ALLIED BLENDERS AND DISTILLERS LIMITED v. KULBIR SINGH ANR

Judgment

1. The present Petition has been filed by the Petitioner under Sections 9, 18, 47 and 57 of the Trade Marks Act, 1999 (‘Act’) seeking cancellation of the Trade Mark No. 1799370 registered in Class 33 for the Mark (‘Impugned Mark’) in the name of Respondent No.1, and for the rectification of the Trade Marks Register under Rule 7 of the Delhi High Court Intellectual Property Rights Division Rules, 2022. C.O. (COMM.IPD-TM) 191/2024

FACTUAL BACKGROUND 2. The Petitioner owns and operates a well-established business, inter alia, of manufacturing and marketing Indian Made Foreign Liquor and other related goods. The Petitioner’s merchandise is sold globally under many distinctive Trade Marks and caters to various consumer segments. 3. Over the past several decades, the Petitioner introduced multiple well- known brands, and many of them have become popular names in the country such as ‘OFFICER’S CHOICE’, ‘OFFICER’S CHOICE BLUE’, ‘CLASS VODKA’, ‘CLASS 21’, ‘CALYPSO’, ‘SUMO’, ‘1000 GUINEAS’, ‘LORD & MASTER’, ‘KYRON’, ‘STERLING RESERVE’, among others. 4. The Petitioner’s Trade Mark relevant to the present controversy is ‘JOLLY ROGER’. The Petitioner’s predecessors had adopted the said mark in the year 1991. The Petitioner’s group entity BDA Private Limited had applied for the registration of the Composite Mark ‘JOLLY ROGER’ in the year 2006, which was granted under Registration No. 1487257 in Class 33. After the merger of the alcohol beverages business with the Petitioner, the said Mark stands registered in the Petitioner’s name. The Petitioner has extensively been using the Mark ‘JOLLY ROGER’ since the year 2010 and the goods bearing the said Mark are sold all around the country by the Petitioner. 5. The Petitioner claims that the Mark ‘JOLLY ROGER’ has acquired significant goodwill and reputation in the alcoholic beverages market in India. The Petitioner’s website (www.abdindia.com) provides information on all their products bearing the Mark ‘JOLLY ROGGER’ which has led to further enhancement of the awareness and recognition of the Petitioner’s C.O. (COMM.IPD-TM) 191/2024 products under the said Mark. The Petitioner further claims that it has made significant financial investment to promote the sale of its products bearing the Mark ‘JOLLY ROGER’. 6. The Sales Figures of the Petitioner’s products bearing the ‘JOLLY ROGER’ mark are as under: JOLLY ROGER - Sales Details Year 2023-24 2022-23 2021-22 2020-21 2019-20 2018-19 2017-18 2016-17 2015-16 2014-15 2013-14 2012-13 2011-12 2010-11 Total (in units) 2,15,562 3,21,748 2,10,856 1,24,989 68,380 1,09,059 2,32,525 2,67,379 3,29,553 2,13,111 1,94,315 1,80,566 2,04,062 1,47,543

7. The Impugned Mark was registered under the Registration No. 1799370 in Class 33, in the name of Respondent No.1, having address at C/o Roger Industries Limited, Agra-Mathura Road, Artoni, Agra, Uttar Pradesh –

282007. The Application for the registration of the Impugned Mark was filed on 24.03.2009 and the Impugned Mark is valid till 24.03.2029. 8. On 15.07.2024, the Petitioner received a Cease-and-Desist Notice issued by Roger Industries Limited through its Director, i.e., Respondent No.1, calling upon the Petitioner to cease and desist from its business C.O. (COMM.IPD-TM) 191/2024 operations using the Mark ‘JOLLY ROGER’. The Petitioner sent a detailed Reply dated 25.07.2024 to the Petitioner and subsequently, the present Petition was filed before this Court. 9. Vide order dated 01.10.2024, this Court directed that Notice be issued to Respondent No.1 through all modes and granted four weeks’ time to file the Reply. Thereafter, this Petition was taken up by this Court on

15.01.2025, however, none appeared for Respondent No.1 despite issuance of Notice vide order dated 01.10.2024 and the Respondents were further granted a duration of two weeks to file the Reply. 10. This matter was called again for hearing on 28.04.2025 and this Court in the order of even date noted that despite Respondent No.1 being served on 11.11.2024 via speed post, no one had entered appearance on his behalf and no Reply was filed by Respondent No.1 despite repeated liberty being granted to do so. Accordingly, Respondent No.1’s right to file a Reply was closed and Respondent No.1 was proceeded ex-parte vide order dated

28.04.2025. SUBMISSIONS ON BEHALF OF THE PETITIONER: 11. Mr. Pravin Anand, the learned Counsel for the Petitioner submitted that the predecessor of the Petitioner adopted the Mark ‘JOLLY ROGGER’ in the year 1991, in respect of goods falling in Class 33. It is further submitted that the Petitioner has been using the said Mark since the year 2010 and is the registered proprietor of the said Mark. It is further submitted that the Petitioner is the prior adopter and user of the said Mark. 12. The learned Counsel for the Petitioner submitted that the Petitioner has been granted registration for the following Marks in Class 33 reflecting the brand name ‘JOLLY ROGGER’: C.O. (COMM.IPD-TM) 191/2024 Serial No. Application No. Trade Mark 1 2 3 4 5 6 7 8 1880332 1487257 2306307 2337094 4753493 5180462 5589908 5589909 C.O. (COMM.IPD-TM) 191/2024 9 10 11 12 13 14 15 5589910 5589911 5589912 5589913 5589914 5589915 1845388 JR

13. It was submitted that Respondent No.1 is not the first adopter of the Mark ‘ROGER’ in India and the said Mark is a common name. It is further submitted that there are several third-parties who have registered their Trade Mark containing the word ‘ROGER’ and therefore, no monopoly can be claimed by Respondent No.1 over the usage of the said word for all goods and classes. 14. The learned Counsel for the Petitioner submitted that Respondent No.1 completely failed to put the Impugned Mark in use in relation to the C.O. (COMM.IPD-TM) 191/2024 goods covered in Class 33. It is further submitted that the Affidavit dated

23.08.2024 of Mr. Ankur Sachdeva, Chief Revenue Officer of the Petitioner, clearly shows that there is no product that is marketed by Respondent No.1 in relation to Class 33 goods and that the Impugned Mark is not in use in the market, either by Respondent No.1 or by Roger Industries Limited in relation to Class 33 goods. 15. It was submitted that a bare perusal of the Memorandum of Association of Roger Industries Limited shows that there is no intention to use the Impugned Mark for Class 33 goods. A copy of the said Memorandum of Association was handed over to this Court by the learned Counsel for the Petitioner and the same is taken on record. 16. The learned Counsel for the Petitioner submitted that it is clear from Respondent No.1’s Affidavit dated 30.04.2009 filed before the Registrar of Trade Marks during the prosecution of the Impugned Mark that there was no intention to use the Impugned Mark for goods in Class 33, and that the Impugned Mark is used in relation to Respondent No.1’s footwear trade. 17. It was submitted that the Petitioner has filed and registered several ‘JOLLY ROGER’ Marks in Class 33 during the period from November 2020 to August 2024, which were not objected to or opposed by Respondent No.1, which establishes that Respondent No.1 never intended to use the Impugned Mark in relation to Class 33 goods. 18. It was submitted that the Petitioner is undergoing immense hardship on account of the registration of the Impugned Mark by Respondent No.1 and therefore, the Petitioner is a ‘person aggrieved’ as contemplated under Section 47 of the Act. It was further submitted that as the Impugned Mark has not been used in relation to goods in Class 33 for a period of 5 years 3 C.O. (COMM.IPD-TM) 191/2024 months before the present Petition was filed, it is liable to be removed from the Register of Trade Marks. 19. In view of the foregoing submissions, it was prayed that the present Petition be allowed and consequently, the Impugned Mark be expunged from the Register of Trade Marks. SUBMISSIONS ON BEHALF OF RESPONDENT: 20. Respondent No.1, despite repeated opportunities granted by this Court, has failed to enter appearance and file a Reply. Therefore, in accordance with the order dated 28.04.2025, Respondent No.1 was proceeded ex-parte. 21. The learned CGSC for Respondent No. 2 submitted that Respondent No. 2 will comply with the directions passed by this Court in this matter. ANALYSIS AND FINDINGS: 22. At the outset, it is to be noted that in the absence of any appearance and Reply by Respondent No. 1, the pleadings made in the present Petitions remain uncontroverted. It is clear that Respondent No. 1 is not interested in contesting the matter. Accordingly, the pleadings herein are deemed to have been admitted by Respondent No. 1. 23. On the basis of the documents placed on record, the Petitioner is the registered proprietor of multiple Trade Marks bearing the mark ‘JOLLY ROGER’ in Class 33. 24. Notwithstanding various grounds urged in the petition, the learned Counsel for the Petitioner effectively pressed the ground of non-use of the Impugned Mark under Section 47(1)(b) of the Act. 25. A perusal of Section 47(1)(b) of the Act would reveal that on an application made by an aggrieved person, a registered Trade Mark is liable C.O. (COMM.IPD-TM) 191/2024 to be taken off the Register of Trade Marks if up to a date three months prior to the date of filing of the rectification petition, the same is not used in relation to those goods / services in respect of which it is registered for a continuous period of at least five years from the date on which the Mark is entered in the Register of Trade Marks. 26. In Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd.,1 the Supreme Court held as under: “26. Thus before the High Court or the Registrar directs the removal of the registered trade marks they must be satisfied in respect of the following: (1) that the application is by a “person aggrieved”; (2) that the trade mark has not been used by the proprietor for a continuous period of at least five years and one month prior to the date of the application; (3) there were no special circumstances which affected the use of the trade mark during this period by the proprietor.

27. The onus to establish the first two conditions obviously lies with the applicant, whereas the burden of proving the existence of special circumstances is on the proprietor of the trade marks. These conditions are not to be cumulatively proved but established seriatim. There is no question of the third condition being established unless the second one has already been proved and there is no question of the second one even being considered unless the High Court or the Registrar is satisfied as to the locus standi of the applicant.”

27. In I nfosys Technologies Ltd. v. Jupiter I nfosys Ltd.,2 the Supreme Court described the phrase ‘person aggrieved’ in the following terms: “28. The position that emerges from the above provisions is this. Whether the application is under Section 46 or under Section 56 or a composite application under both sections, it is a prerequisite that the applicant must be a person aggrieved. Section 46(1) of the 1958 Act enables any person aggrieved to apply for removal of registered