Delhi High Court: In a suit filed to seek removal/rectification of the trade mark ‘ANDAAZ-E-NIZAAM’ registered in the name of respondent 1, for being deceptively similar and identical to the trademark of the petitioner, i.e., ‘NIZAM’S’, a Single Judge Bench of Mini Pushkarna, J. directed respondent 1 to take appropriate steps for changing their trade name and the Registrar of Trade Marks to remove/cancel the registered trade mark in favour of respondent 1 as well as to rectify the Register within four weeks.
Background
The petitioner was the proprietor of the trade mark NIZAM’S and claimed usage of the same since 01-01-1978 in respect of providing food and drink. The petitioner submitted that they had adopted the trade mark NIZAM’S for various goods and services in 1978 and had been maintaining its trade identity by selling its products under the same name.
The petitioner contended that the trade mark NIZAM’S had been used openly, continuously, and extensively by the petitioner since 1978 and had been associated exclusively with the petitioner and no one else. It was also submitted that the trade mark had been duly registered in different classes.
The petitioner submitted that it came to his knowledge in the last week of January 2024 that respondent 1 had got the mark ANDAAZ-E-NIZAAM registered and contended that the impugned trade mark was deceptively similar and identical as well as phonetically similar to their prior registered trade mark.
The petitioner submitted that he was an aggrieved person under Section 57 of the Trade Marks Act, 1999 as he was the very first user of the trade mark NIZAM’S.
The respondent submitted that it intended to run its business under the names DAAWAT-E-NIZAMUDDIN and ANDAAZ-E-NIZAMUDDIN. To this, the petitioner submitted that he would have no objection if respondent 1 carried out its business under the said names.
Respondent 1 also submitted that they shall change the name of their trade/restaurant as well as their partnership firm to either DAAWAT-E-NIZAMUDDIN or ANDAAZ-E-NIZAMUDDIN.
Analysis and Decision
The Court took on record the aforesaid undertaking given by respondent 1 and considering the same, directed respondent 1 to take appropriate steps for change of the trade name of their business/restaurant/partnership firm to the new name within four weeks.
The Court noted that in terms of Section 47 of the Trade Marks Act, 1999, a registered trade mark may be taken off the Register in respect of the goods and services for which it was registered on account of non-use of the said trade mark.
Accordingly, the Court allowed the present petition and directed the Registrar of Trade Marks (‘Registrar’) to remove/cancel the registered trade mark ANDAAZ-E-NIZAAM under Class 43 in favour of respondent 1.
The Court, while disposing of the petition, directed the Registrar to take steps to rectify the Register of Trade Marks within four weeks and the Registry was directed to send a copy of this order to the Registrar for compliance.
[Rajesh Chugh v. Mehruddin Ansari, 2024 SCC OnLine Del 5354, Decided on 05-08-2024]
Advocates who appeared in this case :
For Petitioner — Advocate Chander Shekhar Patney
For Respondents — Advocate Harsh, Advocate Akhil Saini, CGSC Harish Vaidyanathan Shankar, Advocate Srish Kumar Mishra, Advocate Alexander Mathai Paikaday
Buy Trade Marks Act, 1999 HERE
