INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018
(CIRCUIT SITTING AT AHMEDABAD)
ORA/163/2009/TM/AMD
MONDAY THIS THE 26th DAY OF NOVEMBER, 2012
Hon’ble Ms.S. Usha … Vice Chairman
Hon’ble Shri V. Ravi … Technical Member
Ashok Maneklal Kataria
Sole Proprietor of
Kataria Enterprises
Near Nadipa, Street No.2,
JAMNAGAR-361001.
GUJARAT, INDIA. … Appellant
(By Advocate: Shri Akshay A. Vakil)
Vs
Shri Naranji Khetsibhai
Shri Ravindra Naranjibhai Mange
Shri Vinod Naranjibhai Mange
Shri Arvind Naranjibhai Mange
trading as
RAVI ENTERPRISE
54-Digvijay Plot, Near Water Tank
JAMNAGAR-361001.
GUJARAT. INDIA. … Respondent
(By Advocate: Shri Y.J. Jasanil
ORDER (No. 270 of 2012)
Hon’ble Shri V. Ravi, Technical Member:
Application for removal of registered trade mark ‘GOLDEN TEA’ (label) from the register under No.704811 in Class 30 of the respondent.
The grounds of application are as under:
(i) its entry in the register is without sufficient cause and wrongly remaining on the Register.
(ii) the impugned trade mark cannot be considered a trade mark within the meaning of Section 2(1)(zb) of the Trade Marks Act, 1999 (hereinafter referred to as the ‘Act’)
(iii) the respondent has played a fraud with the Trade Marks Registry and deliberately suppressed important and material facts for registration
(iv) the impugned mark is devoid of distinctive character and is not capable of distinguishing the goods/services of the respondent from those of others
(v) the impugned trade mark consists exclusively of mark or indications that in the trade designate the kind, quality, intended purpose and the characteristics of the goods that are to be sold under the said brand.
(vi) the mark consists exclusively of marks and indications that has become customary in the current language as well as in the bonafide and established practices of the trade.
(vii) the respondents are not proprietors of the impugned trade mark.
(viii) All persons connected with the tea trade are entitled to use the word “GOLDEN TEA, DEVICE OF CUP AND SAUCER” with a punch line “the symbol of the best CTC tea”. The respondents are, therefore, not entitled to the exclusive rights to the impugned mark and prevent the applicants from using a descriptive word in the course of trade.
(ix) the respondent had filed a Civil Suit before the Hon’ble District Judge, Jamnagar being Civil Suit No.3 of 1999 seeking permanent injunction from the use of “GOLDEN TEA”.
(x) In the course of the said proceedings it was disclosed that the respondent has filed an application dated 30-12-2009 under No.704811 stating that the said trade mark has been registered.
(xi) The applicant has stated that the respondent has been in the tea trade for the last many years and has suppressed the fact that the term “GOLDEN TEA” is used to identify a category of tea leaves by the Tea Board of India and therefore the respondent has no exclusive rights to the words “GOLDEN TEA” as a trade mark.
(xii) The registration of the trade mark was made in contravention of Sections 9,11,12 and 18 of the Act. The registration of the trade mark of the respondent is tainted with dishonesty and registered without any honest and bonafide intention to use the same in relation to their goods.
(xiii) The applicant is a “person aggrieved” and entitled to file this application as the registered proprietors have filed the above mentioned Civil Suit of 1999 for infringement and passing off. The applicant is the prior user and coined the trade mark “REAL GOLDEN TEA/GOLDEN CHA” which is in use since 1977 including its predecessors. The applicant has spent huge amounts of money popularising this trade mark. The respondents are using the trade mark “GOLDEN TEA” and the word “RAVI’S” remains hidden and escapes the attention of the purchasers. “GOLDEN” is common to the trade disclosing the grade of tea and purely descriptive in itself. The entire label of the respondent consists of descriptive matters and there is not a single element of a mark that is distinctive or capable of distinguishing the goods of the respondents.
2. In view of the foregoing, the applicants are put to unbearable hardship. The balance of convenience is in favour of the applicant and continuance of the present registration of the impugned trade mark is likely to cause irreparable loss and injury. Therefore the impugned trade mark be removed from the register.
3. The defence of the respondent/ registered proprietor is summarised as follows:
(i) the instant application for rectification is a counter blast to the pending Civil Suit filed by the respondent against the applicant. As the same is an abuse of the process of law the infringer cannot claim any equitable or discretionary relief from the hands of the Hon’ble Board with a view to escape from the infringement action and therefore the impugned application is devoid in law.
(ii) the applicant has not come before this Board with a clean hand having suppressed materially important facts.
(iii) the respondent is the registered proprietor of the trade mark “RAVI’S GOLDEN TEA” under No.704811 in Class 30 as of 17th April 1996. The registration has been renewed and is valid and will subsist up to 17th April 2016.
(iv) The registered proprietors state that the applicant is not a “person aggrieved” to file this application for rectification either under Section 47 or Section 57 of the Act as they have not shown any valid cause of action. The respondent state that the instant application is contrary to the true spirit, scope and purport of the provisions of Section 31 and Section 32 of the Act. The respondents are in the business of packing and selling ‘Tea’ under the poly-pack pouch in the partnership firm under the name and style of RAVI ENTERPRISE since 1992. The trade mark RAVI’S GOLDEN TEA has acquired immense popularity and the turn over as of 2008-2009 was over Rs.13 crores. The respondent’s predecessors have acquired the copyrights for conducting the trade in RAVI’S GOLDEN TEA/GOLDEN CHA.
4. The matter was listed for hearing on 21st June, 2012. We have heard both the learned counsel and gone through the pleading and citations relied on.
5. The following case laws were relied on by the respondent.
(i) 1977 RPC 473 – Court of Appeals – Blue Paraffin Trade Mark – Paraffin was found to be distinctive and not descriptive of the plaintiffs products by virtue of extensive use.
(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) AIR 1980 Del 180 : PTC (Suppl)(1) 195(Del) (DB) – Registrar of Trade Marks v. Hamdard National Foundation (India) – Trade Mark SAFI used for medicinal preparation for cleaning blood held to be distinctive of the respondent’s products.
(iv) 1997 (17) PTC 386 (Del) – Mohan Oil & Soap Mills v. Assistant Registrar of Trade marks – Trade Mark NEELAM for washing soaps in class 3 was found to be registrable even though the meaning of the word NEELAM in Tamil was blue.
(v) 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.
(vi) AIR 1962 Bombay 82 – J.L. Mehta & another v. Registrar of Trade Marks – Registration of the trade mark SULEKHA for writing instrument was upheld though one of the meanings of the word SULEKHA was good writing.
(vii) AIR 195 SC : PTC (Suppl)(2) 680 (SC) Kaviraj pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories – Navarathna for ayurvedic preparations was held not to be descriptive but distinctive.
(viii) 2002 (24) PTC 355 (Del.) Info Edge (India) Pvt. Ltd. v Shailesh Gupta – Domain name Naukri used in job portal was held to be distinctive and not generic or descriptive.
(ix) 1998 PTC (18) 698 (DEL) – Indian Shaving Products Ltd. & Anther v. Gift pack & Another –Trade mark Ultra Filter for batteries was held to be distinctive and not descriptive.
(x) Procter and Gamble . v. OHIM –European Court of Justice – Trade Mark Babydry for children disposal diapers was held to be registrable.
(xi) 1936 (13) RPC 335 – Trade Mark Sheen for sewing cotton was held distinctive.
(xii) 1900(17) 286 – J.C. & J. Field, v. Wagel Syndicate Ld. Trade mark SAVONOL. The word SAVON in French means soap. manufacturers using the mark SAVON. The court held that the use of the French word SAVONOL as a trade mark amounts to an invented word and the registration was allowed.
(xiii) 1972 (28) RPC 847 Carlsberg 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.
(xiv) 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.
6. The respondent further assert that the applicant himself claim to be the user and proprietor of the mark REAL GOLDEN TEA or GOLDEN CHA and thereby admit the said words as being ‘a trade mark’ and therefore, the applicant for rectification is not entitled to play summersault, the impugned application for rectification deserves to be dismissed as such.
7. It is denied that the name RAVI’s GOLDEN TEA and / or GOLDEN TEA appearing in the said trade mark label registered under No. 704811 in the name of the respondents is descriptive of character or quality of the goods as alleged or otherwise. The reliance on the print-out from the web-site of Tea Board of India placed by the applicant for rectification is absolutely misplaced and contrary to the express provisions of Sect.32 read with Sec. 9 of the Trade Marks Act, 1999 as also against the law laid down by the Hon’ble Apex Court on the issue.
8. The applicant for rectification who himself has admitted in his Written Statement in the suit before the Hon’ble District Court, Jamnagar that the name GOLDEN TEA / GOLDEN CHA is a ‘trade mark’ and therefore, he is not entitled to take contrary stand in the impugned application for rectification. Furthermore, it is a recorded fact in the order of the Hon’ble High Court of Gujarat that the applicant for rectification is marketing its tea in a poly-pack similar to that of the present Respondents- registered proprietors and the applicant for rectification has been in the market only since the year 1997. The claim of user of the name REAL GOLDEN TEA / GOLDEN TEA / GOLDEN CHA since the year 1977 is absolutely baseless, false and frivolous.
9. To get a grip on the issue at land it is best to begin by depicting the competing trade marks.
Impugned TM (70411)
Applicant’s TM
10. On the preliminary issue of ‘Person Aggrieved’ as the applicant and respondent are in the same trade, dealing with the same goods, in the same state and the competing trade mark bears near resemblance - all these give them the necessary locus to file the application to seek cancellation of the impugned trade mark.
11. The basis for seeking cancellation is that the term ‘GOLDEN TEA’ is used to identify a category of tea leaves by the Tea Board of India and the respondent cannot have exclusive right to the use of term ‘Golden Tea’ as their trade mark. Further, all person connected with the tea trade are entitled to use the word ‘GOLDEN TEA’; Device of Cup and Saucer and ‘The Symbol of the best CTC tea’. These are purely descriptive expression and no monopoly rights can rest on any one entity. We agree with this contention in toto. But does that mean the impugned trade mark deserves be ousted from the register lock, stock and barrel?
12. In normal circumstance we would have acted that way. But in this case doing so would confer unfair advantage to the applicant whose style and manner of use of KATARIA’s REAL GOLDEN TEA with device of saucer and cup in the same red label is no different from the respondent’s RAVI’s GOLDEN TEA with device of tea cup in red label.
13. In our view, the end of justice would be met if the respondent label is amended so that the trade mark RAVI’s is given extra prominence and should be at least of the same size as that of GOLDEN TEA, if not larger than it. The requisite amendment to the registered trade mark should be submitted with 30 days from the date of receipt of this Order to the Registrar of Trade Marks at the appropriate trade mark office of the respondent firm in the prescribed form TM – 38 which should then be processed and disposed of expeditiously in accordance with law.
14. ORA/163/2009/TM/AMD is accordingly disposed off in terms of Para 13 above. There is no order as to costs.
(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.)
