Intellectual Property Appellate Board
Venkata Rama Rao Avvas And Ors. vs American Cyanamid Company And Ors. on 15 December, 2006
Equivalent citations: 2007(34)PTC282(IPAB)
JUDGMENT
Z.S. Negi, Vice-Chairman
1. This application has been filed by the applicants under sections 47/57/125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) for rectification of trade mark 'ARGOLD' in class-5 under No. 261864 as of the date 11.03.1994, in respect of insecticides, larvicides, fungicides, pesticides, preparations for killing weeds and destroying vermin, registered in the name of the first respondent, by removal of the said mark from the register.
2. It is stated that the first applicant adopted the mark 'AGRI GOLD' in early 1994 and subsequently on finding that no name or similar name in the Register of Companies, got the second and third applicants incorporated under the Companies Act, 1956. The second applicant was incorporated with the objective of promoting corporate cultivation. The third applicant is engaged in producing organic manure using the process of Vermi compost. All the fertilizers manufactured by the third applicant have been marketed with the trade mark 'AGRI GOLD' and they have been received well in the market. The applicants have spent substantial sums of money in advertising the trade mark 'AGRI GOLD' through various media. The trade mark 'AGRI GOLD' is indisputably connected with the applicants and their group of companies since 1995.
3. The first applicant filed application Nos. 935849 dated 30.06.2000 and 1051710 dated 12.10.2000, both in class-1 and application No. 1051709 dated 12.10.2001 in class-5 for registration of the trade mark AGRI GOLD. All the applications have been accepted for advertisement. When one of the trade mark applications, namely, application No. 935849 dated 30.06.2000 for chemical products used in the industry, science, photography, agriculture, horticulture, forestry, manure (natural and artificial), fire extinguishing compositions, tempering substances and chemical preparations for soldering; chemical substances for preserving food stuffs; tanning substances, adhesive substances used in the industry was advertised, before acceptance, in the Trade Marks Journal No. 1327 (Supplement 3), dated 17.1.2005. The Trade Marks Agents for the second respondent sent a notice on 17.06.2005 claiming that the second respondents are the registered trade mark owner in India and around the world for the word mark ARGOLD with respect to insecticides, larvicidies, fungicides, pesticides, herbicides, preparations for killing weeds and destroying vermin and also alleged that use of the mark AGRIGOLD will tantamount to infringement and passing off. On that score, the counsel for the second respondent illegally instructed the first applicant to delete forthwith agriculture, horticulture, forestry, manure (natural and artificial), from the description of goods for which the applicants claimed proprietary right for the word mark AGRIGOLD. The applicants found from the Journal No. 1287 (Supplementary 3) that the trade mark ARGOLD was not registered in the name of the second respondent but registered the name of a different proprietor (American Cyanamid Company). On insistence by the first applicant for the production of the registration certificate and proof for the use of the mark ARGOLD in India by the second respondent, their counsel replied that the trade mark No. 621864 is not in their name but in the name of their predecessors in interest. The second respondent claimed that steps have been taken to bring their name as the subsequent proprietor of that registered Trade Mark. The applicants through their business net work investigated in respect of the use of the mark ARGOLD but it was found that the mark ARGOLD has not been used either by the first respondent or by the second respondent for any of the goods for which they claim proprietary right. As such the mark registered is liable to be removed for non-use continuously for a period of 5 years and 3 months on the date of filing this application on the following among other grounds that the applicants have already invested huge sums of money to promote their business particularly in the field of agriculture, horticulture, fertilizes, etc, in very large scale. Since the counsel for the second respondent has issued the threatening notice, the very existence of the applicants' business is in danger, hence, the applicants are the aggrieved persons to initiate the proceeding for removal of the mark on the ground of non-use of the mark ARGOLD continuously for over five years and three months.
4. The grounds for rectification taken are that the first respondent, on the date of filing application for registration on 11.03.1994 has no bona fide intention to use the word mark ARGOLD in respect of the goods for which they claim proprietary right and that the second respondent has not used the mark continuously for five years and three months on the date of filing this petition and, hence, the mark is liable to be rectified for non-use and no bona fide intention to use; that the first respondent claims proprietary right but has no business establishment India or they are not having any licencee to use the mark to carry the business in India with the mark ARGOLD in relation to the goods in respect of which they claimed proprietary right; that the second respondent without registration in their name the mark ARGOLD in respect of agriculture, horticulture, forestry, manure (natural and artificial) has illegally threatened the applicants to remove the above description of goods. This threat of legal action has affected the applicants' business in large extent. It is further averred that the mark registered illegally in the name of the first respondent is used for the purpose of preventing the bona fide traders like the applicants and it is registered for the purpose of trafficking on Trade Mark; that the mark which is liable to be rectified for non-use is non-est in eye of law and such a mark cannot be assigned for the purpose of causing injuries against bona fide traders like the petitioners and that the mark registered illegally in the name of the first respondent which is used for groundless threat is liable to be rectified, apart from non-use or no bona fide intention to use the mark continuously for 5 years and 3 months.
5. The second respondent filed its counter-statement in December, 2005 denying all the material averments. The second respondent claims to be part of the prestigious BASF Group which is operating in India through BASF India Limited and three wholly owned subsidiaries, namely, BASF Industries Limited, BASF Coatings Limited and BASF Synthetics Limited. The trade mark 'ARGOLD' is a reputed brand of the second respondent [assigned to it by the Deed of Assignment dated 30.5.2001 by the predecessors in business in India (American Cyanamid Company) and it has filed request to bring itself on register as subsequent proprietor] and is being used continuously and extensively for the past many years. It is denied that the mark is registered for the purpose of trafficking on it. The second respondent has raised preliminary objection that the present application is premature and the applicants are not aggrieved persons to initiate the proceedings for removal of the mark from the register.
6. The application came up for hearing on 10.3.2006 when Ms. Gladys Daniel, Advocate appeared for the applicants and Shri P. Vinod Kumar, Advocate appeared for the second respondent. Both learned Counsel argued and order reserved till the receipt of material papers from the Trade Mark Registry and also for ascertaining the stand of the first respondent on which service of the Form No. C could not be effected and no one represented it on the date of hearing. The first respondent has through Mr. Timothy T. Slater, Vice President and Assistant Secretary, vide letter dated 8.11.2006 has stated that since they have assigned the mark, they do not wish to participate in the proceeding and shall abide by the any order this Hon'ble Board is pleased to pass in the matter after hearing the applicants and BASF Agro B.V. Arnhem.
7. Learned Counsel for the applicants mainly contended that the registered proprietor is an American company, assignee is a Swiss company and user is an Indian company and such the registration was not obtained with bona fide intention to use but for trafficking on the mark. The second respondent has not used the mark continuously for five years and three months on the date of filing the application for rectification. She further contended that the applicants are the persons aggrieved because of issuing groundless notice threatening to take legal action by the second respondent. On the other hand, learned Counsel for the second respondent vehemently opposed the contention stating that the applicants are not persons aggrieved and the application for rectification is premature as the statutory period for filing such application will be only in or after 2008. He contended that there is a misjoinder of parties as the Registrar of Trade Marks Delhi should have been impleaded instead of Registrar of Trade Marks, Chennai.
8. The pre-requisite of the statute is that a person to seek relief under sections 47 and 57 of the Act should be a person aggrieved. It is observed by the Apex Court in National Bell Co. (P) Ltd. and Anr. v. Metal Goods Mfg. Co. Ltd. and Anr. PTC (Suppl) (1) 586 (SC) at p. 593 thus: 'The expression "aggrieved person" has received liberal construction from the Courts and includes a person who has, before registration, used the trade mark in question as also a person against whom an infringement action is taken or threatened by the registered proprietor of such a trade mark.' Person aggrieved includes rivals in the same trade who are aggrieved by the entry of rival's 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 or a proprietor of mark who is slapped with a suit for infringement of trade mark or passing off. The second respondent has issued a threatening notice to take legal action against the applicants, therefore, by applying the aforesaid principles, the applicants are 'persons aggrieved'.
9. Section 47 (1) (a) of the Act envisages that where a trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by the proprietor thereof for the time being up to a date three months prior to the date of application, the registered trade mark may be taken off the register. Though one of the main grounds taken by the applicants for rectification is non-use of the mark, they have not produced or filed any evidence or document or affidavit evidence in regard to this. The applicants have only averred at page 17 of the applicant that the petitioners through their business net work investigated in respect of the use of the mark ARGOLD by the first respondent or their alleged predecessor and it was found that the mark has not been used either by the first respondent or by the second respondent for any of the goods for which they claim proprietorship. However, no supporting documents or reports of the investigation were furnished to substantiate the averment. On the other hand, the second respondent has fled (Annexure-C) figures of Argold Sales for the years 2002 to 2005 and true copies of invoices showing use of trade mark ARGOLD. Pages 48 to 51 contain figures of product sales performance without indicating the product names and as such the same are not acceptable to prove use of the trade mark. Pages 52 to 65 are invoices pertaining to years 2002 and 2003 showing sales of goods using trade mark ARGOLD by the second respondent through its subsidiary BASF India Limited. There is no explanation from the second respondent about not furnishing of copies of invoices for the years 2004 and 2005. No attempt has been made by the counsel for the second respondent to explain the reasons for non-production of complete documentary evidence especially when one month time was granted to the second respondent to file documentary evidence. Despite granting the time, the second respondent has chosen to file incomplete documentary evidence and without explanation for not filing complete documents. The learned Counsel for the applicants has submitted that from the Annexure-C it is evidence that neither the registered proprietor nor the assignee is using the mark but a third entity is using it. This contention is not sustainable as it has been held that a subsidiary company can be fairly be construed as of the mark by the holding company in Fatima Tile Works and Ors. v. Sudharshan Trading Co. Ltd. and Anr. 1992 (12) P.T.C. 117 (Del). We are, therefore, of the view that the ground 'that there has in fact been no bond fide use of the mark in relation to those goods or services, for which registration has been obtained, up to a date three months prior to the date of application' is certainly available to the applicants especially when the second respondent has failed to produce documentary evidence or to explain the reason for non-production of any documentary evidence to prove use of mark for the years 2004 and 2005.
10. An application under section 47(1) (b) of he Act for removal of a registered trade mark will be allowed only if made on the ground that up to a date three months before the date of the application, a continuous period five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being. The expression used in Clause (b) of Sub-section (1) of section 47 for the purpose of computing the period of five years is the date on which the mark is actually entered in the register. The impugned trade mark (though as of date 11.3.1994) was actually entered in the register on 10.9.2003 and the application for rectification has been filed on 3.8.2005 that is to say the five years three months as provided by the Act has not elapsed. Since the period between the date of registration and date of application for rectification is less than five years and three months, the period on non-use specified under section 47(l)(a) will apply (see Trade marks and Passing off by P. Narayana, Sixth Edn. Foot note at p. 495).
11. The next section under which this application is made is section 57 of the Act which deals with the power to this Board or to the Registrar to cancel or vary registration and to rectify the register on two grounds contained sub-sections (1) and (2). The ground under Sub-section (1) is contravention or failure to observe a condition entered on the register in relation to the trade mark. To attract Sub-section (2) is that the applicant must be a person aggrieved by the absence or omission from the register of any entry or by any entry made in the register without sufficient cause, or by any entry wrongly remaining in the register or by any error or defect in entry in the register. It is no where mentioned by the applicants as to what condition entered on the register in relation to the trade mark had been contravened or failed to observe. The provisions of Sub-section (1) of section 57 of the Act is, therefore, not applicable to the present case. Regarding attraction of provisions of Sub-section (2) of section 57 of the Act, it is not the case of applicants that the entry made in the register is without sufficient cause or is wrongly remaining on the register. What is stated is that the mark is registered illegally in the name of the first respondent without specifying the reasons therefore especially when the applicants themselves have averred at para J of the Grounds that the goods are totally different.
12. In view of the paragraphs 9 and 10 above, we hold that the impugned trade mark has not in fact been in use from 2004 upto the date of filing the rectification application. Accordingly we allow the application and direct the Registrar of trade Marks to remove the registration of trade mark under No. 621864 from the register. There will be no order as to costs.