Paras Pan Products Vs. Ssg Pharma Pvt. Ltd. - Court Judgment

Excerpt:
1. word 'satmola' was sought for registration in class 30 under application no. 1283413 dated 11th may, 2004 by the above named applicant. the mark was claimed to be used since 17th april, 1993.eventually the application was advertised before acceptance under section 20(1) proviso vide trade marks journal no. 1328 supplementary (5) dated 30th march, 2005 at page 9072.2. on 21st july, 2005 a notice of opposition on form tm-5 was lodged by the above named opponents objecting to the registration of the aforesaid impugned mark of the applicant on the following grounds: that the opponents are carrying on their old established business as manufacturers and merchants of ayurvedic medicinal preparations, tasty chewable tables, diggestive tablets, jaljeera, churan etc. since 1983 and are the registered proprietors of the trade mark 'satmola' by way of assignment deed dated 19th june, 2001 under nos. 404555 and 415672 and that various applications in different classes are pending for registration as per the details contained in para 5 of the notice of opposition.3. that the opponents' various labels under the brand name 'satmola' are registered under the indian copyright act, 1957 as per details contained in para 6 of tm-5.4. that the opponent's aforesaid marks and labels containing the word 'satmola' are used and advertised extensively throughout the country and, therefore, has come to be identified and exclusively associated with them qua the goods contained therein and, therefore, the registration of the impugned mark, which is identical to the aforesaid registered mark of the opponent is likely to cause confusion and deception during the course of trade and hence prohibited for registration under section 11 read with section 12 of the act.5. that the very adoption of the impugned mark by the applicant is with an ulterior motive to take an undue advantage on the opponents' goodwill and reputation and, therefore, he cannot claim any proprietary rights under section 18(1) of the act.6. that the applicant herein narottam chouhan is a director of m/s.paras pan products private limited and has complete knowledge of the opponents' goodwill and reputation under the brand name 'satmola' as the opponents have already filed a suit against m/s. paras pan products private limited in the court of ld. a.d.j., delhi under suit no. 537 of 2003 and the same has been decreed in favour of the opponents.7. that the opponents' aforesaid mark 'satmola' is a well-known trade mark on account of its huge reputation and goodwill and the opponents have already filed a suit against this applicant for infringement and passing off in the court of ld. a.d.j., delhi and the same is pending.8. that the claim of use of the impugned mark by the applicant is wrong and in any case he is put to strict proof thereof. the opponents took objections to the registration of the impugned mark under sections 11,12 and 18 of the act and also prayed for exercise of the discretion of this tribunal, adverse to the applicant, under section 18(4) of the act.9. in his counter-statement filed on 29th august, 2005 by shri narottam chouhan it is stated that the impugned mark is being used by him since the year 1993 continuously and extensively. it is stated by the applicant that the opponents' products are not available in the eastern region of the country whereas his products are mainly available in this region. rest of the counter-statement contains mere denial of the opponents' averments.10. after completion of the evidence as per the rules the matter was set down for hearing for the first time on 19th january, 2006 which was adjourned to 27th february, 2006 along with similar opposition between the parties under no. kol-176949. on 27th february, 2006 the applicant filed an interlocutory petition on behalf of m/s. paras pan products private limited with the request that the documents filed along the same may be taken on record. shri j.p. sharma, learned advocate for the opponents appeared on the hearing on 27th february, 2006 along with shri rajesh sharma, advocate and stated that they have no objection to the interlocutory petition of the applicant. he stated that the documents filed along with the said petition are irrelevant and in any case he has no objection if the same are taken on record, if found relevant for the just decision of the case. the matter was heard on 27th february, 2006 in presence of shri j.p. sharma, advocate along with shri rajesh sharma, advocate for the opponents and shri h.p.shukla, advocate for the applicant.11. shri j.p. sharma, learned advocate for the opponents submitted that the opponents are the registered proprietors of the word 'satmola' and label in various classes including in class 30 under no. 1215787 and are being used continuously and extensively from the year 1983. shri sharma stated that on account of wide publicity and extensive use the word 'satmola' is exclusively identified and associated with the goods of the opponents. he stated that the opponents are advertising their registered trade marks through various print and electronic media throughout the country including the state of west bengal and have achieved the sales turn over of more than 32 crores coupled with advertisement expenses of more than 2 crores till date. he stated that the opponents have already filed a suit in the hon'ble court of a.d.j., delhi against m/s. paras pan products private limited, calcutta vide suit no. 537 of 2003 in which the applicant herein narottam chouhan is the director. he stated that the said suit has been decreed in favour of the opponents and invited my attention to the order dated 19th november, 2004 passed by the ld. a.d.j., delhi enclosed as annexure 'b' to the affidavit of sunil kumar filed under rule 50. he stated that the very adoption of the impugned mark by the applicant is with an ulterior motive to trade upon and benefit from the goodwill and reputation already enjoyed by the opponents and, therefore, he cannot claim any proprietary rights under section 18(1) of the act. he stated that the aforesaid suit was based on the opponents' label mark consisting of the word 'satmola'. shri sharma took me through the evidence of use and reputation filed by the opponents in support and stated that the same has gone unrebutted and unchallenged by the applicant as the evidence filed by the applicant in these proceedings under rule 51 along with the interlocutory petition dated 27th february, 2006 is by way of an affidavit of narottam chouhan in his capacity as the director of m/s.paras pan products private limited. he stated that the evidence enclosed with the interlocutory petition relates to m/s. paras pan products private limited. shri sharma stated that this evidence filed by the applicant cannot be taken on record being filed wrongly. shri h.p. shukla, learned advocate for the applicant submitted that the opponents' products under the brand name 'satmola' are not available in the eastern region of the country and he is agreeable to restrict the goods under the impugned mark for sale in eastern zone. shri shukla strictly denied the other submissions of shri sharma.12. it appears that the applicant is confused as to whether he is using the impugned mark in his individual capacity as proprietor of m/s.paras pan products or he is using the impugned mark as director of m/s.paras pan products private limited. however the fact remains that there is no evidence on record filed by the applicant in support in these proceedings and whatever evidence is filed is filed wrongly as given above and, therefore, needs no attention or consideration by this tribunal. the impugned application was filed on 11th may, 2004 whereas the civil suit under no. 537 of 2003 was filed against m/s. paras pan products private limited in which the present applicant was director in the year 2003 by the opponents on the basis of their use and reputation of the trade mark 'satmola' (label). under these circumstances it is apparent that the applicant has the knowledge and existence of the opponents' trade mark well before the impugned application was made. it may also be mentioned here that the opponents also filed an interlocutory petition on 8th march, 2006 stating that narottam chouhan filed a wrong affidavit in the proceedings under opposition no.kol-176949 to application no. 1204749 for registration of a label mark consisting of the word 'harfanmola' along with other features between the same parties and that in his affidavit he has deposed wrongly about the fact of pendency of the court case. shri shukla, learned advocate for the applicant filed an affidavit vide his letter dated 22nd april, 2006 along with the affidavit of narottam chouhan stating that there was some mistake due to communication gap in filing the earlier affidavit and the same may be corrected. a copy of this affidavit was served on the opponents and in view of this fresh affidavit, admitting the mistake due to the communication gap, the interlocutory petition dated 8th march, 2006 of the opponents deserves no further action and the same is disposed of accordingly.13. now, coming to the merits of the case. i have gone through the submissions of both the parties and also glanced through the evidence filed in these proceedings. the opponents are using and advertising their trade mark extensively throughout the country including the eastern region as is evident from the annexures filed along with the affidavit of sunil kumar under rule 50. i have also gone through the order dated 19th november, 2004 passed by the ld. a.d.j., delhi restraining m/s. paras pan products private limited for use of their label. it may be stated here that the use and reputation of the word 'satmola' was also recognized by the hon'ble district judge in his order and keeping in view the fact that the applicant has failed to file any evidence or the applicant has not been able to substantiate his use of the impugned mark as claimed since the year 1993 in these proceedings, the objection to its registrability as raised by the opponents under section 11 shall mandatorily exist. similarly there is a question mark on the honesty of the applicant in adopting the impugned mark as the same appears to have been adopted with an ulterior motive on his part to trade upon and benefit from the goodwill and reputation enjoyed by the opponents and hence there is no question of granting any proprietary rights or entitling him the proprietary rights in the impugned mark under section 18(1) of the act and the issue is decided accordingly. similar shall be the fate of exercise of the discretion of this tribunal and the same is exercised adverse to him by way of refusing the impugned applicant under section 18(4) of the act.keeping in view the overall facts and circumstances of the case especially the fact that there is no evidence filed in these proceedings and the very adoption of the impugned mark by the applicant is shrouded with doubts and that the opponents are already the prior registered proprietors of the trade mark 'satmola' in class 30 itself under application no. 1215787.14. in view of the foregoing, the opposition no. kol-196444 is allowed with costs and the application no. 1283443 in class 30 is refused registration. the opponents are entitled to a cost of rs. 3,500 (rupees three thousand five hundred only) of these proceedings.

Judgment:
1. Word 'SATMOLA' was sought for registration in class 30 under Application No. 1283413 dated 11th May, 2004 by the above named Applicant. The mark was claimed to be used since 17th April, 1993.

Eventually the application was advertised before acceptance under Section 20(1) proviso vide Trade Marks Journal No. 1328 Supplementary (5) dated 30th March, 2005 at page 9072.

2. On 21st July, 2005 a notice of opposition on Form TM-5 was lodged by the above named Opponents objecting to the registration of the aforesaid impugned mark of the Applicant on the following grounds: That the Opponents are carrying on their old established business as manufacturers and merchants of ayurvedic medicinal preparations, tasty chewable tables, diggestive tablets, jaljeera, churan etc. since 1983 and are the registered proprietors of the trade mark 'SATMOLA' by way of assignment deed dated 19th June, 2001 under Nos. 404555 and 415672 and that various applications in different classes are pending for registration as per the details contained in para 5 of the notice of opposition.

3. That the Opponents' various labels under the brand name 'SATMOLA' are registered under the Indian Copyright Act, 1957 as per details contained in para 6 of TM-5.

4. That the Opponent's aforesaid marks and labels containing the word 'SATMOLA' are used and advertised extensively throughout the country and, therefore, has come to be identified and exclusively associated with them qua the goods contained therein and, therefore, the registration of the impugned mark, which is identical to the aforesaid registered mark of the Opponent is likely to cause confusion and deception during the course of trade and hence prohibited for registration under Section 11 read with Section 12 of the Act.

5. That the very adoption of the impugned mark by the Applicant is with an ulterior motive to take an undue advantage on the Opponents' goodwill and reputation and, therefore, he cannot claim any proprietary rights under Section 18(1) of the Act.

6. That the Applicant herein Narottam Chouhan is a Director of M/s.

Paras Pan Products Private Limited and has complete knowledge of the Opponents' goodwill and reputation under the brand name 'SATMOLA' as the Opponents have already filed a suit against M/s. Paras Pan Products Private Limited in the Court of Ld. A.D.J., Delhi under Suit No. 537 of 2003 and the same has been decreed in favour of the Opponents.

7. That the Opponents' aforesaid mark 'SATMOLA' is a well-known trade mark on account of its huge reputation and goodwill and the Opponents have already filed a suit against this Applicant for infringement and passing off in the Court of Ld. A.D.J., Delhi and the same is pending.

8. That the claim of use of the impugned mark by the Applicant is wrong and in any case he is put to strict proof thereof. The Opponents took objections to the registration of the impugned mark under Sections 11,12 and 18 of the Act and also prayed for exercise of the discretion of this Tribunal, adverse to the Applicant, under Section 18(4) of the Act.

9. In his counter-statement filed on 29th August, 2005 by Shri Narottam Chouhan it is stated that the impugned mark is being used by him since the year 1993 continuously and extensively. It is stated by the Applicant that the Opponents' products are not available in the eastern region of the country whereas his products are mainly available in this region. Rest of the counter-statement contains mere denial of the Opponents' averments.

10. After completion of the evidence as per the rules the matter was set down for hearing for the first time on 19th January, 2006 which was adjourned to 27th February, 2006 along with similar opposition between the parties under No. KOL-176949. On 27th February, 2006 the Applicant filed an interlocutory petition on behalf of M/s. Paras Pan Products Private Limited with the request that the documents filed along the same may be taken on record. Shri J.P. Sharma, learned advocate for the opponents appeared on the hearing on 27th February, 2006 along with Shri Rajesh Sharma, Advocate and stated that they have no objection to the interlocutory petition of the Applicant. He stated that the documents filed along with the said petition are irrelevant and in any case he has no objection if the same are taken on record, if found relevant for the just decision of the case. The matter was heard on 27th February, 2006 in presence of Shri J.P. Sharma, Advocate along with Shri Rajesh Sharma, Advocate for the Opponents and Shri H.P.Shukla, Advocate for the Applicant.

11. Shri J.P. Sharma, learned advocate for the Opponents submitted that the Opponents are the registered proprietors of the word 'SATMOLA' and label in various classes including in class 30 under No. 1215787 and are being used continuously and extensively from the year 1983. Shri Sharma stated that on account of wide publicity and extensive use the word 'SATMOLA' is exclusively identified and associated with the goods of the Opponents. He stated that the Opponents are advertising their registered trade marks through various print and electronic media throughout the country including the State of West Bengal and have achieved the sales turn over of more than 32 crores coupled with advertisement expenses of more than 2 crores till date. He stated that the Opponents have already filed a suit in the Hon'ble Court of A.D.J., Delhi against M/s. Paras Pan Products Private Limited, Calcutta vide Suit No. 537 of 2003 in which the Applicant herein Narottam Chouhan is the Director. He stated that the said suit has been decreed in favour of the Opponents and invited my attention to the order dated 19th November, 2004 passed by the Ld. A.D.J., Delhi enclosed as Annexure 'B' to the affidavit of Sunil Kumar filed under Rule 50. He stated that the very adoption of the impugned mark by the Applicant is with an ulterior motive to trade upon and benefit from the goodwill and reputation already enjoyed by the Opponents and, therefore, he cannot claim any proprietary rights under Section 18(1) of the Act. He stated that the aforesaid suit was based on the Opponents' label mark consisting of the word 'SATMOLA'. Shri Sharma took me through the evidence of use and reputation filed by the Opponents in support and stated that the same has gone unrebutted and unchallenged by the Applicant as the evidence filed by the Applicant in these proceedings under Rule 51 along with the interlocutory petition dated 27th February, 2006 is by way of an affidavit of Narottam Chouhan in his capacity as the Director of M/s.

Paras Pan Products Private Limited. He stated that the evidence enclosed with the interlocutory petition relates to M/s. Paras Pan Products Private Limited. Shri Sharma stated that this evidence filed by the Applicant cannot be taken on record being filed wrongly. Shri H.P. Shukla, learned advocate for the Applicant submitted that the Opponents' products under the brand name 'SATMOLA' are not available in the eastern region of the country and he is agreeable to restrict the goods under the impugned mark for sale in eastern zone. Shri Shukla strictly denied the other submissions of Shri Sharma.

12. It appears that the Applicant is confused as to whether he is using the impugned mark in his individual capacity as proprietor of M/s.

Paras Pan Products or he is using the impugned mark as Director of M/s.

Paras Pan Products Private Limited. However the fact remains that there is no evidence on record filed by the Applicant in support in these proceedings and whatever evidence is filed is filed wrongly as given above and, therefore, needs no attention or consideration by this Tribunal. The impugned application was filed on 11th May, 2004 whereas the Civil Suit under No. 537 of 2003 was filed against M/s. Paras Pan Products Private Limited in which the present Applicant was Director in the year 2003 by the Opponents on the basis of their use and reputation of the trade mark 'SATMOLA' (label). Under these circumstances it is apparent that the Applicant has the knowledge and existence of the Opponents' trade mark well before the impugned application was made. It may also be mentioned here that the Opponents also filed an interlocutory petition on 8th March, 2006 stating that Narottam Chouhan filed a wrong affidavit in the proceedings under Opposition No.KOL-176949 to Application No. 1204749 for registration of a label mark consisting of the word 'HARFANMOLA' along with other features between the same parties and that in his affidavit he has deposed wrongly about the fact of pendency of the Court case. Shri Shukla, learned advocate for the Applicant filed an affidavit vide his letter dated 22nd April, 2006 along with the affidavit of Narottam Chouhan stating that there was some mistake due to communication gap in filing the earlier affidavit and the same may be corrected. A copy of this affidavit was served on the Opponents and in view of this fresh affidavit, admitting the mistake due to the communication gap, the interlocutory petition dated 8th March, 2006 of the Opponents deserves no further action and the same is disposed of accordingly.

13. Now, coming to the merits of the case. I have gone through the submissions of both the parties and also glanced through the evidence filed in these proceedings. The Opponents are using and advertising their trade mark extensively throughout the country including the eastern region as is evident from the annexures filed along with the affidavit of Sunil Kumar under Rule 50. I have also gone through the order dated 19th November, 2004 passed by the Ld. A.D.J., Delhi restraining M/s. Paras Pan Products Private Limited for use of their label. It may be stated here that the use and reputation of the word 'SATMOLA' was also recognized by the Hon'ble District Judge in his order and keeping in view the fact that the Applicant has failed to file any evidence or the Applicant has not been able to substantiate his use of the impugned mark as claimed since the year 1993 in these proceedings, the objection to its registrability as raised by the Opponents under Section 11 shall mandatorily exist. Similarly there is a question mark on the honesty of the Applicant in adopting the impugned mark as the same appears to have been adopted with an ulterior motive on his part to trade upon and benefit from the goodwill and reputation enjoyed by the Opponents and hence there is no question of granting any proprietary rights or entitling him the proprietary rights in the impugned mark under Section 18(1) of the Act and the issue is decided accordingly. Similar shall be the fate of exercise of the discretion of this Tribunal and the same is exercised adverse to him by way of refusing the impugned applicant under Section 18(4) of the Act.

Keeping in view the overall facts and circumstances of the case especially the fact that there is no evidence filed in these proceedings and the very adoption of the impugned mark by the Applicant is shrouded with doubts and that the Opponents are already the prior registered proprietors of the trade mark 'SATMOLA' in class 30 itself under Application No. 1215787.

14. In view of the foregoing, the Opposition No. KOL-196444 is allowed with costs and the Application No. 1283443 in class 30 is refused registration. The Opponents are entitled to a cost of Rs. 3,500 (Rupees three thousand five hundred only) of these proceedings.