Calcutta High Court
Sharma Ayurved Private Limited vs Chintamani Karmakar & Ors on 5 August, 2016
Author: Indira Banerjee
Bench: Indira Banerjee, Sahidullah Munshi
IN THE HIGH COURT AT CALCUTTA
CIVIL APPELLATE JURISDICTION
(ORIGINAL SIDE)
APO No.296 of 2003
SHARMA AYURVED PRIVATE LIMITED
VS
CHINTAMANI KARMAKAR & ORS.
BEFORE:
The Hon'ble Justice INDIRA BANERJEE
And
The Hon'ble Justice SAHIDULLAH MUNSHI
For the Petitioners : Mr. Sudipto Sarkar, Senior Advocate.
Mr. Surajit Nath Mitra, Senior Advocate.
Ms. Mousumi Bhattacharya, Advocate.
Mr. Arup Bhattacharya, Advocate.
Mr. S. Sanka, Advocate.
Mr. A.L. Chatterjee, Advocate.
Mr. S. Das, Advocate.
For the Respondents : Mr. Gautam Chakraborty, Senior Advocate.
Judgment on : 05.08.2016 INDIRA BANERJEE, J.: This appeal is against an order of the learned single judge, passed on 27th of September 2002, dismissing the application of the appellant under section 46 of the Trade and Merchandise Marks Act 1956, for rectification of the register of trade marks, by removal of the trade mark 'Banphool'.
By the order under appeal, the learned single judge held that the appellant had not been able to lead prima facie evidence in support of the relief claimed under section 46 of the trade and merchandise marks act 1958. According to the appellant, for a continuous period of 5 years up to the date of one month before the filing of the application, there was no bone fide use of the trade mark of the respondent No.1 in relation to the hair oil. Initially, the respondent number 1 did not file any affidavit. However, later by an affidavit affirmed on 13th of May 2002, the respondent number 1 disclosed 573 cash memos to prove that the mark had been used during the period complained of.
By an order dated 3 July 2002, the learned single judge directed the matter to be tried on evidence for proper adjudication of the dispute as to whether the goods in question were sold in the market during the period between 16 June 1987 and 16 June 1992.
The respondent number 1 however declined to give evidence on the ground that he was 87 years of age and unable to come to Court. The appellants contend that the respondent number 1 affirmed 2 affidavits, one on 13th May 2002 and the other on 24th of may 2002 before the Commissioner of Oath of the Calcutta High Court.
The order dated the July 2002 of the learned it single bench reveals that the issue sought to be tried was "whether the goods in question were sold in the market during the period between 16th of June 1987 and 16th June 1992"
The appellant asserted that the mark in question was never used and the goods in question were not sold in the market during the period between 16th of June 1987 and 16th of June 1992 By an order dated 27 September 2002 the learned single bench recorded by an order dated 27 September 2002, the learned it single bench recorded "in my view, he who asserts positive should go to the box and prove his case. Accordingly, I call upon Mr Ghosh, learned advocate appearing for the respondent no 1 to prove his case. He submitted that his client was 87 years old and unable to come to Court. There is no evidence before me with regard to the age of the respondent number 1.
However, it is on record that the respondent number 1 filed an affidavit before this Court on 14-5-2002 and another on 24th of may 2002 and what their affidavits appeared to have been affirmed in the Courthouse before the Commissioner of Oath. Therefore the submission that the respondent number 1 is unable to come to Court for the purpose of giving evidence does not appear to be acceptable to this Court.
Be that as it may, it is recorded that Mr Ghosh does not want to give evidence in support of the aforesaid issue. Mr Bachawat is at liberty to proceed to prove his case"
There was therefore no positive evidence of the respondents that the trade mark in question was used or the goods in question were sold during the period between 16th of June 1987 and 16 June 1992.
The appellants adduced evidence in court. The learned it Single Bench, however disbelieved the evidence of the witness of the appellant, relying upon the answers of the witness of the appellant to question numbers 38 to 43, that he did not know the respondent number 1, prior to 1992, that he had not come into contact with the respondent number 1 and that he had no knowledge of what business the respondent number 1 carried on. Mr. Sarkar appearing on behalf of the appellant submitted, and in our view rightly, that in the case of rectification of the register by removing a mark, it was not necessary to know the owner of the mark personally. A product is known by the trade mark, and not the owner thereof. Law does not require that the manufacturer of the trade mark under challenge should be known to the applicant for rectification.
Mr. Sarkar submitted that the appellant had also initiated a passing off action against the respondent numbers 1 and 2, being number 475 of 2002 in this Court. In an appeal from an interlocutory order, a division bench of this Court issued subpoena on the Drug Controller and also the local Panchayat, wherefrom the respondent number 1 and allegedly carried on his business. It transpired that the respondent number 1 had no licence to manufacture or sell any product under the trade mark in question. The respondent number 1 had licence in dealing with Rice and kerosene oil. In the circumstances, the division bench observed that there was no dispute that the appellant had extensively been manufacturing and selling and marketing hair oil under its distinctive trade mark labels Carton, get up, package and wrapper since 1982. It was only in 1992 that the 1st respondent and the 2nd respondent came forward with their product. The Division Bench observed that the Cartons were deceptively similar. Counsel drew our attention to various parts Of the Order of the Division Bench and pointed out that the respondents had not produced any cash memos Before the Division Bench. The division bench had arrived at the finding that the product of the 1st and 2nd respondents were of recent origin. They did not have the requisite licences to sell here or any. They had opted trade licence for dealing in Rice and kerosene oil. Counsel submitted that once the appellant and adduced evidence stating that the goods in question were not sold in the market between 16th of June 1987 and 16 June 1992, the onus shifted on the respondents. Relying on section 101 and 106 of the Indian Evidence Act 1872, Counsel argued that once the appellant gave evidence primafacie proving the negative, the onus of proof was on the respondents to prove the positive, that is to prove the goods was told in the market during the period in question. No attempt was made by the respondents to furnish any evidence to show that the mark was used in relation to the goods or the goods in question were sold in the market during the aforesaid period. According to the appellant, the cash memos disclosed were manufactured one. There were exactly 100 cash memos each year. The serial numbers were continuous without any gap. The cash memos were not proved by oral evidence Mr. Gautam Chakraborty appearing on behalf of the respondents questioned the maintainability of the appeal in view of Section 100 of the Trade Marks Act 1999. Mr. Chakraborty argued that all appeals were to be filed before the Tribunal constituted under the Trade Marks Act 1999. An order passed by a single bench of the High Court is appealable before the division bench of the same High Court. There can be no question of the Tribunal hearing an appeal from an order of the single judge of the High Court, exercising original jurisdiction. In view of the provisions of chapter XXXI Rule 1 of the Original Side Rules, appeal against a judgement of a judge sitting in the Original Side is to be heard by a Division Bench consisting of 2 or more judges as the Chief Justice may determine. A perusal of Section 91 of the Trade Marks Act 1999, and the related rules do not contain any provision which debars the Division Bench of the High Court from entertaining an appeal from a decision of the single bench. There could be no question of transfer of pending proceedings to the Intellectual Property Appellate Board.
The representative of the appellant gave oral evidence that the mark in question was not used in relation to hair oil. He said no hair oil was sold under the impugned trade mark. The appellant could not be expected to prove the negative. The respondents would have to prove the positive, but they did not adduce any evidence.
The appeal is therefore allowed, and the judgement and order under appeal is set aside consequently the application under section 46 of the appellant for rectification of the register is also allowed.
Photostat certified copy, if applied for, be delivered to the learned counsel for the parties, upon compliance of all usual formalities. ( INDIRA BANERJEE, J. ) I Agree ( SAHIDULLAH MUNSHI, J. )