Intellectual Property Appellate Board
P. Kamala Devi Chordia vs P. Ganeshan And Ors. on 4 August, 2004
Equivalent citations: 2004(29)PTC578(IPAB)
JUDGMENT
S. Jagadeesan, Chairman
1. The applicant has filed this application under Sections 11, 32, 46, 107 and 108 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act), seeking a direction to the Registrar of Trade Marks to cancel the Trade Mark of the respondents Hexagon Frame covered under Certificate of Registration of Trade Mark No. 394013 B in Class 24 in Part B dated 10-8-1982.
2. The case of the applicant is that the Respondents No. 1 to 5 are the joint proprietors of the Trade Mark No. 394013 B in Class 24 in Part B and trading as M/s. P.M. Palani Madaliar & Co. The applicant has been carrying on the business dealing with handloom towels and lungies ever since 1975 under the label containing No. 744 with P R T Round Seal. By virtue of long, extensive and continuous use, the Trade Mark (label) 744 and PRT Round Seal has become distinctive of and is exclusively identified with the goods sold by the applicant in the Textile Market. The applicant is adopting and has selected 744 number because it represents the 7th house in the Horoscope of the applicant's husband Shri Premraj Chordia, in which are situated four planets viz., Sun, Moon, Mercury and Jupiter with 6th Rasi Virgo. The artistic work 744 label was thus extracted from the Horoscope of the applicant's husband. The Hexagon device frame used to display the letters "PRT" mark was also created by the Horoscope Scholar of the applicant in the year 1973. The applicant has been using this frame prominently in the labels used in the course of manufacture and sale of the applicant's products since 1975. The applicant in the course of the textile business has created enormous goodwill and reputation in the Trade Mark, The respondents registered Trade Mark label 144 is almost identical and similar to that of the applicant's Trade Mark label 744 and as such, the consuming public will mistake as to its identity and its source. The public and the traders will think that there is some connection between the applicant's goods and the respondents' goods, especially, when the goods are of the same kind. The respondents, knowing the applicant's popularity of the Hexagon device frame mark, fraudulently adopted the identical mark and applied for registration of the blank frame mark on 10.8.1982 and secured the registration clandestinely suppressing the applicant's use of the identical mark. The registration secured by the respondents, the subsequent user is liable to be rectified in view of Sections 11(a) and (e) of the said Act. The respondents, having known about the use of the identical frame and mark by the applicant, has falsely claimed as user since 1974 and the same would amount to fraud and as such, the respondent's registered mark is liable to be rectified under Sections 32 (a) and (b) of the said Act.
3. It is the further case of the applicant that the respondents at the time of filing the application for registration had no bona fide intention to use the mark as applied for. Their intention is to use the mark alongwith the initial PMP in the blank frame. The respondents have no bona fide intention to use the mark as registered, but, use the same with additions and alterations. Since the respondents never used the mark as registered on any point of time from the date of registration, the mark is liable to be rectified under Section 46 of the said. Act for non use. The registered mark was not used by the respondents as registered, but, with additions and alterations substantially affecting the registered one. The respondents, when applied for registration had no right to use the Trade Mark under Section 2(v) (ii) in view of the applicant's pre-existing right on the said mark. The respondents' sole intention is to secure the frame and to display the initials and the numerals deceptively similar to that of the applicant's, which have had a very good reputation in the trade. The applicant also filed O.P. No. 712/1995 under Section 56 of the said Act in respect of the registered Trade Mark label 144 of the respondents. The applicant also filed an application for registration of the Hexagon framework with PRT Round Seal under Application No. 589840/1993 and the same is pending. For the above reasons, the applicant is seeking for the rectification of the Register of Trade Marks by removing the registered Trade Mark of the respondents No. 394013 B in class 24 in Part B dated 10.8.1982.
4. The first respondent filed counter affidavit stating that the respondent firm P.M. Palani Mudaliar & Co. is the Proprietor of the Trade Mark device mark registered under No. 394013 B, dated 10.8.1982 in Class 24 and also the Trade Mark PMP registered under No. 394012, dated 10.8.1982, in respect of textile piece goods, including lungies, sarongs, handkerchiefs, sarees and dhotis. The said registration had been duly renewed and is validly subsisting. The firm is using the Trade Mark registered under Nos. 394012 and 394013 B together. The respondents' device mark has become distinctive and is identified by the traders and public exclusively with lungies, handkerchiefs and other products. Rectification petition has been filed by the applicant only to harass the respondents. The respondents have also referred to several criminal proceedings and the suit and other legal proceedings about which there is no need to mention elaborately except to draw an inference with regard to the conduct of the applicant. It is further stated that the respondents have filed their suit C.S. No. 1017/1995 on the file of the High Court of Madras and there is an interim injunction in their favour. It is further stated that the applicant has not sold any lungies since the year 1975 and they are not carrying on any business. The applicant/s claim to have been carrying on the business at Madurai with the Sales Tax Registration No. 497904, whereas, the applicant was not registered with the Sales Tax authorities at Madurai and in fact, the Registration No. 497904 did not belong to the applicant. The respondents had been continuously using the registered Trade Mark since 1974 and earned a reputation and goodwill for themselves. In fact, the applicant has copied the respondents' registered Trade Mark and device mark in its entirety.
5. The respondents also filed a counter statement wherein it is stated that the use of the respondents Trade Mark 362179 as a whole contains the device mark is by virtue of the legal fiction created under Section 54(2) deemed to be the use of the device mark registered under No. 394013 B as well. The respondents' Trade Mark device mark registered under No. 394013 B forms part of the Trade Mark PMP and the device registered under No. 362179. The respondents' firm is the prior user and adopter of the device mark. The Statement of Accounts and Invoices of the respondents for the year 1996-97 to 1998-99 were filed which shows the turn over of roughly Rs. 5.00 crores. The claim of the respondents is that they are the prior adopter and user of the device mark 144 label and PMP and consequently they contend that the relief sought for by the applicant cannot be granted and their application is liable to be dismissed. The said O.P. No. 235/1998 stood transferred to this Appellate Board by virtue of Section 100 of the Trade and Merchandise Act, 1999 and numbered as TRA/56/2003/TM/CH.
6. The learned counsel for the applicant referred to the various proceedings initiated by the respondents such as, Criminal complaint, Civil suit and the petition for the amendment of the plaint with regard to the date of use by the respondents. In our view, those proceedings have nothing to do with the relief sought for in this application.
7. The learned counsel for the applicant contended that applicant is the proprietrix of PR Textiles, the dealers in Towels and Lungies since 1974. They are using the Trade Mark PRT with Round Seal. The word PRT was formed by the applicant on the advice of her Astrologer, Further, the label was designed by their Astrologer. The label is with black lines diagram of four hands of a Swastik in shape of waves with yellow colour indicating 10 directions of the Universe with PRT letters. Since the applicant is the earlier user of the Trade Mark PRT with Round Seal and the Swastik frame, the conduct of the respondents in getting their Trade Mark with the letters PMP alongwith the same background of the applicant would amount to fraud. The learned counsel for the applicant took us through some of the documents to establish the claim of the applicant for the earlier user of the said Trade Mark. It is also contended by the learned counsel for the applicant that the Trade Marks label 744 and letters "PRT" of the applicant as well as the respondents label "144" and letters "PMP" are being similar, the registration of the respondents' mark is liable to be rectified under Sections 11(a) and (e) of the Act. The further contention of the learned counsel for the applicant is that the respondents never used their registered Trade Mark and as such, the same is liable to be removed from the Trade Marks Register. Even assuming that the respondents have used their registered Trade Mark, in view of the later adoption of the altered Trade Mark with the colour scheme of the applicant, the respondents have not used their Trade Mark, as registered, continuously for five years and one month. Consequently, the Trade Mark is liable to be rectified in accordance with Section 46 of the said Act. Hence, the Trade Mark No. 394013 B in Class 24 in Part B Hexagon frame of the respondents is liable to be removed.
8. On the other hand, the learned counsel for the respondents vehemently contended that the Trade Mark of the respondents PMP is totally distinguishable from the Trade Mark of the applicant PRT. Both the Trade Marks cannot be said to be similar either phonetically or visually. Pronounciation of each Trade Mark has got its own distinctiveness. Further, it is contended that though the respondents obtained the registration of the Hexagon frame under the disputed Trade Mark No. 394013B in Class 24 in Part B on 10.8.1982, the respondents also got another Trade Mark with the letters PMP registered under No. 394012 and are using both the Trade Marks together as the house mark of the respondents' firm. When both the Trade Marks are being used as the house mark, one Trade Mark alone cannot be segregated for the purpose of comparison of similarity. If the respondents' Trade Mark with the letters PMP and the device mark of Hexagon frame virtually forms a composite mark, then the respondents' marks are not identical with that of the applicant. When the Trade Marks of the applicant and the respondents have no similarity except the first letter "P", there is no question of any fraud committed by the respondents arises.
9. With regard to the non-user; the learned counsel for the respondents relied upon certain Invoices and contended that the respondents never discontinued the use of the Trade Mark much less with any intention to abandon the same.
10. Now, the question for consideration is whether the respondents Trade Mark No. 394013 B in Class 24 in Part B registered on 10.8.1982, from the Register of Trade Marks Registry has to be removed or not?
11. At the outset, we would like to point out that the relief sought for in this application is only to cancel the respondents' Trade Mark Hexagon frame covered under the Certificate of Registration No. 394013 B in Class 24. A perusal of the petition filed by the applicant is bereft of any material as to the use of the said Trade Mark by the respondents. In fact, the plea put forth by the applicant in the application is very much general in nature. There is no doubt, the applicant claims to carry on the trade in handloom towels and lungies with the label containing No. 744 with the letters PRT Round Seal. The outer frame for the letters PRT was constituted by their Astrologer taking into consideration of the situation of four planets, viz., the Sun, the Moon, Mercury and the Jupiter with the 6th Rasi Virgo of her husband's Horoscope. The applicant also claims the earlier user. Though much argument was advance on the documents, the documentary evidence relied upon, in our view are all unnecessary in view of the plea taken by the respondents.
12. In the counter affidavit as well as the counter statement, the respondents have stated that the disputed Trade Mark No. 394013 B in Class 24 in Part B which is the Hexagon frame is being used alongwith another Trade Mark with letters PMP registered under No. 394012. The learned counsel for the applicant did not dispute the composite use of both the Trade Marks as one by the respondents. There is absolutely no evidence placed before us that the disputed Trade Mark consisting of the Hexagon frame is being used by the respondents independent of the other Trade Mark letters PMP. When that be so, we have to take it that the disputed Trade Mark has no separate identity, even according to the stand taken by the respondents. The Hexagon device mark is being used as a house mark of the respondents alongwith the word mark PMP. In such a circumstance, we are unable to accept the plea of the applicant that the disputed Trade Mark of Hexagon frame offends Section 11(a) of the said Act. The applicant's case also is that they are not using their outer frame as formulated by the Astrologer, separately in respect of any of their goods. It is the applicant's admitted case that they are using the outer frame alongwith the Trade Mark letters "PRT'' and with the Trade Mark label "744". In that case, the Hexagon frame alone is not a reputed Trade Mark of any of the goods of either of the parties.
13. It may be pertinent to note that the applicant did not challenge the registration of the Trade Mark with the letters PMP taken by the respondents. Hence, we have to take it that the applicant has no grievance with regard to the use of the Trade Mark with letters PMP by the respondents. In that case, as already stated, the Hexagon frame under the disputed mark cannot be segregated for the purpose of comparison.
14. The other main contention of the learned counsel for the applicant is the non-user by the respondents. Section 46 of the Act which is mentioned in the application of the applicant reads as follows:
"46. Removal from register and imposition of limitations on ground of non-use:-
(1) Subject to the provisions of Section 47, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved on the ground either-
(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of Section 45 apply, by the company concerned, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or -
(b) that upto a date one month before the date of the application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bana fide use thereof in relation to those goods by any proprietor thereof for the time being.
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A perusal of this provision empowers the authorities to take off a registered Trade Mark from the Register, if it is found that the Trade Mark was registered (1) without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in case to which the provision of Section 45 apply, by the company concerned, and that there has, in fact, (2) been no bona fide use of the Trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application, or (3) that up to a date one month before the date of the application, a continuous period of five years or longer had elapsed during which the Trade Mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being, The words of the Section are very clear. Only if the registered Trade Mark was not used for a period of one month and five years prior to the filing of the petition for rectification or if there is no bona fide intention on the part of the applicant for registration to use the said Trade Mark from the inception in respect of the goods for which the same was registered, then, rectification can be ordered. It is unnecessary to look for any evidence on this aspect in view of the candid admission made by the applicant in her application itself in more than one place. In paragraph 12 of the application, the applicant has stated as follows:
"The conduct of the respondents in using the Trade Mark with addition and alteration amount to contravention of the Act."
In paragraph 14 of the application, the applicant has stated as follows:
"The mark registered by the respondents were not in use as registered, but, with addition and alteration substantially affecting the mark as registered which is in contravention of the Act."
15. The applicant did not furnish any material as to how the registered Trade Mark of the respondents substantially affected by alteration or addition. It may be recalled that the case of the applicant itself is that the Hexagon frame is used by the respondents with the letters 'PMT' and label "144". The frame as such was never changed.
16. The requirement for cancellation of the mark is either the registration should have been made without intention to use followed by non-use or the non-use must have been for a continuous period of five years as specified in Sections 46(1)(b). In the latter case, there is no need to prove want of intention to use. The non use may be in respect of a particular goods or all goods for which the mark is registered. What constitutes use of a Trade Mark in relation to goods is defined in Section 2 (2)(b) of the Act. Section 54(1) enables the authority to accept use of a registered associated Trade Mark or of a Trade Mark with addition or alterations, not substantially affecting its identity. As already stated, it is not the case of the applicant that the respondents are not using the registered Trade Mark Hexagon frame. The applicant themselves have admitted in their pleadings that they are not using the device Trade Mark the outer frame independently in respect of any goods. They are also using the said device mark alongwith the letters "PRT" with Round Seal. In that case, the device mark alone cannot be segregated to decide the question of non-user by the respondents, when the applicants have admitted that the respondents are using the device mark Hexagon frame with the letters "PMT" or the Trade Mark label "144". In fact, their case is that the respondents are not using the Hexagon frame as registered. The fact remains that without changing the features of the registered mark, the respondents are using the same with the associated mark label "144" and also with another registered word mark "PMP". In such circumstances, under no imagination, it can be said that the respondents have no bona fide intention to use their mark or they stopped the use of the same.
17. Whereas the respondents' Trade Mark was registered as early as 1982, the applicant has filed this application in 1998, i.e., nearly after a lapse of 16 years. The burden of proof is on the applicant for rectification to show that the mark is wrongly registered or is wrongly remaining on the Register. The applicant, in our view has not led any evidence cither on the aspect of similarity or non-user in view of the respondents' use of the marks as a composite one. In face, the averments in the application are contrary to the contentions in the Court. In the absence of any pleading with specific details with regard to fraud, such a plea cannot be entertained for want to material particulars. In this case, the applicant has not borne out the details which constitute the fraud on the part of the respondents. Consequently, the plea of fraud is also rejected.
18. Through the learned counsel for both sides drew our attention to various judgments and also the documentary evidence, in our view, there is no need to elaborate on them in view of the above factual position. We decide the case on the admitted facts and as such, it is unnecessary for us to strain ourselves by entering into elaborate discussion with regard to the other materials.
19. The respondents filed the suit C.S. 1017/1993, against the applicant on the file of the High Court of Judicature at Madras. They also initiated certain criminal proceedings against the applicant. Immediately the applicant filed T.A. 51/2003 originally before the High Court, Madras, in O.P. No. 712/1995 for rectification of the Trade Mark label "144" of respondents. Thereafter, they waited for nearly 3 years of file this application. The conduct of the applicant clearly reveals that the rectification proceedings are only a counter blast to the infringement action taken against them, by the respondents.
Consequently, the application is dismissed as devoid of any merit. There will be no order as to costs.