(Circuit Bench at New Delhi)
Hon'ble Shri Z.S.Negi, Chairman:
This rectification application under section 47/57/125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) is for the removal of trade mark âK/C, registered under No. 848306 in the name of the respondent, from the register or rectification of the register. The applicant has along with the rectification application filed a miscellaneous petition being M.P. No. 117/2007 for stay of the effect and operation of impugned registered trade mark during the pendency of the rectification application.
2. It is averred that the applicant M/s. Hassan Bricks Field is a partnership firm, comprising of Shri Mahboob Hassan, Shri Mohd. Nagair Hassan and Shri Naved Hassan as the partners. The firm is engaged in the business of manufacture, marketing, distributing and sale of bricks. The applicant on 01.12.1998 honestly and bonafidely adopted the trade mark/label âKIC in respect of bricks and since then continuously, commercially, openly and exclusively using the said trade mark/label and has built up a worldwide and globally valuable trade, goodwill and reputation there under and acquired proprietary rights therein. The said trade mark/label is being used in an artistic manner bearing original artistic features and the applicant is the owner/proprietor of the art work/copyright involved therein within the meaning of the Indian Copyright Act, 1957. In order to acquire statutory rights in the said trade mark/label, the applicant had filed application No.01598419 seeking registration thereof in respect of bricks in class 19, claiming user since 1.12.1998 and the said application is pending for registration. The applicant claimed to be regularly and continuously promoting its distinctive trade mark/label and goods there under through extensive advertisements, publicity, promotion and marketing by spending enormous money, efforts, skill and time thereon through various means and modes. The applicant further claims that its trade mark/label is a well-known mark/label within the meaning of section 2(1)(zg) of the Act.
3. It is further averred that on 26.8.2007, through a general notice published in a daily newspaper on behalf of the respondent, the applicant came to know about the registration of trade mark âK/C in favour of the respondent in respect of all types of goods included in class 19 and the later enquiry by the applicant also revealed that the impugned trade mark âK/C is registered under No. 848396 dated 24.1.2007. The applicant, thereafter filed the present application seeking removal of the impugned trade mark from the register on various grounds, inter alia, that the respondent has obtained the impugned registration fraudulently, malafidely and on false claims, which is bad in law and in violation of the applicants common law and statutory right in the trade mark/label âKIC; that in the notice published in the newspaper, the respondent is shown as a partnership firm and the advertisement in the Trade Marks Journal No.1339 Suppl, (1) dated 15.2.2006 the respondent has been shown to be a proprietary firm and thus made a self contradictory claim; that the user claimed since1.1.1997 is tainted, contradictory and void-ab-initio because the respondent had no such user; that neither the mark is used by the respondent for more the five years and three months prior to this application nor it has any bonafide intention to use the same; that the entry relating to the impugned mark has been made without sufficient cause and is wrongly remaining on the register; that the impugned mark was not distinctive of the goods either when the application for registration was made or even now and as such the registration is contrary to section 9 of the Act; that the impugned registration is barred by section 11 of the Act and the impugned registration is also contrary to sections 12 and 18 of the Act. It is claimed that in view of the averments made in the statement of case, the applicant is the person aggrieved and can institute and maintain the present rectification proceedings.
4. The respondent filed the counter-statement in December,2007 denying the material averments made in the application. It is stated that the respondent is a partnership firm engaged in the business of manufacturing and merchant of bricks included in class 19 under trade mark âK/C in the trading style of Khan Brick Works. The respondent is stated to have adopted the trade mark âK/C in the year 1997 and got the registration under No. 848306. The mark has been continuously and extensively used by the firm since1997 upto the present without any interruption or objection from any quarter whatsoever. It is further stated that the sale of goods of the firm under the trade mark is practically made throughout India through its dealers and due to huge spending on the advertisement and publicity through different media to promote and popularise its goods under the trade mark âK/C, the trade mark has earned a commanding reputation and goodwill in the trade and the same is associated exclusively with the respondent. It is claimed by the respondent that the applicant is not the person aggrieved and the application filed by it is frivolous, baseless and vague.
5. Shri S.K. Bansal, learned counsel appearing on behalf of the applicant, claimed that the respondent on the strength of the impugned registration is interfering with the business of manufacture, marketing, distribution and sale of bricks and activities of the applicant and also because of the impugned entry on the register, the applicant is suffering and shall continue to suffer. In view of the averments made in the application and the accompanying statement of the case, the petitioner is the person aggrieved to file this rectification application.
6. The learned counsel contended that the mark of the respondent was not distinctive of the impugned goods at the time of making application for registration or at the time of registration and even till date because no cogent and sufficient documents in support of any distinctiveness were filed by the respondent before the Registrar. The impugned mark fails or is incapable to identify the goods of the respondent. Assuming that such documents were filed no distinctiveness claimed could have been based thereon as the documents on their very face are fabricated and no registration could have been granted and any such grant is an erroneous grant. It was further submitted that the impugned trade mark âK/C in relation brick is common to trade as many other traders are using mark in relation to bricks, the names and addresses of the other parties using the identical trade mark in relation to brick and other allied and cognate goods is given by way of Exhibit-IV to the application. He further contended that the respondent has no user at all or even if assuming for the sake of argument, which is denied, such user is a tainted user and is much subsequent to the user of the applicant. In view of these facts, the registration of the impugned mark is in contravention of section 9 of the Act.
7. It was contended that the impugned trade mark of the respondent is identical with the trade mark of the applicant and the goods covered by the marks are of similar description. The impugned mark in respect of goods of the respondent would deceive and cause confusion or is likely to deceive and cause confusion in relation to the goods covered by the applicants trade mark and that the applicants mark is a well-known trade mark within the meaning of clause (zg) of sub-section (1) of section 2 of the Act. The impugned registration of the respondent is, therefore, barred by section 11 of the Act.
8. Shri Bansal claimed that the applicant is prior adopter of the mark and has used the mark continuously, openly and exclusively in relation to its goods. The applicant has regularly and continuously been promoting its trade mark and marketing its goods by spending enormous amount of money, efforts, skills and time through various means and modes including through the visual and print media, trade literature and magazines, etc. and all of which have tremendous reach, availability and circulation through out India. In view of these measures, the applicants trade mark/label has acquired enviable and enduring goodwill, reputation and user through out India.
9. It was contended by Shri Bansal that the entry relating to impugned mark of the respondent is made in the register without sufficient cause and the same is wrongly remaining on the register.
10. Shri Bansal contended that the registration of impugned mark was obtained by the respondent fraudulently, malafidely and on false claims and documents, by willful supperesio veri and suggestio falsi all of which amounting to a fraud. It was further contended that the respondent has obtained the impugned registration on the basis of forged and fabricated documents and as such the respondent is guilty of making contradictory statement and filing forged and fabricated documents.
11. It was contended by Shri Bansal that the respondent has neither used the impugned trade mark for a period of more than five years and three months prior to the filing of this application nor it has any bonafide intention to use the same. The respondent never used the impugned trade mark as a trade mark with respect to the goods for which registration had been obtained and there were no special circumstances or any other factor which could be taken as a defence to sustain registration of its impugned trade mark by the respondent.
12. The learned counsel stressed that the respondent is not the proprietor of the trade mark and the impugned registration was sought dishonestly knowingly the proprietary rights of the applicant in KIC. By referring to the advertisement in the Trade Marks Journal wherein respondent trading as Khan Brick Works has been shown as the proprietorship firm and in the public notice dated 26.8.2007 published in the Amar Ujala newspaper the respondent has been shown as the partnership firm, the learned counsel argued that in view of these documents it is evident that the respondent has obtained the impugned registration by making contradictory statement or making false claim that it is the proprietor of the mark. It is therefore clear that Shri Faim Khan is not the proprietor of the impugned trade mark either at the time of making application or thereafter, therefore, such a registration is liable to be removed on this ground alone.
13. Shri Mohan Vidhani, learned counsel appearing for the respondent, vehemently opposing the application submitted that the applicant cannot file the present application as it is not the person aggrieved but a pirator of the mark who seems to have subsequently adopted deceptively similar trade mark and has pre-empted in filing of the present application before the applicant could be sued for the infringement and passing off. It is denied that the registration of trade mark of the respondent is interfering with alleged business activity of the applicant or that the applicant is suffering in any manner, in fact the application has wrongly and fraudulently filed the present application to harass the respondent and to cover up its own fraud about filing its allege application No. 01598419 for registration of trade mark KIC.
14. Shri Vidhani submitted that the mark of the respondent has acquired reputation and goodwill in terms of the proviso to sub-section (1) of section 9 of the Act. The mark has acquired a distinctive character by way of use made of it before the date of making application for registration. The registration was obtained by the respondent bonafidely and the Registrar has after being fully satisfied in every respect granted the registration. The evidence produced by the respondent in the affidavit of Shri Faim Khan, partner of the respondent are enough to prove the genuine and continuous user by the respondent. The claim of the applicant that the trade mark âK/C is common to trade is imaginary and not sustainable in the absence of any evidence produced to substantiate the claim of the applicant.
15. Shri Vidhani stressed that the respondent vehemently denied that that the trade mark âK/C would deceive and cause confusion or likely to cause confusion with the trade mark of the applicant. He stressed that on verification of official website www.ipindia.nic.in of the Trade Marks Registry to ascertain the status of the application No. 01598419 in class 19, as has been mentioned by the applicant in the statement of case, it revealed that there is no such application as the computer shows the application number as invalid number. The applicant has deliberately and malafidely not mentioned the date of application. When there is no application, there can be no trade mark of the applicant and the trade mark of respondent cannot cause confusion and the applicant has not rebutted in para 6 of the counter-statement wherein statement to this effect has been made by the respondent. The learned counsel also stressed that as he has submitted earlier also, the present application has been filed to cover up the fact that they are involved in such fraudulent act of forgery. An applicant who does not come to the court/tribunal with clean hands should be thrown out on the threshold and as such the applicant application deserves to be dismissed on this ground alone.
16. Shri Vidhani submitted that the applicant has averred that it adopted the trade mark KIC on 1.12.1998 and filed application No. 01598419 but that application number has been shown as invalid by the official website of the Trade Marks Registry, in such eventuality the logical inference that can be drawn is that the applicant has not filed any such application. The applicant is required to substantiate its claim by producing convincing and cogent evidence but the applicant has not adduced any evidence to this effect. The application is liable to be rejected on the ground of not coming to this Appellate Board with clean hands. The respondents user is since 1.1.1997 which is definitely prior in point of time to the applicant.
17. Shri Vidhani made a submission that the allegation of fraud against the respondent is wrong and vehemently denied as the evidence produced by the respondent in support of user is adequate to negate the allegation. The respondent has been regularly and continuously using the mark in relation to the goods for which registration was sought and has been obtained.
18. Learned counsel for the respondent submitted that the respondent has been using its mark for the last more than 10 years continuously and without interruption from any where and the respondent has filed certain copies of evidence in support of its user and also to negate the allegation of non-use for more than five years and three months before the filing of the application.
19. Shri Vidhani lastly submitted that the respondent in the year 1997 honestly adopted the distinctive trade mark in respect of bricks included in class 19 and applied for registration thereof on 26.3.1999. After satisfying himself, the Registrar granted registration which was put on the register on 24.1.2007. The mark is in regular use ever since its adoption and such user is for more than 10 years till now. He concluded by submitting that the application may be dismissed with cost.
20. After hearing the arguments of both the parties, the first question required to be considered is whether the applicant herein is the âperson aggrieved to file the present rectification application. The expression âaggrieved person has received liberal construction from the courts and includes rivals in the same trade who are aggrieved by the entry of rivals mark in the register of trade marks or 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 on the register. In re Powells Tm. (1894) 11 R.P.C. 4, HL at p. 4 Lord Herschell said: âThe first question raised is whether the Respondents were âPersons aggrievedâ¦. My Lords, I should be very unwilling unduly to limit the construction to be placed upon these words; because, although they were no doubt interested to prevent officious interference by those who had no interest at all in the Register being correct, and to exclude a mere 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, limit the legal rights of the Applicant, so that by reason of the existence of the entry on the Register he could 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 present case, the applicant and the respondent are in the same trade and as such are trade rivals. The applicant has not given the particulars of its alleged suffering on account of the impugned entry on the register but having regard to the fact that the applicant for rectification being from the same trade as from that of the registered proprietor and as the existence of registered trade mark limits its legal rights to carry on business under the trade âK/C, the applicant prima facie appears to be the person aggrieved and as such is entitled to file the present rectification application under sections 47 and 57 of the Act.
21. The trade mark of the respondent is registered under the Act and the applicant has averred that the respondent has filed no cogent and sufficient documents in support of any distinctiveness but without specifying any details or adducing any proof to substantiate its averment. The applicants further averment âAssuming that the aforesaid documents were filed, no distinctiveness claimed could have been based thereon as the documents on their very face are fabricated and the Registrar could never have granted registration and on that basis. Any grant of registration by the Registrar thereon is vitiated and is an erroneous grant. The impugned registration as such on its very face is contrary to the provisions of section 9 of the Trade Marks Act, 1999.â is nothing but a presumption or hypothesis and neither the applicant is sure of the position nor it has any cogent proof or documents to substantiate its averment. From the copies of sale bills, Sales Tax registration and certificates from a Inter Collage, Dental Clinic, Government Contractor (A class)and a Coldstorage and Allied Industries firm show that the respondent has been using the mark before making application for registration and thereafter also. The first bill is dated 25.12.1998 and last bill is of 11.8.2007, the certificate from the College states that K.C. bricks were purchased in the years 1997-98 and 1998-99 and Sales Tax registration is for the year1998-99. In view of the user prior to making application for registration, the registration is covered under proviso to sub-section (1) of section 9 of the Act. Regarding applicants contention that the mark K/C is common to trade is not sustainable in the absence of any iota of evidence regarding their existence, user, etc. The applicants ground of rectification for contravention of section 9 of the Act is not sustainable.
22. Now the next question for consideration is whether the mark of the respondent is identical to the mark of the applicant to cause or likely to cause confusion or deception. The question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole. Again, in deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of idea in the two marks is reasonably likely to cause a confusion between them. When compared the two marks KIC and K/C by applying the principles mentioned here before, we find that looking at them casually the first impression one gets is that both the marks are same. Both are structurally closely similar and the description of goods covered by them is also similar and is likely to cause confusion or deception. The question of confusion or deception will arise only where both the competing marks are in use in the course of trade. In the case on hand, the applicant has not filed any documentary evidence to show its user or the mark is used on vendible goods in the course of trade. The respondent has averred in the counter-statement that the official website of the Trade Marks Registry is showing application number mentioned in the statement of case by the applicant in relation to its application for registration as wrong and this averment has not been rebutted by the applicant and also not disputed during the course of argument. The applicant has, except a copy of representation sheet of the applicants trade mark KIC under No.01598419 in class 19 as Exhibit-III to the application, not filed any copy of application or copy of advertisement of application in the Trade Marks Journal, if advertised, or any document from the Trade Marks Registry to prove that the purported application for registration was filed and is pending registration with the Registry. Even the applicant has not mentioned the date of filing of its application for registration. In view of these facts and in the absence of any iota of evidence, the claim of the applicant that it is prior adopter of the mark; that it has used the mark continuously, openly and extensively and has regularly and continuously been promoting its trade mark by spending enormous amount of money, effort and skill through visual and print media, trade literature and magazines, etc. is also not sustainable. Also, the claim of the applicant that its trade mark is well-known trade mark within the meaning of section 2(1) (zg) of the Act does not sustain in the absence of any material on record to support such claim.
23. The next question is whether the respondent has obtained the impugned registration by fraud and on false claims and documents. It is not sufficient merely to allege fraud but it must be pleaded and particulars given. It would be appropriate to refer to observation made by Shri K. S. Shavaksha in his book on the Trade and Merchandise Marks Act 1958 (Third Edition) at pages 147-48 which is as under:-
â Fraud: 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 the absence of particulars, the application would be incompetent. Re Om parkash AIR 1956Punj 4: Zenith Colour Trading Co. v. Taherally (1956) 58 Bom. LR 912 p.916. It has to be noted that the fraud, referred to in this section, is fraud committed before registration. Fraudulent use of a registered mark after registration is subject to a different principle of law. Contrary to the facts of the application on hand, it might be a fraud for a person to procure the registration of a trade mark which he knows is in use by another trader or by his principal who is a foreign manufacturer. Gynomin (1961) RPC 408 at 414.â It may also be worthwhile to refer the principles laid down in the case of Pt. Avtar Sharma and Ors. V. Pt. Chandra Sekar Saran Sharma and Ors., AIR 1971 All 157 thus: â Courts do not take any notice of general allegations of fraud unless particulars are also given in the pleadings. A charge of fraud is a very serious charge and when one kind of charge is pleaded another kind of fraud can not be permitted to be proved.â
An applicant for rectification must prove that the entry he is attacking offends the provisions of the Act. The applicant has given particulars of one instance only where the respondent has made a contradictory statement and the rest of the allegations are general allegations without any particulars. Applicant has averred as under:-
âBECAUSE as per its own publication in the News Paper AMAR UJALA dated 26.08.2007, the respondent is a partnership firm. While the page no.5554 of the Trade Mark Journal No. 1339 Suppl. (1) dated 15.02.2006 (where the impugned trade mark was advertised), clearly shows the respondent to be a proprietary firm of Shri Faim Khan. The respondent is guilty of making contradictory statement.â
The respondent has in the counter-statement averred thus: âWith respect to the contents of para 2, it is pertinent to mention here that at the time of applying for registration (i.e. on 26/3/1999), I was one of the partners of my firm but inadvertently the names of the other partners was not mentioned in the application and only my name was shown as the sole proprietor. The necessary steps are being taken in that regard.â In our opinion, the application made in the name of Shri Faim Khan, cannot be termed as fraud (and rightly the applicant has not used the term as fraudulent statement) it may at worst be termed as misstatement and misstatement does not amount to fraud. Where an applicant for registration knowingly makes a false claim to be the proprietor of the mark, the registration is obtained by fraud. It would be a fraud for a person to procure improperly the registration of a trade mark which, he knows, belongs to another trade. It involves an element of actual deception and intention to deceive. In the present case these elements are not there because the applicant as a partner of the firm might have no intention to deceive anybody or the other partners of the firm and the other partners of the firm have not raised any objection in this regard. The applicant has not put forth any plea to the effect that the partner of the respondent had any intention to deceive anybody or any partner of the firm when the name of Faim Khan was mentioned as the sole proprietor. The applicant has termed this act as a contradictory statement. The respondent claimed to have been using the impugned mark since 1.1.1997 when no third party was using that mark. The applicant has not established its claim of being the prior adopter of the mark KIC. Prima facie, on the basis of applicants averment that it adopted the mark KIC on 1.12.1998, the applicant does not appear to be the prior adopter. The respondent has proved that its mark has been in use since December, 1998 to August, 2007. When the mistake came to the knowledge of the respondent, the respondent has averred in the counter-statement that necessary steps are being taken in that regard. Hence, the allegation of fraud fails.
24. The next question required to be considered is whether the respondent has not used the trade mark for more five years and three months before the filing of the rectification application and whether there is no bonafide intention to use the mark by the respondent. Section 47 of the Act provides for removal from register and imposition of limitations on grounds of non-use of a mark. The provisions of section 47 envisages certain conditions to be satisfied before a trade mark is ordered to be removed from the register and the onus to prove or establish that the applicant is a person aggrieved and that there is non-use of mark continuously for a period of more than five years and three months before the date of application is on the applicant. The Supreme Court in the case of Hardie Trading Ltd. and Anr. V. Addisons Paints and Chemicals Ltd., (2003) 11 Supreme Court Cases 92 has at paras 26 and 27 observed as under:-
â26. Thus before the High Court or the Registrar directs the removal of the registered trade marks they must be satisfied in respect of the following:
(1) that the application is by a âperson aggrievedâ;
(2) that the trade mark has not bee used by the proprietor for a continuous period of at least five years and one month prior to the date of the application;
(3) there were no special circumstances which affected the use of the trade mark during this period by the proprietor.
27. The onus to establish the first two conditions obviously lies with the applicant, whereas the burden of proving the existence of special circumstances is on the proprietor of the trade marks. These conditions are not to be cumulatively proved but established seriatim. There is no question of the third condition being established unless the second one has already been proved and there is no question of the second one even being considered unless the High Court or the Registrar is satisfied as to the locus standi of the applicant.
In the case on hand, the condition (1) is satisfied. The condition (2) is non-use for a continuous period of five years from the date of actual entry in the register and three months before the date of application. Herein, the application was filed on 5.10.2007 and the non-use of the trade mark by the respondent has to be proved for the statutory period of five years and three months prior to the date of application. A copy of registration certificate produced by the learned counsel for the respondent shows that the impugned trade mark was actually entered in the register on 24.1.2007. In order to fall the present application within the ambit of section 47 (1) (b) of the Act, the impugned mark should have been actually entered on the register five years and three months or more prior to 5.10.2007. In other words, such application can be made only 5 years and three months or more after 24.1.2007. The statutory period of five years and three months has to be computed from the date of actual entry of the trade mark in the Register, not from the date of application. Therefore, the ground for removal of impugned mark under section 47 is not maintainable at this premature stage. Even otherwise also, the applicant has miserably failed to discharge the onus on it to prove that the registered trade mark has not been used at all or that it has no bona fide intention to use the same. On the contrary the impugned registration is not liable to be removed from the register on the face of documentary evidence filed by the respondent to prove its bona fide use of the mark since December 1998 till August 2007. As already stated that the respondent has proved that its mark has been in use since December, 1998 till August, 2007, we need not go into the question of any special circumstances under section 47 (3) of the Act.
25. Having regard to the above discussion, we do not think it is necessary to go into the other allegations that is to say whether the respondent is not the proprietor of the impugned trade mark in relation to all types of goods included in class 19 and whether the entry of the impugned trade mark has been made without sufficient cause and wrongly remaining on the register.
26. In view of the above, we see no merit in the rectification application and it must fail. Accordingly, we dismiss the rectification application. Since the rectification application is dismissed, the miscellaneous petition for stay becomes infructuous. However, there is no order as to the costs.