Shri Mukesh Goel Trading as M/S H.Q. Company Lamp Mft. Co., Vs. Shri Raman Gupta and Another - Court Judgment

(Circuit Bench at New Delhi)

HON'BLE Ms.S.USHA TECHNICAL MEMBER:

The two rectification applications have been filed for removal of trade marks ‘LEUCI under No.1184559B and ‘HUAQIANG under No.1184560B, both in class 11 from the Register of Trade Marks under sections 47, 57 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

2. The brief facts of the case is that the applicant as the sole proprietor of the concern HQ Company Lamp Manufacturing Co. is engaged in the business of manufacturing and sale of electric bulbs, tube lights, compact fluorescent lamps, tube light fittings, etc., since the year 2003 under various trade marks/labels K.G.LITE, SUBAH, RELIABLE, PREMIER and C-LITE. The applicant had coined, adopted and started using the said distinctive trade marks/labels since December, 2004. The applicant was promoting the use of the said trade marks and had also applied for registration of the trade mark K.G.LITE, SUBAH in class 11. Apart from the registration of the trade mark the applicant has also applied for registration under the Copy right Act with the original artistic work. Thus the applicant has become the proprietor of the trade marks both under the Trade Marks Act and under the Copyright Act. The applicants trade marks have become distinctive and associated with their goods by which the public associate the goods bearing the trade marks only with the applicant and with none else. The applicants goods bearing the trade marks has acquired considerable reputation and demand from the public.

3. The applicant has built up a valuable trade by promoting his business through advertisement, publicity materials, hoardings, etc. They have also spent huge sums of money towards publicity.

4. The applicant had adopted another trade mark/label LEUCI in November, 2005. They had also filed application for registration of the impugned mark, but from the importers they came to know that the trade mark LEUCI is an international brand and it is not possible legally to use the trade mark LEUCI.

5. On enquiry made from the office of the Registrar of Trade Marks in respect of the trade marks LEUCI and HUAQIANG the applicant came to know that the first respondent had adopted and registered the said trade marks under No.1184559B and 1184560 respectively. The registered trade mark applications were filed in the year 2003 claiming user as proposed to be used. The applicant further submitted that the first respondent in spite of having adopted the trade marks which belongs to some other foreign concern had extended unlawful and groundless threat to the applicant, his dealers and distributors. The applicants, on further enquiry to find out how the first respondent had adopted the marks found that the first respondent had just copied the trade marks and this information was also confirmed to the applicant through websites. The first respondent was not the proprietor and was a pirator of the internationally well known trade marks. The first respondent, therefore, cannot claim any right in the impugned trade marks. The adoption and registration obtained by the first respondent was dishonest, invalid, illegal and irregular and the first respondent had obtained the registration by misrepresentation and that it is liable to be cancelled.

6. On verification from the market it was also found that the first respondent had never been using the impugned trade marks in relation to any goods. The rectification applications have been filed on the following grounds:-

(a) The impugned trade marks were used by an Italian company for more than five decades in relation to compact fluorescent lamps, light bulbs, etc.

(b) The goods bearing the impugned trade marks had acquired high reputation on account of its superior quality.

(c) The trade marks had acquired distinctiveness.

(d) The trade marks enjoyed tremendous goodwill and reputation in international market including India and as such is a well known mark.

(e) The first respondent has obtained registration by playing fraud and by false claims and as such the mark is wrongly remaining on the Register without sufficient cause.

(f) The first respondent was not the proprietor of the impugned trade mark either at the time of filing the application or at the time of granting registration. The impugned registration had been obtained dishonestly, even while being aware of the proprietary rights of the Italian company.

(g) The registrations had been obtained fraudulently. The user claimed by the first respondent is tainted, contradictory and void abinitio.

(h) The impugned trade marks were neither distinctive nor capable of being distinguished and was thus contrary to the provisions of section 9 of the Act.

(i) The marks as well as the goods are identical and similar.

(j) The registration would definitely cause unnecessary confusion and deception and will be barred by section 11 of the Act.

(k) The first respondent had not used the marks for more than five years and three months prior to the filing of these applications.

(l) The impugned registrations were contrary to the provisions of sections 9, 11, 12 and 18 of the Act.

(m) The impugned trade marks be removed in the interest of the purity of the Register.

6. The matters came up for hearing in the Circuit Bench at New Delhi on 20.08.2008. Learned counsel Shri S.K.Bansal appeared on behalf of the applicant. In spite of service none appeared on behalf of the first respondent and therefore the matter was heard exparte. As the parties are same and facts are also same both the applications were heard together and a common order is being passed.

7. M.P. Nos. 138/2007 has been filed for early hearing of the application and M.P.No.128/2006 has been filed for stay/ injunction in ORA/157/2006 and M.P. Nos.113/2006 and 129/2006 have been filed for early hearing of the rectification application and for stay/injunction, respectively, in ORA/158/2006/TMDEL.

8. Learned counsel for the applicant stated that the applicant is a third party to the above applications and is importing goods from a Chinese party who is the proprietor of the trade marks and also brought to our notice the receipt dated 3.10.2002 for importing the goods from the Chinese company and the said receipt was filed along with the typeset of papers. He further submitted that the first respondent had virtually copied the trade marks which was adopted by the Chinese company several decades ago. Learned counsel further submitted that the first respondent has no basis for adoption and that the adoption was dishonest. The counsel also submitted that as seen from the Trade Marks Journal advertisement of the impugned trade marks, the mark have been applied for registration in the year 2003, claiming user as proposed to be used which proves that the first respondent has adopted the impugned trade marks very recently. When that be so, the first respondent cannot claim to be the proprietor of the trade marks.

9. Learned counsel for the applicant relied on the following judgments in support of his contentions:-

(i) 2004 (28) PTC 585 (SC) Milment Oftho Industries and Ors Vs. Allergan Inc was relied upon to show that the first respondents adoption was dishonest and the user claimed by the first respondent was subsequent to the applicant and that the applicant being the prior user his rights were to be protected.

(ii) AIR 1990 DELHI 233 Prem Singh V. M/s Ceeam Auto Industries was relied to support his claim that the first respondent himself the pirator of the well known marks should not be allowed to continue using the marks to maintain purity of the Register.

(iii) AIR 1990 DELHI 19 M/s Hindustan Pencils Pvt. Ltd. V. M/s India Stationery Products Co. was relied on to say that when no valid reason was given for adoption, the mark should not be allowed to remain on the Register.

(iv) 1985 Arbitration Law Reporter P.265 M/s K.B.Hiralal and Sons Vs. M/s Kumar Industries was relied on to say that when a person comes to Court he has to come with clean hands and that the first respondent has malafidely and fraudulently obtained registrations with no proper explanation for the adoption.

(v) 1994 PTC 284 Ved Prakash Vs. Samir Kumar and Ors. was relied on to say that as a pirator of the trade marks the first respondent is not entitled to have the marks registered and to remain on the Register.

10. Learned counsel for the applicant finally submitted that as per sub-section (10) of section 11 when the registration of the marks have been obtained in bad faith, the registration was prohibited and prayed that the trade marks be expunged from the Register.

11. We have gone through the pleadings and documents filed by the applicant. We had no opportunity of either perusing the documents or hearing the first respondent as they remained ex parte. The one and only issue that is to be considered in these applications are that whether the applicant is an aggrieved person. It is a general principle that in an application for rectification only an aggrieved person can file an application for removal of the trade mark. As per section 21 of the Act any person may oppose a registration whereas only an aggrieved person can file an application for removal of a mark.

12. The term person aggrieved though not defined in the Act has been liberally construed in several cases. The classic case in this respect of Powells Trade mark where it was held that “I should be very unwilling unduly to limit the construction to be placed upon these words, because although they were no doubt inserted to prevent officious interference by those who had no interest at all in the Register being correct and to exclude a mere common informer, it is undoubtedly of common 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 and by which many persons may be affected, who nevertheless would not be willing to enter upon the risk and expense of litigation. 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.”

13.In Riveres and Co., TM it was held that it must be a legal grievance, it must not be a stet pro ratione voluntas; the applicant must not come merely saying, “ I do not like this thing to be done”, it must be shown that it tends to his injury or to his damage in the legal sense of the word”.

14. In Apolliniaris TM it was held “ we approach this question on the assumption, which is necessary of course to answer this question, that the trade mark was wrongly in the register, and further with these observations, in the first place, that the question is one of locus standi; and in the second, that the words “persons aggrieved” appear to us to have been introduced into the statute to prevent the action of common informers or of persons interfering from merely sentimental notions, but that they must not be so as to make evidence of great and serious damage a condition precedent to the right to apply. Further, we are of the opinion that wherever one trader, by means of his wrongly registered trade mark narrows the area of business open to his rivals and thereby either immediately excludes or with reasonable probability will in future exclude the rival from a portion of that trade mark into which he desires to enter that rival is an aggrieved person. Again if that effect is produced or is likely to be produced, by the wrongful trade mark, is not the exclusion, but the hampering of a rival trader, that rival trader again, is, in our opinion, a person aggrieved. A man in the same trade as the one who has wrongly registered a trade mark and who desires to deal in the article in question is prima facie, an aggrieved person”.

In the same case, the Lord Justice went on to say, if the owner of the registered trade mark says to a defendant in a litigation, “ I am the owner of this registered trade mark and therefore, you are doing me a wrong”, the peron attacked ought to be at liberty to reply two things: first, “ You ought not to be on the register” and secondly “ even if you ought, I have done you no wrong.” The completeness of the second line of defence ought not be preclude the attacked person from availing himself of the first. If I am assailed by the conclusion of a syllogism, I am at liberty both in logic and in law, to defend myself by denying both, or either of the two propositions which are alleged in support of the conclusion and I am aggrieved if I am unjustly deprived of that right. (Fry L.J)

15. The applicant herein has not stated in his pleadings as to how he is a person aggrieved and in what way the applicant is affected or injured by the impugned mark remaining on the Register. The applicant has stated in his pleadings in clause 9 of the statement of case, “The petitioner has also filed application for registration of the trade mark / label LEUCI. However the petitioner immediately came to know from the importers as well as information from the trade and business that the trade mark LEUCI is an international brand / trade mark and therefore it is not possible and legal to use the trade marks LEUCI. Accordingly the petitioner has not taken any steps towards registration of the aforesaid trade mark nor is the petitioner any more interested in even commencing the use of the same.”

16. The applicant in the grounds for rectification has just made a mention in clause 24 “ in view of the averments made in the accompanying statement of case, the petitioner is “ person aggrieved: and can maintain and institute this action.” Apart from this statement there is no averment as to how the applicant is related to the Chinese company who is said to be the proprietor of the impugned trade marks. During the course of arguments, the counsel for the applicant contended that he is importing the goods from the Chinese company who is said to be the proprietor of the trade marks and brought to our notice the receipt in proof of the same.

17. We are of the view that there cannot be any submission beyond what has been pleaded. The applicants having no explanation as to how they are connected with the Chinese company and as to how the Chinese company have adopted and used the impugned trade marks, how long the Chinese company has been using the said impugned trade marks, the applicant cannot be said to be an aggrieved person.

18. The other issues as to whether the registration has been obtained by fraud and is wrongly remaining on the Register or the mark has got to be removed for non user and the adoption is dishonest are not gone into for the reason that the applicant has not proved his locus standi to file the application for removal at the first instance.

19. Moreover, the first respondent remaining exparte, we did not have the benefit of hearing them. When that be so, the question of non-user or other issues cannot be decided. When we have taken the view that the applicant is not an aggrieved person we do not think it necessary to deal with the merits or demerits of the case and so the main application itself deserves to be dismissed.

20 Accordingly the applications for rectifying the trade mark. No.1184559B and No.1184560B both in class 11 from the Register of Trade Marks stands dismissed with no order as to costs. As the main applications themselves have been dismissed, the M.Ps do not survive.