(CIRCUIT BENCH SITTING AT DELHI)
ORDER (No. 154 Of 2013)
Prabha Sridevan, Chairman:
The applicant is a company dealing with the business of manufacturing bleaching preparations, soaps, cosmetics etc,. The marks are label marks containing the words âAYU and are in respect of goods of different classes, namely
ORA/163/2008/TM/DEL -- No. 764262 â AYUVIT in class 31
ORA/164/2008/TM/DEL -- No. 764260 â AYUMIN in class 31
ORA/165/2008/TM/DEL -- No. 727421 â AYUPET in class 5
ORA/90/2012/TM/DEL -- No. 639617 â AYURVET in class 5
2. The applicants claim that they are the proprietors of the distinctive/invented trade mark Ayur and have been using it continuously, exclusively and extensively from the year 1984. They claim that it is a well known trade mark as has been defined in the Trade Marks Act, 1999. They claim that by continuous, extensive and exclusive use with large scale advertisements and publicity it has become a well known mark. The applicants activities include treatment for various diseases namely, the Panchakarma treatment. They are running an Institute called Ayur Academy of Natural Beauty. Diploma Courses and Certificate Courses are conducted in this Institute. They have registered their services under this mark in various countries and in various classes. In Three-N-Products Vs. Yash PTC 2002 at p. 580 the Hon'ble Delhi High Court has held that Ayur is an invented word which can be exclusively owned by a party without proof of its having acquired secondary significance. The applicant has given the sales figures of their products including their products under the mark Ayur from 1984 onwards. They have spent a considerable amount in popularizing the trade mark and the applicant has given details of the advertisement expenses. The applicant has filed several suits against various parties who have been seeking registration of identical or deceptively similar marks. The applicant has given details of documents to show use of their mark. They have also entered into agreements with others regarding the trade mark. According to their pleadings, the impugned marks must be removed.
3. The respondent had filed its counter statement. It was originally incorporated as Dabur Ayurvet Limited. Subsequently, it changed its name to Ayurvet Limited. The respondent claims to be a premier organization in animal health care sector. It has won many awards. It started marketing and sale of veterinary medicines and food stuff for animals. It has obtained manufacturing licenses. It has honestly coined the mark Ayuvit from the word Ayur which signified âlifeâ and vit coined from vitamins. The invented mark is a coined mark and it was applied on 13/04/1997. As regards Ayupet, they claim that Ayur was derived from the word Ayurvet (their trade name) from which they took Ayu and also from the basic nature of medicine Ayurvedic and the suffix part Pet for pet animals for whom the respondent manufacturers its medicines. As regards Ayumin, it is stated that the prefix part Ayur derived from Ayurvet and Ayurvedic and Min is taken from mineral / vitamins. As regards Ayurvet, it is stated that the prefix part is from Ayur which signifies life and Vet derived from veterinary. According to them, this mark was adopted first on 12/10/1992 then they started use of the mark in relation to veterinary preparations from 01/01/1993. The respondent has also given their sales figures. According to them, the applicant is not an aggrieved person since he has no product or business pertaining to animal feed supplements and the application has been filed for ulterior and malafide motives. In 1994, the applicant had sent a cease and desist notice to the respondent requiring the respondent to remove the word Ayuvet which was replied by a letter dated 23/08/1994. Thereafter, the applicants chose not to initiate any proceedings. The present act of filing the application is therefore clearly malafide. It is also stated that the applicant's oppositions were dismissed by the Registrar on 26/05/2009 and the appeals before the IPAB were also withdrawn, without prejudice to take action in accordance with law against the applicant, for any other remedy in respect of the corporate name of the applicant. According to the respondent, in these circumstances, this application will have to be dismissed.
4. The learned counsel Mr. Perumbulavil Radhakrishnan submitted that the registration has been got on misrepresentation, hence must be removed. The applicants marks are the earlier marks and therefore S. 11 will apply. The marks cannot be registered. The applicant has been prosecuting the other imitators and protecting their mark diligently. There is no sufficient cause for the mark to remain on the register. The marks which are subject matter of ORA/165/2008/TM/DEL and ORA/90/2012/TM/DEL shall be removed in view of S. 47 of the Act. The manufacturing licence is availed only from 2005 whereas the user claimed is from 1999 for which there is no evidence. The brochures that are filed as evidence do not concern Ayuvit in ORA/163/2008/TM/DEL. There is not a single invoice. There is no user from 1997. As regards ORA/90/2012/TM/DEL, the use is from only 2000. In ORA/164/2008/TM/DEL, the learned counsel submitted that the user from 1997 is not proved. Basically it has been the contention of the applicant that they are the prior users of the word Ayu and Ayur and there is no use by the respondent from the date as claimed. Since there will be deceptive similarity between the impugned marks and the applicant's marks, the impugned marks ought not to have been registered.
5. The learned counsel Mr. Ajay Sahni submitted that when the applicants had applied for registration, the respondents marks have been cited as earlier mark in the Examination Report and the applicants stand has been that they are not similar to trade marks such as Ayurfeed, Ayurbod, Ayurherb which were shown in the objection by the Trade Marks Registry. If that is accepted, by analogy, the respondents marks must also be held to be different. The applicant cannot take contrary stands. The learned counsel referred to the counter statement in which it is stated that Ayu and Ayur are common in the trade and 80% people in India use some form of traditional medicines which includes Ayurveda. The learned counsel submitted that every carton in which the medicine is packed contains the word âAyurvet and the definition of the trade mark is a mark used in relation to the goods. It is clear that the respondent has used Ayurvet in relation to his goods. All the medicines are packed in cartons which bear the words Ayurvet. There is a complete segregation between the class of goods sold by the appellant and the class of goods sold by the respondents. He referred to copy of the cartons containing the medicine Ayumin which is a medicinal mixture for animals. The certificate of renewal of licence of manufacture for sale of Ayur Veterinary medicines issued to Ayurvet Limited shows that following items were being manufactured and marketed by the unit which includes interalia Ayumin. Therefore, use of Ayumin is proved. On 27/07/1994, the learned counsel for the applicant had addressed a cease and desist notice claiming proprietorship over the word âAyur and claiming that âAyurvet is identical to their registered trade mark âAyur. To this, the respondent replied on 23/08/1994 explaining how they had coined Dabur and Ayurvet and that there are many trade marks with Ayur forming its prefix and there is no question of passing off or infringement. Annexure-A to this letter gives a list of trade marks including Ayuran and Ayulive which appear to be earlier to the applicants marks. Therefore, use of Ayurvet is proved. The respondents have also enclosed as Annexure 11 the order of the Registrar dismissing the opposition filed by the applicant to three applications filed by the respondents. The Registrar had considered the application under S. 11(3) which relates to passing off and examining the marks held that the trade name Ayurvet Limited has not been adopted so as to take advantage of the reputation of Ayur in trade name. The Registrar had looked at both the labels and found that there is no deception. She also held that both the marks in the connection of being ayurvedic products and this right is available to all who are dealing in Ayurvedic therapies. The marks have been reproduced and we find Ayur and Ayupet shown on one side and the mark of the applicant who was the opponent on the other in those proceedings as part of this order.
6. In the batch of proceedings in TRA/138/2004/TM/DEL â IPAB Order No. 117 of 2012 â Hindustan Unilever Ltd. Vs. M/s. Three-N-Products (P) Ltd. and Anr., we have removed the marks belonging to the appellant registered in classes 3 and 5. We have held that Ayur is not an invented word and the alleged phonetic difference of the applicants mark being a short 'A' and others having the mark with long 'A' would not make any difference and that even if any one uses Ayu and Ayur till eternity, the purchasing public will associate the mark with Ayurveda. We have also held that the fact that many people claim registration for the mark Ayur shows that the words Ayur and Ayush are in public domain available for adoption in conjunction with other words. Therefore, the applicants marks have been removed interalia on the ground that it is generic, not distinctive and above all in public domain.
7. However, the applicant can justifiably seek revocation of the mark if the mark is deceptively similar to his and on other grounds as per the Act.
8. NON-USER:- Though the learned counsel for the applicant submitted that the respondent has not proved user from the date as claimed in the application, but in the statement of the case the grounds raised by them are only with regard to non-use of the mark. It is alleged that the respondents had never used nor intended to use the mark in respect of any product and had not used the mark for a period of five years and one month immediately preceding the revocation. They had not alleged that the date of user claimed was false. If they had raised the ground that the respondent had been unable to prove it, then we may have removed the mark following the IPAB's earlier decisions regarding false statement of date of user. But the applicants case has been that the respondent had not used the mark. To show that it has used the mark, the respondent has produced several copies of cartons and statements to show use of the mark Ayuvet. In fact the first notice was issued by the applicant was an objection to the use of the word Ayuvet. Ayuvet has been used by them in connection with their goods as seen from all their medicinal packets. As regards Ayupet, we had earlier stated above that in the order passed by the Registrar in the opposition proceedings, reproduction of the cartons of respondents is found carrying the mark Ayupet. Therefore, Ayupet has been marketed by the respondents. There is no evidence of use of the mark Ayuvit. The applicants can seek removal on any of the grounds available in the Act. Even if the applicants mark has been removed, it is evident that the applicant is using his trade mark bearing the words Ayur in relation to several goods. Therefore, they can definitely challenge registration of any mark which is similar to this. In this case we are not able to accept that the applicant was the first to adopt the word Ayur, we have found that in fact there are other marks earlier to Ayur. As regards the user, we have already stated the reasons above why we held that the respondents have proved user with regards to three marks. The respondents cited AIR 2008 SC 2737â Khoday India Ltd. vs. Scotch Whisky Association and Others., to show that there is delay on the part of the applicant. However, we find that the registration has been granted only on 24/05/2005 and this has been filed in 2008, so we do not think there is delay.
9. In view of the above, ORA/163/2008/TM/DEL is allowed. Consequently, the Miscellaneous Petition Nos. 385/2012 is closed. ORA/164/2008/TM/DEL, ORA/165/2008/TM/DEL and ORA/90/2012/TM/ DEL are dismissed. Consequently, the Miscellaneous Petition Nos. 386/2012, 387/2012 and 389/2012 are closed.