Nirmal Industrial Controls had applied for the registration of the trade mark Nirmal, which was opposed by Nirma Chemicals mainly on the ground of deceptive similarity with registered trade mark Nirma in Class 6. The applicant stated that the respondent had not used the impugned mark Nirma for any of the goods falling in Class 6. It also sought removal of the Nirma mark in Class 6 from the register.
The IPAB bench of S Usha, vice-chairman, and V Ravi, technical member, while criticising the Registrar of Trade Mark in refusing the plea for registration of Nirmal mark, said that the respondent has been unable to prove that the applicant had resorted to fraud or chicanery in the competitive struggle when it adopted the mark Nirmal and it is not even remotely conducive to source confusion.
In legal terms there is no buyer for Nirma in respect of goods falling in Class 6. The exclusive right to the use of the registered trade mark in relation to the goods for which it is registered mentioned in Section 28(1) subsumes the factual use of the mark in the Indian market. Hence, our conclusion is that the impugned mark should go.
The registration certificate was issued by the Registrar of Trade Marks on January 15, 1992 and the rectification application was filed on June 26,2010. The applicant in its argument said there has been no use of the impugned mark till date by the respondent nor is there any bonafide intention to use the impugned mark for the goods covered under the said class. The respondents are mainly engaged in the business of coal, limestone and dolomite powder.
The applicant is a proprietary concern engaged in the business of manufacturing and marketing pressure control walls and regulators, filters, safety shut-off systems and instrument systems for the last four decades. They are doing extensive business all over India and their products are widely exported.
The popular detergent and soap-maker has been very vigilant in protecting its trade mark Nirma. As many as 17 applications before the Registrar of Trade Marks for Nirma have been opposed by them and have been either abandoned or withdrawn by the applicants. The company has also registered Nirma in all the 42 classes under the Trade Marks Act. The mark was adopted in 1969 from the promoters daughter's name Nirupama.
According to the documents filed with IPAB, Nirma is diversifying its business into goods falling in Class 6 by either itself or through its subsidiary company in the US. The company has taken nine mines on a long lease of 30 years in order to extract limestone from them and has obtained in-principle approval' for the same.
It had recently acquired a US-based company, Searless Valley Minerals, which is among the top seven producers of soda ash in the world. Soda ash is used in the manufacturing of detergent, glass and water treatment.