IPAB orders removal of Nirma trademark from register

The Intellectual Property Appellate Board (IPAB) has ordered the removal of a particular 'trademark of Gujarat-based detergents and soaps manufacturer Nirma Ltd from the register. The intellectual property is registered in Class 6, which is a trademark classification for metal goods.

The order was on a petition filed by Nirmal Industrial Controls Pvt Ltd (applicant), Mumbai, against Nirma Chemical Works Pvt Ltd and Nirmal Ltd seeking removal of registered trade mark 'Nirma' under no 422864 in Class 6. According to Nirmal Industrial Controls, which manufactures and markets pressure control walls and regulators, filters, safety shut off system and instrument systems, its application for the trademark for 'Nirmal' in Class 6, was opposed by Nirma mainly on the ground of deceptive similarity with registered trade mark 'Nirma' in Class 6.

The Registrar of Trademarks had refused the Nirmal Industrial Controls' application for registration following which it approached the IPAB with an appeal. The applicant submitted that they are the proprietors of the trade mark 'Nirmal' with a device since 1973.

The order issued by the IPAB Vice Chairman S Usha and Technical Member V Ravi, which observed that the Registrar has erred, said, "In the result, ORA/133/2010/TM/AMD is allowed and registered trade mark no 422864 in Class 6 is removed from the register."

It said that a convincing case under section 47(1) (a) has been made out by the applicant. Under Section 47(1)(a), the Board has a discretion to remove a mark if it was registered without any bona fide intention of the registered proprietor that it should be used in relation to the goods for which it was registered and there has been no bonafide use of that trade mark by the proprietor thereof upto three months before date of cancellation petition.

It observed that none of the documents tendered by Nirma show any proof of use of the trade mark Nirma for any of the goods for which it was registered in Class 6. The trade mark under attack has been registered in respect of “unwrought and partly wrought common metals and their alloys, rolled and cast building materials, metallic pipes and tubes, steel boxes and steel balls included in Class-6.”

The order came down heavily on Nirma saying, "Everybody knows that Nirma is a very powerful and a Superstar brand. But the conduct of the respondent presents excessive monopolistic problems based on an absolutist position taken by the registry."

It also critisised the Registrar and said that the Registrar had erred in holding that 'Nirmal' is deceptively similar to the respondents mark 'Nirma' and refused registration of trade mark Nirmal in the classification.

"Such a ruling raises glaring question mark on the conduct and knowledge of the concerned official. The registry should not act as a hand holding emissary of well-known marks but should stay focused on the merits of each case. That is what triggered this cancellation petition," it added.

Nirma has argued that it is also diversifying its business into goods falling in class 6 either by themselves or through its subsidiary company in US. It has also taken nine mines on long lease of 30 years in order to extract limestone from them and has obtained ‘in-principle approval’ for the same for its plans to manufacture cement in Gujarat.

The company, which is into manufacturing and marketing various industrial and consumer goods, has registered 'Nirma' in all 42 classes under the Trade Marks Act, it added.