Intellectual Property Appellate Board
Sudhir Batra vs Arjies Aluminium Udyog And The ... on 10 February, 2005
ORDER
Raghbir Singh, Vice Chairman
1. CM(M) 512/97 has been transferred from the High Court of Delhi in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TA/135/03.
2. First respondent filed an application being application No. 542723 for registration of trade mark word per se 'Arjies' in artistic manner in class 6 in respect of aluminium door and window fittings. First respondent claimed user since 1.9.1990. In the usual course, the mark was published in the Trade Marks Journal No. 1091 dated 22.11.1994 at page 9. Appellants gave their notice of opposition on 17.2.1995. First respondent filed their counter statement on 19.4.1996 and in the usual course evidence was filed by the appellant and the first respondent. The Assistant Registrar of Trade Marks held hearing on 7.5.1997 when the counsel for both the appellant and the first respondent were present.
3. Learned counsel for the appellant based his opposition on the grounds that the first respondent is not the proprietor of the mark in terms of section 9 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) since the mark has been dishonestly adopted. Appellant is the registered proprietor of trade mark 'ARCHIS' under No. 479648 as of 9.10.1987 with the user as from 10.4.1981 for manufacturing and marketing of builders, hardwares made of ferrous and non-ferrous metals. Learned counsel for the appellant based his opposition under sections 11(a), 12(1) and 12(3) of the Act. He also pressed for the dishonesty of the first respondent as having used the word 'R' within a circle in his advertisements even before the final disposal of the application by the Registrar.
4. Learned counsel for the first respondent submitted before the Assistant Registrar that the word 'ARCHIS' is not an invented word and their impugned mark 'Arjies' is in tune with their trading style, namely, Arjies Aluminium Udyog. He claimed the registration under section 12(3) of the Act. He submitted that the appellant is not using the mark since 1984 and whatever sales he has made those are under a different mark 'CLASSIC'. Assistant Registrar in his order having held that the marks are deceptively similar to each other allowed for registration of the impugned mark under section 12(3) of the Act. He concluded that the first respondent has adopted the mark in a bonafide manner since it is in tune with the trading style of the first respondent. Appellant is not in use of the mark 'ARCHIS' since 1986. So there is a good case for grant of registration under section 12(3) of the Act. IN arriving at this conclusion, he has put heavy reliance upon London Rubber Co. Ltd. Vs. Durex Products 1964 (2) SCR 211.
5. Appeal was filed in the High Court of Delhi on 9.9.1997. Appellant has submitted that the second respondent has seriously erred in allowing the application under section 12(3) of the Act. The very adoption of the mark 'Arjies' and the same as the trading style of the first respondent was dishonest from the very inception. A bare search from the trade mark register would have brought in the true position. It has nowhere been explained and no attempt has been made to find out as to why the first respondent adopted the mark 'Arjies' and the same as its trading style. Appellant had been in use of its mark 'ARCHIS' continuously since 10.4.1981 and uptil the present time. The second respondent has seriously erred in holding that the appellant is not in use of the mark 'ARCHIS' after 28.4.1986 whereas the appellant had categorically stated that he is in use of the mark and had given the sales figures thereof. After 1984 the appellant had been using the two marks, namely 'ARCHIS' and 'Classic' for his goods and the second respondent has not tried to appreciate that aspect. There is sufficient evidence about the use of the mark 'ARCHIS' and the second respondent has not tried to appreciate that also. M/s Batra Enterprises and Gayfield and Company had been purchasing the goods of the appellant and selling it. This fact is borne out in relevant paragraphs of their affidavits reproduced in the appeal. The date of filing of application by first respondent is 31.12.90 and the user claimed is as from 1.9.90 - a user of less than four months. First respondent had dishonestly and fraudulently used the mark by using 'R' in a circle. Thus the first respondent cannot be held to be the proprietor in terms of section 18(1) of the Act. The second respondent is wrong in concluding that the adoption of the mark by the first respondent is honest because the appellant had not filed any evidence after 28.4.1986 about the user of their mark. Appellant had been using the mark even after 28.4.86 and assuming even if there is no use of the mark after that date, that fact in itself does not give the benefit of honest use to the first respondent. The adoption of the mark 'Arjies' by the first respondent being based upon their trading style as claimed has nowhere been explained as to why and how the same was adopted.
6. The appeal was taken up for consideration in the sitting of the Board held at New Delhi on 27.1.2005 and 28.1.2005. Learned counsel Shri Mohan Vidhani appeared on behalf of the appellant and learned counsel Shri S.K. Bansal appeared on behalf of the first respondent.
7. Learned counsel for the appellant at the outset took us to the order of the Assistant Registrar whereby he has found that the user for not more than 4 months as sufficient user for entitlement under section 12(3) of the Act. First respondent had filed his application on 31.12.1990 and the user claimed there under is from 1.9.1990. There is only one bill dated 10.12.1990 on the file about the use of the mark. Learned counsel for the appellant took us through various bills placed at annexure I of the paper book in the file where under various orders have been executed under the trade mark name 'ARCHIS'. Documents placed at pages 40,41,42,43,46 are either bills or purchase orders, many of them are from public sector undertakings specifically mentioning the trade mark 'ARCHIS'. All these documents are dated much after 1986. Learned counsel took us to certain bills relatable to M/s Saroj Bajaj and the firm Gayfield Company which are dated 1990 onwards with a view to establish that these persons were purchasing the products of the appellant with a view to sell them. Learned counsel pointed out that second respondent has erred in holding that with this much of evidence of applellant's use of his mark just referred to above and user of first respondent of hardly four months, the first respondent had acquired the status of proprietor for the purpose of section 18(1) of the Act. He also took us to a copy of carton placed at page 20 wherein the mark 'Arjies' in a circle has 'R' within a circle superimposed upon it. This proves the dishonesty of the first respondent. Honest use of the mark happens to be the very fundamental basis of entitlement under section 12(3) of the Act.
8. Learned counsel for the first respondent argued that there are special circumstances for the entitlement under section 12(3) of the Act. He emphasized that the trade mark application of the first respondent is much earlier to the actual date of issue of registration certificate to the appellant. Date of registration for No. 479648 for registration of mark 'ARCHIS' is 9.10.1987 and it was entered into the register on 13.4.1993. Whereas the application of first respondent is dated 31.12.1990 with user claimed from 1.9.1990. In view of that his date of filing of application is earlier to the actual date of issue of certificate to the appellant which was issued on 13.4.1993. Thus the appellant was not registered for his trade mark when the first respondent had applied for registration of his mark. He pointed out that in the affidavits of Sudhir Batra and another affidavit placed at pages 22, 32 and 34 there are averments to the effect that they are the proprietors of the trade mark 'ARCHIS'. So the mark is being used by certain other persons also than the appellant. Much of the evidence which has been adduced is relatable to the trade mark 'CLASSIC' only and not trade mark 'ARCHIS'. In conclusion the learned counsel for the first respondent submitted that when the first respondent had filed the application for registration, the appellant was not using the mark in the market and the mark 'ARJIES' is distinctively different from the mark 'ARCHIS'. Learned counsel for the appellant in reply submitted that the errors in the affidavit of Shri Vipin Vadera and Saroj Bajaj have been corrected later on by the subsequent documents filed by them and placed at page 36-39.
9. We have gone through the pleadings of both the sides and heard the arguments made by the learned counsel for the appellant and the first respondent. The issues involved in the instant appeal relate to Section 9 and Section 12(3) of the Act. The Assistant Registrar had decided the matter in the light of two aspects and the arguments which had been made before us by both the sides were restricted to these two sections of the Act.
10. The first respondent claimed distinctiveness of the mark under Section 9. The distinctiveness is to be taken from the date of the user claimed at the time of filing of the application. The application in this case was filed on 31.12.1990 and the user claimed is as of 1.9.1990. A mere use of four months in no way helps to claim the benefit of distinctiveness. More important of the aspect where under the registration had been allowed by the Assistant Registrar is relatable to the benefit of honest concurrent use. It is the settled proposition in law that concurrent use should be of a long period unhindered, uninterrupted and unchallenged. The concurrent use is to be reckoned as on the date of application and not later thereto. Again at the cost of repetition, we emphasize that a mere use of four months cannot be taken to be a concurrent use for the purposes of Section 12(3). Again honesty in use of the matter is sine qua non. In the instant case, dishonesty is manifest right at the beginning itself where even before the grant of the registration, what to say of final determination after the hearing of the appeal, the first respondent started putting R in circle in his wrappers and cartons depicting his mark. This dishonesty is manifest on the part of the appellant disentitling him the benefit of Section 12(3) of the Act.
11. The learned counsel for the appellant canvasses for his case based upon the proposition of law laid down by the Bombay High Court in Sagar Beedi Works Vs. Bharath Beedi Works - 1981 PTC 269, where the use of the word 'registered' without the mark having being registered was held to be tainted with dishonesty and accordingly it was held that the appellant is not entitled for discretion of the relief under Section 12(3) of the Act. Somewhat similar was the position in a Delhi High Court case, namely, Raghubir Singh Jain Vs. Riazuddin Gyasuddin decided by the Delhi High Court on 12.9.1995 in I.A. No. 8610/93, 4281/93 in suit No. 964/93. The Bombay High Court in Charak Pharmaceuticals Vs. M.J. Exports and Anr. - 1993 IPLR 39 held that the concurrent use must be before the date of filing of application and not thereafter. The Bombay High Court held that it is necessary that concurrent use should be for a substantial period.
12. The learned counsel for the first respondent put reliance upon T.G. Balaji Chettiar Vs. Hindustan Lever Ltd. - AIR 1967 MADRAS 148 wherein, in paragraph 23, the said High Court has said that honest concurrent user must be clear, cogent and specific. We agree that this is a true appreciation of the principle underlining the entitlement of benefit of honest concurrent user. But, we fail to understand how does it help the first respondent. The learned counsel for the first respondent put reliance upon Veerumal Praveen Kumar Vs. Needle Industries (India) Ltd. and Anr. - 2001 PTC 889 (Del), para 25, wherein a non user of the registered trade mark by the respondent was held to be a good ground for failure to his infringement action against the appellant. It is sufficient to mention that the principles to be followed in the matter of determining the registrability of the mark where an opposition has been filed, more so, in a case where the benefit under Section 12(3) is being claimed, are different from the principles underlying the determination of infringement action. In view of that, we feel that the judgment in that case is of no help to the first respondent. The learned counsel explained the proposition of law laid down in the case of Uniply Industries Ltd. Vs. Unicorn Plywood Pvt. Ltd. and Ors. - 2001 PTC 417(SC), wherein it has been held that in matter of inherently distinctive marks, the ownership is governed by the priority of the use of such marks. In the instant case, surely, the user of the appellant is much prior in time. The learned counsel for the first respondent put heavy reliance on the London Rubber Co. Ltd., Vs. Durex Products - AIR 1963 SC 1882 - where the Hon'ble Supreme Court had allowed the honest concurrent use to the respondent. The learned counsel drew our pointed attention where the Supreme Court had said that no hard and fast rule can be laid down regarding the volume of use for the purposes of Sub section (2) of Section (10) (Section 12(3) of the TMM Act, 1958). Ordinarily, it would be sufficient if it is shown that there was a commercial use of the mark. It is a proposition of law laid down by the Supreme Court. However, the facts of the matter in London Rubber case and in the instant matter are distinguishable. In London Rubber case, both the appellant and the respondent had been marketing the products which they started approximately at the same time over a long period and they had filed the applications for registration also somewhat at the same time. These factors were heavy and at the commandeering position for the judicial organs at various levels, that is, the Registrar, High Court and the Supreme Court to allow honest and concurrent use in the matter. The situation there and in the issue before us is poles apart. In passing, we may mention that the learned counsel for the appellant has proved the user of the mark in the post registration period also even though that was not that essentially required in the instant matter.
13. In conclusion, we allow the appeal and accordingly direct that the Registrar shall not proceed with the registration of the impugned mark. No cost.