The existence is outcome of continuous process of Struggle. A baby is outcome of fight amongst hundreds of thousands of brother sperms in penetrating one ovum. In ancient days man struggled against the nature in order to survive. Changing time witnessed the fight amongst the feudal society in order to advance their respective interest on the land. With Advent of nuclear era and advent of global economy ,concept of direct war amongst the nations seems to be a distant possibility and the same has been replaced by the battle amongst the multinational corporations/companies on economic front. Modern days, the multinational companies are trying to extend their economic interest in as much countries as possible.

A civilized society guarantees the fairness in battle. Providing equal opportunities to all the contesting parties is one of the prime objectives of the modern society. While writing this article ,the mythological story of famous battle between the giant Elephant and the Crocodile ( as mentioned in the Hindu scriptures),flickers across my mind.

“Once upon a time there was a giant Elephant. His mere glimpse was sufficient to instill feeling of fear amongst the small animals. Once the Elephant went to the bank of the Ganga, in order to quench his thirst. Inside the water there was a Crocodile, lying in waiting for a prey. As soon as the Elephant entered into the water, the Crocodile caught one of his legs and started to drag him into the water. As tug of war progressed, the Crocodile was prevailing over the Elephant and for a moment life of Elephant was seemed to come to an end. Getting panicky, the Elephant fervently began to pray Lord Vishnu (The Hindu God) and Lord Vishnu descended upon Earth in order to rescue the life of Elephant by killing the Crocodile." The Crocodile prevailed over the Elephant not because he was more powerful than the Elephant but because of the fact that the battle was fought inside the water, which was more suitable to the Crocodile . Place of battle plays decisive role in its outcome and present story highlights the same. Had the battle would have been fought on the land , there would have been different story. "

In modern civil disputes, the concept of territorial jurisdiction draws its origin from the fact that defending party should not be put to inconvenience at the instance of another party. The idea is to provide fair opportunity to both the party. Today territorial jurisdiction plays important role in outcome of civil disputes amongst the parties. This article proposes to deal with the significance of trade mark application vis-à-vis territorial jurisdiction in an action of Trade Mark Infringement and an action of Passing off especially in light of recent Judgment passed by the Hon'ble Apex Court in DHODHA HOUSE VS. S.K.MAINGI as reported in 2006(32) PTC 1 (SC) and different interpretations given thereto by the Hon’ble High Courts.

CAUSE OF ACTION.

Sections 16-20 of Code of Civil Procedure deal with the territorial jurisdiction in civil court. Section 16-18 of C.P.C deal with territorial jurisdiction in suits pertaining to immovable property. Section 19 of C.P.C deals with territorial jurisdiction in suit pertaining to movable property. Section 20 of C.P.C deals with all other cases not covered by the aforesaid provisions of C.P.C. Indisputably suit for Infringement of trade mark/Passing off would be governed by Section 20 of C.P.C and according to which all such suit may be filed ,at the option of plaintiff , in any of the following court viz:-

(a) Within whose local jurisdiction ,the cause of action , wholly or in part arises or

(b) Within whose local jurisdiction the defendant resides or carries on business or personally works for gain.

To appreciate the significance of trade mark application filed either by the plaintiff or the by the defendant, in conferring the jurisdiction of the court, it is necessary to understand the term “cause of action” as application for filing of registration of trade mark, would be covered under the Section 20 (c) of C.P.C, which says that the suits can be filed at the places where the cause of action, wholly or in part arises.

The term cause of action has not been defined in C.P.C however this term can be understood with the help of interpretations given thereto by various courts.

A Cause of action means every fact, which if traversed, it would be necessary for the plaintiff to prove in order to support his right to a judgment of the court. AIR 1949 PC 78(at 86),AIR 1989 SC 1239.

It is a action which gives occasion for and forms the foundation of the Suit. AIR 1970 SC 1059. Cause of action is bundle of essential facts which are necessary for the plaintiff to prove before he can succeed in the suit. (1978) 2 SCC 91(Para10). Cause of action means every fact which it would be necessary for the plaintiff to prove, if traversed in order to support his right to the judgment of the court. It doesn’t comprise every piece of evidence which is necessary to prove each fact but every fact but every fact which is necessary to be proved .Everything which, if not proved, gives the defendant an Immediate right to judgment must be part of cause of action. Read Vs Brown (1888) 22 Q.B.D 128. From the aforesaid interpretations given by various courts it can be said that cause of action means every fact which is necessary for the plaintiff to prove to support his right to the judgment of the court and everything which if not proved, gives the immediate right to the defendant for the judgment.

WHAT FACTS ARE NECESSARY TO BE PROVED IN AN ACTION OF PASSING OFF

In Trade Mark Act 1999, the term Passing off is nowhere defined, however some guidance can be taken from the interpretation given to the term Passing Off by different courts.

In N.R.Dongre Vs Whirlpool Corporation 1996 (5) SCC 714 case the Hon'ble Apex Court observed: "The concept and principle on which passing off action is grounded is that a man is not to sell his own goods under the pretence that they are the goods of the another man". The Apex court further clearify in Kaviraj Durga Dutt Sharma Vs Navratna Pharmaceutical Laboratories AIR 1965 SC 980. " The use by the defendant of the trade mark of the plaintiff is essential in an action of Passing off". In Ruston & Hornby Ltd Vs Zamindara Engineering Co AIR 1970 SC 1649,the Hon'ble Court observed that " In a passing off action the issue is as follows - Is the defendant is selling his goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's good." In Laxmikant V Patel Vs Chetanbhai Shah AIR 2002 SC 275,The apex Court observed " the law does not permit anyone to carry on his business in such a way as would persuade the customers or client in believing that the goods or services belonging to someone are his or associated therewith. In Ellora Industries Vs Banarasi Dass Gupta AIR 1980 Del 254 the Hon'ble Delhi Court observed as follow " In an action of passing off all that is needs to be proved is that the defendant's Goods are so marked ,made up or described by them as to calculated to mislead ordinary purchasers and to lead them to mistake the defendant's goods for those of the plaintiff's and it is the tendency to mislead or to confuse that forms the gist of passing off action.

In an action of passing off the plaintiff is required to prove (1) Reputation (2) Deception and (3) Damage . P. Narayanan (Para 25.13 ,Vol VI,Page 696).

Section 134 (1) (c) of Trade Marks Act 1999,also helps us in understanding that what are the things/facts, which the plaintiff is not required to establish in an action of passing off. Section 134 (1) (c) of Trade Marks Act 1999 reads as follows:-

"No suit for passing off arising out of use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered ,shall be instituted in any court inferior to a District court having jurisdiction to try the same."

Bare perusal of the above mention section makes it quite clear that an action of passing off has got nothing to With the plaintiff’s Trade Mark being registered or unregistered. Further reading of the section clearly establishes this fact that the cause of action for Passing off arise only by the use of impugned Trade Mark by the defendant. This fact has been confirmed by the various courts.

To appreciate the term use by the defendant of any trade mark, it is necessary to understand the term trade mark, as defined in Trade Mark Act 1999.

Section (zb) of Trade Mark Act 1999, reads as follows:

2(zb)Trade Mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and-

(i) In relation to chapter XII(other than Section 107), a registered trade mark or a mark used in relation to goods or services for the purposes of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and

(ii)In relation to other provisions of this Act , a mark used or proposed to be used in relation to goods or services for the purposes of indicating or so to indicate a connection in the course of trade between the goods or services , as the case may be , and some person having the right, either by way of permitted user ,to use the mark whether with or without ant indication of the identity of that person and includes a certification trade mark or collective mark.

The above mentioned section makes it clear that for a mark, to be qualified as a trade mark, its user; inter-alia has to in the course of trade. In other way the user of the trade mark has to be in the course of trade or a commercial user. It is submitted that a user which does not pertain to user of a mark in the course of trade and/or a commercial user it can never amount to user of a trade mark and by necessary implication the same can never be basis of bringing an action of either Infringement of trade mark or an action of passing off.

From the above discussion, it is quite clear that in an action of passing off, the cause of action can be based on every fact which

(a) establishes tremendous reputation of plaintiff’s trade mark,

(b) proves misrepresentation/user by the defendant in the course of trade, that his good are the goods of the plaintiff, and
(c) pertains to damage occurred to the plaintiff because of impugned activity of the defendant. Every fact which establishes these facts, can be said to form the part of cause of action in an action of passing off.

SIGNIFICANCE OF TRADE MARK APPLICATION IN CREATING JURISDICTION IN AN ACTION OF PASSING OFF.

In para 38 of the Dhodha House case (Supra) the Hon'ble Apex Court, after relying on the Premier distelleries Pvt Ltd Vs Shashi Distilleries cae [2001 PTC 907(Mad)],held that the cause of action in a suit for passing off has nothing to do with the location of Registrar's office or the factum of applying or not applying for registration. In AIR 1991 Karnataka 303 and 2002 ( 25) PTC 704 (Karnataka) , it has been held that registration of trade mark is wholly irrelevant for the action of passing off. In AIR 1978 Delhi 250, the Hon'ble court observed that the registration of the mark or similar mark prior in point of time to user by the plaintiff is irrelevant in an action of passing off.

CONCLUSION: From above discussions it is quite clear that in an action of passing off, the filing of trade mark application either by the plaintiff or by the defendant is totally irrelevant and no cause of action can be based thereon. It is trite to say that cause of action constitutes every fact, which if not proved, gives the defendant an immediate right to judgment. In an action of passing off, every fact which is necessary in establishing goodwill and reputation of the plaintiff’s trade mark can be said to gives accrual of cause of action. Now question is that whether filing the trade mark by the plaintiff, establishes the goodwill and reputation of the plaintiff’s trade mark or not? Answer is no. As the goodwill and reputation of a trade mark can be established only by the commercial user of the same in the market and filing of trade mark application has got nothing to do with commercial user of the same. Thus trade mark application filing by the plaintiff does not give rise to accrual of cause of action in an action of passing off.

More so in an action of passing off, the plaintiff is not required to establish that he is registered proprietor of the trade mark. In the other way it can be said that an action of passing off lies irrespective of this fact that whether the plaintiff is registered proprietor of trade mark or not? It has also been observed by the Apex Court in Corn Products Refining Co Vs Shangrilla Food Products Ltd AIR 1960 SC 142 that preserve of mark in the register doesn’t prove its user at all. This view was supported by various courts AIR 1978 DELHI 250. Thus the factum of plaintiff, being registered proprietor of a trade mark also does not give rise to accrual of cause of action in an action of passing off.

Moreover filing of trade mark application by the defendant doesn’t correspond to defendant's user. In other way filing of trade mark application by the defendant has got nothing to do with the user in the course of trade and by mere filing trade mark application, the defendant is not trying to misrepresent in the course of trade that his goods are the goods of the plaintiff. It is well settled proposition of law that registration is prima facie evidence of the validity and preserve of a mark on the register does not proves the user at all. Hence filing of trade mark application by the defendant and/or registered trade mark of defendant is irrelevant in an action of passing off. In other way it can be said that in an action of passing off, the locus of trade mark office, in no way gives rise to cause of action. The same view has been duly supported by the Apex court in Dhodha House(Supra) Judgment.

With due respect to the Hon'ble Delhi High Court, it is submitted that the in its recent judgment viz: Pfizer Products Inc Vs Rajesh Chopra & others 2006 ( 32) PTC 301 (Del) the Hon’ble court did not perceive the ratio of Dhodha House Judgment in right perspective in as much as in an action of passing off the Hon’ble court relied on the filing of trade mark application.

In a very recent Judgment titled as M/s Parle Products Pvt. Ltd Versus M/s Surya Food 7 Agro Ltd , reported as 2007 (35) PTC 542 (Mad), the Hon’ble Madras High Court observed “ in order to establish his right to an injunction in an action for passing off, it is wholly un necessary for the plaintiff to demonstrate that he had applied for registration of the mark under the Trade Mark Act . His failure to demonstrate that he had applied an application for registration will not clothe the defendant with a right to obtain dismissal of the suit. The application for registration is therefore , a factor of no relevance in an action for passing off(para 6)”.

In the said judgment the Hon’ble Court further observed “ the essence of the action of passing off id deceit on the part of the defendant in trying to pass off his goods as that of the plaintiff. That is a pure question of fact to be established by the proper evidence. The cause of action can arise where deceit is practiced. It can not arise at a location where the plaintiff who claims the relief, chooses to lodge an application for registering his mark, without any deceit having been practiced within that Jurisdiction.(para 7)”.

In para 9 of the said Judgment the Ho’ble have gone one step further in observing that that in an action for passing off , the cause of action has got nothing to do with the location of the registrar’s office or factum of applying or not applying for registration. Filing of an application for registration of a trade mark therefore doe snot constitute a part of cause of action where the suit is one for passing off”.

By necessary implication it is clear that filing of trade mark application either by the plaintiff or by the defendant has got nothing to do with the passing off action. Or in other words it can safely be said that locus of office of trade mark office , either qua the plaintiff’s trade mark application filing or qua defendant’s trade mark application filing do not form part of cause of action in an action of passing off. Any reliance on the same is extraneous and irrelevant in such cases.
WHAT FACTS ARE NECESSARY/RELEVANT IN AN ACTION OF INFRINGEMENT OF TRADE MARK

In order to understand that what facts are necessary/relevant in an action of Infringement of trade mark, few relevant sections of the Trade Marks Act 1999 are required to be gone through.

Section 27(1) of trade marks act 1999 reads as follows:

No person shall be entitled to institute any proceeding to prevent, or to recover damages for, infringement of an unregistered trade mark.

While Section 134(1)(a)and (b) or trade marks act 1999 reads as follows:

No Suit (a) for infringement of a registered trade mark, or (b) relating to any right in a registered trade mark; shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

Combined reading of section 27(1) and section 134 (1)(a) and (b) of Trade Marks act 1999 makes it quite clear that for the purposes of bringing an action of Infringement of a trade mark, plaintiff is required to establish that he is the registered proprietor of the trade mark. In other way it can be said that in an action of infringement of trade mark, the factum of plaintiff in failing to establish that he is registered proprietor of the trade mark, gives an immediate right of judgment to the defendant. The logical conclusion is that, every fact which establishes that the plaintiff is registered proprietor of the trade mark, gives rise to cause of action in an action of infringement of trade mark. Prima facie it appears that locus of trade mark office, qua the plaintiff’s trademark application filing, gives rise to cause of action.

More so same view was supported by Division Bench, Madras High Court in Premier Distilleries Pvt Ltd Vs Shashi Distilleries Case 2001 PTC 907 (Mad)(DB) Where the Hon’ble DB observed as follows” The right to bring an action for infringement in the court within whose jurisdiction the trade mark registry is located ,is founded on the fact that the relief sought in the action one for infringement and not merely for passing off. Where it is alleged that a trade mark is infringed, it is essential for the plaintiff to show that the mark had, in fact, been registered. The failure to establish that fact will result in the dismissal of the suit for infringement, satisfying the test formulated by Fry, L.J. ”for ascertaining the cause of action, namely everything which, if not proved, entitles the defendant to an immediate right to judgment”.

With due respect to the Hon’ble DB it is submitted that mere the locus of trade mark registry , qua the plaintiff’s trade mark application filing can not be basis in assuming the jurisdiction of court.

Let us examine relevant section of the Act. Section 134(2)of Trade Marks Act1999 provides for additional forum to the plaintiff according to which the suit for infringement of trade mark can be filed to the court, in whose jurisdiction, at the time of institution of suit, the plaintiff actually and voluntarily resides or carries on business or works for gain. This additional forum was not there in the old Trade & Merchandise Marks Act 1958.Had the presumption “that the locus of trade mark registry, qua the plaintiff’s trade mark application filing can provide the jurisdiction of court” be taken to be reasonable, then there would not have been any occasion for the legislature to providing for additional forum to the plaintiff by virtue of Section 134 (2) of Trade Mark 1999. Let this proposition be explained by one example.

A legal entity namely X carries on its business in Delhi. A files trade application before the trade mark registry, at Delhi office and after some time the same gets registered in his name. A files a suit for infringement against Y(residing at Ghaziabad )before the Delhi High Court in the old Trade & Merchandise Marks Act1958.In old Act additional forum was not there. If we take the above presumption to be reasonable i.e.( the locus of trade mark registry , qua the plaintiff’s trade mark application filing can provide the jurisdiction of court), then mere this fact that plaintiff’s trade mark was filed and registered from trade mark registry, Delhi, could give rise to accrual of cause of action even in old Act. Hence even in old act , for the purposes of conferring jurisdiction to Delhi High Court this fact became irrelevant, whether the plaintiff was actually carrying on its business or works for gain at Delhi or not? The insertion of additional forum by legislature in Section 132(2)Trade Marks Act 1999 creates clouds over this proposition. There are also many other reasons which further fortify this argument that in infringement case ,trade mark application filing by the plaintiff cannot give rise of accrual of cause of action, or in other words it can be said that the same can not be a basis of conferring jurisdiction in such cases.

Bare perusal of Scheme of the Trade Mark Act 1999 and rules framed there under clearly establishes this fact that location of trade mark registry is not based on jurisdiction basis, rather it meant for facilitating the registration of trade marks only.

Section 5 of the Trade Marks Act 1999 provides for head office and branch offices of Trade Mark Registry. In fact in Mumbai, there is head office of Trade Mark Registry while branch offices are located in Delhi, Chennai, Calcutta and Ahmedabad. Section 6 of the Trade Mark Act provides for the register where entry shall be entered pertaining to all the registered trade mark. The compilation and publication of the trade mark journal is handled only by the head office. Thus it is quite clear that different branch offices are not intended to work as independent offices. Rule 4(a)(ii) of Trade Marks Rule 2002 provides that where there is no any entry in the register as to principal place of business in India ,Appropriate office of trade mark registry for the purposes of making trademark application, or for the purposes of filing notice of opposition would be guided by the place mentioned in addresses for service in India. Thus the locus of appropriate trade mark office does not correspond to actual place of business of the applicant. Rule 5 of the Trade Marks Rules 2002 provides that jurisdiction of the appropriate Trade Mark office is not altered by change in the principal place of business or address for service in India. Under Trade Marks Act 1999,all the appeals against the order of Registrar of Trade Marks, instead of going to Different High Court according to the Jurisdiction, has to go before the Intellectual Property Appellate Board at Chennai only, irrespective of the jurisdiction. Thus in view of scheme of the Trade Marks Act 1999 and rules made there under it is clear that locus of trade mark registry cannot be taken to be one of the basis for the purposes of conferring jurisdiction in Infringement of Trade Marks cases. More so , in AIR 1974 DELHI 40 the Hon’ble High Court also returned this finding that the registration in plaintiff’s favour of the trade mark by itself is not sufficient to support the action of infringement.

Now let us examine that whether in infringement cases, jurisdiction can be based on the factum of trade mark application filed by the defendant?Let us examine Dhodha House Case in this behalf. In Dhodha House case(Supra) the Apex court dealt With two civil appeals.

In Civil Appeal no 6248 of 1997,the plaintiff was carrying on its business in the District of Ghaziabad while the defendant was based in Faridkot. Plaintiff claimed to be registered proprietor of Trade Mark Dhodha House under no 277714-B in class 30 and registered copyright holder under no A-5117/1970 and A-5330/1970.The Plaintiff filed composite suit of infringement of trade mark/passing off/infringement of copyright against the defendant before the District Judge Ghaziabad. It is important to mention here that no trade mark application was filed by the defendant.

In Civil Appeal No.16/1999,both the plaintiff and the defendants were based at Rajkot. The plaintiff claimed to be registered proprietor of Trade Mark and copyright Field Marshal. The first defendant was alleged to be registered under the Companies Act in Delhi. The impugned Trade Marks of defendant were published in India by trade mark registry in respect of defedant's applications for registration, including the Union Territory of Delhi. The Plaintiff filed composite suit of infringement of trade mark/passing off/infringement of copyright against the Defendant before the Hon'ble Delhi High Court.

In Civil Appeal no 6248 of 1997, counsel for the plaintiff relied on M/S Jawahar Engineering Company Vs M/S Jawahar Engineers Pvt Ltd 1983 PTC 207. In Jawahar Engineers Case ,plaintiff was registered proprietor of Trade Mark Jawahar whereas the defendant has applied for registration of the trade mark Jawahar for few states of India. In that case it was held “ having regard to the fact that an advertisement had appeared in the trade mark journal as regard application for registration of the trade mark of defendant therein, the Delhi high Court would have jurisdiction in the matter.”

In para no 31 of the Dhodha House Judgement , the Hon’ble Supreme Court discussed the Jawhar Engineering case and returned the finding as follows:-The said decision has no application in the instant case for more than one reason. For the purposes of registration of a trade mark,an application must be filed in the branch office of registrar of trade mark. In the said para the Hon’ble Court further observed “ An advertisement by itself in a journal or a paper would not confer jurisdiction upon a court.

In para 32 the Dhodha House Judgement,the Apex Court further observed” a cause of action will arise only when a trade mark is used and not when an application is filed for registration of the trade mark. In a given case an application for grant of registration certificate may or may not be allowed. In said para the Hon’ble Apex Court further observed “ In other words a suit may lie where an advertisement of trade mark or copyright has taken place but a cause of action for filing the suit would not arise within the jurisdiction of court only because an advertisement has been issued in the Trade Mark Journal or any other Journal notifying the factum of filing of such an application”.

Thus it is quite clear that the Hon’ble Apex Court returned the finding that cause of action for infringement of trade mark shall arise only when the trade mark is used and not an trade mark application is filed. By logical conclusion it can be said that no cause can be based on defendant’s application, as the same does not correspond to defendant’s commercial user.
Even Section 31 of trade marks Act 1999 says as follows:- Registration to be prima facie evidence of validity.

Section 29 of trade marks act provides that in what circumstances it can be said that a registered trade mark is being infringed.

29 (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade ,a trade mark which is identical with ,or deceptively similar to ,the trade mark in relation to goods or services in respect of which the trade mark is registered and in such a manner as to render the use of the mark likely to be taken as being used as a trade mark.

29(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use ,uses in the course of trade ,a mark which because of ---------
29(4) A registered trade mark is infringed by a person who not being a registered proprietor or a person using by way of permitted use, uses in the course of trade , a trade mark which --------

29(5) A registered trade mark is infringed by a person if he uses such registered trade mark as his trade name or part of his trade name or name of the business concern or part of the name ,of his business concern dealing in goods or services in respect of which the trade mark is registered.

29(6) For the purposes of this section, a person uses a trade mark, if, in particular, he-
(a) affixes it to the goods or the packaging thereof;

(b) Offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark , or offers or supplies services under the registered trade mark

(c) imports or exports goods under the mark;

(d) uses the registered trade mark on business papers or in advertising.

29(7) A registered trade mark is infringed by a person who supplies such registered trade mark to a material intended to be used for labeling or packaging goods, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorized by the proprietor or a licensee.

29(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising-

(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

(b) is detrimental to distinctive character; or

(c) is against the reputation of the trade mark.

29(9) Where the distinctive elements of a registered trade mark consists of or includes words, the trade mark may be infringed by spoken use of those words as well as by their visual representation and reference in this section to use of a mark shall be construed accordingly.

It is clear that for an action of Infringement, the commercial user of impugned trade mark by the defendant has to be established.

Now let us examine that on the question of infringement of trade marks, what stand has been taken by the various courts.

Infringement is use by the defendant for trading purposes upon or in connection with the goods of the kind for which the plaintiff’s right to exclusive use exists, not being the goods of the plaintiff, of a mark identical with the plaintiff’s mark or comprising something some of its essential features or colorably resembling it so as to be calculated to cause goods to be taken by ordinary purchasers for the goods of the plaintiff. Abbey Sports Co Ltd Vs Priest Brothers, (1936)53 RPC 300 at 304.

A Plaintiff , in a suit on the basis of infringement, has to provide not only that his trade mark is infringed but a person who is not a registered proprietor of the mark or the registered user thereof but that the said person is using a mark in the course of trade. S.M.Dychem Ltd Vs Cadbury (India) LTD AIR 2000 SC 2114.

The use by the defendant of the trade mark of the plaintiff is sine qua non in an action for infringement of trade mark. Kaviraj Pandit Durga Dutta Sharma Vs Navratna Pharmaceutical Laboratories AIR 1965 SC 980. In the same judgment it was further held that “ When once the use by the defendant of the mark which is claimed to infringe the plaintiff’s mark is shown to be in the course od trade , the question whether there has been an infringement is to be decided by the comparison of the two trade mark.

From above mentioned discussions it can be said that in order to bring an action of infringement of registered trade mark, the plaintiff has to establish the user/proposed user of trade mark by the defendant in the course of trade. Any user , which is not in the course of trade, cannot be said to form cause of action in infringement of trade mark cases.

Now let us examine the term Use in the course of trade. The term use in the course of trade has no where been defined in the Trade Mark Act 1999.In Hermes Tm (1982)RPC 425 AT 432 it is observed that “In the course of trade is wide enough to cover the steps necessary for the production of goods as well as their actual placing on the market.”

The user of trade mark can further be explained by bare perusal of a recent judgment of Hon’ble Delhi high Court titles as M/s Yonex Kabushiki Kaisha Versus M/s Phillips International & others , reported as 2007 (35) PTC 345 (DEL) , where in para 14 of the judgment the Hon’ble Court observed as follows” the plaintiff has sought to establish the allege use of the trade mark YONEKA in the India on account of the letter dated 06.08.2005 purported to have been issued by the Badminton Association of India.The said declaration also did not prove use of the trade mark on commercial basis in any manner whatsoever. The said letter talks about supply of the shullecocks “free of costs”. The question whether any shuttlecocks, as per alleged agreement with association ,were supplied or not remains unanswered on the part of the plaintiff. Furthermore , distribution of free samples does not constitute commercial use of the trade mark ‘.

It is submitted that the Hon’ble Delhi High Court emphasized on this fact that alleged user of the trade mark has to be commercial user and in the given case the Hon’ble Court returned the finding that distribution of free samples does not constitute commercial use of the trade mark. The facts remains that use of a trade mark has to be commercial in nature.

Further it is observed in para no. 23.24 of Trade Marks & Passing off, Volume VI, P.Narainan , relying on the Irvings Vs Horsenail (1934) 51 RPC 110 at 116 case explained the term “ use as a trade mark”. The expression (use as a trade mark) means “ in such a manner as to render the use of the mark likely to be taken as being use as a trade mark”. Thus it is clear that in order to constitute infringement the defendant must use the offending mark as a trade mark within the meaning of definition under 2 S(1)(Zb).It is submitted that Section 2 S(1)(Zb) of the act contemplates the user by the defendant in the course of trade. In para 2.21 of the said book, P.Narainan further observed “it is fundamental principle of law that the function of a trade mark is to indicate the origin of the goods to which it is applied. Aristoc Vs Rysta (1945) 62 RPC 65 at 79. Connection in the course of trade would therefore, mean any kind of connection consistent with this principle. A connection with the goods in the course of trade means an association with the goods in the course of their production and preparation for the market.

CONCLUSION: From combined reading of section 2 (zb)(i)(ii)of Trade Mark Act 1999 [as already mentioned in passing off section of this article],section 29 of Trade Mark Act 1999, and also from perusal of the above mention judgments of the courts, it is quite clear that in order to succeed in an action of Infringement of trade mark, the plaintiff is required to prove the user/proposed user of the impugned trade mark by the defendant in the course of its trade activity. The said user has to be commercial user.Thus every fact which proves the actual commercial user and/or proposed commercial user of impugned trade mark by the defendant is a relevant fact and the same gives rise to cause of action.

Defendant’s filing of application and/or advertisement thereof in the trade mark journal does not amount to commercial user/proposed commercial user at all. Even Hon’ble Delhi High Court observed in AIR 1972 DELHI 248 that mere acceptance of an application for registration of a trade mark or its advertisement confers no right. Mentioning of user column in the application is not conclusive proof of the commercial user/proposed commercial user by the defendant. That’s why there is provision of opposition so that the claimed user and or proposed user(remember, the same doesn’t qualify for proposed commercial user) of the defendant can be challenged. Even if the defendant’s application qualifies the opposition and gets registered, even then there is provisions for rectification of the same whereby the proprietary rights of the defendant over the impugned trade mark including its user can also be challenged. Even various court also held that registration is prima facie evidence of validity(AIR 1972 DELHI 248 , AIR 1972 DELHI 46).The defendant is not getting any right in the trade mark by filing application or by its advertisement nor the same is any proof the user of the defendant’s trade mark, leave aside the commercial user. This is the reason why the legislature, while enacting the Trade Mark Act 1999, did not include the act of trade mark application filing by the defendant as infringement of trade mark (Section 29 of Trade Mark Act 1999).While bringing an action of infringement of trade mark, onus heavily lies on the plaintiff to establish the infringement of his trade mark by the defendant and the same cannot be discharged only qua defendant’s trade mark application filing. Thus it can be safely be said that in an action of infringement of trade mark/passing off, no cause of action can be based on trade mark application filling, either by plaintiff or by defendant.

BY AJAY AMITABH SUMAN

ADVOCATE

DELHI HIGH COURT

POLYFLOR LIMITED VS MOTIVE AGRO OILS PVT. LTD

Delhi High Court

M/S Saurabh Agrotech (P) Ltd vs M/S. Motive Agro Oils Pvt. Ltd. & ... on 25 April, 2013

F-16
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 473/2009
M/S POLYFLOR LIMITED Versus SH. A.N. GOENKA  (P) LTD. ..... Plaintiff Through: Mr. Ajay Amitabh Suman, Advocate.
versus
M/S. MOTIVE AGRO OILS PVT. LTD. & ANR. .....Defendants Through: None.
% Date of Decision: 25th April, 2013.
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
JUDGMENT
MANMOHAN, J (Oral):
1. The amended plaint in the present suit has been filed with the following prayers:-
"26. (a) For a decree of permanent injunction restraining the defendant by itself as also through its individual proprietors, partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all others acting for and on their behalf from using, selling, soliciting, exporting, displaying, advertising by visual, audio, print mode or by any other mode or manner or dealing in or using the impugned trade mark/label ASHOKA or any other Trade Mark/Label identical with and/or deceptively similar to the said trademark/label ASHOKA of the plaintiff in relation to their impugned goods and business of edible oil (mustard oil) and related/allied products and from doing any other acts or deeds
CS(OS) 473/2009 Page 1 of 6 amounting to or likely to:-
(i) passing off and violation of the plaintiff's right in the said trademark/label ASHOKA.
(ii) falsification of plaintiff's trademark and indulgence in unfair and unethical trade practices.
(iii) infringement of the plaintiff's registered trademark ASHOKA under no.1324290 in class 29.
(b) Restraining the defendants from disposing off or dealing with its assets including its premises at M/s Motive Agro Oils Pvt. Ltd., Hapur-245101, U.P. and Regd. Office at C-99B, Kanti Nagar Old, Delh-51 including its stocks-in-trade and such other assets as may be brought to the knowledge of this Hon'ble Court during the course of the proceedings and on its ascertainment by the plaintiff and/or disclosed by the defendants, as the plaintiff is not aware of the same, as per Section 135(2)(c) of the Trade Marks Act, 1999 as it would adversely effect the plaintiff's ability to recover costs and accounts of profits.
(c) For an order for delivery up of all the impugned finished and unfinished materials bearing the impugned and violative trade mark/label ASHOKA, or any other deceptively similar trademark/label including its blocks, labels, display boards, sign boards, trade literatures and goods etc. to the plaintiff for the purposes of destruction and erasure.
(d) For an order for rendition of accounts of profits earned by the defendants by their impugned illegal trade activities and a decree for the amount so found in favour of the plaintiff on such rendition of accounts.
(e) In the alternative a decree for grant of damages of Rs.20,01,000/- (Rupees Twenty Lakh and One Thousand only) from the defendants, jointly and severally to the plaintiff.
CS(OS) 473/2009 Page 2 of 6 (f) For an order for cost of proceedings, and (g) For such other and further order as this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case."
2. Mr. Ajay Amitabh Suman, learned counsel for plaintiff fairly states that he does not wish to press prayers (b), (c), (d), (e) and (f) of the prayer clause. The said statement is accepted by this Court and plaintiff is held bound by the same.
3. On 10th November, 2009, this Court dismissed the injunction application filed by the plaintiff on the ground that plaintiff's trade mark ASHOKA was no longer registered and prima facie a case of passing off was not made out.
4. Subsequently, on 14th September, 2010, defendants were proceeded ex parte. Thereafter, ex parte evidence by way of an affidavit was filed by the plaintiff.
5. Today, the position is that the plaintiff is the owner of the registered trade mark ASHOKA vide Registration Certificate No.1324290 in class 29 which has been exhibited as Ex.PW1/34. Plaintiff has also led evidence to show that it has been using the mark ASHOKA continuously since the year 1975 for a wide range of edible oils like Mustard and Vegetable oil. The plaintiff has placed on record its VAT invoices, bills, trade literature, advertisements to show continuous use of the trade mark ASHOKA since the year 1975.
6. In the plaint, it is stated that in the beginning of December, 2008, plaintiff learnt that defendant had dishonestly adopted the plaintiff's trade mark ASHOKA. Mr. Ajay Amitabh Suman, learned counsel for plaintiff
CS(OS) 473/2009 Page 3 of 6 submits that both the trade marks in question are identical and/or deceptively similar in all respects including phonetically. He states that defendants have copied the essential features of the plaintiff's trade mark. In support of his submission, he relies upon the judgment of the Supreme Court in K.R. Chinna Krishna Chettiar Vs. Shri Ambal and Co., Madras and Anr., AIR 1970 SC 146, wherein it has been held as under:- "3. ..................
The words, Ambal and Andal, have such great phonetic similarity that they are undistinguishable having the same sound and pronounciation. In whatever way they are uttered or spoken, slowly or quickly perfectly or imperfectly, meticulously or carelessly and whoever utters them, a foreigner or a native of India, wherever they are uttered in the noisy market place or in a calm and secluded area, over the phone or in person, the danger of confusion between the two phonetically allied names is imminent and unavoidable..................
xxx xxx xxx
6. ......It is for the court to decide the question on a comparison of the competing marks as a whole and their distinctive and essential features. We have no doubt in our mind that if the proposed mark is used in a normal and fair manner the mark would come to be known by its distinguishing feature "Andal". There is a striking similarity and affinity of sound between the words "Andal" and "Ambal". Giving due weight to the judgment of the Registrar and bearing in mind the conclusions of the learned Single Judge and the Divisional Bench, we are satisfied that there is a real danger of confusion between the two marks."
7. Having heard learned counsel for the plaintiff and having perused the ex parte evidence as well as documents placed on record, this Court is of the opinion that plaintiff has proved the facts stated in the plaint and has also
CS(OS) 473/2009 Page 4 of 6 exhibited the relevant documents in support of its case. Since the plaintiff's evidence has gone unrebutted, said evidence is accepted as true and correct.
8. This Court is also of the opinion that the triple identity test is satisfied in the present case inasmuch as the competing trade marks, products and class of purchasers are the same. In Jain Electronics Vs. Cobra Cables P. Ltd. & Ors., 2011(45) PTC 52 (Del), this Court has held as under:- "11. With there being a registered trade mark "Cobra" in the name of Respondent No.1, which has not been opposed by the Petitioner till date, there can be no doubt that grant of registration in respect of an identical mark in favour of the Petitioner would cause deception and confusion. The mark has been registered in favour of Respondent No.1 in respect of goods which included electrical apparatus. The Petitioner is seeking registration of an identical mark in respect of voltage stabilizers. It was sought to be urged that Respondent No.1's goods were electric cables whereas the Petitioner's were voltage stabilizers and therefore the goods were different. There can be no doubt that the electric cables are used in voltage stabilizers as well. The trade channel is essentially the same. The goods are available usually in the same place as well. Use of an identical mark in respect of the two goods is bound to cause deception and confusion in the market. The Deputy Registrar and the IPAB concurrently concluded that the triple identity test stood satisfied in the present case, particularly since the description of the goods is the same, the area of the sale and the trade channel are the same. This Court concurs with the said view. The registration in favour of Respondent No.1 dates back to 1980, whereas the Petitioner's invoices, all of which do not show use of the mark in relation to goods, is only since 1984. In the circumstances, the plea of concurrent user is not available to be taken by the Petitioner."
9. Consequently, as the trade mark, goods and class of purchasers are same, there is every possibility of confusion and deception. Further, this
CS(OS) 473/2009 Page 5 of 6 Court has considered the essential feature of both the trade marks in question and finds that the essential features are common.
10. Moreover, as the plaintiff is the prior adopter and continuous user of the mark ASHOKA, this Court is of the opinion that plaintiff is entitled to a decree of permanent injunction. Accordingly, the present suit is decreed in terms of prayer 26(a)(i), (ii) and (iii) of the plaint. Registry is directed to prepare a decree sheet accordingly.
MANMOHAN, J
APRIL 25, 2013
js
CS(OS) 473/2009 Page 6 of 6

RAJ KUMAR SARAF VS VAIDYA NANDRAM GIGRAJ CHAMARIA

Delhi High Court

Raj Kumar Saraf, Proprietor M/S. ... vs M/S. Vaidya Nandram Gigraj ... on 19 July, 2013

* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ RFA 86/2008
RAJ KUMAR SARAF, PROPRIETOR M/S. BINDAL
FOOD PRODUCTS ..... Appellant Through: Mr. S.K. Bansal, Mr. Ajay Amitabh
Suman, Mr. Vikas Khera and
Mr. Santosh Kumar, Advocates
Versus
M/S. VAIDYA NANDRAM GIGRAJ CHAMARIA ..... Respondent Through: Mr. A.K. Behera, Advocate
% Date of Decision : July 19, 2013
CORAM:
HON'BLE MS. JUSTICE REVA KHETRAPAL
HON'BLE MS. JUSTICE PRATIBHA RANI
JUDGMENT
: REVA KHETRAPAL, J.
1. By way of this appeal, the Appellant - Raj Kumar Saraf seeks to assail the order dated 19.9.2007 passed by the Copyright Board rectifying the Register of Copyrights by expunging the entry bearing No.A-66496/04 relating to the art work of the Appellant.
2. The facts leading to the passing of the impugned order by the Copyright Board may be briefly delineated as follows.
RFA 86/2008 Page 1 of 15
3. The Respondent - Vaidya Nandram Gigraj Chamaria had filed an application under Section 50 of the Copyright Act, 1957 before the Copyright Board for expunging/deleting the registration of the artistic work of the Appellant registered as Registration No.66496/04 dated 26.2.2004 from the Register of Copyright. As per the averments made in the rectification petition, the Respondent firm had been in the business of manufacturing and marketing of Pansarat and Ayurvedic medicines ever since the year 1958 and had been issued Ayurvedic Drug License way back in the year 1983 vide License No.174 (A & U) dated 19.1.1983. Besides, the Respondent had also applied for sales tax registration number for carrying on the aforesaid business in the territory of Delhi in the year 1979 and had been issued Sales Tax Registration No.LC/03/019829 dated 17.2.1979. The Respondent had earned tremendous goodwill in the market in relation to manufacturing and marketing of several Ayurvedic and Pansarat products including "Vijay Hingoli". The Respondent was holding various registered trademarks and an application for registration of "Vijay Hingoli" was pending consideration before the Trademarks Registry. The said product, viz., "Vijay Hingoli" had been launched in 1981 and was being marketed in bottles and plastic packs ever since 1981 and from the year 1991 in pouches. The Respondent in paragraph 5 of the petition has set out its sales figures for the year 1994-95 till 2003-04 and submitted that ever since 1981 it had been marketing its product "Vijay Hingoli" using the artistic work and get up enclosed with the petition. During the course of marketing of the said product, the Respondent had issued several advertisements in newspapers, audio-
RFA 86/2008 Page 2 of 15 video cassettes, magazines, glow signs, banners, advertisements on the body of DTC buses, wall painting and other ancillary modes of advertisements, portraying and advertising the said artistic work and get up, samples whereof were enclosed for the perusal of the Copyright Board. It was alleged that the Appellant - Shri Raj Kumar Saraf (the Respondent before the Copyright Board) was fully aware of the existence of the Respondent in the market in relation to the manufacturing and marketing of Pansarat and Ayurvedic products and specifically the product "Vijay Hingoli". It was asserted that the father of the Respondent, namely, Shri Shiv Kumar Saraf is a blood relation/cousin of the members of the Respondent firm and hailed from the same village in the State of Rajasthan. The said Shri Raj Kumar Saraf surreptitiously and with malafide intention made an application before the Registrar of Copyrights on 26.7.2003 to register the aforementioned artistic work and get up in his name by making some cosmetic changes therein in relation to the same product titled "Vijay Hingoli". In the said application, the Appellant represented before the Registrar of Copyrights that he had been using the said artistic work and get up as well as name since 1995. The Registrar accordingly issued registration No.A-66496/04 on 26.2.2004. The Respondent came to know about the fact through an advertisement given by the Appellant in a local newspaper, namely, Sandhya Times on 24.11.2004, thus compelling the Respondent to file the rectification petition before the Copyright Board.
4. The Copyright Board on consideration of the rival submissions of the parties and after appreciating the documents filed by both the
RFA 86/2008 Page 3 of 15 parties passed the impugned order cancelling the registration of the Appellant by expunging the entry bearing No.A-66496/04 made in favour of the Appellant in the Copyright Register.
5. We have heard the respective submissions of the learned counsel for the parties and scrutinized the documentary evidence on record. The Appellant has assailed the order of the Copyright Board principally on the ground that in the year 1995 the Appellant as the sole proprietor of Bindal Food Products had conceived, coined and authored the artistic label comprising of a human bust, having small moustache on the face, bearing spectacles on eyes and wearing a cap on the head (hereinafter referred to as " the human bust") and the words ANMOL-G VIJAYA & HING GOLI known as ANMOL-G VIJAYA HING GOLI. On 10.6.2003, the Appellant had applied for registration of its copyright before the Registrar of Copyright, which was granted by the Registrar on 26.2.2004 under No.A-66496/04. The said art work was duly made public by the Appellant by different modes of media through advertising, letter pads, bills/invoices, distribution of trade literature, hoardings, etc. The Appellant had also been very prompt in safeguarding his right in the said art work/label against violation thereof by various infringers and in this behalf had filed a suit bearing CS(OS) No.1233/04, titled as Shri Raj Kumar Saraf vs. M/s. G.K. Products before the Delhi High Court, which was later compromised and decreed in favour of the Appellant. Further, in order to obtain statutory rights over the trademark VIJAYA and ANMOL-G, trademark applications on behalf of the Appellant's firm, M/s. Bindal Food Products were filed on 5.11.2002 in Class 5, on
RFA 86/2008 Page 4 of 15 6.12.2001 in Class 30 and on 6.12.2001 in Class 05 and in Class 30. Out of the aforementioned trade applications, the earlier three trademarks now stand registered in favour of the Appellant firm, i.e., M/s. Bindal Food Products. On or about 25th day of December, 2004, the Respondent filed the rectification petition under Section 50 of the Copyright Act, 1957 falsely alleging to be the owner and author of the impugned art work. On or about 26.3.2007, the Appellant filed his written statement along with supporting documents before the Copyright Board. The learned Board, however, ordered rectification of the Copyright Register by expunging the registration made in favour of the Appellant.
6. The learned counsel for the Appellant in support of his submission that the order of the Copyright Board is not sustainable raised the following contentions:-
(i) In the rectification petition, the Respondent nowhere alleged itself to be a person aggrieved, which is a sine qua non for maintainability of rectification petition and hence the same ought to have been dismissed.
(ii) In rectification proceedings, the onus was on the Petitioner (the Respondent herein) to establish that the publication of his art work was prior in point of time to the publication of the art work of the Appellant in terms of Section 3 of the Copyright Act, 1957. Not a single document was filed by the Respondent pertaining to the publication of the impugned art work prior to the art work of the Appellant.
RFA 86/2008 Page 5 of 15 (iii) The Appellant, on the other hand, had placed on record the letter head of M/s. M.M. Marketing Company to establish the prior publication of his art work which bore the date 15.5.1993. The said letter was carrying the human bust, which is the most essential feature of the said art work. The Appellant had also placed on record the affidavit of his brother Shri Manoj Kumar Aggarwal (then trading as M/s. M.M. Marketing Company, B- 154, Suraj Mal Vihar, Delhi-92) to show that the Appellant had allowed him to use the said bust on the letterhead and promotional material of M/s. M.M. Marketing Company but the learned Board had erroneously ignored the same.
(iv) The learned Board was wrong in not giving any benefit of the registered trademarks VIJAYA and ANMOL-G to the Appellant and in not considering the fact that the same form part of the art work of the Appellant.
(v) The Respondent had relied upon the impugned trademark/label application under No.70384 in Class 05, allegedly filed on 27.3.1996, claiming the user since the year 1981. However, in the impugned label, telephone No.2925206 (seven digit telephone number) is printed, and in the year 1981 seven digit telephone number was not in existence, leading to the inference that the Respondent is wrongly alleging the user of the impugned art work since the year 1981.
(vi) The learned Board ought to have dismissed the petition on the sole ground that the Registrar of Copyrights had not been made a party therein. The Board in this context erred in not following
RFA 86/2008 Page 6 of 15 the precedent laid down by it in its earlier judgment titled as Shree Sawaram Agarbatti Bhandar vs. Ghanshyam Perfumery & Co., 2007 (35) PTC 1001 (CB).
7. Learned counsel for the Respondent rebutted the aforesaid contentions raised on behalf of the Appellant and relied upon the submissions made by it before the Copyright Board and the findings of the Copyright Board thereon.
8. Adverting in the first instance to the contention of the Appellant that in the rectification petition, the Respondent nowhere alleged itself to be a person aggrieved, which is a sine qua non for the maintainability of a rectification petition and hence the same ought to have been dismissed, we find the aforesaid contention to be factually incorrect. The impugned order in fact specifically records that the Respondent (the Petitioner before the Copyright Board) was a person aggrieved in terms of Section 50 of the Act in the following terms: "7. At the outset, it is necessary for us to determine as to whether it was obligatory upon the respondent to give a notice to the petitioner in terms of rule 16(3) of the Copyright Rules, 1958 while making an application to the Registrar for registration. Petitioner has claimed that the proprietors on both the sides are related and hail from the same village in Rajasthan. Further, both the parties deal in similar goods and thus possibly having the same network of dealers whereby knowing each other's presence in the market. We feel that these grounds by themselves are not sufficient to conclude for us that the respondent had knowledge about the
petitioner being an interested person in the matter. With a view to proceed further in the instant matter relating to rectification of the registration, it is essential to determine as to the petitioner being person
RFA 86/2008 Page 7 of 15 aggrieved in terms of section 50 of the Act. Both the petitioner and the respondent deal in similar goods and the impugned artistic work bears similarity to the artistic work and trade mark of the petitioner. We feel this is enough for us to infer that the petitioner is an aggrieved person in the matter."
9. As regards the contention of the Appellant with regard to publication of his art work being prior in point of time to the art work of the Respondent, we deem it expedient to refer to the definition of publication as set out in the Copyright Act, 1957. Section 3 of the said Act defines publication as follows:
"3. Meaning of publication. - For the purposes of this Act, "publication" means making a work available to the public by issue of copies or by communicating the work to the public."
10. It is beyond cavil that "publication" in any part of the Copyright Act, 1957 is to be understood in terms of its definition given in Section 3 of the Act as set out above. It also cannot be disputed that the word "publication" in Column 9 of the Statement of Particulars of Form 4, which is required to be submitted for registration of Copyright, is to be understood as defined in Section 3 of the Act. Section 3 of the Act, as noted above, stipulates that for the purposes of the Copyright Act, "publication" means making a work available to the public by issue of copies or by communicating the work to the public. Thus, the work can be made available to the public either by issuance of copies or by communicating the work to the public. Section 2(ff) provides a definition for "communication to the public" as under:
RFA 86/2008 Page 8 of 15 "2. Interpretation. -In this Act, unless the context otherwise requires,-
............................................
(ff) "communication to the public" means making any work available for being seen or heard or otherwise enjoyed by the public directly or by any means of display or diffusion other than by issuing copies of such work regardless of whether any member of the public actually sees, hears or otherwise enjoys the work so made available.
Explanation.- For the purposes of this clause,
communication through satellite or cable or any other means of simultaneous communication to more than one household or place of residence including
residential rooms of any hotel or hostel shall be deemed to be communication to the public."
11. The submission of the Respondent before the Copyright Board was that the Appellant had made false averments before the Registrar as to the "publication" of the work being that of 1995. It was also submitted that the Appellant was in violation of the proviso to Sub- Section (1) of Section 45 of the Act having not made the necessary declaration and not having obtained the certificate from the Registrar of Trademarks. For the sake of ready reference, Section 45 of the Act is reproduced as under:
"45. Entries in register of Copyrights.- (1) The author or publisher of, or the owner of or other person interested in the copyright in, any work may make an application in the prescribed form accompanied by the prescribed fee to the Registrar of Copyrights for entering particulars of the work in the Register of Copyrights :
[Provided that in respect of an artistic work which is used or is capable of being used in relation to any
RFA 86/2008 Page 9 of 15 goods, the application shall include a statement to that effect and shall be accompanied by a certificate from the Registrar of Trade Marks referred to in section 4 of the Trade and Merchandise Marks Act, 1958, to the effect that no trade mark identical with or deceptively similar to such artistic work has been registered under that Act in the name of, or that no application has been made under that Act for such registration by, any person other than the applicant.]"
12. A look at the documentary evidence on record shows that in the instant case the Appellant in the application filed by it for registration of its art work, under Column 9, has claimed the year of first publication as 1995. In the written statement filed by it, the Appellant has submitted that he had authored/conceived portrait of bust of human being having small moustache on the face, bearing spectacles on eyes and wearing cap on the head in the year 1993 and had allowed his brother Shri Manoj Kumar Aggarwal, then trading as M/s. M.M. Marketing Company to use the said bust on the letterhead and promotional materials of M/s. M.M. Marketing Company. He has also placed on record the affidavit of Shri Manoj Kumar Aggarwal in this regard. As rightly observed by the Copyright Board, however, there is no primary evidence placed on record by the Appellant to substantiate his authorship of this art work. The earliest document adduced in evidence relates to the year 1993 being the aforesaid letter dated 15.5.1993 written by the proprietor of M/s. M.M. Marketing Company on the printed letter pad of the firm to the Sales Tax Officer, Ward No.083, Bikrikar Bhawan requesting for an extension of period to complete the requirements of some registration. The original of this
RFA 86/2008 Page 10 of 15 letter has not been produced and only a photocopy has been placed on record. A cursory look at the bust on the said photocopy shows that the said art work/bust is not the same as the art work/bust appended to the application for registration on 28.7.2003. Further, the said art work has the word "Rajasthani" appearing behind it whereas in the art work appended to the application the words ANMOL-G HING GOLI appear at the top with several other inscriptions on the said art work on all sides which are conspicuously absent on the letterhead of M.M. Marketing Company. Further, the Appellant himself has submitted in paragraph 3 of his written statement that he conceived, coined and authored the art work in 1995 and in view of his said statement it is not understandable as to how the art work appears in a letterhead of M/s. M.M. Marketing Company dated 15.5.1993. In such circumstances, the Board has rightly observed that inscription of some mark which bears no similarity to the impugned artistic work on the letter pad of a third person indicating no authorship of the work is no publication in terms of the provisions of the Act.
13. Other documents cited by and relied upon by the Appellant also do not substantiate the case of the Appellant of prior publication of his art work. As regards the reliance placed by the Appellant on the filing of CS (OS) No.1233/2004, the said suit was filed in the High Court of Delhi by the Appellant against M/s. G.K. Product, in the year 2004 which resulted in a settlement in the same year. The filing of this suit, therefore, does not substantiate the case of the Appellant in any manner. Reliance placed by Appellant on trademark registrations is also wholly misplaced. The Appellant filed an application for
RFA 86/2008 Page 11 of 15 registration of the word VIJAYA per se as trademark on 5.11.2002, which application was advertised in the Trademarks Journal on 25.11.2003. Trademark No.1148151 effective from 5.11.2002 was issued on 5.3.2005. Therefore, this too does not further the case of the Appellant with regard to prior publication of his art work. The only other documents are copies of bills relatable to the years 2002 to 2004 evidencing the sale of the products of the Appellant, including ANMOL-G VIJAYA HING GOLI. Needless to state that these bills are of no help to the Appellant in proving the fact of publication of the artistic work in 1995 as they do not carry the art work on them. In the affidavit of the brother of the Appellant Shri Manoj Kumar Aggarwal, reference is made to "promotional material" which allegedly carries the art work of the Appellant, but no such promotional material has seen the light of the day either before the Copyright Board or before this Court. Indubitably, the newspaper advertisements carrying the art work of the Appellant are there on record, but these advertisements relate to the year 2004 and can provide no benefit to the Appellant.
14. The Respondent, on the other hand, has proved through overwhelming evidence that his art work was published as far back as in the year 1996, that he was manufacturing and marketing Ayurvedic medicines including "Vijay Hingoli" ever since 1981 and started marketing the said product in pouches in 1991. Petitioner in evidence submitted as Ex.P1 and P2 his applications for necessary Ayurvedic licensing and Sales Tax registrations, P3 is the copy of the label of his mark, P4 are the copies of the vouchers and bills for advertisement expenditures. He has also placed on record the acknowledgments
RFA 86/2008 Page 12 of 15 dated 27.3.1996 issued by the Registrar of Trademarks Office in favour of Ram Awatar Chamaria trading as Vaidya Nandram Gigraj Chamaria, Tilak Bazar, Delhi. This document which carries the acknowledgment of the Registrar of Trademarks contains the art work of the Respondent and is dated 22nd March, 1996 and in the column "User Claimed" specifically states "Since the year 1981".
15. We also find no merit in the contention of the Appellant that the Copyright Board erred in not giving any benefit of the registered trademarks VIJAYA and ANMOL-G to the Appellant and in not considering the fact that the same form part of the art work of the Appellant. The Copyright Board, in our opinion, has rightly observed that the underlying principles in relation to copyright law are different from those relating to trademark law, except that proviso to Section 45(1) provides that if the work is an artistic work which is used or is capable of being used in relation to any goods, the application shall include a certificate from the Registrar of Trademarks to the effect that no trademark identical with or deceptively similar to such artistic work has been registered under that Act in the name of any person other than the applicant or that no application has been made under that Act for such registration by any person other than the applicant. There is no provision in the Copyright Act for any premium to be accorded in respect of an artistic work in respect of which the trademark has been registered under the Trademark Act, 1999. Publication is a sine qua non under the Act for claiming authorship of an artistic work. A perusal of Rule 16 of the Copyright Rules, 1958 read with Form 4 shows that an applicant for registration of a copyright is required to
RFA 86/2008 Page 13 of 15 mandatorily file statement of particulars setting out whether the work is published or not and the year of publication, etc. In the instant case, the dealers profile of the Appellant Bindal Food Products placed on record shows that the Appellant commenced business on 18 th October, 2002. Thus, quite clearly the year of commencement of business set out in the application for registration of copyright, i.e., 1995 is a false declaration. The falsity of the case of the Appellant is also borne out from the affidavits of the brother of the Appellant Mr. Manoj Kumar and the Appellant himself, which if taken on their face value show that the age of the brother of the Appellant was 33 years and the age of the Appellant was 35 years on the date on which the affidavit was sworn, thereby leading to the inference that Manoj Kumar was 19 years in the year 1993, and the Appellant himself as per his own affidavit was 17 years in the year 1993 when allegedly the Appellant assigned the artistic work created by him to his brother Manoj Kumar for the purposes of his firm M.M. Marketing Company. Even otherwise, no Assignment Deed has been placed on record by the Appellant and by virtue of the provisions of Section 19 of the Copyright Act, 1957, no assignment of copyright in any work shall be valid unless it is in writing, signed by the assignor or by its duly authorized agent. Sub- Section (5) of Section 19 further provides that in case the period of assignment is not specified in the Assignment Deed, it shall be deemed to be 5 years from the date of assignment, meaning thereby that the assignment in any event even assuming there was an Assignment Deed (which is not even asserted by the Appellant), lapsed in the year 1998.
RFA 86/2008 Page 14 of 15
16. As regards the contention of the Appellant that the Respondent's advertisements carry a telephone number with seven digits, it has been explained by the Respondent that he had given the telephone number as existed in the year 1996 as part of his application which was submitted on 27th March, 1996.
17. As regards the non-impleadment of the Registrar of Copyrights as a necessary party to the petition under Section 50 of the Copyright Act, no such objection appears to have been raised by the Appellant before the Copyright Board as is evident from a perusal of the written statement of the Appellant filed before the Copyright Board and such objection must, therefore, be deemed to be waived. In any event, no specific provision in the Copyright Act or the Rules framed thereunder has been pointed out to us for putting the Registrar on notice in a petition for rectification of the Register. This being so, we are not inclined to interfere with the order of the Copyright Board on this objection belatedly taken by the Appellant to defeat the legitimate rights of the Respondent.
18. For all the aforesaid reasons, the Appeal fails and is dismissed.
REVA KHETRAPAL
JUDGE
PRATIBHA RANI
JUDGE
July 19, 2013
km
RFA 86/2008 Page 15 of 15

Bright Electricals Vs Mr. Ramesh Shah

INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai,

       Teynampet, Chennai-600018

*****

CIRCUIT BENCH SITTING AT KOLKATA

(FRIDAY,  THIS THE 31^st DAY OF MAY,  2013)

ORA/241  & 242 /2010/TM/KOL

HON’BLE  MS. S USHA                               …  VICE CHAIRMAN

HON’BLE  SHRI. V. RAVI                             …  TECHNICAL  MEMBER

1. M/S Bright Electricals,

    11-13-27, Park Road,

    Vijayawada 520 001 (A.P. )                         …   Applicant

                   (Represented by Advocate: Shri Ajay Amitabh Suman)

Versus

1.  Mr. Ramesh Shah,

     144,C.I.T.Road,

     Kolkata 700 014.                                    …   Respondent   No.1

2.  The Registrar of Trade Marks,

     Trade Marks Registry,

     Kolkata 700 091.                                     …  Respondent   No. 2                                                  

(Represented by Advocate: Shri H.P. Shukla)

O R D E R  No.111/2013

SHRI V.RAVI,  TECHNICAL MEMBER:

          The applicants in this case are seeking removal of  the trade mark- MEDAL under No. 450653 in Class 09 and the same mark under No.756461 also in Class 09 of the respondent herein.   The grounds for rectification are mentioned below:-

2.                a.      the applicant is the owner & proprietor of the trade mark   GOLD MEDAL  and GOLD MEDAL (label) in respect of         a wide range of electrical goods since 1979 - 80 and     has    been using the same openly, extensively and continuously since then.

b.                the registration of the  impugned mark has been obtained fraudulently malafidely on false claim and  assertions and so the impugned registration is illegally remaining in the register. 

c.                the trade mark GOLD MEDAL is registered in favour of the applicant as per details mentioned below: GOLD MEDAL and GOLDMEDAL CAB*                                                                                                                                               

Sl.No	Regn.No.	Class	GOODS	Date of registration
I.	449747	09	Wires  & Cables  included In Class 9	17.02.1986
II.	518258	09	Wires & cables, electrical switches, electrical meters, extension Cords, Fuse Units, Main Switches, Electrical parts and fittings included in Class 9	20.10.1989
III.	518259	11	Lamps, Lighting, Heating, Steam generating, Cooling and refrigerating apparatus and their parts thereof all included in Class 11.	12.10.1989
IV.	603634	11	Installation and apparatus for lighting, heating, cooking, ventilating, cooling and refrigerating including electric fans, electric ovens, electric hot plates, tube lights, electric lamps not included in class 9 emergency lamps and night lamps, lamp shades, bulb and tube holders, air coolers, water coolers, refrigerators, air conditioners, water heaters, geysers, immersion heaters, parts of the fittings for all aforementioned goods.	10.08.1993
V *	892522	09	Cables and wires.	01.12.1994

  

          All the above registered marks are duly renewed and valid upto date.   Further, the applicant  are holding copyright on the original artistic work for the label mark GOLD MEDAL under the Copyright Act.    

d.                            the applicant have also obtained various government registration like Sales Tax, Central Excise, PAN No., BIS Certificate bearing ISI mark. Their products are manufactured  under the said mark by M/s Balar Marketing Pvt. Ltd., New Delhi. 

e.           the applicant is the prior and senior adopter of the trade mark GOLD MEDAL which is used in respect of above mentioned products practically through out India and also exported because of its high standard of quality and    precision. 

f.          the trade mark GOLD MEDAL has become a distinctive          indicum of the applicant for  its goods and the public at large associate and identify it as the distinguishing label that enjoys solid and enduring reputation. 

g.      the respondent herein are engaged in the same or similar       business and malafidely, dishonestly and fraudulently adopted impugned trade mark MEDAL without the prior permission, leave or licence of the applicant.

h.                 the impugned mark is phonetically, visually and structurally   same or similar conveying the essentially the basic idea of the applicant’s mark.   The respondents are passing off         their goods  as that of the applicant and are guilty of unfair and unethical trade practice.    

i.           the respondent are fully aware of the rights, use and           reputation of the applicant’s trade mark at the time of         adoption  of the impugned mark. The said mark has been illegally adopted out of business greed 

j.        the respondent claim to be one of the partners of M/S Medal      Sales, Kolkata.  The said alleged firm has filed a frivolous application for the trade mark MEDAL under 1078443 in Class 09 which has been opposed by the applicant herein.    The respondents have not used the trade mark MEDAL independently or through the alleged firm M/s MEDAL SALES as there is no proved contractual agreement between them.  

k.     the applicant are ‘person aggrieved’   by the illegal registration of the respondent’s impugned mark which has caused grave, serious, irrevocable injury on a daily and continuing basis in the market and in trade to the applicant.

l.        Objections to both the applications are based on Section 9,11, and 18(1) of the Act.   Further, the respondents are not entitled to the benefit available under Section 12 as there is no ‘special circumstances’ in their favour. 

          Under these circumstances, the petitioner seeks removal and to expunge the entry pertaining to the impugned trade mark MEDAL  under No.756461 –in Class  09 ; and 450653 in
Class -09. 

3.         The case of the respondent/ registered proprietor to the trade mark is as under:-

a.  the respondent is one of the director of M/s MEDAL ELECTRONICS Pvt. LIMITED, Kolkata,.  The trade mark MEDAL was adopted by B. Ramesh Shah on 10^th July, 1997 and registered in his name.  Later he gave a licence to use the said registered trade mark to M/s MEDAL ELECTRONIC Pvt Ltd. from 26^th August, 1997 and since then the mark has been in continuous use.   

b.      the respondents are in the business of manufacturing & marketing of transistors, radio, tape recorder, car stereo, cassette amplifier, sound box etc.   

c.     the same mark MEDAL was registered earlier in the name of the respondent under no.450653 in Class 09 for similar goods in 1986.   

d.    the respondent is protected under section 32  of the trade Marks Act which reads as under: 

          “Where a trade mark is registered in breach of sub-section (1) of section 9, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration and before commencement of any legal proceedings challenging the validity of such registration, acquired a distinctive character in relation to the goods or services for which it is registered. ”

e.                the respondent have filed documentary evidence to show that the impugned mark has been used by them since 1986 consisting of sales invoices, balance sheet, advertisement materials and other documents in support of the registered trade mark 450653. 

f.                   The rest of the counter statement is a categorical denial of all the claims and assertions made by the applicant which are contrary to the submissions made by the respondent and so the respondents pray that this subject  rectification petition be dismissed with costs.     

4.      The evidence in support of the application is an affidavit of one Shri Praveen Kumar Jain  partner of the applicant firm.  This is supported by other documents such as copy of the registration certificate of the impugned mark along with its journal publication; copy of the registration certificate GOLD MEDAL of the applicant; copy of partnership deed dated 03.04.1998; year-wise sales figure under the trade mark GOLD MEDAL; copies of bills, and invoices issued by applicant including assessment order from Commercial Tax Department and copy of pleadings in opposition No. Cal-736383 to application. No.1078443 in Class 09 filed by the respondent alleged firm M/s Medal Sales, KOLKATA.

5.      The documents filed along with the Counter Statement are  an affidavit  of Shri Ramesh Shah the respondent herein; copy of deed of license agreement; copy of registration certificate; copy of Memorandum & Articles of Association dated 2^nd April 1986; copy of Sales Tax Registration Certificate dated 14^th April 1987; copy of advertisement bills from 31.08.1989 to 2010; copy of purchase bill from 26^th November, 1986 to 2010 and copies of sales bill from 28^th November, 1987 till 2010.  

6.      The matter was listed for hearing before us on 3.12.2012.  We have heard the arguments of the respective counsel, gone through the pleadings and documents. The following authorities were relied on by the applicants and respondents.

APPLICANTS

1.                “Gandhi Scientific Company  Vs Gulshan  Kumar” -2009(40) PTC 22(Del.)

Petition for Interim Injunction -  the question here was who was the prior user of the mark –party seeking discretionary relief must come with a clean hand - in para 30 citing A. Anuradha Vs Canara Bank 2007 ALT 4581 (DB-APHC)”.—to put it differently, a person who touches fountain of justice with tainted hand or who makes an attempt to pollute the course of justice by making false or misleading statements or by suppressing facts must be shown the door at threshold.” 

2.      “Indian Bank Vs M/s Satyam Fibres (India) Pvt. Ltd.” – AIR 1996 Supreme Court 2592

          Authorities be they constitutional, statutory or administrative possess the power to recall their judgements  or orders if they are obtained by fraud as fraud and justice never dwell together.

           

3.                “Century  Traders  Vs  Roshan Lal Dugar & Co.” – AIR 1978 Delhi 259

The mere presence of the mark in the register does not prove its user and is irrelevant  to decide an application for interim injunction unless evidence of use of the registered mark is led. 

4.     “LT Foods Limited & Another   Vs Sulson Overseas P.Ltd.”- 2012 (51) –PTC 283 (Del.)

          Plaintiff registered owner of the trade mark ‘SONA’ for rice – defendant used ‘SULSON SONA’ – plaintiff sought restraining order - prima facie evidence of validity u/s 31 of the Act – close similarity and identify in carton, mark and label –Clear case of infringement – application for making ad-interim injunction absolutely allowed.

5.”DCM Shriram Consolidated Ltd.    Vs     Shri Laxmi Trader and Ors.” – 2009 (41) PTC 772 (Del.)

          Plaintiffs trade mark SHRIRAM for fertilizer, chemicals and agriculture products- defendant adopted identical mark - Held, user not honest – interim injunction made absolute.

         

6.    “Avadh Behari Rohatgi and G.C. Jain, JJ” – AIR 1985 Delhi 210

Plaintiff’s cycle bells sold under the mark ‘B.K.’ - defendant using mark B.K. 81 for cycle bells – mark held deceptively similar and likely to cause confusion – Plaintiff entitled to temporary injunction to restrain defendant from using the said mark – decision of Single Judge (Delhi HC) reversed. 

RESPONDENT:

1.  “Vishnudas trading as Vishnudas Kishandas    Vs   Vazir Sultan Tobacco Co.  Ltd.”   - 1996 PTC (16) 

If traders actually trades or manufactures only one or some of the articles coming under a broad classification and such traders has no bona fide intention to trade in other goods under a class, then he should not be  permitted to enjoy monopoly in respect of all goods coming under the broad classification and thus exclude other traders to get registration.

2.    “Vardhman Properties Limited     Vs  Vardhman Spinning & General Mills Ltd. & anr.  – 2008 (37) PTC 315(IPAB)

         

          Application for removal of Vardaman – Vardaman is another name of Lord Mahavira –Contention ‘Vardaman’ is name of a sect and part of Jain mythology and so can’t be monopolized – applicant themselves were registered proprietor of ‘Vardhman Group’ (word per se).  Held, it does not lie in their mouth to say ‘Vardaman’ is not registerable - no case to vary or for rectification made out.    

Summary of Applicant’s Arguments

6.      The Learned Counsel began his three hour                    arguments by stating that the so called ‘License Agreement’ was a fake for reasons stated earlier during hearing for stay and a fraud is being played against the Board.  The original was produced before us for scrutiny. The applicant have been using ‘GOLD MEDAL since 1979.  Their goods are electrical equipments.  They own four registered trade mark.  The sales turnover under the brand GOLD MEDAL is about Rs. 13 Crores.   The respondent mark on filing date was only ‘proposed to be used’.  Our attention was drawn to respondents sales figure which are all allegedly based on cooked up invoices.  The respondent is essentially seeking to pinch the enormous goodwill  and reputation by managing to secure registration of a mark that is bound to cause confusion and deception in the trade and amongst the pubic.   All bills and invoices have been created to save the impugned mark.  Further, there is clear inconsistency and anomaly of user claimed since 10^th July, 1997 of the impugned trade mark in ORA/242/2010.    How can the same owner claim two different date of users for the same mark for the same goods by a subsequent application?.  Both the impugned marks deserve to be removed from the  register as they are hit by Sections 9, 11, 12 and 18 of the Act. 

7.      Respondents’ Argument

          The Learned Counsel stated that even a ‘proposed to be used’ marks are registrable under the Act and there is no basis to raise an objection under Section 9.  Further, the competing goods are totally different being wires, cables and Switches etc. of the applicant as against TVs sold by the respondent.  So Section 11 objection will not apply to the instant case.  Further, since the respondent have proved user Section 47 will also not apply.  The applicant are not ‘person aggrieved’ as there is no question of confusion and deception between the goods as they are poles apart;  the purchasers are different as is the market and consumers are also different and so no question of confusion or deception arises.

8.      Rebuttal Submissions :

          The counsel argued that they are relying only on Section 57 as the Board has inherent powers to remove the two impugned marks.  The respondent’s entire case is based on fraud which alone is sufficient to expunge these two marks.   

9.      The preliminary issue to be decided is whether the applicant is a ‘Person Aggrieved’ as only a such a person is entitled to file a cancellation petition.  Here,  the applicant feel it is public mischief and the impunged mark should not continue to remain in the register.    The applicant are in the same trade.  The applicants legal rights are clearly affected.   They are substantially interested in having the mark removed from the register.  They have genuine legal grievance.  The applicant are desirous of maintaining the purity of the register which is a public purpose.  The applicant assert registration of the impugned mark is contrary to law as a similar mark has been registered for similar goods.  This gives the applicant the requisite locus to file the instant petition. 

10.    In the case on hand, the grounds for removal of the two impugned marks are based only on Section 57(2) of the Act.  So our examination would be limited to  removal of ‘any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register.’  Here, ‘without sufficient cause’ would be as of the date of application for registration.  The respondent’s mark MEDAL was applied for on 6^th March, 1986.  The issue for consideration is whether the registration of the impugned mark ought not to be made as of that date.  We think that should be the case.  What was the compelling necessity for the respondent to opt for MEDAL as a trade mark when he was aware of GOLD MEDAL an established brand in the market for seven to eight years?   What made the respondent  to apply for Medal as a trade mark within a month of the applicant’s application in 1986?.  These unanswered question gives rise to serious suspicion that the respondent was always on the heel of the applicant.      

11.    For a cogent understanding of the case, It will be useful to reproduce the order of another Bench of this Board dated 01.03.2012 as the issues raised therein spilled over in the main arguments also:

ORDER NO.90/2012

          “ In these two matters interim applications for stay have been moved.   The learned counsel for the respondent Shri H.P. Shukla submits that the Board may not grant interim orders in rectification application and the Board has the power to grant interim orders only in an appeal as per S.95 of the Trade Marks Act, 1999.

            2. The learned counsel appearing for the applicant Shri Pankaj Kumar on the other hand submitted that if fraud is apparent in the respondent securing the registration, the Board may pass such orders as are necessary and the powers of the Board shall not be restricted only to appeals for passing interim orders.

            3. . The learned counsel for the applicant submitted that the applicants are the registered proprietors of the mark "GOLD MEDAL" and they have been using the said mark for a considerable duration and their mark "GOLD MEDAL" has been applied for registration on 1.04.1986 and registration was granted on 28.04.1995. The learned counsel submitted that the case of the respondent is that they have bonafide and genuinely adopted the mark "MEDAL". In ORA/241/2010/TM/KOL" the registration was applied for on 06.03.1986 and registration was obtained on 08.10.2007.   In ORA/242/2010/TM/KOL registration was applied for on 30.06.1997 and registration was granted on 23.05.2005. The learned counsel submitted that the case of the respondent is that Ramesh Shah, one of the partners of the firm Medal Sales conceived and adopted the trade mark honestly on 05.02.2002 and since then they have been using the said trade mark. This is filed in the evidence in support of the application in. the opposition proceedings with regard to another mark not related to these ORAs. In the counter statement filed in this ORA, they have stated that they claim that Ramesh is the Director and he has given licence to use the said registered trade mark to Medal Electronics Private Limited from 26.08.1997 (ORA 242/2010/TM/KOL).

4.      The learned counsel submitted that to prove user the respondent herein has relied on the user by the licensee under two alleged licence agreements one dated 18.06.1987 and the other dated 26.08.1997.  The documents produced along with the counter statement also show sales only by Medal Electronics Private Limited herein. His case in the counter statement is also that after the registration he has given the licence to use to Medal Electronics which has used the mark continuously and extensively and that he is the Director of the said Company. Copies of the licence agreements have been enclosed in the paper book. The learned counsel for the applicant made the following submissions:

(i) that the address of the parties shows that the place of business is Kolkata. According to the learned counsel it is only after 2000 that the city’s name was spelt as 'KOLKATA' and before that it was spelt as 'Calcutta;

(ii) the learned counsel pointed out that on the reverse of page 1 of the agreement the name of the Stamp Vendor is the same person from whom they had purchased the stamp paper for one document of the year 1987 and for the other document which is of the year 1997. The learned counsel submitted that it is difficult to believe the genuineness of these documents as the hand writing is also the same.

4.      We requested the learned counsel for the respondent to produce the original documents since as per Rule 12 of the Intellectual Property Appellate Board (Procedure) Rules, 2003, the originals of the exhibits shall be left in the Appellate Board.

          “12. Exhibits :- -

          Where there are exhibits to affidavits,  a copy each of such exhibits shall          be sent to the other party. The originals shall be left in the Appellate Board   for inspection of the other party. These shall be produced at the hearing        unless the Appellate Board otherwise directs”.

          The learned counsel produced a document which is not the original of the document filed.  However, he submitted that he would be able to produce it if the Board so directs. 

5.      We find that not only the Stamp Vendor is the same, even the two witnesses to the documents are the same persons, one Biswajitmitra and Barun kumar Dey.  It strains our credulity to accept that two documents ten years apart, the party could have approached the same stamp vendor and the same witnesses.  However, to afford an opportunity to the respondent,  the respondent shall send the original of these two documents addressed to the Deputy Registrar, Intellectual Property Board on or before 17.04.2012 after sending a Xerox copy of the said document to the counsel for the applicant and after pursuing the same we will dispose of these two interim applications and orders will be passed on 18.04.2012.  

12.    The petition for stay was refused by the other Bench and both the ORAs was listed for final hearing.  At the hearing, Shri H.P.Shukla, Counsel for the respondent produced the original bill books for scrutiny which were perused and returned.

13.    From a perusal of aforementioned facts, a few firm conclusion based on disputed facts can be clearly inferred: 

(a)  The applicant were the first to adopt GOLD MEDAL and its variant from 1979-80 onwards.  The applicant’s earliest application under No.449794 in Class 9 dates back to 17^th February, 1986 which date is prior to the respondents earliest application under no.450653 also in Class 9 filed on 6^th March, 1986. 

(b)  The respondent B. Ramesh Shah by his own admission in ORA/241/2010 adopted MEDAL as a trade mark on 10^th July, 1997 and assigned the same to M/s MEDAL ELECTRONICS (Pvt.) Ltd. on 26^th  August, 1997.

(c)  The respondent Ramesh Shah also holds another registration for the trade mark MEDAL in Class 9 as of 6^th March, 1986 even though the said mark was only ‘proposed to be used’ on the date of filing under no. 450653.

14.    The disputed  facts are alleged use claimed by respondent from 1986 and also the authenticity of license agreement.   We need to examine the record to ascertain facts.  We will first look into the evidence filed in ORA/241 & 242/2010 filed by the respondent.  The company M/s MEDAL ELECTRONIC(P) Ltd. was incorporated with the Registrar of Companies on 25^th March, 1986.  The company was registered as a dealer for TV set under the Central Sales Tax Act on 14^th April, 1987.    Several copies of invoices towards advertisement effected by Medal Electronics (P) Ltd from 31^st August, 1989 onwards have been enclosed.  Also invoices dated 21.09.1987 (Bill No. 12/87) from page 64  to  page 162 are only proof of sale of TV and parts thereof by MEDAL ELECTRONICS (P)Ltd.  It is only from page 163 to page 166 (4 bills in all) that MEDAL TV is rubber stamped boldly in the middle of the bill.  Page 163 is reproduced below for easy understanding. 

          Y 1 63

15.    Other three invoices are similar bills.  Pages 167 to 240 contain even more  Invoices.   Bill No.8521 most of which are not trustworthy (Page 187) is reproduced as an example.

           

               

16.    In para 5 of the Counter Statement the year-wise sales figure and promotional expenses  under  the  trademark  MEDAL  has  been  furnished  from  1986 -  87 onwards by the respondent.

17.    Objection has been raised that both the impugned marks cannot be registered on absolute grounds of refusal under Section 9 of the Act.   It is true that the eligibility to cross a hurdle on absolute ground of refusal is of a low threshold.  The simple question to be put by the Examiner at the examination stage is whether the mark applied for is capable of distinguishing the goods/services of the applicant?  In other words does it have a distinctive character?  That has to be decided and determined by whether other traders are in competition with each other in the market place.  It should be looked at from a practical and business like objection.  As has been held in Shredded Wheats Case (1938) 55 RPC 125  at  p.145(PC)   “ a word or words to be really distinctive of a person’s goods must generally be incapable of application to the goods of anyone else”.  Once the registrar makes a determination that GOLD MEDAL is a badge of origin of a particular manufacturer, he should not undermine his own ruling by assisting other in the trade to extinguish that ‘Capability to distinguish’ by flooding the register with similar  trade marks.  We therefore, need to take an integrated perspective of whether the impugned mark qualifies for registration under Section 9.   Looking at the totality of the picture and given that GOLD MEDAL is already a prior applicant at the revocation stage we have to uphold an objection on absolute ground under Section 9.    In our view,  the respondent’s mark is incapable of distinguishing the origin of their goods.   

18.    The applicant has also raised objections that the impugned mark was wrongly registered in contravention of Section 11 of the Act.  The fact is on the date of filing of the respondent’s mark,  the applicant’s trade mark GOLD MEDAL was pending. In these circumstance was the acceptance and subsequent registration of MEDAL trade mark valid?.  What would be the legal consequences of this?.  Would it not lead to deception or confusion in the market?  The right test to determine this is, on the balance of probabilities, whether a substantial number of applicant’s customer or potential customers would be misled into purchasing the respondent’s goods in the belief that it was that of the applicant?   We do think  that will be the case here. 

19.    The respondent have placed great reliance on the contention that the competing goods are poles apart and relate to different markets and there is no question of confusion.  The respondents are in the manufacture and sale of TV business whereas the applicants are dealing wires and cables, electrical apparatus, air-conditioners etc.  In the vile atmosphere of the market place where cut throat competition is the order of the day these fine distinction counts for nothing.  The basic idea of the two mark GOLD MEDAL and MEDAL is the same.  We have material doubts why the impugned marks were adopted?  Most lay people will assume the respondent’s goods has something to do with applicant’s products.  Our first imperative is to ensure that there is no confusion in the market by the presence of two similar marks in the register.  In the dispensation of justice, the standard of proof to establish confusion in the market is low.  When an established brand like GOLD MEDAL is modified and a trade mark MEDAL is adopted for use, there is an inherent and substantial likelihood of confusion.  We also do not think the respondent are entitled to the benevolent provision of Section 12.  The root of our distrust is why did the respondent adopt and apply for a similar mark within three weeks of filing of an application for GOLD MEDAL in 1986?  Looked at from a different perspective, the competing marks are essentially the same  as the use of ‘GOLD’ in  GOLD MEDAL is only a qualifying  epithet.  The registration and use in the market of the respondent’s mark MEDAL only impairs the originality and distinctive character of the applicant’s trade mark.   When we apply the notional and fair use test,  the rival trade marks are confusingly similar.  Section 11(1) would thus be a bar to the registration of the impugned marks.   

20.    We all know that as  between two parties, the person who adopts the mark first will get preferential right over the other.  The applicant herein adopted the trade mark GOLD MEDAL in 1979 and applied for its registration on 17^th February, 1986.  The respondent applied for registration of MEDAL some days  later on 6^th March, 1986 as a ‘proposed mark’.  The earliest invoice of the respondent on record is a bill (no.12/87) dated 21^st September, 1987.   The person who makes an application for registration must assert a claim to be the proprietor of the trade mark and should be able to substantiate the claim if challenged (Vitamin Ltd’s Application) 1956 RPC 1.  It would appear adoption of the impugned mark was probably influenced by the presence of the applicant’s mark in the market 8 years before the respondent’s trade mark was born.   Even if we take that the original adoption was semi-independent, the likelihood of deception and confusion existed from day one.  What do we make of a trader adopting the trade mark MEDAL with presumptive knowledge of GOLD MEDAL already in the market for similar good;  an expert in greed  - an accursed brood.  In our view, the adoption of MEDAL as a trade mark was intentional and not accidental to dupe potential customers in the future.  A mark grows by use and with time.  The object of creating the required deception in the market is accomplished through efflux of time and subintentional smokescreen.  From surrounding circumstances, an inference can be drawn that the adoption and use of the trade mark MEDAL is not within the normal boundaries of fair use.  One of the cornerstone in civilized society is the general principle   “Thou shall not covet thy neighbour’s  house ”. These rules and concept apply with equal force to intellectual property.  If you ‘covet’,  ‘steal’  adopt or masquerade someone else’s property or trade mark after suitable window-dressing,  such an act is basically unacceptable.  Therefore, in our view both the original adoption and subsequent use of MEDAL by the respondent is deliberate, dishonest, lacking in probity

and not in conformity with standards of a reasonable and honest person.  GOLD MEDAL is a recognisable sign which identifies products of the applicant falling in Class 9.   Procuring a rival trade mark through stealth mode by quietly securing registration of  a similar mark for similar goods is ultimately intended to mislead the public and encash on goodwill of existing player.  Every registered proprietor craves for certainity and guarantee in the protection of his mark.  Every thing points to the fact that the respondent have camouflaged the applicant’s mark to overcome legal pitfalls and exploit the power of free market.   The common man’s brain is not wired to understand the difference  between MEDAL and GOLD MEDAL.  Clearly, the adoption and use of MEDAL is a disingenuous misrepresentation and the question how the registry allowed the mark to go in the register and its ramifications is both troubling and unsettling.   Accordingly, the claim of ownership/ proprietorship of the impugned mark cannot be accorded to the respondent and the registration of the two marks is also hit by Section 18(1) of the Act.  We also leave open our views on the veracity of the license agreement although everything points to the fact that it is a suspect document. 

21.    In the result both  ORA 241 & 242/2010 is allowed and registered trade mark under No.450653 and 756461 are both removed from the register.   There is no order as to costs. 

(V.RAVI)                                                                                 (S.USHA)

Technical Member                                                       Vice Chairman

(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)