Calcutta High Court Removes Rival 'TANA TAN' Trademark, Rules Bikaji Foods Is Prior User

The Court observed, “The impugned mark is strikingly identical and deceptively similar to the petitioner's mark. The respondent no. 1 has been unable to show any credible evidence of user of the impugned mark. The respondent no. 1 is a subsequent proprietor and has obtained registration in relation to a similar class of goods which is likely to cause dilution of the registered mark of the petitioner.”

Bikaji Foods told the Court that it is engaged in the manufacture, sale and distribution of a wide range of food products including bhujia, namkeens, mixtures, papad and other edible items. The company stated that “Bikaji” is its house mark and that it is also the prior user and registered proprietor of the mark “TANA TAN” in respect of goods falling under Class 30 relating to food products, with continuous use claimed since February 1994.

According to Bikaji, Prasad had wrongfully secured registration of an identical “TANA TAN” mark in December 2013 by falsely claiming use since April 2008. It was pointed out that no credible evidence of actual use had ever been produced and that the registration was obtained fraudulently, thereby adversely affecting the purity of the Trade Marks Register.

Upon examining the material on record, the Court held that Bikaji had established prior and continuous use of the “TANA TAN” mark and had incurred substantial promotional and advertising expenditure to build goodwill and reputation.

The Court found that the rival mark was strikingly identical and that Prasad had failed to demonstrate any bona fide intention or evidence of use. It further observed that the goods of both parties fell within the same category and were likely to be sold through identical trade channels to the same class of consumers.

“The impugned mark “TANA TAN” subsumes the petitioner's “TANA TAN” mark in its entirety. In addition, the impugned mark does not render the same in any manner different from the petitioner's prior adopted mark when considered in totality,” the Court said.

Holding that the registration had been obtained in bad faith and in violation of the provisions of the Trade Marks Act, the Court emphasised the importance of maintaining the purity of the Trade Marks Register. It noted that removal of wrongly registered marks was necessary not only to protect prior users but also in the interest of trade and the public at large.

Accordingly, the Court allowed the application and directed that the trademark “TANA TAN” registered in favour of Jagaranath Prasad be removed from the Trade Marks Register.

For Petitioner: Advocates Biswaroop Mukherjee and Pradipta Bose

For Respondent: Advocate Indrajeet Dasgupta for R-2