Intellectual Property Appellate Board
Candico (I) Limited vs Perfetti S.P.A., Vi A Xxv Aprils, 7, ... on 18 October, 2007
Equivalent citations: [2008]141COMPCAS642, MIPR2008(1)1, 2007(35)PTC905(IPAB)
ORDER S. Usha, Member (T)
1. An application is made praying to expunge or cancel the registration of the trade mark 'BIG BABOL' under No. 383562 in class 30 in respect of confectionery, chewing and bubble gum under the provisions of Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act).
2. The applicants have been in the business of manufacturing and marketing a wide range of sweets and confectioneries including bubble gum. The applicant's predecessors were carrying on business for a long time. The business was in fact carried on by Bakemans Industries Limited. Pursuant to the scheme of arrangement granted in C.P. Nos. 12 and 13 of 1997 & C.P. Nos. 865 and 866/97 by the Hon'ble High Court, Delhi by order dated 25.2.1997 the assets and liabilities of the confectionery division of Bakemans Industries Limited were transferred and vested with the Heritage Bharat Ltd. The name Heritage Bharat Limited was subsequently changed to Candico (I) Ltd., the present applicant herein.
3. The applicant's predecessor has been using the trade mark 'THE BIG BUBBLE' along with its conjunction with the words 'Bakemans' 'Loco Poco' or 'Freedom' since 1989 and by the present applicants since 1997. The sales turnover of the applicant's goods bearing the trade mark 'THE BIG BUBBLE' along with the other words have been to several lakhs of rupees.
4. The applicant received a legal notice dated 16.04.1998 from the first respondent herein calling upon the applicant to cease and desist from using the words 'THE BIG BUBBLE' as the first respondent had been manufacturing and marketing products bearing the trade mark 'BIG BABOL'. The applicant herein being aggrieved by the notice, filed a suit against the first respondent before the District Court at Nagpur to restrain them from using the trade mark 'BIG BABOL'. The applicants had also taken out an application for an order of interim injunction to restrain the first respondent from using the trade mark 'BIG BABOL' which was deceptively similar to the applicant's mark 'THE BIG BUBBLE'. The Hon'ble District Court was pleased to grant an order of interim injunction. The first respondent moved an application to vacate the order of injunction and had the order vacated. The applicant filed appeal against the said order before the Hon'ble High Court at Bombay (Nagpur Bench) and the same is pending whereas no order of stay was granted.
5. The applicants filed this instant application for rectification by removing the trade mark 'BIG BABOL' registered under No. 383562 in class 30 on various grounds, namely,
a) the first respondent being a holding company did not disclose the same to the Registrar and had committed fraud and had obtained the registration of the trade mark as proprietors of the mark when they were not proprietors nor did they have the right to use the trade mark 'BIG BABOL'. They also did not disclose the fact that in the year 1981 import restrictions were prevailing in India for chewing gums and that they could not use the trade mark in India;
b) the registration of the impugned trade mark was in contravention of the provisions of Section 11 of the Act. The mark being descriptive of the goods, there was every possibility of deception and confusion, when used for chewing gums;
c) the trade mark is not distinctive of the goods and also that it is similar to the applicants trade mark 'BIG BUBBLE';
d) the first respondent had no bonafide intention to use the trade mark at the time of filing the application for registration of the impugned trade mark;
e) the first respondent did not use the trade mark for a period of five years and one month prior to the filing of the rectification petition; and
f) the entry of the mark on the Register was made without sufficient cause and was wrongly remaining on the Register.
6. The first respondent filed the counter statement denying the various allegations made in the application for rectification. The first respondent was also marketing and manufacturing of confectionery including chewing gum and bubble gums and candies under the trade mark 'BIG BABOL'. The first respondent's mark 'BIG BABOL' was registered in Italy under No. 318104 as early as 1979. The first respondent has its subsidiary companies in various countries including India which have been selling chewing gums and bubble gums under the trade mark 'BIG BABOL' for which applications for registration have been filed and the same are either registered or pending.
7. The first respondent had applied for registration of the trade mark 'BIG BABOL' under application No. 383562 in class 30 on 27.11.1981 and had obtained registration and the same is being renewed from time to time and is subsisting. The registration of the impugned mark is valid and is conclusive as per the provisions of the Act. The first respondent Perfetti India Ltd., a 100% subsidiary company of the first respondent has been manufacturing and marketing bubble gum under the trade mark 'BIG BABOL' since November, 1994. The first respondent has spent huge amounts for advertising and for its promotional expenses. By such long extensive and continuous use the first respondent's trade mark 'BIG BABOL' has acquired tremendous reputation and goodwill among the public.
8. The first respondent had knowledge about the applicant's trade mark 'BIG BUBBLE' only in the year 1998 and had immediately issued a cease and desist notice. After issuance of notice, the applicants and first respondent entered into an oral settlement to settle the matter. Despite this settlement, the applicant moved an interlocutory petition for an order of injunction and had obtained the same. The order of injunction was vacated on hearing both the sides. The applicant preferred an appeal against the order vacating the injunction. No interim order granted though the appeal was admitted.
9. The first respondent pointed out that the applicant acquired the right to use the trade mark 'BIG BABOL' from their predecessor by a scheme order dated 25.2.1997. On perusal of the order, it is seen that the predecessors i.e. Bakemans Industries Limited itself was incorporated only in the year 1992 and then to say Bakemans Industries Limited was using the mark since 1989 is denied.
10. The applicant is not an aggrieved person as the applicant is not injured in any way in its business by the first respondent's registration of the trade mark 'BIG BABOL' and so no locus standi to file the present application. The first respondent's registration has become valid and conclusive as per the provisions of the Act as also that it has been renewed on three occasions.
11. The first respondent has obtained registration of the impugned trade mark as early as 1981 even before the applicant or its predecessors had come into existence. The first respondent was not a holding company as stated in the application. The first respondent had filed the application in India based on the user claimed in Italy. The first respondent had denied the other allegations made in the application for rectification.
12. The first respondent has further stated in the counter statement that the application for rectification was barred by the law of limitation and that it was liable to be dismissed on this ground alone. The applicant had knowledge about the first respondent's use as early as 1994 itself and to file an application for rectification in 1998 after lapse of four years which is beyond the general provision of the period of three years limitation as provided under Article 137 of the Limitation Act, 1963 and as such this application is time barred.
13. The matter was taken up for hearing in the Circuit Bench at Mumbai on 18.9.2007. We have heard Ms. Anuradha Salhotra learned Counsel for the applicant and Shri Rahul Chitnis learned Counsel for the first respondent.
14. The learned Counsel for the applicant contended that they have been using the trade mark 'BIG BUBBLE' since the year 1989. The applicant pointed out to the sales figures given in the application for rectification to show that their business had rapidly improved.
15. Learned Counsel for the applicant further submitted that they received a notice dated 16.4.1998 calling upon the applicants to desist from using the trade mark 'BIG BUBBLE' where neither the date of user nor any mention of the trade mark rights was made. The applicant acquired the right through its predecessors to use the mark 'BIG BUBBLE' as a descriptive term as well as a trade mark.
16. Learned Counsel for the applicant also contended that the first respondent's mark had not acquired distinctiveness and as such was not registrable. The registration granted to the first respondent was in contravention to the provisions of Sections 9 and 11 of the Act. Learned Counsel for the applicant further contended that the trade mark 'BIG BABOL' of the first respondent was not in use for a period of more than five years and one month prior to the filing of the application and as such is liable to be removed from the Register on this ground alone.
17. Learned Counsel for the applicant further contended that they came to know of the use of the trade mark 'BIG BABOL' by the first respondent in April 1998 when the cease and desist notice was issued and had immediately filed this application for rectification in November, 1998. Learned Counsel for the applicant also contended that the first respondent had played fraud and had obtained registration of the trade mark. The first respondent had not disclosed that they were a holding company and also did not reveal the fact that the goods bearing the trade mark 'BIG BABOL' was not in use due to import restrictions.
18. The trade mark was not in use and so the mark was on the Register without any sufficient cause. The applicant pointed to the averment made in para 4(iii) of the counter statement and submitted that the registration certificate will not prove its user. She also stated that the mark is not distinctive and does not qualify for registration.
19. Learned Counsel for the applicant submitted that the mark is too descriptive and hence cannot be registered. There is no proof filed by the first respondent to say that they are a holding company and also no proof to say that they had been using the mark in Italy since 1979, except the registration certificate.
20. Learned Counsel for the applicant submitted that the applicants were aggrieved persons as per the provisions of Section 56 of the Act. The applicant, on receipt of legal notice, have taken out this application for rectification.
21. Learned Counsel for the applicant relied on the judgment reported in 1986 IPLR 85 (Delhi) to support her contention that when import restriction was in existence the mark could not have been in use which will only go to show that the applicant had no intention to use the mark on the date of application for registration. Here again the import restriction was in existence on the date of application for registration and hence did not qualify for registration i.e. which was in contravention of the provisions of Section 46 of the Act. The learned Counsel for applicant submitted that the mark was not in use where it is seen that there was not only no bonafide use but also no actual use.
22. Learned Counsel for the applicant, therefore, prayed that the application for rectification be allowed, removing the impugned trade mark 'BIG BABOL' from the Register of Trade Marks.
23. Learned Counsel for the first respondent mainly submitted that the application for rectification was barred by limitation. The applicants came to know about the first respondent's mark at least by November, 1998 and to file an application after a period of three years was barred by limitation. Learned Counsel for the first respondent relied on the judgment reported in 2002 (6) Bom CR 796 Bhagwandas G. Agarwal v. Brijwasi Dughdhalaya Pvt. Ltd.
24. Learned Counsel for the first respondent further submitted that the applicants should have been aware of their products bearing the impugned trade mark atleast from November, 1998 as the marks are phonetically and deceptively similar and the goods were also the same. The first respondent also submitted that the applicant, though had given the sales figures, the sales could not be said to be the goods bearing the trade mark 'BIG BUBBLE' and pointed out to para 8 of the application for rectification and stated that it was with regard to the goods bearing various trade marks like Loco Poco, Freedom, etc.
25. Learned Counsel for the first respondent contended that the applicants were not aggrieved as contemplated in the provisions of the Act. In fact the first respondent had been in the market since the year 1979 and denied the statement that the applicants were aggrieved persons. By the impugned mark remaining on the register, the applicant will not be in any way affected. The counsel also stated that the application for rectification was only a frivolous petition as the first respondent's mark had been registered as early as 1981 and had been renewed three times and thus had become valid and conclusive. The first respondent's trade mark 'BIG BABOL' has been registered in various countries since the year 1979.
26. Learned Counsel for the first respondent submitted that there is no proof to say that the applicants have been using the trade mark 'BIG BUBBLE' as early as 1989.
27. Learned Counsel for the first respondent relied on the judgment reported in AIR 1986 Delhi 145 Philips Moris Belgium SA v. Golden Tobacco Co. Ltd. to support his contention that import restriction constitutes special circumstance justifying non -use.
28. Learned Counsel for the first respondent concluded his arguments by stating that the impugned trade mark 'BIG BABOL' had been on the register since 1981 and had thus become prima facie valid and conclusive. He further submitted that as per the provisions of Section 32 of the Act, the mark has been on the register for more than seven years and has been renewed twice. On this ground itself the first respondent prayed that the application for rectification be dismissed and allow the mark to remain on the register.
29. We have carefully considered the arguments and have gone through the pleadings and documents. Both the counsel had sought permission to file their written arguments, to which this Board had orally granted permission for the same. We had received the written arguments from the first respondent and not from the applicants even as on 15.10.2007, so we are not considering the written arguments of the first respondent too in the absence of the applicant's written arguments.
30. The main issue for consideration is whether the application for rectification is barred by limitation as contended by the first respondent. We have to decide as to whether these applications are governed by the Limitation Act, 1963. In deciding this issue, we borrow the following observations made in the judgment in TRA/8 and 9/05/TM/DEL Even when the rectification applications were filed before the High Courts, prior to the coming into force of the Trade Marks Act, 1999, the provisions of the Limitation Act were not uniformly applied as is evident from the divergent decisions of the High Courts about the applicability thereof. In Ciba Ltd. v. M. Ramalingam AIR 1958 Bom. 56, the Division Bench of Bombay High Court held that an application for rectification would be made at any time and was not governed by the Limitation Act. The High Court of Bombay in an unreported case of Rakesh Kumar Gupta v. Goresh Domestic Appliances and Ors. Misc. Petition No. 63 of 1994 decided on 24.1.2002 held that Section 137 of the Limitation Act applies to an application or petition under Section 56 of the Act and yet again the said High Court in Bhagwandas G. Agarawal v. Brijwasi Dughdhalya Private Limited and Anr. 2002 (2) CTMR 554 (Bombay) held that the application for rectification under Section 56 of the Act, which is treated as a petition under Rule 826 of the High Court (O.S.) Rules, is governed by the provisions of the Limitation Act, 1963. The High Court of Gujarat, in Patel Field Marshal Agencies v. P.M. Diesels Ltd. 1998 PTC (18), observed that it is quite clear that though Section 2(x) declares that "Tribunal" includes both Registrar as well as "High Court" it could not be said that when the High Court is considering the rectification application is a "Tribunal" and not the High Court of original Civil Jurisdiction a Civil Court. The proceedings of rectification or any proceedings under the trade mark are proceedings coming before the High Court under its original Civil Jurisdiction. Rectification application is an application governed by the provisions of Civil Procedure Code before the High Court and consequently the provisions of the Limitation Act, 1963 would govern the said rectification application. Bodies, other than courts which are exercising quasi-judicial powers like Tribunal and executive authorities are not governed by the provisions of law of limitation provided by the Limitation Act, 1963. The proceedings in question is not before any such body or quasi-judicial Tribunal, but the proceedings in question is a proceeding before the High Court. Therefore, the proceedings under Section 56 read with Section 46 of the Act is governed by the provisions of Article 137 of the Limitation Act, 1963. It appears from page 66 of the judgment of the High Court of Calcutta in Banik Rubber Industries v. Sree K.B. Rubber Industries and Anr. 1990 PTC 58 that the position that limitation would not apply to an application for rectification was conceded by the counsel opposing the application. The Division Bench of High Court of Delhi in Fedders Lloyd Corporation Ltd. and Anr. v. Fedders Corporation 2005 (30) PTC 353 (Del-DB) while setting aside the finding of the learned Single Judge as erroneous has held that the Article 137 of the Limitation Act, 1963 will not govern the applications under Section 46 of the Act.
Prior to the constitution of the Appellate Board, such applications were being filed before the High Courts, having jurisdiction, to which the provisions of that Limitation Act, 1963 as well as the provisions of the Code of Civil Procedure, 1908 were applicable. The Trade Marks Act, 1999, by virtue of which this Appellate Board was constituted, provides that the Appellate Board shall not be bound by the procedure laid down in the C.P.C. Undoubtedly the Appellate Board is a tribunal and not a civil court to attract the application of provisions of the Limitation Act to the applications on hand. The Apex Court in the appeal in Mukri Gopalan v. Cheppilat Puthanpurayilaboobacker 1995 SCC (5) 5 while considering the issue 'whether the appellate authority constituted under Section 18 of the Kerala Buildings (Lease and Rent Control) Act, 1965 has power to condone the delay in the filing of appeal before it under the said Section observed as under:
In the case of Town Municipal Council, Athani v. Presiding Officer, Labour Court, Hubli and Ors. 1970 (1) SCR 51, a bench of two learned Judges of this Court was concerned with the short question whether any period of limitation governed an application under Section 33(c)(2) of Industrial Disputes Act, 1947. The High Court had taken the view agreeing with the Labour Court that Article 137 of the Limitation Act, 1963 would govern such applications. Reversing that view it was held that Labour Court exercising powers under Section 33(c)(2) of Industrial Disputes Act may be acting as quasi judicial authority or even a court but as it was not a civil court contemplated by the Civil Procedure Code, Article 137 of the schedule to the Limitation Act could not get attracted. Bhargava, J. speaking for this Court held that Article 137 of the Limitation Act, 1963 governs only applications presented to courts under the Civil and Criminal Procedure Codes. The use of the word 'other' in the first column of the article giving the description of the application as 'any other application for which no period of limitation is provided elsewhere in this decision', indicates that the Legislature wanted to make it clear that the interpretation put by this Court in Mulchand & Co. v. Jawahar Mills 1953 SCR 351 and Bombay Gas Co. v. Gopal Bhiva 1964 (3) SCR 709, 722-723 on Article 181 of the 1908-Act on the basis of ejusdem generis should be applied to Article 137 of 1963-Act also, the language of which, is only slightly different from that of Article 181 of the 1908-Act. That is, in interpreting Articles 137 of the 1963-Act regard must be had to the provisions contained in the earlier articles. These articles refer to applications under the Code of Civil Procedure, except in two cases of applications under Arbitration Act, in two cases of applications under the Code of Criminal Procedure. This court in Mulchand & Co. Ltd. v. Jawahar Mills (supra) case held that the reference to applications under the Arbitration Act had no effect on the interpretation of Article 181 of the 1908-Act and that, that article applied only to applications under the Code of Civil Procedure. On the same principle, the further alteration made in the articles in 1963-Act containing reference to applications under the Code of Criminal Procedure could not alter the scope of Article 137 of the 1963-Act. Moreover even the applications under the Arbitration Act were to be presented to courts whose proceedings are governed by the Code of Civil Procedure. The further amendment including applications governed by the Criminal Procedure Code still shows that the applications must be to courts. The alterations in the 1963-Act, namely, the inclusion of the words 'other proceedings' in the long title to the 1963-Act, the omission of the preamble and change in the definition so as to include 'petition' in word 'application', do not show an intention to make Article 137 applicable to proceedings before bodies other than courts such as quasi-judicial tribunals and executive bodies.'
31. It is abundantly clear from the above extracted proposition of law laid down by the Apex Court that the provisions of the Limitation Act, 1963 will not govern the application filed before the Appellate Board under the provisions of Sections 46 and 56 of the Act. Based on the observation of this Board, we hold that the provisions of the Limitation Act, 1963 will not govern the application filed under Sections 46 and 56 of the Act before this Board and hold that the application before us is not barred by limitation.
32. The other issue is whether the applicant is an aggrieved person. The House of Lords in the matter of Powell's Trade Mark 1894 RPC (11) 4 defined aggrieved person as under:
although they were no doubt inserted to prevent officious interference by those who had no interest at all in the register being correct and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, in as much as it is a public mischief that should remain upon the register a mark which ought not to be there and by which many persons may be affected, nevertheless, would not be willing to enter upon the risk and expense of litigation.
Whenever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade mark and wherever the trade mark, if remaining on the register would or might limit the legal rights of the applicant so that by reason of the existence of the entry of the register he could not lawfully do that which, but for the existence of the mark upon the register, he could lawfully do, it appears to me, he has a locus standi to be heard as a person aggrieved.
33. The issue as to whether the applicant is to be considered as a person aggrieved it should be seen how the applicant's interest is affected by the first respondent's mark remaining on the register. Here in the instant case it is seen that the first respondents have been using the trade mark 'BIG BABOL' since the year 1979 in Italy and in India 1981 and only in 1998 had issued cease and desist notice to the applicants. It is also to be noticed that the applicants themselves have admitted that they are using the trade mark 'BIG BUBBLE' since 1989 which is subsequent to that of first respondents. We are of the view that it is for the applicant to prove that if the mark is allowed to continue on the register, it would affect their rights. In fact, it is seen that after a cease and desist notice was issued, the applicants have only initiated a suit against the first respondents. It is, therefore, clear that the applicants were not facing any legal threat and so cannot be said to be an aggrieved person.
34. We shall next discuss the issue that registration has been obtained in contravention of the provisions of Sections 9 and 11 of the Act. The trade mark 'BIG BABOL' has been in use since 1979 in Italy and in India since 1981. The trade mark has acquired distinctiveness by use and reputation and was thus registered. The rival marks 'BIG BUBBLE' and 'BIG BABOL' being deceptively and phonetically similar, the possibility of confusion and deception was always there. Here again the onus lies on the applicant to prove that if the mark is allowed to continue would cause confusion among the public. The applicant has not filed any cogent evidence to prove the same. The objection of the applicant in this regard hence does not sustain.
35. The other ground for removal of the mark is that the registration has been obtained by fraud without giving any particulars of fraud. This contention of fraud is also rejected as no evidence has been filed to say that the registration has been obtained by fraud. The applicants also pleaded that the mark has got to be removed on the ground of non-use for a period of 5 years and one month on the date of application for rectification. The plea of non use does not lie in the instant case. The admitted fact from the pleadings in the application is that a legal notice was issued in April, 1998, a suit filed in September, 1998 and the present application for rectification filed in November, 1998. The plea that the first respondent was not using the trade mark is meaningless as a suit for injunction restraining the first respondent from using the trade mark 'BIG BABOL' was filed just two months before the application for rectification. So the plea of non-use and registration obtained by fraud fall to ground.
36. The first respondent forcefully argued that the impugned trade mark 'BIG BABOL' was registered as early as 1981 and was renewed twice in 1988 and 1995 and had thus become valid and conclusive. We agree with the argument of the first respondents that the trade mark has become conclusive as the applicants have not proved that the registration has been obtained by fraud or the registration has been in contravention of Section 11 of the Act or the trade mark was not distinctive of the goods.
37. The mark has thus been in use before the application for registration was filed and had been in use even after the grant of registration till the presentation of the present application and hence the plea that there has been no use of the trade mark by the first respondent also fails.
38. The application for registration of the impugned mark was filed on 27.11.1981 and the registration certificate was issued on 15.07.1988. The application for rectification has been filed in the year 1998. Taking the fact that the date of application for registration i.e. 1981 as the date of registration as per Section 23 of the Act, the mark has been on the register for a period of 17 years as on the date of application for rectification. In such circumstances, we are not inclined to allow the application for rectification by expunging or removing the mark from the Register causing unnecessary hardship and loss to the first respondent.
39. Consequently the application is devoid of merits and is dismissed. However there shall be no order as to costs.