- Kansai Nerolac Paints Ltd. vs. Rukmini Chemical Industries Pvt. Ltd. NKP 2077 Decision no. 10561
Ratio Decidendi-The similarity in trademarks to deregister the similar trademark includes similar words, symbol loos, similar phonetics etc. Also, it clearly stated the malafide intention and prime facia bad faith from the beginning of operation is invalid ground to question on limitation in the cancelation of such trademark registration.
If foreign company or another company’s trademark is registered with malicious intent, or if the company and the Office of Company Register (OCR) failed to show pure intent from the process of registration of the trademark registration process, there shall be no statute of limitations for such a registrations.
2. Pashupati Biscuit Industries Pvt.Ltd vs Hemnath Neupane (Nebiko Pv.Ltd), NKP 2076(2019), Decision no. 10216
Fact of the case:
Pashupati Biscuit Industries have been producing biscuits named “ High Energy” since 2030/3/11 which is also registered in DOI. Nebiko Pvt. Ltd.‟s trademark was published in IP bulletin in 2069/3/29 for opposition to which Pashupati Biscuit Industries opposed the application of registration on 2069/6/15 accusing Nebiko for copying the design, wrapper of Pashupati Biscuit Industries.
Petitioner compliance:
Petitioner filed a complaint saying that opponent has been producing the biscuit by copying the high energy biscuit of Pashupati Biscuit Industries.so, claimant request the court to put the production in halt till the final decision is not made because it cause huge loss to Claimant. Claimant filed an application in Appeal Courtstepping on High Court rules.
Appeal Court decision:
The Court decides that the composition of biscuit which is followed by Pasupati Biscuit Industries is not developed by the company itself rather it was developed by World Food Program (WFP) and as its composition was uploaded in the website. Therefore the application filed by the petitioner on the basis of copying the design, wrapper and taste of Pashupati Biscuit Industries should be rejected as opponent claim is baseless.
Supreme Court decision:
Every company has the right to have their own logo, patent, trademark etc. Once a company has its own trademark, no other can copy it because it is considered as the intangible property of that particular company and is related with the prestige of that particular company. Therefore, if one company owns patent and trademark legally, no other company has right to copy the same trademark and is said to be illegal. The issue raised by the petitioner was regarding time taken by the High Court to pass the judgment that created market monopoly for Pashupati Biscuit Industries. Therefore orders DOI and Appeal court to give decisions in time.
Analysis of case:
In this case we can see that, trademark is protected which is created and invented by the human being themselves. The principle of distinctiveness has been observed by the court. In this case there is no any distinct trademark of Pashupati Biscuit Industries. So, court gave the decision in the favor of Nebiko because Pasupati Biscuit Industries has not develop the composition by the company itself rather it was developed by World Food Program (WFP) and as its composition was uploaded in the website. So, to have a right on trademark and protection it should be distinctive and new creation.
3. Madan Lamsal v Repsona Publication PVT LTD, Decision no. 8686 N.K.P. 2068
Appellant Contention:
Appellant filed a petition saying that he have acquired permission from District Administration Office Kathmandu in order to run the news publication house and is publishing English monthly newspaper with ‘New business Age’ label on it. The plaintiff has registered the label “new business age” in 2054/11/24. The trademark registered by Madan Prasad Lamsal was used by Hari Kumar Rai as Business age and have deceived the customer with identical label.
Defendant Compliance:
The defendant replied that the plaintiff Madan Prasad Lamsal have deceived the publication and he registered the mark business age as new business age in his name. The plaintiff since deceived the company must be liable to pay the fine for his actions.
Facts to be decided:
While deciding this case the court looked into the three questions:
- Whether a person can use the trademark if he is using the trademark even before the person who registered according to PDTA, 2022 section 18?
- Whether the dispute should be settled according to press and publication act 2048 if the dispute is about the trademark used in publication?
- Whether the defendant is liable to pay fine according to PDTA, 2022?
Decision of Supreme Court:
The Supreme Court upheld the verdict of the applet court Patan regarding the third question the defendant was not liable to pay the fine to the plaintiff. The court also quashed the verdict of Applet court Patan where Applet court upheld the decision of DOI being based on press and publication act, 2048 section 7(4) and 40 and said Repsona publication to change the design.
4. Director of Mount Everest Brewery P.V.T L.T.D Dr. Daman Bahadur Amatya v. Government of Nepal department of industries, Decision no. 8356.
The appellant filed appeal letter in 2060/2/22 saying that the label used in the beer bottle are only registered as the trademark but the bottle are not registered in the DOI. These beer bottles are openly sold and brought in the market by the buyer and seller. The decision given by the DOI in 2060/1/12 saying that the use of the bottle of different brewery is against the provision of the patent, design and trademark, Act 2022 section 16(2) should be quashed.
Defendant Compliance:
The DOI gave the order to the four beer company to stop using the bottle of Gorkha Brewery and ordered to use their own bottle in 2060/1/12.
Facts to be decided:
While deciding this case the court looked into the three questions:
- Whether the bottle used to pack the beer or any liquid substance can be legally registered as a trademark or whether they are trademark or not?
- Whether it is necessary that trademark owner have to manufacture the rapper containing the trademark or the bottle embossed with the picture or sentence in order to acquire the right of trademark?
- What are the extension of the trademark holders’ right and can it is protected by patent design and trademark act, 2022 section 2(c) and 16(2) and can the trademark holders right be protected from the unauthorized use of their bottle by the other competitors’?
The court gave verdict that the use of the bottle of Gorkha brewery pvt ltd embossed with the word “Tuborg” by the United brewery pvt ltd, Mount Everest brewery pvt ltd is against the patent, design, and trademark Act, 2022 section 16(2) and the court up held the decision of the DOI of 2060/1/12 and also upheld the decision of the applet court.
5. Tejram Dharampal vs. Ganapati Tobacco, NKP 2076(2019), volume 7, Decision no: 10303
Fact of the Case:
The Respondent had applied for the registration of the mark “RAJ NIWAS‟ before the DOI on 2072/05/09. The Petitioner also applied for the registration of the same mark “RAJ NIWAS‟ before the DOI on 2072/07/23. The Petitioners mark had been published in the IP Bulletin for Opposition, which was then opposed by the Respondent on the grounds of “first to file‟ rule. DOI refused the opposition party and decided in favor of petitioner.
The respondent appealed against the decision of DOI before the High Court.
Petitioner compliance:
The mark “RAJ NIWAS” is well known mark in the market of India and Nepal and had obtained its protection through registration of mark in Lebanon and UAE. The petitioner claim that they were the prior user of the mark “RAJ NIWAS” and there mark “RAJ NIWAS” need to be register in DOI.
Respondent Compliance:
The respondent responded that they were the first one to apply for the protection and registration of mark in Nepal. They also responded that they has paid tax of more than two cores to the Inland Revenue Department and have invested a huge amount of money in its promotion and development .
Appeal Court Decision:
Appellate Court quashed the decision of DOI and issued order instructing to register the trademark (RAJ NIWAS) in name of the respondent to the DOI. Later, petitioner again filed petition in the Supreme Court.
Supreme Court Decision:
Court decided the case in favor of the Respondent and upheld the decision of appellate Court on the followings ground.
The court emphasized on the provision of well-known marks and the protection granted under Article 6bisofthe Paris convention, where by it states that each country of the union shall determine the conditions for filing and registration of the trademarks by its domestic legislation .Where the applicant must fulfill all the legal formalities for the registration of a mark in Nepal.
The Petitioner had applied for the registration of the mark on the basis of its home registration; however, the mark had not been registered in the home country itself at the time of filing the application. Trademark application and trademark registration are two different things. The PDTA clearly states that the trademark must be registered in the foreign country of origin in case of a foreign mark application in Nepal. So, here SC has given the verdict in favor of Respondent. The court also laid down the precedent of granting priority to the prior application i.e. “first to file” rule.
Analysis of the Case
In the case of the court has cited Article 6bis of the Paris Convention, which states that, conditions for the filing and registration of the trademarks to be determined in each country of the Union by its domestic legislation which means that the applicant must fulfill all the legal formalities for the registration of a mark in Nepal. And thus, without duly registering and receiving the certificate of registration in India, cannot claim for registration and protection in Nepal, despite being a well-known mark in India. Here, despite being a well-known mark, the petitioner was deprived of trademark protection due to unavailability of well-known mark provision and protection in Nepal.
6. Sumi Distillaries v. Guiness United Distillaries Vintners Amsterdan, NKP 2068 (2012), Decision no.8577.
Fact of the case:
Fact of the case: In this case, Trademark ‘CORDON’ has been already registered by Sumy Distillery Pvt. Ltd. and Guinness United Distillery BV (Diagco Brands SBV) had applied for the registration of trademark called ‘GORDON’. The Department of Industry decided that no trademark shall be registered if it is similar to a registered trademark. This case was reversed from Appellate court and filed in Supreme Court.
Decision of the Court:
Supreme Court here, has decided on favor of Respondent claiming the well-known protection of GORDON. The SC here stated that such identical name and mark can create confusion among the customers. So, despite CORDAN being already registered can be revoked by DOI, underground of distinctiveness of the mark.
Analysis of the case:
Here, the principle of distinctiveness has been observed by the court. Imitating similar trade mark can create a confusion among the consumer and thus lead to unauthorized commercial exploitation in the market. The goodwill, GORDAN
carried along the time has brought faith in consumers and has been commercially gaining huge in the market. Any act of CORDAN in the market can easily create misperception. And, here the court seems to have undertaken a progressive decision. The Department may cancel the registration of any trademark if it is felt such trade- mark may hurt the prestige of any individual or institution or adversely affect the public conduct or morality or undermine the national interest or the reputation of the trade-mark of any other person.