Gujarat High Court
Mahle Gmbh vs Parag Kirnkumar Tatariya on 9 November, 2023
Author: Vaibhavi D. Nanavati
Bench: Vaibhavi D. Nanavati
NEUTRAL CITATION
C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023
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IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/SPECIAL CIVIL APPLICATION NO. 11855 of 2021
FOR APPROVAL AND SIGNATURE:
HONOURABLE MS. JUSTICE VAIBHAVI D. NANAVATI
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1 Whether Reporters of Local Papers may be allowed
to see the judgment ?
2 To be referred to the Reporter or not ?
3 Whether their Lordships wish to see the fair copy
of the judgment ?
4 Whether this case involves a substantial question
of law as to the interpretation of the Constitution
of India or any order made thereunder ?
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MAHLE GMBH
Versus
PARAG KIRNKUMAR TATARIYA & 1 other(s)
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Appearance:
MR ANMOL DIKSHIT with MR ABHISST K THAKER(7010) for the
Petitioner(s) No.
MR HARNISH V DARJI(3705) for the Respondent(s) No. 1
MR KEDAR G DAVE(3475) for the Respondent(s) No. 1
NOTICE SERVED for the Respondent(s) No. 2
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CORAM:HONOURABLE MS. JUSTICE VAIBHAVI D. NANAVATI
Date : 09/11/2023
ORAL JUDGMENT
1. By way of present writ-application invoking Article 226 Page 1 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined of the Constitution of India the writ-applicant herein seeks to challenge the registration of mark bearing Registration No.2897507 (hereinafter referred to as 'the impugned Mark' for short) in respect of 'Lubricants Oil and Grease included in Class-04' on the Register of Trademark.
2. Brief facts germane for adjudication of the dispute in question read thus :-
2.1 The writ-applicant herein was founded over a century ago, when Hermann Mahle joined Versuchsbau Hellmuth Hirth as Commercial Manager, marking the start of the current 'MAHLE Group'.
2.2 In the year 1922, Hermann Mahle's brother Ernst Mahle joined Leichmetall-Werke, G.m.b.H., Stuttgart-Cannstatt, the successor-in-interest company to Versuchsbau Hellmuth Hirth as a developer and head of production. The company was renamed as Elektronmetall Gmbh, Stuttgart Cannstatt (EC) in the year 1924 and the brothers Hermann Mahle and Ernst Page 2 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined Mahle were appointed as Commercial Director and Technical Directors in the year 1926 and 1927, respectively. In few years, the company became one of the major German piston manufacturers and both the brothers became Managing Directors and eventually sole owners. The company Elektronmetall GmbH was renamed as MAHLE KG in the year 1938 and the writ-applicant herein has grown into an international development partner and supplier to the automotive industry.
2.3 The writ-applicant herein has been using the mark/name MAHLE upon and in relation to its products/services/business at least since the year 1938. The trade/service mark name MAHLE derives its origin from surname of the Hermann Mahle and Ernst Mahle brothers. The trade/service mark MAHLE also forms an essential part of the writ-applicant's corporate name and is its house mark.
2.4 The writ-applicant's products under the mark/name Page 3 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined MAHLE made available in India since 1950-1960. The writ-
applicant's registration for the mark MAHLE under No.201696 in Class-7 is secured in India on 7.4.1961. 2.5 The writ-applicant's business expansion in India continued and it entered into joint ventures with MWP Migma Ltd. (now MAHLE Engine Components India Private Limited) and Kirloskar Knecht Filters Private Ltd in the year 1997. 2.6 The writ-applicant's dominance and growth in India continued and Mahle Filtersysteme Gmbh acquired majority stakes in Purolator India Limited. Subsequently, in the year 2008, Purolator India Limited was renamed as Mahle Filter Systems (India) Limited (now Mahle Anand Filter Systems Private Limited) in the year 2005-2006.
2.7 In the year 2013, the writ-applicant herein acquired all shares in the Indian piston joint venture MAHLE IPL Limited (now MAHLE Engine Components India Private Limited). 2.8 On 1.2.2015, the Respondent filed trade mark application Page 4 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined in Class-4 under No.2897507 for registration of the impugned mark. On 18.4.2016, the impugned mark was advertised in the Trade Marks Journal No.1741 at page 335.
2.9 Though the respondent has obtained registration for the impugned mark, the writ-applicant's enquiries revealed that the respondent is not using the impugned mark but has in fact, employed use of the writ-applicant's significantly prior, registered and well-known trade mark 'MAHLE' in respect of its products. The fact that the respondent obtained registration of the impugned mark is, in fact, using the writ-applicant's significantly prior, registered and well-known trade mark 'MAHLE', resultantly the said action according to the writ- applicant herein is mala fide.
2.10 The registration obtained by the respondent is fraudulent and contrary to the principles of business ethics and honest trade practices. The application having been made in bad faith, the subsequent registration thereof is void ab initio. The Page 5 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined aforesaid has resulted in filing of the present writ-application by the writ-applicant herein seeking the following reliefs :-
"(a) To remove the entry in Register of Trade Marks bearing registration No. 2897507 in Class 4 in the name of the Respondent herein;
(b) To award the cost of the proceedings the Petitioner;
and
(c) To pass any other order in favor of the petitioner as this Hon'ble Court deem fit in the facts and circumstances of the case to further the ends of Justice;"
3. Heard Mr. Anmol Dikshit, the learned advocate appearing for Mr. Abhisst K. Thaker, the learned advocate appearing for the writ-applicant and Mr. Kedar G. Dave, the learned advocate appearing for the respondent No.1.
Submissions on behalf of the writ-applicant :-
4. Mr. Anmol Dikshit the learned advocate appearing for the writ-applicant herein submitted that the writ-applicant's Page 6 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined trade mark/service mark/name MAHLE has been put to extensive and uninterrupted use for more than 80 years and the same has resulted in having acquired a secondary unit. The writ-applicant's trade/service mark/ named MAHLE are exclusively associated by Members of Trade and Public with the writ-applicant alone and none-else. 4.1 It was submitted that the registered owner i.e. respondent of impugned trade mark being in same line of business is deemed to be aware of the writ-applicant herein and its prior rights and goodwill/reputation vesting in the trade mark 'MAHLE'.
4.2 It was submitted that the writ-applicant herein was not aware of the Registered Proprietor's application for registration of the impugned mark, hence no opposition could be filed against the registration thereof. Consequently it proceeded to registration and it is a wrong entry remaining on the Register of Trade Marks.
4.3 The writ-applicant herein is aggrieved by the registration Page 7 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined of the impugned mark in the name of the Registered Proprietor in view of the fact that the writ-applicant herein is significantly prior in its bona fide adoption and use of the trade mark 'MAHLE' the world over including in India. The writ-applicant herein has prior registrations of the trade mark 'MAHLE' in several jurisdictions of the world including in India and has extensively used and promoted the said mark since the year 1938. Thus, the writ-applicant herein is a person aggrieved within the meaning of The Trade Marks Act, 1999 and the Rules made thereunder.
4.4 The impugned mark by the Registered Proprietor is bound to cause confusion and deception in the course of trade as regards the source and origin of the goods. The consumers and members of the trade are likely to be confused or deceived into believing that the Registered Proprietor is a licensee of the writ-applicant herein or has some other commercial relationship with the writ-applicant herein, when this is not the case. The writ-applicant herein is further Page 8 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined aggrieved by the fact that the registration and/or use, if any, by the Registered Proprietor of the impugned mark will result in dilution of the distinctiveness of the prior, registered and well-known trade mark 'MAHLE' of the writ-applicant herein. 4.5 Mr. Dikshit, the learned advocate appearing for the writ-applicant herein further submitted that the impugned registration is liable to be prevented under the laws of passing off and is wrongly remaining on the Register in contravention with Section 11(3)(a) of the Act.
4.6 It was submitted that the impugned mark ought not to have proceeded to registration under the provisions of Section 11(10) of the Act as the writ-applicant's mark is a well-known mark within the provisions of Article 6bis of Paris Convention. 4.7 It was submitted that the Registered Proprietor cannot lay any claim of proprietorship over the impugned mark under Section 18(1) of the Act in view of the writ-applicant's significantly prior adoption and extensive use of the trade Page 9 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined mark 'MAHLE' and its consequent goodwill and reputation subsisting thereof.
4.8 It was submitted that the impugned Registration No.2897507 is liable to expunged from the Register under Section 47(1)(a) of the Act.
4.9 Placing reliance on the aforesaid submissions, Mr. Dikshit, the learned advocate submitted that no bonafide use of the impugned mark has been made by the Registered Proprietor nor does the Registered Proprietor have any bona fide intention to use the said mark in any manner whatsoever. The Registered Proprietor has surreptitiously secured registration of the impugned mark 'MAHLE' i.e. by applying for the mark containing the writ-applicant's significantly prior registered and well-known trade mark 'MAHLE' in entirety but, in fact making use of the writ-applicant's trade made 'MAHLE' upon and in relation to identical products. The writ- applicant's inquiries have revealed that registered proprietor has not been using the mark in any manner whatsoever. Page 10 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023
NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined 4.10 It was submitted that the impugned registration No. 2897507 is liable to be removed from the Register of Trade Marks as it is settled law that a registration obtained by suppression of a material fact or by making false representation, is made without sufficient cause and can be said to have been obtained by fraud.
4.11 It was submitted that the impugned registration No. 2897507 is diluting the distinctiveness of the significantly prior, registered and well-known trade mark of the writ-applicant and violates the purity of the Register. The registration is opposed to public policy and hostile to public interest inasmuch as the public has a vested right not to be put to perils of confusion or deception and that too, if such confusion and deception emanates from a statutory Register. Therefore, the impugned registration No.2897507 is liable to be expunged. 4.12 Reliance was placed by Mr. Dikshit, the learned advocate appearing for the writ-applicant on the invoices Page 11 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined placed on record to substantiate the submission that the said mark remained unused by the registered proprietor. The bills are placed on record to substantiate the aforesaid submission wherein placing reliance on the same invoices it was submitted that the said registration mark is never used by the registered proprietor after having been granted the said registration. 4.13 Placing reliance on the aforesaid, it was submitted that the invoices produced from pages 425 to 508 are self- explanatory. That the said mark has remained unused and in view thereof the prayers as prayed for be allowed for non-use of the mark under Section 47(1)(a) of the Trade Marks Act.
Submissions on behalf of the respondent No.1 :-
5. Mr. Kedar G. Dave, the learned advocate appearing for the respondent No.1 placed reliance on the affidavit-in-reply filed by the respondent herein and submitted that there are litigation pending between the parties before the Hon'ble Civil Court and this Court may not entertain present writ- Page 12 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023
NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined application.
5.1 It was submitted that as per the averments made in the rectification application the writ-applicant herein is carrying on the alleged business for goods i.e. piston, piston rings, and various kinds of filters which fall under Class-07 of the NICE classifications of the Trade Marks Rules. 5.2 It was submitted that the trade mark registration certificates produced at Annexure-P3 and Annexure-P4 allegedly registered in the name of writ-applicant herein are also for the goods falling under class-07 only.
5.3 That, the respondent No.1 is using the trade mark/label MAHLE for the goods, Lubricant Oil and Grease included in class-04, which is different and distinct then the goods of the writ-applicant herein.
5.4 That, the respondent No.1 is also the registered owner of the trade mark/label MAHLE vide no. 2897507 in class-04. Page 13 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023
NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined 5.5 That, the respondent No.1 is using the trade mark/label MAHLE since 01.02.2015 for the goods falling in class-04. 5.6 It was submitted that admittedly, the writ-applicant has even not commenced its use, atleast in India, till February, 2021, for the goods falling in class 04. Hence, there will be even no remote chance of confusion and deception amongst the general public, purchasing public and trade channel. 5.7 It was submitted that the rival marks are phonetically, visually and structurally different and distinct from each other and there would be no chance of creation of likelyhood of confusion and/or deception in the minds of general public, purchasing public and trade channel. It was submitted that as per the provisions as contained under Section 23(1) and (2) of The Trade Marks Act, 1999; the registration of the mark of the Respondent No.1 confers to the same and thereby the Trade Marks Registry has been pleased to allocate the trademark registration certificate to the respondent No.1 as there had Page 14 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined been no objections filed by either the present Plaintiff or any third party or that there were no oppositions received in the matter of the respondent No.1 and in view thereof the Trade Mark of the writ-applicant herein was published in Trade Mark Journal.
5.8 Reliance was placed by Mr. Dave, the learned advocate on the proceedings before the WIPO by filing their application and upon receiving preliminary refusal from the Trade Marks Registry, Delhi in which the mark of the present respondent No.1 was cited for raising an objection. In lieu therewith, the writ-applicant herein has again, for the second time, inspite of being well aware about the existence of the respondent No.1 in India, filed their trademark application which goes to show and establish that, the writ-applicant herein although of being well aware about the presence of the respondent No.1 in Indian market, for his goods, with his brand name, has again applied for the registration of their mark with a malafide intention.
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NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined 5.9 Placing reliance on the aforesaid, it was submitted that the writ-applicant herein was well aware about the respondent's Registered Trade Mark in India for their goods under two counts :-
(a) At the time of receiving the provisional refusal from the WIPO.
(b) At the time of conducting a 'Search' with the data of the Registry on their official website.
5.10 It was submitted that there is a clear admission on the part of the writ-applicant herein in their trademark application that they were not in the business for the goods falling under class-04 till the time of filing their trademark application which was as on 15.02.2021 and that too mentions the user date as proposed to be used. Thus, the actual use of goods falling under class-04 is still not brought to the notice of either the Trade Marks Registry, Delhi or before the Hon'ble Commercial Court, Ahmedabad [Suit filed by the writ- applicant] or even before this Court under the present Page 16 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined rectification application. Harping upon their global presence, sales and advertisement figures, etc. by the writ-applicant herein upon their mark, is with respect to the goods covered under class-07 and not under class-04.
5.11 It was submitted that the writ-applicant herein to claim for the removal of the trademark of the respondent No.1 under the present rectification proceedings; a duty is cast upon the writ-applicant herein to prove that they are an aggrieved party and substantial loss is caused to them coupled with the aspect of harm and injury so as to be able to make an averment that, based on such substantial loss, harm and injury, the writ- applicant have suffered and that based on the same have filed the rectification application.
5.12 It was submitted that in the facts of the present case, the writ-applicant herein silent qua the same and in view thereof the present writ-application be dismissed and no interference be called for.
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NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined 5.13 Placing reliance on Section 34 of the Act it was submitted that the respondent No.1 herein are using their trade mark openly, continuously and extensively since the year 2015 whereas admittedly the writ-applicant herein has filed their trademark application for goods under class 04 as on 15.02.2021; claiming their user date as 'Proposed to be used'. Therefore, the respondent No.1 is a prior user as well as the prior registered trademark holder qua their date of application as well as their date of use and thus as per the provision of Section 34 of The Trade Marks Act, 1999; the writ-applicant herein cannot interfere with or restrain the use of respondent No.1.
5.14 It was submitted that as per provisions of Section 12 of the Trade Marks Act, 1999, the respondent No.1 has adopted the trade mark MAHLE for goods included in class-04 honestly and bonafidely in the year 2015 and since then the respondent No.1 is using the same for the goods included in class-04 continuously, extensively and uninterruptedly. Further, the Page 18 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined respondent No.1 has already narrated the purpose of its adoption of the said trade mark MAHLE for the goods included in class-04 in the reply, that as and when the respondent No.1 had applied in the year 2015, there was no other conflicting mark in existence in class-04, either of the writ-applicant herein or any other third party as per the records of the Register maintained at the Trade Mark Registry. Hence, the respondent No.1 is thus a honest user and bonafide adopter of his registered trade mark MAHLE for goods included in class-
04. 5.15 Placing reliance on the aforesaid submissions, Mr. Dave, the learned advocate appearing for the respondent submitted that the writ-applicant herein has established that because of adoption and use of the Trade Mark MAHLE by the respondent No.1 the writ-applicant herein has suffered loss or damage and hence all the ingredients have not been dealt with and, therefore, the rectification application filed by the writ- applicant herein under Special Civil Application is not Page 19 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined maintainable and the same is liable to be dismissed.
Analysis :-
6. Having heard the learned advocates appearing for the respective parties the following emerges for the consideration of this Court :-
6.1 The writ-applicant herein has preferred the present rectification application invoking Article 226 of the Constitution of India in view of the fact that the Intellectual Property Appellate Board dealing with the application for revocation/cancellation of registration of trade mark patent etc., on Promulgation of Tribunal Reforms (Rationalization of Service) Ordinance, 2021 and Notification on 4.4.2021 the Board which existed under the Trade Mark Act, 1999 having been abolished. At the time when the writ-application was filed in absence of Appellate Authority the writ-applicant herein approached this Court for the reliefs as prayed above. Page 20 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023
NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined 6.2 The writ-applicant's registration of mark MAHLE under No.201696 in Class (7) is secured in India. The writ-applicant herein has been using the same over a century. The writ- applicant herein has been using the mark named MAHLE upon and in relation to products/services/business at least since the year 1938 and derives the trade mark/service mark in the MAHLE, derives its original from the surname of the Hermann Mahle and Ernst Mahle. The trade mark/service mark also forms an essential part of the writ-applicant's corporate name and is a house hold name in many countries including India. The present writ-applicant has presence in various countries as illustrated in paragraph-2.6 to the writ-application. The writ- applicant has expended significant time, effort and resources in obtaining registrations for its trade/service mark MAHLE worldwide and continues to expend the same to to maintain registrations and prosecute new applications in several classes in various countries/jurisdiction of the world. The aforesaid is substantiated in para-2.7 of the writ-application. The writ- applicant enjoys extensive registrations for its trade/service Page 21 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined mark MAHLE in India whereof the details are duly produced in para-2.8 in the writ-application. The writ-applicant herein applied for the said mark MAHLE under in Class-4 on 15.2.2021 vide trade mark application No.4863366 under Class- 4 for Registration of Trade Mark MAHLE and trade mark was objected. The mark 'MAHLE' used by the writ-applicant and the respondent are deceptively similar. 6.3 At the said point of time, it came to the notice of the writ-applicant herein that the respondent herein is the registered proprietor of the trade mark MAHLE under Class-4 with respect to "lubricant oils and grease included in Class-4"
having been issued Certificate No.1356878 on 26.9.2016 with a validity until 10.2.2025. The writ-applicant herein inquired with respect to the registered user and on inquiry it came to the notice of the writ-applicant herein that the respondent herein is not a bonafide user of the registered mark and in view thereof the same is liable to be expunged under the provisions of Section 47(1)(a) of the Act.
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NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined
7. It is apposite to refer to 47 of the Trade Marks Act, 1999 which read thus :-
"Section 47 in The Trade Marks Act, 1999
47. Removal from register and imposition of limitations on ground of non-use.--
(1) A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the Registrar or the Appellate Board by any person aggrieved on the ground either--
(a) that the 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 him or, in a case to which the provisions of section 46 apply, by the company concerned or the registered user, as the case may be, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application; or
(b) that up to a date three months before the date of the application, a continuous period of 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 Page 23 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined 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: Provided that except where the applicant has been permitted under section 12 to register an identical or nearly resembling trade mark in respect of the goods or services in question, or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application under clause (a) or clause (b) in relation to any goods or services, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to--
(i) goods or services of the same description; or
(ii) goods or services associated with those goods or services of that description being goods or services, as the case may be, in respect of which the trade mark is registered.
(2) Where in relation to any goods or services in respect of which a trade mark is registered--
(a) the circumstances referred to in clause (b) of sub-section (1) are shown to exist so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in a particular place in India (otherwise than for export from India), or in relation to goods to be exported to a particular market outside India; or in relation to services for use or Page 24 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined available for acceptance in a particular place in India or for use in a particular market outside India; and
(b) a person has been permitted under section 12 to register an identical or nearly resembling trade mark in respect of those goods, under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or in relation to services for use or available for acceptance in that place or for use in that country, or the tribunal is of opinion that he might properly be permitted so to register such a trade mark, on application by that person in the prescribed manner to the Appellate Board or to the Registrar, the tribunal may impose on the registration of the first-mentioned trade mark such limitations as it thinks proper for securing that registration shall cease to extend to such use.
(3) An applicant shall not be entitled to rely for the purpose of clause (b) of sub-section (1) or for the purposes of sub-
section (2) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade, which includes restrictions on the use of the trade mark in India imposed by any law or regulation and not to any intention to abandon or not to use the trade mark in relation to the goods or services to which the application relates."
8. Considering Section 47 of the Act as referred above, non-use of a registered trademark occurs when it is not used Page 25 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined for more than a period of 05 years and 03 months, resultantly loses the trademark in rectification proceedings. 'Use' of a trademark means that when there is a bona fide intention for the use of the mark in the ordinary course of trade and not only to reserve the right to use the mark. Generally, the onus of proof of non-use of the trademark lies on the person who files the rectification application, but thereafter the burden shifts to the proprietor of the trademark, where the proprietor of the said trademark is required to prove that the proprietor has actually used the mark, failing which the mark is liable to be removed from the register. The proof of use and non-use of a mark must be clear and convincing. "Bonafide use"
means use that is honest and genuine and "not pretended".
The primary purpose of law is to protect the bona fide users of trademark from those who are using it with malafide intention. Section 47 of the Act lays down that mere registration and no use of a trademark can land a registered proprietor in trouble. The mechanism under Section 47 of the Act provides proper defence system against the malicious use of an important asset Page 26 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined of a business.
In light of the aforesaid considering the invoices/delivery challans which are produced on record from pages No. 415 to 508 by the respondent in the affidavit-in-reply from pages No. 198 to 527. From the perusal of the invoices, the said mark i.e. MAHLE has not been used by the respondent for a continues period of 05 years from the date on which the trade mark is actually entered into register i.e. from 20.8.2016, the date on which the respondent is the registered proprietor of the trade mark MAHLE and in view thereof considering the undisputed facts which emerge read thus :-
8.1 The respondent is a registered proprietor of trade mark MAHLE since 20.8.2016. Considering the documents on record, the said mark which is not used by the respondent between 2016-2021, in view thereof, the same is liable to be taken off.
The mark having been not used for the period of 05 years under Section 47(1)(b) of the Act.
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NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined 8.2 The contention of the respondent that the writ- applicant's application before the WIPO came to be rejected taking into consideration the respondent's registered trade mark.
In the opinion of this Court, in the said proceedings the aforesaid was not in question considering the fact that the respondent is a registered proprietor of the mark. 8.3 The contention raised by the learned advocate appearing for the writ-applicant herein stands uncontroverted that the said mark has not been used by the writ-applicant herein after having been granted the same by the competent authority.
Position of law :-
9. In case of Shell Transource Ltd., vs. Shell International Petroleum, Company Ltd., reported in 2012 SCC OnLine IPAB 29, it was observed by the IPAD that the onus of proving non-user is on the person who pleads the same.
In the facts of the present case, the writ-applicant herein Page 28 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined has pleaded that the respondent is not using the impugned mark. The same is required to be specifically denied. The respondent not specifically denied the allegation of non-use by stating the facts on which the denial is made. In absence of specific denial and also furnishing of the investigator affidavit by the writ-applicant herein also confirming non-use of the respondent. The only conclusion emerges is acceptance of allegation of non-use.
Paragraphs 14 to 18 of the decision read thus :-
"14. We have considered the rival submissions and the materials before us. There is no disagreement with the position that he who pleads non-user must prove it. But when the applicant has pleaded non-user, the respondent must specifically deny it stating the facts on which he denies non-user. In the absence of specific denial we can only hold that the allegations stands admitted. This is the spirit of Order 8 Rule 3 and Rule 5 (CPC). There must be pleading of a fact and then there must be acceptable evidence to prove the same. The respondent should have pleaded that they have in fact used the mark after registration and set out the details regarding that. If the respondent does not plead that they had in fact used Page 29 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined the mark it would be difficult for the applicant to prove non user. In fact it is unnecessary. Not having pleaded that they had used the mark the respondent cannot let in evidence to show how they have used the mark. Let us take the example of a suit on a promissory note. The plaintiff sues because of non-payment. The defendant can plead non-execution of course. But if he accepts execution then he should plead the facts to show when he returned the loan. Then the plaintiff can prove that the repayment is false. But if the defendant merely denies non-payment, the plaintiff would find it very difficult to prove non-payment. The task is many times more difficult in a case of non-user.
15. The applicant has shown that they have been trading in the name of SHELL TRANSOURCE with regard to financial services. They are aggrieved because of the Suit filed by the respondent. The main defence of the respondent regarding the pleading of non- user is that the applicant has not proved that the respondent has not used the mark.
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16. The Revlon case (cited supra) is used to defeat rectification applications on the ground that there is no evidence let in by the applicant seeking rectification that the registered proprietor has not used the mark. In the present case, apart from stating that "The applicant has miserably failed to show how the respondent has registered the mark SHELL AUTOSERV without a bonafide intention to use the mark in relation to the services in respect of which it is registered" the respondent has not pleaded that they have used it. We have gone through the counter statement and we found that in the primary objections, para 3 (iii) the above averment is found and in the para-wise reply, in para 7, it is stated that viz-a-viz the applicant's submission in para 22 the respondent submitted that they had registered the mark with a bonafide intention to use the said mark in India in relation to the services for which it is registered. There is absolutely no pleading that they are using the mark after registration. Unless the respondent had pleaded that they are in fact using the mark, there is no duty cast on the applicant to prove that they are not using. Without pleading to that effect, the applicant's case is as good as admitted and the respondent cannot in fact let any evidence of user and has not in fact let in any evidence. The mark remains as a "proposed to be used mark". As regards bonafide intention too, the respondent Page 31 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined must state the facts to show such intention, otherwise it would be difficult for the applicant to let in any evidence or file affidavits to show bonafide intention i.e. what transpires in the minds of the persons that who run the respondent company. For that, there must be intrinsic evidence on the side of the respondent like internal correspondence or advertisements etc., to show that there was some intention to use. There is no pleading regarding the user. If so, the applicant need not prove non-user. It is for the respondent to first plead bonafide intention; which they have not done. Therefore, in the absence of pleading regarding use or bonafide intention to use, we have to accept the applicant's case. In this case, we may look at the order of the Trademark Trial and Appeal Board in Research. In Motion Limited v. NBOR Corporation of 12.2.2009, where it is held that "In sum, applicant has no documentation to demonstrate that it had the requisite bona fide intent to use the mark BLACK MAIL in commerce when it filed the present application. As evidenced by its responses to discovery requests, applicant has no plans relating to use of the mark, no plans relating to trade channels or target customers, and no plans for expansion and growth of its product line to be sold under the mark. So as to be clear, the record it completely devoid or any evidence such as product Page 32 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined design efforts, test marketing, correspondence with prospective licenses, preparation or marketing plans or business plans, creation of labels, marketing or promotional materials, and the like.
Applicant has not rebutted opposer's showing that applicant lacked the requisite bona fide intent. The fact that applicant filed multiple applications for the mark, or that there is correspondence between applicant and counsel regarding applicant's applications, hardly establishes a bona fide intent to use the mark. If the filing and prosecution of a trademark application constituted a bona fide intent to use a mark, then in effect, lack of a bona fide intent to use would never be a ground for opposition or cancellation, since an inter partes proceeding can only be brought if the defendant has filed an application. The absence of documentation coupled with applicant's failure to take testimony or offer any evidence supporting its bona fide intent to use convince us that applicant did not have a bona fide intent to use the mark. Further, that Denny Jaeger, applicant's chief executive officer, believed BLACK MAIL to be a good mark for future use does not establish a bona fide intent to use. Likewise, applicant's mere statement that it intends to use the mark, and its denial Page 33 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined that it lacked a bona fide intent, do not establish, in fact, that it had a bona fide intent to use the mark in commerce when it filed the involved application. Evidence bearing on bona fide intent is "objective" in the sense that it is evidence in the form of real life facts and by the actions of the applicant, not by the applicant's testimony as to its subjective state of mind. That is, Congress did not intend the issue to be resolved simply by an officer or applicant later testifying, "Yes, indeed, at the time we filed that application, I did truly intend to use the mark at some time in the future."
17. This is correct. In this case, there is no pleading rebutting the allegation of non-user. The above passage indicates how bonafide intention is pleaded and if necessary proved. The mere fact that a mark is registered cannot be evidence of use or bonafide intention to use, for then all s. 47 applications must fail.
18. In J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, §19 : 14 (4th ed. 2009) it is observed "here the complete lack of documentation or testimony clearly outweighs any subjective or sworn intent to use the mark." In the context of non-use, it is well settled position of law as referred above that the use has to be genuine in the Page 34 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined relevant class of goods and services. Unless the non-use is explained by way of special circumstances, the mark would be liable to be removed from non-use.
9.1 The aforesaid was considered by the Hon'ble Apex Court in the case of Neon Laboratories Ltd. v. Medical Technologies Ltd., reported in (2016) 2 SCC 672, para-10 read thus :-
"10. Section 47 of the Act is in the same vein and statutory strain inasmuch as it postulates the possibility of a registered mark being taken off the register on an application being made by any aggrieved person, inter alia, on the ground that for a continuous period of five years and three months from the date on which the trade mark was registered, there was no bona fide use thereof. In the case in hand, prima facie, it appears that for over five years after a registration application was made by the appellant-defendant, the mark was not used. Facially, the Act does not permit the hoarding of or appropriation without utilisation of a trade mark; nay the appellant-defendant has allowed or acquiesced in the user of the respondent-plaintiffs for several years. The legislative intent behind this section was to ordain that an applicant of a trade mark does not have a permanent right by virtue of its application alone. Such a right is lost if it is not exercised within a reasonable time."
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NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined In the facts of the present case no explanation comes forth with respect to non-use by the respondent herein and the same in view thereof is liable to be removed on the ground of non-use of the registered mark itself. Pending the writ- application and during the course of hearing also in absence of any document with respect to use of mark 'MAHLE' by the respondent, the writ-applicant herein requires consideration under the provisions of Section 47 of the Act.
10. Mr. Dave, the learned advocate appearing for the respondent submitted that the remedy lies by preferring an application under Section 57 of the Act for removal or cancellation of the trade mark on the ground of any contravention or failure to observe a condition entered in the register in relation thereto.
In the opinion of this Court, considering the ratio as laid down in Blue Heaven Cosmetic Pvt. Ltd., as also on perusal of Section 57 of the Act, upon an application being Page 36 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined filed by any person aggrieved the High Court may pass order cancelling or varying the registration if (1) there is any contravention or failure to observe a condition entered in the register in relation thereto (2) any entry made in the register without sufficient cause (3) any entry is wrongly remaining in the register (4) there is any error or defect in any entry in the register. The aforesaid contention does not appeal to this Court considering undisputed non-use of mark 'MAHLE' continuously for a period of 05 years as provided under Section 47 of the Act.
11. In view of the aforesaid, this Court is inclined to pass the following order :-
In the facts of the present case, the mark MAHLE which is registered by the respondent is clearly a mark which is identical in all respect to the writ-applicant herein. The writ- applicant herein not only has adopted the mark since the year 1938 but has also used the mark in India by sourcing its products from India. The trade/service mark name MAHLE Page 37 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined derives its origin from surname of the Hermann Mahle and Ernst Mahle brothers and the writ-applicant herein has been using the mark/name MAHLE upon and in relation to its products/services/business at least since the year 1938. The trade/service mark MAHLE also forms an essential part of the writ-applicant's corporate name and is its house mark. Having applied for the registration of the said mark 'MAHLE' in class- 04 and the same having been objected, the mark 'MAHLE' having been used by the respondent the writ-applicant falls under the definition 'person aggrieved'.
11.1 The aforesaid clearly shows that the applicant is not true proprietor of the impugned mark under section 18(1) of the Act.
11.2 The writ-applicant is using the mark since decades and with long and continuous use the writ-applicant's mark has acquired well knownness under section 11(6) of the Act. 11.3 Though the respondent is a registered proprietor having not used the mark for more than 05 years, the same is Page 38 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023 NEUTRAL CITATION C/SCA/11855/2021 JUDGMENT DATED: 09/11/2023 undefined required to be removed from the register.
12. This Court is inclined to exercise extraordinary jurisdiction under Article 226 of the Constitution of India. The present writ-application stands allowed in terms of para-6(a) of the writ-application.
(VAIBHAVI D. NANAVATI,J) K.K. SAIYED After pronouncement of the judgment Mr. Kedar G. Dave, the learned advocate appearing for the respondent No.1 requested to stay the operation and implementation of the present judgment for a period of six weeks. Mr. Abhisst K. Thaker, the learned advocate appearing for the writ-applicant has strongly objected. Looking to the facts of the case and circumstances of the case, operation and implementation of present judgment shall stand stayed for a period of four weeks from today.
(VAIBHAVI D. NANAVATI,J) K.K. SAIYED Page 39 of 39 Downloaded on : Thu Nov 09 20:53:33 IST 2023