S. Usha, Vice-Chairman

1. The Original Rectification Application is for removal of the trade mark "Crystal Glamour" registered under No. 1134456 in class 25 in respect of clothing, footwear, headgear under the provisions of the Trade Marks Act, 1999. The applicants are engaged in the business of manufacturing and selling variety of textile articles. In the year 1971, they adopted the trade mark Crystal. The trade mark Crystal has been used by the applicants continuously and extensively since then. The purchasing public and the members of the public identify the goods bearing the trade mark with the applicants and with none else.

2. The applicants have spent huge amount in promoting and popularizing the trade mark. On account of prior adoption, long and continuous use of the trade mark, the trade mark Crystal has acquired tremendous reputation and goodwill among the public.

3. The trade mark "Crystal" during the course of trade has become well known and as such the reputation accrued to the said mark is not confined to the goods for which the applicant have made use of the said trade mark but also extends to all other goods. In addition to the common law rights to the exclusive use of the trade mark Crystal the applicant also have statutory rights to the use of the trade mark by virtue of registrations. The said registrations have been renewed and are subsisting as on date. The applicant is the owner of the copyright in the artistic work relating to the manner in which the mark is represented.

4. Having full knowledge of the applicants use of the trade mark Crystal since the year 1971, the respondent applied for and obtained registration of the trade mark Crystal Glamour under No. 1134456 in class 25.

5. The application is filed for rectification of the said impugned trade mark on the grounds as hereunder-

(1) that the impugned trade mark was not used for a period of 5 years or long in respect of the goods for which the said mark was registered;

(2) that the impugned trade mark was registered without any bonafide intention to use the same in the course of trade;

(3) that the registration was obtained by playing fraud on the Trade Mark Registry;

(4) that the registration has been obtained falsely claiming to be the proprietor of the trade mark "Crystal Glamour";

(5) that the respondents had not filed the impugned application in good faith;

(6) that the impugned registration is in contravention of Section 11 of the Act;

(7) that the trade mark was registered and entered in the register without sufficient cause and is wrongly remaining on the Register.

(8) that the impugned trade mark was neither distinctive nor capable of being distinguished;

(9) that the impugned registration has been obtained by concealment of material facts and by misrepresentation before the Registrar of Trade Marks;

(10) that the registration is in contravention of the Section 9 of the Act and

(11) that the applicants business is being hampered on account of the respondents impugned registration and therefore, the applicant is a person aggrieved.

6. Notice of this application was served on the respondents but no counter statement was filed till the date of hearing on 19/12/2013. But we received a letter dated 18/12/2013 addressed to the Board from M/S. De Penning & De Penning, Counsel who had appeared for the respondents herein before the Registrar. The Counsel had informed this Board that the applicants i.e. the respondents are no more interested in the application. It was stated--

Kindly be advised that the impugned registration had lapsed long ago and the Registered Proprietor had no interest in reviving the registration. In the circumstances, there is no purpose in attending the hearing and the Registered Proprietor has duly instructed us to make no effort to take any action in the lapsed registration. You are most respectfully requested to allow the aforesaid petition to abate under appropriate direction to the Ld. Registrar of Trade Marks. We remain.

7. However, the applicants Counsel insisted that he be heard and necessary directions be given to the Registrar for removal of the registered trade mark from the register of Trade Marks.

8. The Learned Counsel Mr. Amerjit Singh submitted that the trade mark was "Crystal Glamour" registered under No. 1134456 in Class 25. The word "Glamour" was disclaimed and the only word remaining was "Crystal". Crystal was the registered trade mark of the applicants.

9. The respondent has applied for registration of the impugned trade mark on 18/09/2002. On that day, the respondents were only proposing to use the mark. The applicants had adopted and used the trade mark "Crystal" since the year 1971. The counsel further submitted that the applicants trade mark was registered. They had filed various invoices to prove their use of the mark Crystal.

10. The Counsel relied on few judgments:

(1) : AIR 1967 SC 109 -Jahuri Sah and others, Appellants Vs. Dwarika Prasad Jhunjhunwala and others Respondents--The Counsel relied on to say that if no counter statement is filed, it is therefore, admitted by the respondents all that was stated in the application.

(2) : AIR 1955 S.C. 558 (Vol. 42, C.N. 85)-Registrar of Trade Marks, Appellant Vs. Ashok Chandra Rakhit Ltd., Respondent--If a proprietor has acquired any right by long use of those parts or matters in connection with goods manufactured or sold by him or otherwise in relation to his trade, he may, on proof of the necessary facts, prove any infringement of his rights by a passing off action or a prosecution under the Indian Penal Code. Disclaimer does not affect those rights in any way.

(3) : AIR 1978 DELHI 250-Century Traders, Appellant Vs. Roshan Lal Duggar & Co. and others, Respondents--The law is pretty well settled that in order to succeed the appellant has to establish user prior in point of time than the impugned use by the respondents.

11. We have carefully considered the arguments of the Counsel for the applicant and have gone through the records.

12. The mark has been applied for registration in the year 2002 and the mark has been registered in the year 2005. The respondents counsel in their letter dated 18/12/2013 have stated that the registration has lapsed long ago and the respondents had no interest in renewing the registration. They have also requested to allow the rectification petition. In view of the above statement made by the counsel appearing for the respondents herein before the Trade Mark Registry, we do not think it necessary to go into the merits of the case. Accordingly, the application is ordered with a direction to the Registrar of Trade Marks to remove/cancel the trade mark "Crystal Glamour" registered under No. 1134456 in Class 25. No order as to costs.