Intellectual Property Appellate Board
Aggarwal Sweet Palace And Ors. vs Assistant Registrar Of Trade Marks on 9 September, 2004
Equivalent citations: 2005(30)PTC336(IPAB)
JUDGMENT
Raghbir Singh, Vice-chairman
1. CM(M) No. 418/94, CM (M) No. 419/94, CM(M) No. 454/94 and CM(M) No. 99/95 filed in the High Court of Delhi have been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and have been numbered as T.A. Nos. 94, 95, 97 and 104/TM/DEL respectively.
2. Transferred Appeal Nos. 95 and 104 relate to an application filed by the respondent M/s Aggarwal Sweet Corner vide application No. 453309 for registration of trade mark 'Aggarwal Sweet Corner' in class 30 in respect of sweets and namkeens. The mark was claimed to be used since 1.6.84. The mark was advertised in the Trade Mark Journal No. 980 dated 1.4.90 at page 55 in due course, subject to the disclaimer of the word 'Corner' and subject to association with applicant's already pending mark No. 453308. The appellant in Appeal No. TA/95 filed opposition No. DEL 6766 opposing the registration of the trade mark on the grounds of Sections 9, 11(a), 11(e) and 18 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The appellant contended that they are carrying on business in sweets since 15.10.86. Appellant in TA No. 104 filed a notice of opposition on 2.5.90 on the grounds of Sections 9, 11(a) 11(e) and 18(1) of the Act. Appellant claims that they have been manufacturing sweets and namkeens under the trade mark Aggarwal Sweet Corner since the year 1986. They claim that the mark applied for is identical and deceptively similar to that of their mark.
3. In TA/95 the Assistant Registrar of Trade Marks held hearing on 10.8.94. In the hearing a suggestion was made that a disclaimer about the word 'Sweet' besides the word 'Corner' should also be made. Learned counsel for the respondent readily agreed for it and the Assistant Registrar accordingly ordered that both the words 'Sweet' and 'Corner' shall be disclaimed. In conclusion, the Assistant Registrar disallowed the opposition and ordered for registration of application No. 453309 with the disclaimer of the word 'Sweet' and 'Corner'.
4. The matter in TA/104 was heard by the Deputy Registrar on 16.11.94. Learned Deputy Registrar held that in matter of Section 9 the applicant has filed evidence of user since 1.6.84 which is sufficient for registration and accordingly he overruled the opponent's objection under Section 9 of the Act. In matter of examination under Section 11 (a) and (e), the Deputy Registrar held that the opponents have merely filed an affidavit in relation to the evidence of user and reputation of their mark. It does not give any details about the annual sales whereas the applicant has given evidence of user since 1.6.84. Accordingly, he overruled the opponent's objection under Clauses (a) and (e) of Section 11. In matter of objection under Section 18(1) of the Act, the Deputy Registrar held that since the applicant had proved user and reputation of the mark applied for, he was accordingly entitled to proprietorship of the mark under Section 18(1) of the Act. The Deputy Registrar held that the opponent's claim that the mark (trading style) as having been adopted and used since 1986. However, no evidentiary documents have been filed to prove their user since 1986 as claimed, whereas the impugned application was filed on 30.4.86 with user claimed since 1.6.1984. Applicants have adduced sufficient evidence since 1984 onwards containing several documents, namely, copies of purchase orders, copies of invoices, copies of advertisements, copies of sales tax and income tax orders, copies of bills from advertisers, copies of analysis reports issued by Delhi Administration, copies of balance sheet and copies of orders received from customers. The Deputy Registrar held that the opponent claims to be trading in the name and style of M/s Aggarwal Sweet Corner at Patel Nagar, New Delhi but they have nowhere shown that their goods are being sold/marketed under the trade mark 'Aggarwal Sweet Corner'. Hence the opponents have no trade mark other than the trading style which cannot be treated as a trade mark in the absence of documentary evidence. Accordingly, he disallowed the opposition and ordered that application No. 453309 in class 30 shall proceed for registration.
5. In TA/94 and TA/97, the label mark consisting of word 'Aggarwal' was sought for registration under application No. 453308 dated 30.4.86 in class 30 for sweets and namkeens in the name of M/s Aggarwal Sweet Corner, the respondent. The mark was claimed to be used since 1.6.84. The impugned mark was accepted in Part B of the Register and was duly advertised in the Trade Mark Journal No. 1009 dated 16.6.91 at page 420.
6. The appellant in T.A./94 gave a notice of opposition objecting to the registration of the impugned mark under Sections 9, 11(a) and (e) and 18(1) of the Trade and Merchandise Marks Act, 1958 and prayed for exercise of discretion, vested in the Tribunal under Section 18(4) of the Act, adverse to the applicants. They claimed that the applicant had never used the impugned mark 'Aggarwal', it being a common surname and as such its registration is objectionable under Section 9. In the counter statement filed by the applicant on 17.3.93 they denied the various averments of the opponent and stated that they are using the impugned mark since 1984 continuously and extensively. The Assistant Registrar heard the matter on 24.5.94.
7. Learned counsel for the opponent argued that the mark does not qualify for registration under Section 9(1)(a) of the Act since it is a surname and is commonly used in the trade. However, he did not press for other objections under Section 11(a) and (e). Learned Counsel for the applicant refuted the submission of the learned counsel for the opponent. He said the word 'Aggarwal' is undoubtedly a surname but still it can be registered as a trade mark within the provisions of the Trade and Merchandise Marks Act, 1958 on the basis of acquired distinctiveness.
8. Assistant Registrar held that any surname can be registered as a trade mark under Section 9(1) (a) of the Act if it meets the requirements of the Act and there is no evidence on record to show the 'Aggarwal' is a commonly used word in that trade. He further held that the applicants are entitled for the purported rights in the impugned mark under Section 18(1) of the Act. He did not opt for exercise of discretion under Section 18(4) of the Act. Accordingly, he disallowed opposition No. DEL 7397 and ordered that application No. 453308 shall proceed further.
9. Opposition DEL-7423 was filed by the appellant in Appeal No. TA/97. They filed their opposition on 9.10.91 on the grounds that the word 'Aggarwal' is a common surname and is not registrable as a trade mark being neither adapted to distinguish nor capable of distinguishing the impugned goods in terms of Section 9 of the Act. They alleged that the applicant has never used 'Aggarwal' as a trade mark and therefore they cannot be given its exclusive right. They did not accept the user claim of the applicant since 1984. They opposed the application under Sections 9, 11(a) and 11(e) and 18 of the Act and also prayed for the exercise of discretion, vested in the Tribunal under Section 18(4) of the Act, adverse to the applicant. Applicant filed his counter statement on 17.3.93 and stated that the impugned mark is being used by them since 1984 continuously and extensively. The opponents did not file any objection of evidence by themselves. Other three affidavits by Sarvashri R.K. Aggarwal, I.D. Gupta and Rajesh Gupta were filed under Rule 53. Evidence under Rule 54 is by way of an affidavit and alongwith certain exhibits by Shri Vinod Kumar Aggarwal. Reply evidence by opponent under Rule 55 is by way of affidavit by Shri C.R. Aggarwal.
10. The matter was taken up for hearing on 10.8.94, Learned counsel for the opponent submitted that the word 'Aggarwal' is a common surname in the trade and therefore no exclusive right can be given to the respondent. He further contended that the applicants have not substantiated their user a claimed since 1984 and therefore the impugned mark does not qualify for registration under Section 9(1) (a) of the Act. Learned counsel for the opponent did not press for other objections under Section 11(a) and (e) of the Act. It was brought to the notice of the Tribunal that the applicant had been using the letter 'R' in a circle. Learned counsel for the applicant submitted that was a bona fide mistake and shall not be done in future.
11. Learned counsel for the applicant submitted that the word 'Aggarwal' is a surname but at the same time it has attained the required capacity to distinguish the impugned goods by reason of extensive use and publicity and therefore it qualifies for registration in terms of Section 9(1) (a) of the Act. He claimed that the opponents have no locus standi to institute proceedings as they are much subsequent to the applicants and further they have failed to file their evidence in support of their claim under Rule 53.
12. In view of the evidence and use and publicity filed by the applicant, the Assistant Registrar came to the conclusion that inspite of it being a surname, the word 'Aggarwal' has acquired distinctiveness and as such qualifies for registration. The Assistant Registrar has in detail mentioned about the lack of evidence to the contrary filed by the opponents. He concluded that the opponents have miserably failed to establish and prove that the word 'Aggarwal' is a commonly used expression in this trade and thus the objection of the opponents under Section 9 collapses and is overruled. In conclusion, the Assistant Registrar held the matter in favour of the applicant under Section 9(1) (a) of the Act. He did not deem it proper to exercise discretion under Section 18(4) of the Act in refusing registration of the trade mark. In conclusion, he disallowed the opposition DEL 7423 and ordered that application No. 453308 shall be accepted and proceed for registration in Part B of the Register.
13. On 9.8.04 all the four appeals were taken up for consideration together with the concurrence of the respective counsel present for different parties. Learned Counsel Shri Mohan Vidhani appeared on behalf of the appellant in TA No. 94/2003, learned counsel Shri Surinder Singh appeared on behalf of the appellant in TA Nos. 95,97 and 104/2003 and learned counsel Shri Amarjit Singh appeared for the respondents in all the appeals mentioned above.
14. Learned counsel for the appellant in TA/94 argued that the applications for registration were filed on 30.4.86 and the user claimed is from 1.6.84. His contention was that it is too small a period to acquire distinctiveness and proprietorship. He drew our attention to a para in the impugned order dated 9.6.94 of the Assistant Registrar wherein it has been mentioned that "the applicant have never used the impugned mark 'Aggarwal' and it being a common surname, registration of the same is objectionable under Section 9 of the Act". He is wrong. These are not observations of the Assistant Registrar. Herein the Registrar has reproduced one amongst many grounds of opposition filed by the opponent. Thus, this is submission made by the opponent and not the Assistant Registrar. He submitted that the word 'Aggarwal' being a community surname cannot acquire distinctiveness and as such does not qualify the test of Section 18(1) of the Act. He drew our attention to some fallacies in a communication from the Trade Marks Registry placed at page 16 of the typeset of papers filed by the respondent M/s Aggarwal Sweet Corner. The Trade Marks Registry in their instant letter have asked the counsel of the respondent to file TM-16 with the prescribed fee for converting the application into one for registration in Part B of the Register. Besides, they have drawn the attention of the addressee to para 14-15 of the printed portion of the letter which is nothing but is of the usual character drawing attention of the addressee to certain statutory provisions for filing replies by a stipulated date. Learned counsel has unnecessarily overstretched it.
The contents of the letter are of no advantage to him. He drew our attention to the second page of the affidavit placed at page 25 onwards wherein the respondent has given the sales figures for four financial years, namely, 1984-85, 1985-86, 1986-87 and 1987-88. His argument was that this is an information for too insignificant periods. Since distinctiveness of a mark is to be assessed on the basis of the dates relating to any period which is prior to date of application and the user claimed in the present case is since 1984, any sale figures relating to period earlier to 1984 will be of little use. The learned counsel took us to two sets of documents placed in the file in relation to application No. 453308 and 453309. At page 21 is copy of application No. 453308 dated 23.4.86 for registration of the mark 'Aggarwal' word per se and at page 23 is copy of application No. 453309 dated 23.4.86 for registration of trade name 'Aggarwal Sweet Corner' which are identical except for the marks to be registered. Copies of two affidavits dated 20.2.88 in relation to application No. 453308 and 453309 are placed at page 25-26 and at page 27-28. Again the language of the draft in both the affidavits is identical excepting for specific mention of the marks 'Aggarwal' and 'Aggarwal Sweet Corner' wherever it is required to be mentioned in the context of the drafts. He argued that there cannot be identical evidence for the registration of two distinct marks, namely, 'Aggarwal' and 'Aggarwal Sweet Corner'. The documents produced to substantiate the claim have been drafted in a stereotype manner. He took us to a copy of affidavit placed at pages 29 and 30 which has been filed by the respondent. This affidavit is in the nature of a complaint filed in the Court of Chief Metropolitan Magistrate, Delhi. Copy of the registration certificate issued by Delhi Administration in 1984 is placed at page 31 of the typeset. A copy of cash receipt dated 10.8.84 issued by Municipal Corporation of Delhi in favour of the respondent for pitching a covered tent for two days is placed at page 32. Learned counsel took us to copies of an invoice and delivery challan both dated 20.6.84 issued by M/s Blue Star Ltd. for having purchased some electrical machines. A copy of receipt dated 28.12.84 for payment of some amount as subscription to Shivaji Market Association as subscription is placed at page 35. He emphatically pointed out that all other documents which are placed at page 41 onwards pertain to dates which are after the date of filing of the application. He drew our attention to few more documents filed by the applicant wherein he has deliberately used the word 'R' within a circle signifying as if the mark is already registered. To conclude reference to the documents, he took us to a copy of sales tax assessment placed at page 94 and pointed out that the sales have been assessed at Rs. 31700 whereas the amount mentioned by the applicant in his affidavit placed at page 26 runs somewhere like Rs. 108006.50. So the sales figures differ widely. He put reliance upon certain cases to support his case. In Sagar Beedi Works and Anr. v. Bharath Beedi Works and Anr., 1981 PTC 269 it was held by the Bombay High Court that where the appellant has used the word 'Registered' without the mark being registered, it is enough to conclude that the user was tainted with dishonesty and accordingly the appellants are not entitled to discretionary relief under Section 12(3) of the Act. In Raghubir Singh Jain v. Raizuddin Gyasuddin, a case from Delhi High Court 1996 (2) Arb. LR 87 in a matter of ad interim injunction it was held that where the plaintiff made an attempt to show that mark is a registered mark, injunction should be denied. In a passing off matter in Johnson & Son (Loughbourough) Ld. v. W. Puffer and Company, 1930 RPC 95, misrepresentation by plaintiff as to registration of an unregistered mark was held to be sufficient for refusal of injunction. Learned counsel for the respondent argued that to correct the defalcation of the applicant, the letter from ACME company undertaking that the expression 'R' shall not be used by the respondent is not enough. He took us to Uttam Chemical Udyog, Ballabrgarh v. Shri Rishi Lal Gupta, 1981 PTC 137 where it was held that the word 'Bhai' has become public juris. Learned counsel Shri Surinder Singh for the appellant in TA/95/2003, TA/97/2003 and TA/104/2003 broadly adopted the arguments placed by the learned counsel Shri Mohan Vidhani.
15. Learned counsel Shri Amarjit Singh for the respondent in all the four cases narrated the factual position in both the applications and the oppositions filed thereto. He explained that the applications were filed on 30.4.86 and the user claimed in both the case is from 1.6.84. He agreed that 'Aggarwal' is the name of a community and there is no bar to the registration thereof as a trade mark. The name has been adopted to distinguish and there is no prior right claimed and the reputation of the mark is not in dispute. He cited various examples where the names of the communities like Bajaj, Kirloskar have been registered as trade marks. He submitted that the applicant by adducing the documents relatable to the period from when user has been claimed, that is, 1.6.84 have proved their distinctiveness to the mark and as such are qualified for the entitlement of the mark under Sections 9, 12 and 18(1) of the Act.
16. We have heard both the counsel very carefully and have gone through the various documents filed by them in support of their claim. We find that sine qua non for entitlement under Section 9 is that one who contests for the mark should be prior user in time and even should have been consistently using the mark from the date so claimed. Respondent, in this case filed his applications on 30.4.86 and has claimed his use from 1.6.84. He has adduced sufficient evidences to prove his claim that he had been extensively and consistently making use of both the marks from 1.6.84.
The invoice of M/s Blue Star Limited towards purchase of certain electronic gadgets in the month of June, 1984 and the certificate of establishment dated 10.8.84 by the name 'Aggarwal Sweet Corner' issued by the Delhi Administration under the Delhi Shops and Commercial Establishments Act, 1954, go to prove the existence of the firm by that name on the relevant date. The cash receipt dated 10.8.84 issued by the Municipal Corporation of Delhi in favour of the respondent for Tehbazari charges (pitching a covered tent) for two days further supports the argument just now made. We believe that so much of the documentary evidence for this period is enough to establish that there was a user as from the date claimed in the application and it was a consistent user. Assessment orders of the sales tax for the relevant period supports the claim of regular and continued existence of the trading activity. Submission of the learned counsel for the respondent to the effect that occasional use of letter 'R' within a circle was done inadvertently coupled with the assurance that the same shall not be done in any manner till the mark is actually put on the Register is enough explanation.
The said submission was made by the learned counsel on 24.5.94 well before the order of the Assistant Registrar under the impugned application was issued. The cases cited by the learned counsel for the appellant do not help him to strengthen his case. In Sagar Beedi Works, the Court had extensively examined the claim for registration and reached the conclusion that the application does not pass the scrutiny of Sections 11(a) and 12(1) of the Act. In view of that the appellant had sought the discretionary relief under Section 12(3) of the Act which was denied to him for his having used the word 'Registered' without the mark being registered. Tests and standards laid down for availing the benefit of Section 12(3) are different vis-a-vis the requirements of Sections 9,11 and 12(1) of the Act. In the instant matter, respondent No. 1 qualifies for grant of registration under Sections 9, 11 and 12(1) of the Act. The other two cases, namely, Raghubir Singh Jain and Johnson and Son relate to matters relating to ad interim injunctions or interlocutory injunctions which are again discretionary jurisdictions of the tribunals. The present case cannot be equated with those situations. Again in the present situation at the earliest moment having been pointed out so, the respondent having felt apologetic made a prompt submission by giving an undertaking that it will not be repeated. We feel that it should be enough to bring the matter to an end at that stage. The expression 'Bhai' was held to be public juris in view of the given situation of a particular expression. There were as many as six applications pending for registration of trade marks with some expression of the word "Bhai" therein. 'Aggarwal' is the name of a community and as such is not likely to be used by all and sundry who do not have any special linkage or community affiliation with the expression.
17. The contention of the appellant to the effect that there is a wide gap in the amount of sales as mentioned by the applicant in his affidavits and the assessment order of the sales tax officer does not hold good. It rather goes to the benefit of the respondent in fortifying his claim for user as from a particular date. The sales tax authorities having determined the matter in a quasi judicial manner have besides arriving at the figure of sales assessable for tax have come to the conclusion that the goods were being sold as from a particular date.
18. In view of the above we find no merit in changing the decision of the learned Deputy Registrar or the Assistant Registrar, as the case may be, in all of these appeals. Hence, the appeals stand dismissed with no order as to costs.