Intellectual Property Appellate Board
Surinder Kumar Mancha, Trading As New ... vs Som Soot Gola Factory And The Registrar ... on 20 December, 2007
ORDER
Syed Obaidur Rahaman, Technical Member
1. This petition is filed for rectification of Trade Mark Registration No. 587309 in Class-23 in the name of the Respondent No. 1 under Section 46 & 56 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the said Act).
2. The case of the applicant is that M/s. New Light Thread Ball Factory, 716, Kummi Ka Agar, Moga-142001 (Pb), is a proprietory concern and Shri Surinder Kumar Manocha is the sole proprietor. The applicant/petitioner has been carrying on an old established business, inter-alia, of manufacturing and sale of SEWING THREADS since long standing and is well established in the aforesaid business of Sewing Threads in the State of Punjab. In or about January, 1992, the applicant/petitioner conceived and adopted a distinctive trade mark 'TITONI' device mark TRISHUL and have distinctive get-up, layout, design, device, writing style and colourable combination in respect of Sewing Threads for the purposes of marketing the aforesaid goods in the States of Punjab, Haryana and Jammu & Kashmir and nearby areas and since then aforesaid trade mark has been continuously, extensively and uninterruptedly used by selling of Sewing Threads in the States of Punjab, Haryana and Jammu & Kashmir.
3. The applicant filed an application No. 575603 dated June 19, 1992 for registration of said trade mark which was accepted for registration vide Examiner Report No. U-6582 dated 14.6.1998 and thereafter, the same was advertised in the Trade Marks Journal No. 1208 (Supplement) dated 08.10.1999 at page 86.
It is the case of the applicant that on account of prior adoption, long and continuous user of the trade mark 'TITONI' device mark TRISHUL in the States of Punjab, Haryana and Jammu & Kashmir and prior in filing of application, No. 575603 for registration of trade mark 'TITONI device mark TRISHUL (Label) has acquired tremendous reputation amongst the purchasing public and traders of Punjab, Haryana, Jammu & Kashmir, and has become distinctive of the goods and business of the petitioner, therefore, no other trader has a right or justification to enter in the States of Punjab, Haryana, Jammu & Kashmir for sale of Sewing Threads bearing the trade mark 'TITONI' or bearing any other deceptively similar trade mark in respect of similar goods of Sewing Threads. Such use of the trade mark 'TITONI' by any other trader in the States of Punjab, Haryana, Jammu & Kashmir, is bound to cause confusion and deception amounting to passing off the goods/business for those of the applicant by such traders.
4. The Respondent No. 1, M/s Som Soot Gola Factory, 4810, Deputy Ganj, Sadar Bazar, Delhi-110006, has opposed the registration of petitioners' trade mark 'TITONI' device mark TRISHUL (label) being Opposition No. DEL-T-1444/54524 under Section 21 of the Trade and Merchandise Marks Act, 1958 in the office of Trade Marks Registry, New Delhi - 110 020 i.e. Respondent No. 2, who is competent to grant the registration of trade mark in question. Aforesaid opposition No. DEL-T-1444/54524 is pending disposal. It is pertinent to note that petitioners have filed the counter statement dated 30.11.2000 in reply to the notice of opposition aforesaid and respondent No. 2 has directed the respondent No. 1 to file their evidence within two months time vide his letter No. 10158 dated 9.1.2001.
5. The applicant came to know from the notice of opposition being No. DEL-T-1444/54524 that respondent No. 1 has also filed application No. 587309 dated 23.12.1992 for registration of the trade mark 'TITONI'. It is stated that respondent No. 1 had filed bogus and fabricated documents of the sale of Sewing Threads in the State of Punjab since 1.4.1990 thereafter, the respondent No. 2 passed the orders No. U/42335 dated 10.9.1999 in the aforesaid application No. 587309 to be advertised in the Trade Marks Journal before acceptance under Section 20(1) (proviso) of the Trade and Merchandise Marks Act, 1958.
6. The grievance of the applicant is that the application No. 575603 dated 19.6.1992 for registration of trade mark 'TITONI' device mark TRISHUL (label) of the applicant was already on record and it was not fair on the part of respondent No. 2 to grant the registration of trade mark 'TITONI' in favour of the respondent for the same goods for sale in the State of Punjab. Further, grievance is that in the normal course of procedure of Respondent No. 2 ought to have issued notice, which was not issued to the applicant drawing his attention to the trade mark "TITONI" of respondent No. 1 before granting him registration.
7. The application No. 587309 dated 23.12.1992 for registration of the trade mark 'TITONI' of respondent No. 1 was advertised in the Trade Marks Journal No. 1231 (Suppliment) dated 21.9.2000 at page 212, and thereafter, registration was granted in favour of respondent No. 1 by the respondent No. 2 some time in the month of July, 2001, copy of registration certificate under trademark No. 587309 is filed in the proceedings.
8. The respondents' case is that the applicant has no locus stand to file the present petition hence the same is liable to be dismissed. The applicant has pirated the registered trade mark 'TITONI' of the respondent and with a view to continue with the said illegal acts and deeds, has filed the present petition. As soon as the respondent obtained the information with documentary evidence of the said illegal use of his trade mark, a suit for permanent injunction for infringement of trade mark, copyright passing off, rendition of account has been filed by the respondent before the Hon'ble High Court and the same is pending adjudication.
9. Further case of the respondent is that the applicant is not the "person aggrieved" within the provisions of Trade and Merchandise Marks Act, 1958. A pirator imitator may not be a "person aggrieved" to file the present proceedings for the purposes of rectification of a registered trade mark, hence the petition is liable to be dismissed. It is asserted that the trade mark 'TITONI' registered under No. 587309 in class 23 in the name of the respondent is on the Register of trade marks wef. 23.12.1992. It has also been renewed after a period of 7 years from the date of its registration and hence its registration is valid in all respect as per provisions of law. Its registration cannot be challenged on flimsy ground after a period of 7 years as per provisions of Section 32 of the Act.
10. The respondent claims that he is the proprietor of trade mark 'TITONI' registered under No. 587309 in class 23 of the Act. The said trade mark was adopted by the respondent on 1.4.1990. That the respondent has been continuously using the said trade mark 'TITONI' since the said date in respect of "yarn and threads". Therefore, it is claimed that respondent is the prior user of the said trade mark and that he has acquired distinctiveness due to the long and continuous use thereof. The said trade mark 'TITONI' was registered in the name of respondent is got registered bonafidely as per provisions of law relating to trade mark and it has been used accordingly. The respondent has neither discontinued its user since 1.4.1990 nor abandoned the trade mark. He has intention to continue its use in respect of the goods for which it is registered. It is further stated that moreover, the respondent has been regularly expanding his business under the said trade mark hence the petition filed under Section 46 and 56 of the Act is not maintainable and liable to be dismissed with cost.
11. It was contended that the registration of the mark 'TITONI' under No. 587309 in class 23 is allowed to the respondent as per provisions of law relating to trade mark. During registration proceeding before the concerned authority, the Registrar of Trade Marks, the mark was advertised in Trade Mark Journal No. 1231(S) dated 21.9.2000 at page 212. The applicant, it is stated, admittedly came to know about the said registration much prior to its advertisement but did not opt to oppose it as the petitioner was protecting himself being pirator of the respondent's mark 'TITONI'. When the registration was granted to the respondent and he was in the search of imitator with supporting evidence, the petitioner collected information from the market including the copy of registration certificate and filed the present petition seeking rectification to continue his illegal activities of infringing respondent's exclusive right to use the said trade mark. It is pertinent to mention here that the respondent has also filed suit against the petitioner and the same is pending under No. 2445/2001 in Delhi High Court as stated in preliminary objection No. 1. The petitioner's application seeking registration of the said trade mark 'TITONI' under No. 575603 is also admittedly opposed by the respondent before the concerned authority and hence the petition is liable to be dismissed with cost being filed mischievously by misconception of law.
12. It was contended that the registered entry relating to trade mark 'TITONI' of the respondent under No. 587309 in class 23 is rightly made on the register as per provisions of law and is existing on record due to the said reason. That it has also been renewed on payment of prescribed fee after a period of 7 years from the date of its registration as the registration was granted initially for a period of 7 years, renewable every after 7 years as provided in the Act. It was contended that the applicant has wrongly invoked the provisions of Section 56 of the Act just to file the false petition with a view to continue his illegal act of infringing respondent's registered trade mark hence the petition is liable to be dismissed with an exemplary cost. It was urged that the registration of a mark after a period of 7 years from its registration cannot be questioned as to its validity as per provisions of Section 32 of the Act except upon the ground of 'fraud'. The petition says that the registration granted to the respondent for a number of States including 'Punjab' and the Punjab should be deleted therefrom without disclosing any plausible ground. No particulars of fraud, it is alleged, have been stated. It was submitted that the petitioner is trading upon the goodwill and reputation accrued to respondent's trade mark 'TITONI' by selling his spurious goods in the State of Punjab hence the State of Punjab cannot be deleted from the areas of registration granted to the respondent. The petition is therefore liable to be dismissed with costs.
13. The applicant/petitioner filed this application under Section 46 and 56 of Trade and Merchandise Marks Act, 1958 before the High Court of Delhi. By virtue of Section 100, this case was transferred before the Intellectual Property Appellate Board. The matter was heard on 13th and 14th December, 2007.
14. Shri V.P. Ghiraiya on behalf of the applicant/petitioner reiterated the contentions raised in the application for rectification, it was urged that according to the respondents own document being certificate dated 8.11.2001 signed by Capital Thread House would show that respondent is not proprietor but licensee of the trade mark 'TITONI'. However, it was emphasised that the applicant/petitioner is the prior adopter and user of the trade mark 'TITONI' in the state of Punjab and also was prior in time for making the application for registration and therefore respondent cannot be said to be the proprietor of the trade mark 'TITONI'. The said trade mark 'TITONI' of respondent, it was asserted is not distinctive of the goods of respondent No. 1 either at the commencement of these proceedings nor it was so at the time of registration of the impugned trade mark. Applicant/petitioner trade mark of 'TITONI' with device TRISHUL is distinctive of the goods of the applicant/petitioner within the State of Punjab, Haryana and Jammu & Kashmir. Finally, it was submitted that the impugned registration is liable to be rectified in the light of the provisions of Section 32(c) and the trade mark registration be modified restraining the goods of 'Sewing Threads' as not for sale in the State of Punjab.
15. Shri S.M. Gupta, Ld. Advocate on behalf of the Respondent No. 1 reiterated the contentions and submissions made in the pleadings of Respondent No. 1, it was urged by Shri S.M. Gupta that Respondent No. 1 is the prior adopter of the mark in question. Instant application for rectification have been filed after seven years after registration is not maintainable in view of Section 32 of the Trade and Merchandise Marks Act, 1958. It was also contended that the only relief claimed in the rectification petition is to delete the entry with respect to state of Punjab.
16. Heard Ld. Counsel for the respective parties and also having gone through the pleadings and evidence on record. It is evident that the impugned mark, prominent feature of which is 'TITONI' has been granted registration as on 23.12.1992 in respect of all kinds of yarns and threads included in class 23 for sale in the State of Punjab, Madhya Pradesh, Rajasthan, Gujarat, Maharashtra, Andhra Pradesh and Delhi.
17. Applicant's application for registration was however prior in time that is June 1992. Its mark also has the word 'TITONI' prominently displayed above the device of TRISHUL. It appears that though the petitioner had made the application for registration of its mark 'TITONI' respondent was granted registration on the application made by it on 23.12.1992. Applicant/petitioner's application is still pending before the Registering Authority, where notice of opposition has been filed by Respondent No. 1.
18. As already noticed, the prominent feature of the rival marks is 'TITONI'. The only question, therefore, for consideration is whether applicant is the prior adopter and the user of the mark in question.
19. Both parties have filed their affidavit evidence. Applicant states that the trade mark 'TITONI' (label) has been used since January, 1992 and furnished particular of the sales of Sewing Threads for the years 1991-92 up to 2000-01. Few bills (invoice) have also been enclosed as evidence pertaining to the period 1992. Apart from the sales bills, applicant has also filed copy of the interim order dated 10.2.2005 dismissing the application for injunction filed by the Respondent No. 1.
20. Respondent has also filed evidence by way of affidavit by Shri Somnath on behalf of the Respondent No. 1. Annexure 'A' to the said affidavit is the receipt for the renewal of registration. Annexure 'B' is the copy of the plaint filed before the Delhi High Court which was subsequently transferred to the Court of Additional District Judge, Delhi. A copy of the interim order dated 10.2.2005 dismissing the application for injunction has also been filed. Copy of certain invoices, bills have also been enclosed pertaining to the period 1990, it was noticed that the bill dated 1.4.90 with respect to the box design 'TITONI' issued by Iqbal Fine Art was unsigned. No evidence of any retailer/dealer has been filed.
21. Neither party before us have filed any advertisements published in newspapers being the contemporary record to establish priority of user nor any statutory record like sales tax returns/orders have been filed to show priority of user. The evidence filed before us by either of the parties is not of a satisfactory nature to arrive at a firm conclusion as to priority of user or adoption of the trade mark in question.
22. Since the instant application is a proceeding which was pending at the commencement of the Act 1999, under Section 159(4), the provisions of the Repealed Act 1958 shall apply. Ld. Counsel for respective parties have also relied upon the provisions of the Repealed Act 1958. Accordingly, reference to the provisions in this order shall be to the repealed Trade and Merchandise Marks Act, 1958.
23. Section 56 deals with the power to cancel or vary registration and to rectify the register. Sub-section (2) thereof confers a right to any person "aggrieved" by an entry made in the register without sufficient cause or by an entry wrongly remaining in the register to apply to the tribunal for expunging or varying such an entry. The expression "aggrieved person" has received liberal construction from the Courts and includes a person who has, before registration, used the trade mark in question as also a person against whom an infringement action is taken or threatened by the registered proprietor of such a trade mark. The words "without sufficient cause" in the section have clearly relation to the time of the original registration. Therefore, a person can apply for cancellation on the ground that the trade mark in question was not at the date of the commencement of the proceedings distinctive in the sense of Section 9(3). The burden of proof, however, in such a case is on the applicant applying under Section 56. (See A.I.R. 1971 National Bell C. v. Metal Goods Mfg. Co.)
24. As noticed supra, respondent has filed suit against the petitioner. Both the parties are carrying on same trade and in our view, therefore, applicant is a person aggrieved.
25. Section 32 in clear terms provides that the original registration of a trade mark, after expiry of seven years shall be taken to be valid in all respects in all legal proceedings including those under Section 56, except in the three categories of cases mentioned therein. It follows, therefore, that no objection that the trade mark in question was not distinctive and therefore was not registrable under Section 9 can be entertained if such an objection is raised after seven years have lapsed since the date of its registration as in the present case, nor can an objection be entertained that no proof of distinctiveness was adduced or insisted upon at the time of the original registration.
26. Therefore no objection can be taken that the trade mark in question was not distinctive and therefore was not registerable under Section 9. Such an objection is not entertainable, if raised after seven years have lapsed, since the date of registration of the impugned trade mark.
27. However, applicant has relied upon Section 32(c) read with Section 11 of the Act. It is contented that the use of the impugned mark by respondent would be likely to deceive or cause confusion. It is for the applicant seeking rectification to establish that it is the prior user and adopter of the identical trade mark. In rectification proceedings the onus is on the applicant to prove its case of prior user or prior adoption. The burden of proof being upon the applicant, the question is, has that burden been satisfactorily discharged. The evidence relied upon by the applicant is hardly sufficient to arrive at any such conclusion. The onus, in our view, has not been discharged by the applicant. From the evidence on record placed by the applicant/petitioner it is not possible to say that the impugned trade mark has ceased to be distinctive. The contention founded on Clause (c) of Section 32 cannot be sustained.
28. We also find no substance in the contention of Shri V.P. Ghiraiya that based on the certificate dated 8.11.2001 signed by Capital Thread House, respondent is not proprietor but licensee of the trade mark 'TITONI'. The certificate dated 8.11.2001 is with respect to the monogram of a lady and not with respect to the trade mark 'TITONI'. If as contended by Shri V.P. Ghiraiya that the respondent is not proprietor of the impugned trade mark then their very application for rectification would be against a wrong person. Registration of the impugned trade mark stands in the name of Respondent is established from the evidence on record. The contention is accordingly rejected.
29. In view of the above, we are of the view, that the application is misconceived. There is no ground to rectify the Register. This application is dismissed with cost. Petitioner to pay Rs. 500/- (Rupees five hundred only) to the Respondent No. 1.