The Delhi High Court recently granted relief to an Indian businessman in a protracted trademark dispute with a Pakistani national over the use of 'ELFY' as a trademark. .Justice Saurabh Banerjee on May 6 set aside a 2012 order of the Intellectual Property Appellate Board (IPAB) that had directed removal of the trademark registration favoring Indian manufacturer Vidya Bhushan Jain."The order dated 13.09.2012 passed by Intellectual Property Appellate Board (IPAB), Chennai in TRA/121/2004/TM/DEL (C.O. No. 18/2003) is set aside and the trademark No.605340 in Class-01 filed by the petitioner herein is allowed to subsist in the Register maintained by the Trade Marks Registry in accordance with law," the Court ordered..Jain had moved the High Court in 2012 after the IPAB accepted Pakistani businessman Mohamad Younus Sheikh’s claim of using the “ELFY” mark for industrial adhesives since 1981.Sheikh, the sole proprietor of Al-Nazeer Nippon Chemicals, Karachi, had accused Jain of dishonestly adopting the mark and logo — a baby elephant hanging from an arrow — in an attempt to misappropriate his company's goodwill. In 2012, the IPAB ruled that Jain failed to prove prior and continuous use of the mark since 1988 and thus ordered its removal from the register. The matter then reached the High Court and remained pending for years..Before the High Court, Jain's counsel in May 2017 submitted that his registration for the mark was valid only till August 27, 2017, and he would lose the rights over it if he was not allowed to renew it.The trademarks registry had declined to accept his renewal application due to the pendency of the case. After the issue was raised in the Court, Jain was granted a renewal of the trademark for a further period of 10 years, subject to the final outcome of the High Court case. .While the case was pending before the Court, Jain died during the COVID-19 pandemic. The case was then taken over by his business partners. Meanwhile, Sheikh also lost interest in the case. On May 6 this year, the Court noted that Sheikh had remained unrepresented since July 2019 despite repeated directions for fresh service. The case was therefore proceeded ex-parte.The counsel representing the trademarks registry also submitted that since the mark had already been renewed until August 27, 2027, the petition had become infructuous. The Court agreed with the submission.“In terms thereof, this Court agrees with the submission made by the learned counsel for the respondent no.2 as there is indeed nothing surviving in the present writ petition,” it saidAccordingly, the Court set aside the IPAB’s 2012 rectification order and disposed of the writ petition..Advocates Kunal Khanna, Krtin Bhasin, Prakhar Sharma and Praveer Sharma represented the petitioner.The trademarks registry was represented by Rajesh Gogna, Central Government Standing Counsel (CGSC) with Advocates Priya Singh and Rebina Rai..[Read Order]
The Delhi High Court recently granted relief to an Indian businessman in a protracted trademark dispute with a Pakistani national over the use of 'ELFY' as a trademark. .Justice Saurabh Banerjee on May 6 set aside a 2012 order of the Intellectual Property Appellate Board (IPAB) that had directed removal of the trademark registration favoring Indian manufacturer Vidya Bhushan Jain."The order dated 13.09.2012 passed by Intellectual Property Appellate Board (IPAB), Chennai in TRA/121/2004/TM/DEL (C.O. No. 18/2003) is set aside and the trademark No.605340 in Class-01 filed by the petitioner herein is allowed to subsist in the Register maintained by the Trade Marks Registry in accordance with law," the Court ordered..Jain had moved the High Court in 2012 after the IPAB accepted Pakistani businessman Mohamad Younus Sheikh’s claim of using the “ELFY” mark for industrial adhesives since 1981.Sheikh, the sole proprietor of Al-Nazeer Nippon Chemicals, Karachi, had accused Jain of dishonestly adopting the mark and logo — a baby elephant hanging from an arrow — in an attempt to misappropriate his company's goodwill. In 2012, the IPAB ruled that Jain failed to prove prior and continuous use of the mark since 1988 and thus ordered its removal from the register. The matter then reached the High Court and remained pending for years..Before the High Court, Jain's counsel in May 2017 submitted that his registration for the mark was valid only till August 27, 2017, and he would lose the rights over it if he was not allowed to renew it.The trademarks registry had declined to accept his renewal application due to the pendency of the case. After the issue was raised in the Court, Jain was granted a renewal of the trademark for a further period of 10 years, subject to the final outcome of the High Court case. .While the case was pending before the Court, Jain died during the COVID-19 pandemic. The case was then taken over by his business partners. Meanwhile, Sheikh also lost interest in the case. On May 6 this year, the Court noted that Sheikh had remained unrepresented since July 2019 despite repeated directions for fresh service. The case was therefore proceeded ex-parte.The counsel representing the trademarks registry also submitted that since the mark had already been renewed until August 27, 2027, the petition had become infructuous. The Court agreed with the submission.“In terms thereof, this Court agrees with the submission made by the learned counsel for the respondent no.2 as there is indeed nothing surviving in the present writ petition,” it saidAccordingly, the Court set aside the IPAB’s 2012 rectification order and disposed of the writ petition..Advocates Kunal Khanna, Krtin Bhasin, Prakhar Sharma and Praveer Sharma represented the petitioner.The trademarks registry was represented by Rajesh Gogna, Central Government Standing Counsel (CGSC) with Advocates Priya Singh and Rebina Rai..[Read Order]
