Intellectual Property Appellate Board
Cavinkare Pvt. Ltd. vs Latha C. Mohan And Anr. on 7 July, 2004
Equivalent citations: 2004(29)PTC753(IPAB)
JUDGMENT
Raghbir Singh, Vice-Chairman
1. This petition for rectification of register was filed under Sections 32, 46, 56, 107 and 108 of the Trade and Merchandise Marks Act, 1958 in the High Court of Judicature at Madras as O.P. No. 352/2003 and has now been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TRA/41/2003.
2. The petitioner is a holder of trade mark 'KANYA' as a word mark under registration No. 584307B dated 6th November, 1992 in class 3 for detergents, including cleansing agents for special purposes, car shampoos, perfumery, deodorants, hair care products, personal care products, cosmetics and toiletries, face creams, lip salves, preparations for cleaning teeth, mouth washes, sunscreen creams, lotions, shaving cream, after shave lotion, nail polishes, pomades, brilliantines, cleaning and polishing preparations and 'KANYA' label mark registered under No. 598586B dated 3rd June, 1993 included in class 5 in respect of herbal medicinal formulations, medicaments and pharmaceutical preparations. The petitioner started sale of anti-lice hair care powder under the trade mark 'KANYA' in May, 1993 and claims to have advertised the mark extensively in television, magazines and other modes.
3. The first respondent holds a registration of the trade mark 'KANYA BEAUTY PARLOUR' with the device of a hand mirror under No. 703898 dated 2.4.1996 in class 16 in respect of 'paper and paper articles, books, printed materials, printed publications, brochures, pamphlets and other stationery items included in class 16. The first respondent claimed user of the mark since December, 1981. The petitioner submitted that the first respondent has never published any book, pamphlet or brochure and does not carry on the business of book publication. The first respondent for the last more than five years and one month has not used the trade mark 'KANYA BEAUTY PARLOUR' with the device of hand mirror in respect of books, pamphlets, printed publications etc., in the course of trade for valuable consideration. Thus, on the ground of continuous non-use for more than last five years and one month, the trade mark 'KANYA BEAUTY PARLOUR' with the device of hand mirror ought to be rectified under Section 46(1) of the Act.
4. The petitioner claims that the first respondent filed false affidavit dated 17th February, 2001 before the second respondent for registration of trade mark 'KANYA BEAUTY PARLOUR' in class 16 setting out sales figure since the year 1983 relating to paper articles, books, printed matters etc. She had never been involved in the business of printing of books etc. The claims of the first respondent in her application No. 703898 had been that she had been using the trade mark 'KANYA BEAUTY PARLOUR' since December, 1981 in respect of books, publications, printed stationery etc. The petitioner further claims that the first respondent still does not have an intention to carry on the business of books, printed publications and stationery. The first respondent had no bona fide intention to use the trade mark 'KANYA BEAUTY PARLOUR' in relation, to goods for which it is registered for the time being and has not made any bona fide use for the last more than five years and one month continuously.
5. The first respondent filed a suit being C.S. No. 136 of 2003 in the High Court of Madras against the petitioner for infringement of her trade mark and passing off. In the said suit she had claimed that she had been using the trade mark 'KANYA BEAUTY PARLOUR' since December 1981 in respect of beauty parlour services, whereas in her affidavit before the second respondent dated 17th February, 2001 in respect of Trade Mark No. 703898 in class 16 she had claimed that she had been using the trade mark 'KANYA BEAUTY PARLOUR' in respect of paper and paper articles, books, printed matter etc. Thus, she has made false declarations both before the High Court and the second respondent. Since the Trade and Merchandise Marks Act, 1958 does not provide for registration of service marks and business of beauty parlour being in the nature of services, the registration of trade mark 'KANYA BEAUTY PARLOUR' has been taken in class 16 with a view to use the mark, if possible, in respect of beauty parlour services. The petitioner submitted that the trade mark 'KANYA BEAUTY PARLOUR' with the device of hand mirror is registered contrary to the provisions of Sections 9, 18, 32, 46 and 56 of Trade and Merchandise Marks Act, 1958 and thus is not capable to remain in the register and the petitioner prayed for the removal of the same from the register.
6. The first respondent in her counter denied the allegations of the petitioner and stated that she had obtained registration in respect of carrying on business relating to stationery, papers etc. As the business of beauty parlour had become very famous and reputable, there was no time for her to carry on another business. She denied having made any false declaration or having filed any false or fictitious sales figure. She claimed that the word 'KANYA' had acquired distinctiveness for the business of cosmetics and beauty parlour by virtue of long use and patronage by public and thus the usage of the name 'KANYA' for the products of the petitioner would be objectionable and the same would amount to passing off for her beauty parlour.
7. The application was taken up for arguments on 10th June, 2004 alongwith rectification application Nos. TRA/39/2003/TM/CH and TRA/40/2003/TM/CH filed by the first respondent in the present application against the petitioner in the present application. The learned counsel Shri A.A. Mohan appeared for the petitioner (Cavinkare Pvt. Ltd.) and learned counsel Shri Narayanan appeared for the first respondent (Latha C. Mohan) in all the three cases.
8. Learned counsel for the petitioner drew our attention to the registration certificate No. 703898 issued for the trade mark 'KANYA BEAUTY PARLOUR' with the device of hand mirror in class 16 in the name of the first respondent in respect of paper and paper articles, books, printed materials, printed publications, brochures, pamphlets and other stationery items included in class 16 and he further drew our attention to Trade Marks Journal dated April 2, 1996 wherein the trade mark 'KANYA BEAUTY PARLOUR' with the device of hand mirror bearing number 703898 in class 16 had been advertised. It is clear from both that the goods advertised in the Trade Marks Journal and mentioned in the registration certificate issued in pursuance of the application for registration are confined to class 16 goods, namely, paper and paper articles, books etc. and had nothing to do with the beauty parlour services which were not otherwise eyen registrable under the Trade and Merchandise Marks Act, 1958. The petitioner further drew our attention to the affidavit of evidence filed by the first respondent on 17.2.2001 before the Registrar of Trade Marks wherein the first respondent had claimed that she had been carrying on an established business of paper and paper articles and she claimed sales turnover of Rs. 14,980 beginning with 1983-84 and rising upto Rs. 3,71,500 in 1997-98. In the said affidavit she claimed that while doing the business of paper, paper articles etc., she adapted the trade mark 'KANYA BEAUTY PARLOUR' and started using it from 5.12.1981. However, no invoices or bills relating to sales made during these years were produced by the first respondent. As against the claim for sale of paper and paper related goods covered under class 16 before the Registrar of Trade Marks referred above, first respondent in her plaint in CS-136/2003 filed in the Madras High Court had claimed the reputation of her business flowing out of the beauty parlour services through nine 'KANYA' beauty parlours run by her employing about 125 employees. She claimed to have attained reputation whereby the expression 'KANYA' had become a household name, associated with beautification, skin-care and hair-styling. The whole burden of that plaint is to seek remedy as against the defendant Cavinkare Private Limited, the Petitioner in the present rectification application on the basis of the reputation established by the first respondent in the present case on the basis of her beauty parlour related services.
9. In another affidavit filed by the first respondent as OA Nos. 196 and 197 of 2003 in CS No. 136/2003 before the High Court of Judicature at Madras, the burden of the contents of that affidavit is solely that the first respondent is confined to the business of beauty parlours.
10. Various evidences filed by the first respondent again go to prove that all along these years her business had been to provide services in the nature of beauty parlours and there is not a shred of evidence to go to prove that she had been in the business of goods of class 16 category, for which registration had been given. The tenancy agreement filed by her as Annexure-A of the type set clearly says that the premises hired by her from Mrs. Girija Pakkiriswamy are to be used as beauty parlour. Similarly, another tenancy agreement which is in the nature of renewal of the earlier agreement also states that the use of the premises is to be for the purpose of beauty parlour only. Annexure-D is a letter written to Deputy Commissioner of Labour, Madras regretting for having kept the establishment opened on May day. The reason given is that first of May was a heavy muhurtham day for marriages and for that reason the establishment was kept open. Again this fact goes to prove that the business is of beauty parlour and nothing else. Annexure-F is again a tenancy agreement clearly providing that the premises are to be used for the purpose of beauty parlour only. Annexure-K is a certificate disclosing the franchise agreement for operation of business of Shahnaz Husain's Herbal which has again nothing to do with the goods covered under Class 16 i.e. paper and paper products etc. Few more tenancy agreements which have been filed at Annexure N and O of the type set by first respondent indicating further expansion of the business are surely not in the context of field of paper or paper products and are in relation to the hitherto business being pursued of beauty parlours. Annexure Q is the professional tax assessment order issued by the Corporation of Chennai dated 4.12.2001 which clearly spells out that the nature of profession being pursued for which the assessment has been done as beauty parlour and not as trading in paper or paper products etc. There are numerous annexures from serial number 19 to 39 of the type set in the nature of newspaper clippings which go to buttress that the business being pursued had all along been of running beauty parlour than of trading in paper or paper products.
11. The petitioner in this case is surely an aggrieved person for the reason that the first respondent has taken an infringement action against him in C.S. No. 136 of 2003. It has been held in the National Bell Company v. Metal Goods Manufacturing Company, AIR 1971 SC 898 (904) that the expression 'aggrieved person' has received liberal construction from the Courts and it has to include person who is before registration using the trade mark against whom infringement action is taken of threatened by a registered proprietor of such a trade mark.
12. In view of the above we find that the petitioner has established that respondent No. 1 had not been making bona fide use of the trade mark 'KANYA BEAUTY PARLOUR' registered under No. 703898 in Part A dated 02.04.1996 in respect of paper and paper articles, books, printed matters, printed publications, brochures, pamphlets and other stationery items included in class 16 in her favour, for which the trade mark was registered. Consequently, we allow the application and the Registrar of Trade Marks is accordingly ordered to rectify the register by removing the trade mark 'KANYA BEAUTY PARLOUR' from the register. No orders for costs.