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Delhi High Court

Dhariwal Wooltex vs British India Corporation Ltd & Anr. on 16 August, 2023

Author: C.Hari Shankar

Bench: C.Hari Shankar

                $~46
                *        IN THE HIGH COURT OF DELHI AT NEW DELHI
                +        C.A.(COMM.IPD-TM) 17/2022
                         DHARIWAL WOOLTEX                                       ..... Appellant
                                     Through:                 Ms. Elisha Sinha, Adv.

                                                  versus

                         BRITISH INDIA CORPORATION LTD & ANR.
                                                           ..... Respondents
                                        Through:

                         CORAM:
                         HON'BLE MR. JUSTICE C.HARI SHANKAR
                                                  JUDGEMENT (ORAL)

% 16.08.2023

1. The appellant filed application 925451 for registration of the mark (hereinafter "the DHARIWALWOOLTEX device mark") on 17 May 2000 in Class 24, in respect of "woollen shawls, lohie and fabrics in class 24". User of the mark was claimed by the appellant since 1 January 1984. The application was published in terms of proviso Section to 20(1) of the Trade Marks Act, 1999, on 16 August 2006. The advertisement was made available to the public on 10 November 2006.

2. On 7 February 2007, M/s British India Corporation Ltd. ("BICL" hereinafter) filed Notice of Opposition No. 252150, opposing the appellant's application for registration of the DHARIWALWOOLTEX device mark under Sections 9(2)(a), 11(2)(a), 11(3)(a), 11(4), 11(10), 12 and 18 of the Trade Marks Act, Signature Not Verified Digitally Signed By:HARIOM C.A.(COMM.IPD-TM) 17/2022 Page 1 of 6 Signing Date:17.08.2023 17:58:17 1999.

3. It was sought to be contended by BICL that the DHARIWALWOOLTEX device mark, of which the appellant sought registration, was deceptively similar to BICL's DHARIWAL trademark, which was registered in Class 24 for "woollen and worsted piece goods; tissues and textile fabrics of all types included underclass 24 and not included in other classes; blankets included in class 24". BICL claimed user since 2 June 1943.

4. Consequent on issuance of notice of opposition to the appellant on 9 April 2008, counterstatement was filed by the appellant. BICL filed evidence on 22 April 2013 under Rule 50(1) and the appellant filed evidence under Rule 51(1) of the Trade Marks Rules, 2002, on 22 June 2013. Rebuttal was filed by BICL on 23 July 2013.

5. The application of the appellant for registration of the DHARIWALWOOLTEX device mark stands rejected by the impugned order dated 28 December 2019 passed by the Joint Registrar of Trade Marks.

6. The Joint Registrar observes, at the outset, that, though BICL claimed user of its DHARIWAL mark since 2 June 1943, it could produce evidence of user only from 13 December 2004. As against this, the first and oldest sales invoice filed by the appellant was of 15 May 1984. Thus, holds the Joint Registrar, the appellant was clearly the senior to BICL as a user of the mark.

7. Signature Not Verified Having thus proceeded to reject the opposition filed by BICL, Digitally Signed By:HARIOM C.A.(COMM.IPD-TM) 17/2022 Page 2 of 6 Signing Date:17.08.2023 17:58:17

the learned Joint Registrar proceeds, nonetheless, to also reject the appellant's application, observing that, though the appellant claimed user with effect from 1 January 1984 in its application, evidence of user placed on record by the appellant was only with effect from 15 May 1984. According to the Joint Registrar, it was incumbent on the appellant to positively prove the user claimed by it in its application seeking registration in the first instance. The impugned Order expresses surprise at the appellant having claimed user since 1 January 1984, despite being able to file invoices evidencing user only with effect from 15 May 1984.

8. The Joint Registrar places reliance on the decisions of this Court in Vivek Kochher v. M/s. Kyk Corporation Ltd1 and Vijay Grover v. Biocure Laboratories2. He has additionally also placed reliance upon a decision of the learned Intellectual Appellate Property Board (IPAB) in Sigma Freudenberg Nok Pvt. Ltd. v lnderpal Singh3 erroneously referring to it as a judgment of a Division Bench of this Court.

9. Ms. Elisha Sinha, learned Counsel for the appellant submits that the Trade Marks Rules which were in existence of the time when the applicant had filed its application for registration of the DHARIWALWOOLTEX device mark did not require evidence of user to be filed with the application. As such, evidence of user came to be filed by the appellant only on 22 June 2013, in response to the opposition filed by the respondent, whereas the application for 1 245 (2017) DLT 521 2 2002(24) PTC 438 (Del) Signature Not Verified 3 2018 SCC OnLine IPAB 124 Digitally Signed By:HARIOM C.A.(COMM.IPD-TM) 17/2022 Page 3 of 6 Signing Date:17.08.2023 17:58:17 registration of the mark had been filed on 17 May 2000. As evidence of user was produced 13 years after the application was filed, owing to no fault of the appellant, Ms. Sinha submits that the appellant was not able to place on record any invoice evidencing use with effect from 1 January 1984. She submits that the appellant had, nonetheless, placed on record its sales figures on affidavit, evidencing returns from sale of goods bearing the DHARIWALWOOLTEX device mark even in 1983-84, which indicated that there had been some sales of the goods during the period January to March 1984.

10. In any event, she submits that the difference between the date from which user of the DHARIWALWOOLTEX device mark was claimed by the applicant and from which evidence of such user was placed on record was just a little over four months, and it would be extremely unjust if the applicant's application for registration of the mark were to be rejected on such a ground.

11. I agree. The Joint Registrar has been needlessly hypertechnical.

12. The appellant had claimed user of the DHARIWALWOOLTEX device mark since 1 January 1984. It had placed, on record, evidence of such user since 15 May 1984. The opportunity to place such evidence having first arisen, to the appellant, 13 years after the application had been filed, the appellant cannot be faulted for not having had, with it, at that distant point of time, material to evidence user of the DHARIWALWOOLTEX device mark from 1 January 1984. The observation, of the Joint Registrar, that the appellant had filed a false claim of user, which constitutes the basis of passing the impugned order does not, therefore, appear to me to be either fair or Signature Not Verified Digitally Signed By:HARIOM C.A.(COMM.IPD-TM) 17/2022 Page 4 of 6 Signing Date:17.08.2023 17:58:17 just. At the very least, keeping the circumstances in mind, the Joint Registrar ought to have considered the appellant as having shown user of the DHARIWALWOOLTEX device mark at least since 15 May 1984, instead of rejecting the appellant's application for registration of the DHARIWALWOOLTEX device mark outright.

13. The decisions cited by the Joint Registrar are clearly distinguishable.

14. Vijay Grover2 merely contains generalised observations regarding the benefits accruing on registration, which do not really touch on the issue in controversy. Sigma Freudenberg3 is a case in which the learned IPAB found that registration had been obtained by claiming user since 10 April 2003, whereas the earliest document of user was of 2009. As such, the learned IPAB was seized with a situation in which the registration already stood granted to the party, with a user claim which the party had been unable to substantiate. That decision, quite obviously, cannot apply at a stage where the party's application was still under consideration. The decision in Vivek Kochher1 was a case where the applicant claimed user since 1996 but could produce invoices evidencing use only with effect from 1999. In view of the fact that there were no invoices even covering the period 1996 to 1998, this Court did not feel the decision of the learned IPAB, which was under challenge before it, to be worthy of interference. Besides, in that case, this Court was exercising the powers of a Court of certiorari over the decision of the learned IPAB, which are classically limited and circumscribed, with no colour of appellate jurisdiction.

Signature Not Verified Digitally Signed By:HARIOM C.A.(COMM.IPD-TM) 17/2022 Page 5 of 6 Signing Date:17.08.2023 17:58:17

15. In view of the aforesaid, I am of the opinion that the impugned order dated 28 December 2019, passed by the learned Joint Registrar, cannot sustain on facts or in law.

16. It is accordingly set aside.

17. The Joint Registrar - or other competent officer as designated by the Registrar - would now proceed to consider with the application of the appellant for registration of Application No 925451 of the appellant, seeking registration of the DHARIWALWOOLTEX device mark, on merits, treating the appellant as having shown user in respect of the mark with effect from 15 May 1984.

18. As the application is of 23 years' vintage, it is directed that orders on the application as expeditiously as possible and at any rate within a period of three months from today. The appellant shall also be accorded an opportunity of personal hearing in the matter, for which purpose, the appellant may appear, either by itself or through Counsel, before the competent officer authorised in that regard, on 28 August 2023.

19. The present appeal stands allowed in the aforesaid terms with no order as to costs.

C.HARI SHANKAR, J AUGUST 16, 2023 ar Signature Not Verified Digitally Signed By:HARIOM C.A.(COMM.IPD-TM) 17/2022 Page 6 of 6 Signing Date:17.08.2023 17:58:17