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In March 2010, the Deputy Registrar of Trade Marks has allowed a trade mark application of P C Thahir, trading as Aghin Chemicals and Cosmetics, for Sun Plus for detergent powder included in Class 3 of the Trade Mark classification. This decision was despite the opposition of HUL objecting the trade mark application, on the grounds including that it is not distinctive or capable of distinguishing to the goods of Aghin Chemicals, during the course of trade.
HUL argued that it is well established manufacturer and merchant in the brand name Sunlight and they are also owner of the trade mark Sun in all goods falling in Class 3. It also argued that the mark shall cause confusion or deception during the course of trade as both the marks are identical for the identical goods under Section 11 of the Act.
The deputy registrar accepted application for trade mark for registration for sale in the State of Kerala only, dismissing the opposition of HUL. It is against this order, the HUL has approached IPAB.
When asked about the company's comment on today's development, a HUL company spokesperson said, "We have no comments to offer as the matter is sub judice".
According to reports, meanwhile, HUL has also moved an infringement litigation against Thahir Group in the Bombay High Court, for allegedly infringing its trade mark. A report said that the Court ordered in 2011 that the mark Sun was not used by HUL for detergent ever since it was registered almost 60 years ago.
While HUL's appeal was pending with IPAB, P C Thahir also approached the Board with a counter appeal, seeking modification of the order of Deputy Registrar, to proceed for registration without any restrictive condition such as limiting the goods as detergent powder in class 3 for sale in Kerala only.
Hearing the matter, IPAB Chairman Justice K N Basha and Technical Member (Trade Mark) Sanjeev Kumar Chaswal, asked the registry to number the counter appeal of the Thahir Group and post the matter along with HUL's appeal on a later date. Considering another miscellaneous petition by HUL for early hearing of the matter, the Board allowed it.
In its counter appeal, Thahir Group has said that the Deputy Registrar, while considering its mark as a whole and holding that the mark Sun Plus is capable of distinguishing the goods of HUL during the course of trade, erred in restricting the sale of the company's goods to the State of Kerala only. They argued that when the Deputy Registrar was satisfied with the sufficient evidence of concurrent user of the trade mark Sun Plus, could have granted an order to proceed for registration without condition.
The counter appeal was not numbered by the registry of IPAB due to some technical reason and senior counsel Perumbulavil Radhakrishnan, who appeared for P C Thahir, gave clarification today upon which the Board directed the registry to number the case.
