Intellectual Property Appellate Board
Balaji Consumer Products Of India And ... vs Chinnaswami And Anr. on 3 August, 2004
Equivalent citations: 2004(29)PTC610(IPAB)
JUDGMENT
Raghbir Singh, Vice-Chairman
1. Application for rectification of the register under Sections 46, 56 and 57 was filed as O.P. 73/2003 in the High Court of Judicature at Madras and the same has been transferred to this Board under Section 100 of the Trade Mark Act, 1999 and has been numbered as TRA/38/2003.
2. Petitioner manufactures and markets tea under its trade mark and label 'BALAJI 5 STAR'. He claims to be in the business since the year 1998. His mark consists of a distinctive device of cup and saucer alongwith the word mark 'BALAJI 5 STAR' in respect of tea products. The trade Mark and label 'BALAJI 5 STAR' is dressed in red colour in order to make the product more attractive and catchy. On the prayer dated 1st June, 2004 of the first petitioner to implead M/s Belcare India Care Limited as the second petitioner, this Board was pleased to order for impleading the said M/s Belcare India Care Limited as the second petitioner vide its order dated 11th June, 2004.
3. The petitioner submits that he has spent more than Rs.70 lakhs towards promotion and advertisement of the product under the said label. He has given his sales turnover for the years ending 31.3.1999, 31.3.2000 and 31.3.2001.
4. First respondent is a holder of registration of trade mark for the label 'ASSAM FIVE STAR' which he claims to be a device mark, besides including the mark 'FIVE STAR' the other incidental and attaining things thereto. The first respondent filed a suit CS No. 750/2002 against the first petitioner. First petitioner claims that the first respondent has not registered the word 'FIVE STAR' as such and the registration is in respect of composite label and thus the first respondent is falsely claiming monopolist right over the word 'FIVE STAR'.
5. The petitioner submitted that the impugned trade mark registered as No. 663367 is liable to be expunged under Sections 9, 11(a), (b) and (e) and Section 18(1) of the Trade and Merchandise Marks Act, 1958. The petitioner has prayed for rectification of the register by expunging the trade mark registered under No. 663367 in class 30 or in the alternative impose conditions and limitations including disclaimers in respect of the words 'FIVE STAR' the device of stars and red background and pass such order.
6. Respondent No. 1 in his counter affidavit dated 20th September, 2003 has denied the averments of the petitioner. He submitted that he had honestly conceived his trade mark and has been using it uninterruptedly for well over 10 years. The said registered trade mark consists of various distinctive features like deep red background and its trade mark 'FIVE STAR' written in GOLD YELLOW colour in between two parallel lines in a prominent manner. The label contains artistic work, consisting of a big star surrounding by 4 smaller stars in an attractive cream white colour. The said mark was registered in favour of the first respondent after the same having been found distinctive by the Registrar. First respondent found in February, 2002 that petitioner No. 1 had infringed his registered trade mark and gave the petitioner cease and desist notice and subsequently filed C.S. No. 750/02 on the file of Hon'ble High Court of Judicature at Madras for a permanent injunction. In the said suit, respondent No. 1 had applied for ex-parte interim injunction which was allowed and later on vacated. He has filed an appeal against the said order.
7. Till 31st March, 2001, petitioner No. 1 had been selling the products under trade mark of 'BALAJI 5 STAR' and as from 1st April, 2001, petitioner No. 2 had been using the same trade mark as a licencee and later on as an assignee of petitioner No. 1. Respondent No. 1 filed CS No. 750/02 in the Hon'ble High Court of Madras being a suit of infringement and passing-off against the first petitioner in relation to his registered word trade mark 'FIVE STAR TEA' under No. 663367, dated 24th April, 1995.
8. Respondent No. 1 drew our attention to paras 8, 10 and 12 of the rectification application of the petitioner whereby respondent No. 1 tried to infer that the petitioner himself has not been using the trade mark and had all along life it to petitioner No. 2 as a licencee. He put further reliance upon the sales turnover and advertisement expenses given in para 10 of the petition and the achievements of petitioner No. 2 referred to by petitioner No. 1 in para 12 of the petition. Similarly, he placed reliance upon the letter of the counsel for petitioner No. 2 placed at page 472 of the type set wherein counsel for petitioner No. 2 had mentioned that petitioner No. 1 is the original proprietor of the trade mark and petitioner No. 2 is the subsequent proprietor. There does not appear to be any difference on this aspect of the matter in between the contention of appellants and respondent No. 1 in view of the above.
9. Since respondent No. 1 has filed a suit relating to infringement and passing off against petitioner No. 1, as per the settled proposition of law the petitioner No. 1 and the petitioner No. 2 are the aggrieved persons in the matter.
10. Petitioner No. 1 drew our attention to his mark 'BALAJI 5 STAR' depicted at page 1 of volume 1 of his type set. He also drew our attention to the contradictions in the counter affidavit of respondent No. 1, more particularly in paras 16 and 18 at pages 7 and 8 thereof wherein he has claimed that the Trade Mark Registry has not attached any disclaimer to his trade mark 'FIVE STAR' and whereas the Trade Marks Registry has mentioned his mark as 'FIVE STAR TEA' to be a work mark. Whereas in para 18 of the counter affidavit the respondent mentions that the trade mark of respondent is indeed a word which has no reference to the character or quality of the goods and it is distinctive in respect of the goods sold by the respondent. Thus, respondent No. 1 has claimed it to be a word trade mark and whereas in para 29 at pages 10 the respondent submitted that he is exclusive proprietor of the device mark which also includes the word mark for 'FIVE STAR' and for the same is registered under No. 663367. This is a clear contradiction in the submissions of respondent No. 1. Petitioner also submits that the trade mark does not quality the requirements of Section 9 and respondent cannot have exclusive right in matter of the red background of the mark. Petitioner contended that in terms of Section 17 of the Act certain conditions in the nature of disclaimers can be imposed. He drew our attention to respondent's claim of using the trade mark for over ten years to be false as in the evidence which has been submitted by respondent No, 1 at pages 1 to 41 of his type set papers, there is no evidence on that score". The earliest bill which has been submitted relates to 1991. Bills from page 43 onwards relate to printing of certain cartons and as such have nothing to with the expenditure upon advertisement.
11. The word mark 'FIVE STAR TEA' was registered under No. 663367 on 24th April, 1995 and has been renewed from 24th April, 2002 for seven years. The registration is about the word mark 'FIVE STAR TEA' only. There is a clear disclaimer "Registration of this Trade Mark shall give no right to the exclusive use of the word Assam, Extra improved and other descriptive matter appearing on the label" in the relevant Trade Mark Journal where it was advertised before acceptance under proviso of Section 20(1). The petitioner had all opportunity to enter his opposition when the application was advertised before registration. We find nothing in the contentions of the petitioner to attract the provisions of Section 56 for making any variation in the registration of the trade mark of respondent No. 1. There is no contravention and there is no failure to observe any condition entered on the register which may persuade us to make any modification or cancellation of the trade mark in terms of Section 56. The trade mark on the date of filing of the rectification application on 30th November, 2002 had been on the register for more than five years and one month, the mark having been registered under No. 663367 on 24th April, 1995. It is nothing but a counter blast application in retaliation to the infringement and passing off suit of the respondent No. 1 against the petitioner No. 1. As such there is nothing in the petition to persuade us to invoke the provisions of Section 46 for making any rectification in the register on this score. In view of the above, the rectification application of the petitioners is dismissed without any order as to costs.