This case discusses a rectification petition transferred from the file of the Intellectual Property Appellate Board, Chennai, to the Madras High Court. M/s. Prakash Pipes Limited (“Petitioner”) filed a petition to cancel the registration granted to Mr. A.K. Rama Rao’s (“Mr. Rama”) trademark, ‘PRAKASH’ under Application No. 1251013 in classes 9 and 17.
Since no one appeared on behalf of Mr. Rama, the Court heard arguments from the Petitioner and the counsel representing the Registrar of Trade Marks.
The Petitioner filed the rectification petition in 2020 under Section 47 of the Trademarks Act, 1999 (“Act”) citing non-use of trademark. The main contention was that the Petitioner was the registered user of the trademark ‘PRAKASH’ since 1980 under classes 9, 17, and 20. Whereas, Mr. Rama adopted the identical trademark, ‘PRAKASH’, in classes 9 and 17, claiming use since 1993. However, Mr. Rama did not use the mark, ‘PRAKASH’ for more than five years since its registration in 2006.
The Court noted that Mr. Rama obtained registration for the identical mark in the same class of goods as the Petitioner. The Petitioner on the other hand was the prior registered owner of the artistic work, ‘PRAKASH PVC PIPES’ as well as the proprietor of several trademarks which use the words ‘PRAKASH’. The Petitioner has also been actively protecting these trademarks against other infringers.
Due to the Petitioner’s extensive sales and resulting goodwill, the Court concluded that Mr. Rama’s registration of the identical trademark was malicious, and aimed at unlawfully enriching himself by passing off his own goods as those of the Petitioner. Therefore, the Court granted the Petitioner’s rectification petition to cancel Mr. Rama’s trademark.
Authored by Benita Alphonsa Basil, Trademark Team
Reviewed by Ms. Anjana Gopinath, Consulting and Strategy Team
Citation: M/s.Prakash Pipes Limited vs A.K. Rama Rao and others, In the High Court of Judicature at Madras, [(T) OP (TM)No. 542 of 2023], 20th June, 2024, Available at https://indiankanoon.org/doc/83079970/
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