$~
*
IN THE HIGH COURT OF DELHI AT NEW DELHI Date of decision: 21.01.2019
+
W.P.(C) 7983/2012 & CM APPL. 19969/2012
M/S KHUSHI RAM BEHARI LAL .....
Petitioner
Through: Mr. Ajay Amitabh Suman, Mr.
Pankaj
Kumar, Mr. Kapil Kumar and
Mr.Vinay
Kumar Shukla, Advocates.
versus
M/S
JASWANT SINGH BALWANT SINGH
Through: None.
..... Respondent
CORAM:
HON'BLE MR. JUSTICE SURESH KUMAR KAIT
J U D G M E N T (ORAL)
1.
Vide the present petition, the petitioner has challenged the order dated
18.05.2012 passed by the Intellectual Property Appellate Board (hereinafter
referred to as “the
Appellate Board”), whereby the appeal filed by the petitioner has been
dismissed.
2.
Brief facts of the case are that the petitioner, a partnership firm
trading as M/s Khushi Ram Behari Lal (Export Division) comprising of three
partners which was established in the year 1978 and has been carrying on the
business of processing, marketing and exporting of rice since then.
W.P.(C)
7983/2012 Page 1 of 18
The trademark
TRAIN BRAND WITH DEVICE OF TRAIN (herein after referred to as the subject
matter Trade Mark) in relation to said goods and business and has been
continuously using the same since then up to the present time. The petitioner
firm was taken over as a going concern including Trade Mark and other assets
and properties by M/s. Khushi Ram Behari Lal Ltd. with effect from 1.4.1996
under an agreement. Subsequently, the name of M/s. Khushi Ram Behari Lal Ltd.
changed to be M/s. KRBL Ltd. by taking due steps. The partners of the petitioner
firm happens to the directors of the incorporated company which as on date is
carrying on the said business under the subject matter trademarks, hence the
petitioner and its successors name changed to M/s. KRBL Ltd. The petitioner in
order to acquire statutory rights for the subject matter trademark filed an
application for its registration under application no. 609141 in class 30 of
the IVth Schedule of the Trade & Merchandise Marks Act, 1958 before the
Registrar of Trade Marks on 11.10.1993. The Trade Marks Registry was pleased to
advertise this subject matter trade mark in Trade Marks Journal No. 1224 dated
01.06.2000. The respondent filed notice of opposition on 24.07.2000 objecting
to the registration of the said Trade Mark in favour of the petitioner on the
grounds interalia that the respondent
W.P.(C)
7983/2012 Page 2 of 18
is engaged in the business of Rice under the
Trade Mark “TRAIN”.
3.
After considering the rival contentions of the parties, the learned
Registrar vide its order dated 12.10.2006 dismissed the Form TM-16 dated
17.02.2006 filed by the petitioner and allowed the opposition of the respondent
and refused the application for registration of the subject matter trademark
under no. 609141 in Class 30.
4.
Being aggrieved the petitioner approached the Appellate Board by filing
appeal bearing No. OA/05/2007/TM/DEL and the same was dismissed by the impugned
order dated 18.5.2012.
5.
The case
of the petitioner before the Appellate Board was as under:
“A. The Order of the Assistant Registrar is contrary to
the
law and
the facts of the case. The Assistant Registrar has failed to appreciate that
the documents filed /relied on by the opponents/respondents are forged and
fabricated, inter-alia, on the following grounds:-
i)Exhibit 37 of the alleged
invoices filed by the above respondent shows telephone number which are
different from Exhibit 43 both filed before the Registrar. The discrepancy in
the telephone number is for the same period in the alleged invoices for the
same calendar year and therefore the documents filed by the respondent are
doctored and forged.
ii)
Similarly, in Exhibit No. 5 (invoice dated 08.05.1985); exhibit No. 14
(invoice dated 14.03.1987); Exhibit No. 28 (invoice dated 16.08.1995); Exhibit
No. 29 (invoice dated 23.08.1995) and Exhibit 30 (invoice dated 07.10.1997) the
W.P.(C)
7983/2012 Page 3 of 18
impugned trade mark TRAIN brand
depicted on the bills do not correspond to the goods for which it is registered
viz. rice. It is alleged that the respondents have imprinted the same on the
impugned bills at one go without taking into consideration the description of
the article/goods mentioned thereon. It is further alleged that all the
invoices filed by the respondent were prepared prior to 1988 when the trade
mark application was still pending and not registered.
iii)
It is further alleged that the various invoices filed by the respondent
before the Registrar from 1985 to 2002 is based on the signature of the same
person (at the place of the seller) which is highly improbable and the impugned
bills appear to have been prepared at the same time at one go. Further, for the
period, 1995-2002, trade mark application registered under No. 405933 is
missing on the invoices.
iv)
It is also alleged that the Rice License No., Sales Tax License and R.D.
No. of the respondent and C.S.T. No. are varying on the impugned invoices.
v)
The respondents are allegedly engaged in the impugned business of rice
since 1978. However, the bills/invoices pertaining for the period 1985-1987
bears C.S.T. No. 01.07.1957 and STL No. dated 28.03.1949. From this, it is
clear that the bills and invoices filed by the respondents are forged.
vi)
It is further alleged that the sale transaction never occurred in as
much as most of the invoices do not bear the signature of the buyer even though
the signatures of the sellers is present throughout.
vii)
It is further stated that the bills tendered do not bear the complete
address of the purchaser.
W.P.(C)
7983/2012 Page 4 of 18
A.
The Assistant Registrar also erred in accepting the objections raised
under Section 11 of the Act by the respondent and reached the wrong conclusion
that the respondent herein is the prior user of the impugned trade mark without
verifying the documents filed by the respondent which are forged and fabricated
and cannot be relied on. The Assistant Registrar has failed to appreciate the
special circumstances in favour of the applicant/appellant under Section 12 and
he has further failed to give due consideration to the honest adoption and
concurrent user of the applicant/appellants mark since April 1990. The
Assistant Registrar was also wrong in rejecting the request in Form-16 dated
17.02.2006 filed by the applicant/appellant. The applicant/appellant states
that they qualify for registration of the mark and are also entitled to the
benefit of the Section 12 of the Trade Marks Act. It is further alleged that
the order of the Assistant Registrar suffers from non-application of mind and
he exercised his discretion for irrelevant and extraneous consideration. In the
interest of justice the present appeal be allowed and the applicant/appellant
pray that the order of the Assistant Registrar should be quashed/set aside and
application No. 609141 in class 30 should proceed to registration.
6.
Whereas
the case of the respondent was as under:
1)
One Shri Anil Kumar Mittal, Shri Arun Kumar Gupta and Shri Anoop Kumar
Gupta trading as M/s Khushiram Behari Lal applied for the registration of a
trade mark consisting of the word and device of „TRAIN‟ in respect of rice in
class 30 claiming the use of the said mark since August, 1991. The application
was made on 11.10.1993 under No. 609141.
2)
The said trade mark was advertised in trade mark Journal No. 1224 dated
01.06.2000 which was promptly opposed by the respondent/opponent herein.
3)
After the filing of respective evidence by both the parties, the matter
was listed for hearing on 07.06.2004 and it was
W.P.(C)
7983/2012 Page 5 of 18
adjourned from time to time and fixed for final
hearing on 26.02.2006.
4)
Just five days before the date of final hearing, a request on Form TM-16
for amending the use/user was suddenly made by the applicant/appellant after a
gap of almost six years from the date of publication of the impugned trade
mark. Even this was filed by another entity M/s Khushiram Behari Lal Limited.
5)
The respondent herein objected to the request of TM-16 in his comments
dated 23.02.2006.
6)
The hearing was consequently adjourned and finally heard on 03.04.2006.
Both the parties have argued the matter before the Assistant Registrar.
7)
The respondent had pleaded before the Assistant Registrar to reject the
impugned application outright as the applicant had failed to establish
entitlement to trade mark.
8)
It is the
case of the respondent that impugned trade mark
“TRAIN” is identical to and in
respect of same description of goods as the respondents registered the trade
mark No. 405 933 in Class 30.
9)
The Respondent have also secured copyright registration for the artistic
label comprising the word & device of the trade mark under No.A-44877/84.
10)
The Registrar had rightly refused the impugned trade mark as it is hit
by Section 9 & 11 of the Act.
4.
It is further stated that since the respondent‟s right to the registered
trade mark under No. 405933 in Class 30 extends to all cognate Class of goods,
the Registrar had rightly allowed the opposition and the identical trade mark
under No. 609141 was correctly refused.
W.P.(C)
7983/2012 Page 6 of 18
5.
The respondent state that the present appeal is not maintainable. Since
the appellant firm M/s Khushiram Behari Lal Limited had assigned all the rights
relating to the trade mark and goodwill in favour of M/s Khushi Ram Behari Lal
Limited by virtue of assignment dated 01.04.1996, the appellant/applicant has
no locus standi to file this appeal as the impugned application under No.
609141 no longer belongs to them.
6.
Another preliminary objection is that the applicant/appellant have not
furnished a copy of the assignment agreement to the respondent for scrutiny.
7.
The present appeal is liable to be dismissed in view of the filing of
the different documents by different persons at different stages of these
proceedings and making different and contradictory claims as detailed below:-
a)
Application
No. 609141 dated 11.10.1993 was filed by
„ANIL
KUMAR MITTAL, ARUN
KUMAR GUPTA and
ANOOP KUMAR GUPTA trading as a partnership firm of
“M/s KHUSHIRAM BEHARILAL” (as appeared in the Trade
Marks Journal No. 1224 dated 01.06.2000);
b)
The
counter-statement dated 19.06.2001 has been filed by
„ANIL KUMAR MITTAL, ARUN KUMAR
GUPTA and ANOOP KUMAR GUPTA‟, trading as, being the partners of
“M/S KHUSHIRAM BEHARILAL (EXPORT DIVISION)”;
c)
“KHUSHIRAM BEHARILAL (EXPORT DIVISION)” is alleged in turn to have been
taken over by “M/S KHUSHI RAM BEHARI LAL LIMITED” by virtue of execution of an
Agreement dated 01.04.1996,
followed by a petition in Form TM-16 dated 30.11.1999 and as stated vide
paragraph 4 of the aforesaid counter-statement as well as vide paragraph 2 of
an affidavit dated 07.10.2002;
d)
The
Affidavit dated 07.10.2002 has been filed by “Mr.
W.P.(C)
7983/2012 Page 7 of 18
Anil Kumar Mittal” in support of
application and in his capacity as a “Managing Director” of „KRBL LIMITED‟.
A few
export invoices filed by the applicant/appellant in respect of the impugned
application are subsequent to the crucial date of filing i.e. 11.10.1993 and
also by different firms and such evidence have been rightly declined and
refused by the hearing officer.
9.
No cogent documentary evidence has been filed by the appellant/applicant
in support of the various exaggerated claim based on false and contradictory
statement as to the user and proprietorship of the impugned identical trade
mark at different stages of the opposition proceeding. The appellant/applicant,
therefore, lacks bonafide as also honesty and locus standi to file the present
appeal.
10.
Learned Asst. Registrar has rightly refused this impugned application in
accordance with the various provisions of law and as per materials available on
record.
7.
After considering the case of the parties, the learned Appellate Board
opined as under:
“31. Obviously, the opponent/respondent are in
the rice trade and have been alert enough to oppose the impugned mark at the
first available opportunity. We agree with the applicant that many of the
bill/invoices furnished by the opponent are prima facie suspicious. But how
does that improve the prospect of securing the applicant the registration of
the impugned mark? This is not a case where the validity of the opponent’s
registered trade mark is in issue. This Board is meant for imparting justice
between the parties. One who comes to us must come with a clean hand. The
Assistant Registrar who heard the matter has come to the conclusion that the
applicants are not and cannot be the proprietor of the impugned trade mark. He
has also ruled that they are not
W.P.(C)
7983/2012 Page 8 of 18
entitled to the benefit Section 12. The
respondent/opponent have adopted and registered the impugned mark prior in
point of time. The Assistant Registrar has ruled that concurrent use of the
mark would result in likelihood of confusion. It is not the case of the
applicant that the first use in commerce of their mark is prior to the
respondent/opponent. The Assistant Registrar has taken judicial notice that the
impugned mark is confusingly similar and they do not qualify for registration
under Section 12 of the Act. From the reading of the documents and pleading, we
believe that the applicant/appellant are making an all out eleventh hour
efforts to leapfrog into the register through the appellate route having failed
to make the cut before the Assistant Registrar. Adopting an identical mark for
same goods in the same class is a high risk crime and even the best case
scenario so ably put forward by the Learned Counsel for the applicant/appellant
at the hearing cannot save either the applicant or his application. Who can
deny that there will be total confusion in the market if the applicants trade
mark is allowed to co-exist on the register? This Board will do its best to
discourage illicit commerce by use of such tainted mark. Making concession
under Section 12 which is essentially meant for a public purpose in respect of
the imgpuned mark is totally unwarranted giving rise to the misgivings and
would erode the legislative intent for which it was engrafted in the Act. On a
totality of the case, we have no reasons to interfere with the findings of the
Assistant Registrar. Once we come to this conclusion, all other incidental
grounds vigorously raised both by the appellant (dubious supporting documents)
and the respondent including (complicated ownership history of the appellant
trade mark which passed through several hands) need not be gone into at length
and in finer details to sort out unresolved conundrums and acknowledged
disconnect as these do not materially alter the factual position of the case.
This is the gist of what can be
W.P.(C)
7983/2012 Page 9 of 18
extrapolated from the voluminous case record.
The appeal is accordingly dismissed with cost of ₹. 5,000/-
to be paid to the opponent / respondent herein.”
8.
Since none was appearing on behalf of the respondent from the last two
consecutive dates and same was the position on 28.11.2018, this Court notified
the present petition for hearing with the observation that if none appears on
behalf of the respondent on the next date of hearing, this Court shall proceed
with the matter in his absence. Today also none appeared on behalf of the
respondent. Finding no alternative, this Court has proceeded to decide the
petition.
9.
It is pertinent to mention here that in para 18 of the Appellate Board
it is recorded that the petitioner / appellant have raised a number of other
doubts about the credential of the opponents evidence which would lead one to
believe that the impugned mark has been wilfully refused by the Assistant
Registrar.
But that misses
the basic flaw
in the applicant‟s
case.
Accordingly, it
is observed by the Appellate Board that no matter how much he may canvas, the
fact of the matter is the opponents are already the registered proprietor of
another trade mark under no. 405933 in Class 30 in respect of rice since 1983.
Even if disregard the non-allowance of TM-16 ante dating user from 1991 to
April 1990, records indicate that it was
W.P.(C)
7983/2012 Page 10 of 18
opponent who
first adopted the trade mark „TRAIN‟ for basmati rice way back in 1983 which is
at least seven years before the same mark for the same goods was adopted by the
applicant.
10.
It is apparent on perusal of the impugned order that the learned
Appellate Board has ignored the fact that the said registration of the
respondent was only for the word “TRAIN” and the same was registered as
proposed in the use. The learned Board and the Registrar ignored the fact that
the respondent tried to prove the user by forged and fabricated documents and
the petitioner had already filed rectification petition against the said
registration. The learned Board in para 22 of the impugned order gone to the
extent that we cannot embrace the argument that because of the original
registration of the respondents trade mark was purportedly obtained from
wrongful means, the appellant should be allowed to proceed to registration.
11.
However, Appellate Board heavily relied upon the said registration of
the respondent. I note the learned Appellate Board has held in holding that the
said subject
Trade Mark under registration would cause confusion and deception among the
general public and trade and is hit by Section 11 of the Trade Mark Act despite
holding the same to be distinguishing the petitioner‟s case from others under
Section 9 of the Trade Market Act, 1999.
W.P.(C)
7983/2012 Page 11 of 18
12.
As stated by the counsel for the petitioner that while deciding the
objection under Section 11 of the Trade Mark Act, 1999, the competing trade
mark are
seen as a whole. The
respondent‟s registration pertains to the word mark “TRAIN”, whereas the
petitioner‟s subject matter trademark is a label mark having several
distinguishing features.
13. Learned Appellate Board
also failed to appreciate that the petitioner subject matter trademark under
registration has been in use for almost 22 years without any interruption and
there has been no confusion and deception reported by the respondent. The
respondent has positive knowledge of the use of the subject matter trademark by
the petitioner since 1990. Thus, the Appellate Board ought to have been
appreciated the special circumstances exists in favour of the petitioner for
exercise of their discretion under Section 12 of the Act.
14. The learned Appellate
Tribunal was also went wrong in holding the objection under Section 18 of the
Act on the basis of alleged proprietary rights of the respondent in addition to
their trade mark. They ought to have appreciated that the petitioner has filed
sufficient documents over subject matter trademark.
15.
Since
the Appellate Board has recorded that the respondents have taken the
W.P.(C)
7983/2012 Page 12 of 18
shelter of the bogus and
forged documents based upon that itself the case of the petitioner could have
been considered and decided in favour of the petitioner. However, the Appellate
Board failed to appreciate the Act extensive and exclusive and continues user
of the subject matter trade mark by the petitioner since its adoption and
tremendous goodwill/reputation attached thereto. The goods of the petitioner
bearing the subject matter trade mark is highly demanded not only in the
domestic but also in international market viz. Reyadh, Dubai, Jeddah, Dammam,
Saudi Arabia etc. on account of their superior quality, on the other hand the
respondent is admittedly a dealer/commission agent based in Amritsar.
16. On perusal of Exhibit No.
37 (Invoice of respondent dated 26.07.2001) the telephone number of respondent
has been shown as S-544401 and R-501493, whereas, on Exhibit No. 33 (calendar
of the respondent pertaining to same year 2001), the telephone numbers of
respondent has been shown as S-526401 and R-507295. This discrepancy has been
ignored by the Appellate Board by their own reason without seeking comment of
the respondent.
17.
Moreover on perusal of Ex. No. 5 (Invoice dated 8.5.1985), Ex. 14
(Invoice dated 14.02.1987), Ex. No. 28 (Invoice dated 16.8.1995), Ex. No. 29
W.P.(C)
7983/2012 Page 13 of 18
(Invoice dated
23.08.1995) and Ex. 30 (Invoice dated 7.10.1997) from the registered Trade Mark
“TRAIN” brand is appearing on the impugned bills, the goods/items mentioned on
the respective bills do not correspond to Rice. Thus, it seems that the
impugned label of the respondent was imprinted on the impugned bills, in one go
without taking into consideration the description of articles/goods mentioned
thereon. For the aforesaid purpose, the Appellate Board observed that Exhibit
P-1 filed by the respondent shows that the impugned registration No. 405933
under Clause 30 was granted to him against which the petitioner has only
initiated the rectification petition in April, 2003.
18. It is pertinent to mention
that the impugned invoice of the respondent bear the impugned copyrights
application under no. 44877 as registered. For the period 1995-2002, the
impugned trade mark application under No. 405933 is missing on the invoices.
The device of the TRAIN brand is not the same on all the invoices.
19. However, the bill filed by
the respondent pertaining to the year subsequent to 1988, clearly depicts the
impugned application under No. 405933- not registered.
20. The
various invoices filed by the respondent from 1985 to 2002 is based on
W.P.(C)
7983/2012 Page 14 of 18
the signature of the same person (at the place of
the seller) which is highly improbable and the impugned bills appear to have
been prepared at the same time at one go. Further, for the period, 1995-2002,
trade mark application registered under No. 405933 is missing on the invoices.
The respondent has allegedly engaged in the impugned business of rice since
1978. However, the bills/invoices pertaining for the period 1985-1987 bears
C.S.T. No. 01.07.1957 and STL No. dated 28.03.1949. From this, it is clear that
the bills and invoices filed by the respondents are forged.
21. On perusal of the documents on record, I have no hesitation to say that
the learned Appellate Board has relied on the Copy Right Registration of
respondent under No. A44877/84. The Copy Right Registration of the art work of “TRAIN”
brand is extraneous for the purpose of proving the use subject Trade Mark. The
said Trade Mark under registration fulfils the requirement for registration as
prescribed in Trade Marks Act, 1999. The application for registration is not
hit by Section 9, 11 and 18 of the Act and without prejudice the petitioner is
entitled to the benefit of Section 12 of the Act.
22. Moreover, on perusing page 209 of the present petition the respondent
has traded in “husk” and on the said receipt “TRAIN” brand best quality rice is
W.P.(C)
7983/2012 Page 15 of 18
also printed therein. At page 219 the respondent
traded in sugar and on the invoice “TRAIN” brand best quality rice is also
printed. At page 233 also the trading of the respondent is not rice, thus it
cannot be established that the respondent has been trading in the Trade brand
Rice.
23.
To establish above, the scanned
documents (page Nos. 209 & 219) are as under:-
W.P.(C)
7983/2012 Page 16 of 18
24. Similar issue
came before the
Supreme Court in
case of Corn
Products
Refining Co. vs Shangrila Food Products Ltd AIR 1960 SC 142
and in
case of Gandhi Scientific Company v. Gulshan Kumar 2009 (40)
PTC 22
(Del.).
25. In view of above facts discussed and legal position, I hereby set aside
the impugned order dated 18.05.2012 passed by the Appellate Board and
consequently, the application for registration of the Trade Mark “TRAIN”
under No. 609141 in Clause 30 shall be proceeded for registration of the
Trade Mark “TRAIN” brand for basamati rice.
26. The writ
petition is disposed of in the aforesaid terms.
W.P.(C)
7983/2012 Page 17 of 18
CM APPL. 19969/2012
In view of the order passed in the present writ petition, this
application
has been rendered infructuous and is accordingly, disposed of as
such.
(SURESH KUMAR KAIT)
JUDGE
JANUARY 21, 2019/gb/rd
W.P.(C)
7983/2012 Page 18 of 18
