Anupam Khemka Vs. M/S Shreesidhi Creations Pvt. Ltd., and Another - Court Judgment

(Circuit Bench at Kolkata)

(No, 110/2011)

S. USHA, VICE CHAIRMAN:

1. The four rectification applications have been filed for removal of the trade mark SARVASIDHI in class 24 under application No.1725535 in class 25 under No. 1725536, in class 35 under No. 1725537 and in class 42 under No. 1725538 under the provision of the Trade Marks Act 1999 (hereinafter referred to as the Act).

2. Before going into the facts of the case, we herewith give below as to what transpired in the court as regards the absence of the respondent.

22.06.2011

“In this matter one Mr. C.P. Dharanidhar appeared when the matter was about to be heard and submitted that the counsel was present on the day and then left and therefore there should be an adjournment. Learned counsel for the applicant had just been reading out the order of the IPAB where it was recorded that the accountant was deputed to appear and thereafter he sought adjournment. If there had been any inconvenience it was open to the counsel who is alleged to have been present and request for adjournment either before the Board raised for lunch or resumed sitting after lunch because at that time we had permitted counsel to make their requests regarding convenient hearings. In these circumstances to ensure that there is bonafide in the request for adjournment, we impose a cost of Rs. 10,000/- payable to the respondent by tomorrow. The matter is adjourned to 23.06.2011.”

23.06.2011

“Yesterday the accountant of the respondent was present and prayed for adjournment on the ground that the respondent was unwell. We see from the order sheets that this practice has been adopted by the respondent who does not care to appear before the Board. We informed the accountant that to show his bonafide he should pay cost of Rs. 10,000/- and only thereafter he would be heard. He agreed for the same. We also made it clear that the matter would be decided only after payment of cost. Today, we waited till 3.30. p.m. But nobody appeared on behalf of the respondent, neither his counsel nor Mr. Dharanidhar who appeared yesterday. We have heard the counsel for appellant who made his submissions. Orders Reserved. ”

3. The brief facts of the case is that the applicant, started a business of boutique under the name and style “SIDHVIS” which was coined from the names of the applicants children namely SIDHARTH her son and PALLAVI her daughter in the year 2004. They are engaged in the business of manufacturing and marketing of unstitched and semi stitch patterns of Salwar Suits and dress material since its incorporation in the year 2007. The applicant namely Smt. Anupam Khemka trading as SARVASIDHI FASHION along with one Shri Bimal Kumar Goenka formed the 1^st respondent company – Shreesidhi Creations Pvt. Ltd. The 1^st respondent company carried on the business in unstitched and semi stitched salwar for some time. In 2007, the applicant resigned as the Director of the 1^st respondent company as dispute arose between the applicant and Shri Bimal Goenka.

4. In September, 2007, the applicant started her own business under the name and style of “SARVASIDHI FASHOIN”. They carried on the business of manufacturing and selling unstitched and semi stitched salwar suits and dress materials and adopted the trade mark SARVASIDHI. The business has since inception grown steadily and has acquired reputation and goodwill of high order as a result of high quality products and good designs. In November, 2007, the applicant and her husband formed a new company under the name “SARVASIDHI FASHION PVT. LTD. The applicants is a member of the Council of Kolkata Unstitched Salwar Suits (COKUSS) for the purpose of promotion of the products under their brand SARVASIDHI.

5. By virtue of excellent quality of the applicants products, the trade mark has acquired tremendous goodwill and reputation among the public and in the trade. The people associate and identify the applicants goods under the trade mark “SARVASIDHI FASHION”. The annual turnover for the period 2007 - 2008 to Rs. 1,53,44,489 which increased to Rs. 3,69,83,254 in the year 2009 – 2010. The applicants spent huge sum towards promotion and advertisement.

6. In 2008, Mr. Bimal Kumar Goenka along with Mr. Kundan Kumar Singh the then employee formed a firm under the name SARVASIDHI FASHON (not FASHION) which had its business in the same place where the applicant are situated. The identical adoption by the 1^st respondent was only to steal the orders of the applicants some of which used to come by courier and by post, by confusing the courier and postal delivery personnel. The said firm SARVASIDHI FASHON was formed solely in order to create confusion and deception. The firm was formed with an interior motive and malafide intention to take advantage and encash upon the reputation and goodwill of the applicants and the trade name “SARVASIDHI FASHION” of the applicants and thereby deceive and cheat people by representing themselves as the existing concern of the applicant and pass off their goods as that from the house of the applicant. The 1^st respondent had opened an account in Development Corporation Bank, Brabourne Road Branch, Kolkata in the name of “SARVASIDHI FASHON” with the intension of intercepting and encashing cheques of the applicant.

7. The 1^st respondents conduct in adopting a similar trade name has been unfair, dishonest and illegal. The respondents business being located in the same premises have in collusion with the courier services have been misappropriated and encashed 2 outstation cheques for Rs. 55,436/- and Rs. 92,371/-. The applicants came to know of the same when it had demanded the amounts due from the customers. The applicants, therefore, lodged a complaint with the Posta Police Station against the respondent. The 1^st respondent, i.e. Mr. Kundan Kumar Singh tendered apology to the applicant and requested for withdrawal of the complaint and also stated that he would close his company SARVASIDHI FASHON.

8. On 04.12.2009, the applicant came to know from a caution notice issued by the 1^st respondent in the leading Hindi Newspaper “SANMARG” dated 04/2009 that they were the registered proprietors of the trade mark “SARVASIDHI” and they also claimed user since 2006. On the basis of this caution notice, the applicant came to know that the trade mark ‘SARVASIDHI was registered under Nos. 1725535 to 1725538 in classes 24, 25, 35 and 42 respectively. The applicants filed a police complaint. Thereafter on 12.12.2009 one D. Sen and Co on behalf of the 1strespondent issued a legal notice to the applicant falsely claiming ownership in respect of the trade mark “SARVASIDHI”.

9. The applicants are using the trade mark “SARVASIDHI” since its inception. The 1^st respondent has been using the trade marks Bfour and Shreesidhi Creators right from its inception and have never used the trade mark SARVASIDHI.

10. The applicants have no trade connection with the 1^st respondent but the 1^st respondent is only trying to carry on the business on the goodwill of the applicants. The applicants have been using the trade mark openly, continuously and extensively and by virtue of such use, the mark has acquired tremendous goodwill and reputation. The 1^st respondents adoption is therefore, not bonafide. The applicants have made a search of the registration files in the Registry of Trade Marks and have seen the sales figures given in the affidavit of user filed before the Registrar of Trade Marks in the registration proceedings for all the 4 classes are one and the same which goes to prove that the malafide intention of the 1^st respondent.

11. The applicant then filed a suit before the City Civil Court, Calcutta in T.S.No. 6583 of 2009 for permanent injunction. In the suit, the applicant also prayed for an interim injunction. After hearing the applicant on 23.12.2009 the Court passed an order of injunction restraining the respondents from using the trade mark “SARVASIDHI” or SARVASIDHI FASHON or any similar trade mark, which order is subsisting an on date. On 06.01.2010, the applicant filed a complaint under Section 107 of the Act before the Registrar of Trade Marks against the impugned trade mark registration. On 18.02.2010, a reminder was sent to the Registrar regarding the complaint. In spite of the complaint, the registration certificates have been issued in March, 2010.

12. On 23.03.2010, representation under Section 19 of the Act was made before the Registrar of Trade Marks.

13. Against the order of injunction, the 1^st respondent preferred appeal and the same was dismissed after hearing the parties with a direction to dispose of the interim application by April 29, 2010. This order was communicated to the 2^nd respondent i.e. in the Registrar of Trade marks, but the Registrar ignored the same and issued the certificates as well ignored the representation under Section 19 of the Act.

14. The applicant being a party aggrieved has made these applications for rectification on the following grounds:-

(a) that the applicant is the prior and original adopter of the trade mark “SARVASIDHI”;

(b) that the 1^st respondent has dishonestly adopted the impugned trademark and therefore cannot claim to be the proprietor of the Trademark “SARVASIDHI”;

(c) that the 1^st respondent has falsely claimed user since 20.02.2006;

(d) that the use of the impugned trade mark will cause confusion and deception among the public;

(e) that the impugned registration is wrongly made in suppression of material facts and wrongly remains on the Register.

(f) that the registration of the impugned trade mark is in contravention of the provisions of Sections 9,11,18(1) and 57(2) of the Act;

(g) that the registration has been obtained in bad faith and therefore in contravention of the provisions of the Section 18(1) of the Act;

(h) that the registration if allowed to continue on the register would be detrimental to the rights of the applicant as well as the public;

(i) that the entry affects the purity of the Register of Trade marks;

(j) that the registration remains on the register without sufficient cause;

15. The entries of the impugned trademark therefore be removed from the Register of Trade Marks.

16. Learned Counsel S. Majumdar made his submissions on behalf of the applicants reiterating all the facts stated in the application for rectification. The counsel brought to our notice the affidavit of user filed in support of the application for registration before the Registrar where the sales turnover was one and the same in all the classes of goods i.e. 24,25,35 and 42 and submitted that false statements have been made in the affidavit and the registration has been obtained by playing fraud. He also pointed out that the 1^st respondent had stated that invoices are annexed with the affidavit but no such annexures were filed. The counsel then stated that as seen from the 1^st respondents website, the trade mark Bfour is mentioned whereas there is no mention of “SARVASIDHI: The counsel, therefore submitted that the 1^st respondent has obtained the impugned registrations malafidely and the same deserves to be expunged.

17. We have heard and considered the arguments of the counsel for the applicant.

18. The main issue to be decided is whether the applicant is a person aggrieved to file and maintain an application for rectification. The marks are identical, the goods are identical and the trade channels are also the same. The applicant being aggrieved by the 1^st respondents use has filed a suit before the Civil Court. A person who had used a trade mark before the registration is a person aggrieved.

“Bower J in Powells TM case has held that persons who are in some way or the other substantially interested in having the mark removed from the register, or persons who would be substantially damaged if the mark remained. It is very different to frame a narrower definition than that”

19. In the instant case, there is no doubt the applicant being a prior user is suffering loss on account of the 1^st respondents mark on the register. The applicant is, therefore, a person aggrieved and has a locus standi to file and maintain this application for rectification.

20. The next issue for consideration would be the 1^st respondents adoption of the trade mark. The 1^st respondent had not appeared before us inspite of the notice. On perusal of the records, it is seen that on account of confusion the cheques which were to be delivered to the applicants were delivered to the 1^st respondent and the same were encashed by the 1^st respondent. The applicant had, therefore, on 22.01008 sent a letter in this regard to the Council of Kolkata Unstitched Salwar Suits where both the applicant and the 1^st respondents are members. On 23.01.2008, the 1^st respondent had replied apologising for the mistake. They had also undertaken to close the company with immediate effect and requested the applicant to withdraw the complaint. A letter was also sent to the council by the 1^st respondent. The respondent has subsequently on 26.08.2009 after having undertaken to close the company had applied for registration claiming user since 20.02.006. The user, therefore, claimed is a false statement in our considered opinion. That apart from the user affidavit filed in support of the application for registration seems to be one created for the purpose of the case. The 1^st respondent has filed a similar affidavit of user for registration of the trade mark “SREESIDHI” under the classes 24,25,34 and 42 where also the sales figures are identical. This only shows the malafide intension of the 1^st respondent.

21. In spite of service, the 1^st respondent has not appeared before us for substantiating their case with proper evidence. We, therefore do not consider the 1^st respondents adoption to be honest.

22. When the adoption is not honest and the statement made before the Registrar of Trade Marks for registration are false the intentions are to be taken and considered as malafide. In such circumstances, we do not consider it fit to allow the marks to continue on the Register.

23. Accordingly, we direct the Registrar of Trade Marks to remove/cancel the trade mark “SARVASIDHI” registered under Nos. 1725535 class 24, 1725536 in class 25, 1725537 in class 35 and 1725538 in class 42 from the Register of Trade Marks. Accordingly, the applications for rectification are allowed without any order as to costs.