Khushi Ram Behari Lal Vs New Bharat Rice Mills-IPAB

2005(31)PTC704(IPAB)

BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD, CHENNAI

CIRCUIT BENCH AT NEW DELHI

TRA Nos. 128 and 129/2004/TM/DEL (C.O. Nos. 20 and 21/89)

Decided On: 03.12.2004

Appellants: Khushi Ram Behari Lal

Vs.

Respondent: New Bharat Rice Mills

Judges/Coram:

S. Jagadeesan, Chairman and Raghbir Singh, Vice-Chairman

Counsels: 

For Appellant/Petitioner/Plaintiff: S.K. Bansal and Ajay Amitabh Suman, Advs.
For Respondents/Defendant: Amarjit Singh, Adv.

Subject: Intellectual Property Rights

Acts/Rules/Orders:

·  Trade and Merchandise Marks Act, 1999 - Sections 9, 11, 12(1), 18(1), 32, 46, 56, 100 and 107;

·  Code of Criminal Procedure (CrPC) - Section 94

Cases Referred:

·  Milment Oftho Industries and Ors. v. Allergan Inc., 2004 (28) PTC 585 (SC);

·  L.D. Malhotra Industries v. Ropi Industries, PTC (Suppl) (2) 564 (Del);

·  Century Traders v. Roshan Lal Duggar and Co., AIR 1978 Del 250;

·  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)

Disposition: 

Petition Dismissed

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.

7. 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.

8. 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.

9. 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.

10. 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 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.

11. 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. MANU/DE/0153/1977, 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.

12. 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.

Ambala Lalludas Patel Vs Bhagwan Kirana Company

BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD, CHENNAI

CIRCUIT BENCH AT AHMEDABAD

TA/280/2004/TM/AMD (Appeal No. 3 of 2000)

Decided On: 16.11.2006

Appellants: Ambala Lalludas Patel

Vs.

Respondent: Bhagwan Kirana Company and The Assistant Registrar of Trade Marks

Judges/Coram:

Z.S. Negi, Vice-Chairman and S. Usha, Member (T)

Counsels: 

For Appellant/Petitioner/Plaintiff: Umesh B. Brahmbhatt, Adv.
For Respondents/Defendant: Ajay Amitabh Suman, Adv. for R1

Subject: Intellectual Property Rights

Acts/Rules/Orders:

·  Trade Marks Act, 1999 - Section 100;

·  Trade and Merchandise Marks Act, 1958 - Sections 9, 11, 12, 12(1) and 18

Cases Referred:

·  F. Hoffimann LA Roche and Co Ltd. v. Geoffery Manners & Co Pvt. Ltd. AIR 1970 SC 2062;

·  Cycle Corporation of India v. T.I. Raleig Industries Pvt. Ltd. AIR 1996 SC 3295;

·  Madanagopal v. P.K.A. Ramacandra Mudaliar (Dead) By LRS 1995 SCC Supp.;

·  Sunderabai W/o Devrao Deshpande v. Devaji Shankar Deshpande 1954 AIR (SC)-0-82;

·  Gupta Enterprises v. Gupta Enterprises AIR 1998 Del 232;

·  Registrar of Trade Marks v. Asok Chandra Rakhit Ltd. AIR 1955 SC 558;

·  Uphras Lapasan v. Ka Esiboll Lyngdoh AIR 1986 Gauhati 55;

·  National Sewing Thread Co. Ltd. v. James Chadwick AIR 1953 SC 357;

·  Amritdhara Parmacy v. Shri Satya Deo Gupta AIR 1963 449;

·  Dyer Meakin Breweries Ltd. v. Scotc Whisky Association AIR 1980 Delhi 125

Disposition: 

Appeal Dismissed

ORDER

S. Usha, Member (T)

1. Appeal No. 3 of 2000 along with Civil Application No. 40 of 2000 in Appeal No. 3 of 2000 for stay filed before the High Court of Gujarat, Ahmedabad has been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and numbered as T.A./280/2004/TM/AMD.

2. The appellant filed an application for registration of the label, inter-alia consisting of the word 'BHAGWAN' Jeera along with letters 'A' and 'L' device of Goddess Durga seated in a Lion in respect of Jeera, Fennal Seeds, methi seeds in class 30 under application No. 474885 on 9.7.1987 claiming user since 23.12.1981. The said application was advertised before acceptance in the Trade Mark Journal No. 1086 (supplement) dated 8.9.1994 at page 54.

3. The first respondent had given their notice of intention to oppose the registration of application No. 474885 and the appellant herein had filed their counter statement in the said application. The first respondent did not file their evidence in support of opposition, but had written to the Assistant Registrar, that they relied on the notice of opposition, whereas the appellant had neither filed their evidence nor had intimated the Assistant Registrar about their intention to rely on the counter statement in support of their application. After completion of formal procedures the Assistant Registrar set the matter for hearing.

4. The Assistant Registrar heard the matter and allowed the opposition and refused registration on the following grounds:

The Assistant Registrar had rejected the objection for the reason that the first respondent had not given any reason under Section 9 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the said Act) to say as to why the mark applied for is not distinctive or capable of being distinguished. He had also rejected the objection under Section 12(1) of the said Act as the first respondent had no right to raise the same, as the first respondent's mark was pending registration. As regards Section 11(a) of the said Act, the Assistant Registrar rejected the objection as there was no document filed to prove about the confusion or deception being caused. The learned Assistant Registrar on accepting the contention of the first respondent that they had adopted the mark 'BHAGWAN PUJARI' since 1.1.1980 from their trading style wherein the appellant had not given any reason for their adopting the word 'BHAGWAN', had allowed the opposition and refused registration of the application. Aggrieved by the said order the appellant filed the above appeal.

5. The matter was taken up for hearing in the Circuit Sitting at Ahmedabad on 26.7.2006. Learned Counsel Sri Umesh B. Brahmbhatt appeared for the appellant and learned Counsel Shri Ajay Amitabh Suman appeared for the first respondent.

6. Learned Counsel for the appellant submitted that they have been using the mark 'BHAGWAN PUJARI' in respect of jeera since 23.12.1981 and had gained reputation over the mark. He also contended that the non appearance of the parties is not to be seriously viewed. The learned Counsel for the appellant forcefully argued that the opposition was attracted by resjudicata as there was already a compromise memo filed and a settlement arrived at between the parties. He also argued that as they have been using the trade mark since 1981, they were honest concurrent users and that there was no necessity to prove deception or confusion.

7. Learned Counsel for the appellant submitted that the Assistant Registration had not considered the provisions of Section 9 of the Act and had passed an erroneous order. He also drew our attention to the findings of the Assistant Registrar as to the evidence being taken on record in his finding which were not filed by the first respondent at the earlier stage as per the procedure. Learned Counsel for the appellant relied on the following judgments in support of his claim:

F. Hoffimann LA Roche and Co Ltd. v. Geoffery Manners & Co Pvt. Ltd. MANU/SC/0302/1969;

Cycle Corporation of India v. T.I. Raleig Industries Pvt. Ltd. MANU/SC/0886/1996;

Madanagopal v. P.K.A. Ramacandra Mudaliar (Dead) By LRS 1995 SCC Supp.; 

Sunderabai W/o Devrao Deshpande v. Devaji Shankar Deshpande 1954 AIR (SC)-0-82; 

Gupta Enterprises v. Gupta Enterprises MANU/DE/0116/1998; 

Registrar of Trade Marks v. Asok Chandra Rakhit Ltd. MANU/SC/0052/1955.

8. Learned Counsel for the first respondent mainly contended that the opposition proceedings will not be attracted by resjudicata as a compromise was entered into only in 2001 after the impugned order was passed by the Assistant Registrar in the year 1999. He also contended that the onus was on the appellant to satisfy the Assistant Registrar that the trade mark applied is not objectionable and is capable of registration. But here the appellant had neither filed any documentary evidence nor appeared before the Assistant Registrar to prove is case. Learned Counsel for the first respondent relied on following judgments in support of his claim:

Uphras Lapasan v. Ka Esiboll Lyngdoh MANU/GH/0011/1986;

National Sewing Thread Co. Ltd. v. James Chadwick MANU/SC/0063/1953;

Amritdhara Parmacy v. Shri Satya Deo Gupta AIR 1963 449; 

Dyer Meakin Breweries Ltd. v. Scotc Whisky Association AIR 1980 Delhi 125

9. We have carefully considered the pleadings on file and arguments of both the counsel. We are of the opinion that the marks being the similar and identical and that there is every possibility of deception and confusion being caused in the public. On perusal of the records we find that the first respondent had been using the mark since 1.1.1980 whereas the appellants have been using the mark since 23.12.1981. Considering the above fact we are of the view that the first respondent is prior user in point of time and have valid rights than that of the appellant. We are, therefore, of the view that as per Section 9 of the said Act the application of the appellant does not qualify for registration. As regards Section 11(a) of the Act, to qualify for acquiring distinctiveness the appellant have to prove user. Here we do not find any evidence to prove user by the appellant. In fact the appellant has not filed evidence in support of his application nor have made a mention of the same in the counter statement filed either before the learned Assistant Registrar or this Board at the appeal stage. Moreover we also find that the appellant has neither given any reason for his non appearance before the Assistant Registrar nor has he given any reason for non filing of evidence in support of his application even before this Board. Looking at the attitude of the appellant we are of the opinion that they are not interested in pursuing the application. As the mark does not qualify to be distinctive, are prohibited for registration under Section 11(a) of the said Act. Similarly, goods being the same, same consumers, same trade channels and same selling outlets for both the products and there being closer similarity between the goods, there is every likelihood of confusion being caused and are disqualified for registration under Section 11(a) of the Act.

10. The goods have not acquired distinctiveness nor are capable of being distinguished and rights under Section 18 of the said Act is also not available.

11. We are, therefore, of the opinion that the goods being the same and the mark applied is deceptively similar and identical with the registered mark, the objection of the first respondent under Section 12 of the Act sustains. In view of the foregoing reasons the appeal is dismissed, confirming the order of the Assistant Registrar of Trade Marks. As the main appeal itself has been dismissed, the Civil Application No. 40 of 2000 for stay becomes infructuous. However, there shall be no order as to costs. 

Vaidya Nandram Gigraj Chamaria Vs Raj Kumar Saraf-CB

2007(35)PTC984(CB)

BEFORE THE COPYRIGHT BOARD AT NEW DELHI

Appeal Nos. 1-12/2005-CRB(NZ)

Decided On: 19.09.2007

Appellants: Vaidya Nandram Gigraj Chamaria
Vs.
Respondent: Raj Kumar Saraf

Judges/Coram:

Dr. Raghbir Singh, Chairman, R.D. Paliwal and D.R. Meena, Members
Counsels:
For Appellant/Petitioner/Plaintiff: A.K. Behra, Advocate
For Respondents/Defendant: Ajay Amitabh Suman, Advocate

Subject: Intellectual Property Rights
Acts/Rules/Orders:

·  Copyright Act, 1957 - Section 14(1)(b),

·  Copyright Act, 1957 - Section 2(ff),

·  Copyright Act, 1957 - Section 3,

·  Copyright Act, 1957 - Section 45,

·  Copyright Act, 1957 - Section 45(2),

·  Copyright Act, 1957 - Section 50,

·  Copyright Act, 1957 - Section 78;

·  General Clauses Act 1897 - Section 20;

·  Trade Marks Act, 1999 - Section 20,

·  Trade Marks Act, 1999 - Section 21

Cases Referred:

·  Glaxo Orthopedic U.K. Ltd. vs. Samrat Pharma MANU/DE/0257/1983

Citing Reference:

Marley Cooling Tower Co. v. Paharpur Cooling Pvt. Ltd.	Mentioned
British Northrop Ltd. v. Testeam Blackburn Ltd	Discussed
Glaxo Orthopedic U.K. Ltd. vs. Samrat Pharma MANU/DE/0257/1983	Mentioned
Hindustan Pencil Private Ltd. v. Universal Trading Company	Mentioned
Hunter v. Feldman & Co	Mentioned
Infabrics v. Jaytex Shirt	Discussed
Kickapoo Co. v. Perry Bottling Co	Mentioned

ORDER

1. This is an application under section 50 of the Copyrights Act, 1957 for rectification of the Register of Copyrights for expunction of an entry in the said register. According to the petitioner, he is in the business of manufacturing and marketing of Pansarat and Ayurvedic medicines under the name and style of M/s. Vaidya Nandram Gigraj Chamaria since 1958 in the territory of India and since 1979 in the territory of Delhi. He has earned tremendous goodwill in the market in relation to manufacturing and marketing of Pansarat and Ayurvedic medicines including "Vijay Hingoli". He is holding various registered trade marks and an application for the registration "Vijay Hingoli" is pending consideration before the Trade Marks Registry. He launched the product titled Vijay Hingoli in 1981 in the territory of Delhi. The product was being marketed in bottles and plastic packs since 1981 and he started marketing the said product in pouches in 1991. Petitioner has also given his sale figures of the said product since 1994-95. He submits that the respondent is fully aware of the existence of the petitioner in the market since they are distant relations and hail from the same village in Rajasthan. Respondent surreptitiously and with malafide intention made an application before the Registrar of Copyrights on 28.7.03 to register the aforementioned artistic work and get up in his name by making some cosmetic changes therein in relation to the same product "Vijay a Hingoli". Respondent has falsely claimed the user of the impugned artistic work since 1995. Registrar issued the registration certificate number A-66496/2004 on 26.2.2004. Petitioner came to know about the fact through an advertisement given by the petitioner in a local newspaper on 24.11.2004. Respondent has got the registration done by misleading the Registrar of Copyrights. Petitioner in evidence has submitted as P-1 and P-2 (57 pages) in support of his claim for necessary Ayurvedic and Sale Tax licensing and registrations. P-3 is a copy of the label of his mark. It does not bear any date of its creation or issuing. P-4 are the copies of the vouchers and bills for advertisement expenditures. At serial numbers 71-73 of the annexures are the acknowledgements dated 27.3.1996 issued by the Registrar of Trade Marks office in favour of Ram Awatar Chamaria trading as Vaidya Nandram Gigraj Chamaria, Tilak Bazar, Delhi. Further, it is not evident from the petitions and the supporting evidence as to whether these applications were published in the Trade Marks Journal. At P-5 is the copy of the artistic work of the respondent. At P-6 is a copy of the search report of the Sales Tax authorities dated 18.10.2002 relating to the respondent. P-7 is the copy of the registration certificate issued by the Registrar of Copyright in favour of the respondent. P-8 is the copy of the newspaper advertisement inserted by the respondent.

2. According to the submissions of the respondent, it is a proprietary concern of Shri Raj Kumar Saraf. Respondent in his written statement, while controverting the submissions of the petitioner in his rectification application, has submitted that he had conceived, coined and authored the artistic label comprising of the said bust, word VIJAYA, ANMOL-G and HING GOLI known as ANMOL-G VIJAY HING GOLI. The get up, lettering style, colour scheme and placement of said features in the said art work are in artistic manner. The said copyright is an original artistic work within the meaning of the Copyright Act, 1957 and in order to obtain the statutory rights, the respondent has applied for obtaining registration which now stands registered at number A-66496/2004. Respondent is the owner and proprietor of the said copyright and has the exclusive rights over the same within the meaning of, inter alia, section 14(1)(b) of the said Act. There is further descriptive narration of the business achievements of the respondent and how he had been using the said artistic work in furtherance of his business. He has further referred to a suit filed by him bearing number C.S. (OS) No. 1233 of 2004 which resulted into a compromise. Respondent has either controverted or denied all of the averments of the petitioner. Annexure I is the copy of letter dated 15.5.93 purported to have been written by one, Shri Manoj Kumar Aggarwal trading as M/s. M.M. Marketing Company to Sales Tax officer which letter the respondent claims to bear the photograph of the bust in question. Annexure II is the copy of the impugned registration and the bust allegedly to have been conceived by the respondent. Annexure III is the copy of the compromise suit settled by the respondent in another matter referred to above. Annexure IV are the trade mark registration certificates held by the respondent. Annexure V is a copy of an affidavit sworn by Shri Shiv Kumar Aggarwal father of the respondent, Shri Raj Kumar Saraf. Annexure VI are the copies of the newspaper advertisements and the sale bills.

3. Learned counsel for the petitioner argued that there is nothing to prove that the impugned artistic work was first published by the respondent in 1995 as claimed. He drew our attention to the provisions of section 3 of the Copyright Act, 1957 which provides as under:-

"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."

He submitted that there is nothing in the pleadings and evidence of the respondent to indicate that the impugned work had seen the light of the day - what to say of having been made available to the public - till as late as 28.7.2003 when it was submitted to the Registrar for registration and thus not necessarily made available to public at that stage even in terms of section 3 of the Act. Use of some bust - not necessarily the similar even - by some other person who is neither assignee or licencee of the author upon his letter pad cannot be taken as compliance of the provisions of section 3. He drew our attention to the acknowledgements of his trade mark applications at p. 71 onwards of his evidence. These acknowledgements for the registration of his label Vijay Ghamaria Hing Goli (both in Hindi and English) are dated 27.3.1996. Three Trade Mark certificates adduced by the respondent in evidence were issued in 2005 with effective dates of 6.12.2001 and 5.11.2002 and those too relate to different word marks having no nexus to the impugned artistic work. In conclusion, he submitted that the respondent has made false averments before the Registrar as to the publication of the work being that of 1995. Learned counsel also submitted that the respondent is in violation of proviso to sub-section (1) of section 45 of the Act having not made necessary declaration and obtaining the certificate from the Registrar of Trade Marks. Learned counsel referred to Hindustan Pencil Private Ltd. v. Universal Trading Company, 1999 PTC (19) 379, Kickapoo Co. v. Perry Bottling Co., 2000 PTC 477 and Marley Cooling Tower Co. v. Paharpur Cooling Pvt. Ltd., 2000 PTC 647.

4. Learned counsel for the respondent, at the outset, submitted that the principles governing the rights in the nature of copyright are different from those governing trade mark rights. Questions of deceptive similarity, prior presence in the market and volume of trade are more relevant in the context of trade mark law. In the context of copyright law, originality of the work is the touchstone of the presence of right in the author. Again, in respect of an artistic work which is used or is capable of being used in relation to any goods, certain specific obligations as envisaged under proviso to sub-section (1) to section 45 get attracted. Coming to the specifics of the registration in question, he submitted that though the registration of the impugned copyright was done through certificate issued on 26.2.2004, the relevant year of first publication of the work as reflected through column 9 of the certificate is 1995. He submitted that the pleas of the petitioner relating to early drug licenses and sales tax registrations obtained by him have no relevance in the instant matter. Petitioner's mark 'Vijay Hingoli' has no artistic features. The only evidence bearing a date which has been produced by the petitioner is the date of his making applications for registration of trade marks. The said date being 27th March, 1996 is later in time to the date claimed by the respondent as the year of publication. He drew our attention to para 2 of the written statement where it has been claimed that as back as 1993 the artistic work was in the process of creation at the hands of the respondent. He drew our attention to Annexure III of the written statement where is placed the copy of the court decree whereunder a compromise was arrived at in between the respondent and another party in relation to a trade mark and copyright infringement issue. Learned counsel made a broad survey of evidences produced by the petitioner to support his claim of early presence. He deduced that all of the bills and invoices produced by the petitioner are post 1993. Learned counsel submitted that the necessary declaration and the certificate obtained by the respondent from the Registrar of Trade Marks provided under proviso to sub-section (1) of section 45 of the Copyright Act, 1957 were submitted to the Registrar of Copyright. Petitioner is not an interested party. Hence, there was no requirement for giving him a notice as provided under rule 16(3) of the Copyright Rules, 1958. Learned counsel referred to Glaxo Operations UK Ltd. v. Samrat Pharmaceuticals, MANU/DE/0257/1983 : AIR 1984 Delhi 265 : 1984 (4) PTC 66 (Del.) in support of his contentions.

5. Learned counsel for the petitioner in reply drew our attention to the copy of the letter dated 15.5.1993 on the letter pad of M/s. M.M. Marketing Company produced by the respondent in his evidence purported to have been written by the proprietor of the said firm to the Sales Tax Officer which the respondent has contended bears the facsimile of the bust in the making which ultimately resulted into the impugned artistic mark at the hands of the respondent. The photo copy as annexed to the written statement does not carry any impression of the facsimile supposed to have been printed in the original. However, learned counsel produced a blank letter pad which did carry a simple bust with no additionalities (except the word 'Rajasthani' in English written in semi-circle over the cap of the bust) as to the product description, nomenclature as Anmol-G Hing goli (both in Hindi and English), name and address of manufacturers, etc. available in the impugned work as registered. Learned counsel for the petitioner contended that M.M. Marketing is not Bindal Food Products, the petitioner. Hence, the document as evidence has no relevance and thus of no help. He further drew our attention to a document annexed at P-6 bearing the caption "Dealers Profile" for M/s. Bindal Food Products with Shri Shiv Kumar Saraf as proprietor which he argued is an extract from the records of the Sales Tax Department. It mentions the date of the commencement of business as 18th October, 2002 and the same date as the date of the first inter-state sale.

6. 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 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.

7. Learned counsel for the respondent, as stated above, has rightly submitted that the underlying principles in relation to copyright law are different from those relating to the trade mark law. Subject matters covered and the creators thereof in both the areas belong to different stratum. Accordingly, the differing modus operandi and raison d'etre therefore for registration in both the branches of law are based upon sound principles of policy and law. Sections 20 and 21 of the Trade Marks Act, 1999 make elaborate provisions for making public through advertisements of the trade mark applications, receiving and hearing of oppositions thereto in a quasi-judicial manner before those proceeding for registration. There is nothing parallel in the Copyright Act, 1957 except that section 45(2) of the said Act provides that the Registrar of Copyright may, before entering the particulars of the work in the Register of Copyrights, hold such inquiry as he may deem fit. Accordingly, in absence of there being a mechanism of putting the interested or the aggrieved persons on notice through a public notice in the form of an advertisement and thus giving them an opportunity of filing an opposition to the proposed registration of the work, the Registrar is left with a situation where he has to take a note of the stated things in the application on their face value so long there be something which does not stand to reason on the face of it. He is more or less in the state of operating under the doctrine of uberrima fides as applicable to the insurance contracts where the relationship of the insurer and the insured is a relationship of utmost good faith - insurer having issued the insurance policy on the basis of whatever has been stated by the proponent. He has to record whatever has been stated so long it is not something which is absurd on the face of it. In such a state, entire burden to vouch for the truthfulness of the stated things at any time of the existence of the registration is upon the applicant.

8. Learned counsel for the petitioner submitted at the outset that the respondent having stated the year of first publication as "1995" against column 9 of the Statement of Particulars under the application for registration of copyright in Form IV has ventured into making a blatant wrong statement since no publication of the work in terms of section 3 of the Act had been done till 24th November, 2004 when a caution notice was published alongwith the impugned artistic work in Sandhya Samachar, New Delhi dated 24th November, 2004. "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 referred to above. Form IV is a form prescribed under rule 16 of the Copyright Rules, 1958 which rules have been framed under section 78 of the Copyright Act, 1957. Section 20 of the General Clauses Act, 1897 provides as under:-

"Where by any Central Act or Regulation, a power to issue any notification, order, scheme, rule, form or bye-law is conferred, then expressions used in the notification, order, scheme, rule, form or bye-law, if it is made after the commencement of this Act, shall, unless there is anything repugnant in the subject or context, have the same respective meanings as in the Act or Regulation conferring the power."

In view of the above, "publication" in column 9 of the Statement of Particulars of Form IV is to be understood as provided in section 3 of the Act. "Publication", as provided in section 3, is targeted at making availability of the work to the public. The availability of the work can either be done by issuing the copies or communicating the same to the public. Section 2(ff) of the Act provides the definition of "communication to the public" as under:-

"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".

9. Article 3(3) of the Berne convention for the Protection of Literary and Artistic Works (Paris Act, 1971) provides as under:-

"The expression 'published works' means works published with the consent of their authors, whatever may be the means of manufacture of the copies, provided that the availability of such copies has been such as to satisfy the reasonable requirements of the public, having regard to the nature of the work....."

10. It shall be instructive to look into the judicial findings in this score in certain English cases. House of Lords, per Lord Scarman, in Infabrics v. Jaytex Shirt, (1981) 1 All ER 1057, while dealing with the meaning of publication under section 49(2)(c) of the U.K. Act of 1956, observed as under:-

"When construing words and phrases in an Act dealing with a subject as complex and varied as copyright, it is perilous, in the absence of clear guidance in the Act, to assume that in respect of every element or aspect of the subject ordinary English words, which have many applications, are used consistently to express only one particular application. That they should be construed as bearing the same generic meaning I accept. Publish is to make public (emphasis provided by us). This meaning the words 'publish', 'publishing', 'publication' will always have....".

In another case (British Northrop Ltd. v. Testeam Blackburn Ltd., (1974) RPC 57 at pp. 67, 68), J Megarry in the Chancery Division elaborating "issued to the public", put reliance upon the following observations in Francis, Day and Hunter v. Feldman & Co., (1914) 2 Ch. 728:-

"Issued to the public' can mean no more than an invitation or a right to the public to acquire copies. Notice of the publication is given to the public by the copies sent to the British Museum and to the universities. I do not say that that satisfies the Statute. I think it does not, but 'issued to the public' can mean no more than having them on sale. You need not advertise and you need not call the attention of the public to the fact that you have published, if you are prepared to supply on demand. Here, the moment there came a demand they fully satisfied it."

11. In the instant case, under column 9, year for first publication has been claimed as 1995. The earliest document adduced in evidence relates to 1993. It is a 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 for to complete the requirements of some registration. Respondent in his written statement has submitted that he had authored/conceived portrait of bust of human being having small moustache on the face, bearing spectacle on eyes and wearing cap on the head in 1993 and had allowed his brother Shri Manoj Kumar Aggarwal, then trading as M/s. M.M. Market Company to use the said bust on the letter head and promotional materials of M/s. M.M. Marketing Company. He has also produced an affidavit of Shri Manoj Kumar Aggarwal in this regard. There is no primary evidence to substantiate his authorship of this work. Photo copy of the letter pad annexed as evidence does not make out any figure of the bust printed thereupon. It may be because of the reason of poor photo copying. Learned counsel submitted a blank original letter pad of the firm depicting the bust. A quick and cursory glance of the bust leads to unquestionable conclusion that it is not what is appended to the application for registration on 28.7.2003. Respondent himself has submitted in para 3 of his Written statement that he conceived, coined and authored the artistic label in 1995. In view of that anything relatable to 1993 has no meaning. Again, in terms of section 3 of the Act, the work is to be made public. 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. Application dated 10.6.2003 was received on 28.7.2003 in the office of the Registrar and registration certificate therefor bearing number A-66496/2004 was issued on 26.2.2004; Since there is no requirement under the Act to give a public notice conveying the fact of having filed the application or inviting objections thereto, it can safely be deduced that the requirement in the nature of compliance of the requirements of section 3 of the Act in either making work available to the public by issuing copies or by communicating the work to the public cannot be presumed to have been complied with on any of three aforementioned dates. C.S. (O.S.) No. 1233 of 2004 filed in the High Court of Delhi by the respondent against M/s. G.K. Product which resulted into a settlement again relates to 2004 and there is nothing in the petition which helps us to deduce that the publication of the artistic work had been done in 1995. Respondent filed an application for registration of word VIJAYA per se as trade mark on 5.11.2002 which application was advertised in the Trade Marks Journal MEGA6 dated 25.11.2003. Accordingly Trade Mark No. 1148151 effective from 5.11.2002 was issued on 5.3.2005. This again is an application for the word VIJAYA per se having no proximity to the impugned artistic work. Again, this being in 2002 is of no help to subscribe to the fact of publication of the impugned artistic work in 1995; Respondent has submitted number of bill copies (all relatable to years 2002 to 2004) evidencing the sale of his products including Anmol Vijaya Hing Goli. For reasons stated earlier, these bills are of no help in proving the fact of the publication of the artistic work in 1995. Respondent has submitted three copies of newspaper advertisements relatable to the impugned artistic work. Shanivarta, Punjab Kesri, Delhi dated 8.5.2004 and Somvarta, Punjab Kesri, Delhi dated 10.5.2004 carry advertisements for the products of the respondent bearing the impugned artistic work. Sandhya Times, New Delhi dated 24.11.2004 carries a CAUTION NOTICE from the respondent about his trade mark and the impugned artistic work. Again, these advertisements which though strictly in accord with the requirements of section 3 making available the work to the public or communicating the work to the public do not help the respondent being much belated in time to prove an event having taken place in 1995.

12. Maintenance of the purity of the register is the hall mark of the registrations relating to intellectual property rights. In a situation, where registration is to be given effect to simply on the basis of the facts stated by the applicant Without insisting for any evidence at the time of registration in support of the facts stated, heavy burden is cast upon the applicant while stating the facts which he should be able to support by adducing the necessary evidence at any later date when he is called upon to substantiate the same. We feel that the respondent has miserably failed in this regard. In view of the above, we hold that the Register of Copyrights shall be rectified by expunging the entry bearing number A-66496/2004. No orders as to costs. 

DANDI SALT P.LTD.& ANR VS INDO BRINE INDUSTRIES LTD.& ORS.-SC

IN THE SUPREME COURT OF INDIA

Petition(s) for Special Leave to Appeal (Civil) No(s).33463/2012
(From the judgement and order dated 09/10/2012 in AFO No.242/2012 of The
HIGH COURT OF GUJARAT AT AHMEDABAD)

Date of Order: 14.12.2012

These Petitions were called on for hearing today.

Appellant: M/S DANDI SALT P.LTD.& ANR
Vs.
Respondent: M/S INDO BRINE INDUSTRIES LTD.& ORS.

(With prayer for interim relief and office report)
WITH S.L.P.(C)...CC NO. 20246 of 2012
WITH I.A. 1 (C/Delay in filing SLP and office report)

Hon'ble Judges:
HON'BLE MR. JUSTICE D.K. JAIN, HON'BLE MR. JUSTICE MADAN B. LOKUR,  JJ.

Counsels:
For Appellant/Petitioner/Plaintiff:
Mr. S.K. Bansal, Adv., In SLP 33463/12 Mr. Ajay Amitabh Suman, Adv., Mr. Suwarn Rajan, Adv., Mr.Rakesh Kumar,Adv.-on-Record, In CC 20246/12 Mr. Arjun Garg, Adv.-on-Record, Mr. Anand Shankar Jha, Adv.,

For Respondents/Defendant:
Mr. P.S. Narasimha, Sr. Adv., Mr. Annam D.N. Rao,Adv., Mr. A. Venkatesh, Adv., Ms. Neelam Jain, Adv., ms. Mansha Monga, Adv.,

UPON hearing counsel the Court made the following

ORDER

Delay condoned.

Having heard learned counsel for the parties at some length, we are of the view that instead of going into the merits of the impugned orders at this stage, it would be expedient and proper if the trial Court is ..2/- : 2 : directed to dispose of the applications filed by the parties under Order 39 Rules 1 and 2 as also under Rule 4 of Order 39, C.P.C. in Regular Suit Nos. 3 and 2 of 2011 expeditiously. We may note that by the impugned orders dated 9th October, 2012 and 6th July, 2012, the High Court has directed the trial Court to dispose of the said applications within a period of 60 days/six months from the date of receipt of copy of their orders. We are, however, informed that the said applications have not even been taken up for consideration.

Under the circumstances, we direct the trial Court to dispose of the said applications as expeditiously as possible but in any case, not later than four weeks from the date of receipt of copy of this order. Learned counsel appearing for the parties assure us that their clients shall not seek adjournment and shall render full cooperation in the disposal of the said applications.

The special leave petitions stand disposed of accordingly.

Kamdhenu Ltd Vs Kamdhenu Dairy

IN THE SUPREME COURT OF INDIA

Petitions for Special Leave to Appeal C Nos. 30802/2017

Date of Order: 11.12.2017

Appellants: M/s Kamdhenu Ltd.
Vs.
Respondent: M/s Kamdhenu Dairy & Anr.

Judges/Coram:
Mr. Justice Ranjan Gogoi Mrs. Justice R. Banumathi
Counsels:
For Appellant/Petitioner/Plaintiff: , Mr. Suhail Dutt, Sr. , Mr. Azhar Alam, , Mr. Ajay Amitabh Suman, , Mr. Virendra Sinha, , Mr. Pran Kishan Jana, , Mr. Sheel Bansal, , Mr. Vatsal Kumar, , For Ms. S. Janani, AOR
Prior History:
Arising out of impugned final judgment and order dated 17-08-2017 in SBCRP No. 149/2012 passed by the High Court Of Judicature For Rajasthan At Jaipur

ORDER

Heard the learned counsel for the petitioner and perused the relevant material. Applications for exemption from filing certified copy of the impugned order are allowed.


We do not find any legal and valid ground for interference. The Special Leave Petitions are dismissed. (NEETU KHAJURIA)

Brij Mohan Sharma Vs Milton Plastics

2005(31)PTC693(IPAB)

BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD, CHENNAI
CIRCUIT BENCH AT NEW DELHI

Transferred Appeal No. 218/2004/TM/DEL (CM (M) 464/97

Decided On: 03.12.2004

Appellants: Brij Mohan Sharma
Vs.
Respondent: Milton Plastics

Judges/Coram:
S. Jagadeesan, Chairman and Raghbir Singh, Vice-Chairman
Counsels:
For Appellant/Petitioner/Plaintiff: S.K. Bansal and Ajay Amitabh Suman, Advs.
For Respondents/Defendant: Amarjit Singh, Adv.
Subject: Intellectual Property Rights
Acts/Rules/Orders:

·  Trade Marks Act, 1999 - Section 100;

·  Trade and Merchandise Marks Act, 1958 - Sections 9, 11, 12(3), 18 and 18(1);

·  Code of Civil Procedure (CPC)

Cases Referred:

·  Trojan and Co. v. N.N. Nagappa Chettiar, AIR 1953 SC 235;

·  Gramophone Co. of India Limited v. Mars Recording Pvt. Ltd. and Anr., 2001 PTC 681 (SC);

·  Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd., 1996 PTC (16) SC 512;

·  United Brothers v. United Traders 1997 PTC (17) DEL PG. 603;

·  Roshan Lal Oil Mills Ltd. v. Assam Company Limited, 1996 PTC (16) DEL 699;

·  Procter and Gamble Co. v. Satish Patel, 1996 PTC (16) DEL 646;

·  Hindustan Pencils Pvt. Ltd. v. Prem Chand Gupta, 1985 PTC 33 DEL;

·  Corn Products Refining Co. v. Shangrila Foods, AIR 1960 SC 142;

·  SIA Gems and Jewellery Pvt. Ltd. v. SIA Fashion, 2003 (27) PTC 227 (Bom);

·  Shamlal v. Parley Products, AIR 1967 Madras 117;

·  Kumar Electric Works v. Anuj Electronics, 1990 PTC 26 DEL

Disposition:
Appeal Dismissed

JUDGMENT

Raghbir Singh, Vice-Chairman

1. CM (M) No. 464/97 has been transferred to this Board in terms of section 100 of the Trade Marks Act, 1999 from the High Court of Delhi and has been numbered as TA/218/04/TM/DEL.

2. The appellant Shri Brij Mohan Sharma, Proprietor, Arun Electricals, appellant herein filed an application No. 483050-B for registration of trade mark 'MILTON' in respect of goods being parts of electrical fittings, including electric switches, coil holders, plugs, coil adopters, electric connectors, electric testers, electric bells and buzzers, iron and voltage stabilizers included in class 9. The same was ordered to be advertised before acceptance and was accordingly advertised in Trade Marks Journal No. 1068 dated 1.12.1993 at page 954. The respondent herein M/s Milton Plastics gave notice of their intention to oppose the registration on 1.3.1994. The appellant filed his counter statement on 8.9.1994.

3. The learned Assistant Registrar of Trade Marks held the hearing on 3.4.1997 and came to the following conclusion. He found that the matter mainly related to Sections 9, 11(a) and 18(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The learned Assistant Registrar was of the view that the impugned word 'MILTON' is a known surname and is inherently non-distinctive and also incapable of distinguishing the goods of its proprietor from that of the goods of the other proprietors. In matter of acquired distinctiveness or the acquired capability of distinguishing by user, he came to the conclusion that in the light of evidence submitted by the appellant, the mark is not qualified for registration. The appellant in his affidavit has claimed that they had adopted the mark since 1.1.1985. The sale figures given in their affidavit are from the year 1986-87 to 1994-95. The earliest of the four photocopies of sale invoices submitted relate to 19.4.1986, the date of application being 21.12.1987. Such a short period was taken to be not sufficient for imparting either the distinctiveness or capability of distinguishing to the goods.

4. In matter of his examination under Section 11(a) of the Act the Assistant Registrar came to the conclusion that the respondent's goods, namely, domestic containers and the appellant's goods like electric bell, buzzers, electric iron are having trade connections. Relying upon the dictum of the Hon'ble Supreme Court in Corn Products case, MANU/SC/0115/1959, he came to the conclusion that the impugned word 'MILTON' is likely to deceive or cause confusion amongst the consumers in view of the earlier use and reputation of the respondent. In view of the mark having not qualified under Sections 9 and 11(a) of the Act, he came to the conclusion that the right of proprietorship under Section 18(1) of the Act also fails. In view of the insufficient user of the appellant he found that the impugned mark does not qualify for honest concurrent use under Section 12(3) of the Act.

5. The appellant in the appeal filed in the High Court of Delhi has claimed that they are continuously using the trade mark 'MILTON' since 1.1.1985. The respondent never used the trade mark 'MILTON' in relation to electric items prior to 1.1.1985. Learned Assistant Registrar came to an erroneous conclusion in matter of his examination under Sections 9, 11(a), 12(3) and 18(1) of the Act. Respondent in his reply rebutted the averments of the appellant.

6. The appeal was taken up for consideration on 2.11.2004 in the sitting of the Board held at New Delhi. Learned counsel Shri S.K. Bansal appeared on behalf of the appellant and learned Counsel Shri Amarjit Singh appeared on behalf of the respondent.

7. Learned counsel for the appellant argued that the trade mark registrations No. 379531 and 460288 for the word 'MILTON' held by the respondent are only in relation to the small domestic containers. Respondent had no where in his opposition in TM-5 filed before the Registrar had made a mention that he is using the mark for electric food warmers being manufactured by them. It is only in the order of the Assistant Registrar that a reference as to the use of the mark 'MILTON' in relation to electric food warmers is given. Thus, in view of the conflict between the pleadings and the evidence, the benefits thereof should not accrue to the respondent. The learned Assistant Registrar could have only relied upon whatever was there in the pleadings. He has put his reliance upon a plea which was not in the pleadings. Learned counsel put his reliance upon the observation of the Supreme Court in M/s. Trojan and Co. v. N.N. Nagappa Chettiar, MANU/SC/0005/1953 para 2 where the Apex Court had held that a decision of the case cannot be based on grounds outside the pleadings of the parties and it is the case pleaded that has to be found. Without an amendment of the plaint the Court was not entitled to grant the relief not asked for. He further put his reliance upon the Gramophone Co. of India Limited v. Mars Recording Pvt. Ltd. and Anr., 2001 PTC 681 (SC), para 10 wherein the Apex Court held that in absence of any pleadings is any record, the Court cannot decide the matter on that score. In view of that, proper amendment of the pleadings in necessary. We have carefully examined the above objections raised by the learned Counsel for the appellant with regard to the procedural aspect of the case. In both the cases referred to above the issues relate to strict observance of the provisions of Code of Civil Procedure since the matters involved related to Civil Courts down below. The Supreme Court has rightly made its observation for strict adherence of the rules of pleadings contained in the Code of Civil Procedure. The Registrar of Trade Marks being a quasi-judicial institution created under the Trade and Merchandise Marks Act, 1958, is not strictly bound by the technical rules of the Code of Civil Procedure. Thus, if something which comes in arguments to the notice of the Registrar, we find that there is nothing wrong in his relying upon the same in his order in the larger interest of furthering the principles of natural justice. While arguing the case on merits, the learned Counsel for the appellant observed that there are no trade connections between the goods for which the impugned trade mark is to be used and the goods for which the respondent is holding its registrations. He relied upon the following case in support of his arguments. Vishnudas trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd., 1996 PTC (16) SC 512. The issue in this case relates to rectification of the Register where the respondent company was only manufacturing cigarettes and was holding registration in broad classification relating to tobacco. It is worthwhile to take note of the concluding observations of the Court wherein they have made it clear that they have not expressed any opinion on the claim of registration of the trade mark 'CHARMINAR' in favour of the appellant for zarda and quiwam being manufactured by them. The issues involved in that case are not relevant in the instant matter.

In United Brothers v. United Traders 1997 PTC (17) DEL PG. 603 the Court has specifically distinguished the goods of the petitioner from the goods of the respondent and held that both are not allied or cognate goods.

In Roshan Lal Oil Mills Ltd. v. Assam Company Limited, 1996 PTC (16) DEL 699 the Court held that besides the goods being distinct the marks too were visually dissimilar.

J. Lyons and Co. Ltd.'s Appln. for Rectification, (1959) RFC 120 (C.A). The case is not relevant in the instant matter. In this case the Register was ordered to be rectified by excluding 'ice cream' from the goods for which the mark was registered as the proprietor admitted non user of the mark in respect of ice cream. In the cases cited above, the Courts looking into the description of various products involved held them to be of dissimilar nature and as such allowed registration of the impugned marks.

Learned counsel for the appellant tried to take support from The Procter and Gamble Co. v. Satish Patel, 1996 PTC (16) DEL 646 case which related to passing of action wherein an injunction was sought against user of trade mark 'SAFEGUARD' since 1984 and an injunction through that suit was sought in 1995. The petitioner did not raise any objection for full 11 years. Injunction was refused on this ground. We feel this case is of no hold to the appellant where user is hardly little more than one year prior to the filing of application for registration. Learned counsel tried to rely upon Hindustan Pencils Pvt. Ltd. v. Prem Chand Gupta, 1985 PTC 33 DEL where the petitioner and the respondent both were having registrations in relation to specific items of stationery and the petitioner filed rectification application against the respondent for removal of his registration from the Register. The issues involved in that case are not of much relevance in the instant matter.

8. Learned counsel for the respondent submitted that the crux of arguments by learned Counsel for the appellant is that the goods involved are different. Impugned application for registration was filed on 21.12.1987 and the user claimed is since 1.1.1985 and the appellant has been able to prove his user only since 19.4.1986. He argued that there are the same trade channels, same consumers and same trade connections in relation to both the goods. This fact has neither been denied nor challenged in the pleadings of the appellant. Even the evidence adduced in this regard remains unrebutted. There is complete identity of the marks. He relied upon the following observations of the Supreme Court in Corn Products Refining Co. v. Shangrila Foods, MANU/SC/0115/1959:

Where there are a "series" of marks, registered or unregistered, having a common feature or a common syllable, if the marks in the series are owned by different persons, this tends to assist the applicant for a mark containing the common feature. But before the applicant can seek to derive assistance for the success of his application for registration from the presence of a number of marks having one or more common features which occur in his mark also, he has to prove that these marks had acquired a reputation by user in the market.

On this score he argued that the appellant's claim miserably fails in relation to Section 11(a) of the Act. He further argued that the relevant date for the purpose of assessing distinctiveness of the mark being 21.12.1987 when the application was made, the appellant has miserably failed to support his claim for acquiring distinctiveness. He has been using the mark since 19.4.1986 only. Here the user is of 20 months only. The four invoices which have been adduced to prove the user till the date of filing of the application have only one out of those which relates to electric iron. Thus, the appellant has miserably failed to support his claim for qualifying under Section 9 of the Act. This fact has been taken note of by the Assistant Registrar in arriving at his conclusions at page 9 of the impugned order. Besides relying upon the Corn Products Case, the learned Counsel for the respondent referred to SIA Gems and Jewellery Pvt. Ltd. v. SIA Fashion, 2003 (27) PTC 227 (Bom) wherein the said High Court held that the plaintiff selling jewellery under the trade name SIA and the defendants selling dress material and sarees in a shop bearing the name SIA shall lead to likelihood of confusion. It was held that the defendant's goods are cogent to plaintiffs goods and thus there is likelihood of causing damage to plaintiffs reputation. He put his reliance also upon Shamlal v. Parley Products, AIR 1967 Madras 117 where the said Court held that 'Pearl' was deceptively similar to the mark Tarle's' and was likely to cause confusion in the minds of public. In Kumar Electric Works v. Anuj Electronics, 1990 PTC 26 DEL, the High Court of Delhi held that the trade mark 'OLYMPUS' registered in respect of electric flat iron in the name of the plaintiffs attracts the case of infringement and pas sing-off for the use of the same mark by the defendant in respect of television sets.

9. We have carefully considered the contentions of both the counsel and find that with a view to qualify for registration for the purpose of section 9 of the Act the mark should be distinctive of the goods of the proprietor or if it is not distinctive it should be capable of distinguishing the goods of the proprietor from the other proprietor. It is sufficient to conclude that the use of hardly for 20 months prior to the filing of application for registration of the mark has no capacity to acquire distinctiveness. Further, the mark being a name or surname, is inherently non-distinctive and is thus not capable of distinguishing the goods of its proprietor from that of the goods of the other proprietor. It has to acquire distinctiveness over a long use with a view to be capable of distinguishing the goods. Whereas the respondent's mark 'MILTON' is in abundant use since 1971. Thus, the appellant miserably fails in his claim under Section 9 of the Act. In matter of scrutiny under Section 11(a) of the Act, the learned Counsel for the appellant marshalled many instances in supporting his claim. However, we find that much of them are either not relatable to the issues or in some of them, looking into the very character and nature of the marks and the description of goods for which they are being used, it has been held that the goods belong to different description and thus there is no likelihood of any confusion. The Vazir Sultan case is a land mark case in relation to rectification of the Register where simply for the non-user of the mark for certain specific goods the rectification of the Register was done. However, while passing orders on this score, the Supreme Court has very clearly spelled out that they have not gone into the merits of the registration application of the plaintiff in relation to the products which they have ordered to be excluded from purview of category of tobacco for which the registration was held. Hence, the said judgment is of no hold to the appellant in the present case. To the contrary, there is a strong case to reach the conclusion that the requisite parameters required for qualifying under Section 9 of the Act are grossly lacking in view of the user of the mark being for a very limited period of 20 months and that too confined to a specific item relating to electrical goods, that is, electric iron. Similarly, there being the same consumers, same trade channels and same selling outlets for both the products and there being closer similarity amongst the goods, there is every likelihood of causing confusion to attract disqualification under Section 11(a) of the Act. Since the very distinctiveness-acquired or potential-is in jeopardy under Section 9 of the Act, the right of proprietorship under Section 18 of the Act cannot be made available. The honest concurrent use under Section 12(3) of the Act needs the use surely which has to be honest and concurrently but over a long period which is patently lacking in the present case.

10. In view of the above we feel that the Assistant Registrar of Trade Marks has rightly disallowed the registration and accepted the opposition. Hence, the appeal is dismissed with no order as to costs. 

MUKESH KUMAR AGARWAL VS STATE OF ORISSA & ORS

IN THE SUPREME COURT OF INDIA

Petition(s) for Special Leave to Appeal (Civil) No(s).31020/2012

(From the judgement and order dated 25/07/2012 in WP No.6260/2012 of The

HIGH COURT OF ORISSA AT CUTTACK)

Date of Order: 29.10.2012

This Petition was called on for hearing today.

Appellant: MUKESH KUMAR AGARWAL 

Vs.

Respondent: STATE OF ORISSA & ORS.

(With prayer for interim relief )

Hon'ble Judges: 

HON'BLE MR. JUSTICE T.S. THAKUR, HON'BLE MR. JUSTICE FAKKIR MOHAMED IBRAHIM KALIFULLA,  JJ.

Counsels: 

For Appellant/Petitioner/Plaintiff:

Ms. Indu Malhotra, Sr. Adv., Mr. S.K.Bansal,Adv., Mr. Suwaran Rajan, Adv., Mr. Ajay Amitabh Suman, Adv., Mr. Keshav Thakur, Adv., Dr. Kailash Chand,Adv.,

For Respondents/Defendant:

UPON hearing counsel the Court made the following

ORDER

Heard.

We see no reason to interfere with the impugned order.

The special leave petition is dismissed.