INTELLECTUAL PROPERTY APPELLATE BOARD
2ND Floor, Annexe –I, Guna Complex, 443, Anna Salai, Teynampet,
Chennai – 600 018.
(CIRCUIT SITTING AT DELHI)
TRA No.100/2004-TM/DEL [CO No.23/1989]
WEDNESDAY, THIS THE 12th DAY OF JANUARY, 2005.
Hon’ble Shri Justice S. Jagadeesan … Chairman
Hon’ble Dr. Raghbir Singh … Vice Chairman
Son of Shri Budhu Ram,
Trading as Alka Food Industries,
17, Building Harphool Singh,
Clock Tower, Subzimandi,
Delhi – 110 017. … Petitioner
(By Advocate Shri M.K. Miglani)
1. Smt. Kaushalya Devi,
Trading as M/s Anil Food Industries,
308/5, Shahazada Bagh,
Old Rohtak Road,
Delhi – 110 035.
2. Ramesh Chander,
S/o Shri Budhu Ram,
308/5, Shahazada Bagh,
Old Rohtak Road,
Delhi – 110 035.
3. The Registrar of Trade Marks,
(Trade Marks Registry),
Okhla Industrial Estate,
New Delhi – 110 020. … Respondents
(By Advocate Shri Shailen Bhatia for Respondent No.2)
O R D E R (No.9/2005)
Hon’ble Dr. Raghbir Singh, Vice Chairman :
The petition under sections 32, 46. 56 and 107 of the Trade and Merchandise Marks Act, 1958 filed as CO 23/89 in the High Court of Delhi has been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and has been numberd as TRA 100/2004/TM/DEL.
2. The petitioner has moved an application dated 10.8.2004 under Order 22 Rule 4 read with section 151 of CPC praying for deletion of Respondent No.1 as a party to the case. It has been submitted that to begin with M/s Anil Food Industries was a sole proprietorship firm of Smt.Kaushalya Devi, Respondent No.1. Through a partnership deed dated 3.4.1982, the firm became a partnership firm consisting of two partners, namely, R1 and R2. Thereafter, the firm was dissolved by virtue of a dissolution deed and R-2 had taken over the said firm being the sole proprietor of the firm. First respondent expired on 15.10.2000. Thus first respondent is no more the necessary party. Second respondent had no objection to this deletion. The said request was accordingly allowed.
3. According to the petitioner, he is a holder of trade mark ‘ANIL’ under No.379288 in class 30 as of 5.8.1981. He is also holding registration of copyright in an artistic polybag titled ‘ANIL’ A-36682/82. First respondent obtained registration of trade mark ‘ANIL’ under No.350996 in class 30. Second respondent filed suit No.82/88 against the petitioner before the Delhi High Court to restrain the petitioner from using the trade mark ‘ANIL’. In view of these circumstances, the petitioner is an aggrieved person in terms of section 56 of the Act.
4. The petitioner claims that the impugned registration is unlawful and invalid and was wrongly registered and it wrongly remains on the Register of Trademarks for the reasons stated by him. Respondents played fraud upon the Trade Marks Registry in obtaining the registration. Respondents wrongly claimed that they are the proprietor of the trade mark ‘ANIL’. The user claimed by them as of 5.4.1972 was incorrect. The bills filed in the Registry to obtain registration nearly 16 in number are fabricated. Certificate of registration was secured after six years after the advertisement of the trade mark and thus it is deemed to have lapsed and the mark was deemed to have been abandoned. There are contradictions in the proprietor’s name. In the certificate of registration issued, Smt.Kaushalya Devi has been shown as proprietor. In Suit No.82/88 Anil Food Industries has been shown as a partnership firm. The mark was not distinctive of mark of the respondent. On the date of application there had not been a user of the mark for the last five years and one month. The mark ‘ANIL’ was deceptive on the date of its registration and it continues to be as such in terms of section 11(a) of the Act. The mark contravenes the provisions of section 11(e) of the Act as on the date of this petition also. The mark was wrongly registered and offends section 12(1) of the Act. The petitioner also prayed for the exercise of discretion under section 18(4) of the Act.
5. In the written statement filed by respondent No.2 on 8.2.90, all material averments of the petitioner were denied. Respondent No.2 submitted that the grounds of fraud taken by the petitioner are vague as no particulars of any fraud have been mentioned. Respondent No.2 generally submitted that allegations have been made without giving specific instances of violation of law, if at all, committed by the respondent.
6. The petitioner in the rejoinder dated 7.11.90 filed by him, reiterated generally all the averments made by him in the petition. In the affidavit along with the evidences filed by R-2 on 5.8.04 the material thrust is on the reiteration of submissions made by R2 in his written statement filed earlier. Besides, Respondent No.2 submitted that in the year 1972 the firm M/s Anil Food Industries adopted the trade mark for the goods Confectionery. On 4.7.79 Smt. Kaushalya Devi the then sole proprietor of that firm filed an application for registration of the mark in Class 30 being application 350996. In due course, the same was registered for the territories of Madhya Pradesh, Rajasthan, Punjab, Haryana and Jammu and Kashmir and the Union territories of Chandigarh and Delhi. Respondent No.2 asserted that trade mark No. 350996 is protected under section 32 of the Act. No grounds other than those provided in clauses (a), (b) and (c) of that Section can be agitated by the petitioner. He further submitted that even the benefit of clauses (a), (b) and (c) is not available to the petitioner in the present case.
7. The petitioner in his affidavit dated 10.8.04 materially reiterated the submissions made in the original petition. The petitioner submitted that all the documents filed by the respondent in the Trade Marks Registry as evidence by way of affidavit at the time of acceptance were false and fabricated. The documents filed under the signatures of R-1 are forged and prayed that the Board may send the documents to a handwriting expert.
8. Respondent No.2 filed supplementary affidavit on 10.9.04 reiterating his earlier position about the applicability of section 32 in the instant matter.
9. The matter was taken up for hearing by the Board on 4.11.2004 in its sitting held at New Delhi. Learned counsel Shri M.K.Miglani argued the case on behalf of the petitioner and learned counsel Shri Shailen Bhatia argued the case on behalf of Respondent No.2.
10. The learned counsel for the petitioner submitted that the user as of 5.4.1972 claimed by the respondents was incorrect. He submitted that the evidence by way of affidavit submitted at the time of acceptance was based upon false and fabricated bills and documents. The signatures of Respondent No.1 have been fabricated by respondent No.2 in the affidavit and requested that the documents signed by respondent No.1 may be sent to the hand writing expert for verification. The mark Anil was not distinctive of the respondent on the date of filing of the present application. The mark is deceptive on the date of its registration and is continued as such and thus contravenes the provisions of Section 11 (a) of the Act. The mark was wrongly accepted and offends Section 12(1) of the Act. The learned counsel relied upon the documents put at Annexure-A of the affidavit of the appellant dated 10.8.2004. These documents are the photo copies of an affidavit dated 7.2.1981 of respondent No.1 and copies of certain bills beginning with the year 1973 of M/s. Anil Food Industry and copies of some more documents filed for registration in matter of its trade mark application No.350996. It is important to note that the certified copies of these documents were obtained from the Trade Mark Registry per Trade Marks Registry’s letter dated 17.10.1990 and have been filed as late as 10.8.2004. There is no explanation for the circumstances leading to such a delay. The learned counsel has relied upon the following judgments in support of his case:
11. The learned counsel for respondent No.2 submitted that respondent No.2, who is a successor in interest of respondent No.1 had obtained the registration of trade mark ‘Anil’ under application No.350996 as of 4.7.1979 for the States of Madhya Pradesh, Rajasthan, Punjab, Haryana and Jammu and Kashmir and the Union Territories of Chandigarh and Delhi. The petitioner had obtained the registration of trade mark ‘Anil’ under his application No.379288 as on 5.8.1981 for the Union Territory of Delhi only. He submitted that there is no deception in the use of the marks. The signatures of respondent No.1 Mrs. Kausalya Devi are genuine and no forgery has been committed. The petitioner is the eldest son of Mrs. Kausalya Devi and from the beginning had been helping her in the business operations. If any forgery had been committed, it was incumbent upon him to take appropriate measures at the earliest. He quoted references from Kessarbai Vs. Jethabhai Jivan reported in AIR 1928 Privy Council 277 (From Bombay). Sri Sri Sri Kishore Chandra Singh Deo Vs. Babu Ganesh Prasad Bhagat & Ors. reported in AIR 1954 SC 316, Smt. Shanta Trivedi Vs. Life Insurance Corporation of India reported in AIR 1988 Delhi 39 to support his claim that signatures once having been admitted cannot be called in question so conveniently. He submitted that his registration is protected under Section 32 of the Trade and Merchandise Marks Act, 1958. The petitioner has miserably failed to prove that his case falls under any of the exceptions covered under class (a), (b) and (c) of that Section. He extensively cited references from M/s. Eagle Potteries Private Ltd. Vs. M/s. Eagle Flash Industries Pvt. Ltd. reported in AIR 1993 BOMBAY 185, National Bell Co. & Anr. Vs. Metal Goods Mfg. Co. (P) Ltd. & Anr. reported in AIR 1971 SC 898 to explain the nature of protection under Section 32 and the burden cast upon the petitioner to bring his case under clauses (a), (b) or (c) of that section.
12. We have carefully gone through the affidavits filed by the petitioner and the respondent and the evidences submitted by them in support of the affidavits and find that the impugned registration had been on the register for well over seven years as on the date of filing of the rectification application, that is, 17.10.1989. In view of that, the onus is upon the petitioner to prove that the rectification proceedings are covered under either of clauses (a), (b), (c) of that Section.
13. Section 32 of the Trade and Merchandise Marks Act, 1958 reads as under:
“32. Registration to be conclusive as to validity after seven years - Subject to the provisions of section 35 and 46, in all legal proceedings relating to a trade mark registered in Part A of the register (including applications under section 56) the original registration of the trade mark shall, after the expiration of seven years from the date of such registration, be taken to be valid in all respects unless it is proved –
(a) that the original registration was obtained by fraud; or
(b) that the trade mark was registered in contravention of the provisions of section 11 or offends against the provisions of that section on the date of commencement of the proceedings; or
(c) that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor.”.
14. The learned counsel for the petitioner has tried to claim the rectification under all the three clauses of Section 32. He argued that the original registration was obtained by fraud by manipulating the evidence and falsely claiming the user as from 5.4.1972. He chose to submit copies of the bills submitted by the respondent towards the registration of application No.350996 from the file of the Trade Mark Registry. The certified copies which were obtained as back as 17.10.1990 were submitted along with the affidavit of the petitioner dated 10.8.2004. The petitioner being the eldest son of respondent No.1 and having been actively involved in the working of the family business had ample opportunity to know about the business activities of his mother and thus could have very conveniently filed his opposition when the application was submitted for registration which he chose not to do till as late as 17.10.1989 when the present application for rectification has been filed. The submission as to forgery having been committed in the signatures of his mother by respondent No.2, his younger brother, has no cogent basis. The parties are at liberty to file evidences which they feel in support of their cases. He was at liberty to file the opinion of any hand writing expert in support of his case. Instead, he chose to request the Board to make a reference to a hand writing expert. We do not find any prima facie reason for making such a reference. The only reason that respondent No.1 has put her signatures in Devnagiri script on a document written in English is no reason in itself for making such a reference. The judgment in the case of B. S. Ramappa Vs. B. Monappa has rightly laid down the principles in this area of trade mark laws. However, the facts in that case are materially different from the instant case. We do not intend to repeat here the principles of law laid down in that case. However, it shall be instructive to make a brief mention of the facts of the matter as distilled by the learned Chief Justice Rajamannar in that case. It shall be sufficient to reproduce the relevant portion in the said order which follows:-
“……. There is abundant authority for the position that where registration is obtained by suppression of a material fact, or by making of a false statement, such registration is made without sufficient cause and that such a registration can be said to have been obtained by fraud. There can be no doubt whatever, as the learned Judge has found, that the statement made by the appellant to the Registrar of Trade Marks that he was the sole proprietor of the trade mark was false, and false to his knowledge, and the registration was made on the strength of such statement. No attempt was made by Mr. Krishna Rao, learned counsel for the appellant – and rightly – to establish that the statement was not false. It is beyond controversy that it was the father who had, from the beginning, used the trade mark and he continued to be the proprietor of the trade mark. The appellant set up a case of express consent of the father, or that in any event the registration was obtained by him on behalf of the father who was the true owner. But the father himself has given evidence which in our opinion conclusively destroys this part of the appellant’s case. The father indeed professes complete ignorance of the action of the appellant, namely, obtaining a registration of the trade mark in his own name.”.
15. Similarly, Baljit Kumar Vs. Ram Saroop 1972 Del 153; Anand Kumar Deepak Kumar Vs. Haldiram Bhujia Wala 1999 PTC 466; and Darshan Lal Dhooper Vs. Motia Rani 2002 PTC 587, correctly follow the broad principles of law enunciated in B.S. Ramappa Vs. B. Monappa’s case. However, on matter of material facts involved in those cases as in B.S. Ramappa Vs. B. Monappa, the learned counsel for the petitioner has made a wrong choice. The facts in these cases are clearly distinguishable from the facts of the case before us. Thus, the claim for rectification of the mark under class (a) of Section 32 utterly fails.
16. In his averments in the petition and the later affidavits filed by the petitioner it has been submitted that the impugned trade mark was registered in contravention of the provisions of Section 11 and it offends the provisions of that section even on the date of commencement of the present proceedings. The evidence in support of which has been adduced is nothing but the bills which were submitted by the respondent No.1 while making the application for registration of the impugned mark. The mark had been in use before the application was filed for registration and had been in use even after the grant of registration till the date of filing of the present proceedings. Thus, there is nothing in the averments of the applicant to substantiate his claim that the respondent had been in breach of Section 11 while making the application for registration or had been in breach thereof after the grant of registration and before the commencement of these proceedings. We accordingly hold that the applicant fails on this score also.
17. On the basis of the evidence adduced by both the sides in the present proceedings, we find that the respondents had audaciously protected their mark. The respondents had been in constant use thereof and as and when necessity arose, they have taken appropriate measures against infringers of the mark. In view of that we hold that at the commencement of the proceeding, the trade mark has not lost its distinctiveness of the goods for which the registered proprietor holds the registration.
18. In view of the above, we hold that the application fails and we accordingly dismiss the same. No costs.
(Dr. RAGHBIR SINGH) (JUSTICE S. JAGADEESAN)
VICE CHAIRMAN CHAIRMAN