Intercontinental Great Brands Llc v. Hemalatha Sharma Trading As M/S. Oreo Besin
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 07.03.2024
CORAM
MR.JUSTICE N.SESHASAYEE Intercontinental Great Brands LLC 100 Deforest Avenue, East Hanover NJ, 07936, United States of America ... Petitioner Vs 1.Hemalatha Sharma Trading as M/s.Oreo Besin Plot No.338, Singareni Colony Behind Singareni Colony Welfare Office Saidabad, Hyderabad, Andhra Pradesh.
2.Rao & Rao 3.Deputy Registrar of Trade Marks Trade Marks Registry Boudhik Sampada Bhawan G.S.T. Road, Guindy, Chennai - 600 032 ... Respondents Page 1/8
Prayer: Original Petition filed under Section 57 of the Trade Marks Act, to expunge the registration of the impugned mark OREO BESIN bearing Registration No.1835147 by its removal from the register and for costs. For Appellants : Ms.Antara Balaji for Mr.Rajesh Ramanathan for M/s.Lall and Sethi For Respondent : Mr.Rajesh Vivekanandan Dy. Solicitor General for R3
O R D E R
This petition is filed for rectification of Register of the third respondent where the petitioner seeks cancellation of first respondent's mark off the Register of the third respondent. [The second respondent herein is irrelevant party to the proceedings]
2. The petitioner is a U.S. based company and they are in the field of manufacture and one of the market leaders in the field of confectionery. They trade their products under the trade name 'OREO'. They have registered the word 'OREO' under Class 30 for multiple products covered under Class 30. Page 2/8
This apart, they also have registered the word 'OREO' with a catchy font style and colour scheme. This apart, they also have both device and label marks with the word OREO prominently printed. The details are as below: Page 3/8
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3. Be that as it may, the first respondent herein has registered her word mark 'OREO BESIN' in Class 35 for marketing her pharmaceutical preparations. She applied for registration on 01.07.2009 with the user status for barely a month from 01.06.2009 and it came to be registered on 19.03.2021 and has since been renewed periodically. Even if the word OREO is searched for its meaning, Google only shows petitioner's biscuit.
4. Inasmuch as the petitioner had registered its word mark OREO at least for four different products in the same Class, it is very evident that in the same class, it has exclusive ownership over that. The first respondent, therefore does not have any right per se to use the word OREO as its trade name and does not have any right to have it registered.
5. Notice was served on the first respondent but she chose not to appear. Heard the counsel on record for the petitioner and the Deputy Solicitor General for the third respondent.
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6. Ms.Anthra Balaji, the learned counsel for the petitioner submitted that petitioner's word mark 'OREO', is an invented word, which implies that it is entitled to optimum protection in the Trade Mark regime. Therefore, notwithstanding the fact that the first respondent had registered its mark only as a trade name in Class 35, yet inasmuch as petitioner's word mark 'OREO' is an invented word, it has a direct impact on the petitioner's mark.
7. This court, carefully considered the submissions of the learned counsel and also perused the records. This court also verified with the dictionary and finds itself satisfied that it is an invented mark. Necessarily, the first respondent does not have any right to rob somebody's invented property for its commercial use.
8. The issue now is whether the entire word mark of the first respondent shall be struck off from the register of the third respondent. On perusal, this court finds the first respondent's mark is based on two independent words they are: OREO and BESIN. While the petitioner has every right to seek cancellation of the word, 'OREO BESIN' of the first respondent, so far as the word Page 6/8
BESIN is concerned, this word is not part of any petitioner's word mark or label mark. However, the mark has been registered as one single mark. Hence this court is constrained to direct that the said mark be struck off from the register of the third respondent.
9. Accordingly, this petition is allowed and the third respondent is directed to strike off the first respondent's mark 'OREO BESIN' from the Register forthwith. No costs.
07.03.2024 Asr Index: Yes/No Speaking Order / Non-Speaking Order To The Deputy Registrar of Trade Marks Trade Marks Registry Boudhik Sampada Bhawan G.S.T. Road, Guindy, Chennai - 600 032 Page 7/8
N. SESHASAYEE, J.
Asr Dated : 07.03.2024 Page 8/8