Gujarat High Court
Bharatbhai Khushalbhai Patel Trading ... vs Delux Bearing Limited & on 22 February, 2013
Author: Bhaskar Bhattacharya
Bench: Bhaskar Bhattacharya
BHARATBHAI KHUSHALBHAI PATEL TRADING AS HARIKRISHNA....Petitioner(s)V/SDELUX BEARING LIMITED C/SCA/12627/2012 CAV JUDGEMNT
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD SPECIAL CIVIL APPLICATION NO. 12627 of 2012 FOR APPROVAL AND SIGNATURE:
HONOURABLE THE CHIEF JUSTICE MR.BHASKAR BHATTACHARYA and HONOURABLE MR.JUSTICE J.B.PARDIWALA ========================================================= 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, 1950 or any order made thereunder ?5
Whether it is to be circulated to the civil judge ?
========================================================= BHARATBHAI KHUSHALBHAI PATEL TRADING AS HARIKRISHNA INDUSTRIES Versus DELUX BEARING LIMITED & ORS.
========================================================= Appearance:
MR HARSHIT S TOLIA, ADVOCATE for the Petitioner.
MR TUSHAR MEHTA, SR. ADVOCATE with MR. Y.J. JASANI with MR. PRATIK Y JASANI, ADVOCATE for the Respondent No. 1 NOTICE SERVED BY DS for the Respondents No. 2 - 4 ========================================================= CORAM:
HONOURABLE THE CHIEF JUSTICE MR.BHASKAR BHATTACHARYA and HONOURABLE MR.JUSTICE J.B.PARDIWALA Date : 22/02/2013 CAV JUDGEMNT (PER:
HONOURABLE THE CHIEF JUSTICE MR.BHASKAR BHATTACHARYA)
1. This application under Article 226 and 227 of the Constitution of India is directed against order dated 16th July 2012 passed by Intellectual Property Appellate Board [IPAB], Circuit Bench sitting at Ahmedabad, in ORA/200/2007/TM/AMD thereby allowing the Rectification Application filed by the respondent No.1 and removing from the register the trademark of the petitioner bearing No. 942022 in Class-12 for trademark SUPER DELUX BEARING .
2. The case made out by the petitioner in this writ-application may be summed up thus:
2.1 The petitioner is engaged in the business of manufacturing, marketing and selling bearings in respect of water pumps, etc. falling in Class-XII of the trademark classification since 25th September 1995 under the trademark SUPER DELUX BEARINGS . As the mark acquired distinctive character as a result of the continuous use made of it, the petitioner applied for registration of the trademark in question on 24th July 2000 with the Trade Mark Registry, which, after due verification and after following the due process of law, has registered the trademark of the petitioner for the goods falling in Class XII.
Since then, the trademark is on the register.
2.2 The respondent No.1 objected to the above mark registered with effect from 24th July 2000 by filing an appeal before the IPAB mainly on the following grounds:
1. Non-user within the meaning of section 47(1) of the Trade Marks Act, 1999 [the Act, hereafter]
2. Deceptive similarity under section 11(1) of the Act.
3. Adoption of the trademark was not bona fide.
2.3 So far as the first ground as regards non-user is concerned, the same was rejected. As regards the second ground, the same was not accepted on the ground that the respondent No.1 failed to establish link with the mark in question since inception as the chain of title is doubtful. So far as the last ground is concerned, viz. whether the same was bona fide adopted or not, the IPAB held that the benefit of honest, concurrent user would have been given to the petitioner. According to the IPAB, the trademark should be removed from the register not because it is copied from the respondent No.1 but because of it being incapable to be registered on the count of generic to the trade.
2.4 According to the petitioner, no proof of actual confusion by the respondent No. 1 was given and that the registration of the trademark of the petitioner was in respect of the goods falling under Class XII as against the respondent No.1 having its trademark registration in respect of goods falling in Class VII. The respondent No.1 also filed a Civil Suit for infringement and passing off of the trademark and for the infringement of the copyright in which the trial Court has refused interim injunction and appeal filed before this Court is pending without there being any interim relief.
2.5 The petitioner claims that although the respondent No. 1 is claiming the use of the trademark prior to the use of the petitioner, as observed by the IPAB, it has failed to establish the chain of title to the ownership since inception, and at the most, the use prima facie appears to be with effect from the year 2001, that is, 6 years subsequent to the registration application of the petitioner.
3. Mr. Tolia, the learned advocate appearing on behalf of the petitioner vehemently contended that the case of the respondent No.1 was essentially limited to the ground of his prior user of the trademark DELUX BEARINGS and that the respondent No.1, for the first time, applied for registration on 21st June 2001 and the said firm came into existence on 18th July 2000 at the earliest. Further, the respondent No.1 firm failed to establish the chain of title to the ownership of the trademark alleged to have been used prior to the use of it by the petitioner.
3.1 As regards the ground of non-user of the mark, Mr. Tolia contends that on the face of it, it was false and completely discarded by IPAB. According to the petitioner, right from the beginning, the issue was a claim of prior use and nothing beyond the same. Mr. Tolia further contends that neither the Trade Mark Registrar nor the IPAB had ever raised the issue of trademark DELUX or SUPER DELUX being generic to the trade, and, therefore, the petitioner had no opportunity to explain the said aspect. Thus, the impugned order was passed in gross violation of the principles of natural justice inasmuch as the issue was suo motu raised and decided contrary to the interest of the petitioner without offering the petitioner an opportunity of hearing.
3.2 Mr. Tolia further contends that if an opportunity was given to his client, he could have established that a distinctive character of his trademark in question was acquired and the increase in turnover also established the distinctive character of the trademark of the petitioner as a result of the use made of it. Mr. Tolia further contends that the authority below itself came to the conclusion that use of mark by the petitioner since 1975 till the filing of the petition is continuous, open and extensive and thus, the impugned mark is entitled to be registered under Section 9 of the Act.
3.3 Mr. Tolia further submits that the IPAB has failed to appreciate the difference between dictionary word and generic word. According to him, the most of the trademarks on the register are bound to be having some meaning in some language and the trademark being a dictionary word is of no consequence at all for being registered. According to Mr. Tolia, in the present case, the mark used by the petitioner is having a distinctive character as mark of the petitioner and was capable to distinguish its goods of water pump etc. falling under Chapter XII of the Act from those of any other persons as there is no use of the trademark of other person in respect of the goods falling under Class XII.
3.4 Mr. Tolia, therefore, prays for setting aside the impugned order passed by the IPAB.
Mr. Mehta, the learned Senior Advocate appearing on behalf of the respondent, has, on the other hand, opposed the aforesaid contentions of Mr. Tolia and has pointed out that the respondent herein, in the application for rectification prayed for removal of the petitioner s label mark on the grounds available under Sections 9(1), 9(2), 11, 12 and 18 of the Act and also contended that the entry of petitioner s label mark is made in the Register without sufficient cause . Mr. Mehta further points out that his client also prayed for removal on the ground that the entry has wrongly remained on the Register as contemplated under Section 57(2) of the Act.
4.1 By referring to the provisions of section 9(1) of the Act, Mr. Mehta submits that the words the words super Delux bearings used by the petitioner are devoid of any distinctive character. According to Mr. Mehta, the terms super and deluxe designate the quality and value of the goods and/or characteristics of the goods and therefore, per se not registrable.
Mr. Mehta further points out that according to the proviso to section 9(1) of the Act, even the trade marks enumerated under Section 9(1)
(a), (b) and (c) can be registered if the applicant establishes that before the date of application for registration the said trade mark, namely, super and deluxe and/or super deluxe has acquired a distinctive character as a result of the use made of it. According to Mr. Mehta, the petitioner did not acquire any distinctive character as a result of use made by it. Mr. Mehta further contends that his client also raised a ground contemplated under Section 9(2) (a) of the Act in the Rectification Application.
4.2 By referring to Section 11 of the Act, Mr. Mehta contends that his client also raised grounds of identity of the petitioner s impugned mark and also similarity of goods with the respondent s trade mark, which is earlier trade mark as contemplated under Section 11(1)(a) and (b) of the Act, which had a likelihood of confusion on the part of the public and has likelihood of association with that of the earlier trade mark" viz. registered trade mark of the respondent.
4.3 At this stage, Mr. Mehta further submits that his client s trade mark is registered on 7th March 2005 whereas the petitioner s impugned mark is registered on 19th November 2005 and thus, the registered trade mark of the respondent herein is earlier trade mark as contemplated under Section 11 of the Act.
4.4 Mr. Mehta further points out that though the explanation to sub-section (4) of Section 11 is amended by the Legislature in the year 2010, the same has not been brought into force as on the date of filing of the Rectification Application, or on the date of the decision of the IPAB in the said application or even as on today. Mr. Mehta, therefore, submits that the earlier provision (which holds the field today) does not refer to nor has any bearing with the application for registration. Mr. Mehta, therefore, submits that as on date, the trade mark which is registered first, viz. the present respondent s trade mark, is earlier trade mark for the purpose of the Act.
4.5 By referring to section 12 of the Act, Mr. Mehta contends that in the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar, whether any such trade mark is already registered or not, in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose, but the petitioner in this case did not raise the defence of honest and concurrent use in any of the pleadings in his written statement.
4.6 According to Mr. Mehta, as provided in Section 12 of the Act, the present petitioner could have defended the Rectification Application of the present respondent by showing with evidence that (a) the petitioner has honestly used the trade mark before registration, or,
(b) they have concurrently used the trade mark. Mr. Mehta submits that the petitioner has not raised the defence under Section 12 of the Act at all for obvious reasons inasmuch as it can be shown from the records that the present respondent is in the business of manufacturing the very same goods since the year 1969 and the words Delux Bearings have acquired distinctiveness which can be demonstrated by the fact that almost all major automobile industries in the country and abroad are using the goods manufactured by the present respondent under the trade mark Delux Bearings . According to Mr. Mehta, no reasonable or rational person could have believed use made by the present petitioner to be honest use as contemplated under Section 12 of the Act when the petitioner is merely imitating or counterfeiting or duplicating the very same goods of the respondent by adding the word super in the trade mark of the present respondent.
4.7 Mr. Mehta, in this connection submits that the IPAB has, in fact, committed an error while mentioning in paragraph 16 of the impugned order based upon Section 12 of the Act. According to Mr. Mehta, it was his client who has raised an objection that the present petitioner is not entitled to claim honest and concurrent use under Section 12 of the Act and it was not a defence put forward by the present petitioner with any evidence. Mr. Mehta submits that the Board, therefore, had no occasion to consider the said defence more particularly in the absence of any evidence led by the present petitioner. Mr. Mehta further submits that as a matter of fact, it could be demonstrated from the record before the IPAB itself that use of Super Delux Bearings as a label mark by the petitioner for water pump bearing in automobiles is not an honest concurrent use, but a dishonest duplication. Mr. Mehta drew our attention to page 301 to 313 of the paper-book, which is the price-list of the products manufactured and sold by the present respondent No.2 to automobile manufacturers like TATA, Ashok Leyland, Hindustan Motors, Premier Automobiles, Bajaj Tempo, DCM Toyota, Eicher, Mitsubhishi Motors, Mahindra Nissan, Swaraj Mazda, Escort, Mahindra and Mahindra Tractors, Bajaj Tractors, TAFE Massey Ferguson, Eicher Tractors, Punjab Tractors, HMT Limited, Mahindra and Mahindra Jeep, Maruti Suzuki, Kinetic Engineering Limited, and TVS Suzuki, etc. According to Mr. Mehta, in the said price-list, each component manufactured by the present respondent under the trade mark Delux Bearings is given Series Number which is based upon the suitability of the bearing for each vehicle of each automobile manufacturer. To illustrate from a similar list at page 271 to 273, Mr. Mehta gave the following illustrations which is taken from the present respondent s price list effective from 1.5.1992 which is not disputed by the present petitioner.
Ref.No. Equivalent No. Price WP 507 FPS 23 Rs.120 WP 506 FPS 348 Rs.120 WP 501 FPS 104 Rs.120 WP 502 FPS 100 Rs.120 4.7.1 Mr. Mehta submits that
as against the aforesaid products of the respondent sold throughout the country with the registered trade mark, the present petitioner duplicates the product, which can be manifested from the documents produced by the petitioner himself before the IPAB, which demonstrates that the petitioner has applied for impugned mark Super Delux Bearings as a label mark and the petitioner has not produced any document or any other evidence showing that he has used the said label mark including Super Delux Bearing either at the time of
(i) claim of user i.e. prior to the application filed by the petitioner (from 1995 to 2000 as falsely claimed), (ii) on the date of the application filed by the petitioner (year 2000), (iii) on the date of registration of the impugned mark in the name of the petitioner (year 2005), and, (iv) even thereafter.
4.7.2 Mr. Mehta further submits that the petitioner could not have and therefore, rightly did not have claim protection under Section 12 of the Act on the ground that there is honest & concurrent use of the label mark either before the application for registration, on the date of the registration, during the pendency of the said application or even thereafter.
4.8 By referring to section 20 of the Act, Mr. Mehta submits that a perusal and closer scrutiny of Section 20 of the Act makes it clear that unlike other applications for registration under various laws, the application filed for getting a trade mark registered has a separate, different and distinct statutory scheme. Mr. Mehta submits that the Registrar, when he receives an application for registration of trade mark, has two-fold functions or discretion under Section 20 of the Act, namely:
(a). if the Registrar accepts the application for registration, he is under an obligation to advertise in the prescribed manner i.e. in the Trade Mark Journal, as prescribed under the Rules, and,
(b). the Registrar may not accept the application for registration straightway and may decide to advertise the application inviting objections against the acceptance of the application itself.
4.8.1 Mr. Mehta submits that if the Registrar, in his discretion, decides to advertise the application before its acceptance and/or to re-advertise the application before acceptance under Section 20(2) of the Act and thereafter accepts the application for registration, the Registrar is under an obligation by law to advertise the accepted application as mandatorily stipulated under Section 20(1) of the Act. In this case, Mr. Mehta submits that the application for registration of impugned trade mark of the petitioner was advertised before acceptance and the petitioner has neither produced the certificate of registration under Section 23(1) nor has the Registrar advertised the application after acceptance inviting objections against registration. Mr. Mehta submits in this connection, by referring to section 30 of the Act that the Act not only permits challenge to the validity, registrability and continuance of a registered trade mark on the Register as a registered trade mark but also gives three opportunities to the proprietor defending the impugned label mark to lead evidence and show distinctiveness. According to Mr. Mehta, the said three opportunities are statutorily stipulated as under:-
(1) The first opportunity is given at the stage of filing an application and its acceptance to show, by cogent evidence, that the impugned trade mark has received distinctiveness prior to making of an application.
This opportunity is at the time of filing application for registration.
(2) The second opportunity is under Section 31 of the Act, and (3) The third opportunity is given under section 32 of the Act.
4.8.2 Mr. Mehta broadly classified the three opportunities as under:-
(i) The evidence which can be led to show user of the trade mark before applying at the time of registration;
(ii) The leading of the evidence after acceptance of application for registration and the actual registration to show that at the time of actual registration, the mark was used and had acquired distinctiveness;
(iii) Even if a proprietor of the impugned mark fails to avail both the opportunities referred above and the trade mark is questioned in any legal proceedings (including the proceedings under Section 57 of the Act), such proprietor (the present petitioner in the present case) can lead cogent evidence showing that even though the impugned label mark had not acquired distinctiveness either before applying or before its actual registration, the said mark has acquired distinctiveness after its registration when he is defending challenge to the registration.
4.8.3 Mr. Mehta submits that in the present case, the petitioner has not produced anything in the evidence to show that:-
(i) The user of the label mark (which subsequently came to be registered) from 1995, (the year claimed by him from which he claimed to have started using) till year 2000 (the year in which he made the application for registration);
(ii) The label mark as advertised under Section 20 has acquired distinctiveness between the date of the application in the year 2000 and the date of its registration in 2005, and,
(iii) when the present petitioner filed an application under Section 47 read with Section 57 of the Act in the year 2007, the petitioner had the opportunity to show the distinctiveness as contemplated under Section 32 of the Act after 2005 (i.e. after registration).
4.9 As regards the contention of acquiescence raised by the petitioner, Mr. Mehta submits that prior to the Act came in to force, the law which was in force was the Trade and Merchandise Act, 1958 (hereinafter referred to as the earlier Act ). In the earlier Act (which is repealed), the period of limitation was prescribed to be 7 years for filing application for rectification. Mr. Mehta submits that even under the earlier Act, even after expiry of period of limitation of 7 years, filing of a Rectification Application was permissible if three conditions stipulated under Section 32 of the earlier Act could be established. Mr. Mehta submits that the Parliament has thereafter enacted the present Act and as per the legislative policy in the present Act, the new Act has dispensed with the period of limitation altogether. Mr. Mehta submits that the Parliament, for the first time, brought into the aspect of acquiescence with a specific stipulation that the acquiescence has to be while being fully aware of the existence and use of the trade mark which is being disputed. Mr. Mehta submits that under the Scheme of the present provision, namely, Section 33 of the Act of 1999, the Proprietor of an earlier trade mark (the present respondent) can be said to have acquiesced only if :-
(i) it is for a continuous period of five years from the date of registration with the use of the impugned mark of the present petitioner ; and,
(ii) being aware of its EXISTENCE and USE of the impugned mark of the petitioner.
4.9.1 Mr. Mehta submits that in the aforesaid two circumstances, such proprietor (viz. petitioner herein) is no longer entitled to apply for a declaration that the registration of the later trade mark is invalid or to oppose the use of impugned mark in relation to goods or services in relation to which it has been so registered and/or used.
4.10 Mr. Mehta contends that even if the proprietor of an earlier trade mark has acquiesced for a continuous period of five years, though being fully aware of the use, he can still challenge the impugned competing mark, if he can establish that the later trade mark was applied for and got registered in good faith.
4.11 Mr. Mehta submits that present proceedings are not barred either on the ground of acquiescence or delay, first, as the petitioner has not raised this defense in his reply with any evidence, and, secondly, the facts pleaded by the present respondent before the IPAB as well as this Court are not disputed by the present petitioner. Mr. Mehta submits that his client has placed the following facts before the IPAB which have not been disputed by the petitioner:-
(1). The respondent has its market throughout the country and also in many other foreign countries and the respondent is not based in one district;
(2). The present petitioner is a local manufacturer based at Surendranagar, one of the districts in State of Gujarat doing duplication of respondent s products which are marketed in a small part of the said district;
(3). It was/is not the case of the petitioner with any evidence that the present respondent was aware either of the existence of petitioner s impugned mark or its use by the petitioner ;
(4). The present respondent came to know about the impugned Super Delux Bearings being used by the present petitioner only in the year 2007 and immediately the respondent filed Civil Suit No.1832 of 2007 against one M/s Poonam Engineering Works and the said defendant filed its written statement contending that it is purchasing such bearings from the present petitioner. The Court granted injunction dated 28.9.2007 in favour of the present respondent.
(5). Having come to know about the impugned label mark being used by the present petitioner in the year 2007, the present respondent filed Rectification Application immediately and promptly on 29th October 2007.
4.11.1 In other words, according to Mr. Mehta, the moment the respondent became aware of the impugned mark being used by the present petitioner in the year 2007, it immediately filed the Rectification Application. The delay between 2007 (filing of Rectification Application by the respondent) and passing of the impugned order in the year 2012 can neither be used against the present respondent nor can be used to argue acquiescence or waiver on the part of the present respondent. Mr. Mehta further contends that nowhere in the pleadings or documents filed, the present petitioner has even remotely contended that the present respondent was aware of the user of the label mark by the petitioner for five years or for any other period and has thereby acquiesced.
4.11.2 On the aforesaid grounds, Mr. Mehta, therefore, prays for dismissal of this application.
4.11.3 Therefore, the question that arises for consideration in this application under Article 227 of the Constitution of India is whether the IPAB in the facts of the present case was justified in passing the order impugned justifying interference in this proceeding.
5. After hearing the learned counsel for the parties and after going through the above materials on record, we find that the respondent before us filed the application for revocation of registration on three specific grounds, i.e., [i] non-user within the meaning of Section 47[1] of the Act; [ii] deceptive similarity under Section 11[1] of the Act and [iii] on the ground that the adoption of the trademark was not bona fide. It appears from the order impugned that the ground of non-user was rejected. Similarly, the second ground regarding deceptive similarity under Section 11[1] of the Act was also not accepted on the ground that the respondent no.1 failed to establish the link with the mark in question since inception as the chain of title was doubtful. As regards third ground, the IPAB held that the benefit of honest and concurrent user should be given to the petitioner, but the trademark in question should be removed from the register not because it was copied from the respondent no.1 but on the ground that it was being incapable of being registered on the count of generic to the trade.
6. At this stage, it would be appropriate to quote the following relevant observations from the order impugned:
13. We shall now examine whether the impugned trade mark is prohibited under Section
9. As can be seen from the record the respondent application was made on 24th July 2000 claiming user since 1995 in respect of vehicles, apparatus for locomotion by land, air or water, water pump bearing, clutch bearing, automobiles and parts thereof in Class 12. Random dictionary states DELUXE (the impugned mark is SUPER DELUX) was originally a French word for luxury. The English meaning of the word is opulent, rich, special, splendid and superior in quality such as DELUX car with rich finishing etc. Phonetically, the pronunciation of DELUX and DELUXE is one and the same. The word SUPER means beyond compare, surpassing all others, superior quality. SUPER DELUX in combination is a laudatory expression eulogizing the quality of the products as something as out of the ordinary. Such words cannot function as a trade mark. Such laudatory expressions are property of all consumers and producers. It is reflective of the superlative qualities of the goods and how it was registered is a matter of debate. Five years user or even 100 years such use cannot make it distinctive. It is incapable of functioning as a trade mark with any length of use. Section 9(1) is, therefore, an absolute bar and the impugned marks needs to be removed on this ground alone.
However, we may add that it does not lie in the mouth of the applicant to attach the impugned mark on the ground of distinctiveness. We take note of applicant s effort to cherry pick what suits their interest overlooking the fragility of their own mark.
6.1 Ultimately, the IPAB made the following observations in allowing the application for removal of the mark:
18. We have already taken a stand that impugned trade mark SUPER DELUX BEARINGS has been registered contrary to the provision of the trade mark law. The purity of the register is of great importance to the trade in general quite apart from the merits or demerits of particular litigant. On equitable principle the applicant has no superior claim on expressions like Delux Bearings of which they are the registered proprietor and which is the basis to seek cancellation of the impugned trade mark SUPER DELUX BEARINGS . We are distressed to note this type of trade mark being put on register and it does undoubtedly create distortion in the trade. The idea of justice and fairness in the adjudication process compels us to record these observation wearing the robe of office we hold.
7. We are of the opinion that the aforesaid reasons assigned in allowing the application of the respondent by the IPAB are given in total ignorance of the proviso to Section 9 of the Act. Section 9 of the Act is quoted below:
9.
Absolute grounds for refusal of registration :-
(1) The trade marks-
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;
(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered :
Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.
(2) A mark shall not be registered as a trade mark if-
(a) it is of such nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 .
(3) A mark shall not be registered as a trade mark if it consists exclusively of-
(a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.
Explanation.-For the purposes of this section, the nature of goods or services in relation to which the trade mark is used or proposed to be used shall not be a ground for refusal of registration.
(Emphasis supplied by us).
7.1 Therefore, in a given situation, even the mark Super Deluxe , which, otherwise, may come within the purview of Section 9(1) of the Act, can, nevertheless be registered if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.
Therefore, for the removal of such mark on the ground that it could not be registered at all, it was the duty of the authority below to give an opportunity to the petitioner to prove that his case comes within the proviso to Section 9(1) of the Act. For not giving such opportunity and at the same time, in the absence of any finding that the petitioner had not acquired such distinctive character as a result of use made of it, the order impugned cannot be supported and should be set aside and the matter should be remanded back to the IPAB for fresh decision.
8. We find substance in the contention of Mr. Tolia, the learned Advocate for the petitioner, that the ground on which the mark has been removed from the register was not really pressed by the respondent no.1, but it was the IPAB which suo motu took up the above point, as a result, the petitioner could not get the opportunity of controverting the finding recorded by the authorities below. We also find substance in the contention of Mr. Tolia that before arriving at the finding which was the basis of removal of registration, an opportunity should have been given to the petitioner before us to show that distinctive character of the trademark in question was acquired and that the increase in turnover was also established as a result of use made of it. We further find that the authorities below itself came to the conclusion that use of mark by the petitioner since 1975 till the filing of the petition was continuous, open and extensive. In such circumstances, the petitioner should be given an opportunity to prove that the petitioner is having a distinctive character as mark of the petitioner was capable to distinguish its goods of water pump etc. falling under Chapter-XII of the Act from those of any other person as there was no use of trademark of other person in respect of the goods falling under Chapter-XII.
9. So far as the findings which were recorded against the respondent no.1, by the IPAB, we agree with Mr. Mehta, the learned Senior Advocate appearing on behalf of the respondent no.1, that those findings can also be challenged in this proceedings by the respondent no.1, inasmuch as, it having succeeded in the application for removal of registration, there was no scope of challenging those findings when the ultimate relief claimed was obtained by the respondent no.1. Since, the present proceedings are not appellate proceedings there is even no scope of filing cross-objection against adverse findings against the successful respondent but the respondent can convince this court that in the facts of the present case, the IPAB should not have made such findings and that those findings adverse to the Respondents were unjust.
10. We, therefore, find that it is a fit case where in the absence of any opportunities given to the petitioner to substantiate his defence within the proviso to Section 9(1) of the Act, the ultimate conclusion arrived at by the authority below cannot be supported. Since we propose to set aside the order passed by the authority below on the above ground alone, we also keep the entire matter open before the Tribunal even regarding the other findings on merit which were given against the respondent no.1, with opportunities to the parties to lead further evidence on other points also. Although before us, some new materials were placed by the parties on the other findings, we have decided not to consider those materials as those are placed for the first time before us and in a proceeding under Article 227 of the Constitution, we should not look into those fresh materials for reassessment on merit (See Altaf Khan vs. Md. Amin Khan reported in (1995) Supp 4 SCC 725).
11. In the result, the application succeeds. The order impugned dated 16th July 2012 passed by the IPAB, Circuit Bench, Ahmedabad is hereby set aside. The matter is remanded before the authority below for fresh decision in the light of the observations made in the body of the order. No costs.
(BHASKAR BHATTACHARYA,CJ) (J.B.PARDIWALA, J.) mathew FURTHER ORDER:
After this judgment was pronounced, Mr. Mehta, the learned Senior Advocate appearing on behalf of the respondent No.1, prays for stay of the operation of the above judgment.
In view of what has been stated hereinabove, we see no reason to stay our judgment. The prayer is, thus, rejected. However, if applied for, certified copy of the judgment be issued by Monday, the 25th February 2013.
(BHASKAR BHATTACHARYA,CJ) (J.B.PARDIWALA, J.) mathew Page 26 of 26