Delhi District Court
State vs . Pawan Kumar Jain on 12 May, 2009
IN THE COURT OF SH. DIG VINAY SINGH, ACMM03 (IPR), ROHINI, DELHI
FIR NO.305/05
PS ROHINI/IPR
STATE VS. PAWAN KUMAR JAIN
U/S.103/104 TRADEMARK ACT, 1999
ORDER ON CHARGE
12.5.2009
Pr. Ld. APP for the State Mr. Pradeep Gangwar.
Sole accused Pawan Kumar Jain is present on bail.
1. Matter is fixed for arguments on charge by Ld. APP. Arguments on
charge from accused already heard. Arguments of Ld. APP heard today.
2. Brief facts of the case are that the present case was registered on the
complaint of Suresh Kumar Jain, Modwood Doors, when he filed the
complaint case before my Ld. Predecessor Court and my Ld. Predecessor
Court was pleased to order registration of FIR u/s.156(3) Cr.PC, as also
search warrants were issued u/s.93 Cr.PC. The complainant in the
complaint alleged that the complainant is engaged in the business of
manufacturing and trading of doors, windows under the brand name
"Laminated Veneer Lumber"(LVL). Complainant had a registered
trademark by this name Laminated Veneer Lumber (LVL) vide
trademark Number 775203 dated 27.10.1997 in Clause19 in favour of the
complainant. The complainant claimed that the accused applied false
trademark on similar gods with the name Laminated Veneer Lumber
and thereby was committing offence u/s.103/104 of Trademark Act,
1999.
3. On this complaint, a raid was conducted at Jain Doors Pvt. Ltd., Plot
No.4, PhaseIV, HSIDC Industrial Area, Kundli, Sonepat, Haryana,
which was run by the accused Pawan Kumar Jain. From the said
premises, certain bills and documents were seized wherein word
"Laminated Veneer Lumber" were mentioned. Opinion was sought
from the Registrar of trademark and the Registrar gave an opinion that
the complainant is the registered owner of the said trademark.
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Accordingly, accused was chargesheeted for the offence u/s.103/104 of
Copyright Act, 1999 on the basis of recovery of these documents. It
would be pertinent to mention here that no article in physical form was
recovered from the possession of accused. Various documents as
mentioned on page 4 & page 5 of the chargesheet were only recovered.
4. Arguments on charge have been heard and the counsel for accused
claims that no charge against accused is made out since Laminated
Veneer Lumber is in fact a material similar to that of plywood, block
doors and it is used worldwide with the same name in structural
material and it is used as an alternative to industrial wood. It is claimed
that Laminated Veneer Lumber is a name of the material itself and it
could not have been registered as a trademark u/s. 9 of the Trademark
Act, 1999. It is also argued that the trademark of the complainant which
was registered for this product was challenged in Intellectual Property
Appellate Board and vide order no.112/06 dated 16.11.2006 in M.P.
No.51/05 in O.R.A./34/2005/TN/DEL, the said trademark registered in
favour of complainant is removed from the Register of trademark. Copy
of the said order is placed on record which I have perused and the
Intellectual Property Appellate Board after hearing the complainant and
the accused (who was petitioner therein) held in para18 to para23 as
follows :
17. "In rejoinder to the arguments made by the
learned counsel for the respondent, counsel for the
applicant submitted that the authorization was not necessary as it was a private limited company and submitted that the judgment relied on by the respondent had no relevance to this case. In reply to the question of limitation, learned counsel for the applicant submitted that the question of limitation does not arise and to the submission that the Registrar was not made a party to the proceedings, the applicant's counsel replied that the Registrar need not be made a party to the rectification proceedings.
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18. We have carefully considered the arguments of both the counsel. The main issue which arises for consideration is whether the applicant is an aggrieved person? The applicant in this case is an aggrieved person for the reason that the respondent had taken criminal action against the applicant. As per section 56 of the Act for expunging or varying the entry wrongly made or would not be against the interest of the person carrying on the same trade, but also in the interest of the public to have such wrongful entry removed. In the matter of Powell's Trade Mark 1894 (11) RPC 4, the House of Lords has defined aggrieved person 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 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, who nevertheless would not be willing to enter upon the risk and expenses of litigation.
Wherever it can be shown, as here that the applicant is in the same trade as the person who has registered the trademark and wherever the trademark, 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 person aggrieved".
Thus when the rights of the applicant is being interfered by the respondent as the registered proprietor under the impugned mark, the applicant is construed to be aggrieved person. From the above we are of the opinion that the applicant is a person aggrieved.
19. This next point that arises for consideration is whether the registration has been obtained by fraud and false statement as to user. We have looked into Order on charge in State Vs. Pawan Kumar Jain, FIR no.305/05 Page no. 3 of 6 dtd.12.5.2009/k the evidence like invoices, letters etc., produced by the respondent to prove their user and found that the respondent has only been a dealer of the product Laminated Veneer Lumber since the year 1997 and no documents to show that they are the owners of the trademark since 01.4.1995 as claimed in their application for registration. We, therefore, observe that the registration has been obtained by false statement and fraud.
20. We are of the view that the mark has not acquired distinctiveness and hence does not qualify for registration as per provisions of section 9 of the Act. Moreover, we are also of the view that the impugned mark is very descriptive of the goods and has not acquired a secondary meaning.
21. Section 11(a) of the Act prohibits registration of a mark, the use of which is likely to cause confusion or deception. Taking the guidelines of the principles laid down by various Courts, we are of the opinion that when the impugned mark of the respondent is identical to that of the applicant's mark, especially considering the fact that both are in respect of the goods of same description and as such the registration of the respondent's mark is in violation of section 11(a) of the Act.
22. Consequently we are of the opinion that the impugned mark has been wrongly registered and the same cannot be allowed to continue in the Register of Trademarks.
23. Accordingly the ORA 34/2005/TM/DEL is allowed and the Register is directed to remove the mark from the Register of Trademarks. However, there will be no order as to costs. As the main rectification application itself has been allowed, M.P. No.51/2005 becomes infructuous".
5. Section 9 of the Trademark Act, 1999, provides absolute grounds for refusal of registration of trademark and provides that the trademark which are devoid of any distinctive character i.e. to say not capable of Order on charge in State Vs. Pawan Kumar Jain, FIR no.305/05 Page no. 4 of 6 dtd.12.5.2009/k distinguishable the goods or service of one person from those of another person shall not be registered. The provisio clause of subsection (1) of section 9 of the Trademark Act, 1999,allows registration if before the date of application for registration, it has acquired a distinctive character as a result of use made of it or it is a well known trademark. Clause(b) of subsection (1) also provides that trademark which consists exclusively of trademark or indication which may serve in trade to designate the kind, quality, quantity, intended purposes, values, geographical origin or time of production of goods or other characteristics of goods shall not be registered. Subsection (2) further provides that a mark cannot be registered as a trademark if it is of such nature as to deceive the public or cause confusion.
6. In the present case, admittedly the Laminated Veneer Lumber is in fact the name of material itself and it is not exclusively used by the complainant. Rather, it is worldwide used as an alternative product to natural wood. It is like saying that a trader in salt cannot get the trademark "salt" registered in his name since there would be other traders using the same name because it is the name of product itself.
Just like a salt cannot be a trademark of any single person, the name of product Laminated Veneer Lumber itself cannot be a trademark in favour of anybody otherwise it is likely to cause confusion to the public. In the present case also, the registration of the trademark "Laminated Veneer Lumber" in the name of complainant is a product and material itself and it could not have been registered as a trademark in favour of the complainant. It is just like that the plywood is a material being used for the various structural purposes worldwide and it is known worldwide by the name of plywood itself. Therefore, no one can claim registration of trademark by the name of plywood.
Similarly, Laminated Veneer Lumber is used in structural activities as an alternative to natural wood and, therefore, the same could not have Order on charge in State Vs. Pawan Kumar Jain, FIR no.305/05 Page no. 5 of 6 dtd.12.5.2009/k been registered as a trademark in favour of the complainant.
7. Intellectual Property Appellate Board vide the above mentioned order was pleased to remove the mark on this very ground and the Board was also pleased to observe that the case of complainant do not fall within the provisio clause of subsection (1) section 9 of Trademark Act, 1999. It is specifically mentioned that the impugned mark is trade description of goods and it has not acquired secondary mean nor it has acquired distinctiveness in favour of complainant and the registration was obtained by false statement and fraud.
8. U/s.11(a) of the Trademark Act, 1999, registration of a mark which is likely to cause confusion or deception is prohibitedUnder subsection (2) of section 9 of the Trademark Act, 1999 also registration of a trademark by the name of an article itself which is likely to cause confusion to the public, which is likely to deceive the public is prohibited.
9. In such circumstances, when the trademark of the complainant is cancelled/removed from the Register of trademark by the registration authority, no case of the prosecution survives and no charges against the accused for the offence 103/104 of the Trademark Act, 1999 can be framed even primafacie. The present chargesheet is filed only regarding u/s.103/104 of the Trademark Act, 1999 and in absence of registration of trademark, as discussed above, no charges whatsoever are made out against the accused Pawan Kumar Jain. Accused Pawan Kumar Jain is discharged in this case. His surety bonds/personal bonds are cancelled. Surety is discharged. Endorsement, if any on the documents of surety be cancelled. File be consigned to Record Room.
ANNOUNCED IN OPEN ( DIG VINAY SINGH )
COURT ON 12.5.2009 ACMM03 (IPR)
ROHINI, DELHI/12.5.2009
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