Indian Kanoon - Search engine for Indian Law

12. The defendants have pleaded that publication of the calendar under the name and style of "Kalnirnaya" has been the exclusive domain of the defendants since the year 1972. The defendants have pleaded that on 18.01.1977, the defendants applied for and obtained registration of the composite trade mark interalia containing the word KAL NIRNAY in respect of panchangs, books, periodicals and the calendars under no. 322232 in Class 16. However, at the time of registration of the composite trade mark, on the advice of the Registrar, the defendants had disclaimed the expression "Kalnirnaya" since the defendants did not lead evidence of the user and acquired distinctiveness of the said trade mark. In para 7 of the WS, the defendants have stated that they subsequently submitted fresh application for registration of the trade mark without disclaimer of the word and the said application is pending with the registry. The defendants have further stated that disclaimer of the word in the first registration does not take away common law right of the defendants to the exclusive use of the word "Kalnirnaya".

16. As per aforesaid judgments, it is well settled that registration is irrelevant in case of passing off and a prior user of trade mark is entitled to maintain an action against the subsequent user of identical trade mark including registered user thereof.

17. However, the plea which has been raised by the defendants is that the word "Kalnirnaya" denotes meaning Time's Decision i.e. foretelling future on the basis of planetary configuration and position and, therefore, the defendants cannot claim exclusive right and title in he said word or claim to be the registered proprietor of the same. In para 7 of the plaint, he plaintiff has stated that the defendants applied for registration of the said mark but the Registrar of Trade Marks refused the registration and the only mark registered in favour of the defendants was wheel with spikes and the word "Kalnirnaya". However, the word "Kalnirnaya" had to be disclaimed by the defendants as it was provided in the registration that registration shall give no right to the defendants to the exclusive use of the word "Kalnirnaya". In para 7 of WS, the defendants have stated that on 18.01.1977, the defendants applied for and obtained the registration of composite trade mark containing the word "Kalnirnaya" in respect of panchangs, books, periodicals and the calendars under no. 322232 in Class 16 and on the advice of the Registrar, defendants had to disclaim the expression "Kalnirnaya". In para 8 of the WS, the defendants have admitted that the literal meaning of word "Kal" denotes time and the word "Nirnaya" denotes decision and literally meaning of the word "Kalnirnaya" denotes "Time's Decision" i.e. foretelling future on the basis of planetary configuration and position.

18. The defendants have not filed the certificate of registration of his trade mark in the present file. In the examination-in- chief, DW-1 stated that he has filed the documents in another suit bearing no. 175/08 - Sumangal Calendar Co. vs. Ramesh Chandra Gupta & Co., and, therefore, some documents have been inadvertently exhibited in his affidavit Ex.DW1/A. In para 11 of the affidavit Ex.DW1/A, DW-1 has stated that it is a composite trade mark interalia containing the word "Kalnirnaya" which has been registered under no. 322232 in class 16. However, at the time of considering the application of the defendants for registration of the said trade mark, the Registrar had raised the objection to the registrability of the said composite mark under Section 9 of the Act on the ground that the word "Kalnirnaya" was not considered to be prima facie distinctive and as the defendants did not lead evidence of user and acquired distinctiveness of the said trade mark for lack of proper legal advice, the Registrar asked defendant no. 1 to disclaim the expression "Kalnirnaya" while accepting the defendant no. 1's said trade mark for registration and accordingly defendant no. 1 agreed to the condition of disclaimer of the said word. As per para 11 of the affidavit Ex.DW1/A, the trade mark which has been registered of defendant no. 1 is mark consisting of wheel and spikes and the word "Kalnirnaya". In para 11 of the affidavit Ex.DW1/A, the defendant itself has admitted that the condition of registration of aforesaid mark is subject to disclaimer of the expression "Kalnirnaya".