Madras High Court
Woodlands Travels And Agencies And Anr. vs K. Vasudeva Rao And Anr. on 20 March, 2002
Equivalent citations: 2003(27)PTC352(MAD)
JUDGMENT E. Padmanabhan, J.
1. The present original petition has been filed under Sections 9, 11, 18, 32, 46 and 56 read with Sections 107 and 108 of The Trade and Merchandise Act, 1958 in respect of registration of trademark No. 445603 registered in the name of M/s. Shri K. Vasudeva Rao and K.V. Geetha Rao and trading as "WOODY'S" under class 3D in Part-B of the register.
2. This Court ordered notice on 23.11.1992 and the respondents appeared and filed their counter and opposed the application. The parties have let in evidence, both oral and documentary and, thereafter, the matter was heard.
3. According to the applicant, the respondents are jointly doing business at Bangalore. The respondents instituted O.S. No. 10716 of 1991 on the file of the Additional City Civil Judge, Bangalore, against the first petitioner under Sections 105 and 106 of The Trade and Merchandise Act, 1958 and also under Sections 55, 56, 60 and 62 of the Act for a permanent injunction restraining the first respondent from infringing the respondents trademark the trading style of "WOODY'S". Relief of 'permanent injunction was also sought for to forbear the defendant from passing off the food stuffs under the trade mark and trading style "WOODY'S" and for other reliefs. Since the mark has been registered at Madras, the validity or invalidity of the registration could be questioned and determined only before this Court and, hence, the present application for rectification is filed under Sections 107 and 111 of the Act. The Addl. City Civil Court, Bangalore, has granted injunction forbearing the petitioners from using the said trademark and the petitioners are contesting the said proceedings of injunction.
4. The factual matrix could be summarised here. On 14.8.1968, P.R. Narahari Rao and P.R. Balakrishnan, both sons of P.N. Ramakrishnan, residing at 23/346, High School Road, Ernakulam, formed themselves into a partnership firm under the name and style of "Woodlands Travels and Agencies". It is a registered partnership firm. There have been number of the changes in the constitution of the firm. The partners leased out its business to the 2nd petitioner including the trade name and, therefore, the present petition is being filed jointly. The first petitioner started an ice cream parlour on 13.2.1989 in the name and style of "WOODY'S" at Durbar Hall Road, Cochin, to sell Joy ice creams and cool drinks. The first petitioner honestly adopted the said name to indicate that the ice cream parlour also belonged to "Woodlands Travels & Agencies". The petitioner's ice cream parlour became very popular in Ernakulam, within a very short period. It earned a good reputation and earned good business in Ernakulam.
5. In the said suit, O.S. No. 14716 of 1991, the respondent alleged that they started a restaurant under the name "WOODY'S" on 17.11.1985 at Commercial Street, Bangalore. They have also stated that they have applied for registration of the trademark "WOODY'S" in 1985 and the Registrar of Trademark issued registration certificate on 15.10.1991 in part-B of the register and in Class-30 in respect of all kinds of cereals and cereal preparations, tea, coffee, cocos, bread, biscuits, ice creams, confectionary, chocolates and spices. In the said suit, the respondents alleged that the petitioner's ice cream parlour "WOODY'S" in Durbar Hall Road, Ernakulam is causing serious confusion in the market. Thus there is an infringement of their trademark and, hence, the said suit.
6. The respondents further claim that they have been using the said mark "WOODY'S" since 1985 in respect of all the goods found in Class-30. The claim of the respondents in this respect is false. If the mark was in use at the time of filing of application, the applicant, who has submitted an application for registration must satisfy the Trademarks Tribunal, if they had any doubt that the mark by its use has a clear distinctiveness and that he has become a proprietor by the use of the mark, besides he should also prove the distinctiveness of the mark applied for registration over the territories for which he asserts his exclusive right. The respondents have made a false statement before the Registrar of trademarks as "proposed to use" and obtained registration.
7. The mark sought for registration, Trademark No. 455603 relate to the goods under Class 30 is inherently incapable of registration either in its capacity as "proposed to use" or in its capacity as a "mark in use". The mark had not attained distinctiveness over India for the use of the mark much less for a few days in respect of all goods.
8. The respondents were selling ice creams to various companies in their restaurant "WOODY'S". They were also making Coffee and Tea out of coffee and tea powder of different companies. The respondents never used the restaurant's name in respect of any of the goods. Further; it is impossible for the respondents to use or inscribe the name over liquid coffee, tea, cocoa, etc., so also on other goods for which registration is sought. The respondents impugned name is only a service mark, which is not registerable under the Trade and Merchandise Marks Act. The respondents have misled the Registry to believe that they have proposed to use the mark as a trademark and get the mark registered. It is a deliberate and calculated attempt to mislead the Registry to obtain registration. The respondent has no bona fide intention to use the mark applied for in all the goods contained in Class 30. Further, the respondents have not used the mark applied for registration on all the goods specified under the Trademark Application No. 455603 till date as required under the Act. The expression "use of the mark" applied for registration must have been used or capable of being used upon the goods as defined under the Act. Since the mark has not been used upon the goods continuously for over 5 years and 1 month, the mark is not capable of being used upon the goods sought for registration. Hence, the mark is liable to be removed from the register.
9. The respondents are not manufacturing any ice cream or any of the items mentioned under Class 30, but they are purchasing either from open market for selling in their restaurant in an unpacked, unbranded form. The trademark claimed by the respondent is not distinctive to what is sold in the restaurant of the respondents. Under Section 9(5)(a) of the Trade and Merchandise Marks Act, it should be inherently capable of being distinguished. The respondents has adopted and used only as a service mark and is not entitled for registration of the mark either in Part-A or Part-B. The respondents had made false representation and obtained registration of all goods under Class 30 for all over India. The word "WOODY'S" is the surname of a very famous comedy actor "Woody Alien" and it is also the surname of a cartoon character in "Woody Woodpecker". The youngsters who frequent the ice cream parlour are familiar with this name. The respondents, therefore, cannot claim any right as proprietors of a surname.
10. The respondent though had an opportunity to correct the application did not correct and merely indicated a proposed user. The respondents are carrying on business only in Karnataka at the time of filing the trademark application and for a few days only. The crucial date for determining the question of distinctiveness of the mark applied for is the date of application for registration, viz., 18.11.85. On 18.11.85 the respondents have not acquired any distinctiveness by their alleged user of the mark "WOODY'S" upon the alleged goods. The respondents are not entitled to claim exclusive right over the said mark all over India by their use for a few days. The respondents have no legal right to assert their exclusive right all over India in respect of the impugned mark since they have not used it as a mark anywhere outside Bangalore, even though they made the application for registration on 18.11.85. The respondents have contravened Sections 9, 11, 18, 32 and 46 of the Act and, hence, the mark is liable to be rectified. In the circumstances, the applicant has sought for removal of the mark totally from Part-B of the register in Class 30 of the Trademark No. 455603.
11. In the counter filed by the respondents, it is contended that the above petition is solely mala fide and not maintainable, besides being without any substance. The validity of registration of the mark cannot be questioned at this juncture as more than seven years have lapsed from the date or registration in terms of Section 32 of the Trade and Merchandise Marks Act, 1958. Section 32 provides that original registration of a trademark shall, after the expiration of seven years from the date of such registration be taken to be valid in all respects unless it is proved that the original registration was obtained by fraud or the trademark was registered in contravention of Section 11 or it offends against the provisions of that Section on the date of commencement of the proceedings or that the trademark was not at the commencement of the proceedings distinctive of the goods of the registered proprietor. None of the provisions of Section 32 have been made out to apply for rectification in the present case. There is no question of any fraud played by the respondents, while applying for registration of the trademark. The word "WOODY'S" was coined by the respondents by their family business in the name and style of "Woodlands" for several years. The respondents have only conceived, adopted and coined the said word "WOODY'S" when they wanted to establish their business at Commercial Street, Bangalore. The mark has become very popular and the respondents have also obtained the copyright registration along with the word "W.WOODY'S". Section 11 of the Act has not been contravened nor it could be said that the trademark is not distinctive of the goods of the registered proprietors.
12. The petition for cancellation is motivated by jealousy. The respondents have already instituted two suits, which are pending, seeking for relief of permanent injunction against the petitioners herein from in any manner infringing and passing off the respondents trademark "W.WOODY'S" and the copyright over the said mark. Interim injunction was also granted against the said petitioners. The order of injunction was in force till 18.3.1993, on which date the District Court dismissed the said suit since the suit was wrongly filed by the partnership firm, which was not a registered partnership on the date of filing. The respondent filed a later suit on 22.3.1993 within four days after the dismissal and obtained injunction restraining the petitioners from using the word "W.WOODY'S".
13. In the light of the interim injunction order passed in the first suit, the petitioners complied with the same and started using the mark "TITBITS". The petitioners cannot start using the infringing mark "W.WOODY'S" during the pendency of the present suit. Therefore, a contempt application is-filed and the same is being heard. The conduct of the petitioners are illegal, high-handed and they have no locus standi worth the name to maintain the present petition for rectification.
14. The present original petition has been filed as a counter blast to the suit. The petitioners have dishonestly adopted the trademark "W.WOODY'S" and have virtually copied the well established registered trademark and copyright of the respondents. The petitioners have high-handedly copied the well established trademark "W.WOODY'S" belonging to the respondents. The respondents are contemplating to open several branches in various parts of the country and have been very vigilant in safeguarding their rights in the said trademark and copyright. When a third party commenced restaurant at Ahmedabad, the respondent immediately initiated legal proceedings and the said party at Ahmedabad ultimately submitted to a decree. When some others started at Madras in G.P. Ramasamy Iyer Road under the similar name, the respondents initiated legal proceedings against them and the said party also changed the name of the restaurant as "Woodcrafts". The respondents reserve the right to claim very heavy damages.
15. The respondents are also making very elaborate arrangements to open a restaurant at Melbourne, Australia, and other countries and they have spent several lakhs of rupees in promoting their business. The respondents have also registered their mark in Australia, Singapore and United Kingdom and they have also applied for registration in United States of America. Whoever visits Bangalore will not miss to have breakfast or tiffin at the respondents restaurant. The respondents are also selling cool drinks, ice cream, etc., and they are using the trademark "W.WOODY'S" for the ice cream parlour and the petitioners' claim to the contra are false.
16. It is not necessary to prove the distinctiveness as sought to be contended since it is a registered mark. After applying for registration of the trademark "WOODY'S", the respondents made a through search of the records of the registers of trademarks, whether anyone else have applied for a similar mark and after having found that nobody has applied for identical worded "WOODY'S" or registered such a trademark, the respondents being the first user and adopter of the said mark, applied for the same. The respondents bill carried the name "WOODY'S", besides the name board bears the name "W.WOODY'S". The question of applicability of the use of the Act for non-use of the trademark applied for over five years and one months is again meaningless as the petitioners have not been properly educated on the Trademark Law and the respondents have to thank themselves for the same. There is no question of Comedy Actor Woody Alien coming to India nor the cartoon character in the Disney World called "Woody Woodpecker" is adopted by the respondents and coined from the word derived from the respondents family business "Woodlands".
17. It is incorrect to state that the respondents are carrying on business only in Karnataka and registered proprietor will commence its business at one place and afterwards broaden its business by opening various branches elsewhere. The respondents have spent enormous monies for opening a branch in Australia apart from other Metropolitan cities in India, (i.e.) Delhi, Bombay and Himachal Pradesh. It is incorrect to state that the respondents have contravened Sections 9, 11, 16, 32 and 46 of the Act. The petitioners are not entitled to any relief in this petition as the mark has been validly registered and a valid right has accrued to the respondents.
18. The following issues have been framed by this Court on 17.12.1993 :-
"(i) Whether the 1st petitioner a registered partnership firm registered under the Partnership Act in the name of Woodlands Travels and Agencies ?
(ii) Whether the respondents commence the use of the name "WOODY'S" since 17.11.1985 on all the goods for which registration granted ?
(iii) Whether the registration obtained by the respondents by suppression of fact and by fraud ?
(iv) Has the respondent acquired distinctiveness for the Trademark "WOODY" in respect of all goods ?
(v) Had the respondents been using the name "WOODY'S" as Trademark or Service mark at the time of filing the application ?
(vi) Had the respondents not used the trademark on all goods for which registration granted for past 5 years and one months under Section 46 of the Act?
(vii) Did the respondents had bona fide intention to use the mark in respect of all the goods for which registration granted at the time of filing application ?
(viii) Did the respondents manufacture any goods for which registration granted ?
(ix) Can the respondents claim distinctiveness of the mark without using the name in the course of manufacture by merely selling someone's goods ?
(x) Does the mark "Woody's" a surname or a distinctive trademark at the time of filing the application eligible for registration under Section 9 of the Act?
(xi) Had the respondents used the mark "Woody's" upon all the goods for which registration granted ?
(xii) Are the respondents entitled for its retention of the mark for all over India without using the same ?
(xiii) Does the registered trademark No. 445603 in Class 30 in Part B liable to be rectified ?
(xiv) Had not the respondents trademark acquired distinctiveness and the validity of it questioned in terms of Section 32 under the Trade and Merchandise Marks Act, 1958 ?
(xv) To what relief are the petitioners entitled to ?"
19. Though very many issues have been framed, ultimately the counsel for the petitioners restricted her contention to the following issues and it may not be necessary to answer all the issues. The issues that arise for consideration are re-framed as hereunder :-
"i) Whether the present original petition is maintainable ?
ii) Whether there is any violation in the registration of the Trademark "W.WOODY'S" by the respondents as claimed by the petitioners.?
iii) Whether the respondents mark "W.WOODY'S" has distinctiveness and being adopted by the respondents as a trademark ?
iv) Whether the Register of Trademark is ordered to be rectified ?
v) Whether the present original petition is liable to be dismissed in view of the specific provision of Section 32 of the Trade and Merchandise Act, 1958 ?
vi) To what relief, if any ?"
So many issues do not arise in the light of relief prayed for. At any rate all the points could be considered together.
20. The petitioner has examined P.R. Dinesh as P.W. 1. In his evidence, P.W. 1 has deposed that the first petitioner firm, M/s. Woodlands Travels and Agencies is a registered partnership firm since 1968 constituted by four brothers. The 2nd petitioner firm is M/s. Woody Hotels. The first petitioner started an ice cream parlour in Durbar Hall and it is named "Woody's Ice Cream Parlour" during the year 1989. Ice cream and cool drinks were sold in the parlour. It was the only ice cream parlour in the neighbourhood. Ex. P-1 is the plaint in respect of the suit instituted by the respondent in O.S. No. 10716 of 1991. Ex. P-4 is the certified copy of the petition filed by the respondent seeking interim injunction. Ex. P-5 is the certified copy of the affidavit. Ex. P-6 is the certified copy of the affidavit filed by the respondent in respect of the petition seeking for amendment of the plaint. Ex. P-7 is the certified copy of the counter filed in the intermediary application. Ex. P-8 is the original certificate dated 18.3.1992 of the registration of the trademark in respect of Registration No. 445603. It is part and parcel of Part-B Class 30.
21. It is further deposed that this registration was in respect of the respondents and deals with all kinds of cereals and cereal preparations, tea, coffee, cocoa, bread, biscuits, ice creams, pastries, confectionery, chocolates and spices, all included in Clause 30. The registration is valid for seven years. The registration of trademark certificate would show that the disclaimer attached would substantially show that the trademark does not confer any exclusive right. Ex. P-10 is the copy of the order based on the trademark register made by the respondent for the registration under Part-A as it is a surname and not distinctive. The respondents have stated they proposed to use the said trademark as seen from Ex. P-9 and it is not stated when the respondents have acquired a distinctiveness due to constant use. The mark claimed by the respondents is not capable of being registered under Clause 30 of the Trademarks Act. The mark cannot acquire distinctiveness by using it for just, a few days. The goods specified in Clause 30 of the Trademarks Act is not manufactured by the respondents.
22. It is adopted by P.W. 1 that the mark "WOODY'S" is a service mark and not a trademark. The respondents are supplying in the restaurant all the normal food like Dosa, Chappati, etc., as supplied by all the restaurants. They are also supplying ice creams manufactured by other companies. None of the goods supplied by the respondents in the restaurant are distinctive or marketed by the name "WOODY'S". The respondents did not use the mark "WOODY'S" for five years and one month prior to the application for registration. The petitioners are using the mark "WOODY'S" because it is a short form of "Woodlands".
23. The very same P.W. 1 has further deposed that the respondents are only carrying on restaurant business and purchasing goods like ice creams from others and selling them in their restaurant. The respondents are not manufacturing any products or goods mentioned in Ex. P-9. The present rectification was admitted on 17.11.1992. The respondents have not used the mark prior to the filing of the rectification on 17.11.1992. The mark "WOODY'S" claimed by the respondents is a surname and this is globally used as a surname only. The respondents have no bona fide intention of using the mark in any of the goods mentioned under Ex. P-9.
24. P.W. 1 in cross-examination by the respondents, admitted that the application, Ex. P-9 has been submitted on 15.11.1985 and the same has been received by the Registry on 18.11.1985. It is further admitted that it may be true that the respondents have prepared application under Ex. P-9 on 15.11.1985 on which date the mark was a proposed mark and on 18.11.1985 the said application was submitted. It is true that the respondents are selling their goods by printing the trademark "WOODY'S" on the carry bags. It is admitted that the respondents were carrying on restaurant business at that time. It is correct to state that the respondents have been carrying on business in the trade name "WOODY'S" from 17.11.1985. It is admitted that P.W. 1 is not aware the name "WOODY'S" as used is a surname in India. Ex. P-10 is not a registered report rejecting the application made by the respondents. The trademark number given on the first page and on the top of the 2nd page are one and the same. It is not true to say that the respondents application for registration has not been rejected. It is admitted that the respondents have not committed fraud. It is false to state that the petitioner had made allegations against the respondents without giving substantial proof only to overcome Section 32 of the Act. Ex. P-10 is an order of the Registrar of Trademarks. P.W. 1 could not find any document indicating that the respondents have pursued further and have filed explanation in the order in Ex. P-10.
25. P.W. 1 in the re-cross-examination has deposed that the respondents have been using the mark from 17.11.1985, but he does not know personally about it.
26. On a perusal of the evidence of P.W. 1 it is rightly pointed out by Mr. Prabhakara Reddy, that the entire case set out in the original petition has been given up by the very petitioners. It is pointed out by Ms. Gladys Daniel that the respondents have not let in any evidence. On the facts of the case, it may not be necessary for the respondents to let in any evidence as the very evidence of P.W. 1, examined by the petitioner, in no way advances the Case of the petitioner for the rectification applied for being ordered and in fact the admission of P.W. 1 is fatal to the case of the petitioners.
27. The very petition itself bristles with vagueness, bereft of details and bereft of allegation as to how the respondent has violated the provisions of the Act in the registration of the Trademark. The registration has been ordered by the Registrar by following the procedure prescribed. There is no doubt that the registration has been secured by the respondents validly and the petitioners have not established any illegality in such registration.
28. Except saying that the respondents have not used the mark continuously or that the respondent did not use the mark for a period of five years and one month, there is no evidence at all to substantiate such a claim. Such a claim, it is pointed out by the counsel for the respondent is false to the knowledge of the petitioners and has not been substantiated, besides P.W. 1 has very eloquently admitted that the respondents are carrying on business continuously.
29. Except saying that the respondents have committed fraud, there is no material or evidence to support the same, nor acceptable material has been placed by the petitioner to substantiate the plea. It is also stated that the respondents have no bona fide intention to use the mark. Here again, there is no evidence nor the petitioner could seek an inference against his admission. The respondents have been using the mark continuously from the date of its registration and the petitioner had not produced any material in this respect.
30. It is rightly pointed out by the learned counsel for the respondent that legal proceedings relating to a trademark registered under Part-A of the register including application under Section 56, the original registration of the trademark was after the expiry of seven years, date of registration would be taken to be valid in all respects unless it is proved that the original registration was obtained by fraud or the registration has been made in contravention of the provisions of Section 11 or offends against the provisions of that Section on the date of commencement of the proceedings or trademark was not used at the commencement of the proceeding on the goods of the registered proprietor. The present mark has been registered under Part-B. Therefore, Section 32 will have no application.
31. The present original petition is substantially under Chapter VII and in particular under Section 56 of the Act, which provides for rectification and correction of the register. It is well settled that the power to rectify is discretionary. The jurisdiction conferred on the High Court could be invoked firstly when an entry has been made in the register without sufficient cause or secondly in a case in which entry was initially properly made, while it is wrongly remaining in the register by reason of something that has subsequently occurred. Sub-section (6) of Section 56 provides that the power to rectify the register conferred by Section 56 shall include the power to remove a trademark registered under Part-A of the register to Part-B of the register as well.
32. In respect of an application for rectification, the onus to establish that the proprietors of trademark has no bona fide intention to use the trademark of the applicant, so also in respect of an application for rectification on the ground that certain provisions were violated while registration. Here again burden is on the person who alleges contravention. The petitioner has miserably failed to make out any one of the grounds warranting rectification.
33. On a consideration of the entire contents of the original petition, in particular to the pleadings as well as the evidence of P.W. 1, and in particular to his admission, this Court holds that no case has been made out to rectify the register as applied for or issue a direction to delete the respondents mark "W.WOODY'S". The petitioners have not made out as to which are the provisions, which have been violated while registration of the respondents' mark, has neither been specified not been pleaded nor been established. The burden is on the petitioners, which the petitioners have miserably failed to establish.
34. Much comment was made about the application, wherein the respondents' have set out that the proposed user of the mark and the date of the application as well as the submission of the application. I do not find any impropriety or illegality in this respect, in that, the application has been filled up on one day and on a later day it has been filed. It has to be read conjointly and this Court holds that the proposed user has been pleaded from the date of presentation of the petition and, thereafter, the respondents have been using the same. P.W. 1, while in the witness stand admitted that the respondents have been using the mark continuously. In fact, P.W. 1 has also admitted that the mark is a distinctive mark.
35. The entry in respect of which the respondents have applied for would denote and show that the respondents have been using the mark in respect of its products, which is being sold in its branch or hotel, "W.WOODY'S". It is not as if it is required to be the manufacturer and market as such in the nature of entries. The learned counsel for the petitioner is unable to point out any suppression of material fact of alleged false statements or claim by the respondents at the time of registration of the trademark. In the absence of such material and when P.W. 1 has not deposed anything in this respect, this Court is unable to sustain the contention advanced by the counsel for the petitioners in this respect. The admission that the petitioners started the business of travels or tourist operator, will not support their case.
36. It is admitted that the respondents are running a restaurant "W.WOODY'S", where the mark is being used even according to the evidence of P.W. 1 for sale of those items in packers or in bags and the commercial name "W.WOODY'S" is exhibited inside and outside the shop and everywhere. In the nature of commodities in respect of which goods are used, it cannot be stated that the respondents ceased to use or they were using intermittently or they have not used the mark for five years and one month as sought to be contended. It is assertion of the respondents that they have been continuously using the mark not only at Bangalore but also in other places including in various cities and foreign countries as well. It is not the evidence of P.W. 1 that the respondents are not using the mark "W.WOODY'S" or that they cease to use or that the respondents are not at all using. In fact in the evidence of P.W. 1, P.W. 1 has admitted that the respondents are using the mark and he had seen it. Therefore, the plea that the respondents are not using the mark cannot be sustained.
37. In the circumstances, this Court holds that none of the points raised by the petitioner to sustain the relief has been made out. Per contra, the respondents have been continuously using the mark from the date of application and it is the true user and it is' not an intermittent user, but the respondents continue to use the said mark "W.WOODY'S" on its products, in its shop, in its restaurant and the boxes or other cartons, in which the items listed out in entry 39 is marketed or sold in the respondents place of business. Thus in any view of the matter, this Court holds that no case has been made out for interference.
38. In the circumstances, all the points framed are answered against the petitioners and in favour of the respondents. The Original Petition is dismissed, but without costs.