Khushi Ram Behari Lal vs New Bharat Rice Mills

Equivalent citations: 2005 (31) PTC 704 IPAB

Bench: S Jagadeesan, R Singh

Khushi Ram Behari Lal vs New Bharat Rice Mills on 3/12/2004

JUDGMENT

 Raghbir Singh, Vice−Chairman

1         C.O. Nos. 20 and 21 of 1989 filed in the High Court of Delhi under
Sections 46 and 56 read with Section 107 of the Trade and Merchandise Marks Act,
(hereinafter referred to as the Act) have been transferred to this Board in
terms of Section 100 of the Trade Marks Act, 1999 and numbered as TEA Nos. 128
and 129/04/TM/DEL.

2         TRA/128 relates to rectification of the Register in relation to trade mark
’TAJ MAHAL’, label under No. 387177 and TRA/129 relates to trade mark ’TAJ
MAHAL’ word per se under No. 338004 both in relation to class 30 registered in
the name of the respondent.

3         The cases were listed for hearing on 2.11.04 in the sitting of the Board
held at New Delhi. Since the material facts and the legal issues involved in
both the cases are the same, it was decided with the concurrence of both the
counsel that the arguments and conclusions made and arrived at in TRA/128 shall
be adopted in relation to TRA/129 also. Learned counsel Shri S.K. Bansal with
Shri Ajay Amitabh Suman appeared on behalf of the petitioner and learned Counsel
Shri Amarjit Singh appeared on behalf of the respondent.

4         Petitioner claims that he is the proprietor of the trade mark consisting
of device of ’TAJ MAHAL’ label in relation to basmati rice on account of its
adoption in year 1978 and had been continuously using the same thereafter. The
mark has become distinctive and associated with the goods of the petitioner on
account of its long continuous and extensive and exclusive use. The petitioner
has filed application for its registration under application No. 506080 in
respect of rice for export falling in class 30 of the Fourth Schedule.

5         Respondent claims to be the owner and proprietor of the trade mark ’TAJ
MAHAL’ in respect of basmati rice and filed application for its registration
under application No. 387177 in class 30 in relation to rice of all kinds on

3.3.82 showing the user from 1.7.78. Petitioner’s enquiries revealed that the
respondent had never used the said mark for export and the respondent was using
the said mark only in an isolated manner for sale of its rice in Delhi and
started using the same very recently. The petitioner has already filed a passing
off suit against the respondent being Suit No. 2230 of 1989 in the High Court of
Delhi. The petitioner learnt from the local commission agents and rice dealers
that the respondent had filed an application for issuance of search and recovery
warrants under Section 94 of Cr.P.C. Thus, in view of these facts the petitioner
is an aggrieved person in terms of the provisions of Section 56 of the Act.

 6. The respondent being not proprietor of the trade mark TAJ MAHAL’ in
relation to basmati is liable to be expunged and removed from the Register on
the grounds that the respondent acquired the registration in utter disregard of
the petitioner’s right, thus having committed a fraud. Respondent had made
several material misstatements in connection with the use of the trade mark.
Respondent had been engaged in trading deceptively. Respondent had obtained
registration in contravention of Section 11 of the Act. The trade mark at the
commencement of these proceedings was not distinctive of the goods of the
respondent. Respondent got the trade mark registered without any bona fide
intention on his part to use the same. Respondent is not the proprietor of the
trade mark and the registration of the trade mark is in violation of provisions
of Sections 9, 11(a), 11(e), 12(1) and 18(1) of the Act.

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1         Respondent filed its reply on 3.5.1990 controverting all the material
averments of the petitioner. Respondent submitted that the goods of the
petitioner were recovered by the police in a raid conducted at Kandla Port on
24.8.1989. The petitioner filed his rejoinder on 1.4.1991 materially reiterating
the submissions made in the original application.

2         Learned counsel for the petitioner submitted that the registration No.
338004 is in class 30 in relation to rice and was registered on 30.6.1978 in
relation to word mark only. The user claimed is proposed to be used. The
registration No. 387177 is in class 30 in relation to rice for label mark ’TAJ
MAHAL’ as from 3.3.82 and the user claimed is 1.7.1978. He claimed that the user
of the petitioner for the label mark ’TAJ MAHAL’ is from 1.1.1978 in relation to
rice. He drew our attention to page 10 of the order of Registrar in relation to
application No. 506080 in the name of petitioner in the present case wherein the
Registrar has recorded that the opponent (respondent in the present case) has
given figure in relation to their products as from the year 1982−83 only. The
earliest sale document which has been submitted relates to 30.4.1983. Learned
counsel for the petitioner claimed that the respondent is not the prior user of
the mark and for that reason it should be expunged from the Register. He drew
our attention to para 27.08 and 27.09 of Narayanan 4th Edition where it has been
provided that a trade mark could be expunged from the register of registrations
if it was obtained by fraud or by making untrue statement.

3         Learned counsel for the respondent claimed that it is material that it
being a rectification application the onus is upon the petitioner. He argued
that the crux of his argument is that he is the prior user. He drew our
attention to the suits pending against the petitioner being Suit No. 2230/89 and
113/90. He argued that the registration was obtained by the respondent on
30.6.1978 and subsequent registration was taken on 3.3.1982. He further drew our
attention to the appeal pending before the IPAB in CM (M) 199/2000 transferred
from the High Court of Delhi. He further submitted that there are not only two
contending parties contesting the mark ’TAJ MAHAL’, but also a third party in
the same matter. One UB Enterprises had filed their application being
application No. 551949 dated 30.8.89. In conclusion, he submitted that in this
rectification petition the onus is upon the petitioner where he has miserably
failed to make up his case. He further submitted that the concept of user is not
the same as that of the concept of adoption. The petitioner in the present
matter has by his own submission claimed his right by virtue of adoption and not
by virtue of user. Whereas the respondent’s claim is based upon actual user of
the mark. The petitioner has failed to substantiate in the main proceedings and
tried to take advantage in the collateral proceedings.

4         We heard the arguments of learned Counsel for the petitioner and the
learned Counsel for the respondent. The trade marks were registered on 30.6.1978
and 3.3.1982 respectively and as on the date of filing of the present petitions
a period of over seven years had already elapsed and as such the petitions
attract the provisions of Section 32 of the Act. The petitioner has claimed
himself to be the prior user of the mark and has claimed that he is the
proprietor of the mark, being adopter of the mark from earlier date. Besides, it
is submitted that the impugned registrations were taken by fraud in
contravention of Section 11 of the Act and the mark was non−distinctive.
However, there is nothing in his pleadings and the arguments made before us to
substantiate his allegation of fraud, contravention of Section 11 and the non−
distinctiveness of the mark. The petitioner has further submitted that the
respondent had no bona fide intent to use the mark. This submission runs
contrary to the pleadings of the petitioner in itself where while alleging that
the mark is not being used for export purposes, he has acknowledged that the
respondent is using the mark in relation to his trade within India. We are not
concerned whether the mark is exclusively being used for trade in India and the
respondent has no segment of export trade. The fact of the matter is that as per
the pleadings of the petitioner itself the mark is being used. We are concerned

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with that much only. The petitioner has claimed that he is prior user of the
mark ’TAJ MAHAL’. The user claimed by the respondent in relation to registration
No. 387177 is from 1.7.1978. The petitioner claims that it is using the device
of ’TAJ MAHAL’ in relation to basmati rice on account of its adoption in the
year 1978. He has not mentioned any specific date in his pleadings. However, in
arguments before us he claimed his user from 1.1.1978, for which he did not
submit any cogent proof. Still he cannot argue something which is contrary to
the pleadings without amending the pleadings. The use of the year 1978 in the
pleadings is to be strictly construed and he cannot be given any advantage of
the weakness left by him in the pleadings. For that matter it cannot be in any
case taken to be a period anterior to 1.7.1978. Petitioner has further relied
upon the opposition of the respondent in trade mark application No. 506080 of
the petitioner wherein the respondent has given his sales figures as from the
year 1982−83 as reflected through the order of the Registrar in that case. He
has failed to mention that the Registrar has specifically recorded that the
opponent has made his submission that the sales figure for the year 1978−79 to
1981−82 were not immediately available and as such the same had not been given.
The petitioner in his arguments in matter of his prior user put reliance upon
the claim made by him in his application No. 506080 which is much later in time
than the impugned registrations of the respondent The whole theme of
petitioner’s claim in application No. 506080 is about adoption of mark as from
1.1.1978. There is not an iota of claim of user from a specific date. We are
concerned with the claim of actual use.

1         Learned counsel for the petitioner put reliance upon Milment Oftho
Industries and Ors. v. Allergan Inc., 2004 (28) PTC 585 (SC) a matter relating
to passing off action wherein the emphasis of the Court had been that, non−user
of the mark in India in itself could not be a disqualification if the same had
been first used in the world market. The matter was not finally decided. It
related to an interim injunction only and the Court concluded with the direction
that the main suit may be decided at the earliest. There is nothing in that case
which can help us in the instant case. L.D. Malhotra Industries v. Ropi
Industries, PTC (Suppl) (2) 564 (Del) relied upon by the petitioner related to a
controversy between the appellant and the respondent in matter of claim of prior
user by the respondent vis−a−via claim of the appellant as proposed to be user.
The facts involved being crystal clear and in no way being parallel to the
matter instantly before us, we feel that nothing can be taken out of this Delhi
High Court judgment to decide the matter before us. The proposition of law laid
down in Century Traders v. Roshan Lal Duggar and Co. , Pritam Das v. Anil Food
Industries, 1995 PTR 233, Radhika Agro Industries Pvt. Ltd. v. Pawan Agro Foods
Ltd., 1998 PTC 151, Jai Prakash Gupta v. Vishal Aluminium Mfg. Co., 1996 PTC
575, Bimal Govindji Shah v. Panna Lal Chandu Lal, 1997 PTC 347 (Del) relate to a
vital factor that in matter of granting registration or deciding any passing off
dispute, the prior use of the trade mark is the vital factor and the
registration of the mark or filing of application prior in time is not
significant.

2         In view of the above, we are of the view that the petitioner has failed
to adduce any cogent evidence to prove that the original registration was
obtained by fraud, the trade mark was registered in contravention of provisions
of Section 11 of the Act and offends the provisions of that section on the date
of commencement of the proceedings or that the trade mark was not at the
commencement of the proceedings distinctive of the goods of the proprietor.
Accordingly, we dismiss the petition in TRA No. 128. For the reasons the reasons
stated above we dismiss the petition in TRA No. 129 also. No order as to costs.

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