Kishore JaIn Vs. Shri Ruplal, Trading as M/S Ambica Pharmacy - Court Judgment

(CIRCUIT  BENCH  SITTING AT  DELHI)

ORDER No. 230/2013

V. Ravi, Technical Member:

The applicant herein are seeking the removal of two registered trade marks under no.336774 B (SURMI TONE) and No.510489 (SURMI) of the respondent on the following grounds.:

The applicant is a partnership firm consisting of Shri Kanwal Kishore Jain and others and are in the business of manufacturing and marketing ayurvedic medicinal preparations including surma, surmi, kajal and eye drops since 1937-38. These goods are used for the beautification of eyes as well as for the treatment of the eye disease. The words ‘surma and ‘surmi are generic expression and have direct reference to the character and quality of the goods. The applicant have adopted surma as a part of their trading style. They have also been selling other ayurvedic products such as balm, churan etc.

The applicant have evolved a system where the first portion of their mark denotes the trade mark and the later portion describes the goods. They are thus using the trade mark KANWAL NAYAN SURMI. This is an accepted trade practice and other examples that readily come to mind are Colgate tooth paste, Zandu balm, Amul butter etc.

The applicant have been granted registration certificate for setting up industrial units by the Govt. of Punjab. They have also been granted Certificate of Good Manufacturing Practice(GNP) as manufacturers of Ayurvedic, Siddha and Unani medicines.

The applicant filed an application on 1^st June, 1979 for the registration of the trade mark Kanwal Nayan in respect of “Ayurvedic medicinal preparations for the treatment of eye disease and Surma being Eye Salve” under no 340006 in Class 5 which has since been registered. The applicants have sold goods throughout India and have substantial sale.

The applicant also submits that there is an inter-se litigations with the respondents the particulars of which are briefly that the respondent/ registered proprietor had preferred a false and vexatious complaint under Section 418, 419, 420, 482, 486 – 489 read with Section 34 of IPC against ex-partners of the applicant firm as a bullying tactic. The complaint was numbered as 6/1 of 8^th February, 1988 in the Court of Judicial Magistrate, Ludhiana. The matter was contested by the applicant and it was dismissed by the Court of Judicial Magistrate on 28^th May, 1991. Similarly, the respondent had also filed a Civil Suit under the repealed TMM Act, 1958, in the Court of District Judge, Ludhiana to restrain the applicant from manufacturing and selling its products “KANWAL NAYAN SURMI. But even this suit was dismissed. Thereafter, 14 years later, the applicants started receiving illegal notices from the respondent for using the generic word Surma/Surmi. Therefore, the applicant was compelled to file a suit under the Trade Marks Act, 1999 on groundless and unjustifiable threat against the applicant. That suit is still pending adjudication.

Subsequently, the respondents registered proprietor filed a FIR against the applicant under Sections 101,102, 103 and 104 of the Trade Marks Act at the Police Station, Division No.3-Ludhiana. In response thereto, the applicant filed a petition under Section 482 of Criminal Procedure Code for quashing the FIR dated 1.12.2004. The petition numbered Criminal Miscellaneous No. 8845-M of 2005 is pending adjudication before the Punjab and Haryana High Court. The Honble High Court has also stayed further proceedings in the matter that is pending in the trial court. The respondents/ registered proprietor have registered initially the trade mark SURMI Tone under no.336774-B in class 3. But subsequently, they claimed the registration for the word Surmi per se under No.510489 in Class 5. The applicant are seeking rectification of both these impugned marks.

The applicants state that the trade mark SURMI was not distinctive at the date of its registration and at any time after its registration. The word SURMI is highly descriptive for goods included in the impugned registration and the respondent cannot be considered the proprietor of the impugned mark under section 18(1) of the Act. The impugned mark offends sections 9, 11(a), 11(e) and 18(1) of the Act. The respondent have made a false, incorrect and bogus statement about alleged user of the impugned mark at the time of seeking its registration. Thus, the registration of the impugned mark was obtained by fraud as it is a simple generic name of the product. Accordingly, the entry relating to the impugned mark is made without sufficient cause and is wrongly remaining in the register and liable to be removed.

The applicant sought a second registration for the trade mark Kanwal Nayan Surmi and it was objected to by the Registrar on the ground that Kanwal is a personal name and Surmi is descriptive. The conduct of the Registrar in favouring the respondent and objecting to the applicants application is discriminatory and it violates Article 14 of the constitution.

The Registrar has grossly erred in granting registration to the respondent of the impugned mark SURIMI TONE and Surmi. The impugned trade mark Surmi has a direct reference to the character and quality of the goods. The word Surma means :

SURMA means black tar sulphide of antinony used to beautify the eyes, supposed to strengthen the nerves of the eye and preserve sight. It is often confounded with sulphide of lead. It occurs abundantly in India, but most of that used is imported from Kabul and Bukhara. Moslems think that best comes from mount Sinai. The story is that Moses desired to see the glory of the Almighty. He was told that no mortal eye could behold that glory, but through a chink of a rock one ray was allowed to fall on him: and the rock was blasted into black Antimony. To console the rock the Lord ordained it should adorn the eyes of men:-Surma Isfahani,. An oxide of iron forming glistening hematite or :- Surma Kandhari; Antimony from the hills in the Punjab : - Surma Iceland a carbonate of lime. It is also used for the eyes. The surma sufaid of Dara Ghazi Khan is lime sulphate.

Similarly, the word SURMI means “ An inferior ore of antimony also Zinc sulphide.” Thus, the words SURMA/SURMI are generic. No person can claim monopoly on generic words. The words SURMA/SURMI are also in public domain. Thus, the public at large have an interest in the matter. No person can claim a monopoly in the said words. It is in public interest that the marks are rectified. The word SURMI is public juris. No one can carve a monopoly in the same. The word SURMA is very popular. All girls above the age of toddlers are aware of the word SURMA. It is the case of the Applicant that an inferior ore of antimony is called SURMI. Thus word SURMA and SURMI are generic.

The applicants state that the respondents have registered the impugned mark without any bonafide intention to use it in relation to the goods for which it is registered. In fact, there has been no use of the impugned mark for a continuous period of 5 years and longer prior to the date of filing of this rectification application. The impugned mark is accordingly liable to be rectified under section 47 (1)(a) and (b) of the Act.

Applicant is an ‘aggrieved person as the respondents have filed FIR against them on 1^st December, 2004 based on the impugned registration. The respondent have carved out a monopoly over a word which is public juris. In the circumstances, the applicant pray that the impugned mark be removed from the register without unnecessary delay.

II. The case of the respondent/ registered proprietor is summarized below:

v The respondents claim to be the true and lawful owner and the registered proprietor of the trade marks SURMI TONE under no.336774 and SURMI under no. 510489. They have been using the respective marks since 28^th May, 1978 and 16^th May, 1989. They claim the mark to have become distinctive as it has been used for 34 years by them and there was no identical or similar mark in the register at the time of its adoption. They have spent huge amount on publicity since then and followed all the procedure prescribed by law to secure registration of the impugned mark. The respondent submit that the impugned mark SURMI/SURMI TONE has no dictionary meaning nor it is a personal name or a name of the caste or has any geographical significance. The respondent state that their firm was established by their late father and the said mark SURMI has been used from the very beginning and it has become precious business property of the respondent. They are also manufacturing and selling other products like SURMI face pack SURMI Shikaki oil, SURMI eye powder, SURMI cool oil, SURMI chandan, SURMI neem face pack, eye make up SURMI badam rogan and SURMI multani mitti. In fact the impugned mark SURMI TONE has been held to be a distinctive trade mark in opposition DEL-9143 to application No. 510189.

v The respondent contends that the question of distinctiveness being raised at this stage is completely misleading. They submit that SURMI is not generic nor it has been obtained by fraud nor is the mark SURMI public juris. In fact, this rectification petition is a Counter blast to the ongoing litigation between the parties with regard to the trade mark SURMI. The rest of the counter statement is a complete denial of all the averments and contentions raised by the applicant and is totally baseless without any foundation in law.

3. REJOINDER TO COUNTER STATEMENT:

The applicant have filed a rejoinder reiterating that they had honestly adopted the trade mark name KANWAL NAYAN SURMI as explained before. They also state that the SURMA /SURMI defines the goods and hence the product of the applicant came to be known as KANWAL NAYAN SURMI. The applicant had applied for this mark under No.525600 in Class 5 and the Registrar raised an objection that the word Surmi is descriptive. However, the Registrar discriminated against the applicant by granting registration to respondent for the trade mark SURMI under No.510489. The applicant has also filed another application under no.133795 in Class 5 for the trade mark KANWAL NAYAN in respect of Surma, Surmi being medicinal preparation, eye lotion etc. This has been opposed by the respondent herein. The respondent has also filed the criminal complaint against the applicant based on the impugned registration. The applicant had filed a petition under Section 482 of CRPC in the Punjab and Haryana High Court under Criminal Miscellaneous No. 8845/M/2005. The Honble High Court was pleased to pass an order dated 22^nd July, 2008 wherein it observed as follows:-

“ –----------Learned Senior Counsel appearing on behalf of the petitioner also contended that even if the allegations of the FIR are taken on their face value no offence can be said to have been committed as the petitioner has not used the word SURMI but their own registered name i.e. Kanwal Nain and SURMI is only a product name. It is also the contention of the learned senior counsel that word SURMI has been used only as a prefix and suffix in respect of the product in question. In Punjabi Dictionary the word “SURMI” is defined as under :

SURMI: An inferior ore of antimony, also zinc sulphide.

The contention of learned senior counsel, therefore was SURMI is a product manufactured by the petitioner under their brand name of Kanwal Nain and therefore it cannot be said that the FIR disclose any tribal Offence. Mr. B.S. Bhalla, learned counsel appearing on behalf of respondent on the other hand, contended that SURMI is a registered name of the complainant and misuse of the said name violates the provisions of the Act and therefore, the proceedings are not liable to be quashed. It is also the contention of the learned counsel for the respondent that it is a question of evidence to see whether the offence has been committed or not and the investigation cannot be scuttled at the initial stage. However, on consideration of the matter, I find force in the contention raised by the learned senior counsel appearing on behalf of the petitioner. SURMI is a product. If the same is branded under the brand name of KANWAL NAIN it cannot be said that any offence is committed by the petitioner as is sought to be made out in the FIR. Even otherwise, the complaint filed on the similar allegations as well as the civil suit stand already dismissed. Thus, the registration, of the FIR as well as further proceedings is nothing but misuse of the process of the court. This petition is accordingly allowed. The FIR and subsequent proceedings qua the petitioner are ordered to be quashed.”

The respondent filed a Special Leave Petition under No.SLP (Cri) No.8043/2008 and the Honble Supreme Court passed an order that the SLP is dismissed as withdrawn. Therefore, the order of the Honble Punjab and Haryana High Court has become final.

The applicant submit that the counter statement is based on falsehood by concealment of material fact. The respondent has failed to properly reply to the averments of the applicant that the word SURMA and Surmi are generic. In Punjabi dictionary, the word SURMI is defined as “an inferior ore of antimony also zinc sulfide”. Thus the word SURMI means an ointment applied to the eye and the respondent cannot exercise exclusive monopoly right thereof. Both the impugned marks are liable to be rectified and the balance of convenience is in favour of the applicant.

The matter was listed for hearing on 15^th July, 2013. We have carefully heard the arguments of the learned counsel and gone through the records, pleadings and documents.

IV. THE APPELLANT RELIED ON THE FOLLOWING AUTHORITIES:

1.“Jerome DSilva Vs The Regional Transport Authority, South Kanara and Another”- MANU/TN/0327/1952 ;AIR 1952 Mad 853 .

It is desirable that the findings and orders of the Criminal Courts, should be treated as conclusive in proceedings before quasi judicial tribunals, like the transport authorities under the Motor Vehicles Act.

2.“ R. Gnanavelan and Another Vs State of Tamil Nadu and Ors.” - MANU/TN/0148/1985 ; AIR 1985 Mad 69.

Tamil Nadu Raffle Rules, 1976 – Two raffle tickets bearing same number presented with claim for prize – Director of Raffles rejected both claims whether valid in law- Held in negative – The findings of the Court has to be accepted in criminal proceedings which has conducted prosecution proceedings efficiently.

3. “Shri Tikkam Chand Vs Prince Gutka Ltd.” - Order No.2 of 2013- IPAB

The word ‘GUTKA has been used by other manufacturers as a matter of right. It has become public juris.

4. “ Hindustan Unilever Limited. Vs M/s Three-N- Products (P) Ltd.”—IPAB ORDER No. 117/2012)

Held, inter-alia, ‘AYUR means life. It is deceptive since ordinary consumers will think it is an ayurvedic product.

V. THE RESPONDENT RELIED ON THE FOLLOWING AUTHORITIES:

1.“Kaviraj Pandit Durag Dutt Sharma Vs Navaratna Pharmceutical Laboratories -–PTC Supplementary (2) 680(SC)

Where through long user, the party has become associated in the market with the products concerned, his mark would be protected.

2.J.C. and J Field Ltd. Vs Wagel Syndicate Ltd. (1900) 7 RPC 266 Ch.D.

It was further held that SAVONOL though it is derived from the Fremch Word “ Sovon” meaning Soap was an invented word and a motion to rectify was dismissed.

3.“Himalaya Drug Company Vs Gufic Limited” - 2011(46) PTC 432 (IPAB)

Section 31 – Application for removal of trade mark made after more than two decades __ Held, Respondents trade mark having acquired secondary meaning and in view of the protection granted under Section -31 of the Act, mark allowed to remain on the register of trade marks – Also, that the trade mark which was not used as a generic expression or as Trade Mark by any manufacturer or trader in the year 1982 when adopted and used by the respondent ought not to be cancelled or removed.

Rectification application for removal of trade mark “SALLAKI” which is claimed to be derived from the Sanskrit word “ SALLAKI” and being a generic name is incapable of registration. Respondents claimed that they were selling the product since 1981 and being registered proprietors since 1982, the mark has become conclusive and the mark had become reputed and distinctive and is not descriptive – Thus, held that applicants trade mark having been on the Register of Trade Marks for 20 years , it ought not to be cancelled - Hence, rectification application dismissed.

VI. ARGUMENTS OF THE APPELLANTS COUNSEL:

The learned counsel began his arguments by submitting that they are seeking removal of two registered trade marks of the respondent under No.336774-B (Surmi tone) and No.510489 (Surmi). He drew our attention to Section 144 of the Trade Marks Act which reads as follows:

“Trade usages, etc. to be taken into consideration. –

In any proceeding relating to trade mark, the tribunal shall admit evidence of the usages of the trade concerned and of any relevant trade mark or trade name or get up legitimately used by other persons. ”

The word SURMA AND SURMI are generic expressions and are the name of products. Therefore, the whole of the trade mark of the respondent has to go. Or alternately the Board should impose a disclaimer condition on the word SURMI.

VII. ARGUMENTS OF THE RESPONDENTS COUNSEL:

The learned counsel for respondent Shri Mahatta stated that the Honble High Court has not given any finding to the effect that the word SURMI is generic. Respondents further stated that his trade mark was registered since 1981 and because of practical difficulties old records could not be produced. The word SURMI TONE is registered only for Kajal. The respondent placed reliance on Section 33 of the Act which deals with the effect of acquiescence. The applicants are not person aggrieved as the adoption of SURMI by them is tainted.

VIII. REBUTTAL ARGUMENTS:

The applicant reiterate that SURMI is the name of the product. The rectification application was filed in 2005. There is no record available of use of the impugned mark prior to 2007. The use furnished by the respondent are untrustworthy and unreliable and cannot stand up to judicial scrutiny. The impugned application has to go on ground of proved non-user. In colloquial language the word SURMI means anything containing SURMA. The registration of the respondents trade mark SURMI (word per se) is illegal as it is the name of the goods itself. The various authorities relied on are not relevant. Further, the respondents have only shown use of the impugned mark in respect of KAJAL and five other items mentioned in the specification of goods have no proved user. The applicant pray that the Board should either remove both the impugned marks or in the alternative impose disclaimer condition in respect of the word SURMI.

IX. As regards the issue of ‘Person Aggrieved the applicants are facing litigation from the respondent both before the Registrar of Trade Marks and in Court. Hence, they are person aggrieved.

X. In our view the word ‘SURMI denotes ‘SURMA to the comman man and we cannot accept the respondents contention that ‘SURMI is a fancy word. Merely changing one alphabet in the end does not necessarily mean the word has lost its primary descriptive significance. SURMA is the name of a product. SURMI is the name of a product. SURMI is a minor variation of SURMA and in rural areas and country side it could be easily taken to mean SURMA for girls and ladies given the low standard of literacy. Confering exclusive monopoly right on SURMI to the respondent is totally unjustified. Its registration forbids others from using the said word SURMA/SURMI as a part of the product name which is a legitimate trade practice. The conduct of the respondent clearly exhibits their intention from stopping all competitors from using the word SURMA or SURMI. That is a clear interference not recognized by trade marks law. In any event, the act of the trade marks registry in granting registration for the word SURMI (word per se) is grossly illegal and that mark has to go so that all other can live in peace. As far as SURMI TONE is concerned, the end of justice is served by imposing a disclaimer condition on the word ‘SURMI- since the said mark has been in the market and the register for decades. The registrar of trade mark should accordingly amend the register and impose a disclaimer condition on the word ‘SURMI in respect of registered trade mark no.336744 for the trade mark ‘SURMI TONE. Registered trade no.510489 for the word ‘SURMI is ordered to be removed from the register forthwith.

XI. In the result ORA/67/2005/TM/DEL in respect of registered trade mark no. 336774 for ‘SURMI TONE is partially allowed in terms of disclaimer conditions above mentioned in para X and ORA/68/2005/TM/DEL is allowed in respect of registered trade mark SURMI under no.510489 which is removed from the Register. There is no order as to costs.