Prabha Sridevan, J
1. The rectification is for removal of mark No. 235004 in Class 34 Label mark NONI. The applicant is the owner of the mark NOVA which was
adopted in the year 1935. According to him, NONI will result in confusion and it is not entitled to be registered. The applicant deals in manufacturing
and marketing of Cosmetic products including NOVA BRILLIANTINE (label). They have other registration for the same mark NOV and the
registration is valid and subsisting as on date. The artistic work and trade address for NOVA (carton) and NOVA labels have been registered under
the Copy-Rights Act. In November, 2007, the applicant received complaints from dealers that there is misuse of trade mark and art work of NOVA.
According to him, the label and trade address of NONI is a piracy of the mark NOVA. The applicants mark has been in existence since 1946. The
applicant seeks rectification on the ground that the registration has been done contrary to Section 9 and 11 of the Act and therefore, it wrongly
remains in the register.
2 . The respondent filed their counter stating, that they had been engaged in manufacture and marketing of cosmetics for more than six decades. They
had adopted this label in 1958 and had been continuously and uninterruptedly used it since then. They are the proprietor of impugned trade mark label
NONI as of 29.04.1966 in respect of NOVA BRILLIANTINE (label). It has been published in th Journal in 1967. The respondents have denied
knowledge of the applicant company. They claim that their adoption is honest. More importantly they claim that the impugned mark has been used
form 1958 i.e. for 50 years to the knowledge of the applicant. According to them, the mark shall not be removed. No documents had been filed on
both sides to show the use of the mark and the date from which such use has been enforced.
3. We have also heard both the counsel at length. Both justify their stand. In the Suit filed by the Applicant herein against the respondent while
ordering Notice of Motion, the Bombay High Court had granted injunction that it was only in the second week of December, 2007 they learnt that the
defendants were clandestinely manufacturing and selling n the market.
4 . The learned counsel for the applicant also relied on a) 2004 (28) PTC 83 (Bom) ""Tata Tea Limited Vs Suruchi Tea Company and Anr."" where the
two marks were Suruchi Tea & Tata Tea and the design and get-up produced visual similarity. The Hon'ble Bombay High Court set aside the
registration. b) 2002
(24) PTC 226 - ""Bal Pharma was ""MICRODINE Ltd Vs Centaur laboratories Pvt. Ltd Another; here the mark was ""MICRODINE"" and injunction
was granted. c) Referring to an unreported judgment of the Hon'ble Bombay High Court with relation to the mark 'RATNA' -""M/s Ratnakar Canning
Industries Vs M/s Ratna Sea Foods & Another"" where the mark was adopted prior to the registration of the firm, it does not technically mean
dishonest adoption. d) "" AIR 2008 SC 2737"" (2008 (36) PTC 315 (Mad) - ""Khoday India Ltd. Vs. Scotch Whisky Association & Ors"" This was relied
on by the respondent where the Supreme Court held that on the ground of delay and on the principle of acquiescence or waiver or abandonment, the
rectification application must be dismissed. e) The appellant also relied on 1994 (2) SCC 448 - Civil Appeal nos. 2551 - 2552 of 1993 - ""M/s Power
Control Appliances and Others Vs M/s Sumeet Machines Pvt. Ltd."" with Civil appeal no. 2553 of 1993 - ""Sumeet Research and Holdings Vs Sumeet
Machines and Another
5. The mark and the colour get up are almost the same. Both have green and black combination. NOVAS mark shows the green and black in squares
and NONI mark is in the same combination in a diamond form.
6 . Though the applicants' mark may be earlier, the respondent has obtained registration in 1968 on an application which was filed in 1966 claiming
user from 1958. Exhibit ' C' is an advertisement by 'NONI' in 'NAVBHARAT dated 28.06.1968 There is another advertisement in 1976 which is
claimed to be published in 1976, though we are unable to see the date on the paper furnished to us. However, there is yet another advertisement of the
year 1991. There are also corresponding invoices from the respective Newspapers for instance 'Nav Bharat' dated 13.11.1991 addressed to M/s Ravi
Traders. There is also a certificate from their Bankers - State Bank of India certifying that Ravi Traders manufacturing NOVA BRILLIANTINE
(label) hav been maintaining account for 35 years. This is dated 2008. So this speaks of their existence from 1983. The registration certificate has also
been produced for Trade Mark No. 235004. This has been renewed from time to time.
6. We are not going into other allegations and counter allegations made by the two parties. It is indisputable that this mark has been in existence from
1968 at least. The invoices only referred to sale of NONI. But anyway, the invoices will not carry label mark. The caution notice and the
advertisement which we have referred to also show this continued existence. Though the get up is visually similar and the goods are the same; in view
of the fact that the respondent's mark has been alive for nearly 5 decades, we are not inclined to remove the mark.
7. The applicant claims that they received complaints in the year 2007. For that there is no evidence.
8. Both of them have been marketing their goods in the state of Maharashtra.
9 . In fact the evidence shows that the applicant had not been marketing the goods for some years, and there is even an advertisement claiming "" We
are back"". The applicant cannot seek rectification by baldly claiming that they knew the existence of the mark only in 2007. There is no proof of
confusion. These are special circumstances for us to allow the mark to continue. ORA is dismissed.
