Girnar Food & Beverages Pvt. Ltd. (“Girnar”) filed an opposition against The North-Western Cachar Tea Co. Ltd.’s (“North-Western”) Application No. 1411841 bearing the device mark “
” (“Application”) in class 30. The opposition was based on Girnar’s registrations over the word mark, “JUMBO” and various device marks incorporating elephants and the phrase, “FIVE JUMBO” for tea and spices in class 30. A journal copy and product label bearing Girnar’s device mark for which it claimed use since the year 1985 is:
After completing the pleadings stage, the matter was taken up for hearing. Based on both the parties’ arguments and submissions, the Registrar of Trade Marks (“Registrar”) rejected the opposition, as per the order dated 22nd July 2023 (“impugned order”). Subsequently, the Application was also granted registration.
In response to the Registrar’s decision, Girnar appealed under Section 91(1) of the Trade Marks Act, 1999 (“Act”) before the Calcutta High Court, challenging the Registrar’s order. No one appeared on behalf of the respondents and so, the matter was heard ex parte.
Girnar, a tea manufacturing and exporting company established in 1985, contended that North-Western’s adoption of a trademark featuring an elephant alongside the word “HAATHI” was malicious. This contention was based on the fact that North-Western claimed its trademark was described as “Bicrampore T.E Assam (Label)” but included an elephant as a part of the device mark, which would result in confusion in the minds of the consumers.
The Court observed that the Registrar’s impugned order was erroneous due to the following reasons:
- The Registrar incorrectly identified the prominent feature of North-Western’s mark as “Bicrampore T.E”. However, the device of the elephant occupied more than 50% of the label, making it a prominent feature. Additionally, the literal translation of the caption, “HATHI MARKA UTTAM CHAI” in the label i.e., ELEPHANT BRAND EXCELLENT TEA, also contributed to brand confusion.
- Girnar had exclusivity to the words, ‘Hathi’ or ‘Elephant’ as per the prior registrations obtained in the word, “JUMBO”, as well as the multiple JUMBO device marks in class 30. However, the Registrar did not adequately consider the same when evaluating North-Western’s mark as a whole as per Section 17 of the Act.
- North-Western had filed its Application in 2006 claiming use since 1970. However, North-Western’s evidence of use since 1970 was not substantiated sufficiently, with invoices only dating back to 2002, whereas Girnar had presented sales figures since 1985.
- Both Girnar and North-Western operated in the same business of manufacture and sale of tea, serving the same class of consumers.
Based on these findings, the impugned order was set aside and quashed, leading to the cancellation of the registration certificate issued to North-Western.
Citation: Girnar Food & Beverages Pvt. Ltd. vs The Registrar of Trade Marks & Anr., High Court of Calcutta, 18th June 2024, [IPDTMA No. 80 of 2023]
Authored by Ms. Benita Alphonsa Basil, Trademark Team.
Reviewed and confirmed by Ms. Swathi Muthukumar, Trademark Team.
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
If you have any questions, or if you wish to speak with an IP expert/attorney, please reach us at: contact@bananaip.com or 91-80-26860414/24/34.
