INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd floor, 443, Anna Salai,
Teynampet, Chennai 600 018.
****
(CIRCUIT BENCH SITTING AT AHMEDABAD)
M.P. No. 257/2009 in
ORA 134/2006/TM/AMD &
ORA/134/2006/TM/AMD
AND
M.P. No. 266/2010 in
ORA/08/2005/TM/AMD &
ORA/08/2005/TM/AMD
MONDAY THIS THE 26th DAY OF NOVEMBER, 2012.
HON’BLE Ms.S.USHA … VICE CHAIRMAN
HON’BLE SHRI V.RAVI … TECHNICAL MEMBER
M.P. No. 257/2009 in
ORA 134/2006/TM/AMD &
ORA/134/2006/TM/AMD
1.Messrs Shree Jagdish Sweets & Farsan Nasta House
Through:- Mr. Jadishchandra Prahladprasad Shah
Chauna chali, Nr, Natraj Talkies,
ST Depot. Road, Vadodara. … Applicant
Versus
(Represented by Advocate: Shri Y.J. Trivedi
1. Jagdish Foods Pvt. Ltd.,
Jagdish House,
Ramji Mandir Pole,
Kothi Char Rasta,
Vadodara 390 001. … Respondent No.1
2. The Assistant Registrar of Trade Marks,
15/27, National Chambers, 1st floor,
Ashram Road,
Ahmedabad 380 009. … Respondent No. 2
AND
M.P. No. 266/2010 in
ORA/08/2005/TM/AMD &
ORA/08/2005/TM/AMD
1. Mr. Jitubhai Agrawal,
Proprietor of Shri jagdish Sweet & Farsan,
Nr. Madras Restaurant,
S.T. Depot Road, Vadodara,
2. Mr. Yogeshbhai Agrawal,
Proprietor of Shri jagdish Sweet & Farsan,
Shop No. 18, Opp. Central S.T. Depot,
Station Road, Vadodara. …. Applicants
(Represented by Advocate:Shri Y.J. Trivedi &
Ms. Rushvi N. Shah)
Versus
1. Jagdish Food Pvt. Ltd.,
(Through managing Director Shri Nitinbhai Thakkar)
Jagdish House, Ramji Mandir Pole,
Kothi Char Rasta, Vadodara.
2. Registrar of Trade Mark, Bombay,
Through Assistant Registrar of Trade Mark,
1st floor, national Chamber,
Ashram Road, Ahmedabad.
(Represented by Advocate: Ms. Rushvi N. Shah)
ORDER (No. 269 of 2012)
SHRI V. RAVI, TECHNICAL MEMBER:
These proceeding relates to two applications for rectification under No.ORA/08/2005/TM(AMD & ORA/134/2006-TM(AMD) seeking removal of registered trade mark No.486584 in Class 30 in the name of M/S Jagdish Food Private Limited, Vadodara. ORA/08/2005/TM/AMD was in fact filed by another business concern with identical business name Shri Jagdish Sweets and Farsan and notice has been issued to the respondent. The grounds for rectification are summarized as follows:-
i)The word ‘Jagdish’ is the name of Hindu God commonly used by Hindus and it is barred by the Trade Marks Act for registration. There are 13 shops in the city of Vadodara using the trade name Jagdish.
ii) The respondent has filed a Civil Suit No.12/2005 in the District Court of Vadadora for infringement of trade mark, Copyright and passing off and have secured permanent injunction against the applicant.
iii) In the said suit, the respondent has falsely claimed that he is the original proprietor and adopter of the trade mark ‘Jagdish’. The applicant have filed an appeal as C.A.No.10700 and A.O.No.343/2005 in the Hon’ble Gujarat High Court. In the said proceeding, it came to light that Shri Nitinbhai B.Thakkar, a Director of the respondent company falsely claimed ownership in the art work of ‘Jagdish’ label as a copyright which in fact belongs to an artist by name Shri Upendra Amin who designed the said art work. The respondent had not produced assignment of the copy right by the artist in his favour.
2. The applicant submit that the respondent has suppressed material information before the Registrar and made false submissions that the trade mark is adopted by his company. The company’s Managing Director Shri Nitinbhai B. Thakkar had retired on 01.04.1995 as per the Dissolution Deed which is attached to the petition.
3. Apart from the word ‘Jagdish’, the rest of the impugned trademark contains the word ‘Foods Private Limited’ which is a generic expression and devoid of any distinctiveness and are descriptive by nature. The applicant submit that Jagdish is common to trade and therefore, the registered proprietor cannot claim exclusive right over the word JAGDISH. The registration of the impugned mark is in contravention of Sections 9,11,12 & 18 of the Trade Marks Act, 1999.
4. The evidence in support of the rectification application is an affidavit of Shri Jagdish Chandra Prahladprasad Shah, proprietor of Shree Jagdish Sweets & Farsan dated 31st August, 2006.
5. In ORA/08/2005/TM/AMD, one Shri. Jitubhai Agrawal & Shri Yogeshbhai Agrawal claim to be the proprietor of Shri Jagdish Sweet & Farsan, Vadodara and have sought the rectification of the impugned mark on the following grounds:-
i)The applicants are the proprietors of Shri Jagdish Sweet & Farsan since 1998.
ii) The applicant had adopted a trade mark “Shree Jagdish” with logo “SJSF” which is an invented expression.
iii) The applicant have popularized the said trade mark by spending huge amount of money for its marketing & advertising of its quality goods through out Vadodara city.
iv) The applicant being the proprietors of Shree JAGDISH SWEET& FARSAN, Vadodara since 1998 are engaged in the business of manufacturing and marketing various types of sweet and salty edible products. There are 13 shops at Vadodara trading under the name Jagdish. The applicant have adopted a trade name M/s Shree Jagdish Sweets & Farsan and the logo SJSF to distinguish their products from others. The letter SJSF is an invented word:
a) The letter ‘S’ is derived from the first five letters of the name of the defendants firm ‘Shree’
b) The letter ‘J’ is derived from the second word of the applicants’ firm name ‘JAGDISH’
c) The letter ‘S’ derived from the third word of the applicants firm name ‘Sweet’.
(d) The letter ‘F’ is coined from ‘Farsan’ the firms last name.
The applicant have been using ‘Shree Jagdish Sweet & Farsan’ since 1998 openly, continuously, extensively claiming exclusive right throughout Vadodara. The applicant are also members of Shri Vadodara Mithai Farsan Utpadak Vepari Mandal.
(v) The respondent/ registered proprietor herein served a Cease & Desist Notice on 22.07.2004 on the applicant claiming to be the proprietor of the trade mark ‘Jagdish’. They have also filed a Civil Suit No.7/2005 against the applicants seeking a permanent injunction for infringement of trade mark and copyright and passing off action as also damages and sought to restrain the applicant from using the word “Jagdish”.
(vi) The applicant had challenged the application for seeking injunction and from the record came to know that the respondent are the registered proprietors under No. 486584 as of 20.02.1988. The said Suit is pending before the District Judge, Vadodara.
(vii)) Being aggrieved, the applicant have filed the subject rectification petition seeking cancellation of the registered trade mark of Jagdish Food Pvt. Ltd inter-alia on the following grounds:-
a) In Vadodara, there are a number of shops using the word “Jagdish” as the trade name of the firm such as the word ‘Jagdish Chevda’ for many of the farsan products.
b) The trade mark “Jagdish” is a descriptive word and has become public juris and is a descriptive word and cannot serve in the trade to distinguish the goods of the registered proprietor.
c) The word ‘Jagdish’ is nothing but the name of God “Vishnu” and is likely to hurt the religious susceptibilities of Hindus. The Registrar has erred in allowing use of name of God to be used as a trade mark to be entered in the register.
(d) The impugned mark has been registered in contravention of Sections 9,11, 12 and 18 of the Act and accordingly this is a fit case to rectify the registered trade mark 486584 in Class 30. Therefore, in public interest the registered trade mark Jagdish Food Pvt. Ltd. should be removed from the register.
6. The respondent’s case is summarized as follows:
(a) At the outset the respondent state the application for removal of the impugned trade mark from the register is totally mala fide, fraudulent and suffers from serious deficiencies recognized by express provision and settled position of law.
(b) The impugned trade mark consists of a round/circle shaped with yellow colour at centre and boundaries drawn by white colour. The respondents trade mark is a combination of various innovative features that include a label, name, shape of letters, colour combination and distinctive alphabets. The letter ‘J’ is written in Gujarati language three times inter-connected with each other in different angle. This unique trade mark has been used by the respondent and his family and prior thereto by his father since 1945.
(c) The family of the respondent started doing business in selling farsan and sweet items under trade mark JAGDISH FARSAN’ since 1945. They have been using the same uninterruptedly and continuously ever since and the impugned mark has in fact become a well known trade mark on account of various incident, manner of use and facts and circumstance leading to associating it with respondents product. Their family is renowned in the business of manufacturing food products. The public at large recognize ‘JAGDISH’ only with respondent’s food products. The respondent’s father and forefather were all in this business in Gujarat for the last many decades. The impugned trade mark has been lawfully registered and still valid and subsisting for more than two decades. The respondent have successfully enforced his ownership of the trade mark in appropriate court. They had filed a trade mark infringement Suit No. 7 of 2005 at Vadodara District Court and obtained a restrain order prohibiting the applicant from using the trade mark ‘Jagdish’ for food products. An appeal filed an Appeal under A.O.No. 343 of 2005 before the Gujarat High Court was also dismissed. The applicant then filed a Special Leave Petition under no. 5885 of 2007 before the Hon’ble Supreme Court which was rejected and it confirmed the injunction order which was made absolute. The entire case is once again being raked up and the present rectification is not maintainable and is liable to be dismissed in Limine and in toto.
(d) Further, the respondent is a well organized and well structured business organization having systematic channels of distribution and marketing network for the goods sold under the impugned mark. The fact is the applicant are trying to siphon of the profits by infringing the respondent’s mark. The allegation that many shop manufacture or sell sweets and farsan under the trade ‘Jagdish’ is immaterial. The respondent had obtained registration of the impugned mark in 1996 in Class 30. The respondent also deny in toto misleading allegation regarding ownership of copyright. No false statement or alleged fraud has been committed in obtaining the registration of the impugned mark. It is also false to allege that the word ‘JAGDISH’ has become public juris. The allegation regarding artist and art work are false, illegal and unilaterally misinterpreted. These are false allegation attempting to pollute the process of law. It is also false to allege that the respondent’s mark is common to trade. Further, merely because JAGDISH means ‘Lord Vishnu’ it cannot be the basis to seek removal of registered trade mark 486584. The impugned trade mark has been lawfully registered and has satisfied every test and provisions of law.
(e) In November 1967, the respondent established a partnership firm “Jagdish Khaman House”. The said partnership firm was reconstituted in January, 1974 and once again further reconstituted in February, 1979 and thereafter again in May 1984 and later in May, 1986. The family members of the respondent and partners of the partnership firm established a private company in the name of M/s Jagdish Food Private Limited. The said company coined & depicted the work JAGDISH with salient features as depicted below:
(f) As per the family settlement and arrangement, the impugned trade mark label was permitted to be used by the partner of Jagdish Khaman House & Jagdish Food Pvt.Ltd which are sister concerns. The present application filed by the applicant is out of trade jealousy. The contesting respondent maintains that the trade mark is coined in a unique manner and exclusively associated with the respondents products by virtue of its long use in the market.
(g) The respondent company JAGDISH FOODS (P) Ltd., came into existence with its incorporation on 8th May, 1986. The impugned trade mark was registered as of 29th February, 1988 and the registration certificate issued on 16th June, 2002. The copyright registration in the artistic work for the label JAGDISH was obtained on 16th February, 2004 in the name of N.B. Thakkar, the Managing Director of JAGDISH Foods (P) Ltd., under the Copyright Act, 1957. Trade marks Caution Notice was issued in SANDESH (Gujarati Newspaper) dated 5th August, 2004.
(h) The trial Court had held that the respondent had proved prior user and also the applicant are trying to pass off their goods as that of respondent and it may affect the goodwill and reputation of the respondent. The trial court also found that on comparison, the applicant are using the trade mark in a deceptively similar manner and the respondent would suffer irreparable injury and loss due to illegal adoption of the mark. The trial court also found that the applicant are using the replica of the respondents mark on their box and comparison of two label shows that customer is likely to be led to believe that respondents label is that of the applicant.
(i) The respondent state that the pending Civil Suit No.12/2005 at Vadodara filed by Smt. Manjula P.K. and 10 others cannot be the basis to seek removal of the impugned mark. The applicant are trying to snatch away the evident goodwill and reputation enjoyed by the respondent in the word ‘JAGDISH ’.
7. There are two Miscellaneous Petition that came up for hearing. One relates to MP. No. 266/10 in ORA/08/2005/TM/AMD filed by the respondent. The other M.P. No. 257/09 in ORA/134/06/TM/AMD is filed by the applicant. The matter was listed for hearing on 11th April, 2012. Both the M.P. were taken up along with the main hearing. We have also gone through the pleading, documents, record and citation relied on by both parties.
8. We shall first deal with the Miscellaneous Petition filed by M/s Shree Jagdish Sweets & Farsan, the applicant herein. The purpose of this is to file important additional evidence against the respondent. It is to show that the alleged use from 1945 by the respondent is false and concocted. This is proved by the trade mark application filed by the respondent claiming user ‘since 1986’ as evident from TM Journal No. 1072 dated 1stFebruary, 1994.
9. In the said Miscellaneous Petition reference is made to Suit No. 9/2009 in District Court, Vadodara where pleadings have been taken by Smt. Manjula Pushpavadana Kandoi and 10 others that many business concerns are selling farsans using the trade mark JAGDISH and the user of 1945 onwards by the respondent herein is false. Another contradiction sought to be established is Shri Nitin Thakkar, Director of the respondent company has claimed authorship and ownership in the artistic work of the trade mark before the copyright authorities while in the Suit one Shri Upendra Amin has filed an affidavit claiming the authorship of the design in the artwork of the impugned mark.
10. It is further alleged that the respondent has suppressed material information regarding the ownership of trademark JAGDISH in as much as it has made a false statement that the impugned mark was adopted by the company while in fact it was adopted and used by the partnership firm M/s Jagdish Khaman House in which the Director Nitin Thakkar was a partner and later on surrendered his right to the remaining partners and resigned from the said firm.
11. In turn, the respondent M/s Jagdish Food (P) Ltd. have also filed a Miscllaneous Petition under No. 257/10 in ORA 134/2006/TM/AMD mainly as rebuttal to the issues raised in the applicants Miscellaneous Petition and seeking to introduce new documents on record not in control of the respondent earlier. The respondents have denied the contentions and averments made by the applicant in the M.P. stating it is bad in law and not maintainable. The documents referred to have no relevance to the case at hand. These were already in possession and to the knowledge of the applicant and filing it at this stage belatedly is an abuse of process of law and against settled law. Further, the applicant’s additional evidence contains false allegation and bogus presumptions.
12. The respondent state that the primary averment/defence relied upon is broadly based on the fact that their trade mark is registered and in use for many years. The respondent are making effort to locate historical documents. Therefore, in the larger interest of truth, substantial justice and to elucidate their case more transparently, the miscellaneous petition filed by them to admit additional documents should be allowed.
13. We have considered both the Miscellaneous Petition. The general principle is the Board will allow such miscellaneous petition if it is intended to clarify evidence filed earlier and within the time limits. Alternatively, there are new facts that have come to light that could justify late submission of evidence and more importantly relevant for the outcome of the decision, its legal certainty and sound administration of justice. These principles would prevail over the principles of procedural efficiency, if the circumstances of individual cases allows for it. Of course, the Board is competent to record additional evidence or reject the same in fit and proper case to advance justice. But this power has to be exercised with circumspection keeping in mind the principles laid down in Order 41, Rule 27 of C.P.C. In the instant case the applicant’s Miscellaneous Petition is partly allowed except reference to Suit 9/2009 at District Court, Vadodara as the same is still pending. Other contentions raised have a material bearing on the outcome of this petition and needs to be looked into. On equitable principle, the additional documents furnished by respondent are also relevant for purpose of rebuttal and is allowed to be taken on record in the interest of justice.
14. Further, a major allegation is the user claimed from 1945 by the respondent is false as evidence from the trade mark journal No.1072 dated 1st Feb-1994 where the purported user shown by the respondent is from 1986. On perusal of the reply of the respondent on this point, we note that they have enclosed copy of the Vadodara Municipal Corporation licence fee receipt addressed to Jagdish Khaman House dated 11th April, 1988; Inauguration of Jagdish Khaman House on 23rd January, 1988; advertisement in Sandesh (on 21.10.2001) and Gujarat Samachar (23.10.2001). There is no material before us to infer continuous use of the impugned mark since 1945. To that extent, we discard all contentions and claim of the use of the impugned since 1945 and act on the basis of proved use from 1986 onwards only.
Secondly, it has been alleged that the respondent cannot be the proprietor of the impugned trade mark as the art work in the label has been outsourced to one Shri Upendra Amin who designed the label and filed an affidavit to that effect before the copyright authorities and proof of assignment in favour of respondent has not be furnished. But the copyright registrar has himself issued a registration certificate under A-6626-/2004 on 16.02.2004 that M/s Jagdish Foods (P) Ltd is “The owners of the various rights comprising in the copyright and the extent of rights held by each, together with particulars of assignments and licences, if any. This is issued by a Government authority and we have no reason to disbelieve it. In any event, it is the
respondent who are using the disputed label as a ‘trade mark’ in commerce and in the course of trade. If the ownership of the label is indeed false as alleged, how are we reconcile this with the certificate issued by the copyright office which explicitly certifies that the respondent is the owner of the title ‘Jagdish’ in Gujarati. We, therefore, let the matter rest at that.
respondent who are using the disputed label as a ‘trade mark’ in commerce and in the course of trade. If the ownership of the label is indeed false as alleged, how are we reconcile this with the certificate issued by the copyright office which explicitly certifies that the respondent is the owner of the title ‘Jagdish’ in Gujarati. We, therefore, let the matter rest at that.
The other issue agitated in the Miscellaneous petition is that Shri Nitinbhai Thakkar resigned from the respondent firm in 1995. But these are post filing date (February 1988) incidents and change in ownership of the mark is governed by separate procedure. Therefore, it does not materially alter the facturm of registration of the impugned mark.
15. On the issue of “Person Aggrieved, the applicants are in the same trade as the registered proprietor. The impugned mark limits the legal rights of the applicant and it operates as a restraint resulting in obvious disadvantage to the applicant and other traders who will suffer legal injury in practical possible way in which they might be damaged by the presence of the trade mark on the register. Civil suits have been filed against the applicant. That gives them the necessary locus to move for expunging the mark from the register.
16. We shall next examine the various grounds of objections under the Act raised by the applicant. The first of these is based on Section 9 of the Act. The trade mark in question is a label with the word Jagdish written in Gujarati. It is not used in common parlance to designate the relevant goods namely sweets. It does not describe the essential characteristics namely sweet. ‘Jagdish’ is a common word often used as a surname by Hindus. Use of such a word is one the permissible mode of adopting a trade mark and can be eligible for statutory protection bestowing distinctive power on the mark so formed. Such words may not be refused registration on the grounds that such marks are solely descriptive and non-distinctive. Descriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole which they form. That is the legal principle. Any perceptible difference between the combination of words tendered for registration and the terms used in common parlance for the relevant class of consumers to designate the goods namely sweets and farsan or their essential characteristics is apt to confer distinctive character on the word combination enabling it to be registered as a trade mark. The law provides that even prima-facie non-distinctive or descriptive words become registrable after sufficient use has been made of it. In other words distinctiveness can be acquired by use in the market if the claimant can show he has built good reputation by using the mark. The respondent herein have taken great pain to show how the impugned mark has been nurtured with the capacity to communicate that its goods with reference to which it is used recurrently originates from one and the same undertaking. Here, the impugned mark was applied for registration in 1988. Prior to it, there is undisputed proof of use at least from 1986 onwards as pointed out by the applicant sourcing the trade marks journal. It follows the mark qualifies for registration being a surname used as a badge of origin. It is not the case of the applicant that the impugned mark JAGDISH serve, in trade, to designate a kind of sweet. True, the exclusive right to a brand name gained through its registration can be lost through careless and improper use. Despite, the vicious attack on the respondent, the primary meaning of the impugned trade mark namely JAGDISH is not the name of the product itself. The respondent owner of the affected trade mark has taken sufficient initiative to protect their statutory rights attached to the exclusive use of the mark. The entire focus of the applicants case is 13 other entities are using ‘Jagdish’ as a trade name for sweets in Vadodara and hence the source of origin function of the impugned trade mark is dented. Any such use of a registered trade mark by others is merely a use under common law and it is for the registered proprietor to prevent possible confusion amongst consuming public who will assume its affiliation with the registered owner regardless of the product being sold under the infringing use. The fact that a large number of other traders are using ‘JAGDISH’ is merely a ruse to entice customers resulting in depreciating the value of the registered trade mark. It is not a ground for evicting a existing, statutory owner unless it has become pubic juris (discussed under Section 11).
17. The other argument advanced is ‘JAGDISH’ is the name of Lord Vishnu and hence does qualify for registration. The use of religious symbol or name of God/Goddess as a trade mark is as such very common in India and numberless trade marks are registered for almost all goods except possibly liquor, footwear etc. The idea is that these Hindu names are more symbol of prosperity and good luck and it has no religious significance attached thereto, Hindu idol or pictures are considered sacred only when it is consecrated with appropriate mantra to infuse divinity in it attracting the intellect, emotions and reverence. Of course section 9(2) (b) prohibits registration of mark that contain or comprises of matters likely to hurt religious susceptibilities. Thus, in some situation, the use of names and representations of Gods/Goddess and holy persons may offend the religious sentiments. Such marks are prohibited from registration eg. Device of Hindu God ‘Vishnu’ or Krishna for beef or Muslim Saints for pork or ‘Guru Nanak’ for bidi, cigarettes etc.
“The names and pictures of God or Goddesses are drawn, painted, printed, embossed or engraved upon several articles such as boards, hoardings, calendars, books, invitation cards, stationary as also on packaging of almost all variety of goods. In fact, almost all users of such goods throw away all such goods after their purpose is over. If the grievance of the respondent No. 3 is to be accepted and taken to its logical end, use of the names and motifs of Gods or Goddesses upon anything except n temples will have to be restrained. There is, therefore, no merit on the objection raised under Section 9 to seek cancellation of the impugned mark.
18. The next ground for attack is based on section 11 more specifically on the ground of public confusion as a result of the continued presence of the impugned trade mark on the register. The validity of the impugned trade mark has been questioned on the ground that it is no longer distinctive of the applicant’s goods. Distinctiveness may be lost, where there has been several infringements and the proprietor neglects to take prompt action to restrain them. As was said by James L.J. in Ford Vs Foster (1872) LR 7 Ch 611 at p.625.
“The occurrence of a few fraudulent infringements without the knowledge of the proprietor of the trade mark will not make the mark common to the trade. “It has been said that one murder makes a villain and millions a hero; but I think it would hardly do to act on that principle in such matters as this, and to say that the extent of a man’s piratical invasions of his neighbour’s rights is to convert his piracy into a lawful trade.”
19. Whether a trade mark has or has not become publici juris is a question of fact. The test whether a mark has become publici juris was laid down by LORD JUSTICE MELLISH in Ford v. Foster (cited supra) thus:
“The question is, has it (‘EUREKA’ for shirts) become publici juris? And there is no doubt, I think, that a word which was originally a trade mark, to the exclusive use of which a particular trade, or his successors in trade, may have been entitled, may subsequently become pubici juris, as in the case which has been cited of Harvey’s Sauce. It was admitted that, although that originally had been the name of a sauce made by a particular individual, it had become publici juris, and that all the world were entitled to call the sauce they made ‘Harvey’s Sauce’ if they pleased. Then what is the test by which a decision is to be arrived at whether a word which was originally a trade mark has become public juris? I think the test must, whether the use of it by other persons is still calculated to deceive the public, whether it may still have the effect of inducing the public to buy goods not made by the original owner of the trade mark as if they were his goods. If the mark has come to be so public and in such universal use that nobody can be deceived by the use of it, and can be induced from the use of it to believe that he is buying the goods of the original trade, it appears to me, however hard to some extent it may appear on the trader, yet practically, a the right to a trade mark is simply a right to prevent the trade from being cheated by other person’ goods being sold as his goods through the fraudulent use of his trade mark, the right to the trade mark must be gone."
20. However, the case here is materially different. If 13 other entities are trading under the trade name ‘Jagdish’ for sweets and farsan is that a helpful framework to seek cancellation of a registered trade mark? We think not. Expropriation of the registered trade mark of the respondent should be on a significant scale that would lead to disruption of the respondents business. No registered proprietor can completely stop all pirates on a nation wide or even district basis. The applicant themselves lay claim to ‘Jagdish’ and law permits its co-existence on the register if he satisfies the conditions specified in Section 12 of the Act. Such confusion as may occur as per record is essentially owing to the willful misconduct of using the impugned registered trade mark by other traders and not out of respondents neglect or inaction. Further, no evidence has been led by the applicant that he has used the impugned trade mark prior to the respondent. In these circumstance, objection raised under Section 11 is not well founded.
21. We shall next refer to the various citations relied on by the respondent herein who were given liberty by the Board to file all authorities relied by them within 10 days which was received by the Registry on 18th April, 2012.
(i) HIMALAYA DRUG CO. v/s GUFIC Ltd. (IPAB) 2011 (46) PTC 432.
Application for removal of trade mark made after more than two decades – Held, respondents trade mark having acquired secondary meaning and in view of the protection granted under Section 31 of the Act, mark allowed to remain on the register. Our attention was also drawn to para 34 therein where the counsel relied on a number of judgements in support of his case reproduced below:
(i) 1977 RPC 473 –Court of Appeals – Blue Paraffin Trade Mark – paraffin in blue colour sold under the trade mark Blue Paraffin was found to be distinctive and not descriptive and found registrable under the Act.
(ii) 1896 (13) RPC 218 – House of Lords – Reddaway v. Banham – Trade Mark Camel hair Belting used for belts made from Camel Hair. The mark was found distinctive of the plaintiffs products by virtue of extensive use.
(iii) 2005 (30) PTC 1(SC) – Godfrey Philips India Ltd. v Girnar Food & Beverages P. Ltd. – The Supreme Court held that descriptive trade mark is entitled to protection if it has assumed a secondary meaning which identifies it with a particular product.
(iv) AIR 1965 SC: PTC (Suppl(2) 680 (SC) Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories _ Navrathna for auyrvedic preparations was held not to be descriptive but distinctive.
(v) 2002 (24) PTC 355 (Del.) Infor Edge (India) Pvt. Ltd. v. Shailesh Gupta - Domain name Naukri used in job portal was held to be distinctive and not generic or descriptive.
(vi) 1998 PTC (18) 698(DEL) – Indian Shaving Products Ltd. & Anr. V. Gift Pack & Another – Trade mark Ultra filter for batteries was held to be distinctive and not descriptive.
(vii) Procter and Gamble C. v. OHIM – European Court of Justice – Trade Mark ‘Babydry’ for children disposal diapers was held to be registrable.
(viii) 1900 (17) 286 – J.C. & J. Field v. Wagel Syndicate Ld. – Trade mark SAVONOL. The word SAVON in French means soap. There were other toilet soap manufacturers using the mark SAVON. The court held that the use of the French word as a trade mark amounts to an invented word and the registration was allowed.
(ix) 1972 (28) RPC 847 Clarlsberg Bryggerierne OG Tuborgss Bryggerier De Forene De Bryggerier Aktieselskabet & Carlsberg Scottish Importers Ltd. v. Tennent Caledonian breweries Limited – Trade Mark SPECIAL BREW for strong lager beer was allowed registration by virtue of use even though the defendants pleaded that the mark was descriptive of the product.
(x) 2003 (26) PTC 555 Perry Bottling Company v. S,S, Soda & Soft Drinks Company & Ors. – Trade mark PERRY’S FRUIT BEER was registered in the name of the plaintiffs and was on the register for a long period and to say it was wrongly registered is illegal.
(xi) F.M. Diesel Ltd Vs S.M. Diesel -1994 (14) PTC 75 (DELHI, H.C). We reproduce the passage relied on.
“Next contention raised by learned counsel for the defendant is that the word MARSAL has become common to the trade for diesel engines in Rajkot and various other person are using the trade mark in one form or other as in as much as some are using AIR MARSHAL, PERFECT MARSHAL, POWER MARSHAL etc. and the defendant is not the only persons who is using the trade mark SONA MARSHAL. The Plaintiff, therefore, cannot claim its trade mark to be distinctive of its goods or business and no customer is likely to be confused or deceived on account of this trade mark. This contention of the learned counsel for the defendant is also without force. In this connection it is sufficient to say that under the law it is the rights of the two parties before the court which has to be determined and the court has not to examine the right of other parties. If some other manufacturers are using the word MARSHAL on their diesel engines, it is of no consequence. Furthermore, if the plaintiff has not taken any action against several other infringement, this does not mean that the plaintiff has abandoned his trade mark and cannot challenge the action of the defendant.
(xii) ‘SIA Gems & Jewellery Pvt. Ltd. Vs SIA Fashion” –2003 (27) PTC 227 – H.C Bombay
Having come to this conclusion, it is clear that the Defendants business is likely to be associated with the Plaintiffs business and is therefore likely to cause damage to the Plaintiffs reputation. It is interesting to note that the only reason given by the Defendants for adopting the same SIA is that the Defendants have a great faith in the goddess Sita and have therefore adopted the same. There is every possibility that the Defendants like so many others have faith in the goddess but it is obvious that the reason for adopting the name of the goddess for the name of a shop is purely commercial. This name has been most likely adopted because over a period of five years the Plaintiffs have successfully carried on business in costume jewellery under the same name in an adjacent locality. The parties seem to be known to each other. I am thus of view that the acts of the Defendants in adopting the word SIA is not fair. In Laxmikant V. Fatel v. Chetanbhai Shah and Anr., 2002(24)PTC 1 - SC, the Supreme Court has observed as follows:---
"It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury. The three elements of passing off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiffs. The same principle, which applies to trade mark, is applicable to trade name. Passing off cases are often cases of deliberate and intentional misrepresentation, but it is well-settled that fraud is not a necessary element of the right of action and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception."
22. All the aforesaid authorities only reinforces our view that the attack on the impugned totally unjustified.
23. We next look into the objection raised under section 12 in that the respondent cannot be given the benefit of that section for its continued survival in the register. In examining the register between trade mark law and legitimate competition the fact that impugned trade mark has been in the register for several decades, its original adoption could possibly be purely innocent and independent do weigh heavily on our mind. There has been a slew of litigation between the parties. The cancellation proceedings are now being invoked. We do not think circumstances warrant the removal of the impugned mark. At best, quite possibly both the applicant (since, 1998) and respondent (at least since 1986) are using the mark in good faith over time. Even so a trademark 12 years junior as is admittedly the case here cannot oust an owner with superior use. There is a possibility that the applicant may succeed on grounds of acquiescence in the trial court proceeding. But even if registered, the owner of the earlier right (respondent) herein can seek to invalidate a later registration right up to the end of the 5 year period post registration, even where it has been aware of the use of the later mark for a longer period. Section 12 ascribes standalone significance to the honest concurrent user doctrine and is an exception to the absolute protection to trade marks. We are therefore not persuaded to believe that there is any serious basis for an objection under section 12 of the Act.
24. The other issue to be examined is the objection under section 18 that the respondent are not the proprietors of the impugned trade mark. It is well settled that a trader acquires a property right in a distinctive mark merely by using it upon or in connection with the goods irrespective of length of use and extent of his trade. Registration is only a prima facie proof of ownership and right to its exclusive use. The respondent here have substantiated the proprietary claim in as much it has passed the rigors of a registration process in addition to the use in India of the impugned mark. On the date of application of the impugned mark, no bad faith has either been alleged or involved. The impugned trade mark has already been on the register for over two decades. To allege at this stage that the respondent cannot be its owner is both preposterous and fallacious. The applicant and 13 other traders cannot gang up and divest the ownership of a lawfully registered trade mark of the respondent merely to thrive on the commercial magnetism associated with ‘JAGDISH’. Such bullying tactics makes no impression on the Board and we rule that the respondent are the legitimate owner of the impugned trade mark.
25. At this stage the disputed claim of use of the mark raised by both side makes us wonder how generally alleged claim of use of a mark; its proprietorship or ownership; length of alleged use; ante dating of use after the Examination Report is put in public domain; offering unsolicited Show Cause hearing contrary to Section 132 all easily gets blurred, merged melt and slips into the register with very little oversight. These unsubstantiated presumptive claims are given proxy support by current registry practice of en masse ‘Advertised Before Acceptance’ (ABA) of all published applications in the TM Journal with the accepting officer disowning administrative responsibility or accountability for his action. To compound the folly registration certificate are auto generated through the system immediately at the expiry of four months. Mounting oppositions, appeals and court cases are the direct outcome of these lax practices. We urge the Registrar to plug the technical loopholes in the law in this respect. The registry is daily being exposed to commercial interest/dealings and therefore it must ensure procedural loopholes and deficiencies are not exploited by vested elements. Almost every appeal or rectification is the direct outcome of bypassing of these essential fundamentals. The mischief of a wrong advertisement comes to light some 7 to 10 years later in an opposition or appeal when the concerned official who ordered its advertisement disappears into unblemished obscurity. Law mandates notification of trade marks as ‘Accepted for Registration‘ in the TM Journal under Section 23(1) before issuance of the registration certificate.
26. The Registry cannot issue registration certificate on the basis of just ‘Advertised Before Acceptance’ or ‘Advertised as Accepted’. Further, in such cases acceptance post four months opposition period of all unopposed case is largely opaque, subjective and more crucially completely deprives an aggrieved litigant to petition under Section 19 for ‘Withdrawal of Acceptance’ and that door is shut and compels them to take only the opposition route which is time consuming. When the statute provides a leverage to review published application under Section 19, orchestrated en masse ABA is against the spirit and intent of the law. The registry should review this unwarranted practice. Also, we have come across issuance of registration certificate during pendency of opposition which is blatantly illegal. We, therefore, earnestly urge the Registrar to restructure the working of the registry to urgently plug some of the deficiencies brought to our notice. However, strictly speaking, the above observation though not directly relevant to the issue at hand, the views expressed may be taken note of while streamline the procedures.
27. Concerning the present rectification, no case whatsoever for cancellation of the registered trade mark 486584 has been made out. In the result, ORA/08/2005/TM/AMD and ORA/134/2006/TM/AMD are dismissed. Both the applicants are directed to pay a sum of Rs. 5,000/- each to the registered proprietor M/s Jagdish Food (P) Ltd. as cost of these proceedings.
(V. RAVI) (S. USHA)
TECHNICAL MEMBER VICE CHAIRMAN
(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)
