IN THE HIGH COURT OF DELHI AT NEW DELHI

ORDINARY ORIGINAL COMMERCIAL JURISDICTION

C.O. ([Link]-TM) 1 OF 2022

IN THE MATTER OF :

Kuber Tobacco Products Pvt.

Versus

Rohit Jain And Anr ...Respondent

INDEX

NDOH: ___.10.2024

S. NO. PARTICULARS PAGE NO.

ARUSHI SINGH
D-1547/2015
A S LAW CHAMBER
Advocate for the Petitioner
M-194, 2nd Floor, DDA Site-1,
Place: New Delhi New Rajinder Nagar, New Delhi-110060
Date: ___.10.2024 Phone No. 9811200688
IN THE HIGH COURT OF DELHI AT NEW DELHI

ORDINARY ORIGINAL COMMERCIAL JURISDICTION

C.O. ([Link]-TM) 1 OF 2022

IN THE MATTER OF :

Kuber Tobacco Products Pvt.

Versus

Rohit Jain And Anr ...Respondent

WRITTEN SYNOPSIS ON BEHALF OF THE PETITIONER WITH LIST OF

1. BACKGROUND
1.1. The present petition has been filed by Kuber Tobacco
Products Pvt. Ltd. for rectification of the trademark “UBER
with suffix VIA” in Class 30, registered under Application
No. 1999510, citing sections 9, 11, and 47 of the Trade
Marks Act, 1999.
1.2. This petition has been transferred from the IPAB to the
Hon’ble High Court of Delhi following the enactment of the
"TRIBUNALS REFORMS ACT, 2021."

2. CASE OF PETITIONER
 2.1. Mark – “KUBER” was adopted by Shri Moolchand Malu,
founder of Kuber Group, in 1998, for the process, manufacture,
and sale of goods falling in various classes and has continuously
used the said mark extensively in the course of trade. The
petitioner was incorporated in 1993 for selling goods included
in Class 30 such as tea, coffee, etc [Ex P-2]
2.2. The Cause of Action arose in June, 2019 when the petitioner
came across the registration of the Trade Mark “UBER with
suffix VIA” under the no. 1999510 in Class 30 with claim of
“proposed to be used”.
2.3. The petitioner filed the rectification petition on July 29, 2019.
The petition was signed, verified and instituted by Mr Deen
Dayal Sharma. [Ex P-1]
2.4. The petitioner has licensed the mark “KUBER” to Kuber Grains
& Spices Pvt Ltd and Kuber Khadyann Pvt Ltd. [Ex P-3]
2.5. The petitioner has demonstrated significant sales and incurred
substantial expenses on publicity. [Ex P-4, 5, 6]
2.6. The petitioner has registered the mark “KUBER” under
different classes [Ex P-7] and some marks were pending
registrations [Ex P-8]

3. GRIEVANCE(s) OF PETITIONER
3.1. The Respondent No. 1 filed an application under No. 1999510
in Class 30 for “UBER with suffix VIA” with a claim of
“proposed to be used” in 2010. [Ex P-9]
3.2. The Respondent No.1’s mark is phonetically, structurally, and
visually identical and similar to that of the Petitioner.
3.3. The Registrar, in their Examination Report, found the mark of
respondent to be violative of Section 9(1), 11(1) and 11(2).
 [wehave no proof for the same, but it is written in the
petition]
3.4. The Registrar also ordered that the said application shall be
advertised before Acceptance under the provision of Section
20(1) of the Trade Marks Act, 1999. [Ex P-10]
3.5. The impugned mark was registered wrongly. [Ex P-11]
3.6. The Respondent No. 1 never intended to use the disputed trade
mark for registered goods, both at the time of filing application
and post-registration. Thus, the trademark shall be removed or
canceled under section 47(1)(a) and (b) of the Trade Marks Act,
1999, due to non-use and lack of intention to use.

4. SUBMISSIONS
4.1. The Respondent No. 1 has failed to adduce any evidence in
support of their claims.
4.2. The Respondent No. 1 has not only filed irrelevant evidence but
also inadmissible evidence, as they have failed to attach the
requisite Certificate under Section 65B of the Indian Evidence
Act, 1872.
4.3. The Respondent No. 1's attempt to introduce email
communications with the product developer is irrelevant, as it
does not demonstrate any meaningful commercial activity,
consumer interaction, or market penetration.
4.4. The Respondent No. 1's alleged marketing materials feature a
mark that is confusingly similar to the Petitioner's mark,
replicating key visual identifiers such as color palette,
background contrast, and typography.
 4.5. The mark relied on by the Respondent No. 1 in their list of
documents including e-mails and marketing brochure is
different from the impugned mark.
4.6. The Respondent No. 1's submission of invoices commencing
from 2021, 11 years after the filing of application, reveals a
pattern of dishonesty and implies an intent to monetize the mark
through trafficking, rather than legitimate use.
4.7. In rectification petition, CO (COMM IPD-TM) – 94/121, for
mark UBER under application no. 19881888 for Class 3 is
pending before the Hon’ble Delhi High Court.
4.8. Moreover, the petitioner, in another matter of Kuber Tobacco
Products Pvt. Ltd vs M/s Hicon Electrotech Pvt Ltd – CO
(COMM IPD-TM) 79 of 2021, had successfully established that
the mark “UBER” is deceptively similar to mark “KUBER” of
the Petitioner.

5. POINTS OF CONSIDERTION
5.1. Mark an only be used by the proprietor.
5.2. Corporate Veil cannot be lifted in a routine manner [The
Respondent No. 1 is the Director of M/s KTM Healthcare Pvt
Ltd. and M/s Arihant Infomarketing Pvt. Ltd. The said two
organizations, KTM and Arihant, utilizes the impugned
trademark for selling, distributing and retailing various eatable
products.]
5.3. FALSE CLAIM of website fatkart- shows malafide intent
5.4. False claim of sale on India Mart, fatmart and tradeindia -
malafide
● Reliance cannot be placed on marks which are pending
rectification [The Respondent has relied on following marks:
UBER/1988193 [pending rectification], UBER/1988189
[registered], UBER/1988194 [not renewed], UBER/1988188
[registered] and UBERSWEET/1988187 [registered.]
● Reliance cannot be pleaded on E-mail & Invoices & No 65B.