Calcutta High Court Enforces Use Requirement, Removes HSIL’s “A Somany Enterprise” Mark

Calcutta High Court Enforces Use Requirement, Removes HSIL’s “A Somany Enterprise” Mark

Introduction

The Calcutta High Court, exercising jurisdiction through its Intellectual Property Rights Division, has ordered the removal of the registered device mark “A Somany Enterprise” from the Register of Trade Marks on the ground of non-use. The Court held that the continued registration of a trademark without any commercial use defeats the purpose of statutory protection under the Trade Marks Act, 1999.

Factual Background

Somany Ceramics Limited is a well-known manufacturer in the ceramics sector and claimed prior rights and reputation in the “SOMANY” family of marks. The respondent, HSIL Limited, was the registered proprietor of the device mark “A Somany Enterprise” bearing Registration No. 595609 in Class 16.

The impugned mark was applied for with a claimed user date of 13 April 1992 and was registered on 27 April 1993.

Procedural Background

Somany Ceramics Limited filed a rectification petition before the Calcutta High Court under Sections 47 and 57 of the Trade Marks Act, 1999, seeking removal of the impugned mark from the Register of Trade Marks on the ground of non-use.

The petition was heard by Justice Ravi Krishan Kapur of the Calcutta High Court’s Intellectual Property Rights Division.

Issues

1. Whether the registered device mark “A Somany Enterprise” was liable to be removed from the Register for non-use under Section 47 of the Trade Marks Act, 1999.

2. Whether the continued registration of the mark could be sustained in the absence of any evidence of bona fide commercial use.

Contentions of the Parties

The petitioner contended that the respondent had never used the impugned mark commercially as a trademark in relation to the goods for which it was registered. It was argued that there was no documentary evidence demonstrating bona fide use since registration, thereby attracting the provisions of Section 47 of the Act.

On behalf of the respondent, HSIL Limited fairly conceded that it had no objection if the rectification petition was allowed on the ground of non-commercial use of the impugned mark.

Reasoning and Analysis

The Court noted that the principal requirement for maintaining a trademark on the Register is bona fide commercial use. In the absence of such use, the statutory monopoly granted by registration cannot be allowed to continue indefinitely.

Taking note of the fair concession made by the respondent that the mark had not been commercially used, the Court held that the statutory conditions for removal under Section 47 of the Trade Marks Act stood satisfied.

The Court observed that permitting the continued registration of an unused mark would be contrary to the scheme and object of trademark law, which seeks to protect marks that are actively used in trade.

Decision

In view of the concession by the respondent and the absence of any material demonstrating bona fide use, the Calcutta High Court allowed the rectification petition. The Court directed that the registered device mark “A Somany Enterprise” be removed from the Register of Trade Marks. The Court clarified that the order was passed without prejudice to the rights and contentions of the parties in other pending proceedings relating to the “Somany” marks.

In this case the plaintiff was represented by Mr. S. N. Mookherji, Senior Advocate, Mr. Ranjan Bachawat, Senior Advocate, Mr. Ashutosh Kumar; Mr. Sajan Shankar Prasad, Mr. Tanmoy Roy, Mr. Partheshwar Singh, Mr. Yash Singhi, Mr. Sagnik Bose, Ms. Aheriya Roy and Mr. Askash Kumar, Advocates.