 1 has also violated the order passed by the Hon'ble Bombay High Court dated 18.2.2000 and 7.2.2002. Despite of interim
orders, during the pendency of opposition proceedings the registration certificate was obtained on 29.9.2006 by the respondent No. 1. It amounts to
contempt. There is no valid explanation given when asked.
56. Any order passed by the Hon'ble High Court is binding nature of judicial precedent. It has been observed by the Supreme Court in the case of
Union of India v. Kamalakshi Finance Corporation Ltd. AIR 1992 SC 711 that judicial discipline requires that decision of higher authority should to be
followed in the case of quasi-judicial authority and, therefore, a lower officer is bound to follow the decision of the higher authority.
57. Such a contempt would amount to civil contempt and if anyone is guilty by not following the orders of the court. A question of bona fide or
unintended violation of the principle of binding judicial precedent may result in the court taking a lenient view but a binding decision of the High Court
or the Supreme Court cannot be ignored.
58. In the present case, the orders have not been followed. Even the respondent No. 1 had obtained the registration from the office of respondent No.
2, knowingly that there was an interim order passed by the Hon'ble Bombay High Court and after the disposal of appeal and during the pendency of
opposition proceedings. Even if the registration certificate was issued by the respondent No. 2 due to mistake, it was the duty of the respondent No. 1
to surrender the same.
59. In the present matter, during the pendency of opposition proceeding after remand order passed by the Hon'ble Court, the respondent No. 1 could
have obtained the registration certification. The same could have only been issued by the respondent No. 2 if the opposition proceedings are finally
decided in favour of respondent No. 1.
60. As already mentioned, if the registration certificate is received the respondent No. 1, it was his duty to surrender the same but it did not happen.
Rather he had been taking the benefit of the same, knowing, deliberately and intentionally. Thus, the conduct of respondent No. 1 was not proper
which speaks for itself. It appears to us that this may be one of the reasons, he is trying his hard not to decide the petition by raising all types of
frivolous pleas. The respondent No. 1 has no respect to the truth, even earlier false affidavit was filed by him and he was duly warned.
61. In order to maintain the judicial discipline which is required in the present case, we direct The Registrar of Trade Marks to conduct the enquiry
personally and give his report disclosing that how the registration certificate was issued despite of pendency of opposition proceedings as per orders of
the Hon'ble High Court and to find out that why the registration was not recalled under section 57(4) of the Act, 2009 in view of order passed by the
Hon'ble High Court of Judicature, Mumbai.
62. The respondent No. 1 shall also to be enquired how he was able to get the registration certificate bearing No. 472388 in class 24 as he is the party
to the said violation of the orders passed by the Hon'ble High Court. He was also one of the parties before the Hon'ble Court and order was passed
within his knowledge. He is the beneficiary of the same who despite of having the knowledge obtained the registration certificate and did not
surrender the same.
63. The report is filed before us within the period of three months so that guilty persons are proceeded with as per law.
64. The petition is accordingly disposed of.
65. No costs.
