Order No.157/2011
S. USHA, VICE CHAIRMAN1. The original rectification application has been filed for removal of the trade mark âSakthi Hallâ registered under No. 133874 in class 25 from the register of trade marks under the provisions of the Trade Marks Act, 1989 (hereinafter referred to as the Act).
2. The applicants are the original and prior user of the trade mark âSakthi Hallâ which was carried by the applicants father late Shri S. Manickam and had been in use since 1979. The applicants firm was a partnership firm where the applicants father Late Shri S. Manikam and the 1st respondent were the partners. The firm was carrying on the business of procuring, sourcing, manufacturing and marketing of Nighties, Petticoat, Brassieres, Shimmies and Panties under the name and style of âSakthi Hallâ. The applicants father died in the year 1998 and thereafter the partnership was reconstituted where the applicant Shri Shanmuka Sundaram and the 1st respondent became the partners. Since then the partners have been carrying on the business together. The mark âSakthi Hallâ belonged to the business of the partnership jointly by the partners and hence cannot be registered in favour of the 1st respondent individually.
3. In the year 2004, due to difference of opinion between the partners the business was closed and the 1st respondent quit from the firm. The applicant started another entity by name âSakthi Hall Agencyâ with the understanding that the partners namely the applicant and the 1st respondent would carry on their business individually and use the said trade mark independently such that neither of partners would be in direct competition with the other.
4. Recently in the year 2008, the applicant came to know of the impugned registration dated 18.10.2006. The application for registration was filed on 16.02.2005 claiming user since 25.02.1999 under No. 1338743 in class 25. The impugned trade mark Registration Certificate was granted on 18.10.2006. Being aggrieved by the said registration, the applicants have filed this Rectification Application on the ground that the 1st respondent has misled the Registrar by stating that he is the sole owner of the trade mark, obtained registration of the trade mark without any bonafide intention to use. The applicants father coined the trade mark âSakthi Hallâ. The applicant would suffer if the trade mark is allowed to continue on the register. The impugned trade mark is registered without sufficient cause. The registration has been obtained in contravention of the provisions of sections 9, 11, and 18 of the Act.
5. The 1st respondent has filed the counter statement raising a preliminary issue as to the maintainability of the application as the appellant firm itself is not in existence and that a non-existing firm cannot file an application for rectification. There is no proof filed by the applicant to show that the applicant firm is still in existence. Therefore, a non-existent firm has no locus standi to file the application for rectification as it cannot be considered to be an aggrieved person. The copy of the certificate issued by the Registrar of Firms is of the year 1979 and the applicants cannot now relief upon that certificate to show that the firm still is in existence. The applicant has also not stated as to who are the partners as on date.
6. The closure of the applicant firm was informed to the Commercial Tax Officer on 31.03.2005 and an order dated 11.07.2005 was passed by the officer not renewing the Sales Tax Registration of the firm âSakthi Hallâ. The telephone connection in the name of the firm was surrendered. On 21.11.2006, the Employees Provident Fund was also closed.
7. Both the 1st Respondent and the father of the applicant were carrying on business with 50% share each in the firm. The applicants father had infact agreed to the 1st respondent to carry on business individually under the name and style âSakthi Hall Tailoringâ in a nearby premises. On 07.01.1988, the partnership firm was reconstituted as the applicants father was suffering from heart ailment, where the applicant become the partner in the place of his father along with the 1st respondent. The 1st respondent continued to have 50% share in the said business. In the partnership deed dated 14.01.1998, the applicant had acknowledged the 1st respondents business.
8. In February 1986, the 1st respondent started the business of manufacturing readymade garments in the name and style âSakthi Hall Tailoringâ. In the year 1999 obtained the Certificate of Registration from District Industries Centre as SSI Unit (R.3). The applicants father and the applicant were aware of the 1st respondents use since the year 1986. The applicant in fact is using the trading style âSakthi Hall Agencyâ whereas the 1st respondent is carrying on business in the name and style âSakthi Hall Tailoringâ using the trade mark âSakthi Hallâ. The applicant is aware of the same and therefore is estopped from objecting the 1st respondents use.
9. In the year 2006, the 1st respondents wife filed a civil suit in O.S. No. 11 of 2006 before the Additional District Judge, Salem for partition in respect of a immovable property against the applicant, which was decreed. The applicant has neither denied the 1st respondents use nor had denied the fact that the applicant firm had stopped the business. The applicant has now filed this instant application only as a counter blast to the suit.
10. The applicant cannot be said to be a person aggrieved. The firm was closed on 31.03.2005, whereas the applicant has filed an application for registration of the trade mark âSakthi Hallâ on 22.08.2005 under No. 1381026 in class 25 when the firm was not in existence. The 1st respondent is neither a continuing partner nor a retired partner because the firm was voluntarily dissolved by closure of business. The applicant is totally aggrieved by the partition of the suit property and not by the 1strespondents use of the trade mark. The applicant has not shown how he is a person aggrieved. The applicant independently had started to carry on business under the name and style âSakthi Hall Agencyâ in the year 2004. Whereas the 1st respondent with the knowledge of the applicant started to use the name and trading style âSakthi Hall Tailoringâ since the year 1999. Therefore, the 1st respondent is the prior user and the applicant is the subsequent user.
11. The partnership firm is deemed to have been dissolved voluntarily by the closure of the business in the year 2005. The 1st respondent individually started the business in the year 1999 and thus claims user of the mark since the year 1999. Since the firm has been voluntarily dissolved, the applicant and the 1st respondent are neither the continuing partners nor the retired partners.
12. The applicants use of the trade mark since the year 1979 is hereby denied as it was used by the applicants father and the 1st respondent jointly since the year 1979. The applicant has not come with clear hands and also has suppressed the fact that the partnership has been dissolved before this Board. Hence the application deserves to be dismissed.
13. We have heard Shri Andan Samy, Learned Counsel for the applicant and Shri P.C.N. Raghupathy, Learned Counsel for the 1st respondent.
14. Both the counsel reiterated what was stated in their application for rectification and the counter statement respectively. The applicants counsel relied on the judgment reported in 2011 (4) CTC 297 in Elezabeth Philip and Ors. Vs. Stephen John to say that dissolution of firm is different from discontinuance of business of a firm â business coming to a halt would not make a firm a non-existing and it continues to exist till it is dissolved by partners as contemplated in the contract or by operation of low. The 1st respondents counsel relied on the judgment reported in 2009 (39) PTC 687 in Sardar Jagmohan Singh Vs. Sardar Upkar Singh and Ors. to say that when the firm is the proprietor of the trade mark due to non dissolution thereof, the applicant could not have applied for registration of the trade mark in his name as he is not a person aggrieved as a partner cannot have a separate identical business in competition to the firms business.
15. We have heard and considered the arguments of both the counsel.
16. In an application for recertification, the statutory requirement is that to see if the applicant is a person aggrieved and has the locus standi to file an application for rectification. The applicant herein an individual representing a firm as a partner cannot be said to be a person aggrieved. We are not going into the issue as to the question whether the firm cannot be said to have been dissolved as the business has been closed. This issue is to be dealt and decided by other forum which has its jurisdiction to deal with it. The applicant has in the year 2005 applied for registration of the trade mark claiming user since 1979, when the business was already closed. The 1st respondent had been carrying on business since 1999 with the knowledge of the applicant, which is not disputed nor the applicant have taken any legal action against the 1st respondent.
17. We have gone through the pleadings carefully and seen that the applicants have not stated that they had being using âSakthi Hallâ as their trade mark nor have they produced before us any document in proof of the same but have filed an application for registration. When the trade mark âSakthi Hall is in dispute, the 1st respondent also seems to have not been using it as a trade mark but has filed an application for registration and obtained registration, In fact, both have been using it as a trading style in the same area.
18. The applicant has acquiesced in the 1st respondents use and allowed them to grow in their business. We do not found any dishonesty in the 1st respondents adoption as it was being used by the 1st respondent with the consent of the applicants father and then the applicants.
19. In view of the above, we do not think fit to expunge/cancel the trade mark from the register. Accordingly, the original rectification application is dismissed without costs.