Telangana High Court
Neeraj Kumar Agarwal, vs Mrs. Priya Shah, on 5 August, 2024
THE HON'BLE THE CHIEF JUSTICE ALOK ARADHE
AND
THE HON'BLE SHRI JUSTICE ANIL KUMAR JUKANTI
WRIT PETITION Nos.2097, 2148 and 2248 of 2009
COMMON ORDER:(per the Hon'ble the Chief Justice Alok Aradhe) Dr. Venkat Reddy Donthi Reddy, learned Senior Counsel representing RVR Associates for the petitioner.
Ms. Kalpana Ekbote, learned counsel for the respondent No.1.
2. In these writ petitions, petitioner has called in question the validity of the common order, dated 14.11.2008, passed in O.R.A.Nos.128/2007/TM/CH, 129/2007/TM/CH and 130/2007/TM/CH. In order to appreciate the grievance of the petitioner, relevant facts need mention, which are stated infra.
3. Respondent No.1 is engaged in the manufacture and sale of readymade garments under the name, style and trade mark, namely, "Show Off" since 01.04.1996. 2 According to respondent No.1, she has been using the aforesaid trade mark continuously and extensively since 01.04.1996 and the same has become a well known mark within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999 (hereinafter referred to as 'the Act'). As per the case of respondent No.1, the petitioner was associated and was residing as a family member of respondent No.1 for several years, but later on separated from the family and started his own business in Hyderabad in the name and style of "Show Off". The petitioner with an ulterior motive got the trade mark namely, "Show Off" registered on 16.09.1999.
4. Respondent No.1 thereupon filed applications under Sections 47, 57 and 125 of the Act inter alia on the ground that the petitioner was well aware of using of trade mark "Show Off" by respondent No.1 and was all along assisting respondent No.1 in her business and residing with the family members of respondent No.1. It was averred in the application that the petitioner has slavishly copied the trade mark of respondent No.1 with a dishonest 3 intention and trading in the same goods. It was further averred that impugned registration will enable the petitioner to pass off his goods as that of respondent No.1's well established goods. It is pleaded that respondent No.1 being the prior user of trade mark "Show Off", the impugned registration is causing business loss as well as loss of goodwill and reputation and therefore, respondent No.1 is a person aggrieved. It is further pleaded that the impugned registration was made without any sufficient cause. Accordingly, respondent No.1 filed three applications, namely, O.R.A.Nos.128/2007/TM/ CH, 129/2007/TM/CH and 130/2007/TM/CH under Sections 47, 57 and 125 of the Act.
5. The petitioner filed counter statements in which inter alia it was pleaded that the petitioner is engaged in the business of dealing with and selling of textile piece goods, readymade garments, shoes and belts and leather goods since 16.09.1999 under the name and style of "M/s. Show Off His and Her Hi-Fashion Boutique". It was averred that the petitioner is selling the goods under the distinctive trade mark of "Show Off" after being satisfied 4 about non-existence of the word "Show Off" as a trade mark in relation to aforesaid goods and obtained registration of the trade mark "Show Off" which was written in an artistic manner by embossing its alphabet placement, appearance, size, shape, distinguishing feature and images. It was also averred that the application for registration was not opposed by anyone. The stand taken by respondent No.1 that she is the prior user of the trade mark "Show Off" was denied. It is averred in the counter statements that certificate dated 25.09.1996 issued under the Karnataka Professions, Trade, Livelihood and Employment Act, 1976 (hereinafter referred to as 'the 1976 Act') does not authorize respondent No.1 to manufacture or sell readymade garments as proprietor of the firm and the said certificate is contradictory to the date of use of trade mark claimed as 01.04.1996 by respondent No.1.
6. The Intellectual Property Appellate Board (hereinafter referred to as 'the Board') thereafter with the consent of the parties recorded common evidence in all the three applications and heard the arguments. The Board by 5 a common order dated 14.11.2008 inter alia held that respondent No.1 is a person aggrieved under Sections 47, 57 and 125 of the Act on the basis of the certificate of registration under the 1976 Act, orders of assessment passed under the Commercial Tax Act for the years 1996- 97 to 2006-07, income tax challans/returns for the years 1997-98 to 2001-02, purchase bills from 06.11.1996 to 18.08.2007 and sales invoices/bills from 11.11.1996 to 27.07.2007 and respondent No.1 is a prior user of the trade mark "Show Off". The Board further held that the petitioner had knowledge about the trading style and trade mark namely "Show Off" and he got the trade mark "Show Off" registered dishonestly. The Board further held that the petitioner's trade mark is similar and identical to that of respondent No.1's trade mark and the same would cause confusion. It was also held that respondent No.1 has established the impugned trade mark as wrongly registered by the Registrar of Trade Marks. The Board therefore concluded that the registered trade mark of the petitioner cannot be allowed to remain on the Register of Trade Marks. Accordingly, the applications filed by respondent 6 No.1 under Sections 47, 57 and 125 of the Act were allowed by a common order dated 14.11.2008 and Registrar of Trade Marks was directed to expunge the trade mark of the petitioner from the register of trade marks. In the aforesaid factual background, these writ petitions have been filed.
7. Learned Senior Counsel for the petitioner submitted that parties knew each other and even though the petitioner was using the registered trade mark since 1999, yet the applications for rectification were filed by respondent No.1 in the year 2007. Therefore, in the light of the mandate contained in Section 33 of the Act, the Board ought to have appreciated that the applications seeking rectification filed by respondent No.1 were beyond the period of 5 years and no relief could have been granted to respondent No.1. It is further submitted that the Board has failed to consider the applications for rectification on the touch-stone of criteria provided under Sections 9 and 11 of the Act. It is further submitted that the petitioner and respondent No.1 have been using the trade mark 7 concurrently for past several years. Therefore, in the light of Section 12 of the Act, the petitioner can be permitted to use the registered trade mark. However, it is fairly submitted by the learned Senior Counsel that prior user shall have a better title in respect of the trade mark. It is pointed out that the petitioner is ready and willing to resolve the dispute amicably and it is submitted that the petitioner has given an offer to respondent No.1 that the petitioner be permitted to use the registered trade mark in the States of Andhra Pradesh and Telangana and respondent No.1 can use the registered trade mark all over the country.
8. On the other hand, learned counsel for respondent No.1 submitted that Section 33 of the Act does not apply to the fact situation of the case. It is submitted that there is no acquiescence on the part of respondent No.1 as the trade mark in favour of the petitioner was registered on 25.10.2004 and the applications for rectification have been filed on 27.08.2007. Alternatively, it is contended that in the counter statements there is no 8 pleading with regard to applicability of Section 33 of the Act. It is further submitted that Section 9 of the Act deals with absolute grounds for refusal of registration and does not apply to the facts of the case as the writ petitions arise from proceedings under Sections 47, 57 and 125 of the Act. It is submitted that Section 12 of the Act also has no application to the obtaining factual matrix, as the instant case is not of honest concurrent use. Learned counsel for respondent No.1 on instructions has submitted that respondent No.1 is not ready and willing to accept the proposal made on behalf of the petitioner. Lastly it is contended that this Court has no territorial jurisdiction to deal with the writ petitions as the Board as well as the Registrar of Trade Marks are situated in Chennai. In support of the aforesaid submissions, reliance has been placed on the decision of Kusum Ingots and Alloys Ltd., v. Union of India 1 . However, learned counsel for respondent No.1 submitted that the writ petitions be decided on merits and she is not seeking decision on 1 (2004) 6 SCC 254 9 territorial jurisdiction of this Court to deal with writ petitions.
9. By way of rejoinder reply, learned Senior Counsel for the petitioner has submitted that Section 33 of the Act applies to the facts of the case and has invited the attention of this Court to the averments contained in paragraph 14.15 of the counter statements.
10. We have considered the rival submissions made on both sides and have perused the record.
11. The principal issues which arise for consideration in these writ petitions are as under:
(1) Whether Section 33 of the Act applies to the obtaining factual matrix of the case and in view of the same, respondent No.1 is not entitled to seek rectification of the registered trade mark in favour of the petitioner?
(2) Whether the impugned order dated 14.11.2008 is vitiated in law as the Registrar of Trade Marks as well as the Board have not 10 taken into account Sections 9 and 11 of the Act while passing the common order dated 14.11.2008? and (3) Whether the instant cases are the cases of honest concurrent use of the trade mark by the petitioner and the petitioner is entitled to the benefit of Section 12 of the Act?
12. Before proceeding further, it is apposite to take note of relevant provisions of the Act. Section 9 of the Act deals with the absolute grounds for refusal of registration, whereas Section 11 of the Act deals with relative grounds for refusal of registration. Section 12 of the Act provides for registration in the case of honest concurrent use. The relevant provisions are extracted below for the facility of reference:
"9. Absolute grounds for refusal of registration.-(1) The trade marks -
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;11
(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;
(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered :
Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark. (2) A mark shall not be registered as a trade mark if -
(a) it is of such nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).
(3) A mark shall not be registered as a trade mark if it consists exclusively of -
(a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which is necessary to obtain a technical result; or 12
(c) the shape which gives substantial value to the goods.
Explanation.- For the purposes of this section, the nature of goods or services in relation to which the trade mark is used or proposed to be used shall not be a ground for refusal of registration.
11. Relative grounds for refusal of registration.-(1) Save as provided in section l2, a trade mark shall not be registered if, because of-
(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
(2) A trade mark which -
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered, if or to the extent, the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.
13(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented -
(a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade; or
(b) by virtue of law of copyright.
(4) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration, and in such case the Registrar may register the mark under special circumstances under section 12. Explanation.- For the purposes of this section, earlier trade mark means -
(a) a registered trade mark or an application under section 18 bearing an earlier date of filing or an international registration referred to in section 36E or convention application referred to in section 154 which has a date of application earlier than that of the trade mark in question, taking account, where appropriate, of the priorities claimed in respect of the trade marks;
(b) a trade mark which, on the date of the application for registration of the trade mark in question, or where appropriate, of the priority claimed in respect of the application, was entitled to protection as a well-known trade mark.
(5) A trade mark shall not be refused registration on the grounds specified in sub-sections (2) and (3), unless objection on any one or more of those grounds is raised in opposition proceedings by the proprietor of the earlier trade mark.
14(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including -
(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade mark, in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record. (7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account -
(i) the number of actual or potential consumers of the goods or services;
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(ii) the number of persons involved in the channels of distribution of the goods or services;
(iii) the business circles dealing with the goods or services, to which that trade mark applies.
(8) Where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.
(9) The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely: -
(i) that the trade mark has been used in India;
(ii) that the trade mark has been registered;
(iii) that the application for registration of the trade mark has been filed in India;
(iv) that the trade mark -
(a) is well known in; or
(b) has been registered in; or
(c) in respect of which an application for
registration has been filed in, any
jurisdiction other than India; or
(v) that the trade mark is well-known to the
public at large in India.
(10) While considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall -
(i) protect a well-known trade mark against the identical or similar trade marks;16
(ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.
(11) Where a trade mark has been registered in good faith disclosing the material informations to the Registrar or where right to a trade mark has been acquired through use in good faith before the commencement of this Act, then, nothing in this Act shall prejudice the validity of the registration of that trade mark or right to use that trade mark on the ground that such trade mark is identical with or similar to a well-known trade mark.
12. Registration in the case of honest concurrent use, etc.-In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose."
13. Section 33 of the Act deals with effect of acquiescence. Section 33 of the Act reads as under:
"33. Effect of acquiescence.-(1) Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no longer be entitled on the basis of that earlier trade mark-17
(a) to apply for a declaration that the registration of the later trade mark is invalid, or
(b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used, unless the registration of the later trade mark was not applied in good faith.
(2) Where sub-section (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark, or as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark may no longer be invoked against his later trade mark."
Thus, it is axiomatic that in order to attract the applicability of Section 33 of the Act
(i) there has to be an earlier trade mark to a later registered trade mark.
(ii) a later registered trade mark was obtained in good faith.
(iii) knowledge by the proprietor by the earlier trade mark regarding use of the later trade mark, and
(iv) acquiescence by the proprietor of the earlier trade mark to such use.
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14. Sections 47 and 57 of the Act provide for removal from register and imposition of limitations on the ground of non-use and power to cancel or vary registration and to rectify the register. Sections 47 and 57 of the Act read as under:
"47. Removal from register and imposition of limitations on ground of non-use.-(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 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 19 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:
Provided that except where the applicant has been permitted under section 12 to register an identical or nearly resembling trade mark in respect of the goods or services in question, or where the Tribunal is of opinion that he might properly be permitted so to register such a trade mark, the Tribunal may refuse an application under clause (a) or clause (b) in relation to any goods or services, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to-
(i) goods or services of the same description; or
(ii) goods or services associated with those goods or services of that description being goods or services, as the case may be, in respect of which the trade mark is registered. (2) Where in relation to any goods or services in respect of which a trade mark is registered-
(a) the circumstances referred to in clause (b) of sub-section (1) are shown to exist so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in a particular place in India (otherwise than for export from India), or in relation to goods to be exported to a particular market outside India; or in relation to services for use or available for 20 acceptance in a particular place in India or for use in a particular market outside India; and
(b) a person has been permitted under section 12 to register an identical or nearly resembling trade mark in respect of those goods, under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or in relation to services for use or available for acceptance in that place or for use in that country, or the Tribunal is of opinion that he might properly be permitted so to register such a trade mark, on application by that person in the prescribed manner to the Appellate Board or to the Registrar, the Tribunal may impose on the registration of the first-mentioned trade mark such limitations as it thinks proper for securing that registration shall cease to extend to such use.
(3) An applicant shall not be entitled to rely for the purpose of clause (b) of sub-section (1) or for the purposes of sub-section (2) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade, which includes restrictions on the use of the trade mark in India imposed by any law or regulation and not to any intention to abandon or not to use the trade mark in relation to the goods or services to which the application relates.
57. Power to cancel or vary registration and to rectify the register.-(1) On application made in the prescribed 21 manner to the Appellate Board or to the Registrar by any person aggrieved, the Tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the Registrar, and the Tribunal may make such order for making, expunging or varying the entry as it may think fit.
(3) The Tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.
(4) The Tribunal of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2). (5) Any order of the Appellate Board rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly."
15. Now we may refer to the well settled legal principles. The Supreme Court while dealing with the provisions of the Trade and Merchandise Marks Act, 1958 22 has held that a trade mark is the property of the manufacturer and the purpose of trade mark is to establish a connection between the goods and the source thereof which would suggest the quality of goods. Ordinarily, the right to use of a trade mark cannot have two origins and a person cannot use a mark which would be deceptively similar to that of the registered trade mark. (see Ramdev Food Products (P) Ltd., v. Arvindbhai Rambhai Patel 2 and M/s. Power Control Appliances v. Sumeet Machines Pvt. Ltd. 3).
16. In view of submission made by learned counsel for respondent No.1 that she does not seek a decision of this Court on the issue of territorial jurisdiction, we proceed to adjudicate the writ petitions on merits. Now we shall advert to the issues ad-seriatim. The trade mark was registered in favour of the petitioner on 25.10.2004. The applications under Sections 47, 57 and 125 of the Act were filed by respondent No.1 on 27.08.2007 well within the period of 5 years. Therefore, the contention that Section 2 (2006) 8 SCC 726 3 (1994) 2 SCC 448 23 33 of the Act applies to the obtaining factual matrix does not deserve acceptance. It is also noteworthy that in the counter statements, the petitioner has not expressly pleaded about the applicability of Section 33 of the Act. Therefore, the first issue is answered in the negative by stating that Section 33 of the Act does not apply to the fact situation of the case and therefore, the contention that respondent No.1 is not entitled to seek rectification of the registered trade mark in favour of the petitioner is sans substance.
17. Now we may advert to the second issue. Section 9 of the Act deals with absolute grounds for refusal of registration, whereas Section 11 of the Act deals with relative grounds for refusal of registration. Respondent No.1 had initiated the proceedings under Sections 47, 57 and 125 of the Act. Therefore, non-consideration of the criteria laid down in Sections 9 and 11 of the Act is of no relevance while deciding the proceedings under Sections 47, 57 and 125 of the Act. The Board while dealing with the applications has recorded a finding that the trade mark 24 was registered without any bona fide intention on the part of the petitioner. Thus, the criteria prescribed under Sections 47, 57 and 125 of the Act having been satisfied, the common order dated 14.11.2008 does not suffer from any infirmity on account of non-consideration of mandate contained in Sections 9 and 11 of the Act. Accordingly, the second issue is answered.
18. On the basis of the oral and documentary evidence adduced by the parties, the Board has recorded a finding that parties knew each other and the petitioner was associated with respondent No.1 and was aware about the trade mark being used by respondent No.1. Therefore, it is not the case of the petitioner that he did not know respondent No.1 or was not associated with the family of respondent No.1. The Board has further recorded a finding that the instant cases were not cases of honest concurrent use. Therefore, the provisions of Section 12 of the Act do not apply to the fact situation of the case. Accordingly, the third issue is answered.
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19. In view of the preceding analysis, we do not find any merit in these writ petitions. The same fail and are hereby dismissed.
Miscellaneous applications, if any pending, shall stand closed.
_______________________________ ALOK ARADHE, CJ _______________________________ ANIL KUMAR JUKANTI, J Date: 05.08.2024 KL