(Circuit Bench Sitting at Delhi)
ORDER (No.1/2011)
S. Usha, Vice-Chairman
1. This application for removal of the trade mark registered under No.1240033 in class 34 under sections 47/57/125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).M.P.No.128/09 has been filed to stay/restrain the effect and operation of the registered trade mark during the pendency of the rectification application.
2. The applicant is engaged in the business of manufacture and trade of pan masala and tobacco mixed pan masala (Gutkha) and are carrying on the aforesaid business in the name and style of M/s Shyam Traders. The applicant is now a proprietorship concern carrying on business under the trading style Shyam Traders. The trade mark âSHYAM BAHAR was registered in the name of Subodh Mishra, Sanjiv Mishra and Malti Mishra trading as Shyam Traders which was a registered partnership firm till 1.5.2001 under Nos. 699678, 699679 and 699680 in class 34 as of 26.2.1996. Thereafter, the partnership firm was converted into a proprietorship firm for which necessary application has been filed before the Registrar of Trade Marks to register the name of the subsequent proprietor.
3. The applicant in the course of trade is using the trade mark SHYAM BAHAR in relation to the above said goods. The applicant bonafidely and honestly adopted the trade mark in relation to said goods in 1986 and has since then been continuously, commercially, openly and in the course of trade using the same till date and has built up a valuable trade and goodwill thereunder. The goods of pan masala and tobacco mixed pan masala are excisable goods and the applicants are paying huge amount of excise duty thereon. The applicants are thus the proprietors of the registered trade mark âSHYAM / SHYAM BAHAR on account of its prior adoption and continuous user. The applicants have acquired valuable goodwill and reputation under the said trade mark.
4. The said trade mark has become distinctive and is associated with the applicants goods and business on account of its long, continuous, extensive and exclusive use thereof. The applicants said goods bearing the said trade mark are highly demanded in the market on account of their standard, quality and taste. The applicants have been continuously promoting the goods and business through different means and modes. The applicant have also spent substantial amount of money on the publicity of the said trade mark.
5. The impugned trade mark SHYAM BAHAR adopted by the respondent is identical with and deceptively similar to the applicants prior adopted and used trade mark and is in violation of the provisions of the Act. The respondent is not the proprietor of the trade mark âSHYAM BAHAR and the registration has been secured by malafide intentions and by playing fraud upon the Registrar of Trade Marks. The registration granted ought to be removed on the following grounds:-
i) Because the respondents adoption is dishonest and that the applicants were proprietors of the identical trade mark on the date of application for registration of the impugned trade mark;
ii) because the impugned trade mark would cause confusion and deception as the rival marks are deceptively similar;
iii) because the impugned trade mark has not acquired any distinctiveness;
iv) because the impugned registration is contrary to the provisions of sections 9,11 and 18 of the Act;
v) because the impugned mark did not have any user at the time of filing of application for registration;
vi) because the impugned trade mark is on the Register without sufficient cause and is wrongly remaining on the Register;
vii) because it is in the interest of purity of the Register that the impugned trade mark be removed;
viii) because there is no special circumstances or any other reason which is in favour of the respondent;
ix) because the applicant is a person aggrieved and can maintain this action;
6. The respondent herein filed their counter statement raising the preliminary objection as to the legal entity of the applicants as the same was not in existence. The respondent further stated that the present application has been filed out of business jealousy and for the purpose of harassing the respondent. The applicant is not a person aggrieved within the meaning of provisions of the Act. The application is not supported by any affidavit and is liable to be dismissed in-liminie with cost.
7. The registrations relied on by the applicant are in association with the said application No.693212 which is pending under opposition No.189999 filed by the respondent company. The application has been filed after undue delay and also suffers from defect of latches and acquiescence.
8. Relying on the grounds of rectification the respondent stated that the contents made in the grounds are frivolous and are denied. The claim of adoption and use since 1986 is wrong. The applicant has concealed the fact that opposition proceedings are pending as regards registrations relied on by the applicant. Mere prior adoption and use assuming it to be true cannot be a ground for rectification. The adoption by the respondent said to be dishonest is also denied.
9. The averment that the mark has not acquired distinctiveness is denied. In fact the respondent has been using the trade mark and has conducted huge sales. The registrations granted are not in contravention of the provisions of sections 9, 11 and 18 of the Act. The rest of the grounds are denied by the respondent.
10. We have heard Shri Sushant Singh learned counsel for the applicant and Shri Mohan Vidhani learned counsel for the respondent in the Circuit Bench Sitting at Delhi on 9.11.2010. Even though only the M.P.128/09 for stay was listed for hearing, with the consent of both the counsel the main matter was taken up for hearing.
11. Learned counsel for the applicant contended that the application for registration of the impugned trade mark was made in the year 2003 claiming user since 1985 for which no proof has been filed. The counsel drew our attention to the summary of sale, central excise duty and sales tax which was ` 3,575, Rs.550 and no sales tax in the year 1986-87 which arose to Rs.348627320, 341879741 and 169901885 in the year 2008- 2009 respectively. The applicants have spent huge amounts towards sales promotion. The impugned registration has been obtained by fraud.
12. The applicants are aggrieved as a suit is filed and pending between the parties. The applicant further submitted that the respondent is not the proprietor of the trade mark. The applicant submitted that a suit was filed and a compromise was entered into the applicant herein and S.S. Trading in the year 1998. In the compromise entered into between the parties Mr.Satish Gjupta of S.S.Trading had given up the rights of the impugned trade mark âSHYAM BAHAR and had admitted the applicants proprietorship. The deed of assignment was entered into on 16.8.2003 between S.S. Trading and M/s Spatial Commercial Private Limited whereby the trade mark âSHYAM BAHAR was assigned to M/s Spatial Commercial Private Limited by S.S. Trading who had no right in the trade mark as per the compromise entered into in the year 1998. The respondent herein moved the civil court for impleading them as a necessary party in the suit where a compromise was recorded but the same was not allowed. The counsel relied on few judgements in support of his case.
13. In reply, the counsel for respondent submitted that the applicant has relied on three trade mark registrations which is in association with one another trade mark which is under opposition. The applicant is not a person aggrieved as no suit is pending. In the bills produced there is no whisper of the trade mark. The respondent had been using the trade mark since the year 1984 which is averred in the assignment deed at clause D. The counsel, therefore, prayed that the application be dismissed and the mark be allowed to continue on the Register of Trade Marks.
14. In rejoinder, counsel for the applicant submitted that the goods and marks are identical hence the applicants are aggrieved. The mark has been registered by playing fraud on the Registrar and the mark is wrongly remaining on the Register.
15. The main issue for consideration is to see whether the applicant is a person aggrieved and has a locus standi to file and maintain an application for rectification. The best definition of the expression âperson aggrievedâ appears to have been given by Lord Herschell in Powell Vs. Birmingham Vinegar Brewery Co-1894 AC 8 at page 10-
Wherever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade mark and wherever the trade mark, if remaining on the Register, would, or might, limit the legal rights of the applicant, so that by reason of the existence of the entry on the Register, he could not lawfully do that which, but for the existence of the mark upon the register, he could lawfully do, it appears to me he has a locus standi to be heard as a person aggrieved.â
In the instant case, a suit has been filed by the applicant against the assignor for infringement as the goods and marks were identical/similar. The applicant is engaged in the same trade as the respondent and is likely to be injured in his trade by the registration complained of and therefore is a person aggrieved. Therefore, the applicant is a person aggrieved and has a locus standi to file and maintain an application for rectification.
16. The next ground was that the respondent had obtained registration by playing fraud. Fraud has been defined by K.S.Shavaksha in the book the Trade and Merchandise Marks Act, 1958-III Edition- If the original registration has been obtained by fraud, as for instance, by wrong statements deliberately made in affidavits submitted to the Registrar, the mark can be removed from the Register. Simply alleging fraud is not sufficient, for in the absence of particulars, the application would be incomplete.â
17. In the case on hand, it is seen that the applicant herein filed a suit for infringement against S.S. Traders / Satish Trading in the year 1998. On 18.12.1999 a compromise was entered into where the defendant admitted that the applicants proprietary right of the trade mark and consented to give up all their rights and agreed to withdraw all the proceedings pending before the Trade Marks Registry. On 10.8.2003, S.S.Trading assigned the trade mark in favour of M/s Spatial Commercial Private Limited. On 26.09.2003, the respondent had applied for registration of the trade mark âSHYAM BAHAR claiming user since 1985. Subsequently, on 25.11.2003 moved the court to implead themselves as a necessary party as the assignor was forced to enter into a compromise in the year 1998. The user claimed since 1985 is a false user. When S.S.Trading had given up their right in the trade mark as early as 1999 could not have assigned in the year 2003. Only if the assignor had a right in the mark, the assignee i.e. the present respondent can claim user since 1985 as a subsequent proprietor.
18. We are of the opinion that having given up the right in the trade mark, S.S. Trading had no right to assign the trade mark in favour of the respondent. The respondent coming to know of the fact that the assignor had given up their right could not have proceeded with the application for registration. The responded has, therefore, played fraud on the Registrar in obtaining the registration. The impugned trade mark is thus wrongly remaining on the Register without sufficient cause and is to be cancelled.
19. For the reasons stated above, we direct the Registrar of Trade Marks to cancel / remove the trade mark âSHYAM BAHAR registered under No.1240033 in class 34 from the Register of Trade Marks. The original rectification application is allowed with no order as to costs. As the main rectification application has been allowed, M.P.No.128/09 becomes infructuous.