Intellectual Property Appellate Board
Needle Industries (India) Private ... vs Vinod Kumar Agarwal Trading As Pioneer ... on 19 March, 2008
ORDER
S. Usha, Technical Member
1. The applicants as a subsidiary of one of the largest manufacturers of needles, hand sewing needles, knitting pens and other haberdashery products were incorporated in 1949. The applicants had also manufactured and marketed hand-sewing and hardware needles, knitting needles, crocket hooks, knitting pins, snap fasteners, hooks, eyes, safety pins, plastic headed pins, pearl headed pins. etc. The applicants had adopted various trade marks and in particular the trade mark 'PONY' and the 'PONY distinctive device'.
2. The applicants are one of the largest exporters of the aforesaid products in India. They have number of sales offices in India to meet the demand. They had adopted the four legged version of 'PONY device' along with the trade mark in the year 1966 and have improved the four legged version to two legged version in or about 1990. The applicant's trade mark 'PONY' along with the 'PONY device has been registered under the Copyright Act under Nos. A-34686/81 and A-51945/92 respectively. The applicants have spent huge amount of money to register their trade mark as well to initiate legal proceedings against infringes. The applicants have also spent huge some of money towards sales promotion by advertisement through various medias.
3. The applicant's application for trade mark registration of PONY along with 'PONY device' has been registered in class 21. They have prior registration of the trade mark 'PONY' along with the device of PONY in other various classes. The applicant's first registration has been of the year 1971. The public associate the said trade mark with the applicant's goods alone by virtue of its continuous use and wide publicity. The applicant's trade mark has thus become a well known trade mark.
4. The respondent herein had deliberately adopted on identical trade mark 'PONY' and on 05.11.1999 filed an application for registration of the trade mark under No. 880085 in class 21 in respect of 'comb, tooth brush and shaving brush'. The said application was advertised in the Trade Marks Journal on 14.11.2003 and the same was registered subsequently. The applicants had not opposed the trade mark registration due to oversight had filed a civil suit in C.S. No. 687/04 before Hon'ble High Court of Madras against the respondent restraining the respondent from using the said trade mark. The Hon'ble High Court of Madras had granted an order of interim injunction on 21.03.2006 restraining the respondent from using the trade mark 'PONY along with the PONY device'. The application for registration under No. 880085 filed by the respondent had been registered on 03.03.2005.
5. The applicants are thus aggrieved persons on account of the respondent's mark being registered. The applicants are aggrieved persons not only because the respondent has got the mark registered but also the marks are identical. The applicant's trade mark 'PONY' along with 'PONY device' is in use for a long and considerable period and the applicants have been using prior to that of the respondent. The respondent has adopted the identical mark only on seeing the reputation and goodwill gained by the applicants. The applicants are thus an aggrieved person and have the locus standi to file this instant application.
6. The applicants have filed the rectification petition on the following grounds:
(a) The respondent's trade mark PONY is devoid of distinctive character and is not capable of being distinguished and as such does not qualify to be registered under Section 9(1) of the Trade Marks Act, 1999 (hereinafter referred to as the Act)
(b) As the marks are identical and as the applicants have gained a good reputation among the people, the public associate the goods bearing the trade mark 'PONY' only with the applicants alone and the respondent's registration is against the provisions of Section 9(2)(a) of the Act where there is every possibility of confusion and deception being caused.
(c) The respondent's registration is against the provisions of Sub-sections (2) and (6) to (10) of Section 11 of the Act as the respondent has copied the identical, well-known and reputed trade mark of the applicant.
(d) The respondent has not bonafidely used the registered mark. The respondent has also fraudulently obtained registration of the trade mark deriving undue advantage of the applicant's goodwill and reputation which is against the provisions of Section 18(1) of the Act.
(e) The respondent has claimed user since 1998 which is denied by the applicant. The applicants state that the respondent has obtained registration by false representation and cannot claim the benefit of concurrent user under Section 12 of the Act.
(f) The respondent's mark on the register will definitely cause confusion among the public which will also affect the purity of the Register.
(g) The rival marks being identical and goods similar, the goodwill and reputation earned by the applicants would definitely be prejudiced if the mark is allowed to continue on the Register of trade marks.
(h) The applicant's prior adopted trade mark and identical trade mark has got to be protected.
(i) The respondent has obtained registration fraudulently in contravention of the provisions of Section 28 of the Act.
(j) The registered trade mark is wrongly remaining on the Register of trade marks without sufficient cause and the registration is in contravention of the provisions of Sections 9, 11, 12, 18(1) and 57 of the Act.
7. On the above mentioned grounds the applicant prayed that the trade mark registered under No. 880085 be removed from the Register of Trade Marks.
8. The matter was taken up for hearing in the Circuit Bench at New Delhi on 14.3.2008. Learned Counsel Shri Vishnu Rethinam appeared on behalf of the applicants. Respondent though was served with notice by way of substituted service did not appear before us.
9. Learned Counsel for the applicant prayed that the trade mark 'PONY' registered under application No. 880085 in class 21 for comb, shaving brush etc., be removed from the register. The learned Counsel for the applicant drew our attention to the list of trade mark applications pending and registered in various countries of the world. The applicant brought to our notice the certificates for use in legal proceedings issued by the Trade Marks Registry and submitted that the first registration was of the year 1971 at page 94 of the typed set of documents.
10. Learned Counsel for the applicant also produced the copyright registration certificate in proof of the date of user as early as 1967. The counsel pointed out to the list of sales offices to show how their business was spread over throughout the world. The counsel also pointed out the sales figures in the international markets under 'PONY' brand and also the list of invoices in the international and the national market. Along with the same he also produced the various advertisement materials in proof of the user date.
11. Learned Counsel for the applicant also pointed out to some of respondent's invoice which were filed as annexures to the application.
12. Learned Counsel for the applicant further relied on some judgments in support of his contention and prayed that the application for rectification be allowed by removal of the registered trade mark under No. 880085 from the Register of Trade Marks.
13. We have considered the arguments of the applicant's counsel and have carefully gone through the documents filed along with the application.
14. The first issue that arises for consideration in an application for rectification is whether the applicant is an aggrieved person. The provisions of the Act is very clear which goes to say that an opposition may be filed by any person as per Section 21 of the Act, whereas an application for rectification can be made only by a person aggrieved. The test would be to decide who is a person aggrieved. The expression 'aggrieved person' has been liberally construed by all courts. Persons who are in some way or the other substantially interested in having the mark removed from the Register are persons aggrieved.
15. Lord Herschell has defined aggrieved person in Powell's case as "although they were no doubt inserted to prevent officious interference by those who had no interest at all in the Register being correct and to exclude a mere common informer, it is undoubtedly of public interest, that they should not be unduly limited, in as much as it is a public mischief that there should remain upon the Register a mark which ought not to be there, and by which many persons may be affected, nevertheless, would not be willing to enter upon the risk and expense of litigation. Wherever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade mark, and wherever the trade mark if remaining on the Register, would, or might, limit the legal rights of the applicant, so that by reason of the existence of the entry on the Register he could not lawfully do that which, but for the existence of the mark upon the Register he could lawfully do, it appears to me he has a locus standi to be heard as the person aggrieved."
Here in this instant case the applicants who are the prior adopters of the impugned trade mark, identical to the respondent's trade mark is a person aggrieved. It is also to be seen that the object of rectification of the mark from the Register is to purify the Register which is a public purpose and so locus standi of a person to file an application for rectification is to be determined on principles to those in public interest than in private ones.
16. The fact that a person is engaged in the same trade will not make him an aggrieved person. The person aggrieved must establish that in some practical sense he may be damaged if the mark is allowed to continue on the Register.
17. Considering the facts of the case and also the principles of law, it is agreed that the applicant before us as owner of the copyright in the registered trade mark and prior adopter of the trade mark is a person aggrieved and has the locus standi to file an application for registration.
18. The other issues are whether the impugned registration is in contravention of the provisions of the Act.
19. The mark qualifies for registration under Section 9(1) of the Act, if it is either distinctive or capable of being distinguished as a result of use prior to the date of application or it is a well known mark. Here, we did not have the benefit of hearing the respondent and we had to go by the documents placed before us by the applicant. On perusal of the documents i.e. a copy of the plaint filed by the respondent against the applicant before the district court, it is seen that the respondent has started using the trade mark 'PONY' in the year 1999 and the application for registration of the trade mark has also been of the same year 1999. It is thus clear that the mark has not acquired distinctiveness either by use or has proved to be a well know mark and disqualifies for registration under Section 9(1) of the Act.
20. The other ground for removal of the impugned trade mark is under the provisions of Section 9(2)(a) of the Act. The provision is that a trade mark is not registrable if by its very nature will deceive the public or cause confusion. Here in this instant case, we are of the opinion that there is every possibility of confusion and deception being caused among the public as the rival marks are identical. The applicants adoption of the trade mark being prior in use and also that the applicant's mark is a well known mark and has gained good reputation among the public, use of the mark which is identical by the respondents would definitely cause confusion among the public making the public to think that goods bearing the impugned trade mark emanate from the applicant.
21. The essentials for prohibition under Section 11(2) of the Act is that the trade mark sought to be registered must be identical or similar to an earlier trade mark, the goods in respect of which registration is sought are not similar to those for which earlier trade mark is registered, the earlier trade mark is a well known mark in India and that use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character of the earlier trade mark. The applicant's mark here is registered as early as 1971 and has also gained good reputation among the public and is a well known mark and as such the use of an identical mark by the respondent would cause confusion among the public and thus does not qualify for registration under Section 11(2) of the Act.
22. The confusion or deception in this case is not merely likely, but almost certain, having regard to the manner in which the mark has been copied by the respondent along with device.
23. The other ground for rectification is under Section 11(6-10) of the Act. Sub-section 6 to 10 of Section 11 of the Act deals with what is a well known mark and the facts to be considered to determine a well known trade mark. The applicants will have to establish that the applicant's mark is a well known mark by recognition of the trade mark by the public and the extent of use of the mark, the extent of promotion of the mark, the extent of publication of the mark and the extent of recognition of the trade mark right by any court. The applicant, in our view, has produced documents like the list of various sales offices to prove that the business circle is widespread and also sales invoices throughout the world to show that their mark is a well known trade mark. The applicant's mark which is proved to be a well known mark, in our view, has got to be protected.
24. The other plea is that if the mark is allowed to continue on the Register, it would cause confusion among the public. In such circumstances, it is for the applicant for registration to prove that if the mark is allowed to continue on the Register, no confusion or deception will be caused. In this case, we are of the view that the applicant's mark being a well known mark and having gained a good reputation among the public has got to be protected by removing the impugned trade mark from the Register of trade marks. If the impugned mark is allowed to continue on the Register, it will only lead to passing-off.
25. The next ground as regards concurrent user as per Section 12 of the Act is also not available to the respondent. The user of the trade mark by the respondent is of the year 1999 as seen from the documents filed by the applicants, whereas the applicant's use is from the year 1966.
26. In view of the above observations made and having answered in favour of the applicants, we have no hesitation in holding that the impugned trade mark is to be expunged from the Register of trade marks allowing the application for rectification.
27. Therefore, we direct the Registrar of Trade Marks to remove the trade (sic) 'PONY' under No. 880085 from the Register. However, there shall be no order as to costs. As the main rectification application itself has been disposed of M.P. No. 99/06 does not survive.