2025:MHC:1473(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

IN THE HIGH COURT OF JUDICATURE AT MADRAS

Order reserved on 21.04.2025

Order pronounced on 26.06.2025

CORAM:

THE HON'BLE MR. JUSTICE SENTHILKUMAR RAMAMOORTHY

(T)OP (TM) Nos. 368 to 370, 460, 461 & 464 of 2023

In all OPs :

M/s Media Monks Multimedia Holding B.V.,

Schapenkamp 2 NL- 1211 PA Hilversum,

The Netherlands ...Petitioner

vs

1. M/s Pachala Murali Krishna,

First Floor, 3-6-892, Street No. 16,

Himayathnagar, Hyderabad- 500 029,

Andhra Pradesh

2. The Registrar of Trademarks,

Intellectual Property Rights Building,

Industrial Estate, SIDCO RMD,

G.S.T. Road, Guindy,

Chennai- 600 032 ...Respondents

1

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Prayer in T (OP) (TM) No. 368/2023: Removal of trademark

“MEDIA MONK LABEL” registered under no. 1846458 in class 16

in favour of M/s Pachala Murali Krishna, First Floor, 3-6-892,

Street No. 16, Himayathnagar, Hyderabad- 500 029, Andhra

Pradesh from the register or rectification of the register under

Section 47/57/125 of the Trade Marks Act, 1999.

Prayer in T(OP) (TM) No. 369/2023: Removal of trademark

“MEDIA MONK” registered under no. 1846457 in class 16 in favour

of M/s Pachala Murali Krishna, First Floor, 3-6-892, Street No. 16,

Himayathnagar, Hyderabad- 500 029, Andhra Pradesh from the

register or rectification of the register under Section 47/57/125 of

the Trade Marks Act, 1999.

Prayer in T(OP) (TM) No. 370/2023: Removal of trademark

“MEDIA MONK LABEL” registered under no. 1846460 in class 35

in favour of M/s Pachala Murali Krishna, First Floor, 3-6-892,

Street No. 16, Himayathnagar, Hyderabad- 500 029, Andhra

Pradesh from the register or rectification of the register under

Section 47/57/125 of the Trade Marks Act, 1999.

Prayer in T(OP) (TM) No. 460/2023: Removal of trademark

“MEDIA MONK” registered under no. 1846459 in class 35 in

favour of M/s Pachala Murali Krishna, First Floor, 3-6-892, Street

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

No. 16, Himayathnagar, Hyderabad- 500 029, Andhra Pradesh

from the register or rectification of the register under Section

47/57/125 of the Trade Marks Act, 1999.

Prayer in T(OP) (TM) No. 461/2023: Removal of trademark

“MEDIA MONK LABEL” registered under no. 1846456 in class 09

in favour of M/s Pachala Murali Krishna, First Floor, 3-6-892,

Street No. 16, Himayathnagar, Hyderabad- 500 029, Andhra

Pradesh from the register or rectification of the register under

Section 47/57/125 of the Trade Marks Act, 1999.

Prayer in T(OP) (TM) No. 464/2023: Removal of trademark

“MEDIA MONK' registered under no. 1846455 in class 09 in favour

of M/s Pachala Murali Krishna, First Floor, 3-6-892, Street No. 16,

Himayathnagar, Hyderabad- 500 029, Andhra Pradesh from the

register or rectification of the register under Section 47/57/125 of

the Trade Marks Act, 1999.

In all OPs

For Petitioner : Mr. Sudharshan Kumar Bansal

Ms. Ancy George

for M/s. K.G.Bansal and Company

For 1

st

Respondent: Mr.P.Satheesh Kumar

Ms.Vidya R.

For 2

nd

Respondent: Mr.A.R.Sakthivel, SPC

*********

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

COMMON ORDER

Background

By way of these rectification petitions, the petitioner seeks to

rectify the word mark 'MEDIA MONK' and the device mark

'MEDIA MONK' with a frog label ('impugned marks') registered

under classes 16, 35 and 09 in favour of the first respondent. The

petitioner entity is a digital, unitary operating company, engaged in

the business of inter alia offering advertising and marketing

communication services including consultancy in the field of

advertising and digital productions and marketing.

2. The petitioner asserts that it started using its mark

'MEDIAMONKS' globally since its inception in 2001 as a trade

name and domain name and that it has secured registration in the

Netherlands under Nos. 0801864 and 0898259 dated 12.09.2005

and 24.03.2011, respectively, and has routed its application in

other countries viz., European Union, United States, China,

Australia, Switzerland, Norway, Russia, Singapore, and Turkey

through the Madrid Protocol. In India, the petitioner commenced

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its business in the year 2015, applied on 24.10.2015 for registration

of the word mark 'MEDIAMONKS' under classes 35, 41 and 42 on a

'proposed-to-be-used' basis and was granted registration on

23.01.2025 with effect from the date of application.

3. In its rectification petition, the petitioner avers that it has

an online presence and created its domain name

www.mediamonks.com on 19.01.2001 which is accessible to the

Indian audience. It also enlists its advertising projects done for

several multi-national companies, international awards won since

2001 and media coverage vis-à-vis its projects to assert that it

possesses trans-border reputation and its mark qualifies as a 'well-

known' mark within the meaning of Section 2(1)(zg) of the Trade

Marks Act, 1999 ('TM Act').

4. The first respondent individual, engaged in the business of

advertising, registered the impugned marks bearing registration

nos. 1846460, 1846458, 1846457, 1846455, 1846456, and 1846459

with effect from 03.08.2009 under classes 09, 16, and 35 in respect

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of advertising and marketing by inter alia electronic media. The

first respondent asserts that he coined and honestly adopted the

impugned word marks in January, 2009 drawing inspiration from

his monicker 'MEDIA MONK', by which his friends, family and

clients called him, as he is a self-taught, self-made 'MEDIA MONK'

trying to make a big leap like a little frog as a small player among

giants in the industry. Asserting that he is the prior user and

registrant of the impugned marks, the respondent avers that he

commenced the usage thereof in January 2009 preceding the

petitioner's usage and first application in India in 2015.

5. Taking into account the pleadings and draft issues, the

Court, on 08.12.2023, framed the following issues in the

rectification petitions relating to the word marks:

1.Whether the petitioner is a person

aggrieved for purposes of

prosecuting the present petition?

2.Whether the petitioner is entitled to

prosecute the petition in India under

applicable provisions of the Trade

Marks Act, 1999?

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3.Whether the petitioner acquiesced in

the use of the trade mark MEDIA

MONK by the first respondent or is

guilty of laches, and not entitled to

maintain this petition for any of the

above reasons?

4.Whether the petitioner adopted and

used the trade mark MEDIAMONKS

as per the Trade Marks Act, 1999

before the first respondent adopted

and used the trade mark MEDIA

MONK?

5.Whether the first respondent's trade

mark is deceptively similar to the

petitioner's trade mark?

6.Whether the adoption and

registration of the impugned mark

was in bad faith or with mala fide

intention?

7.Whether the entry relating to the

impugned mark was made in

contravention of applicable

provisions of the Trade Marks Act,

1999?

8.Whether the impugned trade mark

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was entered on the register without

sufficient cause or whether it is

wrongly remaining on the register?

9.Whether the petitioner is entitled to

the relief claimed?

10.Whether the parties are entitled to

any other relief?

Identical issues in respect of the registration of the device mark

'MEDIA MONK' label were framed in the rectification petitions

challenging those registrations under classes 09, 16 and 35.

6. Evidence was recorded in common in all the rectification

petitions. The rectification petitioner adduced evidence by

examining Mr. Kanan Rele, authorized signatory of the petitioner

company as P.W.1. During his examination-in-chief, 26 documents

were exhibited as Exs.P1 to P26. Thereafter, P.W.1 was cross-

examined by learned counsel for the first respondent. The first

respondent adduced evidence by examining himself as R.W.1. . In

course of his examination-in-chief, 12 documents were exhibited as

Exs.R1 to R12. R.W.1 was later cross-examined by learned counsel

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for the petitioner.

Counsel and their contentions:

7. Oral arguments on behalf of the petitioner were advanced

by Mr. Sudharshan Kumar Bansal, learned counsel, assisted by Ms.

Ancy George, learned counsel. On behalf of the contesting

respondent, learned counsel, Mr. P. Satheesh Kumar, advanced

oral arguments, assisted by Ms. R. Vidya, learned counsel.

8. Learned Counsel for the petitioner opened his submissions

by referring to Ex.P6 which is the 'WHOis report' evincing the

domain name registration “mediamonks.com” and Ex.P7, the

website downloads from the petitioner's website indicating the

establishment of the petitioner company in its trade name

'MediaMonks' in the year 2001 which is much prior to the

respondent's use of the impugned marks in India in 2009.

Thereafter, he drew my attention to Exs. P4 and P5 which are the

petitioner's trademark registrations and applications in other

jurisdictions and the copy of the extract from the Netherlands'

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Chamber of Commerce's Commercial Register corresponding to

the petitioner's commencement of business as 20.04.2005

respectively.

9. Learned counsel referred to and relied upon the judgment

in Milmet Oftho Industries and Ors. v. Allergan Inc. (2004) 12

SCC 624, specifically paragraphs 2 to 4 and 8 to 10 thereof,

wherein the Supreme Court observed that the party which uses the

mark first in the world market, albeit not in the Indian market, is

entitled to protection as the prior user. He further relied on Hardie

Trading Ltd. and another v. Addisons Paint & Chemicals Ltd.,

(2003) 11 SCC 92 , particularly paragraphs 72 and 85 thereof, to

contend that the petitioner's application for registration on a

'proposed-to-be used' basis is positive proof of its intention to use

the mark in India and as the prior user, the petitioner is entitled to

claim proprietary rights over its mark. Referring to the copies of

the sale invoices for the period 2019- 2023 (Ex. P14) at pages 232-

249 of the typed set, documents in relation to publicity expenses

for the period 2020- 2023 (Ex. P15), documents showing revenue

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generated during the period 2019-2023 (Ex. P16), learned counsel

submitted that they are dispositive of the use of the mark in India.

10. By referring to R.W.1's answers to question nos. 1, 2, 4, 6,

and 14-22 in his cross-examination wherein the respondent

admitted that he uses the Internet for his work in digital

productions; and paragraph 6 of R.W.1's proof affidavit and

answers to question Nos. 27 to 29 in R.W.1's cross-examination

wherein the first respondent admitted that he worked as an

Executive Director and Managing Director of various media

companies, learned counsel contended that the respondent, being

in the same business as that of the petitioner, ought to have been

aware of the petitioner and its mark which is inventive in nature

comprising the unusual juxtaposition of the words 'media' and

'monks'. For this purpose, he also relied on answers to question

Nos. 35 to 37 in R.W.1's cross-examination corresponding to the

respondent's knowledge of other big companies in the business of

media and digital production; and the answers to question Nos.

60-62 in relation to the respondent's knowledge about the

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petitioner's Noida office in India.

11. Learned counsel made reference to Satyam Infoway Ltd.

v. Siffynet Solutions (P) Ltd. (2004) 6 Supreme Court Cases 145

('Satyam Infoway'), particularly paragraphs 30 and 31 thereof,

wherein the Court held that the respondent's choice of its word

'SIFFY' was not original but inspired by the appellant's domain

name 'SIFY' and, therefore, the appellant, as the prior user, has the

right to debar the respondent from eating into its goodwill.

Relying on Exs P8, P9, P10 and P11, which are the transcripts of

interviews of the petitioner company's officials from the year 2002,

copies of press releases in Asia, and list of awards and citations

won by the petitioner since 2001, learned counsel contended that

they establish the petitioner's trans-border reputation.

12. He further submitted that since the first respondent had

knowledge of the petitioner's mark, his applications for registration

of the impugned marks were made fraudulently and in bad faith

and therefore the impugned marks are liable to be expunged from

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

the Register. Learned Counsel relied on an excerpt from P.

Narayanan, Law of Trade Marks and Passing Off (6

th

Ed., 2017)

p.900, for this purpose.

13. Learned counsel for the petitioner also relied on the

following cases to canvass his case:

(i) Laxmikant V Patel v. Chetanbhat Shah

& Anr. [(2002) 24 PTC 1 (SC)]

(ii) M/s Power Control Appliances and

Ors. v. Sumeet Machines Pvt. Ltd. [(1994)

2 Supreme Court Cases 448]

(iii) B.S. Ramappa v. B. Monappa and

Anr. [1956 SCC OnLine Mad 188]

(iv) B. Monappa v. R.S. Ramappa and

Anr. [1954 SCC OnLine Mad 377]

(v) Ciba Ltd. Basle Switzerland v. M.

Ramalingam and S. Subramaniam

trading in the name of South Indian

Manufacturing Co., Madura and Anr.

[1957 SCC OnLine Bom 45]

(vi) East End Hosiery Mills Private Ltd. v.

M/s Agarwal Textiles Mills, [1970 SCC

OnLine Cal 57]

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(vii) M/s Hindustan Pencils Pvt. Ltd. v.

M/s India Stationery Products Co. and

Anr, [AIR 1990 DELHI 19]

(viii) Jolen Inc. v. Shobanlal Jain and Ors.,

[2004 SCC OnLine Mad 883]

(ix) Austin Nichols & Co. v. Arvind Behl

[2005 SCC OnLine Del 1276]

(x) Pfizer Products Inc. v. Renovision

Exports Pvt. Ltd. and Anr [2024 SCC

OnLine Del 3140]

(xi) Choice Hotels International Inc. v. M.

Sanjay Kumar and Anr. 2015 SCC OnLine

Del 7407]

(xii) Pepsico Inc & Ors. v. M/s Pure Water

Beverages & Ors. [2011 SCC OnLine Del

2605]

(xiii) Rolex SA v. Alex Jewellary Pvt. Ltd. &

Ors. [2014 SCC OnLine Del 1619]

(xiv) Telecare Network India Pvt. Ltd. v.

Asus Technology Pvt. Ltd. And Ors. [2019

SCC OnLine Del 8739]

14. In response, learned counsel for the first respondent

argued that the first respondent coined and adopted the impugned

marks 'Media Monk' honestly in India in the year 2009 much prior

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to the petitioner company, which commenced its business in India

in 2015. By referring to the answers to question Nos.25 to 27 in

P.W.1's cross-examination and Ex. P3, learned counsel submitted

that the petitioner made its application for registration of the mark

'MEDIAMONKS' on a 'proposed-be-used' basis in the year 2015.

He also referred to Ex. R1 which relates to the petitioner's second

application dated 08.01.2022 and P.W.1's Answers to question

Nos. 61-63 in his cross-examination to contend that the petitioner's

second application for registration was also made on a 'proposed-

to-be-used' basis in India in the year 2022. Drawing reference to

the letter dated 12.10.2009 (Ex. R7), which mentions the

advertisement campaign carried by the first respondent for his

client, corresponding cheques at pages 37 and 39 of the first

respondent's typed set and the invoice dated 24.03.2010 raised by

the first respondent in respect of the campaign made for a client

bearing the impugned word mark (Ex R.8), learned counsel

submitted that the documentary and oral evidence show that the

first respondent, having commenced its business in 2009, is the

prior user and honest adopter of the impugned marks.

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15. Learned counsel also drew my attention to P.W.1's

answers to question Nos. 89-94 in his cross-examination and

submitted that the petitioner company, in other countries, uses

names other than 'MEDIAMONKS' such as 'PONTO. MONKS' and

'FLUX.MONKS' and, therefore, the spill-over of the reputation of

its mark 'MEDIAMONKS' into India, by way of its usage in other

jurisdictions, is not well-founded. To refute the petitioner's

assertion that the petitioner's mark has acquired trans-border

reputation prior to its usage in India, learned counsel relied

heavily of the judgment of the Supreme Court in Toyota Jidosha

Kabushiki Kaisha v. Prius Auto Industries Limited and Ors.

(2018) 2 SCC 1 ('Toyato'), particularly paragraphs 7, 17, 24 & 40

thereof, wherein the Supreme Court had applied the territoriality

principle and concluded that advertisements in magazines,

information on the Internet, news articles relating to the product

launch in Japan do not qualify as positive evidence of spillover of

reputation and goodwill of the plaintiff's mark 'PRIUS' to the

Indian market prior to April 2001, when the defendant started

using its mark 'PRIUS' in the Indian territory. Learned counsel also

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relied on Chanda Softy Ice Cream & Ors. v. ‘MARS’ Incorporated

and Anr. [2006 SCC OnLine Mad 1240] and argued that

documentary evidence evincing actual sales, turn over, and

advertisements from the relevant period are required to prove that

the petitioner's mark has acquired trans-border reputation in India

prior to the first respondent's adoption of the impugned marks in

the year 2009.

16. Learned counsel for the petitioner made further

submissions by way of rejoinder. By referring to the answer to

question No.1 in R.W.1's cross-examination, learned counsel for

the petitioner reasserted that the first respondent, engaged in the

same line of business as that of the petitioner, and in knowledge of

the petitioner's marks, fraudulently adopted the impugned marks

in bad faith. He further relied on answers to question Nos. 76-81 in

P.W.1's cross-examination in relation to the inception of the

petitioner's business unit in India in support of the petitioner's

usage of the mark in India.

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Discussion, Analysis and Conclusion:

Issue Nos. 1 and 2:

17. Issue Nos.1 and 2 relate to whether the petitioner is a

'person aggrieved' under the TM Act and is entitled to prosecute

these petitions. The petitioner has instituted the present

rectification petitions primarily on grounds that the impugned

marks are nearly identical to the petitioner's earlier marks and that

they were adopted and applied mala fide. Consequently, the

petitioner asserts that the entries relating thereto were made

without sufficient cause. This ground falls under Section 57(2) of

the TM Act. In Hardie Trading Ltd v. Addisons Paint & Chemicals

Ltd, (2003) 11 SCC 92, the Supreme Court held that unlike a

petition under Section 47 of the TM Act on the ground of non-use

which requires the petitioner to show that it will possibly suffer if

the impugned entry is allowed to subsist, the locus standi under

Section 57 should be construed liberally to correct a public mischief

in the interest of maintaining the purity of the register.

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18. In any case, the rectification petitioner is in the same line

of business of digital media productions as the first respondent and

has a reasonable basis to complain of being aggrieved by the

impugned entries. Taking into account this factual scenario, I

conclude that the petitioner is a 'person aggrieved' and therefore

entitled to prosecute the current rectification petitions.

Issue No. 5:

19. Issue No.5 is in relation to whether the impugned marks

are deceptively similar to the petitioner's mark. The petitioner's

mark is an unusual and unique juxtaposition of the words 'MEDIA'

and 'MONKS'. Bearing in mind such unique juxtaposition, it is

inherently distinctive.

20. Comparison between the rival marks to determine

whether the marks are deceptively similar has to be done from the

perspective of a consumer of average intelligence and imperfect

recollection. The petitioner's mark is 'MEDIAMONKS'. The

impugned word mark is 'MEDIA MONK' which is nearly identical

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to the petitioner's mark except for the removal of 'S' and the

addition of space between the words 'MEDIA' and 'MONK'. Despite

the impugned device mark containing the depiction of a leaping

frog, 'MEDIA MONK' is the prominent feature therein. Taking into

account the essential feature of the impugned marks, the arbitrary

juxtaposition of words of the petitioner's mark and that the

petitioner and the respondent are in the same line of business, I

conclude that the impugned marks are deceptively similar to the

petitioner's mark 'MEDIAMONKS'. An important issue, however,

remains: is the petitioner entitled to be treated as the proprietor of

the earlier mark? I turn to this aspect next.

Issue No. 4:

21. Issue No. 4 pertains to whether the petitioner is the prior

adopter and prior user of the mark 'MEDIAMONKS'. As evidence

of global registrations and applications, adoption and use outside

India and in India, the petitioner relied on several documents.

Trade mark registrations or applications for registration of the

trade mark 'MEDIAMONKS' in countries/territories such as the

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Netherlands, Argentina, Special Administrative Region Hong

Kong, United Arab Emirates, Australia, United States of America

are exhibited collectively as Ex.P4. Illustratively, the registration in

the Netherlands appears to be from 12.09.2005 and the Madrid

Protocol registration on 19.12.2012. Ex. P6 is the online print out of

the 'WHOis Report' containing the registration details of the

petitioner's domain name www.mediamonks.com on 19.01.2001.

Ex.P5 is the copy of the extract from the Netherlands' Chamber of

Commerce's Commercial Register which indicates that the

petitioner commenced operations under the name

'MEDIAMONKS' on 20.04.2005. Evidence of use outside India has

been adduced in the form of online printouts of works and projects,

interviews, press releases and awards (Exs. P7-P11). The earliest

use appears to be from 2001, as per these documents. As evidence

of use of the petitioner's trade mark in India, invoices issued by the

Petitioner's group entity in India, M-Monks Digital Media Pvt.

Ltd., were exhibited collectively as Ex.P12. Each of these is an

export invoice for the provision of media services to a foreign third

party entity by the Indian entity. The earliest of these is dated

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31.03.2020.

22. As regards the first respondent, six certificates of

registration, each dated 03.08.2009, were exhibited as Ex. R1. The

certificate of incorporation (Ex.R4) of Media Monk Private

Limited/ the first respondent shows that it was incorporated on

07.08.2009. Evidence of use of the impugned trade marks has

been adduced inter alia in the form of an approved estimate dated

12.10.2009 for an outdoor ad campaign for Bharathi Cement

Corporation Limited (Bharathi Cement), the invoice issued in

respect thereof and the cheque from Bharathi Cement as proof of

payment for services. These documents are filed collectively as

Ex.R7. Further evidence of use of the impugned trade marks in the

form of print outs and invoices have been filed as Exs.R8-R11. The

earliest invoice out of these is dated 24.03.2010. Thus, there is

evidence of use, albeit sporadic. On appraisal of evidence, it is clear

that the petitioner is the prior adopter and user of its mark

'MEDIAMONKS' globally. However, in India, the first respondent

is the prior user. Given this conclusion, a critical issue arises: can

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the petitioner rely on its prior use outside India to support these

petitions? This question calls for consideration after first

examining whether the adoption and use by the first respondent

was in bad faith.

Issue No.6:

23. Issue No.6 is whether the applications for the registration

of the impugned marks were made in bad faith. The term 'bad

faith', which has not been defined in the TM Act, connotes a mental

state of dishonesty, moral obliquity, and conduct exhibiting

commercial behaviour which does not behove reasonable and

experienced men in the relevant field. There is no defined yardstick

to gauge 'bad faith' and it must be gleaned from the conduct of the

party. The oral evidence of R.W.1 regarding his use of the Internet

for his work, knowledge of the principal players in the digital

media business and the like become crucial in this evaluation.

24. R.W.1's answers to question Nos.1 & 2 and 14-19 in his

cross-examination are pertinent in this regard:

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Q1: Is it true that in relation to your

business activities in relation to digital

productions, designing, creative inputs,

passwords creations, branding solution

and the alike, you use the Internet, e-

systems, digital platforms, online

platforms and technologies?

A: Yes, we use Internet for my works but

E-System I am not clear what is meant by.

I need elaboration.

Q2: E-System means electronic platforms

and digital technologies.

A: Currently I do not directly use but my

clients use electronic platforms and digital

technologies mentioned above, for the

works I create. I help in creating. In some

places I give consultations.

Q14: Are you aware of WHOIS App where

particular domain names will be displayed

in this app?

A: Yes.

Q15: Ex.P6 is shown to the witness. Is this

the WHOIS report?

A.Yes.

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

Q16: What is the domain name mentioned

in the report?

A: MEDIAMONKS.COM.

Q17: What is the year of creation of this

domain MEDIAMONKS.COM as

mentioned in Ex.P6?

A: 19th January 2001.

Q18: Is this domain name mentioned in

Ex.P6 yours?

A: No.

Q19: Ex.P6 is shown to the witness. Who is

the Registrant Organization of the domain

name mentioned in Ex.P6?

A: MEDIAMONKS Multimedia Holding

B.V.

The above oral evidence shows that the respondent has been using

the Internet for his work in relation to digital productions,

branding solutions and advertisements and is also aware of the

WHOis app and acknowledges Ex.P6 evincing the petitioner as the

owner of the domain name www.mediamonks.com. The WHOis

domain database contains information such as the registration of a

domain name, details of its ownership etc.

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

25. R.W.1's answers to question Nos. 27 to 29 & 36 and 37 in

his cross-examination are of further relevance:

Q27: Please see the Counter Affidavit filed

by you wherein you have stated that you

have worked as a Group Account Director

being a Managing Director as well as the

CEO for a OUTDOOR MEDIA

OWNERSHIP COMPANY?

A: OUTDOOR MEDIA OWNERSHIP

COMPANY is not the Company Name. It is

the nature of Business in Advertising

wherein my Company ATTITUDE

MAXIMUS INDIA PRIVATE LIMITED and

BRAND BOUTIQUE MEDIA INDIA PVT

LIMITED are

OUTDOOR MEDIA OWNERSHIP

COMPANIES which own OUTDOOR

MEDIA and here I worked in the above

capacities.

Q28: Please name the company covered by

OUTDOOR MEDIA OWNERSHIP

COMPANY and the name of the Company

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

in which you have worked as an Executive

Director as mentioned in your Counter

Affidavit?

A: The Companies covered under

OUTDOOR MEDIA OWNERSHIP

COMPANY are ATTITUDE MAXIMUS

INDIA PRIVATE LIMITED and BRAND

BOUTIQUE MEDIA INDIA PVT LIMITED

and the Companies covered under MEDIA

PLANNING COMPANY are MEDIAMONK

PRIVATE LIMITED, ATTITUDE

MAXIMUS INDIA PRIVATE LIMITED and

BRAND BOUTIQUE MEDIA INDIA PVT

LIMITED. ATTITUDE MAXIMUS INDIA

PRIVATE LIMITED and BRAND

BOUTIQUE MEDIA INDIA PVT LIMITED

also do media planning using their

existing media for their clients.

Q29: In which year had you worked as a

Group Account Director, Managing

Director, CEO for the above mentioned

companies?

A: As a Group Account Director in 2009,

Managing Director from 2009 to till now.

CEO from 2009 to 2010 or 2011 (I am not

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

sure about year).

Q36: Being in the media and digital

production field please name some big

overseas companies in this area of

business?

A: OGILVY, WARNER MUSIC, THE

MEDIA GROUP.

Q37: Is the petitioner also one such big

Company?

A: Only as per the documents submitted by

the Petitioner in this Case I came to know

that it is a Company which is big because

they exhibited their financial in their

papers submitted.

The above oral evidence from R.W.1's cross-examination

indubitably shows that the first respondent has been in the

business of media for several years, has held senior managerial

positions in various companies and is aware of several

multinational companies in the field. The documentary evidence

submitted by the petitioner, including Ex P.10 in relation to the

award won by the petitioner in 2005 in the e-business category of

the europrix.nl multimedia competition, overwhelmingly supports

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

the petitioner's case that the petitioner company was widely

acclaimed for its work and received extensive media coverage

much prior to the respondent's user claim in January 2009. I find

it implausible that the respondent, having been in the same line of

business as that of the petitioner for several years, holding senior

managerial positions, and being aware of other big multinationals

in the field, was ignorant of the petitioner company and its trade

name at the time of filing his application for the registration of his

impugned marks.

26. In addition, as noticed earlier, the petitioner's trade mark

consists of an unusual juxtaposition of two English words. R.W.1,

in his answer to question no.47, in the course of cross-examination

provided the following explanation for the adoption of the

impugned word mark:

Q47: Why did you chose the word MONK

with the media when there are other

words like GURU, ENLIGHTENED or the

like which also signify the learned person?

A: As I mentioned above I am a self made

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

and self learned creative person who uses

various media in my works and hence my

family and friends used to call me

MR.MEDIA MONK and the word MONK is

very much related to the Country I live.

Considering that the petitioner company is the prior adopter of the

mark 'MEDIAMONKS' and that the first respondent had been

operating in the field of digital media for several years at the time

of application for registration of the deceptively similar impugned

marks, I find the first respondent's explanation for adoption, as

owing to his moniker, is unconvincing and appears to be post-

rationalisation (See Satyam Infoway). Because of these reasons, I

find that the impugned marks were adopted and applied in bad

faith and dishonestly. Against this backdrop, I revert to the issue of

the petitioner's entitlement to rely on prior use outside India.

27. The first respondent relied on the judgment of the

Supreme Court in Toyota to contend that in view of the

territoriality principle, the documentary evidence submitted by the

petitioner, including the interviews and awards won abroad, is

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

insufficient to support its assertion that there is spill-over of

reputation. It is noteworthy that the Supreme Court in Toyota

assessed trans-border reputation by taking stock of the limited sale

of Prius cars by Toyota in India, the lack of advertisements prior to

the respondent's first use in 2001 and held that it indicates absence

of goodwill and reputation among the target population in India.

The Supreme Court further held that a news article in relation to

the launch of the product in Japan cannot be sufficient basis for

spill-over of reputation into the target population.

28. In the present case, the petitioner is in the business of

digital production and multimedia advertisements for companies,

including multinationals, which form the petitioner's consumer

base and target audience. In light of the extensive recognition and

acclaim of the petitioner among the addressable market, as evinced

by Exs.P10 and P11, it cannot be said that the target population in

India, i.e. companies using digital media services and operating

across jurisdictions, would be unaware of the petitioner and its

business activities. Therefore, the first respondent's reliance on

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

Toyota does not pass muster and the documentary evidence

submitted by the petitioner leads to the conclusion that there is

spill-over of reputation of the petitioner's eponymous trade mark

into the Indian territory amongst its target consumer base prior to

the first respondent's first use of the impugned marks in 2009.

Issue No.6 is disposed of on these terms.

Issue No. 3:

29. Issue No.3 relates to the maintainability of the

rectification petition, i.e. whether the petitioner acquiesced in the

use of the impugned marks by the respondent and whether the

petition suffers from delay or laches. Section 33, dealing with

acquiescence, reads as under:

33. Effect of acquiescence

(1) Where the proprietor of an earlier

trade mark has acquiesced for a

continuous period of five years in the use

of a registered trade mark, being aware

of that use, he shall no longer be entitled

on the basis of that earlier trade mark—

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

(a) to apply for a declaration that the

registration of the later trade mark is

invalid, or

(b) to oppose the use of the later trade

mark in relation to the goods or services in

relation to which it has been so used,

unless the registration of the later trade

mark was not applied in good faith.

(2) Where sub-section (1) applies, the

proprietor of the later trade mark is not

entitled to oppose the use of the earlier

trade mark, or as the case may be, the

exploitation of the earlier right,

notwithstanding that the earlier trade

mark may no longer be invoked against

his later trade mark.

(emphasis added)

Section 33 of the TM Act provides that a challenge to a registered

trade mark cannot be made after the person intending to challenge

the registration has acquiesced in the use of the later mark for a

continuous period of five years after being aware of such use.

30. In his chief-examination, P.W.1 adduced evidence that

the petitioner was not aware of the impugned registrations until it

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

filed the rectification petitions. When an application for

registration is made, publication in the trade mark journal is

effected to put the public on notice and invite objections thereto.

The impugned marks were registered with effect from 03.08.2009.

The documents on record reveal that publications in trademark

journal nos. 1445-0 in respect of impugned Trade Mark nos.

1846457 and 184658 were effected on 01.08.2010 in order to put

the public on notice thereon. Details as regards publication of other

trade mark applications are not on record. All the rectification

petitions were filed on 06.08.2016. Other than relying on the

advertisements in the trade mark journals, the first respondent has

not adduced any evidence of the petitioner's knowledge of the

registrations. Given the express requirement in Section 33 that the

proprietor of the earlier mark should be aware of use by the later

user for a continuous period of five years, a mere constructive

notice of registration is insufficient to sustain this defence.

Therefore, a case of acquiescence is not made out.

31. In any case, Section 33 provides that a challenge to the

registration of the later trade mark is valid beyond the stipulated

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

five year period if the later mark was not applied in good faith. In

light of the finding that the applications for the impugned marks

were not made in good faith under issue no.6, the statutory bar

under Section 33 of the TM is not attracted in this case.

32. As for delay and laches, it is a settled principle of law that

delay per se in the absence of acquiescence cannot defeat an action

for rectification of the register, as it is in the interest of the public

to preserve its purity.

Issue Nos.7-10

33. Issue Nos.7-10 relate to whether the entries in respect of

the impugned marks were made in the register in contravention of

the applicable provisions of the TM Act and without sufficient

cause, and whether they are therefore liable to be removed from

the register. In light of the finding in Issue No.4 that the rival

marks are deceptively similar; the findings in Issue Nos.5 and 6

that the petitioner acquired goodwill and reputation in India prior

to the first respondent's first use in 2009 and that the adoption and

use by the first respondent was not in good faith, it is concluded

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

that the entries in relation to the impugned marks were made on

the register without sufficient cause. Issue Nos.7 and 8 are decided

on these terms.

34. On account of the above findings, the petitioners are

entitled to the relief claimed i.e., removal of the impugned

registrations from the register. Issue Nos. 9 and 10 are disposed of

on these terms.

35. As a result, (T)OP(TM) Nos.368 to 370/2023 and 460,

461, 464/2023 are allowed by directing the Registrar of Trade

Marks to cancel the entries relating to Trade Mark Nos. 1846458,

1846457, 1846460, 1846459, 1846456 and 1846455. This action

shall be completed within 60 days from the date the web copy of

this order is uploaded. There will be no order as to costs.

26.06.2025

Index : Yes/No

Internet : Yes/No

Speaking /Non-Speaking

order : Yes/No

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

Neutral Citation : Yes/No

kal

Plaintiff's Witness: PW1: Ms. Kanan Rele

Documents Exhibited by the Plaintiff

Exhibits Documents

Ex. P1Online copy of the Impugned Registered Trademarks

under No. 1846460, 1846458, 1846459, 1846455,

1846456 and 1846457 under classes 35, 16, 35, 9, 9 and

16 respectively of the Respondent No. 1 (Certificate u/s

65-B of I.E. Act Produced).

Ex. P2Photocopy of the Representation of the

Trademark/Label/Tradename/Domain Name of the

petitioner.

Ex. P3Online status of the petitioner's trademark application

for registration of its trademark MEDIAMONKS in India

under Application No. 3085371 in classes 35, 41, 42.

(Certificate u/s 65-B of I.E. Act produced). (The learned

counsel for the defendant objects to mark the same as it

is mentioned as 'Not for Legal Use').

Ex. P4Online copies of the petitioner's trademark registrations

and applications for its trademark MEDIAMONKS in

Netherlands, Argentina, Hong Kong, United Arab

Emirates, and International Basic Applications (under

the Madrid Protocol) for Australia, Switzerland, China,

European Union, Norway, Russia, Singapore, Turkey and

United States.

(Certificate u/s 65-B of I.E. Act produced).

Ex. P5Online extract from the Netherlands Chamber of

Commerce, Commercial Register corresponding to the

petitioner's registration therewith in 08.08.2005.

(Certificate u/s 65-B of I.E. Act produced).

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

Exhibits Documents

Ex. P6Online print out of the 'Whois Report' depiciting the

Domain Registrant/Registrar/Registration details of

petitioner's domain name www.mediamonks.com

created on 19th January 2001.

(Certificate u/s 65-B of I.E.Act Produced).

Ex. P7Online printouts from the website

www.mediamonks.com of the petitioner regarding its

works, projects, culture, interviews. (Certificate u/s 65-B

of I.E.Act Produced).

Ex. P8Online printouts of the transcripts of some old interview

of the officials of the petitioner dating back to 2002.

(Certificate u/s 65-B of I.E.Act Produced).

Ex. P9Copies/web-print-outs of few of the press releases in the

Asian region illustrating the wide reputation and

goodwill of the Petitioner. (Certificate u/s 65-B of I.E.Act

Produced).

Ex. P10Photocopy of the Tabulated list of about over 1,000

awards won by the petitioners since the year 2001 along

with the name of the brand/title of the work, the agency

or the client for whom the work was done and the

weblink on which the same was published.

Ex. P11Online print-outs of numerous awards/ citations won by

the petitioner since the year 2001, downloaded from

various websites on which the same were published.

(Certificate u/s 65-B of I.E.Act Produced).

Ex. P12Photocopy of the ex-parte order dated 14.07.2016 passed

by Shri.S.S.Rathi, ADJ Patiala House Court, New Delhi

in Civil Suit No. TM No.541 of 2016 titled as

M/s.MediaMonks Multimedia Holdings B.V. &

Anr.vs.M/s/Media Monks & Ors.

Ex. P13Photocopy of the Resolution-cum-authority letter in

favour of Mrs. Meena Bansal.

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

Exhibits Documents

Ex. P14Photocopy of the Sales Invoices for the period of 2019-

2023.

Ex. P15Photocopy of the Documents showing publicity expenses

for the period of 2020-2023.

Ex. P16Photocopy of the Documents showing Revenue

generated during 2019-2023.

Ex. P17Photocopy of the Annual Reports and Accounts of the

Petitioner's Parent Company pertaining to the year 2022.

Ex. P18Details of the Company "M-Monks Digital Media Private

Limited" as downloaded from the official website of

Ministry of Corporate Affairs (MCA Portal).

(Certificate u/s 65-B of I.E.Act Produced).

Ex. P19WHOIS details of Official Website

www.media.monks.com of the Petitioner Company

showing existence of the Website since 1994. (Certificate

u/s 65-B of I.E.Act Produced).

Ex. P20Documents showing Official Website

www.media.monks.com of the Petitioner company with

new interface along with its social media presence on

third party e-commerce platforms like LinkedIn,

Instagram, Facebook, YouTube, etc., showing their latest

interfaces in the year 2023-2024. (Certificate u/s 65-B of

I.E.Act Produced).

Ex. P21Printouts of various e-commerce news, channels.

Forums and third-party websites who have posted

articles/ news about MEDIAMONKS for the period

2021-2023. (Certificate u/s 65-B of I.E.Act Produced).

Ex. P22Printouts of various awards and recognitions received by

MEDIAMONKS in the year 2023.

(Certificate u/s 65-B of I.E.Act Produced).

Ex. P23Printouts of Media coverage reports by MEDIAMONKS.

(Certificate u/s 65-B of I.E.Act Produced).

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

Exhibits Documents

Ex. P24Online copy of the Trademark Registration of the

Petitioner in USPTO.

(Certificate u/s 65-B of I.E.Act Produced).

Ex. P25Photocopy of the Resolution-Cum-Authority in favour of

Mrs.Sangita Bansal. (The learned counsel for the first

respondent objects to mark the same on the ground that

the Board Resolution in whose favour passed is not a

deponent before this Court).

Ex. P26Power of Attorney dated 15.05.2024 in favour of

Mrs.Kanan Rele.

First Respondent's Witness:

RW1: Mr. Pachala Murali Krishna

Documents Exhibited by the Respondent:

Exhibits Description

Ex. R1 The Global Application dated 08.01.2022.

Ex. R2 Photocopy of the registration certificates

issued for the above 3 classes (6 Nos.) in

respect of word mark and device mark

"MEDIA MONK". (Original seen and

returned. The learned counsel for the first

Respondent undertakes to produce the

Original Document before the Court.)

Ex. R3 Photocopy of the DIN (Director Identification

Number) allotted. (Original seen and

returned. The learned counsel for the first

Respondent undertakes to produce the

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

Original Document before the Court.)

Ex. R4 Photocopy of the certificate of Incorporation

of the above Company. (Original seen and

returned. The learned counsel for the first

Respondent undertakes to produce the

Original Document before the Court.)

Ex. R5 Photocopy of the PAN card of the above

Company. (Original seen and returned. The

learned counsel for the first Respondent

undertakes to produce the Original Document

before the Court.)

Ex. R6 Online copy of the list of Directors of the

Company. (Certificate u/s 65-B of I.E.Act

produced).

Ex. R7 (Series) photocopies of the proof for the work

done by the first Respondent in the name of

trademark Media Monk for Bharathi Cements

Corporation with the receipt of payment from

the said Company. (Original seen and

returned. The learned counsel for the first

Respondent undertakes to produce the

Original Document before the Court.)

Ex. R8 Photocopy of the invoice raise by me and the

cheque received. (Original seen and returned.

The learned counsel for the Respondent

undertakes to produce the Original Document

before the Court.)

Ex. R9 Print out of the work done for

GREYHOUNDS.

(Certificate u/s 65-B of I.E.Act produced).

Ex. R10Printout of the work done by the Respondent

for TELANGANA STATE CYBER SECURITY

BUREAU (TCSB).

(Certificate u/s 65-B of I.E.Act produced).

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

Ex. R11Printout of the work done by me for

TELANGANA DHASAPTHI UTSAVALU.

(Certificate u/s 65-B of I.E.Act produced).

Ex. R12Some of the private works done by the first

Respondent along with the photocopy of the

Invoices.

(Original seen and returned. The learned

counsel for the Respondent undertakes to

produce the Original Document before the

Court.)

26.06.2025

kal

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

To

The Registrar of Trademarks,

Intellectual Property Rights Building,

Industrial Estate, SIDCO RMD,

G.S.T. Road, Guindy,

Chennai- 600 032

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(T)OP(TM) Nos.368 to 370, 460, 461 & 464/2023

SENTHILKUMAR RAMAMOORTHY J.

kal

Pre-delivery common order made in

(T) OP (TM) Nos. 368 to 370,

460, 461 & 464 of 2023

26.06.2025

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