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Section 57 in The Trade Marks Act, 1999
Section 47(1) in The Trade Marks Act, 1999
Section 57(2) in The Trade Marks Act, 1999
Section 2 in The Trade Marks Act, 1999
Section 9 in The Trade Marks Act, 1999

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Intellectual Property Appellate Board
Syed Ghaziuddin S/O Late Sri Syed ... vs Pepsico Inc, Represented In India ... on 11 March, 2005
Equivalent citations: 2005 (30) PTC 448 IPAB
Bench: S Jagadeesan, R Singh

ORDER Raghbir Singh, Vice Chairman

1. The petitioner has filed an application for removal of the trade mark 'MOUNTAIN DEW' registered under No.436257 in class 32. Petitioner at the outset has given a description of his business activities and the reputation which he has established in manufacturing packaged drinking water and marketing the same. He claims to be an aggrieved person in view of a case filed by the respondent which is pending in the City Civil Court Hyderabad as OS No.95/2004. In the said suit the respondent has sought an injunction against the petitioner from infringing the trade mark 'MOUNTAIN DEW' of the respondent. The petitioner had also filed a case against the respondent OS No.19/2004 in the City Civil Court at Hyderabad.

2. The petitioner claims that the mark 'MOUNTAIN DEW' being a combination of two generic and dictionary words does not producte a distinctive mark per se. The mark 'MOUNTAIN DEW' under section 9 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) is devoid of any distinctive character and hence not eligible for registration. The respondents applied for registration of the said mark in 1985 without any bonafide use of the said mark and it is only in 2003 that they have launched this brand in India. Prior to this there was absolutely no use of the mark. Respondents have acquiesced to the use of the mark by the petitioner herein since they were all along aware of the use of the said mark by the petitioner. Thus they are estopped from claiming rights of infringement in the matter. The mark 'MOUNTAIN DEW' claimed to be the registered mark of the respondent is in fact registered in the name of more than one proprietor in the United States. The predecessors through whom the respondents have claimed the use of the mark since 1940 have themselves disclaimed exclusive use of the mark 'MOUNTAIN DEW' as a condition of registration. Respondents herein are assignees of the said mark which actually flows to them from M/s Hartman Beverage Company Limited. At the time of making of the application for registration there were other registered and common law users of the registered mark in the country of origin of the respondent. The mark consists of original words of English language which are commonly used and the mark itself is a suggestive mark. Thus the same could not have been registered without evidence of distinctiveness much less in Part A of the Register as it existed under the Act of 1958. The said entry in the Register is in breach of section 9 (1) (a) and is invalid and thus liable to be removed from the Register to maintain the purity of the Register. The mark has otherwise also become non distinctive on the date of filing of this petition since the respondents have admittedly made use thereof since 2003 only which is much later to the use of the petitioner herein. The citrus flavoured drink sold by the respondent under the impugned mark has been banned by several developing nations. The petitioner has sought the expunction of the mark on the basis of the above.

3. Respondent in their counter statement filed on 7.7.2004 has controverted all the material averments of the petitioner. Respondent claims that by virtue of worldwide reputation in over 100 countries, vast publicity and long standing use has acquired them substantial reputation and goodwill all over the world including India. The mark is a unique combination of two words. The same have no direct reference to the carbonated citrus flavoured beverage sold under the said mark. It is arbitrary adoption in relation to carbonated citrus flavoured and thus has become distinctive of the respondent. The sales of the mark 'MOUNTAIN DEW' runs to billions of dollars and approximately 13 million US dollars per annum are spent on advertisement and promotion of 'MOUNTAIN DEW' brand. The mark was adopted in 1940 and is being used continuously since then. In fact the 'MOUNTAIN DEW' beverage was the first carbonated citrus flavoured to be sold on a national basis in the United States. The 'MOUNTAIN DEW' beverage was introduced in India on 17.1.2003 and has received tremendous response in the Indian market. The sales figure of 'MOUNTAIN DEW' since its inception till date of filing of the written statement is worth Rs.175 crores approximately. The advertisement expenditure of the respondent in relation to the brand till date approximately is Rs.18 crores. The rights of the mark 'MOUNTAIN DEW' in favour of the respondent was recognized by the Division Bench of the High Court of Delhi in O.C.J. No.1 of 1997 vide order dated 10.9.1997 whereby the order of the single judge stating that the mark 'ORANGE DEW' is not similar to 'MOUNTAIN DEW' was stayed. The respondent in that case made a statement to the Court that they would not pursue the registration of the name 'ORANGE DEW' and accordingly the appeal was disposed of on 15.3.2004. 'MOUNTAIN DEW' represents nearly 10% of Pepsi's worldwide sale and also 17% of its sale in USA. A search on the net would give thousands of results indicating the association of the respondent with the impugned mark. The plea of the petitioner that 'MOUNTAIN DEW' consists of original words and thus not entitled to registration is wrong and contrary to very many judicial pronouncements by the Courts in India. 'MOUNTAIN DEW' is an arbitrary mark. According to the well recognized classics of trade mark law , "Suggestive Mark" are in the same position as arbitrary marks and are entitled to protection without proof of secondary meaning. The courts in India in very many cases have protected common words as trade marks. The impugned mark is completely distinctive of the respondent. 'MOUNTAIN DEW' is a well known trade mark in India. The petitioner is not an aggrieved person. None of the conditions of section 57 of the Act are satisfied. The application also otherwise lacks in matter of verification and attestation and is liable to be rejected. Respondent also filed evidence in form of affidavit along with the relevant documents.

4. Petitioner filed reply to counter statement of respondent on 7.10.2004 reiterating his submissions made in the petition and controverted the submissions made by the respondent in their written statement. Petitioner also along with reply filed the affidavit of evidence and documents in support thereof.

5. The matter was listed for hearing on 23.2.2005. Learned counsel Shri Sunil B.Ganu appeared on behalf of the petitioner and learned counsel Ms. Pratibha M.Singh appeared on behalf of the respondent..

6. Learned counsel for the petitioner submitted that there are admitted facts borne out of pleadings in the file that the impugned mark has not been used for more than five years. The registration is not for all goods. The product of the respondent enjoys much reputation and is prior in time and for the registrations held in USA, a disclaimer to the words 'MOUNTAIN DEW' has been included. He took us to documents at page 53 and 54 of the type set filed by him wherein he claimed that the word 'MOUNTAIN DEW' has been used by some other entities also. The impugned mark consists of words which are of common use and thus cannot acquire distinctiveness. The trade mark has never been used for packaged water. The respondent is only using 'AQUAFINA' for packaged water. Since the petitioner is using the mark 'MOUNTAIN DEW' for marketing packaged water, there is no likelihood of confusion. The petitioner drew our attention to the High Court of Delhi judgment referred to by the respondent wherein the mark 'ORANGE DEW' was not pressed for by the respondent in that case. The petitioner submitted that that case was decided on merits. Rather the respondent withdrew by himself. In any case the soft drink company Campa has used the mark 'SUN DEW'. The petitioner assailed the plea of respondent in para 12 of the respondent's counter statement that the mark is a unique combination exclusive to the respondent. He drew our attention to page 52 of the type set of documents filed by him wherein the word 'MOUNTAIN DEW' has been used by very many organizations throughout the world. He took us to pages 33-52 of the type set filed by him and concluded that the word 'MOUNTAIN DEW' is of common description and thus cannot acquire distinctiveness.

7. Learned counsel for the respondent at the outset submitted that the matter under consideration relates to a rectification petition and is not a passing off or infringement issue. She submitted that as per the extant Intellectual Property Appellate Board Rules the petitioner was under an obligation to file his affidavit of evidence along with the supporting documents with the petition. The petition filed has nothing but a statement of case with no supporting documents. In view of that the respondent along with his written statement filed the affidavit of evidence along with the supporting documents. Accordingly the respondent had no option to file additional documents along with the rejoinder. She submitted that the application has been filed under section 57 of the Act on 19.4.2004. In para 8 and 9 of the petition the plea of non-user has been taken. Though in no specific term it has been mentioned as to how the same matures to a successful claim of rectification. Since the plea of non user has been taken, for which the relevant provisions are under section 47 of the Act, it is to be seen whether there had been a non-user as provided for under the said section. The present petition was filed on 19.4.2004. The period of non-user accordingly relates back to the period beginning with 19.1.1999. Any user during this period that is between 19.1.1999 till 18.1.2004 (being three months before the date of filing of petition) shall disqualify any plea for rectification. According to the averments of the petitioner in para 9 of the petition, the respondent has launched his brand in India in 2003 by marketing his product under that brand. Learned counsel drew our attention to paras 2,4,6 and 8 of reply to application filed in the type set submitted by the respondent. In substance the submissions made are that a simple search on the internet and in the Trade Marks Registry would have revealed to the petitioner the details of the mark of the respondent. The vernacular newspaper SIASAT Delhi is not a widely circulated paper. The words 'MOUNTAIN DEW' constitute a unique combination of two words and have no direct reference to carbonated citrus flavour sold under that mark. It is exclusively identified with the respondent with a long, continuous and exclusive use since 1940. She took us to page 138 of the type set filed by her and submitted that the case relating to 'ORANGE DEW' was a contested case and was decided on merits. The plea of the petitioner as to no bonafide intention to use the mark stands blasted with the successful launch of the product under the mark and sales thereto. She took us to the copy of the registration certificate placed at pages 48, 49 and 51 of her type set and submitted that no disclaimer has been put on the mark in the registration certificate issued in USA. In reply to para 13 of the statement of case of the petitioner, she submitted that distinctiveness of the mark has to be claimed before the date of filing of the petition for rectification and according to the documents in evidence submitted by her the reputation of the mark throughout the world has endowed necessary distinctiveness on the mark. She further submitted that the mark in terms of provisions of the Act is a well known mark. She drew our attention to section 11, section 2 (1) (zg) read with section 2 (2) (b) and (c ), proviso to section 9(1)(b), section 9(2)(a), section 11(6)(v) and section 29(1) of the Act. She drew our attention to 2004 PTC 578 IPAB P.Kamala Devi Chordia v. P.Ganeshan and Ors. and pleaded that the present petition for rectificiation is nothing but a counter blast action to the infringement suit filed by the respondent against the petitioner. She submitted that the plea under section 47 of the Act is not maintainable as the petitioner is under obligation to prove that the registration was without any bonafide intention on the part of the applicant for registration that it should be used for those goods and there has, in fact, been no bonafide use of the trade mark in relation to those goods. Thus the plea of no bonafide intention to use cannot be held without proof that there had not been a use upto a date before three months of the date of filing of the petition. She submitted that the petitioner has not put reliance upon section 57(1) of the Act. Nothing of substance has been mentioned in relation to section 57(2) of the Act. It is only the foreign precedents of the use of the mark 'MOUNTAIN DEW' has been mentioned. Nothing with evidence to the use of the mark 'MOUNTAIN DEW' in India has been brought out on record. She drew help from National Bell Company v. Metal Goods Manufacturing Co. AIR 1971 SC 898. She also drew support from American Home Products Corporation v. Mac Laboratories Pvt. Ltd AIR 1986 (1) SCC 465 wherein it was held that twin elements contained in section 46(1) (a) of the Act are conjunctive in character. She took us to Billa Jagan Mohan Reddy v. Billa Sanjeva Reddy, AIR 1994 (4) SCC 659 with a view to support her claim that the additional evidence filed by her in view of the special circumstances in this case should be taken on record. In conclusion, she drew our attention to Hardie Trading Limited v. Addison Paint and Chemicals Ltd., 2003 (27) PTC 241 SC wherein it was held that there should be an evidence of absolute non user of a trade mark during the period of five years and one month prior to date of application.

8. The petitioner in reply submitted that it is not a counter blast suit. Respondent had never been in India in matter of his business. It is only in 2003 they started selling their products under the trade mark 'MOUNTAIN DEW'. They claim to be giants but they have not produced any record of sales. It is only the figures through affidavits which is not enough which they have produced and their mark as on the date of application was not distinctive.

9. We have carefully gone through the pleadings of both the petitioner and the respondent and heard the arguments of both the counsel. The thrust of the argument in the petition is that there had not been a user of the mark over a long period and as such the mark should be expunged from the Register. The petitioner has in no specific term asked for the relief under provisions of the Trade Marks Act, 1999 whereunder the expunction can be sustained. However, it can be assumed that the relevant provisions therefor are under section 47(1) (b) of the Act. It is evident as from the pleadings of the petitioner himself that the respondent have started using the brand of selling their products under the trade mark since 2003. This much is enough for the respondent to cross the bridge for having a successful claim under section 47(1) (b) of the Act. The burden is upon the petitioner to prove that in fact there had not been any use of the mark for over a period of five years prior to three months of the filing of the petition for rectification. The plea raised by the petitioner under section 57 of the Act as to the entry wrongly remaining on the Register holds no ground. Distinctiveness of the mark is beyond doubt since it is being used throughout the world over a long period of time since 1940. The literal meaning of 'MOUNTAIN DEW' has nothing to do with the products for which it is used. Thus it is not descriptive of the products being sold thereunder. It is a unique combination of the words coined arbitrarily which has assumed popularity over a long period for the goods for which it is being used. Thus there is nothing in the plea of the petitioner for the removal of the mark from the Register under section 57(2) of the Act.

10. In view of the above the petition for removal of the mark 'MOUNTAIN DEW' registered under No. 436257 fails and accordingly the same is dismissed. No order as to costs.