(Circuit Bench at Ahmedabad)
Honble Shri Syed Obaidur Rahaman, Technical Member:
1. This is an appeal filed against the order of the learned Assistant Registrar of Trade Marks, Ahmedabad dated 31st July, 2006. The appeal was taken up for hearing in the Circuit Bench Sitting at Ahmedabad on 21st February, 2008.
2. The appellant is one of the most reputed and the largest manufacturers of automobiles and auto parts in the world. Its business operations are spread in as many as 186 countries including 22 countries in Asia. The appellant is engaged in the business of designing and manufacturing automobiles and auto parts. It adopted the mark NISSAN as a prominent part of its corporate identity and as its main trade mark on or about 1933. The mark NISSAN is a part of the corporate identity and trading style of all its subsidiaries and affiliate companies throughout the world.
3. The appellant employs approximately 183,607 employees worldwide and recorded annual sales for the financial year ending 2005 to the tune of 9.428 billion Yen. The appellant has a presence in India by way of a wholly owned subsidiary in Mumbai which is known as Nissan Motor India Private Limited (âNMIPLâ). NMIPL was established in February 2005 and is capitalized at 42 million rupees (USD 960,000). NMPIL is responsible for the importation of Nissan Vehicles and spare parts as well as the sales, marketing, distribution and after sales support for Nissans products in India. NMIPL has 11 employees and will strengthen its presence in India in the coming times. The Appellant currently has five independent dealers in India, one each in Mumbai, Chennai, Delhi, Bangalore and Secunderabad. The appellant entered the Indian passenger car market in August 2004 with the launch of award â winning X-TRIAL compact sport utility vehicle (SUV). For the fiscal year March 2005 the aforesaid model was sold up to 130 units.
4. The appellant is the proprietor of a global portfolio of the trade mark NISSAN There are more than 259 registrations of the mark NISSAN in favour of the appellant in several countries around the world The said registrations are in respect of all the international classes, except international classes namely, 15, 29, 32, 33, 43, 44 and 45. The exclusivity conferred through such registrations has assured the consumers on a global basis that the appellant is the only source of products/goods and/or services produced or offered under the mark NISSAN. Further, the global consumer is also assured that the quality of such products/goods and/or services is maintained from country to country on a consistent basis as per the highest standards prevalent in the automobile industry. The appellant has used its trade mark NISSAN in several parts of the world in 186 countries including Japan, USA and India for several decades. The mark is used in approximately 22 countries in Asia. The mark NISSAN has become a well-known trade mark on a global basis including India.
5. The appellant spends enormous sums of money in advertising and promotion of the mark NISSAN through the electronic and print media. The trade mark NISSAN has become well known and recognized in the relevant sections of the public globally including India by virtue, inter-alia of the extensive promotional campaigns run by the appellant.
6. As a consequence of such a long and continuous use, the appellants mark NISSAN has become well entrenched in the minds of consumes and members of the trade and has come to be associated with the appellant and appellant only. Further, the trade mark NISSAN has become one of the most valuable and trusted brands in automobile sector and has acquired an enviable reputation and goodwill on a global basis including India.
7. The appellant filed the opposition being opposition No..AMD 63488 against the trade mark application No.683291 in class 7 in the name of JAYESH JAYANTILAL SHAH trading as Crossword Agro Industries. The goods covered by the said application in class 7 were âdiesel oil engines (not for land vehicles) and parts thereof, centrifugal pump. Monoblock pump set, Electric motors (not for land vehicles) being all goods included in class 7â.
8. Vide official letter No.TOP/GEN 7750 dated 4th December, 2003, which was received by the appellants attorneys on 8th December, 2003, the appellants were served with a copy of the counter statement filed by the Respondent No1/applicant and the appellants were directed to file its evidence in support of its opposition as per rule 50 of the Trade Mark Rules, 2002.
9. Since the receipt of the official letter and the counter statement, the appellants attorney started collating and collecting the evidence required to be filled. It is important to mention that the appellants are a global corporation having operations in parts of the world and trade mark registrations in almost all the important jurisdiction across the globe. The process of inquiry, correspondence, collection, sorting and collation of relevant evidence consumed considerable time.
10. The attorneys for the appellants applied for the permitted extension of time to file the evidence until March 8, 2004 and also requested a further extension until April 8, 2004 on the premises that the Learned Registrar would allow one further extension under his wide discretionary powers under Section 127 of the Trade Marks Act, 1999 On April 7, 2004 the appellants attorneys intimated the Learned Registrar that it would be relying on the facts stated in the notice of opposition as part evidence in support of opposition and reserved its rights to file further evidence later along with an appropriate interlocutory petition.
11. On 30th June 2004, the appellants filed an interlocutory petition, a copy of which is annexed with the petition as Annexure-4. The petition sought a relief for taking the evidence submitted therewith on record and also submitted amongst other things, the following:
(i) In view of the vast and extensive distribution network of the appellants company, the collection, collation and segregation of appropriate evidence of use of NISSAN consumed a lot of time
(ii) The efforts over the last six months to collect the evidence have never lacked in diligence and application which can be evidenced by the fact that voluminous and convincing evidence of the use and notoriety of NISSAN was collected.
(iii) Additionally, since the new trade mark law abruptly came into force, the appellant took some time to come to terms with the practice and procedure of the Trade Marks Registry in connection therewith, hence the delay. In line with several judicial pronouncements on delayed admission of relevant evidence, it is submitted that the doors to admitting evidence should be kept open for as reasonable a period as possible. We respectfully submit that our evidence was ready within 7 months of receipt of the applicants counter statement and the same is vital and relevant to the fair conduct of the instant proceedings.
12. The above said petition also submitted evidence in support of opposition by way of an affidavit of Mr. Yutaka Minezaki of the Appellant company alongwith all the exhibits and requested the Learned Registrar to take the same on record in the interest of justice. It was also submitted in the petition that the evidence was vital and extremely relevant to these proceedings and will allow the appellants to establish the malafide intention of the Respondent No.1 to adopt the trade mark NISSAN with the dishonest and fraudulent motives to misappropriate and trade upon the worldwide goodwill and reputation of word mark NISSAN which is associated with the products and business of the appellants alone on a global basis. The appellants also submitted that since the Respondent No.1 has not yet been invited to file its evidence, no prejudice would be caused to it if the evidence of the appellants was taken on record.
13. The Learned Registrar appointed a hearing to decide the above said petition on 5th January, 2005. The hearing was duly attended by the appellant herein and the representative of the Respondent No.1. The appellant vehemently argued before the Learned Registrar of Trade Marks that the delay in filing the evidence was attributed to the reasons mentioned in the petition and more specifically mentioned hereinabove in the preceding paragraphs. It was submitted by the appellant that the evidence of the appellants can be taken on record under Rule 53 read with wide discretionary powers vested in the Learned Registrar under Section 127 of the Trade Marks Act, 1999. In this regard, the appellants also relied upon the decision of the Honble High Court of Delhi 2000 PTC 24 (Del).
14. The Rule 53 of the Trade Marks Act, 1999 lays down that:
âNo further evidence shall be left on either side, but in any proceedings before the Registrar, he may at any time, if he thinks fit, give lave to either the applicant or the appellant to leave any evidence upon such terms as to costs or otherwise as he may think fitâ.
15. As mentioned above, the appellants informed the Learned Registrar that they wish to rely upon the grounds and contents of its notice of opposition as part evidence and reserved its rights to file further evidence in support of the opposition. The Learned Registrar, after hearing both the parties, dismissed the aforesaid interlocutory petition and ordered that the opposition bearing No. AMD 63488 is deemed to have been abandoned by the appellants.
16 It is submitted that the Honble Registrar erred in dismissing the aforesaid petition and not taken the evidence on record on the grounds that the Learned Registrar is vested with discretionary powers to take the evidence on record under Section 127(a) f the Trade Marks Act, 1999 in the interest of justice. The bonafide circumstance of the delay was duly explained and the Learned Registrar did not exercise his discretionary powers and dismiss the above said petition. It is further submitted that the evidence which was sought to be submitted by way of an affidavit is extremely vital and critical to decide the matter on merits.
17 The Trade Marks Act, 1999 is enacted to protect, inter-alia, the âwell-known trade marks and to prevent to misuse of the same It is submitted that if the case of the appellants is not decided on merits and on the basis of the evidence it submitted along with the aforesaid petition, immense prejudice will be caused to the appellants and its well known trade mark NISSAN which enjoys an enviable global reputation. The trade mark NISSAN is registered in India under registration No. 254745 dated 12th February 1969 in class 7 in respect of âtextile machinery including looms, spinning machinery and nitting machinery and parts thereof. The trade mark is also registered under registration No 196423 dated 10th June, 1960 in class 12 in respect of land vehicles and parts thereof The mark NISSAN and device is registered under trade mark registration No.200442 dated 31st January, 1961 in class 12 in respect of land vehicles and parts thereof The appellants relies upon the contents of its notice of opposition in TM-5 in this regard including the averments concerning the worldwide reputation of the mark NISSAN which is amply established in the affidavit of Mr. Yutaki Minezaki. The affidavit brought out several important facts such as world vide registrations of the mark NISSAN including copies thereof, list of Nissans subsidiaries on a global basis, extracts of Fortune magazine, annual reports, sales figures of the appellants etc. It is also mentioned that the global sales figures of the appellants from the year 1994 till 2002 which amounts to 39593311 million Japanese Yen. Further, the Indian sale figure in Japanese Yen (million) was also mentioned in the affidavit since the year 1980 till the year 2002 amounting to 19407 million Japanese Yen. It was submitted that the mark NISSAN has been extensively used in India and is being associated with the appellants alone well before the date of alleged adoption of the mark by Respondent No.1.
18. The appellant question the intention of Respondent No.1 herein with respect to the adoption of the mark NISSAN. The appellant calls upon Respondent No.1 to explain to the satisfaction of this Honble Board as to how it came to adopt the identical trade mark NISSAN. The appellant also deny that the Respondent No.1 was using the trade mark NISSAN since 1993. The adoption of the mark NISSAN by Respondent No.1 is against the letter, spirit and meaning of Trade Marks Act, 1999 and the well established principles of trade marks law by various Honble High Courts and Honble Supreme Court of India
19. The appellants initiated opposition proceedings being AMD 57965 against another application of Respondent No.1 and the evidence adduced therein clearly demonstrate the exclusive rights of appellants over the trade mark NISSAN. It is also submitted that Section 11(2) of the Trade Marks Act, 1999 specifically protects the well-known trade marks. The mark NISSAN is eligible to fall in this category of well known trade marks.
20. The Learned Registrar decided to order that the opposition was abandoned despite issuing an official letter to the effect that the appellant had relied upon the facts stated in the notice of opposition.
21. The appellant humbly submits that Learned Registrar of the Trade Marks ought to have taken the evidence on record and decided the matter on its merits in the interest of natural justice and fair trial. Also prayed to take the evidence submitted alongwith the interlocutory petition dated 30.6.2004 on record and to allow the instant appeal and allow the opposition No. AMD 63488.
22. In respondent case is that the Respondent No.1 herein is the original appellant in application No. 683291 in Class-7 to register the trade mark NISSAN, the subject matter of the opposition proceedings initiated by the appellant. The respondent is doing established business of manufacturing, marketing and exporting various machinery goods, inter-alia, âDiesel Oil Engines (not for land vehicles). Centrifugal Pumps, Monoblock Pump sets, Electric Motors (not for land vehicles) being all agricultural implements included in Class-7â.
23. The respondent No.1 â original applicant has, in order to distinguish his aforesaid goods from the goods of others, honestly and bonafidely adopted and started using a trade mark label in the form of logo, containing and consisting of the word CROSS as well as the device of cross and the word NISSAN in peculiar and novel lettering style (hereinafter referred to as our âsaid trade markâ) since the year 1993. The respondent begs to clarify as to the adoption and use of the said trade mark, containing and consisting of the word CROSS and the device of cross and the word NISSAN at the bottom. Since, the applicants trading name is âCrossword Agro Industries and hence to keep the identity of the applicant, the word CROSS and the device of cross is adopted while the word NISSAN in vernacular language ie. In Gujarati and Hindi, means âtargetâ and hence the said word is adopted in the logo. The word NISSAN is a dictionary word and is also a noun and therefore, no one can say that the said word NISSAN is either invented or coined word. Therefore, the adoption and use of the said trade mark logo containing and consisting of the word CROSS at the top and the device of cross at the centre and the word NISSAN at the bottom, by the Respondent No.1, is absolutely bonafide and honest one and without any prejudice. The said trade mark logo as a whole is otherwise considered to be âdistinctive in the eyes of law. The adoption and the use of the said logo as âthe trade markâ in respect of the aforesaid goods by the respondent since the year 1993 is bonafide and honest and therefore, the Respondent No.1 is well within his right to use the same without any interference of the appellant and in fact, the respondent is using his said trade mark logo openly, continuously, extensively and voluminously since the year 1993 without there being any confusion or deception as to the trade origin of the goods in the markets during all these years.
24. The respondent No.1 further submits that by virtue of honest and bonafide adoption and open, continuous and extensive user of the said trade mark logo of CROSS NISSAN since the year 1993, the goods sold and exported thereunder during all these years, have become highly distinctive and distinguishable among the trade and public. The said trade mark is exclusively associated and connected with the gods of the present respondent since the year 1993 and as such, the respondent is and claims to be âthe proprietorâ thereof as per the common law rights and also, within the meaning of Section18(1) of the Trade Marks Act, 1999.
25. The Respondent No.1 has also spent considerable sums and efforts in popularizing his said trade mark since the year 1993 and as such as and when the said trade mark is called for or described off, it is meant and understood, in the trading public and among the purchasers/customers, as the gods of the respondent only and of none else.
26. It is further to state that the appellant has opposed the registration of the trade mark NISSAN under application No. 683291 of the present respondent on the same and identical grounds as those urged in their earlier opposition ie. Opposition No. AMD-57965. Furthermore, the opponent lodged his opposition, being Opposition No. AMD-6348 at the time when he had already tendered his affidavit evidence in earlier Opposition No. AMD-57965. Therefore, the grounds of opposition offered by the opponent in both these oppositions are materially the same and on the other hand the opponent was already having all the necessary evidences with him there was no justification or necessity on the part of the opponent to seek any extension of time to file evidence in support of opposition No. AMD-63488 the subject matter of the present proceedings. It is also relevant to state that through the notice of opposition was filed on 29.11.2002 and the ld. Registrar served a copy of counterstatement on 4.122003 with the directions to file his evidence within two months the appellant was having practically time of atleast one year to make and prepare the necessary evidences and the appellant might be vigilant to honour the time schedule so prescribed under Rule-50(1) of the Rules of 2002. The appellant no sooner the notice of opposition is lodged he should take steps for drafting his evidences to file the same within the time limit so prescribed without waiting for the issuance of the Notice by the Registrar of Trade Marks. As aforesaid, the appellant offered his opposition against two applications of the present respondent on identical grounds and more particularly the appellant has already tendered his evidence by way of affidavit dated 24.5.2002 of Mr. Hiroshi Horie in earlier opposition, there was absolutely no necessity for him to seek for any extension of time. In any case, the appellant has shown no plausible ground or reason not to file the evidence within the prescribed time limit of two months. The respondent say and submit that as soon as the prescribed time limit of two months is expired and the opponent failed to take the necessary actions within the said statutory time limit, the rights of registration in the said trade mark are deemed to have been granted within the meaning of Section 23(1) of the Act and therefore, the appellant has caused further and serious prejudice and embarrassment to the rights of the respondent by filing the impugned interlocutory petition as well as the appeal under section 91 of the Act before this Appellate Board, the conduct of the appellant is neither justified nor bonafide and as such the appeal requires to be dismissed in the fair play of justice.
27. The respondent further submits that the appellant/opponent, though was having evidences with him and could be tendered within the prescribed time limit of two months, the appellant by his own conduct, refrained from complying with the directions issued by the ld. Registrar vide Notice dated 4.12.2003 and thereby expressly abandoned his opposition. The chronology of dated and events in Opposition No. AMD-57965 as well as in AMD-63488 clearly demonstrate the in-action and willful abandonment of the Opposition No. AMD-63488 by the appellant.
28. The respondent No.1 also submits that the appellant is not entitled to have any relief or reliefs as prayed for in para 31 of the Memo of Appeal and therefore, the impugned appeal requires to be dismissed in the larger interest of justice.
29. The respondent further submits that the grounds urged by the appellant are absolutely false, frivolous, fictious and contrary to the law and facts and hence, the Honble Appellate Board would be pleased to dismiss the appeal by awarding the exemplary costs to the present respondent in the larger interest of justice.
30. The appeal was taken up for hearing on 21.2.2008 in the Circuit Bench Sitting at Ahmedabad. The Assistant Registrar view is that this order is disposed of the aforesaid interlocutory petition filed by the Petitioner / Opponent with the request to allow the IP and take the evidence filed in support of opposition on record under Rule 53 as further evidence and to provide an opportunity to present his case.
31. In the impugned order under appeal the Assistant Registrar held as under:
Rule 53 literarily requisites two conditions (i) evidence filed must be in furtherance of earlier evidence either in support of opposition / application (ii) it can be taken on record if the Registrar is satisfied with the reasons assigned to file further evidence. In the instance case, when there is no evidence on record in support of opposition, the question of the Registrar being or not being satisfied with the grounds assigned in filing of such evidence does not arise as a compliance of second requisite. Rule 53 of the Trade Mark Rules 2002 is mutatis mutandis same as the erstwhile Rule 53.
âThat the plain reading of Rule 56 of the Rules depicts the material point that this Rule is not a substitute to Rule 53 and 54. It is an absolutely independent provision. The term âfurther evidenceâ indicates compliance of Rules 53 and 54. In the absence of compliance of the said Rules, Rule 56 cannot come into operation. Hence, Applicants / Opponents adducing evidence under Rule 56 is inoperative and irrelevant until strict compliance of Rules 53 and 54 is made. Similarly, additional evidence is required to be filed to the main evidence already filed under Rules 53 and 54 otherwise, there would be no significance and weightage of evidence filed under Rule 56. In this view of the matter, the evidence accompanying the interlocutory petition cannot be taken on record under either Rule 53 or Rule 56 and Rule 53(2) being mandatory in nature, the opposition stands abandoned.â
In view of the legal proposition as above, the evidence filed in support of opposition by way of IP cannot be termed as further evidence and cannot lead to the opponents case any further.
32. The learned advocate for the opponents urged at length and heavily relied upon various decisions including that of the High Court of Delhi in Hastimal Jain Case which has already been appropriately dealt with in the decisions reported in 2005 (1) PTC 14 (Reg.). However, the extension of time to file evidences according to Section 21(4) and Rule 50, 51, and 52 formed by the Central Government under section 157(2) (vii) case be granted for a period not exceeding one month in aggregate, which in the present case was over as on 8.4.2004 and according to the legislature for non-filing of evidence in support of opposition within the time prescribed in Rule 50(1), the opponents deemed to have abandoned the impugned opposition on the same day. Further, it is pertinent to note that the whole opposition proceedings including the extension of time to file the evidence ins exclusively governed under section 21 and the rules formed by the Central Government to carry out the provision and the scheme of the same.
33. Even assuming the provisions of Section 131 of the Act are applicable for grant of extension in the present case, the extension to file evidence under Rule 105(2) can only be granted for the maximum period prescribed by the Rules. These rules also formed by Central Government under section 157 (1) (XXXVI) to carry out the scheme and the provision of the aforesaid section 131 of the Act, therefore, the opponents cannot plead that the extension of time to file evidence in support of opposition under section 131 can be granted for unlimited period without reading the section with rule 105(2). Therefore, if all the provisions regarding grant of extension of time including section 131 and Rule 105(2) thereunder, the Registrar, as per law, cannot, in any case, grant the extension for a period exceeding one month. This drastic change in the new enactment puts positive embargo on the Registrar and he is not permitted to act in derogation of the mandate provided in new legislature which is in force. Thus, the submission and the propositions of the law urged by opponents relying upon the various judgments, pursuant t the aforesaid drastic changes in the provisions of new law cannot be accepted and also the grounds assigned in IP that the opponents have been collecting the documentary evidence and information from various sources and the process of collection and sorting of documents consumed a considerable time, and that the delay on their part does not take away from their diligent efforts and desire to vigorously protect and defend their Intellectual Property Right in the Trade Mark NISSAN, and the new Trade Mark Law came into force abruptly, therefore, it took them sometimes to come to term with the practice and procedure of the Trade Mark Registry in connection therewith. Hence, the delay cannot be agreed to.
34. Shri Tarwinder Singh and Deeraj Seth, Learned counsels for the appellant relied upon the following judgements:-
(i) 2007(34) PTC 1(Guj) Wyeth Holdings Corpn, and Another versus Controller General of Patents, Designs and Trade Marks.
(ii) 2005 (3) PTC 444 (IPAB) Asian Paints Limited versus Registrar of Trade Marks and Anr.
(iii) 2007 (35) PTC 820 (IPAB) UCB versus Torent Pharmaceuticals Limited and Ors
This citation are informed in Form TM-56 for allow the extension of time. Taking the evidence in record and heard the matter on merits.
36. Shri Y. J. Jaswani, learned counsel for the respondent relied upon the following judgements:-
(i) AIR 1967 SC 799 - Central Bank of India versus Gokal Chand - Appeal shall not be lie after expiry of time. No appeal shall like as per under Section 31 of the Trade Mark Act, 1999 (against the order of Assistant Registrar).
(ii) (2005) 4 Supreme Court Cases 480 â Kailash versus Nanhku and others
(iii) AIR 1975 Supreme Court 915 â. Ramchandra Keshav Adke (Dead) by Lrs. Versus Govind Joti Chavare and others
(iv) AIR 1972 Gujarat 26 - Chimanlal Chhhaldas Patel versus Lilachand Veniram Panchal and another
(v) AIR 1997 Karnataka 370 â Smt. Parvathamma versus Muniyappa and others
(vi) AIR 1994 Rajasthan 110 â Gopal versus Hira Chand and others
(vii) AIR 1999 Allahabad 74 â Narain Das versus IInd Addl. Dist. Judge Morabdabad and another
(viii) 2005 (0) GLHEL 215835 â Videocon Narmada Electronics Ltd. versus Navbharat Ferro Alloys Ltd.
(ix) IPAB Order No.67 of 2007 O/3/2005TM/AMD dated 9.5.2007
(x) Special Civil Application No.5042 of 2006 â in the High Court of Gujarat at Ahmedabad â Wyeth Holdings Corpn and anothers versus Controller General of Patents, Designs and Trade Marks and Others
37. After considering all the records and facts submitted by both the parties and the judgements placed before us, we are of the view, we direct the Assistant Registrar that the evidence filed by the appellant/opponent ought to be taken on record. We, accordingly, allow the appeal, set-aside the impugned order dated 31.7.2006 and remand back the case to the Registry of Ahmedabad with direction to Registrar take the evidence submitted alongwith the interlocutory petition dated 30.6.2004 on record and decide the matter on merit. There is no order as to costs.