ZeusIP

Advocates LLP

J-2 9 ,3rd Floor, Jangpura Extension

New Delhi -1 1 0 014
Ph: +91-11-41370000; 41024330; 41824331
Fax: +91-1M1824334; 24323338
E-Mail: lnfe@ZeiSW^onKi Website: www.ZfensIP.coni

ZeusIP Ref: TR: 45 08/10/2018

The Deputy Registrar

Intellectual Property Appellate Boitd
G-G2 to G7 & 196 to 204, •a ,
August Kranti Bhavan,
Bhikaji Cama Place, New Delhi - f lo 066
B Y HAND

CANCELLATION/RECTIFICATION OF REGISTERED TRADE

MARK UNDER NO. 2778255 IN CLASS 23 UNDER SECTION 57 OF
THE TRADE MARKS ACT, 1999.

Dear Sirs,

We write in reference to the above and on behalf of the Appellant herein.

With reference to the above said cancellation petition please find enclosed
herewith the following docum ent^n duplicate):

1. M aster Index
2. Vakalatnama
3. Memo of Parties
j ,&.i
4. Form 1-Applieatton (in duplicate) for removal of the Trade M ark
from the Register.
5. Affidavit in evidence along with the Exhibits A to Exhibit P
thereto (in duplicate).
6. General Power of Attorney in favour of the counsels.
7. Exemption Application along with Executed Affidavit.
8. Affidavit of Sh. Kapil K um ar Mahipal.
9. Demand Draft No.)P3H^ of Rs. 5000/- Dated ^§_/_[£>/2018
10. CD.
It is humbly requested that the above petition may be taken on record by this
Hon’ble Appellate Board and the copy of the same may be served upon the
Respondents under intimation to us.

Yours faithfully,

Enrollment No, (D/1561/2003)

ZeusIP Advocates LLP
J-29,3rd Floor, Jangpura Extension
New Delhi - 1 1 0 014
Ph: +91-11-41370000;
Fax: +91-11-41824334;
E-Mail: [email protected]

Enel: As above

CC:

RPG INDUSTRIAL PRODUCTS PVT. LTD.

1st FLOOR, 4 SHANKER VIHAR,
VIKAR MARG, NEW DELHI 110092

REGISTRAR OF TRADE MARKS

TRADE MARKS REGISTRY
BHUDHIK SAMPADA BHAWAN,
PLOT NO. 32, SECTOR 14, DWARKA
NEW DELHI: 110075
 BEFORE THE INTELLECTUAL PROPERTY APPELLATE
BOARD
Original Rectification Application No. of 201

IN THE MATTER OF TRADE MARK NO. 2778255 IN CLASS 23

REGISTERED IN THE NAME OF RPG INDUSTRIAL PRODUCTS
PVT. LTD. OF THE ADDRESS5 1ST FLOOR, 4 SHANKER
VIHAR, VIKAR MARG, NEW DELHI 110092
AND
IN THE MATTER OF AN APPLICATION FOR CANCELLATION
FILED BY RPG ENTERPRISES LIMITED OF THE ADDDRESS
463, DR. ANNIE BESANT ROAD, WORLI, MUMBAI - 400 030
AGAINST THE REGISTERED TRADE MARK NO. 2778255 IN
CLASS 23

AND IN THE MATTER OF:

RPG ENTERPRISES LIMITED,
463, DR. ANNIE BESANT ROAD,
WORLI, MUMBAI - 400 030 ............. PETITIONER

VERSUS

RPG INDUSTRIAL PRODUCTS PVT. LTD

1STFLOOR, 4 SHANKER VIHAR,
VIKAR MARG, NEW DELHI 110092
RESPONDENT NO. 1

TRADE MARKS REGISTRY

BHUDHIK SAMPADA BHAWAN,
PLOT NO. 32, SECTOR 14, DWARKA
NEW DELHI: 110075 .............. RESPONDENT NO. 2
INDEX
11. EXHIBIT-G - A e o p y copyright registration 274-277
certificate No.A-49373/88CO issued by the Deputy
Registrar of Copy Right.
12. EXHIBIT- H - A copy of the interim order dated 278-283
iJanuary TO, “2018 passed by Hon’ble Delhi High
Court in Suit No. CS (Comm.)No.21 of 2018.
13. EXHIBIT-I-Copies of extracts evidencing the 284-295
social media presence of the petitioner
14. EXHIBIT-J - Copies of documents evidencing 296-302
revenue incurred by the Petitioner over the years.
15. EXHIBIT-K - Copies of promotional and 303-307
advertising material are being filed in the present
proceedings.
16. EXHIBIT-L - A copy of the Import Export Code 308-311
granted to the petitioner.
17. EXHIBIT-M -A ‘copy of the Good Laboratory 312-313
Practices by the Food and Drugs Control
Administration.
18. EXHIBIT-N - A copy o f the Good Manufacturing 314-321
Practice certification granted to the Petitioner in the
European Union.
19. EXHTBIT-O - Copy of the cease and desist notice 322-329
as sent to the Respondent No. 1 dated 06* October,
2017.
20. EXHIBIT-P - Copy of trademark journal and 330-333
online status of the Trade Mark registration of
Respondent No. 1
21. Copy of General Power of Attorney in favour of 334-335
the Counsels.
22. Exemption Application along with Executed 336-341
Affidavit.
23. Affidavit of Sh. Kapil Kumar Mahi|jal. 342-344
 PETITIONER

THROUGH

NAQEEB NAWAB
ENROLLMENT NO. (D/1561/2003)
COUNSEL FOR THE PETITIONER
ZEUSIP ADVOCATES LLP
J-29, 3rd FLOOR, JANGPURA EXTENSION
NEW D E L H I- 1 1 0 014
PH: +91-11-41370000;
F A X :+91-11-41824334;
E-MAIL: [email protected]
Dated: o 8 /10/2018
 I
BEFORE THE INTELLECTUAL PROPERTY APPELLATE
BOARD
AN APPLICATION UNDER SECTION 57 OF THE TRADE
MARKS ACT, 1999 FOR REMOVAL/CANCELLATION

ORA NO.. h e* *

IN THE MATTER OF:

CANCELLATION/RECTIFICATION OF REGISTERED TRADE

MARK UNDER NO. 2778255 IN CLASS 23 UNDER SECTIONS 57
OF THE TRADE MARKS ACT, 1999.

AND IN THE MATTER OF:

RPG ENTERPRISES LIMITED,

463, DR. ANNIE BESANT ROAD,
WORLI, MUMBAI - 400 030 PETITIONER

VERSUS

RPG INDUSTRIAL PRODUCTS PVT. LTD.

1st FLOOR, 4 SHANKER VIHAR,
VIKAR MARG, NEW DELHI 110092
RESPONDENT NO. 1

REGISTRAR OF TRADE MARKS

TRADE MARKS REGISTRY
BHUDH3K SAMPADA BHA WAN,
PLOT NO. 32, SECTOR 14, DWARKA
NEW DELHI: 110075 .....................RESPONDENT NO. 2

KNOW ALL to whom these presents shall come that We, RPG
ENTERPRISES LIMITED, company organized and existing under the
Laws of Delaware a company registered under the Companies Act, 1956
of the address having its registered office at 463, Dr. Annie Besant Road,
Worli, Mumbai - 400 030 hereby appoint Ms. Gunjan Paharia
(D/2651/1999), B. Naveen K um ar Varma M r. (B/14OI*/201O), Naqeeb
Nawab (D/1561/2003), Ms. Preksba SJaarma ©®6), Ms. Komal
Kaul (D /l853/2009), M r. HimaOiShu Deora (R/762/2013), M r. Sumit
Prasad (D/1270/2015), Mr. M imM* Kfcuskiifc (D/2979/2012), Ms.'
Natasha Bali (P/2309/2012), M r. Aaroban Bansal (D/3465/2010), M r.
Santrupt Satapathy (F/1361/2014), Ms. Aksfri Seem (D /l492/2015),
Ms. Ananya Bhat(D/53Q/2017), Mr. Tim S. Gupta (D/4404/2017), Ms.
Sanya Sehgal (D/2682/2017), Ms. Chefria Channan (D/2728/2017)
Advocates of the address 3-29, Floor, Jgpfpuva Extension, New
Delhi - 110014, Mobile No. ' n l U W U m (hereinafter called the
Advocates) to be our Advocate in the above-noted case and authorize
them:-

To act, appear and plead in die above-noted case before this tribunal, or in
any other court in which the same may be tried or heard and also in the
appellate courts.

To sign, file, verify any present pleadings, replications, appeals, cross­

objections or petitions of executions, review, revision, restoration,
withdrawal, compromise or other petition, replies, objections, or affidavits
or other documents as may be deemed necessary or proper for the
prosecution of the said case in all its stages.

To file and take back documents.

To withdraw or compromise the said case or submit to arbitration any

differences or disputes that may arise touching or in any manner relating
to the said case.

To take our execution proceedings.

To deposit, draw and receive moneys, cheques tod grant receipts thereof,
and to do all other acts and tilings which may be necessary to be done for
the progress and in the course of the prosecution of the said case.

And I/we, the undersigned, do hereby agree to ratify and confirm acts,
done by the Advocate or his substitute in the matter as my/our own acts as
if done by me/us to all intents and purposes.

And I/we undertake that I/we or my/our duly authorized agent would
appear before the Tribunal on all hearings and will inform the Advocate
for appearance, when the case is called.

IN WITNESS WHEREOF We do hereunto set my/our hand to these

presents the contents of which have been understood by me/us this o§
day of October, 2018 For RPG Enterprises .JiTTtea,

— Authorised Signatory

Accepted Client
Ii of the aforementioned party.
A Advocate D/1561/2003
7
1. Ms. Gunjan Paharia (D/26S1/1999)
2. Mr. Naqeeb Nawab (D/1561/2003)
3. M r. B. Naveen 3
4. Ms. Preksha Snarrna (i*/542/2006 p A je h jk ^ sSLixuft.
5. M r. Himanshu Deora
6. Ms. Komal Kaui (D /l853/2009)
7. M r. Sumit Prasad (D/1270/2015)

8. M r. M udit Kaushik (B/2979/2§t3)

9. Ms. Natasha Bali (P/2309/2012)
10. M r. Aarohan Bansal (D/3465/2010)
11. M r. Santrupt Satapathy (F/1361/2Q14)
12. Ms. Akshi Seem (D/1492/2015)
13. Ms. Ananya Bhat (D/530/2017)
14. M r. Tim S. Gupta (D/4404/2017)
15. Ms. Sanya Sehgal (D/2682/2017)
16. Ms. Chetna Channan (D/2728/2017)
 BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD

IN THE MATTER OF:

CANCELL ATION/RECTIFICATION OF REGISTERED TRADF

MARK UNDER NO. 2778255 IN CLASS 23 UNDER 57 OF THE
TRADE MARKS ACT, 1999.

AND

IN THE MATTER OF AN APPLICATION FOR CANCELLATION

FILED BY RPG ENTERPIRSES LIMITED OF THE ADDDRESS 463,
DR. ANNIE BESANT ROAD, WORLI, MUMBAI - 400 030 AGAINST
THE REGISTERED TRADE MARK NO. 2778255 IN CLASS 23

AND
AND IN THE MATTER OF

RPG ENTERPRISES LIMITED

A COMPANY REGISTERED UNDER THE COMPANIES ACT, 1956
453, DR. ANNIE BESANT ROAD,
WORLI, MUMBAI PETITIONER
VERSUS

I. RPG INDUSTRIAL PRODUCTS PVT. LTD.

1ST FLOOR, 4 SHANKER VIHAR,
VIKAR MARG, NEW DELHI 110092 ....... RESPONDENT NO. 1

H. REGISTRAR OF TRADE MARKS

TRADE MARKS REGISTRY
BHUDHIKSAMPADABHAWAN,
PLOT NO. 32, SECTOR 14, DWARKA
NEW DELHI: 110075 R E SP nivnf iVT i\rn

(ENROLLMENT NO. D/I561/2003)

COUNSEL FOR THE PETITONER
ZEUSIP ADVOCATES LLP
J-29, 3rd ] JANGPURA EXTENSION
NEW DELHI - 110 014
EMAJL: [email protected]
PHONE NO.: 011-41370000
PLACE: Delhi
DATED:©S/10/2018
 5"
i
(See Rule 2)
BEFORE THE INTELLECTUAL PROPERTY APPELLATE
BOARD
APPLICATION FOR. REI^OVALj® ECTff 1CATION
ORA NO.. 7 v i / ? o ( 2 / p * fa G u

DATE 0 » /lo /2 .d |'8

IN THE MATTER OF:

CANCELLATION/RECTIFICATION OF REGISTERED
TRADE MARK UNDER NO. 2778255 IN CLASS 23UNDER
SECTION 57 OF THE TRADE MARKS ACT, 1999.

AND IN THE MATTER OF:

RPG ENTERPRISES LIMITED,

463, DR. ANNIE BESANT ROAD,
WORLI, MUMBAI 400 030 ..............PETITIONER

VERSUS

RPG INDUSTRIAL PRODUCTS PVT. LTD.

I st FLOOR, 4 SHANKER VIHAR,
VIKAR MARG, NEW DELHI 110092
...........RESPONDENT NO. 1

REGISTRAR OF TRADE MARKS

TRADE MARKS REGISTRY
BHUDHIK SAMPADA BHAWAN,
PLOT NO. 32, SECTOR 14, DWARKA
NEW DELHI: 110075 .............RESPONDENT NO. 2

I. Name of the Petitioner : RPG ENTERPISES LIMITED

II. Address :463, DR. ANNIE BESANT

ROAB*WORU,
MUMBAI - 400 030
III. Name of the Counsel : ZEUSIP ADVOCATES LLP

IV. Address :J-29,03rd FLOOR

JANGPURA EXTENSION,
NEW W L 1 H - 110014
Email: [email protected].
PH: +91-11-41370000;
41824330; 41824331;
Mobile: 7042934488
Fax: +91-11-41824334; 24323338

Name(s) ofRespondent(s): 1. RPG INDUSTRIAL

PRODUCTS PVT. LTD.
1st FLOOR, 4 SHANKER
VIHAR, VIKAR MARG,
NEW DELHI 110092

2. REGISTRAR OF TRADE
MARKS,
BHUDHIK SAMPADA
BHAWAN, PLOT NO. 32,
RECTOR 14, DWARKA
NEW DELHI: 110075

V. JR-elief claimed and relevant

Sections :AN APPLICATION UNDER
SECTION 57 OFTHE TRADE
MARKS ACT, 1999 FOR
REMOVAL OF THE
REGISTERED TRADEMARK
NO. 2778255 IN CLASS 23
VI. Particulars of parallel or
collateral proceeding :NONE
VII. In application for removal

of Trade Mark :Mark

Registration No. 2778255
Date of Application-22/07/2014
Advertisement- Journal No. 1783
dated 06/02/2017
Date of SeaIing-30/06/2017

VIII. Details of Trade Mark, if any, applied/registered in the name of

the applicant, herein:
Trade Mark App. / Reg. No. Class Registration
Date
■ H 2083063 05 11/01/2011

■HH 850255 12 08/04/1999

w a r n 850256 16 08/04/1999

■HH 851098 09 13/04/1999

-■HH 2083064 09 11/01/2011

H i 2083065 tv. 30 11/01/2011

RPG Life 2409620 05 11/10/2012
RPG Life Sciences 2409621 05 11/10/2012
RPG 2409622 05 11/10/2012
Pharmaceuticals
RPG LIFE 2409623 05 11/10/2012
SCIENCES
LIMITED
3549247 05 15/05/2017
JVOU/W
fOM
CO
3549248 05 15/05/2017
/
nKutm»cm*cn
 RPG LIFE 3571200 05 15/06/2017
SCIENCES
DIRECT
RPG LIFE 3571201 05 15/06/2017
SCIENCES
GENERIC
RPG LIFE 3571202 05 15/06/2017
SCIENCES
GENERIC PLUS
RPG LIFE 3571203 05 15/06/2017
SCIENCES PLUS
RPG LIFE 3571204 05 15/06/2017
SCIENCES CARE

IX FACTS OF THE CASE:

1. The Petitioner is a multi-group conglomerate which consists

of various companies operating under the parent
organisation.These companies, identified as RPG Group
Companies (hereinafter also referred to as “RPG Group of
Companies”), use “RPG logo” and trade mark “RPG” for
which permission is granted by way of a license for use of
the RPG logo and trademark as a part of its corporate
identity/business/trademark in relation to promotional and
publicity material.

2. The acronym “RPG” stands for the initials of Mr. R. P.

Goenka, founder of the RPG Group and a world-renowned
industrialist widely respected by people from all walks of
life. The RPG Group Companies have been using the said
Logo and the letters “RPG”, which forms an integral part of
 almost all the businesses that have been undertaken by the
RPG Group Companies.

3. The Petitioner (a term which includes all affiliates,

predecessors in interest and title and subsidiaries) RPG
Enterprises, is a company registered under the Companies
Act, 1956, having its registered office at 463, Dr. Annie
Besant Road, Worli, Mumbai - 400 030.

About the Petitioner

4. The Petitioner is a multi-industry conglomerate, which

consist of over fifteen companies across core sectors of the
economy. Some of the Petitioner’s group companies include
reputed tyre manufacturer CEAT Limited, Information
Technology Company named Zensar Technologies Ltd,
infrastructure EPC major KEC International Ltd,
pharmaceutical company RPG Life Sciences Ltd. and
Engineering major Raychem RPG Private Limited.

5. The Petitioner’s history can be traced back to 1979 with

Philip Carbon Black, Asian Cables, Agarpara Jute and
Murphy India as its constituents. Over the years, the
Petitioner has diversified into various business fields with
primary areas of businesses being tyres, infrastructure,
information technology, pharmaceuticals, energy, senior
care, e-commerce and plantations.

6. The Petitioner’s range of operations encompasses the

manufacture and supply of tyres under the brand name
CEAT, Infrastructure and power transmission and
distribution under the name KEC International Limited and
its fully owned subsidiary SAE Towers Holdings LLC is one
 <0
of the largest steel lattice tower manufacturers in the world
with approximately 274,000 tons of annual production
capacity. The Petitioner is also engaged in business of power
cable and telephone cables under the name RPG Cables
SUB of KEC International Limited. The Petitioner also
operates in the field of Information Technology by
providing global IT services and business process
outsourcing services under the name Zensar Technologies.

7. The Petitioner also operates in the field of agriculture under

the name Harrisons Malyalam, a one hundred and fifty year
old company. The Petitioner is also involved in engineering
products and services catering to the infrastructure segments
of the economy such as power, telecommunications,
hydrocarbon, oil & gas and water under the name Raychem
RPG Pvt. Limited a joint venture Company and RPG
Venture by -Seniority Limited India’s first destination
created especially for senior citizens. Other group
companies forming a part of die RPG group are RPG
Properties LLP and Spencer International Hotels Limited.

8. Furthermore, the Petitioner’s Charitable Trust viz. RPG

Foundation and RPG Academy o f Art and Culture are public
charitable trust engaged in charitable and social activities in
various cities, towns in India. The activities of the Trust
have touched the lives of a significant population which
enhances the brand value associated with RPG. The CRS
activities programmes such as RPG Foundation Netranjali
powered by CEAT started with the goal to address the need
to prevent avoidable blindness and have reached out to over
2 Lacs individuals across government school and slum
communities out of Which 85,000 are truckers. RPG
Foundation Swayam had .identified the need of safety and
socio-economical issues and also the dearth of women
drivers in the booming transport sector and promoting
gender equality by imparting driving skills to woman. This
and has enabled women drivers to work as taxi driver,
forklift operators, in driver on call services, as instructors,
school van drivers auto rickshaw drivers etc. RPG
Foundation Pehlay Akshar CRS program to bringing about
change by providing an educational culture that enhances
learning and has touched the lives of more than 2000
children. RPG Foundation Sakstiam is CRS program to
building a fundamental foundation and creating
opportunities with the right learning environment and being
implements with the vision to empowering women and
youth from urban and rural communities in Maharashtra,
Gujarat, Madhya Pradesh;, and Rajasthan. RPG Foundation
Jeevan believe in necessity of a conductive environment for
each member of our community and saving lives by
providing clean drinking water, basic nutrition and creating
hygiene awareness. The Petitioner humbly craves leave of
this Hon’ble Tribunal to add to, alter and/or modify the
contents of the aforementioned submissions as and when
deemed necessary by the Petitioner in the interest of justice,
equity and good conscience.

The Petitioner’s group companies also include RPG Life

Sciences Limited, an Indian pharmaceutical company
specialising in the manufacturing and marketing of bulk
drugs (Active Pharmaceutical Ingredients), pharmaceutical
formulation. The RPG Life Sciences Division, the name of
which is often euphemized as RPG Life Sciences and
abbreviated as RPGLS is represented in more than 30
 countries by means of strategic partnership and joint
ventures.lt has also achieved excellence in manufacturing
and marketing critical life saving drugs for treatment of
cancer as well as organ transplants. The products have been
well received both in the domestic and international markets.
RPGLS is also the only company in India manufacturing and
marketing cyclosporine, an equally critical organ transplant
medicine, using the novel fermentation technology.

10. Due to the aforementioned credentials the Petitioner has

been a fore-runner in the relevant industries, the Petitioner is
now a well-known name across its core sectors by virtue of
the strong association with the name o f the group ‘R PG ’.

11. The Petitioner has honestly adopted the distinctive and

unique trade mark RPG. Further, the trade mark ‘RPG’ also
serves as the trading name/house mark of the Petitioner.
Keeping in mind the heritage of the brand RPG, the

Petitioner has adopted the trade mark ^**r * ^ » ' in

conjunction with the core word mark “RPG ”. It is pertinent

to be noted that the marks RPG and

have been used for a very long period of time and have, as
of date, created an indelible association in the minds of the
general public.

12. The Petitioner has numerous applications and registrations

for the “RPG Marks”. For the sake of brevity, the trade mark
applications and registrations that are relevant to the present
petition are being tabulated as under:
 /3
S. No. Trade Mark App../ Reg. No. Class Registration
Date
1. HIMW 2083063 05 11/0172011
2. BUB 850255 12 08/04/1999
3. ■■■I 850256 16 08/04/1999
4. ■ ■ I 851098 09 13/04/1999
5. ■ ■ ■ ■ 2013064 09 11/01/2011
6. JPHH1 : -m sm s 30 11701/2011
7. RPG Life 2409620 05 11/10/2012
8. RPG Life 2409621 05 11/10/2012
Sciences
9. RPG 2409622 05 11/10/2012
Pharmaceuticals
10. RPG LIFE 2409623 05 11/10/2012
SCIENCES
LIMITED
11. 3549247 05 15/05/2017
/
MunaomcM
12. 3549248 05 15/05/2017
/
13. RPG LIFE 3571200 05 15/06/2017
SCIENCES
DIRECT
14. RPG LIFE 3571201 05 15/06/2017
SCIENCES
GENERIC
15. RPG LIFE 3571202 05 15/06/2017
SCIENCES
GENERIC
PLUS
16. RPG LIFE 3571203 05 15/06/2017
SCIENCES
PLUS
17. RPG LIFE 3571204 05 15/06/2017
SCIENCES
CARE
 RPG Trade Mark Registered in Other Countries

s. Trade Mark App. / Reg. Class Country Registration

No. No. Date

1. 2008/03932 12 Nepal 13/08/2012

.4
2. mmm 4-1999- 12 Philippin 30/10/2004

009171 es
3. mmt T9901537I 09 Singapor 18/12/2012
e
4.
■■■ 35971 12 Vietnam 09/11/2009
5. mmm 62470 12 Banglade 09/11/1996
sh

The above mentioned trademark registrations are valid and

subsisting.

The Petitioner humbly craves leave of this Hon’ble Tribunal

to add to, alter and/or modify the contents of the
aforementioned submission as and when deemed necessary
by the Petitioner in the interest of justice, equity and good
conscience

13. The Petitioner has been using the trademarks RPG,

RPG LIFE SCIENCES LIMITEDand

/
nwuncaciwcu (collectively referred to as the ‘RPG M arks’)
with respect to a wide range of products. As is evident from
the above, the Petitioner owns an entire family of ‘RPG
M arks’.
14. The Petitioner also has a presence on the worldwide web
and maintains active website sat http://www.rpggroup.com/.
http://www.rpglifesciences.com/. http://ravchemrpg.com/.
http://www.rpgcables.eom/.http://www.kecrpg.com.
http://www.saetowers.com,
http://www.harrisonsmalavalam.com,
https://www.ceat.com/. https://www.ceatspecialtv.com/ and
http://www.zensar.com/. The said websites clearly displays
the RPG Marks and the goods and services which are
marketed and offered by the Petitioner and are accessible in
the whole of India and worldwide, thus, increasing
awareness of the Petitioner’s RPG Marks.

15. Moreover, because of the extreme success and popularity of

its goods, the Petitioner and its goods is the subject of much
third party press and media attention throughout die world.
The Petitioner is active on social media and has substantial
following on popular social media websites like Facebook,
Twitter and Linkedln. More specifically there are
approximately 164,538 likes on the Petitioner’s Facebook
page and more than 18,700 followers on the Petitioner’s
Twitter handle as of the date of the present petition. The
Petitioner humbly craves leave of this Hon’ble Tribunal to
add to, alter and/or modify the contents of the
aforementioned submissions as and when deemed necessary
by the Petitioner in the interest of justice, equity and good
conscience.

The Petitioner’s RPG Marks

16. Since its inception, the petitioner has recognized the value
o f branding in the-development o f its business. Throughout
 requirements o f Schedule L I o f the Drugs and Cosmetics

Rules, 1945.

24. The Petitioner’ s group company is also die recipient o f the

certification o f ‘ G ood Manufacturing Practice’ issued by the

European Union. G ood Manufacturing Practice (GM P)

describes the minimum standard that a medicines

MU,
manufacturer must meet in their production processes. The

European M edicines A gency (E M A ) coordinates inspections

to verify com pliance with these standards and plays a key

role in harmonizing GMP activities at European Union (EU)

level.

25. The Petitioner’ s group ccmapany is also die-recipient o f the

certification o f ‘ICH. G ood Manufacturing Practice Guide

for A ctive Pharmaceutical Ingredient’ (generally issued for a

range o f products that are supplied to the territory o f

Australia) issued by the BQpcff&ssBt o f Health and Ageing,

Therapeutic G oods Administration, Government of

. Australia. The certification is granted for harmonization

achievements in the Quality area include pivotal milestones

such as the conduct o f stability studies, defining relevant

thresholds for impurities testing and a more flexible

approach to pharmaceutical quality based on G ood

Manufacturing Practice (G M P) risk management.

26. The Petitioner is also the recipient o f several awards in India

in the field o f human resources. The Petitioner is also widely

regarded as one o f the best companies to work with. Several

anonymous user reviews testify to the above fact.

27. The Petitioner has invested immense capital in advertising

and popularizing the course offered under the RPG Marks.

P E T IT IO N E R ’ S C O M M O N L A W .W K&BtS

28. In addition to the statutory rights mentioned above, the

Petitioner has also acquired com m on law rights in and to its
earlier and well-known R P G M arks. Such com m on law

rights have accrued to the sole benefit o f the Petitioner

owing to the-extensive, exclusive, continuous and long-

running use and extensive prom otion o f the trademarks RPG

Marks worldwide including in India.

29 . The Petitioner has affected large sales o f its products bearing

the RPG Marks during all these years. The Petitioner has

also taken efforts to popularize its R P G M arks and the

goods sold thereunder. Details o f the sales turnover and

license fees incurred by the Petitioner from 2011 up to 2017

are as below :

YEAR sales LICENSE FEES

TURNOVER (Rs. In (Rs. In Crs.)

Crs.)

2016-17 298.46 1.14

2015-16 274.54 1.33

2014-15 233.08 0.11

2013-14 229.38 0.13

2012-13 216.21 0.93

2011-12 189.23 0.70

P R O T E C T IN G TH E M A R K S G L O B A L L Y
30. The Petitioner has actively sought protection for its trade

name and its trademarks around the w orld, and has

vigorously enforced its rights in its marks globally. The

Petitioner has registered its marks in various jurisdictions.

31. The Petitioner considers its R P G M aries as its valuable

intellectual property and has always safeguarded its rights in

the R P G M arks.

PETITIO N ER* S C O N C E R N AN D CAUSE O F A C T IO N

32. The Petitioner was made aware o f the mala-fide use o f the

identical trade name o f Respondent N o. 1, as that o f the

Petitioner. W hile being cautious o f its rights, the Petitioner

had sent a cease and desist notice dated 6th October, 2 0 1 7 to

Respondent N o. 1 while putting Respondent N o. 1 in direct

knowledge o f the- Petitioner’ s, right. The m a la -fid e.of .th e

Respondent N o. 1 is evident from the fact that, Respondent

has failed to reply die said cease and desist notice till date.

33. A s no response from the Respondent No. 1 was received, the

Petitioner believed that die dispute has been resolved and no

further action was taken. H owever, in the M onth o f August
2018, the attention o f the Petitioner was drawn to the
registration no. 2778255 {hereinafter referred to as

“ impugned registration” ) in the name o f Respondent No. 1

by their counsels while conducting search o f the records o f

the Trademarks Registry. The Petitioner was previously

unaware that the Respondent N o. 1 had acquired the

 impugned registration for the mark flH H H H R (impugned

mark) in regard to “Manufacturer and supplier o f polyester

w ool covered under” .

34. The impugned registration has been obtained by the

Respondent N o. 1 with mala-fide intention and concealment

o f material facts and information. The Petitioner owns the

rights in the R P G M arks. The Respondent N o. 1 has

wrongfully obtained a registration for the impugned mark

which entirely incorporates the R P G M arks o f the

Petitioner and is therefore nearly identical to the trademarks

in which the Petitioner has obtained prior rights. The

impugned mark is liable to be cancelled as the same was

registered with mala-fide intention to cash upon the

goodw ill and reputation o f the Petitioner and is an entry

wrongly remaining on the Trade Marks Register, and

without sufficient cause.

35- The impugned registration obtained by die Respondent No.

1 is a continuous unwarranted hardshipr ©n the Petitioner. A s

an honest and bona fid e user o f the R P G M arks in relation

to their goods and services, the Petitioner is being

prevented/hindered by reason o f subsistence o f the said

impugned registration on the Register and from the mala-

fid e conduct o f its business activities ( i f any) as a legitimate

prior user and adopter o f the same in relation to the goods.

36. The factum o f lack o f any bona fid e intention on pan o f the
Respondent No. 1 is evident from the fact that the
 application for registration o f the impugned mark was filed

on 22nd July, 2014with false use claim o f 01stApril, 2011.

There are no cogent documents filed by the Respondent N o.

1 to prove its claim o f use. Even i f the Respondent N o. 1 has

any use (even though denied), the same w ill not give any

special rights to the Respondent N o. 1 to infringe and/or ride

upon the goodw ill and reputation o f the P etitioners earlier

and well-known R P G M arks.

37. Since the application for registration o f the impugned mark

was made with mala-fide intention; therefore the application

for cancellation o f the impugned registration in favour o f the

Respondent N o. 1 is entitled to be allowed in exercise o f the

discretion o f the H on’ ble Tribunal under Section 57 o f the

Trade Marks A ct, 1999.

GROU N DS O F C A N C E L L A T IO N

38. That the Respondent N o. 1, by registering and allowing the

impugned mark to subsist on the Register, is trafficking in

trademarks and is depriving the Petitioner, who is a prior

and honest adopter and user o f the RPG M arls for the

purpose o f its business, and as such there are sufficient

.grounds for caneellation/removakexpunging the trade mark

registered under no. 2778255 in class 23 on account o f the

i
grounds detailed herein.

i. That the impugned mark covered under the impugned

registration entirely incorporates the R P G M arks o f the

Petitioner and is therefore nearly identical/ deceptively

similar to Petitioner’ s well-known trademarksRPG, RPG

Life, RPG Life Sciences, ^ l? P C and

 •23
rpg
Z
u n sasN C tsum w bd . Therefore, there exists a strong

likelihood o f confusion on the part o f the public which

includes likelihood o f association or a commercial

relationship with Petitioner’ s marks. The impugned

registration therefore should not have been granted under

Section 11(1) o f the Trade Marks A ct, 1999.

ii. That the impugned mark entirely incorporates the R PG

M arks o f the Petitioner and is therefore nearly identical/

deceptively similar to Petitioner’ s R P G M arks as

mentioned above and use o f the impugned mark would

without due cause take unfair advantage o f and be

detrimental to the distinctive character and repute o f the

Petitioner’ s RPG Marks. The impugned registration

therefore should not have been granted under Section

11(2) o f the Trade Marks A ct, 1999.

iii. A s Petitioner is the much earlier adopter/ user, any use o f

the impugned mark for which the im p u te d registration

has been granted, is liable to be prevented by virtue o f

the law o f passing off. The impugned registration

therefore should not have been granted under Section

11 (3) o f the Trade Marks A ct, 1999.

iv. The Petitioner, in its capacity as the owner o f the RPG

Marks, has never consented to the registration o f die

impugned mark and the Respondent N o. 1 is therefore

not entitled to rely upon Section 11(4) o f the Trade
Marks A ct, 1999.
 V. The adoption and use o f the impugned mark by the

Respondent N o. 1 is neither honest nor bona fide and the

Respondent No. 1 is therefore not entitled to maintain the

impugned registration under Section 11(10) o f the Trade

Marks A ct, 1999.

vi. The adoption o f the impugned mark by the Respondent

N o. 1 is neither honest nor bona fide and the Respondent

N o. 1 cannot therefore claim to be the proprietor o f the

impugned mark under Section 18(1) o f the Trade Marks

A ct, 1999. The Respondent N o. 1 is not entitled to

maintain the impugned registration under Section 12

either. The impugned registration is therefore liable to be

cancelled/ removed from the Register o f Trademarks.

vii. The adoption o f the impugned mark on the part o f the

Respondent No. 1 was tainted and dishonest. Thus, the

impugned registration violates the provisions o f Section

11(10) (ii) o f the A ct. Under the provisions o f Section 11

o f the A ct, the impugned mark should not have been

accepted for registration by the Learned Registrar

(Respondent N o .. 2) by virtue o f existence o f the

Petitioner’ s RPG Marks. The impugned registration was

therefore wrongly granted in contravention o f the

provisions o f Section 11 o f die Act.

viii. The impugned registration obtained by the Registered

Proprietor was wrongly granted and is wrongly

remaining on the register as the same violates Section 18

(1 ) .o f the A ct, in as much as the Respondent N o. 1 could

not have claimed itself to be the proprietor o f the

impugned mark.
ix. That the impugned registration granted in the name o f the

Respondent N o. 1 is contrary to the various provisions o f

the Trade Marks A ct, 1999, including Sections 11, 12

and 18.

x. The impugned registration obtained by the Respondent

N o. 1 is an unwarranted hardship on the Petitioner, who

is a “person aggrieved” within the meaning o f the Trade

Marks A ct, 1999 and who, as a member o f the trade is

being prevented/ hindered by reason o f subsistence o f the

impugned mark on the register from th e bona fide

conduct o f its business activities despite being the true,

original and rightful proprietor o f the RPG Marks and

despite having adopted and used the same as well several

decades prior to the alleged adoption o f the impugned

mark by Respondent N o. 1.

xi. The registration o f the impugned mark, is an instrument

in the hands o f the Respondent N o. 1, to violate the

Petitioner’ s statutory as well as com m on law rights in its

well-known and registered RPG Marks.

xii. The impugned registration obtained by the Respondent

N o. 1 is causing unwarranted hardship on the Petitioner

as by due to the subsisting regisfraiion, the Petitioner is

being harmed and prejudiced in the bonafide conduct o f

its business activities. Further, the Respondeat N o. 1

shall use the impugned registration as a tool to violate the

Petitioner’ s statutory* rights as w ell as com m on law rights
in the well-known and registered RPG Marks. A lso, by

virtue o f the impugned registration, the Respondent N o. 1

is selling its infringing products thereby riding upon the

 goodw ill and reputation o f the Petitioner in its RPG

Marks.

xiii. The application for cancellation of the impugned

registration in the name o f the Respondent No. 1 is

entitled to be allowed in order to maintain the purity o f

register and in exercise o f the discretion o f this H on’ ble

Board.

xiv. That the Respondent No.* 1 has attempted to acquire an

exclusivity to use o f the said term in contravention to the

provisions and intent o f the Trade Marks A ct, 1999 and

as such there are sufficient grounds for

cancellation/removal/expunging the impugned mark

registered under no. 2778255 in Class 23 on account o f

the reasons and grounds mentioned above,

xv. In view o f the above submissions, the impugned

registration obtained by the Respondent N o. 1 is liable to

be cancelled/rem oved/expunged under the provisions o f

Section 57 o f the T rade M arks A ct, 1999 being an

entry made without sufficient cause and an entry wrongly

remaining on the register.

39. That the present petition is being filed bonafidely and

discloses all grounds for cancellation o f the impugned mark

which stands registered in die name o f the Respondent N o.

L - !
40. The impugned registration obtained by die Respondent No.

1 is liable to be cancelled/rem oved/expunged under the

provisions o f Section 57 o f the T rade M arks A ct, 1999

being an entry made without sufficient cause and an entry

 wrongly remaining on the register on account o f the lack o f

bona fide intention to use die impugned mark as disclosed.

41. The application for rectification o f the impugned registration

in favour o f the Respondent N o. 1 is entitled to be allowed

in order to maintain the purity o f register and in exercise o f

the discretion o f this H on’ ble Board.

42. The appropriate office o f the Trade Marks Registry in

respect o f the registered trade mark N o 2778255 is at Delhi

and as such, the above rectification petition is to be heard

and decided by the Hon’ble Intellectual Property

A ppellate B oard at Delhi.

43. That the cause o f action to file the present petition accrued

for the first time in favour o f the Petitioner in the month o f

August 2018, when the Petitioner’ s counsels came across the

impugned registration while conducting a search o f the

records o f the Trade Marks Registry. The cause o f action is

a continuing one and each day the impugned registration

remains on the Register o f Trade Marks gives rise to a fresh

cause o f action.

X. D E T A IL S O F FEES

The requisite fee, payable on the present application for

cancellation, is paid Vide (Demand Draft N o. | o 3

o f Rs. 5000/- dated in the name o f the

Deputy Registrar o f Intellectual Property Appellate Board
payable at Delhi.
X I. PRAYERS

Under the"circumstances, the A|^pilcan.ts^#titkKier prays:

(a) That the entry relating to the registered Trade

Mark N o. 2778255 in Class 23 made in the

name o f the Respondent N o. 1 be cancelled and

removed from the Register o f Trade Marks;

(b) That for the effective hearing and disposal o f

the above petition, the records relating to the

registered trade mark N o. 2778255 be called

for, sealed and produced before this H on’ ble

Board to prevent any interruption or tampering;

(c) That the costs o f the proceedings be awarded to

Petitioner; and

(d) Such further orders as this H on’ ble Board may

deem fit and proper in favour o f the Petitioner

in the facts and circumstances o f the present

case may please be passed in the interest o f

justice.

A ffidavit o f Mr. L .V .R . Hanumantha

Authorised Signatory___
Petitioner

P lace: New Delhi

D a te :o 8 . O ctober 2018
V E R IF IC A T IO N :

V erified at N ew Delhi on this eg, day o f O ctober 2018, that

the contents o f paragraphs [01] to [30] o f the above petition

are true and correct to our e and are derived from

the records maintained in the regular course o f business by

the Petitioner company and those o f paragraphs [31] to [43]

are based on information received and legal advice received

by me and believed to be true. Paragraph [X ] relates to fee

and [XI] relates to the prayer before this H on’ ble Board.

For nh'U Enterprises ...mited

Authorised Signatory

P E T IT IO N E R