Delhi High Court: A petition was filed under Section 47 of the Trade Marks Act, 1999 (‘the Act’) seeking removal of Respondent 1’s trade mark ‘AL-WALIMAH’ registered in Class 30 (‘the impugned mark’). Anish Dayal, J.*, allowed the present petition in terms of Section 47(1) of the Act, as there was no bona fide use of the impugned mark by Respondent 1 in relation to goods in Class 30, particularly, ‘rice’. The Court directed that the impugned mark ‘AL-WALIMAH’ in Class 30 should be removed from the Register of Trade Marks, and the website of Respondent 2, Registrar of Trade Marks should be updated accordingly.
Background
Petitioner, while the matter was pending before the Court, was successful in two of its trade mark registration applications and the mark ‘AL-WALIMAH’ was registered in its favour in respect of marks 
and 
for goods in Class 30, namely, rice. Petitioner sold Indian Basmati rice majorly in Middle Eastern countries under the trade mark ‘AL-WALIMAH’. Petitioner claimed that the said mark means “the reception” in Arabic; and that the said mark was registered in petitioner‘s favour in several Middle Eastern countries. Petitioner also applied for registration of the mark ‘AL-WALIMAH’ through five applications in India, all of which were opposed by Respondent 1.
Respondent 1 filed an application for registration of the mark ‘AL-WALIMAH’ in Class 30 claiming user since 1-04-1975. Since no opposition was filed post publication, the impugned mark was registered in Respondent 1’s favour on 13-11-1995. Petitioner claimed that the said mark was neither used by Respondent 1 prior to filing of application nor any time thereafter. Petitioner’s counsel submitted that Respondent 1 had business relations with petitioner and was, therefore, aware of the use of the mark by petitioner and thus Respondent 1 had dishonestly applied for the mark in India and got the impugned registration.
Further, petitioner’s counsel submitted that as per Section 47(1)(b) of the Act, the expiry of five years and three months would be on 13-02-2001, much prior to the present petition being filed. Further, it was claimed that petitioner had established prior use of the trade mark ‘AL-WALIMAH’ and had acquired reputation and goodwill in the said mark. Petitioner claimed to be the owner of mark ‘AL-WALIMAH’ and was in continuous and extensive use since 1980, therefore, it claimed to be a “person aggrieved” under Section 47 of the Act.
Analysis, Law, and Decision
The issue for consideration was “whether the mark ‘AL-WALIMAH’ was liable to be removed under Section 47 of the Act on the ground of non-use?”.
The Court relied on Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92, and Infosys Technologies Ltd. v. Jupiter Infosys Ltd., (2011) 1 SCC 125 and after taking note of the fact that Respondent 1 had opposed petitioner’s applications for registrations; petitioner was the user of the mark ‘AL-WALIMAH’ in various countries; and that petitioner was now the holder of two trade mark registrations in the said mark in India, opined that petitioner was evidently a “person aggrieved” under Section 47 of the Act.
The Court noted that as per Section 47 of the Act, a registered trade mark was liable to be taken off the Register of Trade Marks if the mark was not used for a period of five years and three months prior to the date of filing of the petition.
The Court opined that the investigation report, prima facie, revealed that the impugned mark was never used by Respondent 1. Further, no rice product under the impugned mark was found in the market survey of relevant shops in Amritsar and Delhi, nor did any shopkeeper expressed any knowledge in that regard.
The Court relied on Disney Enterprises I.N.C. v. Balraj Muttneja, 2014 SCC OnLine Del 781, and Russell Corpn. Australia Pty. Ltd. v. Ashok Mahajan, (2023) 4 HCC (Del) 301 and after considering that there was business dealing between Respondent 1 and petitioner in relation to export of rice, opined that it was quite possible that Respondent 1 applied for registration of the impugned mark and procured the same without petitioner’s knowledge.
The Court allowed the present petition in terms of Section 47(1) of the Act, as there was no bona fide use of the impugned mark by Respondent 1 in relation to goods in Class 30, particularly, ‘rice’. The Court directed that the impugned mark ‘AL-WALIMAH’ in Class 30 should be removed from the Register of Trade Marks, and the website of Respondent 2, Registrar of Trade Marks should be updated accordingly.
[A.K. Al Muhaidib & Sons v. Chaman Lal Sachdeva, 2024 SCC OnLine Del 1026, decided on 15-02-2024]
*Judgment authored by: Anish Dayal
Advocates who appeared in this case:
For the Petitioner: Vikramjeet Singh, Advocate
For the Respondents: Harish Vaidyanathan Shankar, CGSC; Srish Kumar Mishra, Alexander Mathai Paikaday, Krishnan V., Advocates
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