Madras High Court
Dated: 20.09.2023 vs Mahendra Pumps Private Limited on 20 September, 2023
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2023:MHC:4341
(T)OP(TM)/453 & 454/2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 20.09.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
(T)OP(TM)/453 & 454/2023
(ORA/9/2019/TM/CHN)
(ORA/46/2018/TM/CHN)
Mahindra & Mahindra Limited,
Gateway Building, Apollo Bunder, Fort,
Mumbai - 400 001. ... Petitioner in both OP's
-vs-
1.Mahendra Pumps Private Limited
Puliakulam, Coimbatore - 641 045,
Tamil Nadu.
2.The Registrar of Trade Marks,
Trade Marks Registry,
Chennai. ... Respondents in both OP's
COMMON PRAYER: Transfer Original Petition (Trade Marks) filed
under Section 57 of the Trade Marks Act, 1999, praying to allow the
rectification application by removing / expunging the entry relating
to 1275821 in Class 11 and 1275820 in Class 9, respectively, from the
Register of Trade Marks and award the costs of these proceedings.
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(T)OP(TM)/453 & 454/2023
For Petitioner : Mr.K.Premchander, Ms.R.Pavithra
in both OP's for M/s.Anand and Anand
For Respondent 1 : No Appearance
in both OP's
For Respondent 2 : Mr.K.Subbu Ranga Bharathi, CGSC
in both OP's
**********
COMMON ORDER
These two petitions are filed to rectify the register as regards the trade mark MAHENDRA under Trade Mark No.1275821 in Class 11 and Trade Mark No.1275820 in Class 9. The petitioner asserts that it is the registered proprietor of the trade mark MAHINDRA, which is registered in multiple classes and has been declared as a well known mark for purposes of Section 11(2) of the Trade Marks Act, 1999 (the Trade Marks Act). By further asserting that the first respondent had opposed applications for registration of the mark MAHINDRA and its formative marks, by placing reliance on the 2/13 https://www.mhc.tn.gov.in/judis (T)OP(TM)/453 & 454/2023 above mentioned registrations, the petitioner has presented these petitions on the basis that it is an aggrieved person.
2. Service was effected on the first respondent on 07.07.2023. Pursuant thereto, Mr.A.Swaminathan, learned counsel, appeared on behalf of the first respondent on 17.07.2023 and took time to obtain instructions. Thereafter, at the hearing on 28.08.2023, he submitted that he had no instructions from the first respondent. In these circumstances, the matter was proceeded with in the absence of the first respondent.
3. Oral arguments on behalf of the petitioner were addressed by Mr.K.Premchander, learned counsel. He first invited my attention to the mark MAHENDRA in class 9 in respect of all types of wires and cables. He pointed out that the application was filed on 30.03.2004 and that the registration certificate was issued on 25.05.2016. He then referred to the registration certificate in respect 3/13 https://www.mhc.tn.gov.in/judis (T)OP(TM)/453 & 454/2023 of the mark MAHENDRA in class 11 and pointed out that the application was filed on 30.03.2004 and that the registration certificate was issued on 25.08.2010 in respect of all types of fans.
4. By drawing reference to the invoices at pages 160 to 163 of Volume-II of the documents filed by the first respondent, learned counsel contended that these invoices pertain to goods sold under the trade mark, E-FAB. By placing for my consideration the search report of the mark E-FAB, he pointed out that these documents do not constitute evidence of the use of the mark MAHENDRA in respect of wires and cables. He then pointed out the invoices at pages 164 to 199 of Volume-II and contended that the said invoices do not relate to goods that fall either under class 9 or class 11. Consequently, he submitted that these invoices are irrelevant. He next invited my attention to the invoices at pages 202 to 204. With reference thereto, he submitted that there is no indication of the application of the trade mark MAHENDRA to the ceiling fans which 4/13 https://www.mhc.tn.gov.in/judis (T)OP(TM)/453 & 454/2023 are the subject of the said invoices. Based on the evidence adduced by the first respondent, he submitted that the first respondent has completely failed to prove use of the mark MAHENDRA either in relation to wires and cables or fans since the date of registration thereof. Because the registration certificate under class 9 was issued on 25.05.2016, he submitted that the duration of non use has exceeded the limit prescribed under Section 47 of the Trade Marks Act. Likewise, as regards the registration under class 11, since such registration certificate was issued on 25.08.2010, he contended that non use is for a period longer than the duration specified under Section 47. Hence, he contended that these marks are liable to be removed from the Register of Trade Marks.
5. The partnership deed executed on 01.05.1966, by and between K.Ramadoss and Smt.K.Kanakam, is on record. The said document deals with the constitution of the partnership firm in the name and style of Mahendra Engineering Works. A subsequent 5/13 https://www.mhc.tn.gov.in/judis (T)OP(TM)/453 & 454/2023 partnership deed dated 11.06.1992 is also on record. This partnership has been constituted by K.Ramadoss, Smt.K.Kanakam and R.Mahendran and J.Subashini under the name and style of M/s.Mahendra Engineering Works. In the counter statement of the first respondent, at paragraph No.5 thereof, the first respondent stated that the trade mark MAHENDRA was adopted since it was the name of the son of the founding partner of the predecessor-in- interest of the first respondent. In relation to this submission, learned counsel for the petitioner contended that the benefit of Section 35 of the Trade Marks Act is available only if the person bona fide uses his own name or that of the place of business or adopts the name or the name of the place of business of any of his predecessors-in-business. Consequently, learned counsel contended that the use of the mark MAHENDRA is not protected under Section 35 of the Trade Marks Act.
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6. At the core of this petition is non use of the mark in relation to the relevant goods under classes 9 and 11. Therefore, the documents relating to use of the mark by the first respondent in relation to goods under classes 9 and 11 warrant close scrutiny. The invoices at pages 162 to 163 of Volume-II of the documents filed by the first respondent are invoices issued by third parties to the first respondent or Mahendra Associates. In other words, these are invoices under which the first respondent or its associate entities purchased goods. In the invoices at pages 160 and 161, the first respondent has purchased industrial cables and cables, respectively, bearing the trade mark, E-FAB. The invoices at pages 162 and 163 are also invoices issued by third parties and do not appear to contain any trade mark. Turning to the invoices at pages 200 to 204 of the same volume, these are invoices issued by a third party, Marvel Engineering Industries, to Mahindra Associates or K.H.Electricals. Under these invoices, Mahindra Associates or K.H.Electricals have purchased ceiling fans. Obviously, such invoices cannot and do not 7/13 https://www.mhc.tn.gov.in/judis (T)OP(TM)/453 & 454/2023 constitute evidence of use of the mark MAHENDRA by the first respondent in relation to ceiling fans.
7. Upon examining the evidence placed on record by the first respondent, I find no evidence of use by the first respondent of the mark MAHENDRA in relation to either wires and cables or fans. As pointed out by learned counsel for the petitioner, the registration certificate under class 9 and class 11 in relation to wires and cables and fans, respectively, issued on 25.05.2016 and 25.08.2010, respectively. Section 47(1) of the Trade Marks Act is as under:
"(1) A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the Registrar or the Appellate Board by any person aggrieved on the ground either—
(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him or, in a case to which the provisions of section 46 apply, by the 8/13 https://www.mhc.tn.gov.in/judis (T)OP(TM)/453 & 454/2023 company concerned or the registered user, as the case may be, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application; or
(b) that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being."
8. On perusal of Section 47(1)(a), it is evident that it applies if a trade mark was registered without the bona fide intention on the part of the applicant to use the mark in relation to the goods or services and there has been no bona fide use of the trade mark by the proprietor thereof up to a date three months before the date of the application for rectification. Section 47(1)(b) applies if a continuous period of five years had lapsed up to three months before the date of application from the date on which the mark is entered on the register without the mark being used bona fide in relation to the 9/13 https://www.mhc.tn.gov.in/judis (T)OP(TM)/453 & 454/2023 relevant goods. Whether either or both these clauses apply should be examined.
9. The rectification petitions were filed on 06.09.2018 (class 9) and 24.10.2018 (class 11). In spite of being provided an opportunity to adduce evidence in relation to use, the first respondent failed to provide any evidence of use of the mark MAHENDRA in relation to wires and cables from 01.10.2003 (user date as per application) up to the date of filing of the rectification petition. Such lack of evidence of use for the extended period of about 15 years establishes that the trade mark was registered without the bona fide intention to use the same in relation to cables and wires. It also establishes that the first respondent did not bona fide use the trade mark. Hence, the requirements of Section 47(1)(a) are satisfied.
10. The registration certificate under class 11 in relation to fans was issued on 25.08.2010. No evidence was adduced of use of the 10/13 https://www.mhc.tn.gov.in/judis (T)OP(TM)/453 & 454/2023 mark in relation to ceiling fans for the continuous period of more than five years from the date of issuance of the certificate of registration up to the date of filing of the rectification petition, thereby satisfying Section 47(1)(b).
11. Consequently, on the ground of non-use of the relevant mark in relation to the respective goods for which registrations were obtained in classes 9 and 11, the said marks are liable to be removed from the Register of Trade Marks as per Section 47(1) of the Trade Marks Act.
12. For reasons set out above, (T)OP(TM)/453 and 454/2023 are allowed by directing the Registrar of Trade Marks to cancel the certificates of registration pertaining to Trade Mark Nos.1275821 and 1275820 in classes 11 and 9, respectively, and remove the entries relating thereto from the Register of Trade Marks. This action shall 11/13 https://www.mhc.tn.gov.in/judis (T)OP(TM)/453 & 454/2023 be completed within a period of four weeks from the date of receipt of a copy of this order. There shall be no order as to costs.
20.09.2023 rna/gvn Index : Yes / No Internet : Yes / No Neutral Citation: Yes/No 12/13 https://www.mhc.tn.gov.in/judis (T)OP(TM)/453 & 454/2023 SENTHILKUMAR RAMAMOORTHY,J rna/gvn (T)OP(TM)/453 & 454/2023 (ORA/9/2019/TM/CHN) & (ORA/46/2018/TM/CHN) 20.09.2023 13/13 https://www.mhc.tn.gov.in/judis