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  • Sharabh Shrivastava

INDIA: IPAB Removes Well-Known Mark, Holds Law Should Not Be Stretched to Indulge in Trade Restraint

In M/s Nirmal Industrial Control Pvt. Ltd. v. M/s Nirma Chemical Works Pvt. Ltd. (ORA/133/2010/TM/AMD (IPAB Sept. 13, 2013)), the Intellectual Property Appellate Board (IPAB) removed the registered trademark NIRMA, owned by M/s Nirma Chemical Works Pvt. Ltd. (Respondent), based on a cancellation petition filed by M/s Nirmal Industrial Controls Pvt. Ltd. (Applicant). In its decision the IPAB condemned both the excessively monopolistic attitude of the Respondent and the absolutist position taken by the Registry.

The Applicant filed the petition after its application for registration of its mark NIRMAL was turned down by the Registry, mainly on the ground of the mark’s deceptive similarity to the Respondent’s registered trademark NIRMA in Class 6. The Applicant asserted that its mark had been in continuous use since 1973, whereas the Respondent had applied for registration of its mark as a proposed mark, for a proposed product category, metal products, in 1984. It further argued that despite the fact that more than five years had elapsed since the impugned mark was entered in the register, the Respondent had not used its mark for the goods covered under Class 6 until the date of filing the cancellation petition and in fact had used its registration only to prevent rightful proprietors from acquiring valuable statutory protection for their marks. The Respondent contended that the mark NIRMA was well known in the market and registered in all classes under the Trade Marks Act. It further argued that its mark was registered in 100 countries and its goods sold through 2 million retailers to more than 400 million consumers.

The IPAB, after carefully scrutinizing the documents and arguments put forth by both parties, observed that despite the Respondent’s efforts there was no credible evidence to prove use of the impugned mark in respect of the goods for which it was registered in Class 6. It further opined that even though NIRMA might be a well-known mark, the trademark law should not be stretched to indulge in trade restraint. Therefore, the IPAB held that the Registry had erred in holding that “NIRMAL” was deceptively similar to “NIRMA.”

Consequently, the Board allowed the petition and ordered that the registered trademark NIRMA in Class 6 be removed from the register.

In addition to condemning the monopolistic attitude of the Respondent, the IPAB raised questions about the conduct and knowledge of the concerned official at the Registry. It pointedly advised the Registry not to act as a hand-holding emissary for proprietors of well-known marks, but instead to stay focused on the merits of each case.

"This article first appeared here in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA)."

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