Intellectual Property Appellate Board
United Brothers vs Aziz Ulchani And Anr. on 3 December, 2004
Equivalent citations: 2005(31)PTC709(IPAB)
JUDGMENT
Raghbir Singh, Vice-Chairman
1. C.O. No. 6/96 filed by the petitioner in the High Court of Delhi under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) has been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TRA/92/2004/TM/DEL.
2. As submitted in the petition, the petitioner is engaged in the business of manufacture and marketing of aluminium hollow ware and other household utensils since 1957. The petitioner has extensive sale of its products as reflected through the details of the sales and advertisement expenses given from the years 1985-86 to 1995-96 in the petition. The petitioner, besides having its sales and reputation in the Indian sub-continent, has extensive sales outside India also. Besides its common law rights, the petitioner is having registered proprietorship of the trade mark 'UNITED' under registration No. 274649 in relation to aluminium hollow ware utensils for household use in class 21 and No. 369826 in relation to household, domestic utensils and containers (not of precious metal or coated therewith) pressure cookers (non-electric) milk (cans) and soap cases (boxes) all being goods included in class 21 of the Fourth Schedule. The petitioner came to know that the first respondent has got its trade mark 'UNITED' registered under registration No. 388765 as of 14.4.1982 (wrongly mentioned in the petition as "14.4.1992") in relation to electric flat iron in class 9. The petitioner has also opposed other registration of first respondent bearing No. 518071 in class 7 under opposition No. Del 8511. Similarly, the petitioner had also opposed another application of the respondent bearing No. 5488524 advertised in the Trade Marks Journal No. 1190 in class 11 dated 16.11.94 at page 1190. First respondent got its trade mark No. 388765 registered through Shri K.L. Aggarwal of Indian Trade Marks Company, Sadar Bazar, Delhi. The same advocate had also dealt with the petitioner's trade mark during the pendency of the registration proceedings. He did not inform it about the impugned application No. 388765 made by the first respondent when the said trade mark was advertised in the Trade Marks Journal. First respondent has adopted the trade mark with a view to solely trade upon the reputation of the petitioner and its business. The mala fide of first respondent are apparent from the fact that it had been expanding its activities by filing one application or the other to take advantage of the reputation of the petitioner. Petitioner seeks for removal of the said mark from the Register since the first respondent is a pirator not entitled to registration of the goods. First respondent had full knowledge about adoption, use and reputation of the petitioner's trade mark. First respondent has made false statements while taking the registration and it had concealed certain material facts in its application. The mark offends provisions of Section 9, 11 and 18 of the Act. The petitioner is an aggrieved person for the purpose of Section 56 of the Act as the registration of the said mark has hampered its trading activities.
3. The first respondent filed its reply on 16.12.1996 refuting all the charges of the petitioner. First respondent filed counter-affidavit in evidence on 8.9.2004. First respondent controverted all the material averments of the petitioner. First respondent in its counter-affidavit in evidence submitted that the petitioner was well aware about the registration No. 388765 as way back as November, 1994 when the respondent had made a categorical reference to the impugned registration in the counter statement filed by it to the notice of opposition filed by the petitioner in the opposition proceedings, DEL-8511. First respondent submitted that the present petition has been filed in February, 1996 thus revealing the mala fides of the petitioner.
4. Learned counsel Shri Surinder Singh for the petitioner and learned Counsel Shri Hemant Singh on behalf of the first respondent argued the matter on 1.11.2004 in the sitting of the Board held at New Delhi.
5. Learned counsel for the petitioner argued that the word 'UNITED' as a mark was registered in 1982 and is being consistently used for pressure cookers and for other utensils since 1957. This present rectification has been filed in 1996 and is well within time. He drew our attention to his opposition in application No. 518071 of first respondent wherein his opposition has been upheld. Briefly he submitted that the petitioner is prior user of the mark and the registration of the same mark has been refused to first respondent in another case and had the petitioner an opportunity of filing opposition in the present matter also, there was every chance of the same being upheld, but for the reason of the attorney who had been dealing with the case of the first respondent and the petitioner and having not informed him about the filing of the application. In conclusion, he said that first respondent had no bona fide intention in getting registration and his intention was simply to trade upon the reputation of the petitioner. Learned counsel for the petitioner filed an affidavit alongwith enclosures of the petitioner dated 10.8.2004 materially reiterating the submissions made in the original petition. Learned counsel for the petitioner also filed on 28.10.2004 a short written submission on behalf of the petitioner wherein the material submissions are reiteration of the pleas raised in the original petition. Learned counsel argued that application No. 518071 of the first respondent for mixer grinder, hair dryer and washing machine has been disallowed and the matter is under appeal before the Appellate Board. Hon'ble High Court of Delhi has passed injunction orders for using UNITED/UNITEL in relation to pressure cookers, gas stoves etc., in other matters. Learned counsel has drawn our attention to the following cases:-
(a) Daimler Benz Aktiegesellschaft and Anr. v. Hybo Hindustan, .
(b) Ciba-Geigy Ltd. v. Surinder Singh, 1998 PTC Del 545
(c) Sunder Parmanand Lalwani v. Caltex (India) Ltd., .
(d) Lego System Aktieselskab v. LEGO M. Lemelstrich Ltd., 1983 Fleet Street Reports 155.
(e) The Dunlop Pneumatic Tyre Co. Ld. v. The Dunlop Lubricant Co., 1898 Reports of Patent, Design.
(f) Surjit Singh v. Alembic Glass Industries, .
(g) Essel Packaging Limited V. Essel Tea Exports Ltd., 1999 PTC Bom 521.
(h) M/s. Banga Watch Company v. M/s. N.V. Philips, .
(i) Bata India Limited v. Pyare Lal & Co., . (j) Honda Motors Co. Ltd. v. Charanjit Singh & Ors., 2003 PTC 1 Del. (k) Casio India Co. Ltd. v. Ashita Tele Systems Pvt. Ltd., 2003 PTC 265 Del. (1) Ceat Tyres of India Ltd. v. Jai Industrial Services, 1996 PTC 720 Del
6. Shri Hemant Singh learned Counsel for the first respondent submitted that the petitioner claims user since 1957 but there is no evidence submitted in this regard. He submitted that the goods belong to different classes, products of first respondent belong to class 9 whereas the products of the petitioner relate to class 21 in the Fourth Schedule. He drew our attention to the use of the word 'UNITED' which is very much common and descriptive word. It was pointed out that in a telephone directory of Delhi for the year 1994 submitted by him the word 'UNITED' occurs from page Nos. 2313 to 2318. He submitted that in response to the first respondent's affidavit to the effect that it is most commonly used mark there had not been any rebuttal from the petitioner. There is no case of likelihood of confusion and deception since the goods are of different description. It is wrong to say that they are sold on the same shops and same trade channels. He submitted that the reputation of first respondent is to be reckoned as from the date of application for the impugned mark and not from the date of the present petition. The case relating to rectification of the Register is to be treated on a different pedestal vis-a-vis cases relating to passing off. He drew our attention to the following cases:
(i) Vishnudas trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Ltd., 1996 PTC 512 (SC).
(ii) United Brothers v. United Traders, 1997 PTC 603 Del. (iii) Nestle's Products Ltd. v. Milkmade Corporation, AIR 1984 DEL 40
(iv) Procter and Gamble Company v. Satish Patel, 1997 (1) Arb. L.R. 158
7. Learned counsel for the petitioner in reply drew our attention to the Trade Mark Journal relating to its registration Nos. 369826 and 274649 wherein the user has been claimed since 1957. He pointed out that all the entires in the telephone directory referred to by the respondent are not of the persons who hold trade mark registrations.
8. Date of registration of the impugned mark is 14.4.82 and the present application for rectification has been filed on 14.2.96. A period of more than seven years has elapsed since the registration was granted. Thus, the application is time barred under the general provisions of Section 32 and the petitioner has sought remedy under Clauses (a), (b) and (c) of that section. Onus of proof squarely lies upon the petitioner. In the evidence, it has not cited any specific instance where the first respondent made any false averment at the time of making application and thus obtained registration by committing fraud, contravened any provision of Section 11 and suffered from non-distinctiveness of the mark at the commencement of the proceedings. Surely the mark is of a descriptive character having a dictionary meaning and of common use both in trading and non-trading circles-may be as a mark it may be registered in relation to certain other goods or certain proprietors might be holding the same as unregistered mark under their right under common law. Learned counsel has cited numerous cases involving famous marks (Benz, Cibaca, Caltex, Lego, Dunlop, Yera, Essel, Philips, Bata, Honda, Casio, Ceat etc.) Issues involved in all those cases relate to passing off or infringement actions. Further, these are coined words having no descriptive meaning and thus are associated with the products of the respective proprietors in exclusivity. 'UNITED' as a mark or word stands on a different pedestal. Vazir Sultan case relied upon by the learned Counsel for the first respondent relates to a rectification application. The mark involved 'CHARMINAR' is a descriptive word like 'UNITED'. The Supreme Court held that chewing tobacco like 'zarda and quiwam' is different from "cigarettes". Hence both are different products. In Nestle case, it was held that here is no trade connection between toffees and condensed milk. Hence, use of the words 'MILKMAID CORPORATION' in selling toffees cannot constitute infringement of trade mark 'MILKMAD BRAND' for condensed milk. In United Brothers v. United Traders, 1997 PTC 603 Del, the Delhi High Court held that forks, knives and spoons cannot be said to be goods allied or cognate to the goods of the plaintiff who deals in aluminium hollow wares. Thus, we conclude that the petitioner has utterly failed in proving that the original registration was obtained by fraud or that the trade mark was registered in contravention of the provisions of Section 11 or offends against the provisions of that section on the date of commencement of the proceedings or that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor.
9. The petition is dismissed with no order as to costs.