Madras High Court
Scrum Alliance vs Prem Kumar.S
(T) OP (TM) No.503 of 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Reserved on: 26.07.2024 Pronounced on:20.09.2024
CORAM:
THE HON`BLE MR.JUSTICE P.B.BALAJI
(T) OP (TM) No.503 of 2023
Scrum Alliance, INC,
7401, Church Ranch Blvd,
Suite 210, Westminster,
CO 80021.
... Petitioner
..Vs.
1.Prem Kumar.S,
Flat No.307, 308/A,
Sai Tirumala Towers,
Hyderguda, St. Pauls School Lane,
Himayat Nagar, Hyderabad – 500 029,
A.P, India.
2.The Registrar of Trade Marks Registry,
Boudhik Sampada Bhawan,
IPR Building, G.S.P. Road,
Guindy, Chennai – 600 032.
.. Respondents
Prayer: This Petition came to be numbered by transfer of
O.R.A.No.125/2018/TM/CHN, from the file of the Intellectual Property
Appellate Board, Chennai, the petitioner prays:
(a) that entry relating to the registered Trade Mark No.2432381 in
Class 41 made in the name of the Respondent No.1 be rectified, cancelled
and removed from the Register of trade Marks;
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(T) OP (TM) No.503 of 2023
(b) that for the effective hearing and disposal of the above petition, the
records relating to the registered trade mark No.2432381 in Class 41 be
called for, sealed and produced before this Hon'ble Board to prevent any
interruption or tampering;
(c) that costs of the proceedings be awarded to petitioner.
For Petitioner : Mr.Ramesh Ganapathy
for M/s.Zeusip Advocates LLP
For Respondents : Mr.Anirudh Krishnan and
Mr.R.Abishek for R1
Mr.C.Samivel,
Senior Panel Central Government
Standing Counsel for R2
ORDER
The present petition has been filed to rectify the Register of Trade Mark in TM No.2432381 in Class 41, under Section 57 of the Trade Marks Act, 1999 (in short 'Act').
2. The case of the Petitioner, briefly:
The Petitioner is a corporate organisation, existing under the laws of the State of Colorado, USA and it is a non-profit organisation formed with a mission to promote increased awareness and understanding of the Scrum 2/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 methodology and to provide resources and support the improvement of product and application development.
3. The Petitioner adopted ‘CSM’ and ‘CERTIFIED SCRUMMASTER’ marks as early as in the year 2004 and has been using the said marks ever since and in the process has acquired immense good will and reputation. The Petitioner has also created artistic marks and and has been using the same since 2013.
4. According to the Petitioner, over 10,000 individuals having an address in India have received the CERTIFIED SCRUMMASTER (CSM) certification between 2009 and 2012 and the same is on the rise. The Petitioner has registrations in Classes 41 and 42 for both CSM as well CERTIFIED SCRUMMASTER which are valid till date.
5. The Petitioner’s attention, for the first time, was drawn to the impugned registration in favour of the 1st Respondent when the same was cited in the examination report of the Petitioner’s Application in 3298085, in 3/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 Class 41. According to the Petitioner, the 1st Respondent has adopted the very same ‘CSM’ mark with mala fide intentions to take advantage of the good will and reputation acquired by the Petitioner. The 1st Respondent’s Application for registration of the impugned mark, ‘CSM’ was filed only on 23.11.2012 with a user claim of 10th September, 2012 and the same is subsequent to the adoption and use of the mark by the Petitioner. Thus, the Petitioner seeks to cancel the identical mark of the 1st Respondent under Sections 11(1) to 11(4) & 11(10) read with Section 12 and 18 of the Act.
6. The case of the 1st Respondent, briefly:
The 1st Respondent is a registered proprietor of the mark ‘CSM’ and is an honest and concurrent adopter and user in India. In and by License Agreement dated 01.04.2014, the 1st Respondent has granted a license to M/s.GAQM, granting exclusive rights to use CSM amongst other trademarks/brand names of the 1st Respondent. There has never been any instance of confusion nor deception amongst the public. It is further contended that the subject mark was in fact cited as an objection against the registration sought for by the Petitioner in No.3298081 in Class 4/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023
41. Having taken a stand that the Petitioner was claiming concurrent rights over the ‘CSM’ mark, it is not open to the Petitioner to subsequently challenge the 1st Respondent’s mark or registration of the same.
7. The 1st Respondent has further stated that the Petitioner has failed to establish user claim from 26.03.2009 and in any event, the 1st Respondent is not the prior adopter of the ‘CSM’ mark as even in Class 41, in A.No.2495922, claiming use from 01.03.1989, one Colonia Santa Maria Hotels (P) Limited, enjoys a registration.
8. The 1st Respondent, in good faith, even carries a disclaimer in its website that it is not associated with the Petitioner. In any event, according to the Petitioner, the Petitioner’s mark has not been declared as a well- known mark and therefore, the Petitioner cannot claim any special status. Equally, the 1st Respondent contends that none of the grounds available under Section 11 are applicable to the Petitioner especially after pleading concurrent rights and accepting the similarity between the marks and services offered.
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9. It is also the specific case of the 1st Respondent that it offers professional certification courses in the field of management science and information technology. Further it is contended that after allowing the 1st Respondent’s mark to grow and gain popularity, it is not open to the Petitioner to seek rectification belatedly. The 1st Respondent’s disclaimer is also prominently displayed in the website and there is no likelihood of any confusion arising. The petition is sought to be dismissed on the grounds of estoppel, want of cause of action as well.
10. Considering the respective pleadings, the following Issues have been framed on 12.02.2024:
“1. Whether the petitioner is the prior adopter and user of the trademark 'CSM' worldwide and / or in India? (OPP)
2. Whether the registration bearing no.2432381 for the mark 'CSM' in Class 41 in the name of the respondent No.1 is invalid and liable to be rectified? (OPP)
3. Whether the petitioner is entitled to costs of the proceedings against the respondent No.1? (OPP)
4. Whether the parties are entitled for the relief as sought for, or any other relief?
5. Whether the present rectification petition is maintainable under Section 57 of the Trademarks Act, 1999?
6. Whether the user claim from 26th March, 2009 of the 'CSM' 6/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 trademark bearing Application No.3298081 in class 41 registered in the name of the petitioner is true and valid in the eyes of law?
7. Whether the registration obtained for 'CSM' trademark bearing Application No.2432381 in class 41 by 1st respondent is malafide in nature?
8. Whether the registration of 'CSM' trademark bearing Application No.2432381 in class 41 registered in the name of the 1st respondent is liable to be rectified?
9. Whether the respondent is entitled to the costs of the proceedings against the petitioner?
10.Whether the respondent is entitled for the relief as sought for?”
11. On the side of the Petitioner, no oral evidence was adduced. On the side of the Respondent, Mr.Prem Kumar, the 1st Respondent was examined as R.W.1 and also cross examined. Exhibits P1 to P11 were marked through RW1.
12. I have heard Mr.Ramesh Ganapathy, learned counsel for the Petitioner and Mr.Anirudh Krishnan & Mr.R.Abhishek, learned counsel for the 1st Respondent and Mr.C.Samivel, leraned Senior Panel Central Government Standing Counsel for the 2nd Respondent. I have also gone through the pleadings, oral and documentary evidence brought on record.
13. The learned counsel for the Petitioner, Mr.Ramesh Ganapathy 7/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 would submit that the Petitioner seeks cancellation of the impugned registration of the mark ‘CSM’ in favour of the 1st Respondent, in Class 41.
According to the learned counsel, the Petitioner is a non-profit organisation established in the year 2001 and is a leading certification body in the field of SCRUM, offering several certifications and is the largest and most established organisation and certifying body in the agile community and that their services are globally recognised and that the Petitioner has created a niche for itself.
14. The learned counsel would further elaborate his submissions that the Petitioner has honestly adopted the mark ‘CSM’ being the abbreviation of their well-known certification course, Certified Scrum Master in May, 2003. The registration of the mark, ‘CERTIFIED SCRUMMASTER’ has been obtained on 30.06.2016, with a user claim of 31.05.2005. The mark ‘CSM’ has also been used in India since 2009 onwards and the Petitioner has created highly stylised and artistic certification marks which have been in continuous and extensive use both in India and abroad and that the Petitioner has obtained registrations for the same in September 2013, in Class 41.
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15. The learned counsel for the Petitioner would further state that admittedly, the Petitioner has shown prior use from 2005 as against the use of the 1st Respondent from 2012 onwards alone. He would also state that the 1st Respondent also chose to withdraw its Opposition and the only challenge to the Petitioner’s mark was also given up by the 1st Respondent. He would further contend that the 1st Respondent has also not put a disclaimer in its home page and the said conduct is mala fide especially when the 1 st Respondent has adopted a similar logo as well as colour combination without any explanation which amounts to a dishonest adoption by the 1st Respondent.
16. The learned counsel would further state that the 1st Respondent is also rendering similar services and there is strong likelihood of confusion arising amongst the target audience and therefore, the rectification petition would have to be allowed.
17. The learned Counsel for the Petitioner would rely on the following 9/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 decisions:
17(a) Shree Nath Heritage Liquor Private Limited v. M/s.Allied Blender & Distillers Private Limited, reported in (2015) SCC Online Del 10164, where the Court summarised general principles applicable in trademark cases and held that when a consumer is in a state of wonderment, if there is a connection, then it would be confusion and if the consumer purchases the junior user’s product, it would amount to deception.
17(b) Khoday Distilleries Limited v. Scotch Whisky Association and others, reported in (2008) 10 SCC 723 where the ratio in Slazenger & Sons v. Feltham & Company, reported in (1889) 6 RPC 531(CA) that ‘one must exercise one’ common sense, and, if, you are driven to the conclusion that what is intended to be done is to deceive if possible, I do not think that it is stretching the imagination very much to credit the man with occasional success or possible success’, was quoted with approval.
17(c). K.R.Chinna Krishna Chettiar v. Shri Ambal & Company, Madras and Another reported in (1969) 2 SCC 131 also reproduced the words of Lord Radclifffe, ‘a mark is infringed by another trader if, even 10/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 without using the whole of it upon or in connection with his goods, he uses one or more essential features.’ 17(d) S.Syed Mohideen v. P.Sulochana Bai, reported in (2016) 2 SCC 683, where the Apex Court held that a prior user has superior right over a registered owner as even a registered proprietor has a right to use the trade mark to the exclusion of others and such right is subject to the right of a prior user of the trade mark. Referring to Section 34 of the Act, the Court held that the scheme of the Act is such where the rights of prior user are recognised superior than that of the registration and even registered proprietor cannot disturb/interfere with the rights of a prior user.
17(e) Procter & Gamble Manufacturing (Tianjin) Company Limited v. Anchor Health and Beauty Care, reported in 211 (2014) DLT 466(DB), where the Delhi High Court held that there is a difference between words/marks which would classify as descriptive, generally of the goods and services, whomsoever may be provider thereof and words/marks which communicate the particular/peculiar quality/qualities or features of product of one and which may not exist or do not exist in the same product being provided by others. In other words, it means that even if words or marks are 11/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 in a sense descriptive, they will still classify as distinctive as long as none other else till then has described those as unique to the product.
17(f). Pankaj Goel v. Dabur India Limited, reported in (2008) SCC OnLine Del 1744, where it was held that when the rival products are identical and are purchased by same class of customers and also sold through same trade channels, it would be a case of confusion and no amount of user by a subsequent adopter can be cured.
17(g) Cadila Pharmaceuticals Limited v. Sami Khatib of Mumbai, reported in (2011) SCC OnLine Bom 484, where the Bombay High Court held that if a party, for no apparent or valid reason adopts a mark of another, with or without modifications, it will be a case of dishonest adoption.
17(h). Ramjas Foundation v. Union of India, reported in (2010) 14 SCC 38, where the Court held that a person who does not come to Court with clean hands is not entitled to relief.
18. Per contra, Mr.Anirudh Krishnan, learned counsel for the 1st 12/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 Respondent would submit that the Petitioner having failed to enter the witness box, despite the 1st Respondent denying the documents relied on by the Petitioner, would be fatal to the case of the Petitioner. He would further contend that insofar as registration of ‘CSM’, the Petitioner though claimed a user from 26.03.2009, has been accorded a registration only on 30.06.2016. According to the Counsel for the 1st respondent, in such cases, use is alone relevant and the Petitioner has to establish that the Petitioner is the prior user, which the Petitioner has failed to establish. He would also state that usage has to be shown to be continuous and not sporadic. He would take me through the various documents exhibited, though not marked and tested and proved in evidence to fortify his contentions that none of the documents filed by the Petitioner would prove prior use of ‘CSM’ by the Petitioner as claimed by them in the petition.
19. The learned counsel for the 1st Respondent would also draw my attention to the Madras High Court Intellectual Property Rights Division Rules, 2022, especially to Rule 6 Sub-Rules 12 and 13 which speaks about dispensing oral examination of parties, upon the consent of all parties to the 13/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 proceeding (sub-rule 12) and the applicability of the provisions of the Indian Evidence Act, 1872, the Code of Civil Procedure, 1908 as amended by the Commercial Courts Act, 2015 and the Madras High Court Original Side Rules, 1994 as may be applicable, (sub-rule 13) shall apply to original petitions filed under Intellectual Property Division.
20. He would also alternatively contend, as a worst-case scenario/argument, the Petitioner admittedly being a global leader and giant in the field, the 1st Respondent’s use would only be honest and concurrent. He would take me through the evidence, proof affidavit in lieu of chief examination and cross examination of R.W.1 in this regard, in support of such contentions.
21. The learned counsel for the 1st Respondent would also rely on Section 57 of the Act and contend that the burden of proof is only on the Petitioner to prove prior use, which the Petitioner has miserably failed and further relying on Section 31, the learned counsel would further contend that the Petitioner alone has to show that the Respondent’s registration is invalid. In this context, he would submit that the user in the certificate of registration 14/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 is not binding on the Courts and it is for the Petitioner to have independently proved the factum of prior use.
22. The learned Counsel for the 1st Respondent would rely on the following decisions:
22 (i). Khoday Distilleries Limited v. Scotch Whisky Association and others, reported in (2008) 10 SCC 723 which in fact has been relied on by the learned counsel for the Petitioner as well. The Respondent relies on this decision for the ratio that in order to make out a case of even a deceptive trade mark, leave alone a fraudulent trade mark or existence of any misrepresentation would be a question of fact and it would depend on many factors and in all such cases, evidence has to be adduced.
22(ii). Kamat Hotels (India) Limited v. Royal Orchid Hotels Limited and others, reported in 2011(47) PTC 111(Bom), where the Bombay High Court held, referring to Section 34 of the Act, it carved out an exception and creates an overriding provision, which within the sphere of operation prevents a proprietor or registered user of a registered trade mark from interfering with the use of an identical trade mark or a mark which nearly 15/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 resembles the registered mark. The four conditions laid down by the Court, in order to take umbrage under this Section are:
i) the use by a person of a mark which is identical or nearly resembling the registered mark must be in relation to those goods and services for which the first mentioned mark has been registered;
ii) the use should be continuous of the trade mark;
iii) the trademark must be used by the proprietor or his predecessor-
in-title and
iv) the mark in respect of which protection is sought must have been used from a date prior to the use of the registered mark or the date of registration of the registered trade mark, whichever is earlier.
23. Considering the questions that fall for consideration being interlinked and are based on common facts, I proceed to decide the issues framed by this Court.
24. It is an admitted fact that the Petitioner is a global leader and leading certification body in the field of Scrum. The Petitioner seeks cancellation of the registration in favour of the 1st Respondent on the ground 16/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 that the Petitioner is the prior user of the 'CSM' mark in India and by its continuous and extensive use, the Petitioner has built enormous goodwill and reputation and that the 1st Respondent has adopted the identical ‘CSM’ mark with a view to cash in on the good name of the Petitioner in the market, with mala fide intentions.
25. The 1st Respondent states that though the Petitioner obtained a registration earlier to the 1st Respondent, at least in India, the 1st Respondent is the prior user and there has been neither continuous nor extensive use of the ‘CSM’ mark by the Petitioner. The further defence taken by the 1st Respondent is that there have been even prior users of the mark ‘CSM’ and the Petitioner themselves have obtained a registration only pleading concurrent use and therefore, the Petitioner is estopped from attacking or challenging the registration in favour of the 1st Respondent.
26. Though the Petitioner has several registrations related to CSM, it is only his abbreviated ‘CSM’ which is in dispute in the present case. 17/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023
27. The ratio laid down in the various cases referred and discussed herein above is kept in mind. There is no quarrel with regard to the propositions settled by the various decisions cited by the learned counsel on either side.
28. The ultimate question that boils down for an answer is as to who is the prior user in India? If this is answered, then following the ratio laid down in Kamat Hotel’s case and Syed Mohideen’s case, (referred herein supra) whoever is the prior user would be entitled to protection, dehors any registration of an identical mark.
29. In an exercise to find out the prior user of the ‘CSM’ mark in India, I have gone through the documents filed on behalf of the Petitioner as well as the documents exhibited on the side of the 1st Respondent.
30. At the outset, it is to be borne in mind that the Petitioner has chosen not to enter the witness box and lead evidence. The 1st Respondent, on the other hand has given evidence and also offered himself for cross 18/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 examination. The 1st respondent has not admitted the documents filed by the Petitioner and in and by the affidavit of admissions and denials, the 1st Respondent has denied the various documents filed by the Petitioner and thus it became incumbent for the Petitioner to give evidence and speak about the documents and prove the same. However, the Petitioner has taken a risk and taken a conscious decision not to lead oral evidence to establish the truth and validity of the documents. In this scenario, the Court is entitled to draw an adverse inference against the Petitioner.
31. Dehors, the above, I have also independently tested the documents produced on the side of the Petitioner.
32. Even the pleadings and the documents filed are not in sync regarding the user claim. In the petition, the Petitioner claims that ‘CSM’ was adopted in 2004. However, in later paragraphs of the very same petition, the Petitioner states that between the period 2009-2012, several persons in India have received the CSM certification and in another breath, the Petitioner states that CSM courses were offered in India at least from 2007. However, in the rejoinder, the Petitioner claim use from 2003. The 19/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 Petitioner appears to be unclear about the actual use of the ‘CSM’ mark in India. The range provided by the Petitioner is wide and cannot be narrowed down to point out with certainty and state that the Petitioner’s usage of the ‘CSM’ mark is from a certain/particular date or even period.
33. In Exhibit C, the Petitioner has enclosed a Certificate which is neither having a date, nor signatures and at best it is a self-serving document having no evidentiary value. In the same annexure, a graph is also shown which also does not help the Petitioner in showing from when there has been use in India.
34. Exhibit D, though contains CSM, it refers to a certification course undertaken by an Indian in December 2013 and the said certificate also appears to be very doubtful since there is overlapping of the print in the certificate, despite signatures of the Trainer and Chairman of the Board are found on the Certificate.
35. In Exhibit E, there is no reference to ‘CSM’ anywhere and it anyway pertains to 2017 only. The brochure pertains again to 2017 only 20/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 though it contains references to the ‘CSM’ mark. Even in the ‘agile for all’ web page, there is not a single reference to courses in India. In the map display of the ‘course search’ page filed by the Petitioner themselves, India draws a blank for the period 2005-09.
36. Exhibit F, shows 4 centres in India on the map but even in the said page, there is no reference to the mark ‘CSM’.
37. The Scrum Practitioner’s Workshop held in Hyderabad in 2012, Agile Tour India, 2012 and International Summit at Bangalore, 2012 only show that Scrum workshops have been conducted and there is no particular reference to the ‘CSM’ mark anywhere in these documents also, except for mention about it in the comments section, which will not in any manner establish usage of the mark by the Petitioner.
38. Only in 2015 there appears to be a mention about CSM certification where also there is a mention that India got its first Scrum Gathering only in 2013. This again raises a cloud of suspicion as to when really the Petitioner started Scrum in India and more specifically, started use of ‘CSM’.
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39. The news articles pertain to 2016 onwards and there is no reference to CSM but only Scrum. The Petitioner has only filed its registrations for CSM in several other countries at various points of time and this again does not help in finding out the first use in India. In Exhibit M, the Indian Registration of the Certified Scrum Master mark is filed and it is dated 16.12.2016 and reflects registration of the said mark on 30.06.2016.
40. The Petitioner has filed several invoices to establish use of the ‘CSM’ mark. However, none of the invoices are signed or authenticated and the Petitioner having not entered the witness box to speak about their veracity and in the light of the denial of these documents by the 1st Respondent, no weightage can be given to any of these invoices, though a few of them appear to pertain to sales to Indian customers.
41. The Petitioner has also filed certificates issues to several students who are said to have undergone the course with the Petitioner. Sample Certificates have been filed from 2005 onwards up to 2021. Curiously, all the certificates carry the artistic logo ‘CSM’ which was admittedly created 22/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 by the Petitioner. However, it is the specific pleading of the Petitioner that the said artistic marks were created only in 2013. Going by the own case of the Petitioner, these artistic marks could not have been affixed or printed for certificates issued prior to 2013. However, they are found even in certificates issued for courses conducted in 2005 onwards. Therefore, all is not well with the claims of the Petitioner. To top all of this, despite objections to the various documents filed by the Petitioner, by denial in the counter as well as a specific affidavit of denials, the Petitioner has taken no effort to prove the truth and genuineness of the documents relied on by the Petitioner. This leaves the Court with no other option, but to hold that the Petitioner has miserably failed to prove prior user when it came to the 1st Respondent.
42. Even the IPD Rules discussed herein supra does not dispense with oral examination unless there is a consent. In the present case, the 1st Respondent has in fact seriously objected to the documents and there is no question of consent arising.
43. For all the above reasons, I am constrained to draw adverse 23/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 inference against the Petitioner for avoiding the witness box to speak about the documents relied on.
44. The 1st Respondent has chosen to lead oral and documentary evidence. In his cross examination, it has come out that the 1st Respondent came to know about the Petitioner only in 2015 and has also clearly stated that the Delhi High Court had restrained the use of only Logo of Scrum Master and there is no injunction restraining the guise of the impugned ‘CSM’ mark. He has also deposed that no one can claim monopoly over the Scrum subject.
45. Much was argued about the 1st Respondent challenging the registration of the Petitioner’s mark and later voluntarily withdrawing it. The same cannot be said to be fatal to the case of the 1 st Respondent because it is seen that parties have engaged themselves in negotiation talks and the 1st Respondent, showing bona fides, went to the extent of running a disclaimer in its website that it has nothing to do with the Petitioner. This act of the 1st Respondent negates the allegations of the Petitioner that the 1st Respondent 24/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 adopted the mark with mala fide intentions to ride on the goodwill and reputation of the Petitioner. If that was the case, the 1st Respondent would not have agreed to have a disclaimer in the first place and withdrawal of the Opposition also only reflects an intention not to further litigate the matter and this cannot be seen as a factor against the 1st Respondent.
46. Further, even when the Petitioner applied for registration of its ‘CSM’ mark, there was an objection raised by the Registry and a much prior use was also cited. This objection has been overcome by the Petitioner stating that the Petitioner is a concurrent user. The same logic squarely applies to the 1st Respondent as well. Not only has the Petitioner shown any effective prior use of the ‘CSM’ mark in the first place, the 1st Respondent has not obtained a prior registration and shown use from December 2012 onwards, from when it has started conducting CSM examinations continuously.
47. Insofar as the subject CSM mark, it has been registered on 30.06.2016 under Classes 41 and 42 and the Certificates are dated 25/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 09.07.2017 and 05.07.2017 respectively, in favour of the Petitioner. The 1st Respondent, on the other hand has applied for registration of the CSM mark which is evidenced by Form-TM-1 dated 23.11.2012, where the 1st Respondent claims use from 10.09.2012. The registration has been granted to the 1st Respondent in Class 41 on 17.07.2014 and the 1st Respondent has also shown use from at least December, 2012. The user claim mentioned in the certificates cannot be pressed into service when there is a dispute raised regarding the same and in such event, the party concerned has to lead satisfactory evidence, oral and documentary, to establish actual use and cannot merely rest on the user details mentioned in the certificate.
48. The Petitioner also cannot rely on the ratio laid down in Procter & Gamble’s case (referred herein supra) because the Petitioner has to show that it was the first to use the mark, though descriptive it was still distinctive by first use of the mark by the Petitioner. In the present case, admittedly, even at the examination stage, an objection was raised that he has already been adopted and registered in favour of the 1st Respondent besides another M/s.Colonia Santa Maria Hotels (P) Ltd in Application Nos.2478374 and 26/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 2495922. In response to the said objection, the Petitioner has stated that the Petitioner has got concurrent rights.
49. Thus, when the Petitioner has addressed the objection in such a manner, he cannot turn around and take a different stand when it came to challenging the 1st Respondent’s mark. The Petitioner is certainly estopped from challenging the 1st Respondent’s mark/registration after pleading concurrent use while replying/meeting the objections.
50. The decision in Ramjas Foundation (referred herein supra) also is actually against the Petitioner, though cited by the Petitioner, as it is seen that the Petitioner alone has not come to the Court with clean hands and is consequently disentitled to relief.
51. It is thus clear that the 1st Respondent’s use is honest and concurrent and the protection under Section 12 would come into play and the 1st Respondent’s mark is entitled to stay. Equally, the right vested under Section 34 of the Act would also enure to the benefit of the 1 st Respondent. 27/29 https://www.mhc.tn.gov.in/judis (T) OP (TM) No.503 of 2023 For all the above reasons, the Petitioner is not entitled to any rectification, much less as prayed for and all the issues are answered accordingly.
52. In fine, the Original Petition is dismissed. However, there shall be no order as to costs.
20.09.2024 Index : Yes/No Speaking/Non-speaking order rkp To The Registrar of Trade Marks Registry, Boudhik Sampada Bhawan, IPR Building, G.S.P. Road, Guindy, Chennai – 600 032.
P.B.BALAJI,J.
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