Judgment:
Honble Shri Z. S. Negi, Chairman:
M/s Micolube India Limited, the applicant, has filed rectification applications (being ORA/202 and 203/2007/TM/CH) seeking rectification of trade marks MICO under No.1259864 and 1259863, respectively, from the Register of Trade Marks or rectification of the Register under section 47/57/125 of the Trade Marks Act, 1999. During the pendency of the rectification applications, both parties to the proceedings have filed four miscellaneous petitions. Out of the above four Miscellaneous Petitions (being Nos. 82 and100/2008 and 83 and 101/2008), the applicant has filed M.P. Nos. 82 and 83 seeking fixation of early date of hearing of the rectification application Nos. 202 and 203, respectively, and the respondent in the rectification applications has filed M.P. Nos. 100 and 101 for direction of this Appellate Board to take on record the evidence by way of affidavit along with the documents appended therewith. All the four miscellaneous petitions were heard together, hence this common order disposes of all the four miscellaneous petitions.
M.P. Nos. 82 and 83/2008
2. The applicant in the rectification applications has filed the miscellaneous petitions being M.P. Nos. 82 and 83/2008 for fixation of early date of hearing of the rectification application Nos. 202 and 203 setting out identical grounds, inter-alia, that the pleadings are complete in both the rectification applications and are pending for final arguments; that the applicant is the owner of the registered trade mark MICO and has been using the same since 04.10.1960 in respect of grease for technical and industrial purposes, petroleum products, brake fluids (oil), etc; whereas the respondent has never used its impugned trade mark even after registration; that the respondent on 22.08.1995 sought registration of trade mark on the basis of âproposed to be used and thereafter the same application was filed on 06.01.2004 claiming user from 01.01.1996 which was to be associated with earlier application; that the respondent in the written statement filed to the suit No. C S (OS) No. 2015 of 2007 filed by the applicant before the High Court of Delhi has stated that it commenced the sale of engine oil and gear oil under the impugned trade mark in February 2007 only, which is a wrong statement, as the defendant in the suit has not yet started the commercial use of the trade mark MICO in respect of the goods mentioned in the impugned registration certificate; that the respondent by taking the benefit of illegal and invalid registration, obtained by committing fraud upon the Trade Marks Registry, is immensely interfering in the business of the applicant by flooding the market with their same/similar/ allied/ cognate goods under the same trade mark; that the applicant has strong prima-facie case in its favour and the balance of convenience also lies in favour of the applicant and that because of the impugned entry on the Register, the applicant is suffering and shall continue to suffer so, in case the impugned registered trade mark is not removed/expunged from the Register. It is prayed that an early date of hearing in the above mentioned applications be appointed by allowing the present petitions in the interest of justice, equity and good conscience.
3. The respondent, M/s Motor Industries Co. Limited, has filed reply to both the petitions filed by the applicant by stating that the present rectification applications and the rectification applications filed by the respondent (being ORA/146 and 147/2008/TM/CH seeking removal of the registrations obtained by the applicant) ought to be taken up together for adjudication/final hearing. It is stated that hearing all the four rectification applications of the parties will facilitate proper appreciation of grounds/averments set out in the pleadings by the parties and may also obviate the possibility of any conflicting order/judgment being passed in the respective applications. The respondent has denied that the trade mark registrations in respect of petroleum products can be granted to the applicant since the grant of registration for the said category of goods is dehors the provisions of the Trade Marks Act, 1999 and rules framed there under. The respondent has submitted that in fact the applicant had obtained from the Honble High Court of Delhi an injunction against the respondent by suppressing material facts and the said injunction was subsequently vacated by the Single Judge and subsequently affirmed by the Division Bench making specific observation regarding misconduct of the applicant in obtaining injunction against the respondent. The respondent has reiterated that it would be in the fitness of things and in the interest of justice if the present rectification applications are taken together with the rectification applications filed by the respondent.
M. P. Nos. 100 and 101/2008
4. The respondent in the rectification applications is the petitioner in the miscellaneous petitions being M.P.No.100 and 101/2008 but for the sake of convenience, the petitioner be referred hereinafter as the respondent and the applicant in the rectification applications as the applicant. It is stated that the grounds and/or allegations which were set out in the rectification applications were denied by the respondent in the counter-statements. The respondent has alleged that the applicant, while filing the rejoinder to the counter-statement has set out additional and/or new grounds (which were not set out in the present rectification applications) for the purposes of allegedly impugning the certificate of registration granted to the respondent. It is further stated that it is pertinent to mention that subsequent to the filing of counter-statement by the respondent, the Honble Delhi High Court in C.S. (OS) No. 2015/2007 was pleased to vacate the ex parte ad interim injunction granted in favour of the applicant and was further pleased to observe that the applicant was guilty of suppressing material fact regarding the ownership of the mark MICO by the respondent (in para 20 of the plaint filed before the Honble High Court), the High Court was also pleased to observe that prima facie no case of mis-representation and/or passing off was made out against the respondent. Without prejudice to and independent of the foregoing, it is stated that in addition to counter-statement filed by the respondent along with accompanying documents, the respondent company with a view to place the true and correct facts before this Appellate Board, craves leave of this Appellate Board to place on record evidence by way of affidavit along with the appended documents to enable the proper adjudication of the present applications. The respondent has submitted that the applicant has filed the present applications with a view to derive benefit from the goodwill and reputation of the respondent company, and such act of the applicant stands corroborated in the specific finding of the learned Single Judge of the Honble Delhi High Court with regard to suppression of material fact (which formed the basis of injunction against the respondent, which was subsequently vacated) and which has been affirmed by the Honble Division Bench of the Delhi High Court. It is also the claim of the respondent that the evidence by way of affidavit along with the documents appended to it is vital to the adjudication of the present applications. The respondent claims to have a strong defense against the applicant and there is a strong likelihood of the respondent succeeding in its defence and no prejudice would be caused to the applicant if the evidence by way of affidavit is permitted to be taken on record.
5. The applicant has filed its reply raising preliminary objection that the miscellaneous petitions are not maintainable as the respondent has already filed the counter-statement and as per rule 10 of the Intellectual Property Appellate Board (Procedure) Rules, 2003, the respondent ought to have filed the evidence by way of affidavit along with the supporting documents at the time of filing counter-statement. The applicants next objection is that it is not the case of the respondent that the documents sought to be filed now were not in its possession at the material time as it has filed most of such documents in suit C.S.(O.S) No. 2015/2007. The other objections are that the respondent did not disclose any reason for not filing the documents and evidence at the relevant point of time, in fact the respondent failed to disclose any ground for the maintainability of the instant petition and that the respondent also did not plead for condonation of delay in filing the same and even did not disclose the correct time of delay in filing the documents and evidence. Besides, the instant petitions have wrongly been filed on behalf of M/s Bosch Limited as neither the person affirming the affidavit nor M/s Bosch Limited has any locus to file the present miscellaneous petition and whatever is mentioned hereinabove may be referred to. In view of these, it is submitted that the petitions are liable to be rejected.
6. After hearing learned counsel for the parties in the four miscellaneous petitions and perusing the records, we are of the opinion that in the interest of justice and for the convenience of the parties the pending original rectification application Nos. 202 and 203/2007 and 146 and 149/2008 may be posted for hearing together after the pleadings are complete in all the four applications. Incidentally, it is noticed that the there is change of name of the respondent from Motor Industries Company Limited to Bosch Limited with effect from January, 2008 which necessitate the change of cause title of the applications. The respondent is required to file necessary memo of change of cause title, along with supporting documents, so as to enable the applicant to move applications for change of cause title of the rectification applications. The miscellaneous petitions 82 and 83/2008 are disposed of on the above terms.
7. In so far as the miscellaneous petitions 100 and 101/2008 are concerned, we find that no plausible reason for taking the evidence by way of affidavit along with appended document has been given by the respondent. The respondent has not specified as to what prevented them to file the documents along with the counter-statement. It is certainly not the case of the respondent that the documents sought to be taken on record now were not in their possession. The averment made by the applicant that most of the documents sought to be filed now have been filed in the suit CS (OS) No. 2015/2007 remains uncontroverted during the course of hearing. The articles of association and memorandum of association of the company, balance sheet as at 31.12.2007, list of trade mark registrations obtained by the respondent in different classes, copies of registration certificates in respect of MICO in various classes in foreign countries, list of distributors/authorized wholesalers, copy of judgment dated 7.2.2008 of High Court of Delhi in I.A.Nos.11702/2007 and 12433/2007 in CS(OS) 2015/2007 and copies of invoices of different dates of different years, all were available with the respondent at the time of filing its counter-statement on 27.2.2008. In view of the sketchy miscellaneous petitions not containing any plausible reasons/grounds are devoid of any merits, we are unable to accede to the prayers made therein by the respondent. The case law relied upon by the respondent will not be of any assistance to it as the facts are distinguishable. Accordingly, we dismiss the M.P. Nos. 100 and 101/2008 without order as to costs.