The Hon'ble Delhi High Court in Shri Rajesh Chugh v. Mehruddin Ansari & Anr., C.O. (COMM.IPD-TM) 28/2024, dated August 5, 2024, allowed the petition for removal/rectification of the trademark "ANDAAZ-E-NIZAAM" registered in the name of respondent no.1, finding it deceptively similar to the petitioner's trademark "NIZAM'S".
Facts of the Case:
The petitioner, Shri Rajesh Chugh, filed a suit seeking removal/rectification of the trademark "ANDAAZ-E-NIZAAM" registered in the name of respondent no.1, Mehruddin Ansari, in Class-43. The petitioner claimed that this mark was deceptively similar and identical to his own trademark, "NIZAM'S".
The petitioner is the proprietor of the trademark "NIZAM'S" with Registration No. 2164405 in Class-43, with a user claim since January 1, 1978, for providing food and drink, and temporary accommodation. The petitioner stated that he had adopted the trademark "NIZAM'S" for various goods and services in 1978, and under this trademark, he maintains his trade identity and sells his products in the market.
The petitioner claimed that the trademark "NIZAM'S" has been used openly, continuously, and extensively since 1978, becoming distinctive to the goods, services, and products, and is exclusively associated with the petitioner. The trademark has been used on all packaging from the beginning and has come to be exclusively identified and recognized by the purchasing public and trade with the petitioner's goods.
In the last week of January 2024, the petitioner learned that respondent no.1 had registered the mark "ANDAAZ-E-NIZAAM". The petitioner argued that this impugned trademark was deceptively similar, identical, and phonetically similar to his prior registered trademark.
During the proceedings, the petitioner's counsel presented a menu card of respondent no.1, showing that the respondent was not using its registered trademark "ANDAAZ-E-NIZAAM" but had started using another name, "DAAWAT-E-NIZAAM", which was not registered.
Issue:
Whether the trademark "ANDAAZ-E-NIZAAM" registered by respondent no.1 should be removed/rectified due to its similarity to the petitioner's trademark "NIZAM'S" and non-use by the respondent?
Held by the Court:
The Hon'ble Delhi High Court in C.O. (COMM.IPD-TM) 28/2024 held that:
The Court observed that the counsel for respondent no.1 submitted that the respondent did not intend to use the trademark "ANDAAZ-E-NIZAAM". Instead, the respondent expressed their intention to run their business under the names "DAAWAT-E-NIZAMUDDIN" and "ANDAAZ-E-NIZAMUDDIN". The Court took on record the undertaking given by the counsel for respondent no.1 that they would change the name of their trade name/restaurant as well as their partnership firm to "DAAWAT-E-NIZAMUDDIN" or "ANDAAZ-E-NIZAMUDDIN". Based on this undertaking, the Court directed respondent no.1 to take appropriate steps to change their trade name/name of their business/restaurant/partnership firm to the new name within four weeks from the date of the order.
The Court noted that under Section 47 of the Trade Marks Act, 1999, a registered trademark may be removed from the Register in respect of goods and services for which it is registered due to non-use of the trademark. The Court observed the admission by respondent no.1 that the registered trademark "ANDAAZ-E-NIZAAM" had been abandoned and was no longer in use. This admission was crucial in the Court's decision to allow the petition for removal/rectification of the trademark.
Based on these findings, the Court allowed the petition and held that the Registrar of Trademarks (respondent no.2) should remove/cancel the registered trademark "ANDAAZ-E-NIZAAM" under Class-43, registered in favor of respondent no.1 vide Registration No. 5226592 and Certificate No. 3001658 dated November 29, 2021.
The Court directed the Registrar of Trademarks to take steps to rectify the Register of Trademarks expeditiously within four weeks from the date of the order.
The Court opined that the petitioner's claim of being an aggrieved person under Section 57 of the Trade Marks Act, 1999, as the first user of the trademark "NIZAM'S", was valid. However, the Court's decision was primarily based on the respondent's admission of non-use and abandonment of the registered trademark, rather than on the similarity between the marks.
The Court further held that the amicable resolution reached between the parties, with the petitioner not objecting to the respondent's use of "DAAWAT-E-NIZAMUDDIN" or "ANDAAZ-E-NIZAMUDDIN", was in the interest of both parties. This resolution effectively addressed the petitioner's concerns while allowing the respondent to continue their business under a non-infringing name.
Key Arguments by Lawyers:
Petitioner's Counsel:
1. Emphasized the petitioner's long-standing use and registration of the "NIZAM'S" trademark since 1978.
2. Argued that the respondent's mark "ANDAAZ-E-NIZAAM" was deceptively similar to the petitioner's mark.
3. Presented evidence (menu card) showing that the respondent was not using their registered mark but a different, unregistered name.
4. Stated no objection to the respondent using "DAAWAT-E-NIZAMUDDIN" or "ANDAAZ-E-NIZAMUDDIN".
Respondent's Counsel:
1. Admitted that the respondent did not intend to use the registered trademark "ANDAAZ-E-NIZAAM".
2. Expressed intention to use "DAAWAT-E-NIZAMUDDIN" or "ANDAAZ-E-NIZAMUDDIN" for their business.
3. Gave an undertaking to change their trade name/restaurant name and partnership firm name accordingly.
Relevant Sections:
Section 57 of the Trade Marks Act, 1999 (Power to cancel or vary registration and to rectify the register)
Section 47 of the Trade Marks Act, 1999 (Removal from register and imposition of limitations on ground of non-use)
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