Trade mark decision

BL Number

O/030/05

Decision date

2 February 2005

Hearing officer

Mr J MacGillivray

Mark

AJIT WEEKLY

Classes

16

Applicant for Invalidation

Sadhu Singh Hamdard Trust

Registered Proprietor

Ajit Newspaper Advertising

Invalidation

Section 47(2)(a) based on Section 5(2)(b) Section 47(2)(b) based on Section 5(4)(a) Section 47(1) based on Section 3(6)

Result

Section 47(1) based on Section 3(6): - Invalidation successful.

Section 47(2)(a) based on Section 5(2)(b): - Not considered.

Section 47(2)(b) based on Section 5(4)(a): - Not considered.

Points Of Interest

• 1. None

Summary

The applicant for invalidation filed evidence to show that it had published daily and weekly newspapers in the Punjabi area of India since 1959 under the mark AJIT and in the stylised Punjabi script from at least 1984. The mark has been registered in India in the form AJIT, Punjabi script to represent this word and in the stylised Punjabi script (called the AJIT logo).

The applicant filed extensive evidence as to the reputation of its paper in the Punjab and also from a number of declarants in the UK who testified to the fact that the newspaper is well known among the Punjabi community in the UK. Evidence of limited use and sales in the UK was also filed.

The registered proprietor’s evidence came from Dr Darshan Bains who is Chief Executive Officer and Editor and Chief of Ajit Newspaper Advertising, Marketing and Telecommunications Inc. Dr Bains had been a university teacher at Jalandhar, Punjab and it would appear that following a move to Canada he adopted the name AJIT Weekly in 1992. A website promoting the paper was launched in 1998. The mark in suit was registered as of 24 October 2001 and the print runs for editions of his newspapers in the UK is of the order of 10,000 copies. The newspaper is published in the UK in the Punijabi language. Dr Bains also stated that AJIT is a common forename amongst Sikhs and that his newspaper is named after a warrior named Ajit Singh.

Dr Bains disputed the applicant’s claim to have sold its newspaper in the UK and filed a number of declarations from members of the public, which had been obtained by way of reply to a newspaper advertisement, to the effect that they did not associate the registered proprietor’s newspaper with any Punjabi newspapers.

The Hearing Officer decided to first consider the case under Section 47(1) and Section 3(6) – Bad Faith. He carefully considered the claims and counterclaims of the two parties and concluded as follows:

(i) At the relevant date ie. the date of application for the mark in suit (24 October 2001), the registered proprietor had not used the mark in the UK and there is no persuasive evidence that the registered proprietor possessed goodwill in this mark in the UK at that date;

(ii) The applicant for invalidity had no substantial use of the "AJIT" mark in the UK at the relevant date. As at 24 October 2001 the applicant had thirteen subscribers (including one library) to its newspaper in the UK. Although some further copies were obtained by individuals through other means, the quantities involved, while unspecified, are small;

(iii) While the applicant for invalidity had no substantial sales of its "AJIT" newspaper in the UK, the evidence demonstrates that its "AJIT" newspaper is very successful and well known in the Punjab;

(iv) The registered proprietor is owned 100% by Dr Bains (the Chief Executive Officer, Editor in Chief and Publisher) and his wife;

(v) Dr Bains originates from the Punjab where he has been a university teacher in Jalandhar (the headquarters of the applicant for revocation’s newspaper). He has also been an historian, an author and a lecturer in Journalism.

In the light of these facts the Hearing Officer decided that Dr Bains knew of the applicant’s newspaper when he adopted the identical name. While the proprietor may have a business in Canada and the USA this does not assist as regards the UK where there is a substantial Punjabi Community. The publishing of any newspaper under the name AJIT, which is well known in the Punjab, would be bound to lead to confusion among this community. In the Hearing Officer’s view, in registering the mark in suit this amounted to reckless disregard as to the obvious confusion, deception and detriment which would result. Dr Bains actions therefore fell short of the standards of acceptable commercial behaviour. Invalidation therefore succeeded under Section 47(1) of the Act because the application to register the mark in suit was filed in bad faith contrary to Section 3(6) of the Act.

In view of his decision under Section 47(1) the other grounds raised were not considered.