A general perception about Trademarks is, once registered it is perpetually secured from legal complications. But this is not true. Even a Registered Trademark can have legal difficulties and registration of the mark can be cancelled.
In the year 2020 Intellectual Property Appellant Board (IPAB) cancelled the registration of a 37-year-old registered trademark on a petition filed by Eveready.
In the case of “MR. SANJAY CHADHA TRADING AS M/S EVERYDAY TOOLS EMPORIUM VERSUS UNION OF INDIA & ORS.”
The applicant Mr. Sanjay Chadha is engaged in the business of hand tools like screwdrivers and cutting pliers and had a registered trademark for “Eveready” in class 8 bearing Trademark applications no 439233 and 539621. A rectification petition was filed by Eveready Industries India Pvt. Ltd. to cancel the registration of both applications filed by the applicant to IPAB (Intellectual Property Appellant Board).
The IPAB has cancelled the registration of the applicant’s trademark through its order dated 22nd September 2020. Mr Sanjay Chadha moved to Delhi High Court against the IPAB order and filed a plea but the single-judge bench rejected it.
Mr Sanjay Chadha filed an appeal to the division bench of The Delhi High Court comprising Justice Vibhu Bakhru and Justice Amit Mahajan, while dismissing the appeal few important observations made by the bench are:
- The trademark acquires a value that can be estimated in monetary value. Although Intangible, a trademark is a valuable asset.
- That “EVEREADY” is a well know trademark and belongs to Eveready Industries India Ltd with substantial goodwill which can’t be faulted.
- That Eveready is not a generic word, it was coined name driven from “EVER” & “READY”. It is hard to believe that the applicant and his predecessor are unaware of the brand Eveready for Dry Batteries.
- That the applicant and his predecessor had adopted the trademark “EVEREADY”, “to ride on the goodwill and to take unfair advantage of its reputation”
- Apart from the primary function of identifying the goods, their class or source the trademark has an investment function as well, which is to preserve the investment made by a proprietor of the trademark in publicity, promotions and reputation building.
- Using any similar or identical mark to an existing registered mark would inevitably result in dilution and negatively affect the value of the existing registered trademark.
- The Trademark Act also protects a reputed trademark. It restricts the use of similar or identical or descriptively similar trademarks notwithstanding they are not registered with respect to goods covered by the well-known or reputed trademark if the use is to take undue advantages.
Title: Mr Sanjay Chadha trading as M/s Everyday tools emporium versus Union of India & ORS.
Case No: LPA-388/2022
Neutral Citation No: 2022/DEL/004457