Sl.No.,"TradeMark
No",Class,Mark,Petition No.
1.,2478896,7,"FKIÂ Â Â Â Â Â Â Â
3Â Â Â Â Â Â Â Â Â Â Â Â Â
(Word Mark)","MP.NO.144/2020 IN
ORA/172/2020/TM/DEL
2.,2478897,35,"FKI3Â Â Â Â Â Â (Word
Mark)","MP.NO.145/2020 IN
ORA/173/2020/TM/DEL
3.,4044150,35,,"MP.NO.147/2020 IN
ORA/174/2020/TM/DEL
4.,4441647,35,,"MP.NO.149/2020 IN
ORA/175/2020/TM/DEL
/ Â of the Applicant for making illegal and unlawful gains.,,,,
6. The learned Counsel for the Applicant further submitted that the Respondent No. 1 has also fraudulently managed to obtain a registration for its,,,,
deceptively/confusingly similar trademark FKI 3,  and  , behind the back of the Applicant, and the",,,,
same is registered under Application nos. 2478896, 2478897, 4044150 and 4441647, in respect of identical goods falling in Classes 07 and 35 claiming",,,,
use since 2013. The Applicant further alleged that the user so claimed by the Respondent No. 1 is completely false, fabricated, tainted and dishonest in",,,,
as much as the Respondent No. 1 has failed to place any cogent documentary evidence on record to corroborate the same. The Applicant stated that,,,,
the Respondent No. 1 cannot claim that the mere addition of the suffix ‘I 3’ to the prior adopted and prior used trademark,,,,
FK/ / of the Applicant makes its deceptively/confusingly similar trademark FKI 3 different and dissimilar.,,,,
7. The Applicant’s Counsel submitted that the Applicant’s packaging, as in the case of the Applicant’s trademark FK, has undergone",,,,
slight changes from time to time while retaining its distinctive elements and an earlier iteration of the product packaging of the Applicant has also been,,,,
statutorily registered under no. ZL 01 3 33997.4 since July 5, 2001 in its home country China. The artistic/design features contained in the product",,,,
packaging of the Applicant have been authored by Mr. Hong Jingmin, one of the employees of the Applicant, whose roster of duties for the Applicant",,,,
includes the making and creation of distinctive artistic product packaging(s) for the Applicant and consequently Mr. Hong Jingmin is also responsible,,,,
for the creation of the current product packaging used by the Applicant. A pictorial representation of the registered product packaging which forms,,,,
part of the registration certificate obtained by the Applicant is reproduced herein under:,,,,
The aforesaid registration certificate obtained by the Applicant in the year 2001 in its home country China along with its English Translation have been,,,,
filed in the Documents filed along with the present Rectification Application.,,,,
8. The Applicant submitted that the immense goodwill and reputation accrued in the bearings of the Applicant sold under the,,,,
trademark/housemark/artistic work/product packaging FK/ / / /,,,,
can also easily be ascertained from the fact that the annual turnover of the Applicant in the year 2019 was over 500 Crores Rupees of which more,,,,
than 40 Crores Rupees was contributed by the Indian market alone.,,,,
9. The Applicant submitted that the said superior bearings of the Applicant sold under the trademark/house mark/artistic work/product packaging FK/ /,,,,
/ /  are well recognized amongst the trade and public and due to the Applicant’s consistent adherence to maintain high quality and safety,,,,
standards for manufacturing its bearings the Applicant has been awarded with ISO 9001:2000 certification in the year 2001 and IS0 9001:2008,,,,
certification in the year 2010 for its Quality Systems.,,,,
10. The Applicant further submitted that it obtained registration for itstrademark  in its home country, China, on 28.11.1995 vide registration",,,,
no. 794451 for goods falling in Class â€" 07 and the said registration is valid and subsisting till date. That apart the Applicant is also the registered,,,,
proprietor of its trademark also in its home country, China under registration no. 4405504 in respect of ‘Bearing (Machine Parts): Ball Bearing:",,,,
Drive Shaft Bearing: Coupling (Machine): Separator:,,,,
Crankshaft: Machine Transmission: Machine Bearing Bracket: Shock Absorber :Machine Guide’ falling in Class 07 and the said registration is,,,,
valid and subsisting as on date. That further the Applicant has also obtained a copyright registration for its artistic work  in 2010, in China, the",,,,
first publication of which has been certified to be on 01.12.1993 and which artistic work has been authored Mr. Hong Jingmin,",,,,
one of the employees of the Applicant, whose roster of duties also includes the making and creation of artistic logos for the Applicant. That 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 for registration of the trademarks / and registration of the copyright for the,,,,
artistic work along with their respective English translations are filed in the documents filed along with this Rectification Application. That the,,,,
Applicant also holds registration for its trademark  under the Madrid Protocol Article 9sexies bearing registration no. 764692 which,,,,
registration covers several countries of the world.,,,,
11. The Applicant submitted that the trademark FK of the Applicant has been conferred the status of a famous and well known trademark in the,,,,
Fujian Province, China in the years 2002 and 2006 respectively and as of today the trademark  of the Applicant, as aforementioned, is also",,,,
registered in several countries of the world including USA, Australia, Mexico, Singapore, New Zealand, Malaysia, Israel, China, etc.",,,,
12. That the Applicant submitted that it has also obtained registration for its trademark  from the Office of the Respondent No. 2 on,,,,
30.12.2004 under application no. 1329050 in respect of ‘Bearings for machines, Ball Bearings, Roller Bearings, Brackets for Bearings, Steel Balls",,,,
for Bearings,",,,,
Rings for Bearings, Universal joints for machines, Couplings for machines and Bearing Products’ falling in Class 07 and the said registered",,,,
trademark of the Applicant is valid and subsisting till date which grants the Applicant exclusive statutory rights to use and reproduce the said,,,,
registered trademark in respect of its goods and all other goods/services which are allied and cognate thereto. The registration certificate of the said,,,,
trademark as issued by the Office of the Respondent No. 2 obtained from the online records of the Respondent No. 2 is reproduced hereunder:,,,,
13. That the Applicant submitted the pictorial representation of the product packaging of the Applicant in respect of its bearings is reproduced,,,,
hereunder:,,,,
14. That the Applicant submitted that       the trademark/house mark/artistic,,,,
work/product  packaging       FK/     /          /        Â/   of     Â,,,,
the Applicant are solely associated with the Applicant alone and any,,,,
goods/services sold/offered under the identical trademark/house,,,,
mark/artistic work/product packaging FK/ / / /,,,,
or any other deceptively similar trademark/house mark/artistic work/product packaging thereto would automatically dilute the reputation of the,,,,
trademark/house mark/artistic work/product packaging,,,,
S.No.,Year,"Amount
(INR)
(As converted in the month
of October, 2020 from USD
Figures)",,
1.,2010 â€" 2011,"24,17,91,750",,
2.,2011 â€" 2012,"28,14,27,075",,
3.,2012 â€" 2013,"30,43,07,325",,
4.,2013 â€" 2014,"31,65,10,125",,
5.,2014 â€" 2015,"33,63,39,675",,
6.,2015 â€" 2016,"34,47,29,100",,
7.,2016 â€" 2017,"34,70,17,125",,
8.,2017 â€" 2018,"33,32,88,975",,
9.,2018 â€" 2019,"48,42,98,625",,
10.,2019 â€" 2020,"44,15,88,825",,
APPLICANT’S PRODUC
PACKAGING","RTESPONDENT NO. 1’
PRODUCT PACKAGING",,,
,,,,
22. The Applicant submitted that a more detailed study of the Rectification/Cancellation Petition of the Respondent has also revealed that the,,,,
Respondent No. 1 has fraudulently managed to obtain a registration for its deceptively/confusingly similar trademark FKI3, behind the back of the",,,,
Applicant, and the same is registered under no. 2478896 dated 14.02.2013, in respect of identical goods falling in Class 07, claiming first use since",,,,
01.02.2013 and Application Nos.2478897, 4044150 and 4441647 in class 35 for FKI3 word mark and Device/Label marks respectively. The user so",,,,
claimed by the Respondent No. 1 is completely false, fabricated, tainted and dishonest in as much as the Respondent No.1 has failed to place any",,,,
cogent documentary evidence on record to corroborate its user so claimed and even otherwise any evidence which is filed at a later stage to,,,,
corroborate the said use is also liable to be completely ignored on account of the fact that the Respondent No. 1 has slavishly misappropriated the,,,,
whole of the trademark FK/ / Â of the Applicant to make illegal and unlawful gains. The Respondent No. 1 cannot claim that the mere,,,,
addition of the suffix ‘I 3’ to the prior adopted and prior used trademark FK/ /  of the Applicant makes its deceptively/confusingly,,,,
similar trademark FKI 3 different and dissimilar. The Applicant has also noticed that the impugned registration of the Respondent No. 1 is an outcome,,,,
of an error arising out of failure to adhere to the process of Examination of Trade Marks in respect of the impugned mark FKI 3in 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) have not",,,,
been adhered to in letter and spirit as a result of which the earlier registered trademark  of the Applicant registered under no. 1329050 was,,,,
overlooked to be cited as a conflicting mark in the Examination Report dated 30.09.2013 issued to the Respondent No. 1 despite the mark of the,,,,
Respondent No. 1not only being deceptively/confusingly similar to the earlier registered trademark  of the Applicant but also on account of,,,,
the fact that the goods for which the Respondent No. 1 sought registration under its deceptively/confusingly similar trademark were identical to the,,,,
goods for which the Applicant’s trademark is an earlier registered trademark.,,,,
23. Applicant submitted that the said impugned trademark FKI 3 of the Respondent No.1 registered in respect of idential goods as that of the,,,,
Applciantis deceptively/confusingly similar to the well-known, prior adopted, prior used and prior registered trademark of the Applicant and",,,,
that the fraudulent and dishonest adoption and use of the infringing trademark FKI 3 by the Respondent No. 1 for passing off its goods and business as,,,,
and for those of the Applicant definitely amounts to infringement of the well â€" known and famous trademark of the Applicant. The Applicant,,,,
submit that from the aforementioned facts and,,,,
circumstances it is clear that the impugned registered trademark FKI 3 of the Respondent No.1 which is deceptively/confusingly similar to the prior,,,,
adopted, prior used and prior registered well known and famous trademark  of the Applicant is violative of the provisions of Section 11 of the",,,,
Act and consequently it is an entry made in the Register of,,,,
Trade Marks without sufficient cause and wrongly remains on the Register amounting to an error and /or defect and is therefore liable to be removed,,,,
under Section 57 of the Trade Marks Act, 1999.",,,,
FINDINGS OF THIS BOARD,,,,
24. 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 FKI3 and obtained Registrations for the same under Application Nos.2478897, 4044150 and 4441647 in class 35 and Application No.2478896 in",,,,
class 7 of the identical mark of the Applicant.,,,,
25. 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.",,,,
26. 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/ / .,,,,
27. It is evident that the registrations of trademark bearing registered no. Application Nos.2478897, 4044150 and 4441647 in class 35 and Application",,,,
No.2478896 in class 7 by Respondent No. 1 has 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 mark is phonetically, visually and structurally",,,,
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.,,,,
28. 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.,,,,
29. 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.,,,,
30. Therefore, the impugned marks of Respondent No. 1 under Application Nos.2478897, 4044150 and 4441647 in class 35 and Application",,,,
No.2478896 in class 7 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. 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 is finally",,,,
decided the operation of the registration Application Nos.2478897, 4044150 and 4441647 in class 35 and Application No.2478896 in class 7 shall",,,,
remain stayed. Further the Respondent No.2 is directed not to give any effect to any transfer or to bring on record the name of any new subsequent,,,,
proprietor in respect of the impugned registered trademark Application Nos.2478897, 4044150 and 4441647 in class 35 and Application No.2478896 in",,,,
class 7 till the final disposal of the Cancellation Petition filed by the Applicant in the said Rectification Applications.,,,,
31. Before parting with these petitions, it would be necessary for us to mention that all observations made in this order are only of prima facie",,,,
observations and the Respondents are given two months’ time to file Counter Statements in each of the Rectification Applications and on filing of,,,,
such Counter Statements and pleadings of the Respondents, this Board will deal the matter accordingly on merits on such completion of pleading of",,,,
the parties and shall not take any of present observations into account while dealing with the main Rectification Applications as at this stage, we have",,,,
arrived to this conclusion only as prima facie view. Once the pleadings are filed petitions may be moved by the parties to decide the matter on merits,,,,
of such pleadings.,,,,
32. List the main Rectification Applications on 04/02/2021.,,,,
33. There shall be no orders as to the Costs.,,,,
