$~
*
IN THE HIGH COURT OF DELHI AT NEW DELHI Reserved on : 8th March, 2018
+
RFA
68/2009 & CM APPLs. 2732/2009 & 3165/2009
RAKESH KUMAR AGGARWAL .....
Appellant
Through: Mr. S. K. Bansal, Mr. Ajay Amitabh Suman, Mr. Kapil Kumar Giri and Mr.
Vinay Kumar Shukla, Advocates. (M:9990389539)
versus
LOCK & LOCKING DEVICES .....
Respondent
Through: Mr. Harshwardhan
Pandey and Mr.
Praveen Kumar, Advocates.
(M:9953134789)
CORAM:
JUSTICE PRATHIBA M. SINGH
JUDGMENT
Prathiba
M. Singh, J.
1.
The present appeal has been
preferred against the final judgment and decree dated 9th January, 2009 by which the
learned Trial Court dismissed the suit of the Appellant/Plaintiff (hereinafter „Plaintiff‟) and partly
decreed the counter claim of the Respondent/Defendant (hereinafter „Defendant‟). The operative portion of the impugned
judgment is set out below:
“Accordingly, I dismiss the suit of the plaintiff and partly decree the counter claim of the
defendant. Accordingly, I pass a decree for permanent injunction in favour of
the defendant and against the plaintiff thereby restraining the plaintiff, its
proprietor, principal officers, servants, agents and representatives or any of
them from manufacturing, selling, offering to sale or supply, advertising,
directly or indirectly dealing in locks or locking devices bearing the trade
mark VIJAYAN or any other deceptively similar mark
RFA
68/2009 Page 1 of 32
and so
packaged as to misrepresent their goods as those of or approved by or
associated with the defendant in any manner and from doing any other thing as
may be likely to lead to passing off of the plaintiff‟s goods or business as
and for those of the defendant. The plaintiff is directed to deliver all the
goods bearing the impugned trade mark and other materials to the defendant for
the purpose of destruction/erasure within 30 days from today.
In affidavit EX.DW1/A, DW-1 has not made a prayer for grant of relief of
rendition of accounts or for damages. Therefore, no such relief can be granted
to the defendant. Parties are left to bear their own costs. Decree sheet be
prepared accordingly.”
2.
The dispute relates to the
trademark VIJAYAN used in relation to locks, locking devices and handles. The
Plaintiff filed a suit for infringement of registered trade mark and passing off.
It claimed that it had used the mark VIJAYAN since 1946 through its
predecessor, from whom it had acquired the rights. According to the Plaintiff,
the Defendant subsequently adopted and used the said mark for identical goods
and hence the prayer for injunction.
3.
The Defendant claimed that it
adopted the trademark VIJAYAN and started using the same since 1960. It filed
an application for registration of
the trademark on 10th July, 1984. The said mark was
advertised in the trademark journal on 1st March, 1991 with the user claim of 1960. The Defendant also filed a
copyright application which was registered as A-46227/1984 for the artistic
work. It thereafter came across a notice issued on 1st January, 1996 by the Plaintiff
(Mr. Rakesh Kumar Aggarwal). By the said notice the Plaintiff had asserted
rights in the mark VIJAYAN and called upon the public /dealers not to use the
same in violation of its rights. When
RFA
68/2009 Page 2 of 32
the Defendant came to know of the same, it issued a
letter dated 30th January, 1996 by which it called upon the Plaintiff to disclose its
date of use of the trademark VIJAYAN and the registration of the same. Upon not
receiving a reply, it sent a reminder dated 21st March, 1996 (Ex.DW-1/4).
4.
In the meantime, the Plaintiff
instituted the present suit on 7th May, 1996 before the Delhi High Court wherein an ex parte order of injunction was passed against the Defendant from
using the mark and label VIJAYAN in respect of locks and other allied, cognate
and related goods. The case made out in the plaint was that the Plaintiff is
the registered proprietor of the trademark VIJAYAN label vide registration
No.532484 which was applied for on 2nd July, 1990. The Plaintiff claimed that it had the exclusive right to
use the mark in view of the registration. The Plaintiff further claimed that
the Defendant‟s mark and the products were identical and hence an injunction is
liable to be granted against the Defendant.
5.
The Defendant filed an
application seeking vacation of injunction on the ground that the suit was
founded on fraud inasmuch as out of the two registrations claimed by the
Plaintiff, one of them was cancelled and the other mark is also liable to be
cancelled. A show cause notice dated 3rd
October, 1996 issued by the Registrar of Trademarks seeking to cancel
Registration No.532484, was relied upon.
6.
The learned Single Judge noticed
that the Defendant had, in its trade mark application, claimed that it has been
using the mark VIJAYAN since 1960 and had also given the sales figures. The
learned Single Judge also noticed that initially the Plaintiff‟s trade mark
application had claimed user
since 1981 but was later sought to be amended by filing Form TM-16 from
1981 to 1946. The Plaintiff also relied upon an assignment made from one
RFA
68/2009 Page 3 of 32
Mr. Babu
Lal Agarwal proprietor of M/s. Agarwal Metal Foundry dated 2nd
November,
1981 to argue that it was the beneficiary of assignment of the
mark from the said erstwhile proprietor. The
learned Single Judge after
noticing
that the Plaintiff had no reason not to plead the assignment deed in
the
plaint, vacated the ad interim order of injunction.
7.
The written statement was
thereafter filed along with the counter claim and the Defendant sought the
following reliefs:-
“i) An order for permanent injunction restraining the plaintiff, its proprietor, principal
officers, servants, agents and representative or any of them, from
manufacturing, selling, offering for sale or supply, advertising, directly and
indirectly dealing in locks or locking devices bearing the trademark VIJAYAN or
any other deceptively similar mark and so packaged as to misrepresent their
goods as those of or approved by or associated with the defendant in any manner
and from doing any other thing as may be likely to lead to passing off of the
plaintiff‟s goods or business as and for those of the defendant;
ii)
An order for rendition of accounts of profits illegally earned by the
plaintiff by the use of the impugned mark;
iii)
An order for delivery up of all the goods bearing the impugned mark,
dies, blocks, cartons, labels and any other infringing material to the
authorised representative of the defendant for the purpose of
destruction/erasure.”
8.
The following issues were framed on 7th October,
1999:-
“1. Whether the suit
has been properly
instituted?
OPP
2.
Whether the Plaintiff is the proprietor of the trade mark VIJAYAN? OPP
3.
Whether the acts of the defendant amount to infringement of trademark?
OPP
RFA
68/2009 Page 4 of 32
4.
Whether the
Plaintiff is guilty
of concealment?
OPD
5.
Whether
the Defendant is guilty of concealment?
OPP
6.
Whether the suit has been properly valued for court fees? OPP
7.
Whether the defendants are passing off their goods as those originating
from the Plaintiffs?
OPP
8.
Whether the counter claim has been properly instituted? OPD
9.
Whether the Defendant is the proprietor of the trademark VIJAYAN? OPD
10.
Whether the Plaintiffs are passing off their goods as those originating
from the defendants? OPD
11.
Whether
the Plaintiff is guilty of fraud? OPD
12.
Relief.”
9.
The suit was then transferred to
the District Court on 26th February, 2004 in view of the enhancement in the pecuniary jurisdiction
of the High Court.
10.
The following witnesses were produced by the
Plaintiff:-
(i)
PW-1, Plaintiff himself;
(ii)
PW-2, Mr. Kirti Pal Singh, Noted
Drafter, Sales Tax/Trade Tax Officer, Aligarh, Delhi;
(iii)
PW-3, Mr. P.K. Sharma, Junior
Assistant, Office of General Manager, District Industry Centre, Aligarh;
(iv)
PW-4, Mr. Manoj Arora, Official
from Trademark Registry, Dwarka, New Delhi.
11.
The Defendant produced the following witnesses: -
(i)
DW-1, Mr. J.S. Bansal, Proprietor of the Defendant;
(ii)
DW-2, Mr. Mohan Lal, Senior Clerk, Trade Tax
Department,
RFA
68/2009 Page 5 of 32
Aligarh;
(iii)
DW-3, Mr. Rajesh Oberoi,
Assistant Examiner, Trademark Registry.
After perusal of the evidence and the pleadings,
the Trial Court was pleased to pass the impugned judgment dismissing the suit
of the Plaintiff and decreeing the Counter Claim.
12.
In the present Appeal, notice was
issued and on 27th March 2009, and the impugned judgement was stayed. On 15th July 2010, the Appeal was
admitted and was placed in the Regular Board. Thereafter submissions were made
by Mr. Shravan Kumar Bansal on behalf of the Plaintiff/Appellants and Mr.
Harshvardhan Pandey on behalf of the Defendant/Respondents. Judgement was
reserved on 8th March 2018. Both parties thereafter filed their sales figures.
Summary of the Evidence:
13.
In this case, voluminous
documents have been produced by both the parties. The Plaintiff has produced
the following documents: -
(i)
Ex.PW1/A
- Plaintiff‟s Label;
(ii)
Ex.PW1/B
- Defendant‟s Label;
(iii)
Ex.PW1/1 - Deed of assignment in favour of
the Plaintiff‟s wife from M/s.
Agarwal Metal Foundry;
(iv)
Ex.PW1/2 - Deed of assignment in favour of
the Plaintiff from M/s. Agarwal
Metal Foundry;
(v)
Ex.PW1/3 to Ex.PW1/95 -
Original sales bills dated back to 22nd July, 1978 to show use of the
mark VIJAYAN;
(vi)
Ex.PW1/1A
- Cash receipt of Rs.1,000/- dated 2nd November,
RFA
68/2009 Page 6 of 32
1981;
(vii)
Original trademark application
for trademark No.532484 dated 2nd July, 1990 in Class VI;
(viii) Copy of
trademark Registration No.201919;
(ix)
Mark A - Copy of Form TM-16 dated 14th February, 1992 by which the Plaintiff sought to amend
the user claim from 1981 to 1946;
(x)
Ex.PW1/96 - An original letter written by
Directorate of Industries dated 30th April, 1992;
(xi)
Copy of trademark journal dated
16th March, 1995 advertising trademark application No.532484.
(xii)
Mark C - Copy of legal proceedings and
affidavit for trademark No.532484
issued on 27th March, 1996;
(xiii)
Original trademark journal of
trademark application No.536465 for trademark VIJAYAN claiming user from 1981.
14.
On the other hand, the Defendant
has produced the following documents:-
(i)
Ex.DW1/1 (colly) – Invoices of the Defendant showing user of the Trademark VIJAYAN, dating back to 24th October, 1985;
(ii)
Ex.DW1/2 – Application dated 18th April, 1988, seeking advertisement of the Defendant‟s
Trademark in the Trademark
Journal;
(iii)
Ex.DW1/4 –
Notice issued to Plaintiff dated 21st March, 1996;
(iv)
Ex.DW1/5 –
Defendant‟s Trademark;
(v)
Ex.DW1/6 - An advertisement in the Magazine
All India Hardware Association;
RFA
68/2009 Page 7 of 32
(vi)
Ex.DW1/7 – Copy of FIR dated 16th June, 2005, filed by the Plaintiff;
(vii)
Ex.DW1/8 – Response by the proprietor of the
Defendant to FIR filed by the
Plaintiff;
(viii)
Copy of caution notice dated 9th June, 1996 issued by the
Plaintiff;
(ix)
Original copyright registration
A-46227/84 for the Vijayan artistic label;
(x)
Copy of notice
of opposition filed
by one M/s.
Vijaya
Industries, Kerala
against the Defendant‟s
application
No.424147;
(xi)
Affidavit of user filed by the Defendant before the
trademark
authority dated 29th January, 1988 along with the statement of sales from the year 1960 till
1987;
(xii)
Copy of FIR/search warrants under
Section 93 Cr.P.C. on a complaint filed by the Plaintiff.
(xiii)
Copy of trademark caution notice
issued on behalf of the Plaintiff on 15th January, 1996.
(xiv) Invoices
dating back to 13th September, 1983.
(xv)
Ex.DW-1/P-1
– Order dated 14th November, 2005
(xvi)
Ex.DW-1/P-2 - Copy of trademark advertisement
of the Defendant;
(xvii)
Copy of death certificate of the
trademark agent of the Defendant dated 25th June, 2005 showing that he expired on
RFA
68/2009 Page 8 of 32
15th October,
2000;
(xviii) Mark
B - Copy of Central Sales Tax Registration dated 7th November, 1974;
(xix)
Ex.D3/A and Ex.D3/B - Copy of current status of marks of 424147 and 532484;
(xx)
Original book of All India
Hardware Association souvenir 2003 containing an advertisement of the
Defendant;
(xxi)
Original records of the Sales Tax
Department showing assessments in the year 1979-80, 1974-75 and 1977-78 showing
sales tax payment during 1970 and 1980.
(xxii)
Photocopy of notice issued under
Section 56(4) issued by the trademark registry seeking to cancel trademark
No.532484;
Who is the prior user?
15.
Trade mark applications: The first and foremost question that arises is as to which of the two
parties is the prior user of the mark VIJAYAN in respect of lock, locking
devices and handles. The Plaintiff initially claimed user since 1981 in the
trademark application No.532484 filed in the name of Mrs. Manju Aggarwal, but
sought to amend it to 1946 thereafter. An amendment was sought by the Plaintiff
on 14th February, 1992. On the other hand, the Defendant in its trade mark
application No.424147 claimed user of mark since 1960 consistently.
16.
Invoices: Insofar as invoices are concerned, both parties have sought to produce
several invoices. The Plaintiff has produced invoices of its predecessor, the
oldest of which dates back to 20th July, 1978. In these
RFA
68/2009 Page 9 of 32
invoices, the trademark VIJAYAN appears in brackets below the
description of the product. There are other invoices which have been placed on
record including order forms etc. of the predecessor, which relate to the
1990s. Insofar as the Defendant is concerned, it claims to have filed its sales
figures since 1960 before the Registrar of Trade marks in support of its trade
mark application. However, due to the death of its Trade mark agent it was
unable to retrieve the documents from there. The earliest invoice goes back to
13th September, 1983. In all of these invoices, again, the brand VIJAYAN is
written below the description of the product.
17.
Sales Tax records: The sales tax and other tax records which have been filed show that the
Defendant has been carrying on business under a different name & style
since the 1970s. The earliest documents date back to 1970-1975. These documents
have been produced by the witness appearing from the Sales Tax Department,
Uttar Pradesh. On the other hand, the tax records of the Plaintiff are not
clear. In his affidavit, PW-1, claimed user since 1946, however, the same is
based on use by the alleged predecessor in interest. There is no document on
record which dates back to 1946. The
Central Sales Tax Registration of the Plaintiff is of 8th April, 1988 and the Central
Sales Tax Registration of the Defendant is of 26th August, 1983.
18.
Copyright Registration: Both parties have registered copyrights. The copyright registration of
the Plaintiff dates back to 2005 whereas the
19.
Advertisements and sales: There is only one public advertisement by the Defendant in a trade
journal published by `All India Hardware
Association‟ in 2003. There is no advertisement by the Plaintiff. The
sales figures of both parties are in lakhs whereas the Plaintiff‟s is higher
than that
RFA
68/2009 Page 10 of 32
of the Defendant. Another important factor is that
the Defendant claims that a large number of its documents were filed with the trademark
registry/given to the trademark agent, who had since expired and they hence
could not retrieve the same.
20.
A perusal of the affidavit filed
by PW-1, Rakesh Kumar Aggarwal, in evidence shows that the Plaintiff firm was
formed only in 1980 but the claim by PW-1 was that he has been using the mark
since 1978. He denied he had
knowledge that the Defendant‟s trademark
application was advertised earlier. He further admitted that he did not know
the date of assignment of the Trademark at the time of filing of the plaint.
When he was asked to point out any single document showing user since 1946, he
could not point out the same.
21.
PW-2, Mr. Kirti Pal Singhal from
the Sales Tax Office, Aligarh produced 12 pages Exhibit PW-2/1 which was the
record summoned by the Plaintiff. As per the said documents, Mr. J.S. Bansal
had started the business of sale and purchase of locks and hardware since
15.8.1983, and that the first purchase of the same was made from it on 26.8.83.
It is also stated that the sale of locks and locking devices would be made
outside U.P., and that trading of locks is the side business of Mr. J.S.
Bansal. As per the documents, Mr. J.S. Bansal had not made a sale prior to
making of the sale in the said statement, and that all sales were made by M/s
Locks and Locking devices.
22.
PW-3 sought to prove the letter
dated 30th April, 1992. He admitted that the office of the General Manager,
District Industry Centre, Aligarh gives quality authentication marks to various
goods. The witness from the trademark office, PW-4, submitted that the
trademark application of the
RFA
68/2009 Page 11 of 32
Plaintiff is dated 2nd July, 1990 and it was renewed. He was not able to produce the trademark
journal advertisement and stated that the records are in the office of
Trademark Registry, Mumbai.
23.
DW-1, Mr. J.S. Bansal, was
cross-examined. He admitted that the vouchers relating to use of the mark
between 1960 and 1963 were given by him to his trademark agent, late Mr. D.R.
Thanekar in Mumbai for filing before the trademark office and since he had
expired in the year 2000, DW-1 could not retrieve the records. He admitted that
his sales tax registration dates back to 1974 and that he had obtained the
sales tax registration in the name of Bansal Metal Industry. Suggestions were
put to him that he was only a trader of locks and that he had not traded in
locking devices, which he denied. He also denied the suggestion that his sales
were confined only to the jurisdiction of Uttar Pradesh. When he was confronted
with Ex.PW-2/1, which was a letter written by him to the U.P. Sales Tax
Department, he admitted the contents of the said letter. He admitted that as
per the said letter he had represented to the Sales Tax Department that he had
his first purchase as part of the firm Locks and Locking Devices on 26th August, 2003. However, he
confirms in his cross-examination that he was not aware that he had to disclose
the details of all his other firms to the Sales Tax Authority, when he had
applied for sales tax registration in the name of the firm Locks and Locking
Devices. He also admitted in his cross-examination that the new firm Locks and
Locking Devices was formed after the dissolution of the old firm M/s. Bansal
Metal Industries. He stated that though he was initially using the letter „R‟
in a circle with the Trademark
VIJAYAN, he thereafter, stopped using the same. In respect of
advertisement given in the Trade Journal of the All India Hardware
RFA
68/2009 Page 12 of 32
Association,
he stated that he had spent huge amount in advertising the
product but he
could not give
the figures. Insofar
as his Trademark
application No.424147 is concerned, he admitted that the same was
abandoned. However, the said abandonment has been
challenged by way of an appeal and the same is pending. On the adoption of the
Trademark VIJAYAN he stated:-
“In 1959
I was blessed with a son whose name is Vijayan. On the basis of name of my son,
I adopted the same as trade mark for my products as I stated the business in
1960. In 1963-64 when he was got admitted in the school, his name was changed
from Vijayan to Brijesh Kumar. It is wrong to suggest that my son was never
named as Vijayan and I concocted the story just to justify the trade mark. I
have not filed any document in the court which may show that my son was ever
named Vijayan......”
24.
He was confronted with the Trade
Mark Journal advertisement for application No.424147, which he admitted. He
reiterated his use of the mark VIJAYAN since 1960.
25.
DW-2 was an official from the
Trade Tax Department, Aligarh. He was summoned with the sales tax records of
M/s. Bansal Metal Industries which showed registration of the said firm since
1974. As per the said official, M/s. Bansal Metal Industry closed its business
on 30th March, 1980 and that it did not have very big volumes of sales.
26.
DW-3, the Assistant Examiner from
the Trademark Registry, Delhi appeared and exhibited the computer generated
records of Trademark Nos.424147 (Ex.DW-3/A) and 532484 (Ex.DW-3/B). He also
produced the letter dated 15th November, 2006 as Ex.DW-3/C. He confirmed that there
RFA
68/2009 Page 13 of 32
was a typographical error in the said letter and the Trademark number
should read as No.532484 and not 532486.
27.
A perusal of all the documentary and oral evidence
reveals that the
Defendant‟s claim of user from 1960 is genuine
whereas the Plaintiff‟s claim of user since 1946 is not believable. The initial
user claim by the Plaintiff was 1981 but the amendment of user claim to 1946
does not inspire confidence of this Court inasmuch as there is no documentation
to back such user claim of 1946. No witness has been produce to establish that
the Assignor had in fact used the mark. Moreover, the amendment was sought to
be made in the year 1992. On the basis of the documents and the oral evidence
which is placed on record, the user claim of the Defendant of the mark VIJAYAN
is prior. This is because of:
a. Claim of user by the Defendant in the trade mark
application which is 1960 as against the initial user claim of 1981 by the
Plaintiff and an amended claim of user to 1946, which is not established with
any evidence;
b.
Earlier copyright registration;
c.
Earlier Sales Tax registration;
d.
Earlier advertisement in the Trade Marks journal;
e. Advertisement in a trade journal in 2003 as against absence of a
single advertisement by the Plaintiff.
28.
The Plaintiff has not placed a
single advertisement on record of any year showing advertisement of the mark
VIJAYAN by it. On the other hand, the Defendant has produced records from the
Sales Tax Department, records from the Trademark Registry and also an
advertisement in 2003 all of which are independent evidences showing that the
Defendant was in
RFA
68/2009 Page 14 of 32
business and using the trademark since 1960. The
Plaintiff, on the other hand, applied for the mark VIJAYAN in 1990 claiming
user from 1981. The Form TM-16 seeking amendment in the user is interestingly
filed only on 14th February, 1992. This was subsequent to the advertisement of the
Defendant‟s mark in the Trademark Journal on 1st March, 1991.
29.
The first deed of assignment
relied upon by the Plaintiff from M/s. Agarwal Metal Foundry (Ex.PW-1/1 and
Ex.PW-1/A) is dated 2nd
November, 1981. However, when the Plaintiff filed
the application for Trademark registration after the assignment, i.e., on 2nd July, 1990, it did not consider
the said alleged user of M/s. Agarwal Metal Foundry and claimed user only from
1981. The application to amend the user from 1981 to 1946 is of the same date
on which a deed of assignment was re-executed i.e. on 14th February, 1992. It clearly
appears that the Plaintiff was attempting to create an evidence of user prior
to that of the Defendant who has claimed user since 1960 in its Trademark
application. Moreover, there are no documents placed on record which trace the
user of the Plaintiff to 1946. As stated earlier, the earliest document of the
Plaintiff on record is of 1970. Thus, there is no doubt that the Defendant is
the prior user of the mark VIJAYAN.
WHETHER THE PLAINTIFF IS THE REGISTERED PROPRIETOR OF
THE TRADEMARK VIJAYAN?
30.
The Plaintiff claims to hold a
Trademark registration in its favour bearing number No.532484. It also claims
to have filed a second application no. 536465 as an associated Mark. The
Trademark application No.532484 was filed in the name of Smt. Manju Aggarwal
trading as M/s. R.M.V.
RFA
68/2009 Page 15 of 32
Hardware and Electricals, Bombay. Smt. Manju Aggarwal, the Applicant in
the Trademark application, is the wife of the Plaintiff, Sh. Rakesh Kumar Aggarwal.
31.
The deed of assignment dated 2nd November, 1981 (Ex.PW-1/1) is
executed by Sh. Babu Lal Agarwal as the Proprietor of M/s. Agarwal Metal
Foundry. A perusal of the alleged assignment shows that the said M/s. Agarwal
Metal Foundry claims to have started using the Mark VIJAYAN in respect of “all kinds of brass, aluminium, iron locks
and hardware items”
since 1946. The said assignment claims that
Rs.1,000/- was the consideration paid by the Plaintiff to the said M/s. Agarwal
Metal Foundry for use of the Trademark. Thereafter, a deed of assignment which
is re-executed on 14th February, 1992 also has the same narration as the earlier deed. The
earliest invoice on behalf of the Plaintiff is of 22nd July, 1978 in the name of M/s.
R.M.V. Hardware and Electricals. The deeds of assignments do not mention any
pending Trademark application or registration of the assigned mark of M/s.
Agarwal Metal Foundry. The earliest invoice placed on record of M/s. Agarwal
Metal Foundry are also dated 20th July, 1978. The Trademark Registration of the Plaintiff bearing
No.532484 was permitted to be amended with user from 1981 to 1946 vide order
dated 15th July, 1994. It is unclear as to how the trade mark authorities
permitted the amendment of user on the basis of these deeds of assignment, in
the application no. 532484. The advertisement in the Journal was clearly
smudged and the Trademark VIJAYAN was not visible in the same. Under such
circumstances, nobody could have opposed the said Trademark. The show cause
notice as to why the Mark should not be cancelled was, therefore, rightly
issued by the Registrar of Trademarks. The Mark not
RFA
68/2009 Page 16 of 32
being visible, the entire purpose of the
advertisement is itself defeated, inasmuch as the purpose of advertisement in
the Trademark Journal is for inviting oppositions from interested parties.
Whereas in the Registration Certificate issued to the Plaintiff, the mark
VIJAYAN is clearly visible, in the Trademark Journal, which precedes the
registration, it is not at all visible. The extract from the Trademark Journal
is set out below:
PLAINTIFF’S ADVERTISEMENT IN THE TM JOURNAL
32.
A perusal of the above Trademark
Journal extract shows that for
RFA
68/2009 Page 17 of 32
whatever reason the Trademark was not correctly
advertised by the Registrar of Trademarks. The Mark which is, however,
registered as is evident from the Trademarks Certificate, is as under:
TRADEMARK REGISTRATION CERTIFICATE
33.
Thus, the show cause issued by
the Registrar of Trademarks appears to be correct. The Plaintiff has also
claimed that it has filed a second
RFA
68/2009 Page 18 of 32
application bearing No.536465 which is not
registered. Moreover, in both the Trademark applications, the user claimed at
the time of filing was 1981. Thus, in any event, the Trademark VIJAYAN as
advertised in the Journal being completely invisible, the registration cannot
be considered valid. Even taking the Trademark Registration to be valid, there
being no evidence to support the user claim of 1946, the benefit of the said
date cannot be given to the Plaintiff.
Infringement and Passing Off
34.
In a suit for infringement, the
first and the foremost test is as to whether the Trademark of the Plaintiff is
validly registered. Section 28 of the Trademarks Act begins with the
expression, “Subject to the other provisions of this Act, registration of a
trade mark, if valid…..”.
Section 28 is extracted herein below:
“28. Rights conferred by registration.—
(1)
Subject to the other provisions of this Act, the registration of a trade
mark shall, if valid, give to
the registered proprietor of the trade mark the exclusive right to the use of
the trade mark in relation to the goods or services in respect of which the
trade mark is registered and to obtain relief in respect of infringement of the
trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark
given
under sub-section (1) shall be subject to any conditions and limitations to
which the registration is subject.”
35.
Thus, the exclusive right in a
Mark flows only if the registration is valid. Under Section 124 of the Act, the
Court trying the suit can come to a prima facie conclusion on the validity of
the Mark. Recently in Patel Field Marshal
RFA
68/2009 Page 19 of 32
Agencies v. PM Diesels Ltd. & Anr. (2018) 2 SCC 112, the Supreme Court held as under:
“31. Rather, from the résumé of the provisions of the 1958 Act made above, it becomes clear that all
questions with regard to the validity of a trade mark is required to be decided
by the Registrar or the High Court under the 1958 Act or by the Registrar or
the IPAB under the 1999 Act and not by the civil court. The civil court, in
fact, is not empowered by the Act to decide the said question. Furthermore, the
Act mandates that the decisions rendered by the prescribed statutory authority
[Registrar/High Court (now IPAB)] will bind the civil court. At the same time,
the Act (both old and new) goes on to provide a different procedure to govern
the exercise of the same jurisdiction in two different situations. In a case
where the issue of invalidity is raised or arises independent of a suit, the
prescribed statutory authority will be the sole authority to deal with the
matter. However, in a situation where a suit is pending (whether
instituted before or after the filing of a rectification application) the
exercise of jurisdiction by the prescribed statutory authority is contingent on
a finding of the civil court as regards the prima facie tenability of the plea
of invalidity.
....................................”
36.
A perusal of the two
advertisements of the Mark clearly shows that the Mark was not advertised
properly as the word VIJAYAN was not even visible in the advertisement.
Advertisement of a Mark is compulsory before a Mark can be registered and an
advertisement of this nature cannot be considered a valid advertisement in law.
There can be no registration without an advertisement. Thus, the Mark itself
having not been advertised, the registration cannot be held to be valid. The
Civil Court trying the suit can come to a finding on the invalidity of the
mark. In the present case, the
RFA
68/2009 Page 20 of 32
Plaintiff‟s trade mark in the advertisement for opposition,
being totally invisible, it created a disability for any person who has rights
in the mark from filing an opposition. The Defendant cannot be faulted for not
opposing the mark. The Defendant‟s user claim was prior, its trade mark
application was prior, its copyright application was prior but it was deprived
from filing an opposition due to the mark in the Journal advertisement not
being visible. The registration being contrary to the Act and the Rules, the
same is prima facie, invalid. The Defendant has already challenged the
Plaintiff‟s registration and it is
for the statutory authorities to look into the same and decide in accordance
with law.
37.
On the other hand, the Defendant‟s Trademark 424147
filed on 10th
July, 1984 was duly advertised and remained pending
for a long time due to the filing of an opposition. The said opposition was
finally decided on 18th August, 2011. However, while the opposition was pending no renewal fee
was paid and hence the Trademark was abandoned. As per the computerized
printouts produced by the official from the Trademark Registry, the Mark of the
Defendant was deemed to be abandoned. The procedure adopted by the Trademark
Registry is quite strange to say the least. While a Mark was under opposition,
no renewal fees could have ever been filed by the Applicant. Thus, the
abandonment seems to be due to a technical issue. The same defies logic.
However, the abandonment has been challenged by the Defendant and would be
adjudicated in the appeal which is stated to be pending. The Defendant‟s
Trademark application appears to be bona fide and so is the user claimed
therein.
38.
The Plaintiff‟s Mark not being
validly advertised and registered, no exclusive rights can be conferred upon
the Plaintiff. Both the parties‟ marks
RFA
68/2009 Page 21 of 32
being unregistered, no infringement action is
maintainable. Even if the Plaintiff‟s Mark is taken to be registered, since no
adequate opportunity was afforded in the filing of opposition of the said Mark
the suit has to be adjudicated on the principles of passing off.
39.
In passing off, the first and the
foremost issue that deserves adjudication is the question of prior user and
thereafter, reputation and goodwill. As already concluded in the paragraphs
above, the Defendant is the prior user of the Mark on the basis of the evidence
on record. There is no document of the Plaintiff showing user prior to 1978 and
hence, the user of 1946 claimed by the Plaintiff is not tenable. On the other
hand, the Defendant‟s user of 1960 as mentioned in the Trademark application,
the production of documents with the Registry by the Defendant‟s trade mark
agent supporting the claim of user since 1960 and
thereafter, the U.P. Sales Tax records etc. prove beyond any doubt that the
Defendant is the prior user of the mark VIJAYAN.
40.
The two marks are identical and
are for an identical class of goods. The representations of the two marks are
set out below:
PLAINTIFF’S MARK
RFA
68/2009 Page 22 of 32
DEFENDANT’S MARK
41.
Though the labels are different,
they are going to be referred by the word VIJAYAN. The label can be changed
from time to time but the word mark remains the same and is identical. The law
of goodwill and reputation is quite settled. It is not necessary in a passing
off action for a party to establish extensive use and sale. Even if the party
has used the Mark in a bona fide manner in the course of trade, so as to,
connect the Mark with the person using it, the same is sufficient to establish
goodwill and reputation. It is also a settled principle of law that priority in
use is superior to priority in registration. In Century Traders v. Roshan Lal
Duggar & Co. AIR 1978
RFA
68/2009 Page 23 of 32
Del 250, a
Division Bench of this Court has held:
“(11) In
Consolidated Foods Corporation v. Brandon and Co., Private Ltd., AIR 1965 Bom
35 , it was observed that "A trader acquires a right of property, in
a distinctive mark merely by using it upon or in connection with his goods
irrespective of the length of such user and the extent of his trade.” The
trader who adopts such a mark is entitled to protection directly the article
having assumed a vendible character is launched upon the market.
Registration under the statute does not confer any new right to the mark
claimed or any greater rights than what already existed at common law and at
equity without registration. It does, however, facilitate a remedy which may be
enforced and obtained throughout the State and it established the record of
facts affecting the right to the mark. Registration itself does not create a
trade mark. The trade mark exists independently of the registration which
merely affords further protection under the Statute. Common law rights are left
wholly unaffected. Priority in adoption and use of a trade mark is superior
to priority in registration.
…………………………
(14)
Thus, the law is pretty well-settled that in order to succeed at this
stage the appellant had to establish user of the aforesaid mark prior in point
of time than the impugned user by the respondents. The registration of the said
mark or similar mark prior in point of time to user by the appellant is
irrelevant in an action passing off and the mere presence of the mark in the
register maintained by the trade mark registry did not prove its user by the
persons in whose names the mark was registered and was irrelevant for the
purposes of deciding the application for interim injunction unless evidence had
been led or was available of user of the registered trade marks. In our
opinion, these clear rules of law were not kept in view by the learned Single
Judge and led him to commit an error.”
RFA
68/2009 Page 24 of 32
42.
It is also the settled position
in law that the Court has to see the use of the mark also from the perspective
of future expansion and use. If both parties are allowed to use the mark,
conflict is bound to arise. It is a case of TRIPLE IDENTITY – same mark, same
goods and same class of customers. The sales of the Defendant are lesser than
the Plaintiff‟s sales. The Defendant has however produced continuous sales
figures from 1960, which it also claims to have filed before the Trade Marks
Registry. The same show that consistently since the 1960s except for 3 to 4
years gap in 1980s, the Defendant has been selling its products under the
Trademark VIJAYAN. The same are available on the Trial Court record and are as
under:
“TRADE AND MERCHANDISE MARKS ACT, 1958
IN THE MATTER OF APPLICATION
NO. 424, 147 in Class 6.
STATMENT OF SALE OF GOODS under The Trade Mark “VIJAYAN”
|
|
Year
|
|
|
|
Sale
|
|
|
1960-61
|
....
|
Rs.0,11,552.
|
|
1961-62
|
....
|
Rs.0,11,259.
|
|
1962-63
|
....
|
Rs.0,11,461.
|
|
1963-64
|
....
|
Rs.0,10,864.
|
|
1964-65
|
....
|
Rs.0,11,106.
|
|
1965-66
|
....
|
Rs.0,11,765.
|
|
1966-67
|
....
|
Rs.0,11,354.
|
|
1967-68
|
....
|
Rs.0,11,346.
|
|
1968-69
|
....
|
Rs.0,11,531.
|
|
1969-70
|
....
|
Rs.0,11,740.
|
|
1970-71
|
....
|
Rs.0,11,664.
|
|
1971-72
|
....
|
Rs.0,11,880.
|
|
RFA 68/2009
|
|
|
|
Page 25 of 32
|
|
1972-73
|
....
|
Rs.0,11,849.
|
|
1973-74
|
....
|
Rs.0,11,638.
|
|
1974-75
|
....
|
Rs.1,10,512.
|
|
1975-76
|
....
|
Rs.1,26,075.
|
|
1976-77
|
....
|
Rs.0,76,009.
|
|
1977-78
|
....
|
Rs.0,42,941.
|
|
1978-79
|
....
|
Rs.0,17,316.
|
|
1979-80
|
....
|
Rs.0,22,213.
|
|
1980-81
|
....
|
Rs.0,23,435.
|
|
1981-82
|
....
|
Rs.0,24,910.
|
|
1982-83
|
....
|
Rs.0,18,873.
|
|
1983-84
|
....
|
Rs.0,68,088.
|
|
1984-85
|
....
|
Rs.1,93,248.
|
|
1985-86
|
....
|
Rs.3,24,654.
|
|
1986-87
|
....
|
Rs.4,55,393.”
|
43.
As against the aforementioned
sales figures of the Defendant, the Plaintiff filed its own sales figures from
the year 1981 to 1991 (Exhibit PW1/68) which are as under:
|
|
“YEAR
|
|
SALES APPROX. IN RUPEES
|
|
1981-82
|
10,977=00
|
|
1982-83
|
11,198=00
|
|
1983-84
|
25,706=00
|
|
1984-85
|
36,110=00
|
|
1985-86
|
42,750=00
|
|
1986-87
|
50,080=00
|
|
1987-88
|
65,099=00
|
|
1988-89
|
75,807=00
|
|
1989-90
|
71,687=00
|
|
1990-91
|
|
67,103=00”
|
44.
When the judgment was reserved,
this Court had directed the parties to produce their latest sales figures in
response to which the Plaintiff has submitted its sales which shows that the
annual sales of the Plaintiff are around Rs.5,00,000/- in the year 2012 to
Rs.56,00,000/- in the year 2017-18.
RFA
68/2009 Page 26 of 32
Insofar as the Defendant is concerned, it has shown
sales of approximately 19.34 lakhs in 2017-18 (11 months). The Defendant‟s use
being much earlier in point of time, longer and consistent and its sales being
substantial, it enjoys goodwill and reputation in the mark VIJAYAN. On the
other hand, the Plaintiff has not been bonafide. It has attempted to portray
its user from 1946 which is not established on record. Its trade mark
registration has not been properly granted – both the amendment in the user claim
and the advertisement in the Journal are contrary to law. The Plaintiff may
have recently increased its sales under the mark VIJAYAN but that by itself
cannot lead to grant of relief. It is impermissible for a party to usurp
another‟s mark and attempt to swamp its goodwill on the basis of higher sales
in recent years, and thereafter claim a better reputation and goodwill. To
establish reputation and goodwill, there has to be prior and consistent use.
The Plaintiff has not filed a single advertisement on record to establish
investment in the mark.
Conduct of the Plaintiff
45.
There is yet another dimension in
this case i.e. the conduct of the Plaintiff. The Plaintiff has, even after the
ex-parte injunction was vacated, filed several criminal complaints against the
Defendants and has also taken several other actions against dealers based on
its copyright registration. Admittedly, the Defendant‟s Copyright Registration
dates back to 1984 whereas the Plaintiff‟s Registration dates back to 2005 i.e.
after the filing of the suit. This Court took cognizance of such FIRs in RFA
68/2009 and passed the following orders on 7th April, 2011.
“It is pointed out by counsel for
the respondent that after grant of
stay of the impugned judgment and
RFA
68/2009 Page 27 of 32
decree,
appellant has filed criminal complaints against the respondent and his family
members.
Mr. S.K.
Bansal, counsel for the appellant on instructions from the appellant submits
that no further complaint shall be filed by the appellant till the present
appeal is decided. He also submits that total three complaints were filed in
2005, 2006 and the year 2009 and all the thee complaints have been stayed by
Allahabad High Court at the instance of the respondent.
Counsel
for the respondent also submits that one FIR No.131/2011 was registered on
03.03.2011. Counsel for the appellant submits that this FIR will not be
pressed, in view of pendency of the appeal. The statement made by counsel for
the appellant is accepted and taken on record. Appellant shall remain bound by
the statement made by his counsel in court today. The stay order shall be
complied with in letter and spirit, as it is pointed out by counsel for the
respondent that appellant is putting banners and posters.
List on 11.07.2011. DASTI to counsel for the
parties.”
46.
Thereafter, even the Allahabad
High Court has stayed three of the FIRs filed by the Plaintiff against the
Defendant in the year 2005, 2006 and 2009. In this manner, the Plaintiff has
constantly harassed the Defendant and its dealers despite the pendency of the
present proceedings.
47.
The Plaintiff also filed a
frivolous intervention in a probate proceeding relating to the family of the
Defendant. The Plaintiff tried to intervene in the family dispute where the
Will of Mr. J.S. Bansal was pending probate and disputed the same. The
Plaintiff made a baseless allegation that the Will is forged when it could have
no knowledge of the same, being a third party unrelated to the family. The
intervention by the
RFA
68/2009 Page 28 of 32
Plaintiff was dismissed on 1st August,
2017 with the following observations:
“The Court of Additional Dist. Judge,
Court No.- 12, Aligarh
Miscellaneous Case No.-09/2015
Ishahak Bansal and others
Vs.
Nischay Bansal and others
Date:
01.08.2017
Today this record is put up for
disposal of Petition 16 C. Both parties to said application has been heard on
last dates.
Disposal of Petition 16 C
This
Application 16 C is presented on behalf of third party Rakesh Kumar Agarwal
with affidavit 17 C under order -1, Rule-10 C.P.C read with Section 151 C.P.C
for making him party in present case in brief with the following statements:-
That, the
petitioner by presenting the application in the court under section 276 of the
Indian Succession Act, 1925, has prayed for the issuing of probate by showing
the Execution of a „Will‟ dated 02.12.2008 executed by Lt Jagdish Sharan
Bansal, the father of the petitioners. That by the Petitioners on the basis of
false and untrue statements the application is presented only with this
objective that, Lt Jagdish Sharan Bansal, the father of the petitioners had
been using the registered trade mark „VIJAYAN‟ of the Applicant Rakesh Kumar
Agarwal under his Firm- Lock & Locking Device, without any title, in
context of which a suit is running in the Court in New Delhi. It is also stated
that, the applicant is the proprietor of M. R.V Hardware and Electricals and he
is sole registered owner and user of trade mark „VIJAYAN‟. He has been using
trade mark „VIJAYAN‟ since the last 35 years. Petitioner‟s Firm-Lock and
Locking Device is a Proprietary Firm, of which Petitioner was Lt Jagdish Sharan
Bansal, who was using in illegal way the registered trade mark „VIJAYAN‟ of the
Applicant. The Applicant has
RFA
68/2009 Page 29 of 32
challenged
on the Court in New Delhi the illegal use of his registered trade mark
„VIJAYAN‟, which is sub-judice. That, for the ends of this planning, the
petitioner has fabricated a forged Partnership Deed, which is void-ab-initio.
On its basis he is willing to get possession. The Applicant/ third party has
also submitted that, the Applicant is necessary party in this Probate case, so
if the Applicant is not made party and he is not given opportunity to place his
contentions, there shall be irreparable loss to him.
.....................................
Here it
is pertinent to mention that, present case is presented for the issuance of
probate certificate in light of Registered Will dated 02.12.2008 executed by
Lt. Jagdish Sharan Bansal. By the Hon‟ble Supreme Court, in the cases of-
Chiranjilal Shrilal Goyenka Vs. Jasjeet Singh (1993) Devi, A.I.R 1954 Supreme
Court - 280; Basanti Devi Vs. Ravi Prakash Ramprakash Jaiswal [2008] S.C.C-267,
And Krishna Kumar Birla Vs. Rajendra Singh Lodha (2008) 4 S.C.C-300 this doctrine
has been propounded that, the proceeding for the issuance of probate
certificate is of summary nature and in such proceedings the court is only to
see the „Will‟ on basis of which petition is filed for issuance of probate
certificate the „Will‟ in question is the last „Will‟ of the Executor and he
has executed the „Will‟ in legal way under his healthy mind. The dispute of
title cannot be disposed of by the Probate Court. The dispute of title can be
disposed of only by the Civil Court on the basis of Evidence. From the
statements of the Applicant in his application 16 C 2 it is clear that,
he is willing to raise the dispute of title in context of „VIJAYAN‟ trade mark,
which cannot be decided by Probate Court. So the Applicant, in the present case
is neither necessary nor proper party. Accordingly the application of
Applicant/ third party is liable to be dismissed.
RFA
68/2009 Page 30 of 32
Order
The application 16 C of
Applicant/ third party Rakesh
Kumar Agarwal is dismissed.
Put up the record for the hearing
on the date of 12.09.2017.
Sd. /-
dated 1/8/17
Additional
Dist Judge
Court
No.-12, Aligarh”
(Translation as filed)
48.
The Ld. Counsel for the Defendant
submits that the Plaintiff also got a frivolous opposition filed through one
M/s. Vijaya Industries through the same counsels to derail the Defendant‟s
Trademark application bearing No.424147. The said opposition was finally
dismissed as being abandoned only on 18th August, 2011, thereby resulting in more than 25 years delay in the
registration being granted to the Defendant.
49.
All the above facts go to show that the Plaintiff‟s
claim of user of
1946 is not made out. The Defendant is the prior
user of the Mark. The Marks are identical and the products are identical. The
Plaintiff has made various attempts to prejudice the case of the Defendant by
sheer harassment which establishes lack of bona fides on behalf of the
Plaintiff. When the
Plaintiff‟s public notice came to the notice of the
Defendant, it called upon the Plaintiff to produce its user and registration,
which the Plaintiff did not do. Despite a reminder, the Plaintiff did not
respond. Instead, a suit for infringement and passing off was filed and the
exparte injunction order which was initially granted was vacated. The entire
effort of the Plaintiff has been to somehow steal a march on the defendant by
claiming prior user without any basis. The Trial Court‟s findings are
completely justified on the facts of the case. The same do not warrant any
interference.
RFA
68/2009 Page 31 of 32
50.
The appeal is, accordingly,
dismissed. The decree of permanent injunction restraining the Plaintiff from
using the mark VIJAYAN is confirmed. All pending applications also stand
disposed of.
PRATHIBA
M. SINGH
JUDGE
JULY 04, 2018
Rekha
RFA
68/2009 Page 32 of 32
