Monday, April 25, 2005

Nabisco Inc. Vs. Royal Snacks Food Products

INTELLECTUAL PROPERTY APPELLATE BOARD
2nd Floor, Annexe-1, Guna Complex, 443, Anna Salai,
Chennai – 600 018

ORIGINAL RECTIFICATION APPLICATION No.13/2004/TM/KOL

CIRCUIT SITTING AT KOLKATA

MONDAY, THIS THE 10th DAY OF JANUARY, 2005

Hon’ble Shri Justice S. Jagadeesan … Chairman

Hon’ble Dr. Raghbir Singh … Vice Chairman

Nabisco Inc.
A New Jersey Corporation,
7, Campus Drive,
Parsippany,
New Jersey 07054,
USA. … Applicant

(By Advocates S/Shri Ranjan Bachwat, G. Banerjee,
A. Mukherjee and D. Ghosh)

Vs.
1. Royal Snacks Food Products,
Burdwan Road,
P.S. Siliguri,
Siliguri – 734 405.

2.The Registrar of Trade Marks,
Kolkata. … Respondents

(By Advocates S/Shri Sanjiv Banerjee, A.M. Saha
and Sunith Goel for R-1)

O R D E R (No.4/2005)

Hon’ble Shri Justice S. Jagadeesan, Chairman :

The applicant has filed this application under Sections 57 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) for rectification of the registered trade mark No.684635 of the first respondent herein by cancelling the same and to expunge the said registered trade mark from the Register of Trade Marks.

2. The main averments in the application filed by the applicant are that the applicant, formerly known as National Biscuit Company, used the name NABISCO as its trade mark. The said word was coined by taking the prefix Na, Bis and Co of each word of its old name. The applicant company was found in the year 1989 and for about 50 years or more, its biscuits and the relative packaging had depicted on them the letters NBC being an abbreviation of the original name of the applicant. In 1941, the word NABISCO was introduced in place of the letters NBC and in 1952, NABISCO was introduced. In 1971, the National Biscuit Company officially changed its name to NABISCO. Philip Morris Companies Inc. a parent company of the world leader in food and snacks, the Kraft Foods in the year 2000 acquired the NABISCO holdings and thereby the NABISCO brands have been integrated into the Kraft Foods business worldwide. The management of Nabisco activity in India has been through Kraft Foods International Export Sales Group. The Kraft Foods International Export Sales Group manages the market by controlling distribution of Nabisco products through selected third party in- country Distributors as a US Wholesaler. The applicant has over 28 biscuit plants around the world and its products are sold throughout the world in about 74 countries through duty free shops and by small importers in their respective countries. The product of the applicant is therefore available throughout the world including in India in the major general stores in the major cities in India.
The trade mark Nabisco is well known to persons all over the world including India and is exclusively identified by the applicant since the same is the house mark and the trading name and as such has global reputation. The said mark was registered in India covering Biscuits in registration No.99919 dated 1.8.1944 and the same was renewed periodically from time to time and is still valid and subsisting. The global sales of the applicant are around Rs.35,000 crores and its expenditure is over Rs.10,000 crores. The annual sale figures of the applicant for India for the period 1998 to 2002 are as follows:


Year Sales in US Dollars (in Thousands)

1998----- 118
1999----- 139
2000---- 85
2001---- 13
2002---- 16

The applicant’s products are advertised in major newspapers and magazines throughout the world. The applicant came to know in April, 1998, that the first respondent was wrongly and illegally marketing its products under the applicant’s trade mark NABISCO and in spite of legal notices requesting the first respondent to desist from using the said mark, the first respondent continued. The first respondent is a habitual imitator of popular brands. M/s. Priya Food Products Ltd. initiated legal proceedings against the first respondent. The applicant also filed a suit TS No.4/1998 on the file of the District Court, Barasat, for the relief of permanent injunction restraining the first respondent herein from infringing with the registered trade mark of the applicant and also for injunction restraining the first respondent herein from passing off the trade mark NABISCO. By order dated 29.5.1998, the learned District Judge, granted interim injunction restraining the first respondent from using the applicant’s registered trade mark within the jurisdiction of the District Court. The first respondent also filed a suit against the applicant in TS No.3/1998 on the file of the District Court, Darjeeling, for similar relief of injunction. The learned District Judge dismissed the application of the first respondent for interim injunction. On 30.7.2001, the first respondent filed an application for rectification in T No.858/1998 on the file of the High Court of Calcutta and the same is pending. The first respondent on 20.6.2003 filed an application in the suit filed by the applicant, for amendment claiming to be the registered proprietor of the disputed trade mark NABISCO and on coming to know of the said registration, the applicant filed this application for rectification of the said trade mark on the following grounds:

The impugned mark was wrongly registered and wrongly remains on the register;

The first respondent is not the registered proprietor of the impugned mark;

The first respondent got the impugned mark registered by making false statements, false affidavit and false documents as well as wrong averments;

The first respondent’s mark was not distinctive of the registered proprietor at the time of the application and registration;

The registration of the impugned mark is in contravention of Sections 9, 11 and 18(1) of the said Act;

The first respondent has illegally and wrongly obtained the impugned registration by suppressing the various proceedings pending before various Courts and the order of injunction dated 29.5.1998 against the first respondent.

3. The first respondent herein filed a detailed counter claiming that they are using the same trade mark since 1993 and they applied for registration in 1995 as there was no opposition, the mark was registered on 28.2.2003. The applicant never used their trade mark in India and as such the first respondent is the prior user of the impugned mark in India. Being an earlier user, the impugned mark is entitled for protection and as such, the first respondent filed an application for rectification on the file of the High Court of Calcutta. The applicant did not point out any particular wrong statement or false statement of the first respondent made before the Registrar. The facts said to have been suppressed by the first respondent are subsequent events which took place after the filing of the application for registration and have no relevance in the registration. The applicant filed a reply very elaborately, more than what is stated in the application itself. In view of the only two issues raised by the learned counsel for the applicant, we are of the view that it is unnecessary to elaborately discuss the averments made in the reply.

4. We have heard Shri Ranjan Bachwat on behalf of the applicant and Shri Sanjiv Banerjee on behalf of the first respondent.

5. The learned counsel for the applicant contended that the applicant issued notice calling upon the first respondent to desist from using the impugned mark on 26.4.1998. The first respondent filed the rectification petition on 11.5.1998 and issued a reply notice on 12.5.1998. The impugned mark was registered on 28.2.2003. Had the first respondent informed the Registrar about the pendency of litigation or the dispute between the parties, the Registrar might not have registered the mark. Hence, by suppressing the matters relating to the pendency of the litigation, the first respondent obtained the registration and as such the registration based on the suppression of material facts. He further contended that there is no explanation on the part of the first respondent for adoption of the name NABISCO and moreover the impugned mark has no distinctiveness on the date of the application. Consequently, the registration is liable to be cancelled and the impugned mark has to be expunged from the Register of Trade Marks.

6. The learned counsel for the first respondent however contended that the applicant is not a person aggrieved in view of the statement made in paragraph 3 of the application that the management of NABISCO activity in India has been through Kraft Foods International Export Sales group and the said Kraft Food International Export Sales Group manages the market by controlling the distribution of Nabisco products through selected distributors. The first respondent’s mark was advertised on 26.12.1995 in the Trade Marks Journal No.1277. The first respondent issued the caution notice in the year 1995 in respect of the same mark. If really the applicant was interested, then they ought to have filed the objection. There is no sufficient cause for the conduct of the applicant for not filing the objection.

7. We have carefully considered the above contentions of both the counsel.

8. In TRA 124/2003/TM/KOL, the rectification petition filed by the first respondent for the expunction of the registered mark of the applicant herein in No.99919, we have elaborately discussed the evidence available on record and found that the applicant did not use the said registered mark in India till the date of filing of the said rectification petition TRA/124/2003. Further the applicant’s mark is not a well known mark also. Consequently, we have held that the first respondent herein is the earlier user of the impugned trade mark and as such is entitled for protection. We ultimately on the basis of our conclusion allowed the rectification application filed by the first respondent and directed the expunction of the applicant’s registered trade mark.

9. With this background, if we take the contentions of the respective counsel in this matter, the only issue which remains for consideration is whether the impugned mark of the first respondent is liable to be expunged or removed by way of rectification on the ground that the registration was obtained without revealing the pendency of the litigation as well as the order of injunction against the first respondent in the suit filed by the applicant?

10. In our view, technically the applicant may prima facie have a case with regard to the suppression of material facts by the first respondent while getting the registration of the impugned mark. But, if the plea is considered in total, it is for us to consider as to whether the first respondent had derived any benefit out of the registration by non disclosure of the pending litigation. It may be pertinent to note that the litigation is pertaining to the infringement and passing off. But, in this rectification proceeding, the issue involved is whether the impugned mark had been registered without sufficient cause and is remaining in the register without sufficient cause. Mere pendency of the litigation may not be a ground to refuse registration especially when the principles governing the registration and passing off or / and infringement are totally different. The applicant failed to establish before this forum about their use of their registered trade mark for more than 40 years whereas the first respondent claiming to be a prior user, by evidence, had established the use of their mark earlier than the applicant. Hence, we are of the view that the suppression of the pendency of litigation may not disentitle the first respondent from getting the registration of the mark.

11. Even with regard to the order of injunction granted by the District Court, Barasat in T.S. No.4/98, it only restrains the first respondent from using the registered mark of the applicant within the limits of jurisdiction of that Court. In that case, the first respondent is entitled to use the disputed mark beyond the limits of jurisdiction of the said Court which granted the interim order. In that case, the first respondent is entitled to use the mark and when it is entitled to use the mark outside the jurisdiction of the Court, there is no bar for it to get the mark registered. Apart from that, there is absolutely no merit on either ground, we do not think that the first respondent has disentitled itself from getting the registration of the trade mark. So, we have to reject the contention of the learned counsel for the applicant.

12. Regarding the distinctiveness of the applicant’s mark in the case on hand, the applicant did not establish the use of their mark. In the rectification proceedings the burden of proof is on the applicant. Annexure-A filed along with the rectification petition refers to the consignments to India during the period August, 2002 to July, 2003. That means, till 2002, the applicant’s products were not in circulation in India. Whereas, the first respondent had established the adoption of their registered mark in 1993 and applied for registration in 1995. The suit was filed by the applicant in the year 1998 and in the meanwhile for nearly five years, the first respondent had used the impugned mark. In the absence of the applicant’s product in the market, the first respondent’s product with the impugned trade mark was available freely in India and as such, the same has attained distinctiveness.

13. Apart from that, it may be pertinent to note that the applicant has stated in paragraph 10 (d) of the application that the advertisements of their products have appeared in the following magazines “LIFE, PEOPLE, GOOD HOUSEKEEPING, WOMEN’S DAY, BETTER HOMES & CARDENS, LADIES HOME JOURNAL, McCALLS, BLACK FAMILY, FAMILY CIRCLE, BON APETIT, GOURMET, NEW WOMAN, COUNTRY LIVING, PEOPLE EN ESPANOL, NUESTRA GENTE, LATINA.” Though it is stated that the advertisements were made in so many magazines, the applicant did not file even a single copy of the advertisements in any one of the magazines. The advertisements filed by the applicant refers to their product OREO, RITZ, CHIPS AHOY!, PREMIUM, WHEAT THINS, TRISCUIT, NEWTONS, NILLA, GRAHAMS, SNACKWELLS, CHEESE NIPS and NUTTER BUTTER.” and NABISCO seems to be a house name and the applicant has not used the same as a trade mark. The products which are advertised with their name will be identified with the name they bear in the carton or the packages and the goods may not be specified with the house name. In such a case the House Name of the applicant cannot form their trade mark in respect of their product. In the application TRA 124/04 filed by the first respondent against the applicant also we have held that the applicant herein failed to establish its trans border reputation.

14. For the reasons stated above, we are of the view that the application for rectification deserves no merit and accordingly the same is dismissed. However, there will be no order as to costs.


(Dr. RAGHBIR SINGH) (JUSTICE S.JAGADEESAN)
VICE-CHAIRMAN CHAIRMAN

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