Intellectual Property Appellate Board
Sundaram Clayton Limited And Tvs Suzuki ... vs Nagarathna Textiles And The Registrar ... on 12 December, 2007
Equivalent citations: MIPR2008(1)321
ORDER S. Usha, Member (T)
1. The application under the Trade and Merchandise Mark Act, 1958 filed in the High Court of Madras as OP No. 556 of 2001 has been transferred to the Appellate Board in terms of Section 100 of the Trade Marks Act 1999 and has been renumbered as TRA/171/04/TM/CH. The application has been filed for rectification of the Register of Trade Marks by removal of the registered trade mark under No. 470906 in Class 24 in respect of textile goods.
2. The applicants are companies belonging to the TVS group of companies manufacturing wide range of goods such as air assist and full air actuation systems for automotive and non-automotive application and elements etc. and manufacturer of a wide range of two wheeler motor vehicles.
3. The 1st applicant state that they are the registered proprietor of the trade mark TVS 50 registered under No. 372863 B in class 12 as of 27.02.1981 in respect of vehicles, apparatus for locomotive by land, air or water, mopeds, under the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The 1st applicant had permitted the 2nd applicant to use the said trade mark TVS 50 by way of license. The applicants state that by virtue of wide & extensive use of the trade mark TVS 50 sine 1980-1981 and by virtue of wide range of sales promotion activities, the said mark has acquired immense goodwill and reputation among the public and has become widely well known all over India and abroad. The sales turnover of the said goods over the years exceeds Rs. 2700 crores.
4. The applicants came to know in May, 2000 from an advertisement that the 1st Respondent are registered proprietors of the trade mark TVS 50 along with the device of a two wheeler in respect of textile goods. The applicants had issued a cease and desist notice in May 2000 to the 1st Respondent calling upon them to cease using the trade mark TVS 50 along with the device of a vehicle. The 1st Respondent herein had sent a reply in June, 2000 declining to comply with the requirements made in the notice. The applicants state that as they did not come across the 1st respondent's product bearing the trade mark TVS 50, they were under the belief that the 1st respondent had given up the use of the Trade Mark TVS 50. But on 16.02.2001, the applicants came to know from the Trade Mark Journal that the 1st Respondent have applied for registration of the mark. The applicants, thereinafter filed an application for rectification on the following grounds:
(a) The registration of the impugned trade mark was in contravention of the provisions of Section 9 of the Act and as such the mark was never at any time distinctive of the goods of the 1st respondent.
(b) The registration of the impugned mark was in contravention of the provisions of Section 11 (a), (b) and (e) of the Act.
(c) The impugned mark was registered without sufficient cause and was wrongly remaining on the Register.
(d) The 1st respondent is not the proprietor of the Trade Mark TVS 50.
(e) The registration of the impugned mark will cause confusion and deception among the public.
(f) The registration has been obtained by fraud and by suppression of material facts.
(g) The registration has been obtained with dishonest intention of getting benefit from the reputation and goodwill of the applicants business.
h) The registration will cause loss and damage to the applicants business.
5. The applicants are thus aggrieved persons for the reasons stated above and prayed that the mark may be removed of the register of Trade Marks.
6. The 1st respondent filed their counter-statement denying all the allegations made in the application. The 1st respondent submitted that the application for rectification was frivolous, vexatious and unsustainable on facts or in law. The 1st respondent have been carrying on business of textile goods including lungies, dhothies and towels bearing the trade mark TVS 50 along with the device of the vehicle since the year 1986. By long user, the 1st respondent's goods bearing the trade mark TVS 50 along with the device has gained reputation among the public and demand for the goods has increased. The 1st respondent's sales turn-over runs to several lakhs of rupees. By continuous and long user since 1986, the trade mark has become distinctive of the goods of the 1st respondent. The 1st respondent further state that the applicants have filed this application only with the intention to harass them on seeing the growth and demand in the market. The applicants are dealing with goods like vehicle apparatus for locomotion by land, air or water, mopeds etc. in Class 12 whereas the respondents are in the business of textile piece goods in Class 24 and as such the trade channels are totally different.
7. The 1st respondent also states that there has been inordinate delay and latches on the applicants in taking action against the 1st respondent, having allowed the 1st respondent to grow and to take action for rectification at a delayed time would be unlawful. The 1st respondent denied the various allegation made in the grounds of rectification. The 1st respondent also stated that the applicants had not produced any evidence to prove that there was any likelihood of confusion or deception being caused if the mark is allowed to remain on the register. The 1st respondent stated that the applicants are not aggrieved persons as they are not in any way affected by the 1st respondents mark remaining on the Register.
8. We have heard Mr. M.K. Rao, Counsel for the applicants and Mr. Rajesh Ramanathan, Counsel for the 1st respondent at Chennai on 05/11/07 and certain clarifications were sought to be made and the Appellate Board suo moto re-opened the matter and posted it on 20.1107 for hearing. The Counsel had clarified the Appellate Boards queries and orders were reserved.
9. The learned Counsel for the applicant mainly contended that the applicants mark TVS 50 was a well-known mark and was popularly known among the public. The word TVS was coined from the company's name namely TVS group of companies which was the initial of the founder Mr. TV Sundaram Iyengar. The applicants also submitted that the numeral 50 was to denote the cubic capacity of the vehicle. The trade mark TVS 50 was the applicants house hold mark.
10. The learned Counsel submitted that only from the newspaper advertisement in the year 2000, the applicants came to know that the 1st respondent had adopted an identical trade mark as that of the applicants' and had immediately issued a cease and desist notice to 1st respondent to refrain from using the impugned trade mark. The learned Counsel for the applicant forcefully submitted that the 1st respondent had not only copied the words TVS 50 but also the vehicle which was totally dishonest act on part of the 1st respondent. The counsel also submitted that the respondent has not given any explanation for the adoption of the impugned trade mark and as such the adoption is dishonest and fraud has been played by the 1st respondent before the Assistant Registrar of the Trade Mark in getting the trade mark registered.
11. The learned Counsel referred to various judgments to support his contention that even if the goods were different, a well-known mark should be protected.
12. The learned Counsel for 1st respondent vehemently denied the submission made by the applicants and submitted that the applicants have allowed the 1st respondent to expand their business and that there has been a delay on the part of the applicants in taking action against the 1st respondent. The 1st respondent brought to our notice the trade mark registration certificate filed in the typed set of documents and submitted that they had adopted the Trade Mark TVS 50 as early as 1986 and had applied for registration as of 1995 itself. The 1st respondent referred to the contents of the legal notice issued in the year 2004 by the applicants to the 1st respondent and submitted that the applicants are trying to confuse this Appellate Board by stating that it came to their notice only in the year 2004 about the 1st respondent's trade mark whereas in the year 2000 itself they were aware of the 1st respondents' trade mark and had issued a legal notice and had also initiated the rectification proceedings. The 1st respondent also forcefully denied the submission of the applicants that they had stopped using the trade mark after the issuance of the legal notice in the year 2000 and pointed out that in reply to the legal notice they had stated that they will not cease to use the trade mark. The applicants have not filed any documentary evidence to prove that the 1st respondent have stopped using the trade mark. The 1st respondent further submitted that the applicants have not proved any deception or confusion. The counsel for 1st respondent pointed to the sales turnover mentioned in the counter statement. By long and continuous use, the 1st respondents' trade mark has acquired reputation and goodwill among the public. The applicants have not produced any documentary evidence to prove that their trade mark is a well-known mark.
13. The 1st respondent's counsel also submitted that they had filed invoices for the periods from 1986 continuously and submitted that the applicants have falsely stated that the 1st respondent had stopped using the trade mark after issuance of the legal notice.
(i) The 1st respondent's counsel relied on the Judgment reported in 2007 (34) PTC 136 (IPAB) Bal Krishan Jindal v. Mohinder Singh and Anr. to support his argument that failure to discharge burden of proof of deception and confusion, application for rectification be rejected.
(ii) Rectification application to be rejected on the ground that the mark was on the Register for more than nine years on the date of filing of application for rectification reported in 2007(34)PTC 621(IPAB) Kabushiki Kaisha Toshiba v. Tosiba Appliances & Co. and Anr. was relied for the above argument.
(iii) Judgment in 2000 PTC 561(DB) Delhi Hindustan Pencils Private Limited v. Universal Trading Company and Anr. was relied to say that when the trade mark was on the register for 25 years, the removal of the trade mark would cause serious loss to the applicant for registration.
(iv) In support of the argument that when there was honest concurrent use with no evidence of deception or confusion even if the mark was deceptively similar the mark to remain on the Register, the respondent relied on PTC (Suppl.) (1) 567 (Cal.) J & W Hardie Ltd. v. Joseph E. Seargram & Sons Inc. and Anr.
(v) 2004 (29) PTC 468 (IPAB) Bata India Limited v. Deputy Registrar of Trade Marks and Ors. was relied on to support his argument that even when the goods were different and no proof of confusion or deception shown then the mark to continue on the Register.
14. The 1st respondent concluded his arguments by submitting that the mark had been on the register for several years and also that the 1st respondents have been using the mark for 21 years and that the trade mark has got to be protected.
15. The counsel for the applicant submitted in reply to the 1st respondent's arguments that the judgments relied on by the 1st respondent were not relevant.
16. The matter was heard along with ORA/55/07/TM/CH and OA/11/06/TM/CH with the consent of both the counsel that a common argument be made. Though common arguments were made or heard, we are of the view that separate orders be passed as this transferred application is under the 1958 Act and the original application is under the 1999 Act and the Original Appeal is to be decided on the findings of the Registrar. We have gone through the entire pleadings and documents and considered the arguments of both the Counsel.
17. We shall decide the issue as to whether the applicant is an aggrieved person. Any person can file a notice of opposition while an application for rectification to expunge a mark from the register of Trade Marks can be made only by an aggrieved person. Judiciary has liberally viewed the term aggrieved person. The object of rectification is purifying the Register which is public purpose. The applicants rights are determined keeping in mind the interest of general public. For expunging the entry wrongly made on the Register, the locus standi would be ascertained liberally since it 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. Aggrieved persons are those who are in some way or other substantially interested in having the mark removed from the Register or persons who would be substantially damaged if the mark remained on the Register. Any person who will suffer any loss or injury if the other persons trade mark is on the Register is said to be a person aggrieved.
18. In the instant case based on the above observation, we find that the applicant is an aggrieved person. A person cannot be said to be a person aggrieved in case the goods are not same or at least of the same description. Here too, it is seen that the goods are different, but on perusal of 1st respondent's advertisements, we find that the 1st respondent have not only adopted the TVS 50 trade mark but also the device of a vehicle in which the applicants are trading. The applicants are, therefore, affected and are thus aggrieved persons. Apart from that, the 1st respondent have also declined to stop using the trade mark in spite of the legal notice issued to them.
19. The applicants have based their application on the grounds that the registration has been obtained by playing fraud, the trade mark is on the Register without sufficient cause, is registered in contravention of the provisions of Sections 9 and 11 of the Act. We observe that the applicants have though pleaded but have neither substantiated their claim by cogent evidence nor by arguments. Hence, we reject these contentions which are baseless.
20. The 1st respondent's contentions that the applicants have taken action against them after a long delay is rejected. In fact we find that the applicants have filed the 1st rectification application in the year 2000 itself after seeing the advertisement in the year, 2000. Therefore there has been no delay.
21. We are of the view that the 1st respondent though have forcefully submitted that they had been using the trade mark TVS 50 since 1986, no explanation whatsoever has been given for their adoption. In fact the applicants have stated the reasons for their adoption. It gives more doubt as to why the numeral 50 has been adopted for textiles and the device of vehicle with the trade mark TVS 50. On perusal of the 1st respondent's trade mark TVS 50 along with the device of the vehicle, it is clear that the 1st respondent are trying to trade on the good will of the applicants. The 1st respondents adoption of the trade mark TVS 50 along with the device of the vehicle is, therefore, dishonest and cannot be allowed to continue on the Register. The mark has got to be removed from the Register of Trade Marks on this ground alone.
22. This Board has been of the view in several matters that when a mark is on the Register for several years should not be removed. But in this instant case, we are of the opinion that the same view cannot be adopted because the dishonestly adopted mark can not be allowed to remain on the Register. The reason being that no valid reasons given for adopting an identical famous mark.
23. In the instant case, we are to make an observation as to the attitude of the applicants who have not filed any documents to substantiate their case except for a bald pleadings made in the application. The 1st respondent have not succeeded on the sole ground that no explanation has been given for adoption. We also find from the vouchers that the 1st respondent has been using the trade mark NT which is derived from the words Nagarathinam Textiles and later had adopted T V. On perusal of the invoices it is seen that only TVS was their trade mark earlier and not TVS 50.
24. We, therefore, allow the application for rectification of the registered trade mark No. 470906 by removal of the trade mark from the Register of Trade Marks. We direct the Registrar of Trade Marks to remove the mark from the Register. No order as to costs.