Delhi High Court - Orders
Mirza Ahmed Baig Alias Asad vs Mirza Afser Baig & Anr on 27 March, 2023
Author: C.Hari Shankar
Bench: C.Hari Shankar
$~19 to 21
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.O. (COMM.IPD-TM) 89/2023 & I.A. 3881/2023
MIRZA AHMED BAIG ALIAS ASAD ..... Petitioner
Through: Ms. Abhilasha Nautiyal, Ms.
Lakshmi Kruttika Vijay and Mr. Shuvam
Bhattacharya, Advs.
versus
MIRZA AFSER BAIG & ANR. ..... Respondents
Through: Mr. Sarwar Raza, Mr. Kashif
Raza, Mr. Tabish Raza and Mr. Arnab
Chakraborty, Advs. for R-1
Mr. Harish Vaidyanathan Shankar, CGSC,
Mr. Srish Kumar Mishra, Mr. Sagar
Mehlawat and Mr. Alexander Mathai
Paikaday, Advs.
+ C.O. (COMM.IPD-TM) 90/2023 & I.A. 3885/2023
MIRZA AHMED BAIG ALIAS ASAD ..... Petitioner
Through: Ms. Abhilasha Nautiyal, Ms.
Lakshmi Kruttika Vijay and Mr. Shuvam
Bhattacharya, Advs.
versus
MIRZA AFSER BAIG & ANR. ..... Respondents
Through: Mr. Sarwar Raza, Mr. Kashif
Raza, Mr. Tabish Raza and Mr. Arnab
Chakraborty, Advs. for R-1
Mr. Harish Vaidyanathan Shankar, CGSC,
Mr. Srish Kumar Mishra, Mr. Sagar
Mehlawat and Mr. Alexander Mathai
Paikaday, Advs.
+ C.O. (COMM.IPD-TM) 91/2023 & I.A. 3889/2023
MIRZA AHMED BAIG ALIAS ASAD ..... Petitioner
Through: Ms. Abhilasha Nautiyal, Ms.
Lakshmi Kruttika Vijay and Mr. Shuvam
Bhattacharya, Advs.
Signature Not Verified
Digitally Signed
By:SUNIL SINGH NEGI C.O. (COMM.IPD-TM) 89-91/2023 Page 1 of 8
Signing Date:27.03.2023
18:04:29
versus
MIRZA AFSER BAIG & ANR. ..... Respondents
Through: Mr. Sarwar Raza, Mr. Kashif
Raza, Mr. Tabish Raza and Mr. Arnab
Chakraborty, Advs. for R-1
Mr. Harish Vaidyanathan Shankar, CGSC,
Mr. Srish Kumar Mishra, Mr. Sagar
Mehlawat and Mr. Alexander Mathai
Paikaday, Advs.
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
ORDER
% 27.03.2023
1. I have heard Ms. Abhilasha Nautiyal, learned Counsel for the petitioner, on these three petitions at considerable length.
2. Ms. Nautiyal has predicated her challenge in these three petitions on three grounds. Before coming to the said grounds, one may note that the marks which stand registered in favour of the respondent by the Registry of Trade Marks in these three cases as under :
(i) C.O (COMM.IPD-TM) 89/2023 --
(device mark) in Class 41
(ii) C.O. (COMM.IPD-TM) 90/2023 --
(device mark) in Class 16
(iii) C.O. (COMM.IPD-TM) 91/2023 -- MIDLAND
(word mark) in Class 16
3. The contentions of Ms. Nautiyal may now be noted thus:
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI C.O. (COMM.IPD-TM) 89-91/2023 Page 2 of 8 Signing Date:27.03.2023 18:04:29(i) The first contention of Ms. Nautiyal that relates to the claim, by Respondent 1, to the user claim of the impugned mark in these cases. She submits that, in C.O. (COMM.IPD- TM) 89/2023 and C.O. (COMM.IPD-TM) 90/2023, the Respondent 1 has not filed any documents in support of the affidavit of user filed before the Registrar, as required by Section 25(2) of the Trade Marks Act, 1999. In C.O. (COMM.IPD-TM) 91/2023, she submits that, though no documents were filed with the user affidavit filed with the application seeking registration of the "MIDLAND"
wordmark, in response to a requisition made in the First Examination Report (FER) dated 8th December 2020, Respondent 1 filed a reply dated 7th April 2022, annexing therewith an Udyam Registration Certificate. The date of the Udyam Registration, as per the certificate, she points out, is 24th December 2020. The Certificate does not, however, pertain to Respondent 1, but records the owner as Mirza Yaseen Baig, i.e. the father of the petitioner and Respondent 1, and the enterprise as "MIDLAND The Book Shop" with the date of incorporation as well as date of commencement of production by business recorded as 28th October 1994. Nonetheless, without any material whatsoever, submits Ms. Nautiyal, the Registrar accepted the user claim of 1 st January 1990 as made by Respondent 1.
(ii) Thus, according to Ms. Nautiyal, in C.O. (COMM.IPD- TM) 89/2023 and C.O. (COMM.IPD-TM) 90/2023, which sought registration of the device mark Signature Not Verified and , no Digitally Signed By:SUNIL SINGH NEGI C.O. (COMM.IPD-TM) 89-91/2023 Page 3 of 8 Signing Date:27.03.2023 18:04:29 evidence regarding the claim of user as set out in the application was ever filed by Respondent 1 whereas in C.O. (COMM.IPD-TM) 91/2023, the certificate filed in response to the FER issued by the office of the Registrar did not support the user claim of 1st January 1990.
(iii) The second contention of Ms. Nautiyal, which covers all the three petitions, is that Respondent 1 claims proprietorship of the impugned marks with no material to support such claim. She submits that the wordmarks "MIDLAND BOOK SHOP"
and "MIDLAND THE BOOKSHOP", as well as the device mark were all unregistered and being used by Mirza Yaseen Baig, the father of the petitioner, Respondent 1 and their two other brothers, during his lifetime. Mirza Yaseen Baig died on 24th November 2022. Ms. Nautiyal submits that, though, in the affidavit filed before the Registrar, no document evidencing proprietorial rights of Respondent 1 over the impugned marks in these cases has been filed, in the reply to the petitioner's legal notice and to the present petitions, the Respondent has adopted a stand that Mirza Yaseen Baig had consented to the filing, by Respondent 1, of the application seeking registration of the impugned trademarks. She submits that there is no document evidencing any such consent, either filed before the Registrar or before this Court. Nor is there any reference, in any document filed before the Registrar, to any such consent having been granted by Mirza Yaseen Baig.Signature Not Verified
(iv) Besides, submits Ms. Nautiyal, the applications for Digitally Signed By:SUNIL SINGH NEGI C.O. (COMM.IPD-TM) 89-91/2023 Page 4 of 8 Signing Date:27.03.2023 18:04:29 registration of the impugned marks were made on 11th November 2020, when Mirza Yaseen Baig was alive. During the lifetime of Mirza Yaseen Baig, submits Ms. Nautiyal, Respondent 1 had no authority whatsoever to claim any proprietorial rights over the impugned marks, or to file for registration of the said marks as the proprietor thereof. She submits that no assignment of the right of ownership or use of the impugned marks, within the meaning of Section 2(b) of the Trade Marks Act, exists in the present case. As such, she submits that the proprietorial rights, claimed by the Respondent 1 over the impugned marks, are bereft of any factual support.
(v) I may observe, here, that Ms. Nautiyal also sought to contest the correctness of the assertion in paras 8 and 9 of the reply filed by Respondent 1 to I.A. 3881/2023 in C.O. (COMM.IPD-TM) 89/2023, that the Respondent 1 had proprietorial rights over the device mark , she submits, as "MIDLAND" is the essential and dominant feature of the device mark and it was accepted, in para 8 of the reply to I.A. 3881/2023 that the petitioner owned the book shop "MIDLAND The Book Shop", Respondent 1 could not claim exclusive proprietorial rights over the device mark .Signature Not Verified
(vi) Though the argument has been noted, it acceptability Digitally Signed By:SUNIL SINGH NEGI C.O. (COMM.IPD-TM) 89-91/2023 Page 5 of 8 Signing Date:27.03.2023 18:04:29 appears to me to be questionable as proprietorial rights were claimed by Respondent 1 in respect of the device mark , and the claim cannot, prima facie, be treated as false merely because "MIDLAND" is the dominant feature of the said mark. The argument is, however, been noted as advanced by Ms. Nautiyal.
(vii) The third submission of Ms. Nautiyal is that, even on facts, the user claim of 2nd February 2017, as advanced in the application seeking registration of the device marks and ,is unsupported by any material, and that the user claim of 1st January 1990 in the application seeking registration of the MIDLAND word mark was also unsupported by any bereft of any evidentiary support. She has drawn my attention to the affidavit of user filed by Respondent 1 with its application seeking registration of the device mark , in which Respondent 1 has claimed to have been continuously using the device mark since 2nd February 2017 and that "MIDLAND" was a well-known brand in the field of books in Delhi since 2017. She submits that there is no basis, whatsoever, for the date 2nd February 2017 or the user claim of 2017 as set out in the aforenoted affidavit of user. She submits that, in fact, Mirza Yaseen Baig, the father of the Signature Not Verified petitioner and the Respondent 1 had been operating under the Digitally Signed By:SUNIL SINGH NEGI C.O. (COMM.IPD-TM) 89-91/2023 Page 6 of 8 Signing Date:27.03.2023 18:04:29 mark "MIDLAND THE BOOK SHOP" since 1980s. As such, the statement, in the affidavit of user filed by Respondent 1 that "MIDLAND" was a well-known brand in the filed of books since 2017, she submits, was incorrect and was made only so as to support the otherwise unjustified claim of user since 2nd February 2017.
(viii) Ms. Nautiyal has also drawn my attention to the reply dated 2nd January 2021, filed by Respondent 1 in response to the FER dated 2nd December 2020 issued by the Registry of trademarks against the application of Respondent 1 for registration of the in Class 41. She has drawn my attention to the recitals in para 2 of the said reply to FER, in which it is stated thus:
"Midland Book Shop is almost 25 years old proprietorship firm and is a registered earlier under Delhi VAT. The firm has availed Import Export Code from Ministry of commerce dated 27-10-1994."
(ix) Ms. Nautiyal submits that, therefore, Respondent 1 is claiming proprietorial rights over the device mark forming subject matter on the basis of the proprietorial rights over the "MIDLAND BOOK SHOP", which exclusively vested with Mirza Yaseen Baig during his lifetime and, regarding assignment or transfer of which, to Respondent 1, no document was placed on record either before the Registrar or before this Court.
(x) Thus, with no supporting evidence whatsoever, Ms. Signature Not Verified Nautiyal submits that the Registry has accepted the user claim Digitally Signed By:SUNIL SINGH NEGI C.O. (COMM.IPD-TM) 89-91/2023 Page 7 of 8 Signing Date:27.03.2023 18:04:29 of 2nd February 2017 as advanced by Respondent 1 for the device mark and and for the wordmark "MIDLAND".
4. Ms. Nautiyal has also invited my attention to certain documents to indicate that, even after the applications for registration, which stand accepted by the Registry, forming subject matter of challenge in these petitions, the mark MIDLAND "MIDLAND THE BOOK SHOP" continued to be used by Mirza Yaseen Baig who was also operating the bank account of the said entity at least till 15 th February 2022.
5. List on 29th March 2023 in order to enable Mr. Sarwar Raza, learned Counsel for the Respondent 1 to answer the aforesaid submissions advanced by Ms. Nautiyal.
6. Let a copy of this order be provided to both sides dasti.
C.HARI SHANKAR, J MARCH 27, 2023 ar Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI C.O. (COMM.IPD-TM) 89-91/2023 Page 8 of 8 Signing Date:27.03.2023 18:04:29