Kisanlal Bastiram Sarda Vs. Deputy Registrar of Trade Marks and Others - Court Judgment

CIRCUIT SITTING AT KOLKATA

ORDER(No.93/2012)

Prabha Sridevan, Chairman:

1. The appellant sought rectification of the mark “Camel” No: 119568, in the name of the respondent. The goods covered by the mark are “Tobacco of all kinds and purposes; cigarettes, cigars; smoking tobacco; tobacco products(but not including beedies); smokers articles; snuff; cigarette paper, cigars and cigarette cases (not of precious metal or coated therewith, cigarette holders, pipes included in class 34). It was dismissed in 1979. The specific goods which the appellant is interested in, is “chewing tobacco”.

2. Against that an appeal was filed before the Honble Calcutta High Court which has been transferred to this Board. This appeal is taken up now after 33 years later, but till date there is no proof of user by the respondent for the goods mentioned above, and therein lies the crux of the question whether we must interfere with this order after so many years.

3. The respondents applied for the registration of the impugned mark which was granted on 27-2-1946. The appellants filed the rectification application in 1974 alleging non-user for a continuous period of five years from the date of registration. They claimed they were engaged in the business of marketing and manufacturing “beedies, snuff, chewing tobacco” etc. According to them the respondents were not using the mark in connection with anything other than cigarettes. On the other hand the appellants have several marks consisting or containing the word Camel or device of Camel. They have registrations of the above marks in connection with Beedies in TM Nos: 100274,100279 and 119829 etc. They have a wide reputation. They had applied for registration of the mark “OONT CHAP” and the device of Camel under application No: 254009 in class 34 in respect of Zarda 9 (chewing tobacco). This was advertised before acceptance in the Journal of the year 1973. The respondents filed their opposition, on the ground that their mark is similar to the appellants. The opposition proceedings are pending.

4. The respondents contested the application on the grounds they are the registered proprietors of the composite mark consisting of the word Camel and the device of a Camel. They have been using it continuously and have acquired good will and reputation. The appellants have deliberately and dishonestly copied this mark. This rectification has been filed only as a counter-blast to the opposition proceedings filed against the mark “OONT CHAP”. They are not aggrieved, since this is only a counter-blast to the opposition proceedings. A person who has dishonestly appropriated the mark can not be a person aggrieved.

5. The evidence in support of the rectification application was filed in 1975. The appellant claimed that their mark had been adopted in respect of Zarda since 1959, and since the mark had been registered in connection with Beedies it was natural that they adopted the same in connection with Zarda. There is a great demand for their beedies and Zarda all over India. They have given the approximate sales figures for Zarda under the said mark from 1979.They filed the bill books etc. According to them since the respondents have filed the opposition to their registration of the mark “OONT CHAP” for Zarda, deliberately and with a view to harass them, they were definitely a person aggrieved. Inquiries about the respondent showed that they do not deal in the goods covered by the impugned mark. They could not have imported the goods in to India, and even outside India they have not used the mark for any goods other than cigarettes. They filed the affidavits of -

a) Sri Shashikant a partner of Asmani Tobacco Stores, Machalipith testifying to the sales of Camel brand Zarda of the appellant,

b) Sri Sadashiv Tukaram Jadhav, a Kirana merchant of Belgaum, speaking of the popularity of the appellants Camel Brand Zarda, and that he has never heard of the respondents Zarda.

c) Sri Abdul Azeez Noor Mohammed, partner of a firm in Savada, stating that he has regular dealings with the appellant and their Zarda is very popular and that he has not come across any other Camel brand Zarda except the appellants

d) Sri Giridharilal Chandak doing business at Chennai, stating that he regularly does business with the appellant and that the appellants Camel Zarda is very popular and that he has not come across the respondents mark Zarda.

e) Sri Nathmal running a shop at Dhuliya stating that he has seen the appellants products and their advertisements for Camel Brand Zarda. Came across the mark he would think it is the appellants and he has never seen the respondents Zarda.

f) Sri Ramakant Umashanker Khetan of Akola , stating that he is doing business with the appellant for several years, and that he saw the advertisements of Camel Brand Zarda he would assume it to be the appellants and that he has never seen the respondents Camel mark Zarda.

g) Sri Bhatu Pratap Chaudhuri of Dhulia who has spoken of Komda Chaap tobacco.

h) Sri. A Rahman of Sakri who also spoke of Kombda Chaap tobacco.

i) Sri Lokchand of Ajmer who has a shop selling in Bidi and tobacco, stating that he is acquainted with the appellants Camel Brand Zarda and that it is very famous and that he has never seen the respondents mark or goods or advertisement.

6. The respondent filed their evidence in 1976. They stated their registration is still subsisting and valid and has been in use since 1916 in India. They gave the sales figures for cigarettes from 1925 to 1952. They could not import into India because of import restrictions since 1958, but they have continued duty-free shipments. They have relied on the affidavit given by the appellant not to use the said mark to goods, ”other than beedies”, and that the appellant had not come with clean hands. They have denied that they have abandoned the mark. The statements in all the third party affidavits are denied. In view of the Undertaking given by the appellant in 1948 they could not have extended their mark to any other goods apart from Beedies. In view of the international reputation, their mark must not be removed. They filed the following exhibits;

(i) Ex.A a list of their registrations in other countries

(ii) Ex.B invoices of sales to the embassy in India.

(iii) Ex.B-1 a list of customers.in India

(iv) Ex.C a caution notice,

and the following affidavits,

a) Sri Mohanlal Bajaj a business man stating that they regularly imported Camel Brand cigarettes, of the respondent, and that the goods are regularly smuggled into India and available everywhere in India and that the mark is associated with the respondent.

b) Sri Kuldip Chandra Kapur the sales manager of Herbertsons, who speaks of imports of respondents Camel brand products and though the camel Brand cigarettes are not available due to import restrictions the mark has much reputation.

c) Sri Radhey Shyam , a wine merchant who deals in duty-free goods, stating that they have regularly imported Camel brand cigarettes and other tobacco products of the respondents, and that he would associate Camel mark only with the respondents.

7. To this an evidence in reply was filed by the appellant. They reiterated that there was no commercial import of the respondents goods and in any case, there was no use in relation to the goods in question “chewing tobacco”

8. On the basis of the above materials the parties made their submissions before the Deputy Registrar of Trademarks.

9. The impugned order held that the appellant was not a person aggrieved, since they could not use the mark legitimately because of the undertaking given to the appellant not to use the mark in relation to any goods other than beedies, and that the evidence showed the “use of the Registered mark to cigarettes till 1971”. It held that the lack of bonafide use is not established, and that import restriction was a special circumstance, which could be taken note of. Therefore the rectification was dismissed. Against the said order the above appeal is filed.

10. The learned counsel for the appellant submitted that their mark has been in use from 1922. She submitted that the appellant is a person aggrieved because the respondent was preventing the registration of the mark for Zarda on the basis of the impugned mark herein. She submitted that while it was true there was an undertaking to restrict the mark to Beedies, there can not be a restraint in trade and such a condition was invalid, and can the undertaking ensure to the benefit of the respondent in perpetuity. She submitted that the application in 1946 was as a “proposed to be used” mark and till the date of the order and even today the respondent has not shown his intention to use or evidence of use. She relied on -

(2011) 1 SCC 125 - Infosys Technologies Ltd., Appellants Vs. Jupiter Infosys Ltd. and Anr., Respondent

2005 (30) PTC 353 (Del) - Fedders Lloyd Corporation Ltd. and Lloyd Sales Corporation Pvt. Ltd., Appellants Vs. Fedders Corporation and the Registrar of Trade Marks, Respondents

AIR 1996 SC 2275 – Vishnnudas Trading as Vishnudas Kishandas, Appellants Vs. Vazir Sultan Tobacco Co. Ltd., Hyderabad and another, Respondents

TRA/159/2004/TM/DEL – M/s. Pops Food Products (P) Ltd., Applicant Vs. M/s. Kellogg Company and Others, Respondents

AIR 1995 SC 2372 - Gujarat Bottling Co. Ltd. and others, Appellants Vs. Coca Cola Company and others, Respondent to support her case.

11. The learned counsel for the respondent submitted that the correct approach would be to consider the matter keeping in mind the relevant period. At that time the 7 year period provision was in force and therefore the application was not maintainable. The terms of the undertaking can not be forgotten. No party can be allowed to resile from an undertaking. He submitted that for a person to be aggrieved there should be real injury and not something fanciful. He submitted that the caution notice issued by the respondent showed the bonafide intention to use. The rectification proceedings were clearly malafide. He relied on the following decisions -

AIR 2003 SC 3377 - Hardie Trading Ltd. and Anr. Vs. Addisons Paint and Chemicals Ltd.

1894 Vo.XI RPC – In the matter of Powells Trade Mark

1967 RPC page 229 – “BULOVA” Trade Mark

AIR 1973 Bom Vol.191 – Plaza Chemical Industries Vs. Kohinoor Chemical Co. Ltd.

12. It is easy to overlook the real controversy if we allow the undertaking to loom large, and over shadow all else.

13. The question whether the appellant could apply for registration of a mark when there was an undertaking by him to use the mark only for bidis shall be decided when the issue of registrability of the appellants mark comes up. Here all we have to decide is whether the respondents mark can remain in the Register.

14. The person aggrieved: The appellant has applied for a mark in respect of Zarda which is pending decision. The respondent has filed an opposition to it based on the mark impugned herein. Even if the appellant is held to be disentitled to registration of the mark, the evidence shows that the appellants Zarda is very popular amongst the traders who deal in such goods. So he is using the mark for Zarda and is definitely a person aggrieved by the registration. The ground taken is non-user, and he will have to prove non-user.

15. The non-user: The appellant has produced the affidavits of not less than 9 witnesses to prove non-user. Of them two can be rejected since their evidence relates to Kombda chaap. But the others are traders spread all over India from Ajmer to Chennai. They have all testified to the popularity of the appellants Camel Brand Zarda. They have also testified that they have never heard of the respondents Camel Brand Zarda. They have stated that if they saw the Camel Brand they would assume that the goods belonged to the appellant. Except for denying the statements, the respondent has not produced any material to discredit these witnesses as being partisan or untrustworthy. They do not seem to be related to the appellant. In fact this is one case where the Revlon Test of proof of non-user has been fully discharged. Witness after witness has given evidence that they have not heard of the respondents Camel Brand Zarda. The one caution notice can not help the respondent. Let alone the facts prevailing on the date of the proceedings, even till date the respondent has not a shred of evidence of use or intention to use. Half a century and more is enough time for a bonafide person to show use or intention thereof, only a “dog-in-manger” squatter will be unable to produce such evidence. We do not see anything in the entire Trade Marks or in the spirit of the legislation, which requires us to protect the squatter.

16. The category of customers: The consumers of the Bidis and the consumers of cigarettes are different. This is seen from the witnesses who speak for the appellant and the witnesses who speak for the respondent. All the appellants witnesses are Kirana merchants or they are from small towns or cities. The respondents witnesses are Wine importers whose class is different. If the appellant submits that the continuance of the mark without justification will affect him, it can not be brushed aside. A beedi customer is likely to be confused by the entrance of the respondents Zarda as and when the respondent chooses to wake up from his slumber and starts using the mark for Zarda.

17. The impugned order is erroneous. It has totally ignored the material evidence produced by the appellant to prove non-user. It has treated the user in respect of cigarettes to be user in respect of Zarda. The special circumstances that weighed with the Deputy registrar are all only with regard to cigarette, not Zarda. Neither the pleadings nor the evidence speak of the respondent use of the mark of Zarda. It would not be in public interest to allow a mark that has not been used for a half a century and more (emphasis supplied).

18. The provision relating to conclusiveness of registration after seven years as per Section 32 will not apply since Section 32 is subject to Sections 35 and 46 and Section 46 provides for removal from the register on the ground of non-user. So it is clear that conclusiveness of registration after seven years can be stated in defence only by a person using the mark, not by the respondent who is guilty of total non-user of mark in respect of Zarda.

19. The evidence of the respondent are invoices for sale of cigarette which includes ‘Camel regular. There is not even one document which indicates use of the mark “Camel” in relation to Zarda. There is of course a trade mark caution notice of the year 1973 by which notice was given by the respondent regarding registration of the mark “Camel”. This caution notice does not prove user and it is the only piece of evidence which the respondent can show to indicate user.

20. Now we will look at the decisions relied on by both the sides.

(i) In (2011) 1 SCC 125 – Infosys Technologies Ltd. Vs. Jupiter Infosys Ltd. and Anr. - The Supreme Court held that to be an aggrieved person under Section 46 he must be one whose interests is affected in some plausible way. It is explained that persons aggrieved are all persons who are in some way or the other substantially interested in having the mark removed. It would include trade rivals over whom an advantage was gained by a trader who was getting the benefit of a registered trade mark to which he was not entitled. It is explained in paragraph 27 of the said decision.

In the present case the appellants registration is opposed by the respondent and it is pending. The case of the respondent is that there was an undertaking by the appellant not to use the mark except for ‘beedies. There is an undertaking given by the appellant in November, 1948 which is in response to the undertaking given by the respondent in September, 1948, that the respondent will not use the mark containing camel picture upon the beedies, in consideration that the appellant will not extend the use as it is marked to goods other than beedies. So an undertaking was given by the appellant that they will not use the camel device on any goods other than beedies. The question whether the appellant can obtain registration in spite of this undertaking is a matter that will be decided in the opposition proceedings which is pending. But whether they succeed in obtaining registration or not, the evidence shows that they have been using the mark for “Zarda” and have done so for a very long time as seen from the evidence of the petitioner. If the respondents mark is not rectified the appellants use of the mark either registered or unregistered will become vulnerable to attack. The IPAB vested with the duty to protect the purity of the Register must consider whether the mark shall remain in the register when there is absolutely no use and the appellant who has been using the mark is definitely interested in removing this mark for non user.

(ii) In 2002 (25) PTC 198 (Del) – Osram Gesellschaft Mit beschrankter Haftung, Appellants Vs. Shyam Sunder and Ors., Respondent the Delhi High Court referred to AIR 1974 Delhi 40 – Nestle Products Ltd. and Ors. v. Milkmade Corporation wherein observation in the case Edwards v. Dennis (1885-30 Ch.D 454) were relied upon –

“The registration in the present case has been for the entirety of that class. In my opinion that is wrong. Even if a trade mark can be registered which is not in actual use, it ought to be restricted to those goods in connection with which it is going to be used. In my opinion it is not the intention of the Act that a man registering a trade mark for the entire class and yet only using it for one article in that class, can claim for himself the exclusive right to use for every article in the Class….”

They also cited 1996 (16) PTC 512 – Vishnudas Trading as Vishnudas Kishendas, Appellants v. Vazir Sultan Tobacco Co. Ltd., Respondents –

“If a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bona fide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers to get registration of separate and distinct goods which may also be grouped under the broad classification.”

When the respondent has not ever used the mark in connection with the specified goods named “Zarda” he ought to be restrained from using the mark.

(iii) In AIR 1996 SC 2275 – Vishnudas Trading as Vishnudas Kishandas Vs. Vazir Sultan Tobacco Ltd., Hyderabad and another the Supreme Court held that if registration had been given for all articles coming under a broad classification and it is established that the said trader who has got such registration is not entitled to use the mark for any other article except the article which is used by such trader, then if rectification is not allowed, the trader or manufacturer by virtue of earlier registration will be permitted to enjoy the mischief of trafficking in trade mark.

In the present case the respondents have clearly not shown any intention of using the mark as proved by the evidence and therefore they cannot block the mark in respect of “Zarda”.

(iv) The learned Counsel relied on AIR 1995 SC 2372 - M/s. Gujarat Bottling Co. Ltd. and others, Appellants Vs. Coca Cola Company and others, Respondent which dealt with the question of a contract in restraint of trade.

(v) In 2005 (30) PTC 353 (Del) – Fedders Lloyd Corporation Ltd. and Lloyd Sales Corporation Pvt. Ltd., Appellants Vs. Fedders Corporation and the Registrar of Trade Marks, Respondent -

(vi) In TRA 159/2004/TM/DEL – M/s. Pops Food Products (P) Ltd. Vs. M/s. Kellogg Company and others, the IPAB had held that if there is no evidence of use for 22 years then there is no bonafide intention to use, which applies to the present case. The Supreme Court has held in 2004 (28) PTC 585 (SC) - Milment Oftho Industries case that –

“The Court has to keep in mind the possibility that with the passage of time, some conflict may occur between the use of the mark by the Applicant in India and the user by the overseas company. The Court must ensure that public interest is in no way imperilled….”

21. Here the respondent has claimed that it has used the mark in India in relation to Zarda, but has miserably failed to prove it.

22. Now let us look at the decisions relied on by the respondent.

(i) 1894 Vol.XI RPC – In the matter of Powells Trade Mark – The question was regarding “persons aggrieved” but even here the House of Lords was not inclined to unduly limit the construction to be placed upon these words and they observed –

“…it is undoubtedly of public interest that they should not be unduly limited, in as much as it is a public mischief that there should remain upon the Register a mark which ought not to be there…”

In the present case, respondents mark ought not to be there since it has never been used nor is there a bonafide intention to use.

(ii) The learned Counsel relied on 1967 RPC page 229 – “BULOVA” Trade Mark where non user has been due to import restrictions which constitute special circumstances in the trade.

In the present case, there is nothing to show that even after the restrictions were released the respondents have started using the mark. Nor is there any evidence that the respondents Zarda was not permitted to be imported. May be the respondents import of cigarettes was restricted. We are here dealing with Zarda. It is clear from the evidence filed by the appellant that the appellants mark had got a wide reputation. The respondent has not used the mark till now and except for the single caution notice in 1973 till now the respondent has not engaged itself in showing any bonafide intention to use the mark.

(iii) AIR 1973 Bom Vol.191 – Plaza Chemical Industries Vs. Kohinoor Chemical Co. Ltd. – In this case too, import restrictions, special circumstances for non-user.

(iv) In AIR 2003 SC 3377 – Hardie Trading Ltd. and Anr. Vs. Addisons Paint and Chemicals Ltd. – In this case, the Supreme Court held that both the appellants and the respondents had been engaged in the sale of “paints” according to the appellants preparation and under the appellants trade mark. On facts, it was found that the appellants always had the intention to use and further there was a conscious abandonment by the respondent.

In this case, neither have the appellants consciously abandoned the mark nor has the respondent proved user.

(v) In AIR 2009 SC 892 – Kabushiki Kaisha Toshiba Vs. TOSIBA Appliances Co. and Ors.- In this case, again Supreme Court refers to non use due to special circumstances in the trade.

23. No such evidence is present here.

24. We have already given our reason for holding that -

(a) the appellant is a person aggrieved.

(b) the appellant has proved non-user.

(c) the respondent has no evidence to show user.

The decisions cited above support the appellant.

25. We therefore set aside the order dated 15.12.1979 of the Deputy Registrar of Trade Marks and order rectification of the mark “CAMEL” in relation to Zarda in Application No.119568. The appeal is allowed with costs of Rs.10,000/-.