Sl.No.,TradeMark No,Class,Mark,Rectification Applicaton No.
1.,3318333,12,,ORA/108/2020/TM/DEL
2.,1989336,07,,ORA/117/2020/TM/DEL
,,,,
2001and IS0 9001:2008 certification in the year 2010 for its Quality Systems.,,,,
9. The Applicant submitted that it has also been bestowed with several other awards and accolades which complement the extent and expanse of the,,,,
goodwill and reputation enjoyed by the Applicant and a few such awards and accolades are mentioned herein under: a) Being recognized as,,,,
‘Enterprise which adheres to Strict Contract thereby being Trust Worthy’ from 1995 â€" 2000 by Fujian Province Bureau of Industry and,,,,
Commerce; b)Awarded National Labour Medal on 1st May being Labour Day in the Year 1997; c) Awarded as ‘Famous Products of Fujian,,,,
Province’ by Fujian,,,,
Province People’s Government in the Year 1997; d) Awarded ‘High Technology Enterprise’ by Science and Technology Department of,,,,
Fujian Province; e) Recognized as leading Fujian Province International Brand in the Year 2006 T,,,,
10. he Applicant submitted that it owned and maintained its website which clearly shows the existence of the website www.fk-bearing.com since,,,,
05.09.2001 and WHOIS records of such website has been annexed with the Cancellation Petition.,,,,
11. The Applicant submitted that the Applicant obtained registration for its trademark in its home country China on 28.11.1995 vide registration no.,,,,
794451 and the said registration is valid and subsisting till date. That further the Applicant also holds registration for the copyright in its artistic work,,,,
since the year 2010, the first publication of which has been certified by the CTPO of China as on 01.12.1993 and by virtue of Section 40 of the Indian",,,,
Copyright Act, 1957 r/w International Copyright Order, 1999 the said artistic work  of the Applicant is fully protectable in India.",,,,
Copies of Registration Certificates issued to the Applicant by CTPO of China for registration of the trademark and registration of the copyright for the,,,,
artistic work  along with their translations are filed in the paper book filed along with this Rectification Application.,,,,
12. The Applicant submitted that the trademark of the Applicant has been conferred the status of a famous trademark in the Fujian Province in the,,,,
year 2002 followed by being declared as a well-known mark in the year 2006 and as of today the trademark is also registered in more than 80,,,,
countries of the world including USA, Australia, Mexico, Singapore, New Zealand, Malaysia, Israel, China etc. and a list of a few such registrations as",,,,
retrieved from the website https://www.wipo.int/branddb/en/ are reproduced hereunder:,,,,
13. The Applicant also submitted that the Applicant also obtained Registration in India from the Respondent No.2 Office, the Registration Certificates",,,,
issued by the Respondent No.2 in favour of the Applicant are depicted below:,,,,
14. The Applicant submitted that apart from the trademark/artistic work  of the Applicant being inherently distinctive the same is solely,,,,
associated with the Applicant alone and any goods bearing the identical trademark/artistic   work          Â,,,,
 or      a ny       o ther    deceptively        Âs imilar trademark/artistic work thereto would,,,,
automatically dilute the distinctive reputation of the mark/artistic work  of the Applicant and would also amount to causing confusion and/or,,,,
deception amongst the trade and public apart from amounting to infringement and/or passing off.,,,,
The Applicant submitted that the Applicant apart from having acquired statutory rights in respect of its trademark by virtue of registration under the,,,,
statute is also the prior adopter and prior user of the said invented, distinctive, well-known and famous trademark and it is the Applicant alone who has",,,,
the sole right to use or reproduce the trademark/artistic work  to the exclusion of others in trade.,,,,
16. The Applicant submitted that the Applicant has been consistently andcontinuously using the trademark FK/ and has as of today sold,,,,
products worth hundreds of crores in the Indian market till date. The,,,,
readily available yearly sales figures of the Applicant for its goods sold under the trademark FK/ Â in the Indian market are reproduced,,,,
hereunder:-,,,,
17. The Applicant submitted that, sometime in the first week of March, 2020, Mr. Harinder Pal Singh, one of the Applicant’s current distributors in",,,,
New Delhi, India, informed the Applicant that pursuant to an order of the Hon’ble District Judge of Tis Hazari Courts, New Delhi dated",,,,
29.02.2020 a local commissioner had visited his business premises and after informing him that the goods manufactured and consigned by the,,,,
Applicant to him were infringing the rights vested in the trademark of one Mr. Vinod,,,,
Kumar, had seized and sealed his goods. Mr. Harinder Pal Singh, further informed the Applicant, that he had also received, a copy of the commercial",,,,
suit titled Vinod Kumar Vs. Harinder Pal Singh and Anr. (CS (COMM) 714/2020) filed in the court of Ld. District Judge, Tis Hazari Courts, Delhi in",,,,
which the aforementioned order dated 29.02.2020 had been passed and Mr. Harinder Singh provided a scanned copy of the Plaint to the Applicant for,,,,
it to take appropriate action as the Applicant deems fit in the matter. A copy of the Plaint filed in the commercial suit titled Vinod Kumar Vs. Harinder,,,,
Pal Singh and Anr. (CS (COMM)7 14/2020) as received from Mr. Harinder Pal Singh along with ex parte ad interim order of the Hon’ble Court,,,,
dated 29.02.2020 has been collectively filed in the paper book filed along with the Rectification Application. It is pertinent to mention that the Applicant,,,,
has not been made a party to suit despite the Applicant being the true owner and lawful proprietor of the registered trademark.,,,,
18. The Applicant submitted that on having gone through the contents of the Plaint filed in the aforementioned commercial suit the Applicant was,,,,
shocked to learn that the Respondent No. 1 had been successful in anchoring a commercial suit based on a registration obtained by sheer deceit from,,,,
the Office of the Respondent No. 2 for the identical trademark. The Applicant was further also taken aback on having learnt that the product,,,,
packaging as reproduced in the Plaint by the Respondent No. 1 as his own was in fact the product packaging of the Applicant which the Respondent,,,,
No. 1 was falsely claiming to be its proprietary. The said product packaging allegedly of the Respondent No. 1 as depicted in the Plaint is being,,,,
reproduced herein below for the perusal and reference of this Ld. Tribunal:,,,,
19. The aforementioned product packaging as claimed by the Respondent No. 1 as his own, when compared to the below mentioned product",,,,
packaging of the Applicant, leaves no doubt that both the product packaging’s originate from one single source i.e. the Applicant:-",,,,
20. The Applicant submitted that a bare perusal of the aforementioned product packaging filed by the Respondent No. 1 which bears the name of the,,,,
Applicant along with its address in the Chinese language clearly establishes that the said product packaging does not originate from the Respondent,,,,
No. 1. This fact stands further corroborated from the fact that the product packaging bears the sticker claiming the product to be only marketed by the,,,,
Respondent No. 1 and the Respondent No. 1 has not filed any documents with the Office of theR espondent No. 2 to establish the source of supply of,,,,
such products as the Respondent No. 1 himself admits that he is only in the business of trading as opposed to manufacturing and therefore the claim of,,,,
ownership of the Respondent No. 1 to the said product and the trademark /FK is false, frivolous and fraudulent.",,,,
21. The Applicant submitted that in order to ascertain the details of the Respondent No. 1 and whether the Respondent No. 1 at any point of time had,,,,
any connection with the Applicant, the Applicant scanned its various sales records pertaining to India and after a lot of effort the Applicant was able",,,,
to pin point that the Respondent No. 1 had earlier been a distributor/agent of the Applicant and which Agreement of distributorship/agency was,,,,
terminated in the year 2014. The Applicant was also able to locate some of the copies of sale invoices issued by the Applicant to the Respondent No.,,,,
1.,,,,
22. The Applicant submitted that a further study of the contents of the Plaint revealed the nefarious and illegal design of the Respondent No. 1 of,,,,
using the illegally and unlawfully obtained registrations in Classes 07 and 12 for the identical trademark/artistic work as that of the Applicant for,,,,
illegally and unlawfully ousting the goods of the Applicant’s manufacture from the market by resorting to dubious means and the Applicant also,,,,
noted that the registrations so obtained by the Respondent No. 1 were a result of fraud played upon the Office of the Respondent No. 2 in as much as,,,,
the material particulars as to the true ownership of the trademark FK Â of the Applicant were suppressed and not disclosed to the,,,,
Respondent No. 2. Even the user claimed since the year 2009 was incorrect and no cogent unimpeachable documentary evidence were filed in,,,,
support thereof. The Applicant also noticed that the impugned registrations of the Respondent No. 1 were an outcome of an error apparent of the face,,,,
of the record incurred by the Office of the Respondent No. 2 in as much as the mandatory provisions of Section 11 read with Rule 33 of the Trade,,,,
Marks Rules, 2017 (earlier Rule 37 of the Trade Marks Rules, 2002) were given a go by as the prior registered identical trademark of the",,,,
Applicant registered under no. 1329050 was not cited as a conflicting mark in the subsequent Applications of theRespondent No. 1 despite the mark,,,,
being identical and the goods being identical/similar.,,,,
23. The Applicant submitted that it’s attorney in India informed the Applicant that a Rectification/Cancellation Petition against impugned,,,,
trademark of the Respondent No.1 in Classes 07 and 12 had already been filed in the Office of the Respondent No. 2 by one Mr. Harinder Pal Singh,,,,
for and on behalf of the Applicant Company. The said Rectification dated 31.01.2020 under No. 267906 to Registration No. 1989336in Class 07 of the,,,,
Respondent No. 1 in the records of the Office of the Respondent No. 2 was being shown as filed by the Applicant but a perusal of the Petition and,,,,
the accompanying documents did not reveal any signatures of the Applicant Company nor any document on behalf of the Applicant authorizing Sh.,,,,
Harinder Pal Singh was on record. Similar was the position in respect of Cancellation Petition dated 31.01.2020 under no. 267907 to Registration No.,,,,
3318333 in Class 12.,,,,
24. The Applicant submitted that the fact of Cancellation Petitions having being filed on behalf of the Applicant when the Applicant did not authorize,,,,
any person to do so, came as a big surprise to the Applicant and the Applicant sought immediate remedial action to be initiated in the matter with the",,,,
Office of the Respondent No. 2.,,,,
25. The Applicant submitted that in light of the aforementioned circumstances the Applicant filed a Legal Representation before the Respondent No.,,,,
2, informing it that it had never authorized any person to file a Rectification/Cancellation Petition against the registered trademarks of the Respondent",,,,
No.1 and that in fact the impugned registration for the trademark of the Respondent No. 1 had been obtained due to an error apparent on the face of,,,,
the record in as much as while examining the said impugned trademark of the Respondent No. 1, the Office of the Respondent No. 2 failed to cite the",,,,
earlier registered identical trademark of the Applicant in respect of identical/similar goods, thereby making the said examination violative of the",,,,
mandatory provisions of Section 11 of the Trade Marks Act, 1999 read with the provision of Rule 33 of the Trade Marks Rules, 2017 (Earlier Rule 37",,,,
of the Trade Marks Rules, 2002) . A copy of the said Legal Representation dated 08.06.2020 filed by the Applicant before the Office of the",,,,
Respondent No. 2, is filed in the paper book with this Rectification Application. That despite vigorously pursuing the matter with the Office of the",,,,
Respondent No. 2, so as to avoid approaching this Hon’ble Tribunal, the Respondent No. 2 refused to take up the matter suo moto under the",,,,
provisions of Section 57 (4) of the Trade Marks Act, 1999 and several representations on this issue by the Applicant were all in vain and therefore the",,,,
Applicant is now constrained to file this instant Cancellation Petition before this Hon’ble Tribunal.,,,,
26. The Applicant further submitted that the Applicant’s attorney further informed the Applicant that the Respondent No. 1 had fraudulently and,,,,
dishonestly also initiated and instituted Rectification/Cancellation Proceedings against the prior registered trademark of the Applicant under,,,,
Rectification No. 268248 to Application No. 1329050 and the Applicant is taking steps to file an appropriate reply in respect of the same. A copy of,,,,
the complete Rectification/Cancellation Petition along with statement of case filed by the Respondent No. 1 under rectification no. 268248 to,,,,
Application No. 1329050 is filed in the paper book along with this Rectification Application.,,,,
FINDINGS OF THIS BOARD,,,,
We have gone through the submissions and material placed on the record filed by the Applicant and we are of the prima facie opinion that the,,,,
Applicant had made a strong prima facie case of granting the relief prayed for by the Applicant. The Respondent No.1 had fraudulently adopted the,,,,
mark exactly similar mark of the Applicant and obtained Registrations for the same under Application Nos. 1989336 and 3318333 in classes,,,,
07 and 12 respectively.,,,,
28. The expression ‘deceptive similarity’ as enshrined under Section 2(1)(h) of the Trademarks Act, 1999 says that the similarity or",,,,
resemblance must be such as it would be likely to deceive or cause confusion. In order to come to a conclusion whether one mark is deceptively,,,,
similar to another, the broad and essential features of the two are to be considered. They are not required to be placed side by side to determine",,,,
whether there are any differences in their design. The test of comparison of the marks side by side is not a sound one because the question is not,,,,
whether a person, while seeing both the marks side by side is confused or not but whether the person who sees proposed trademark in the absence of",,,,
other trademark is liable to be deceived for what he has general recollection. Deception can arise with regard to the deception as to the goods,",,,,
deception as to the trade origin, deception as to the trade connection.",,,,
29. It is further seen that the goods offered by Respondent No-1 under said identical impugned trade mark are also identical / similar to that of the,,,,
Applicant. The impugned mark has been used on packaging in a manner so as to evidence malafide on the part of the Respondent No.1. The,,,,
Respondent No-1 has deliberately and fraudulently adopted the impugned mark in respect of identical / similar goods and has applied for registration,,,,
thereof, having full prior knowledge about Applicants exclusive proprietorship over the mark FK/ / Â and the reputation and goodwill",,,,
attached to the Applicants mark,,,,
FK/ / .,,,,
30. It is evident that the registrations of trademark bearing registered no. Application Nos. 1989336 and 3318333 in classes 07 and 12 respectively,,,,
have been wrongly granted by the Respondent No. 2 and should be removed from the register as it is in breach of provisions of Section 9(2)(a), 11(1)",,,,
(a), 11(3)(a), 18 (4), 30 (1) (a) & b of the Trade Marks Act and therefore is liable to be removed and cancelled under Section 57 (2) of the Trade",,,,
Marks Act, 1999 as Respondent No. 1 obtained Registered marks that are exactly same/similar/identical to the Applicants’ prior mark FK/",,,,
and its label and has been registered by Respondent No. 2 without considering the principles of Section 9 and Section 11 of the Trade Marks Act,",,,,
1999 and hence the trade mark is liable to be removed and cancelled under Section 57 (2) from the Register.,,,,
The grant of registrations of the trade marks by Respondent No. 2 to Respondent No. 1 Applications is against the settled principle of law that under,,,,
the provisions of Rule 33 of the Trade Marks Rules, 2017 read with Section 11 of the Trade Marks Act, 1999 the Office of the Respondent No. 2 is",,,,
obliged to cause a search to be made amongst the registered/pending trademarks for the purpose of ascertaining whether there exist on record any,,,,
earlier identical/similar trademarks to the mark sought to be registered in respect of identical/similar goods and that where the subsequent mark is,,,,
registered in contravention to the said provisions then the effect of such registrations are liable to be Cancelled.,,,,
As stated above, the trade mark FK/ / Â is being used by the Applicant in India since the year 1997 and due to such long, continuous and",,,,
extensive use, the mark is associated solely with the Applicant and none else. No other trader can therefore register the mark in their name. The",,,,
registration of the marks in the name of Respondent No. 1 should therefore have been refused by the Respondent No. 2 as the same is against the,,,,
law of passing-off.,,,,
32. It was held by Courts in various judgments such as in Tube Investments of India Ltd. vs. Tata Engineering and Locomotive Company,,,,
Ltd. 2001 (21) PTC 562 (Reg) (Mad)., where the court held that where the marks are deceptively similar, the adoption is considered to be",,,,
dishonest and an application for registration of the same is liable to be dismissed. In this case, even though the goods were different, it was held that",,,,
use of the impugned label mark would lead to confusion and deception. However in the present case the goods are also similar.,,,,
33. Therefore, the impugned marks of Respondent No. 1 under Application Nos. 1989336 and 3318333 in classes 07 and 12 respectively are liable to",,,,
be cancelled under the provisions of Section 57 (2) of the Trade Marks Act, 1999. Respondent No.1 has not appeared for the past hearings. It",,,,
appears that Respondent No.1 is not interested to contest the matter also despite service not appeared before us. The Respondent No.1 is not,,,,
proprietor of trade mark. User. If any, was tainted and dishonest and since the dishonesty factor holds the cardinal principle until the Rectification",,,,
Petition. Thus the marks Registrations for the same under Application Nos. 1989336 and 3318333 in classes 07 and 12 respectively are wrongly,,,,
remaining on Register and is liable to be removed.,,,,
34. In the light of above the registered Trade Mark Nos. 1989336 and 3318333 in classes 07 and 12 respectively in the name of Respondent No.1 i.e.,",,,,
Mr.Vinod Kumar trading as M/s. KUNAL TRADING CORP., 2400/5, RAM NATH BUILDING, BEHIND 72, G.B.ROAD, DELHI- 110006 are",,,,
removed from the register on the grounds that it is wrongly Registered by Respondent No.2 without considering the Applicant’s Prior Registered,,,,
marks existing on the Register and is cancelled under theprovisions of Section 57 of the Trade Marks Act, 1999. Copy of order be sent to the parties",,,,
as well as Respondent No.2 who is directed to delete the entry of the said mark forthwith.,,,,
35. The Registry is directed to send the copy of this order to Bar Council of India on the Respondent counsels failing to file the receipt of costs as,,,,
directed for taking appropriate steps against the counsels by Bar Council for false representation as narrated in paragraph 3 of this order.,,,,
