The GM Modular Pvt Ltd. petitioned to cancel the trademark “GMT”. It is registered under class 9 in the name of Mr. Gopal Shinghal.
The petitioner claimed its commercial activities include producing and trading switches, appliances, and other linked and connected products. According to the petitioner, the mark “GM” in word and label form was adopted in 1999. Additionally, the trademark “GM” is a component of the petitioner’s company identity.
The petition claims that since adopting the abovementioned mark in business, the petitioner has been using it constantly, publicly, and exclusively. Additionally, the petitioner’s case is that the pattern “GM” has significantly built up goodwill and reputation over time. WAL-MART, TATA CROMA, SPENCER’S, FUTURE GROUP, METRO, and other companies are among the petitioner’s clients.
The petitioner claims that, as of 1999, it has been the registered owner of the mark “GM” in both word and device mark forms in several classes, including classes 7, 9, and 11. Additionally, the Petitioner’s ‘GM’ mark in logo form is registered under the Copyright Act of 1957 with registration number A-64280/2003. According to section 14 of the Act above, the petitioner has used the disputed mark concerning products and services during business. Additionally, it is claimed that the petitioner uses the mark “GM” as part of the domain name www.gmmodular.com to conduct online business.
The complaint of the petitioner, in this case, is that Respondent No. 1 has used the mark “GMT” in connection with trade and business that is similar to the petitioner’s, i.e., the manufacture and trade of electronics, wires and cables, choke, patti, starters, electrical bells, buzzers, transformers, sockets, electric connectors, etc.
The current rectification petition was submitted to the IPAB in 2015. According to a review of the documents, the order sheet for the IPAB is unavailable. The Petitioner also requested a stay together with the main petition. The case was still pending before the IPAB as of 2021. This Court took on the case after the Tribunal Reforms Act 2021 became law.
After the memo of parties was filed on August 31, 2022, notice was given to the respondents. According to the records, the information was delivered to Respondent on January 16, 2023, using regular legal procedures. The Process Server’s note would indicate that Mr. Gaurang Singhal, who received the notice, informed the Process Server that he was Mr. Gopal Shinghal’s son. Additionally, the factum of service is noted in the Joint Registrar (Judicial) order dated February 14, 2023.
The respondent’s right to submit a response has been terminated by an order dated July 4, 2023. The Respondents are therefore heard ex parte.
The Ld. Counsel for the petitioner claims that using the mark “GMT” for electrical products falls under class 9. Registering it would violate Section 11 of the Act and should be corrected or revoked. Accountant dating back to the year 1999-2000. Many documents and invoices are placed on record to show the use of the mark ‘GM’ by the Petitioner. The said mark has also been extensively advertised in various newspapers.
The Court observed that using the mark “GMT” for electrical products falling under class 9 and registering it, according to the petitioner’s senior counsel, would violate Section 11 of the Act and should be amended or cancelled. Accountant from the 1999–2000 period. Several records, including invoices, demonstrate the petitioner’s use of the mark “GM.” The brand above has also received substantial newspaper advertising.
The Respondents have not refuted any of the Petitioner’s allegations. The Plaintiff’s rights in the mark “GM” for goods falling under Class 9 would be violated if the mark “GMT” were used for identical goods.
It’s clear from the record that the marks “GM” and “GM MODULAR” have developed a prestigious reputation in electrical and electronic equipment. Despite being a two-letter mark, “GM” has created a secondary meaning and standing in the electrical industry due to the petitioner’s prolonged and consistent use.
In this case, the petitioner is one of the top companies that makes and sells electrical equipment. The Petitioner’s trademark, specifically “GM,” is included in the mark of respondent. The earliest ‘GM’ mark registration for the Petitioner is from 1999. The Petitioner used the mark “GM” first, adopted it first, and is the registered owner of the mark. Remarkably, the Petitioner’s mark was not cited during the Respondent No. 1’s mark examination, and even if it had been, the Respondent No. 1’s mark had already moved forward with registration.
In the Court’s opinion, the marks “GM” and “GMT” are unmistakably related trademarks. Consumers might mistakenly think that “GMT” refers to another line of items introduced by the petitioner. Furthermore, as “GMT” is misleadingly similar to another mark that is already registered, it would be prohibited from being registered for identical or similar goods under Section 11(1)(b) of the Act.
Additionally, it is obvious that the Petitioner, who owns the trademark “GM,” qualifies as an Act aggrieved party who may maintain a cancellation petition under Section 57. Given that the mark ‘GMT’ would not be distinctive of the Respondent’s products or services, registration would violate Sections 9 and 11 of the Act.
The mark “GMT” of Respondent merits correction in the absence of a response and in light of the Respondent’s lack of explanation for using the term “GMT”.
The Respondent’s mark “GMT” in Class 9 registered in the name of Mr. Gopal Shinghal shall be cancelled. Moreover, it will be withdrawn from the Trademark Register considering the above facts and by established legal precedent. This is to preserve the integrity of the register.
In the terms stated above, the petition is granted. All applications have been decided upon, and the court ordered that the Trade Marks Registry update its records to reflect this within four weeks.