(Circuit Bench sitting at Kolkata)
Ms.S.Usha Vice Chairman
The above four Original Rectification Applications are for cancellation of the trade marks âA.T.ANUâ (word) under No.1261342 in class 24, A.T.Anu-Premier Collection under No.1288066 in class 24, A.T.Anu-Pretty women under No.1288067 in class 24 and A.T.Anu - Bangashree under No.1288068 in class 24 under the provisions of the Trade Marks Act, 1999.
2. The application under No.1261342 was filed on 16.1.2004 claiming user since 01.01.1990 and the mark was registered on 14.10.2005. The other applications under Nos.1288066, 1288067 and 1288068 were filed on 04.06.2004 claiming user since 01.11.2003.
3. The applicant has been carrying on business of manufacturing and trading of various types of sarees and textile materials under the name and style of âAnuj Textilesâ. The said trade mark Anuj became the house mark of the applicants since 1988.
4. The trade mark Anuj became distinctive by virtue of long and continuous use. The expenses towards promotional activities increased from Rs.13,500/- in the year 1989-1990 to Rs.80,200/- in the year 2003-2004. The sales figure was Rs.3,14,49,043/- in the year 1988-1989.
5. One Mr.Narendra Kumar Saraogi was the Director of the Board, later started another business by the name of Anuj Textiles with the mala fide intention of trading upon the goodwill of the applicants. On 3rd December, 2003, Mr. Narendra Kumar Saraogi resigned from the applicants firm. Later he joined the respondents firm as a Director which firm was incorporated in August, 2003. This respondent firm came into existence after 15 years subsequent to the establishment of the applicants firm.
6. The respondent had dishonestly adopted the trade mark âAnujâ by just removing the letter âJâ. This adoption is only to trade upon the goodwill of the applicants and will cause confusion and deception among the public. The trade mark Anuj and Anu are phonetically and structurally similar. The class of customers are both literate and illiterate and could therefore be deceived.
7. The respondents filed a Civil Suit in C.S.No.306 of 2005 before the Honble High Court of Calcutta for infringement of their registered trade mark. The respondents had also filed an application for interim orders. The Honble High Court of Calcutta was not pleased to pass any interim orders.
8. The respondents are subsequent users of the trade mark. The applicants were not aware of the registration and became aware of the registration only from the Civil Suit filed by the respondents.
9. The applicants are persons aggrieved as their business is affected by the respondents use and registration. That apart, both the applicant and the respondent are engaged in the same business. The respondents have filed a Civil Suit for infringement against the applicants.
10. The impugned registration has been obtained by suppression of material facts. The said entry has been made without sufficient cause and is wrongly remaining on the register. The registration granted is in contravention of the provisions of the Act.
11. The applicants had been using the trade mark âAnujâ prior to the respondents use of the trade mark âAnuâ and therefore the respondents trade mark could not have acquired distinctiveness. The registration is in contravention of Section 11 (1) ( c ) of the Act.
12. The respondents had obtained registration without any bona fide intention to use and in fact no bona fide use of the trade mark has been shown.
13. The impugned registered trade mark therefore be cancelled.
14. The respondents filed the counter statement denying the various allegations made in the application for rectification. The case of the respondents is that â
Mr. Narendra Kumar Saraogi has been engaged in the business of manufacturing and trading of cotton printed sarees for more than three decades. The Directors of the respondents company are Shri Narendra Kumar Saraogi, his wife Smt. Urmila Devi Saraogi, his sons Shri Sarbendra Saraogi, Shri Robin Saraogi and his daughter-in-law Smt. Anushree Saraogi.
15. The firm M/s. Anuj Textiles is a proprietorship firm of which the proprietor was Anuj Textiles Private Limited. The Directors were Bijaa Kumar Saraogi, Narendra Kumar Saraogi and Mahendra Kumar Saraogi.
16. In view of the difference of opinion between the directors, Narendra Kumar Saraogi stared marketing cotton printed sarees under various brand names and primarily under the trade mark âAnuâ. The applicants therefore started marketing sarees under the trade mark Sananda. The respondents had adopted from the leading features of their trade name Anushree which is the name of the daughter-in-law of Narendra Kumar Saraogi. Smt. Anushree Saraogi is also a Director of the respondents.
17. The registration confers a statutory right to the exclusive use of the trade mark on the respondents. The respondents sales turnover was Rs.797 lakhs in the year 2004-2005 and it increased to Rs.47 crores in the year 2005-2006. The current financial year advertisement expenses have crossed the figure of Rs.15 crores.
18. As a result of extensive use, huge publicity and excellent quality of the products the registered proprietors trade mark has acquired tremendous goodwill and reputation in the market and the same is exclusively associated with the respondents.
19. The applicant has been using the trade mark Sananda in conjunction with the words âA product of Anuj Enterprisesâ. In or about the second week of November, 2005 the respondents found that the applicants are using the word âAnujâ in a magnified and blown up manner. The trade mark Anuj is structurally, phonetically and visually identical to the registered trade mark Anu of the respondents. The applicants have adopted the trade mark Anuj to trade and encash upon the goodwill earned by the respondents. The applicants herein have admitted in the Civil Suit, that the marks Anu and Anuj are not similar in any manner.
20. We have heard Mr. Debnath Ghosh, learned counsel for the applicants and Mr.Mittal Das Gupta, learned counsel for the respondents.
21. The learned counsel for the applicants submitted that of the four marks, one is word mark and the others are label marks. The trade mark Anu was used for cotton printed sarees. The three brothers joined together and were carrying on business. In 2003 one retired and started the firm Anushree Textiles. The applicants had used Anuj as well Sananda and Kohinoor Sarees. Anuj is the service mark used since 1988.
22. The respondents were incorporated only in the year 2003 and therefore user claimed since 1990 is false. In the year 2005, the four impugned registrations were granted. The respondents based on these registrations filed the civil suit. As the civil suit was filed against the applicant, the applicant being aggrieved filed the Rectification Applications. The respondents trade mark has not acquired distinctiveness and therefore the registration is in contravention of Section 9 of the Act.
23. The mark Anu and Anuj are deceptively similar and therefore prohibited under Section 11 of the Act. The respondents are not the proprietor of the trade mark and are in contravention of Section 18 of the Act.
24. The respondents defence is that they adopted from the word Anusha which is their firm name as well from the name of the Director Smt. Anusha, who is also the daughter-in-law of Shri Narendra Kumar Saraogi. The firm Anushaa was incorporated only in 2003 then how could the respondents claim user since 1990. The applicants are using the trade mark since 1988, who are prior to the respondents. The certificate of incorporation was filed along with the application at page 22. From that it is seen that the firm was incorporated on 04.04.1988. The counsel pointed out that Shri Narendra Kumar Saraogi the respondent herein was a Director of the applicants till 2003, which is evident from the Memorandum and Articles of Association of Association of the Company.
25. The applicants are prior user of the trade mark Anuj since 1988. The respondents have admitted in the Civil Suit that the trade marks âAnujâ and âAnuâ are structurally and phonetically similar. In view of that the mark ought to be rectified, the respondents are subsequent users. The invoices filed by the respondents are of the applicants. The sales figure enclosed by the respondents along with the counter statement are of the applicants.
26. The respondents adoption ismala fide. The registration is in contravention of the provisions of Sections 9 (1) (a) and 11 (1) (a) and (b) of the Act.
27. The learned counsel relied on the following judgments:-
(a) AIR 1970 Supreme Court 146 (K.R.CHINNA KRISHNA CHETTIAR Vs.. SHRI AMBAL and CO., MADRAS and ANOTHER ) - There could be no confusion as the applicant is in business for a long period of time.
(b) 2005 (3) PTC 604 (Calcutta) (CENTURY PLYBOARD (INDIA) LTD. Vs. ASSAM WOOD and ALLIED PRODUCTS) â Adopting a part of the applicants trade mark by the respondent is only to trade upon the goodwill of the applicant by which the applicant will suffer a loss.
(c) 2010 (44) PTC 443 (MARICO LIMITED Vs. J.K. ENTERPRISES and OTHERS) â The matter has to be assessed from the point of view of the prospective customer who will not have the benefit of seeing two trade marks side by side.
28. The learned counsel for the respondents submitted that initially 3 brothers were carrying on business under the name and style of M/s. Anuj Textiles. In the year 2003 Mr.Narendra Kumar Saraogi retired. On 04.04.1988 Anuj Textiles Pvt. Ltd was formed. On 13.08.2003 Mr.Narendra Kumar Saraogi with his family members started marketing cotton printed sarees under various trade marks and primarily under the trade mark Anu.
29. Anuj Textiles is a proprietorship firm of which the proprietor was Anuj Textiles Pvt. Ltd., The applicants never used the word âAnujâ as the trade mark but was only the trading style. When the respondents came to know that the applicants are using the word Anuj prominently the respondents filed a Civil Suit.
30. The respondents relied on the following judgments:-
(a) MANU/DE/0150/1975 (L.D.MALHOTRA Vs. ROPI INDUSTRIES) â A trade mark acquires a right in the trade mark merely by use. The anterior use by a person of a trade mark is protected under law.
(b) AIR 1965 Bombay 35 (CONSOLIDATED FOODS CORPORATION Vs. BRANDON and COMPANY PRIVATE LIMITED) - In order to prove the mark to be distinctive, the use of the mark was to be considered. What is required for that purpose is proof that the marks before that date was in use. A mere casual intermittent and experimental use may be insufficient to show an intention to adopt the mark as a trade mark.
(c) 2011 (1) SCC 125 (INFOSYS TECHNOLOGIES LTD., Vs. JUPITER INFOSYS LTD., and ANOTHER) â When an application for rectification is filed, the locus standi is on the applicant to prove that he is an aggrieved person. Only an aggrieved person can file and maintain an application for rectification.
(d) ORA/108//08/TM/AMD Dated 13.01.2011(M/S. ANANT OIL INDUSTRIES Vs. M/S. NEW NANDI SEEDS CORPORATION) â For the same proposition given above.
(e) 2009 (40) PTC 442 (CAL) (PRATYUSH KUMAR JANA and ANOTHER Vs., NEW HOWRAH BAKERY (BAPUJI) PVT. LTD) â If the applicant does stand by and allow a man to carry on business in the manner complained of to acquire a reputation and to expend money he cannot after a lapse of time turn around and say that the business ought to be stopped.
(f) AIR 1963 Supreme Court 449 (AMRITDHARA PHARMACY Vs. SATYADEO GUPTA ) - This judgment has also dealt with the above issue of acquiescence.
(h) 2007 (35) PTC 616 (Delhi) (RAJENDRA KUMAR AGGARWAL Vs. UNION OF INDIA (UOI) and ANOTHER) â No objection under Section 9 of the Act, if the mark had no direct reference to the quality or character of the goods.
(i) C.S. No.306 of 2005 (ANUSHREE TEXTILES PRIVATE LIMITED and ANOTHER Vs. ANUJ TEXTILES PRIVATE LIMITED and OTHERS) â (G.A. 3963 of 2005) â The interim arrangement was that the applicants are to use the words âAnuj Enterprisesâ along with the words âSanandaâ and âKohinoorâ
(j) 2002 RPC 37 (âCYCLING ISâ¦â) The use of the mark and the class of customers are the factors to be considered in an application for registration.
(k) AIR 1993 Madras 120 (POWER CONTROL and APPLIANCES CO. and ANOTHER Vs. SUMEET MACHINES PVT. LTD. and ANOTHER) â The mark was opposed because of the dispute that arose between the family members.
31. We have heard and considered the arguments of both the counsel and have gone through the pleadings and documents.
32. In an application for recertification of a registered trade mark, the main issue would be to decide if the applicant is an aggrieved person and if the applicant is a person aggrieved, the applicant can file and maintain an application for rectification. As per Section 21 of the Act any person may oppose an application for registration. As per Sections 47 and 57 of the Act, only a person aggrieved shall file an application for rectification.
33. In the instant case, the respondent i.e., the registered proprietor based on the impugned registration, filed the Civil Suit against the applicants for infringement of the trade mark. The applicant as defendant was therefore aggrieved by the impugned registration filed this rectification application. The plaintiff and the defendant in a Civil Sit is a person aggrieved and is entitled to file an application for rectification. The applicants therefore have the locus standi to file an application for rectification.
34. The applicants main ground on which the rectification has been filed is that the respondents have adopted âAnuâ as their trade mark by deleting the letter âJâ from the word âAnujâ only to trade upon the goodwill earned by the applicants. Both the applicants and the respondents have been using the name Anuj as their trading style. This fact is not disputed by both. The applicants contention that the respondents adoption of the trade mark Anu is dishonest is not substantiated. Therefore this ground is rejected.
35. The next ground was that the trade marks âAnuj and Anuâ are phonetically and structurally similar and therefore there is a possibility of confusion and deception among the public. In this context, the respondents would vehemently contended that in the suit filed by the respondents, the applicants herein/the defendants in the Civil Suit have stated that the trade marks âAnuj and Anuâ are not similar in any manner. It is also to be noted that the applicants had not been using âAnujâ as the trade mark. The applicants were using various trade marks like Sananda, Kohinoor as their trade marks. When the applicants started using the word âAnujâ prominently with their trade marks âSanadaâ and âKohinoorâ in small letters, the respondents filed the suit. The ground therefore does not sustain.
36. The possibility of confusion or deception does not arise. We consider the marks not to be similar, as well as the fact that the applicants have not used the trade marks âAnujâ, the ground that the registration is in contravention of the provisions of Section 11 also falls to ground.
37. The ground that the applicants are prior user of the trade mark has not been substantiated by any cogent evidence. The applicants claim use since 1988 but there is no proof of the same. The applicants as well as the respondents have been using the word âAnuj Textilesâ as their trading style. The respondents have adopted and used the trade mark âAnuâ with the knowledge of the applicants.
38. In our considered opinion, the applicants have not substantiated any of the grounds on which removal of the impugned marks is sought. On looking into the facts of the case, it is seen that the rectification application is only a counter blast to the suit filed by the respondents. The applicants have not used the trade mark âAnujâ . The applicants have filed this rectification application possibly due to business rivalry.
39. Accordingly, the four Original Rectification Applications are dismissed with costs of Rs.2000/- each. Consequently, connected M.P.Nos.337 to 340 of 2012 are closed.