INTELLECTUAL PROPERTY APPELLATE BOARD All these rectification applications have been filed against the registration of the mark XTRONG bearing No: 1014962 in class 9. All the applicants have the same grievance against the mark. The pleadings are almost the same. The evidence in ORA/3/2007/TM/AMD is taken as the basis. Since the issue to be decided is one and the same, a common order is passed. 2. The applicant’s case is that the mark is an abbreviation of the words extra strong. The glass manufacturers have been using the word XTRONG or XSTRONG to describe the joints of flanges and on all ends of glass equipments. Extra strong is the only way to describe the product, so a misspelling of the word would still be a descriptive word. No one can claim monopoly over it. The respondent is a dishonest user of the mark. The respondent has claimed user from 31-12-1989. Even prior to that date this word has been used by glass manufacturers to describe the strength of the joints. It is commonly used. The respondent has filed a suit against the applicant in ORA 10/2007/TM/AMD in Vadodra. No single person can claim an exclusive right over a non-distinctive descriptive mark. The mark is not registrable under Ss.9(1)(a)(b)&(c), 2(a),18(1) 36 , and 57 (2) of the Act. 17. The applicant in ORA 10/2007/TM/CH alone was sued by the respondent, but all the other applicants have with justification filed these petitions under S.57(2) , since this mark shall not remain in the register. The Hon’ble Supreme court has held in Infosys case 2011(1)SCC 125 that the word person aggrieved has a wider connotation in S 57. There public interest is involved. No one can obtain registration of a mark which is purely descriptive and non-distinctive. 18. The fact that so many rectification proceedings have been filed only goes to prove the case of the applicants that they are all affected by the registration of a word which is common in the industry. Everyone has been using the word XTRONG for a long time continuously. In fact the respondent himself says he is a concurrent user, which means that he admits that at least one person if not more is using the mark and he is using it concurrently. This too disentitles him from claiming exclusivity to an ordinary descriptive word. 19. For all these reasons the mark shall be removed from the register. The ORAs are allowed with costs of Rs 2000 each. The miscellaneous petitions stand closed.

INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex, Annexe-l, 2nd floor, 443, Anna Salai, Teynampet,  Chennai 600 018

(Circuit Bench Sitting at Ahmedabad)

M.P.Nos. 181 to 190/2011

IN

ORA/3 to 12/2007/TM/AMD

AND

ORA/3 to 12/2007/TM/AMD

WEDNESDAY, THIS THE 28^TH DAY OF DECEMBER, 2011

HON'BLE Smt. JUSTICE PRABHA SRIDEVAN                        ...     CHAIRMAN

HON’BLE Ms. S. USHA                                                  …    VICE-CHAIRMAN

ORA/3/2007/TM/AMD

Geekay Enterprises,

C-115, Synthofine Estate,

Off. Aarey Road,

Goregon (East),

Mumbai – 400 063.                                                                        ... Applicant

(Represented by:  Ms. Bhagwati Trivedi)

ORA/4/2007/TM/AMD

Garg Scientific Glass Industries,

34, 1^st Floor, Sainath Industrial Estate,

No.2, Off. Aarey Road,

Goregaon (East),

Mumbai – 400 063.                                                                        ... Applicant

(Represented by:  Ms. Bhagwati Trivedi)

ORA/5/2007/TM/AMD

Shree Dutta Scientific Glass Works,

A/2, Sainath Indusrial Estate,

No. 1, Off. Aarey Road,

Goregaon (East),

Mumbai – 400 063.                                                                        ... Applicant

(Represented by:  Ms. Bhagwati Trivedi)

ORA/6/2007/TM/AMD

Sanjog Scientific Industries,

7, Heera Panna Industiral Estate

Off Aarey Road, Goregaon (East),

Mumbai – 400 063.                                                                        … Applicant

(Represented by:  Ms. Bhagwati Trivedi)

ORA/7/2007/TM/AMD

Silicaware Pvt. Limited,

54-C, Chotani Estate, Grant Road (E),

Proctor Road,

Mumbai – 400 007.                                                                        … Applicant

(Represented by:  Ms. Bhagwati Trivedi)

ORA/8/2007/TM/AMD

Sushil Trading Corporation,

205, Alankar Industrial Estate,

Dindoshi,

Off Aarey Road, Goregaon (East),

Mumbai – 400 063.                                                                        … Applicant

(Represented by:  Ms. Bhagwati Trivedi)

ORA/9/2007/TM/AMD

ATR Glass Process Systems Pvt. Ltd.,

667/668, GIDC, Makarpura,

Vadodara – 390 010.                                                                    … Applicant

(Represented by:  Ms. Bhagwati Trivedi)

ORA/10/2007/TM/AMD

Sigma Scientific Glass Works Pvt. Ltd.,

Plot No. 4606, GIDC,

Near Deep Jyot Stationery,

Ankleshwar – 390 002.                                                      … Applicant

(Represented by:  Ms. Bhagwati Trivedi)

ORA/11/2007/TM/AMD

Star Scientific Glass Co.,

C/14, A, Sardar Estate,

Ajwa Road, Vadodara,

Gujarat.                                                                                … Applicant

(Represented by:  Ms. Bhagwati Trivedi)

ORA/12/2007/TM/AMD

Kalpesh Shah,

Sole Proprietor of Shakti Lab Equip. &

Chemicals,

Plot No. 5215, GIDC,

Ankleshwar – 390 002.                                                      … Applicant

(Represented by:  Ms. Bhagwati Trivedi)

Vs

Hemant Haricharan Goel,

Trading as Goel Scientific Glass Works Pvt. Ltd.,

D-35, Sardar Estate,

Ajwa Road,

Vadodara – 19.                                          ... Respondents (in all the above matters)

(Represented by:  Ms. Padmaja Kandge )

ORDER (No.241/2011)

Hon’ble Justice Prabha Sridevan, Chairman:

All these rectification applications have been filed against the registration of the mark XTRONG bearing No: 1014962 in class 9. All the applicants have the same grievance against the mark. The pleadings are almost the same. The evidence in ORA/3/2007/TM/AMD is taken as the basis. Since the issue to be decided is one and the same,  a common order is passed.

2.                  The applicant’s case is that the mark is an abbreviation of the words extra strong.  The glass manufacturers have been using the word XTRONG or XSTRONG to describe the joints of flanges and on all ends of glass equipments. Extra strong is the only way to describe the product, so a misspelling of the word would still be a descriptive word. No one can claim monopoly over it. The respondent is a dishonest user of the mark. The respondent has claimed user from 31-12-1989. Even prior to that date this word has been used by glass manufacturers to describe the strength of the joints. It is commonly used. The respondent has filed a suit against the applicant in ORA 10/2007/TM/AMD in Vadodra. No single person can claim an exclusive right over a non-distinctive descriptive mark. The mark is not registrable under Ss.9(1)(a)(b)&(c), 2(a),18(1) 36 , and 57 (2) of the Act.

3.                  The respondent claimed that the mark was an invented word. It is the brand name of the respondent. It was the respondent who invented the new system of flanges. It was named as XTRONG since the invented flanges had much more tightening strength than the normal flanges. The respondent claimed he was the honest originator and concurrent user of the mark. He prayed that the application to be dismissed.

4.                  In reply the applicant claimed that the fact that the respondent claims concurrent usage is an admission that he is not the prior user. It is also stated that strengthening of the joints was developed by Schott, Germany, who have been using the word XTRONG several years before the respondent.

5.                  The respondent filed the trademark registration certificate, certification of incorporation, certificate of importer-exporter, certificate of ISO 9001:2000, certificates of SSI, GST, CST, National Small Industries Corporation Permanent Establishment Certificate, PAN card, invoices and catalogues.

6.                  The applicant filed exhibit B (colly) which contains technical information of ABLAZE glass works  which refers to Xtrong glass joints, the product catalogue of Star scientific Glass co which refers to standard Flat buttress ends (X-strong type), 2003 Product catalogue of the applicant in ORA/10/2007/TM/AMD, which refers to the said applicant coming up with a new design of glass named as XTRONG, the 2000 product catalogue of Yash Industries also refers to a new design of glass joints named as Xtrong joints., the members directory 2004 of the All India Scientific Glass Equipment Manufacturers’ Association describes joints as “Xtrong and buttress joints” glass assemblies are described as “Xtrong, QVF and SCHOTT type glass assemblies”, the article by C.S.Patel (Past Joint Secretary) says “ the most brilliant contribution of Indian glass industry to the world of glass process plants has been the Xtrong flanges., a letter from Borosil glass works describing flanges as “Xstrong type flanges” and so on. There are many such documents. Most important is the 1993 edition of the Schott engineering catalogue which refers to the standard flat buttress ends.

7.                  The applicant’s documents show that the glass industry uses the word Xtrong to describe the type of joints. In fact the respondent in its counter statement has said that” the invention was named as “Xtrong” it means the invented flanges have much more tightening strength as almost 3 times more than normal flanges”. This is a clear admission that  the word describes the flanges as being “extra strong”, so on the respondent’s own admission the word is descriptive of the goods.

8.                  In 1999 PTC (19) 598 Bharat Enterprises (India) vs. C. Lall Gopi Industrial Enterprises and Ors., the Court held that the words Heat Pillar is generic and all the room heaters which are designed like a pillar are using that word and therefore no one can claim exclusivity to the said word.

9.                  In 2006 (32) PTC 126 (Ker.) (DB) Tractors and Farm Equipment Ltd., vs. K.S.Sunil Kumar the Court held that the words INSTA POWER indicates instant power and is a generic word and there can be no monopoly.

10.             In PTC (Suppl) (1) 106 (Mad) Nestles Products (India) Ltd., vs. Alvitone Laboratories & Ors. the Court held that INSTEA does not qualify as an invented word but it suggests instant tea and registration ought not to have been granted.

11.             In the “Law of trademarks & geographical Indications” 2^nd edition 2005 it is said that descriptive words with trifling variations conveying the same sound or meaning without constituting a substantially different word are not regarded as invented words. The book cites ORLWOOLA (misspelt for All Wool). It says misspellings commonly used in the trade such as XTRA for EXTRA are not allowable for registration.

12.             In this case, the word XTRONG when used in conjunction with the product that is glass flanges will immediately convey the meaning that the  flanges are extra strong. In the INSTEA case the learned Judge held:

“13… Whatever be the mode of contrivance, if to the eye or to the ear the resultant expression conveys the same idea as would be conveyed by any recognizable expression in the common vocabulary, then the word would not be regarded by the trade mark law as an invented word. In short, an invented word must be different from any word in common speech, and the difference must be substantial and not skin deep, merely…

…

18. I do not, therefore, reject the affidavits as of no importance. At the same time, I do not completely rely on them either. For I have to address the crucial questions to myself in order to get the right answers. When the arguments opened and when, for the first time, I came across the expression “INSTEA”, my first impression was that the word had something to do with tea and had something to do with instant. The first impression, I must confess, has outlasted all the learned arguments and explanations I happened to listen to subsequently in the course of the hearing of the appeal. It seemed to me that this is a fine example of a telescoped expression such as we find in “art-silk” for artificial silk. “Comintern” for communist international and “Consembly” as a newspaper equivalent of constituent assembly…”

13.             This applies to this case. The word XTRONG can only mean extra strong and nothing else. The respondent himself has admitted that the word describes the strength. The documents filed by the applicant show that the glass industry has for many years used the word Xtrong to describe a type of flange. The respondent being in the same industry must be aware of it and yet he has not objected to the use of the words “Xtrong type”even by the AISGEMA  as though it is a descriptive one. The evidence filed by the applicant shows that the word XTRONG is commonly used by the glass industry to mean a particular type of flange.  So we conclude that the mark is not an invented word, it is a descriptive mark, it does not distinguish the respondent’s goods from others as everyone uses the word Xtrong. It does not deserve registration.

14.             The applicant has claimed user since 1989. But none of the documents filed by the respondent is prior to 2000. In any event they do not prove user even the invoices do not refer to Xtrong. To resist the application for rectification on the ground that it is descriptive, the respondent must have shown that even if the mark was descriptive it has acquired secondary meaning. The respondent has claimed that he invented this type of flange, and since it had thrice as much strength as the normal flange he adopted this name for his invention. He has not filed any evidence for it. But in one of the documents filed by the applicant which is the Yash Industries brochure(part of Annexure B(colly)) we find that “ It was recognised for the first time in GOEL in 1989 that a glass cylinder stands better in the application of axial force rather than in the application of radial force. To exploit this feature we have come up with  a new design of glass joints which is named as XTRONG” Even if the GOEL mentioned is a reference to the respondent, it does not advance the respondent’s case. This does not say that the respondent invented this design. Even the Joint Secretary’s letter says that this is the Indian glass industry’s contribution. The applicants did not specifically raise the publici juris objection, though they claim it is commonly used to describe this type of joints and is the only practicable description. But since the applicants have raised the S.57(2) objection, we examined it from this angle. So even assuming without accepting that it was the respondent who made this type of flange he had obviously allowed the entire industry to use the word XTRONG, and it is too late now to claim exclusivity to the word which is used in common trade parlance and to restrain others from using it. Lindley, L. J. observed in the "Yorkshire Relish" case   at page 73:

"There is another way in which a name originally a good trade name may lose its character and become publici juris--i.e. where the first person using the name does not claim the right to prevent others from using it and allows other persons to use it without complaint. The name then comes to denote the article and nothing more; the name becomespublici juris, and any one who is at liberty to make the article can call it by the name by which it is usually known.”

 15.             The law regarding publici juris is laid down in Ford v. Foster, (1872) 7 Ch A 611 at p. 623 ("Eureka" case) (Z13). The test to determine whether a word that was originally a trade mark has become publici juris or not was stated in the following words by Sri G. Mellish, L. J.:

"....the test must be. 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 trader, it appears to me, however hard to some extent it may appear on the trader,  ..the right to the trademark must be gone”

16.             In this case it is clear from the evidence produced by the applicant that the mark has become so widely used to denote a type of joint, the public knows that it is buying that type of joint and not the respondent’s goods nor is it deceived into buying someone else’s goods under the impression it is the respondent’s.

 17.             The applicant in ORA 10/2007/TM/CH alone was sued by the respondent, but all the other applicants have with justification filed these petitions under S.57(2) , since this mark shall not remain in the register. The Hon’ble Supreme court has held in Infosys case 2011(1)SCC 125 that the word person aggrieved has a wider connotation in S 57. There public interest is involved. No one can obtain registration of a mark which is purely descriptive and non-distinctive.

18.             The fact that so many rectification proceedings have been filed only goes to prove the case of the applicants that they are all affected by the registration of a word which is common in the industry. Everyone has been using the word XTRONG for a long time continuously. In fact the respondent himself says he is a concurrent user, which means that he admits that at least one person if not more is using the mark and he is using it concurrently. This too disentitles him from claiming exclusivity to an ordinary descriptive word.

19.             For all these reasons the mark shall be removed from the register. The ORAs are allowed with costs of Rs 2000 each. The miscellaneous petitions stand closed.

      (S. USHA)                                                                                           (JUSTICE PRABHA SRIDEVAN)

VICE-CHAIRMAN                                                                                                CHAIRMAN

Psn

(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)

INTELLECTUAL PROPERTY APPELLATE BOARD This Appeal arises out of the order dated 30.09.2006 refusing the application for registration and the opposition under No. 172888 in Class 9. The appellants herein filed an application for registration of the Trade Mark CAP CAB on 03.11.2000 in Class 9 under No. 967948 claiming user since 01.04.1986 in respect of various kinds of electrical wires and cables. The said application was advertised before acceptance in the Trade Mark Journal MEGA – 6 dated 25.11.2003 at page 3580 under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act). The respondent herein filed their notice of opposition opposing the registration on the ground that they are the Registered Proprietors of the Trade Mark CAP CAB under No. 750328 in Class 17 as of 03.01.1997. The respondent had also filed an application under No. 750328 in Class 17 which is under opposition. The respondent’s main contention was that they had adopted the Trade mark as early as 1981 and had been using the same continuously and extensively since then. =23. On perusal of the records, it is seen that both the appellants and the respondents are carrying on a business of similar goods with identical marks. In the case of deciding the issue of deceptive similarity, the class of customers are to be considered. The class of customers here would belong to all categories. In such circumstances, we will have to consider the priority in use. Though the respondents claim user since 1981, their documents are only of the year 1990 whereas the appellants documents are from the year 1986. The public who are aware of the appellants goods since 1986 are likely to associate the goods only with that of the appellants goods. There is no doubt the onus is always on the appellant / applicant to prove that there has been no instance of confusion in the market. The appellant being prior in use, if at all there is confusion it will only be because of the respondent’s goods. The onus, therefore now shifts on the respondent to prove confusion, which has not been satisfied. We, therefore, do not think there is any valid reason to refuse the application for registration. 24. For the above mentioned reasons, the appeal is allowed and the application for registration of the trade mark CAP CAB under No. 967948 in Class 9 is allowed to proceed for registration. No order as to costs. In view of the fact that the appeal has been disposed off, nothing survives in the Miscellaneous Petition.

INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai,

 Teynampet, Chennai-600018

                                            *****

(CIRCUIT BENCH SITTING AT DELHI)

M.P.No.280/2007

IN

 OA/08/2007/ TM/DEL

AND

OA/08/2007/TM/DEL

WEDNESDAY THIS THE 28^th DAY OF DECEMBER,  2011

HON’BLE SMT.JUSTICE PRABHA SRIDEVAN                …  CHAIRMAN

HON’BLE MS. S. USHA                                                      …  VICE CHAIRMAN

Shri Rajnish Kohli,

S/o Shri D.N.Kohli,

Proprietor of M/s CAPITAL ELECTRIC CORPORATION,

3/59, Jungpura Extension,

New Delhi 110 014.                                                                                  … Appellant

(Represented by Advocate:   Shri M.K.Miglani)

Vs

CAPITAL CABLE INDIA LTD,

1798-A, Bhagirath Palace,

Delhi 110 006.                                                                             …   Respondent

(Represented by Advocate: Shri Umesh Mishra )

O R D E R No. 242/ 2011

HON’BLE MS. S. USHA, VICE CHAIRMAN:

            This Appeal arises out of the order dated 30.09.2006 refusing the application for registration and the opposition under No. 172888 in Class 9.  The appellants herein filed an application for registration of the Trade Mark
CAP CAB on 03.11.2000 in Class 9 under No. 967948 claiming user since 01.04.1986 in respect of various kinds of electrical wires and cables.  The said application was advertised before acceptance in the Trade Mark Journal
MEGA – 6 dated 25.11.2003 at page 3580 under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act).  The respondent herein filed their notice of opposition opposing the registration on the ground that they are the Registered Proprietors of the Trade Mark  CAP CAB  under No. 750328 in Class 17 as of 03.01.1997.  The respondent had also filed an application under No. 750328 in Class 17 which is under opposition.  The respondent’s main contention was that they had adopted the Trade mark as early as 1981 and had been using the same continuously and extensively since then.

2.         The appellants herein filed their counter statement stating that  they had been using the mark since 01.04.1986 as had been claimed in the application for registration of the Impugned Trade Mark.  They also submitted that the case of the respondent of user since 1981 is false.  The learned Registrar after hearing both the counsel held that the appellants have failed  to submit any document  to  prove the claim of  honest user of the mark in the market.  And therefore, the case of “honest user” under Section 12 of the Act was not satisfied and rejected the submissions on Section 12.  As regards the proprietorship, the Registrar had held that the respondents have proved proprietorship of the mark by registration and, therefore, the appellant’s claim of proprietorship was rejected.  The Registrar also held that the Impugned Mark was not capable of distinguishing the goods and therefore, the objection under Section 9 was upheld.  The objection under Section  11 was also upheld by the Registrar and, therefore, the opposition was allowed and the registration was refused. 

3.         Being aggrieved by the said order, the appellant herein filed the instant appeal.  The appellants stated that they had honestly and bonafidely conceived and adopted the Trade mark CAP CAB in the year 1986 in order to distinguish their goods from those of others.  The appellant adopted the said mark  knowing well that there were no similar marks in use in respect of the said goods.  The Trade mark CAP CAB was coined by taking CAP from the word “Capital” which was part of its  firm name and common suffix CAB representing the goods “Cables”.    

4.         The appellant had established a good business under the said trade Mark CAP CAB and thus the Trade Mark CAP CAB had become distinctive of the  goods of the appellants.

5.        The appellants preferred the present appeal on the following grounds:

            1.The impugned order is contrary to law and facts of the case.                                                                    

            2.The impugned order suffers from serious infirmity as the Registrar failed    to adjudicate the matter and deserves to be set aside; 

            3.The Registrar erred in law in not  giving any finding on the evidence filed by the respondent which are  seriously challenged by the appellant.  In fact, the respondent had never used the trade mark CAP CAB.    There is no finding that the respondent had used the mark or established any goodwill and reputation.  In the absence of such finding, the provisions of Section 11 becomes inapplicable to the proceedings;

            4.The Registrar had failed to consider the evidence filed by the appellant to prove the fact that the respondent’  was using different Trade Marks and not the Trade Mark CAP CAB.

            5.The Registrar had failed to adjudicate the very basis of the proceedings relating to the registration of the Trade Mark. 

            6.The Registrar had grossly erred in dealing with the appellants evidence;

            7.The Registrar ought to have allowed the application for registration on account of honest and bonafide adoption and continuous use for the past 20 years; 

            8. The Registrar was completely  wrong in holding that the adoption of the mark by the appellant was not honest because the appellant did not verify the records of the Registrar at the time of adoption.  In fact, in the year 1986 when the appellant  adopted the Trade mark CAP CAB, there was nothing on record of the Registrar of Trade marks and such verification would not have rendered adoption of the mark by the appellant as dishonest;

            9. The Registrar grossly erred in holding that the mark is not capable of distinguishing the case of the appellant and prohibited under Section 9 of the Act.

            10. The impugned order is unwarranted and in the circumstances of the case, bad in law and as such is not sustainable.

6.         The respondent herein filed their counter statement stating that the respondent  is a well known company which is engaged in the trade and business of manufacturing and marketing of electrical wires and cables, insulation wire, conduit pipes , PVC pipes, laminated sheets, rubber pipes, gaskets, flexible pipes tubes and parts of plastic material and carrying on business under the name and label  of M/s Capital Cable India Limited.  The respondent adopted the Trade mark CAP CAB  in the year 1981 and in order to protect their statutory rights, applied for registration of the trade mark CAP CAB in relation to goods in class 9 and 17 in the year 1997.  The application made in Class 17 under No.750328 was registered in the name of the user.  The other application under No.750330 has been opposed by the appellant herein. 

7.         As a result of extensive advertisement and publicity, respondent has earned an excellent reputation in relation to the above mentioned goods sold under the Trade Mark CAP CAB.  On account of superiority of the goods, long extensive and continuous use, the trade mark CAP CAB has become very popular  among the trade and public.  By virtue of such long use, the trade mark has come to be extensively  associated with its goods and business.  Therefore, the Trade Mark has acquired distinctiveness by long use and the Trade mark registered is validly subsisting on the registrar.

8.       The present appeal is an abuse of process of law and therefore, bad in law and is liable to be dismissed.  The appeal is barred by the provisions of law as the appellant  has suppressed and misrepresented the material facts.

9.         The Appellant is not the proprietor of the Trade Mark  CAP CAB, the appellant never used the mark in relation to any goods, the appellant has wrongly stated that they adopted the Trade mark in the year 1986.  They have never proved that they had been using the Trade mark in relation to the goods for which the registration has been sought for. 

10.       The impugned Trade Mark is absolutely devoid of distinctive character and capable of being distinct.   The impugned Trade mark  does not fulfill any of the requisite conditions as laid down under the statute and therefore does not qualify for registration as a Trade Mark.  Impugned Trade Mark is identical and or deceptively similar to the respondents Trade mark and therefore,                  prohibited under Section 11 of the act.   

11.       The appellants  adoption is dishonest only with the  intention to trade upon the good will and reputation  earned by the respondents’.  The application is prohibited  for registration under sections  9,11, 12, 18 & 33 of the Trade Marks Act. 

12.     We have heard Mr. M.K. Miglani for the appellant and Mr. Umesh Mishra for the respondent,  on 19.10.2011.

13.       The learned Counsel for the appellant submitted that they had applied for registration of the trade mark CAP CAB under No.967948 on 03.11.2000 claiming user since 01.04.1986.  The same was opposed by the respondent herein on the ground that they had adopted and used the trade mark since 1981 but have not substantiated the same by any proof.  The sales figures furnished by the respondent is in respect of various trade marks as is seen from the document at page 39 of the appeal papers.  In the other invoices, it is seen  that the trade mark CAP CAB is written by hand and only creates a doubt as to the validity of the document.

14.       The appellant submitted that they had coined the word CAP CAB from their trading style  i.e. Capital Electric corporation and CAB from the Cable.     They had been using the said trade mark since 1986.  Their sales turnover runs to several lakhs of Rupees.  As the sales invoice filed by the appellant did not have the trade mark  CAP CAB mentioned,  a separate declaration affidavit from the customer was filed to prove their user since the 1986.   The appellant took us through the advertisements since 1987 onwards. 

15.       The appellant further submitted that the respondents registered application under No. 750328 in Class 17 and the other pending application under No. 750330 in class 9 were mentioned in the impugned order, were not pleaded by the respondent.  The learned Registrar has passed the impugned order without proper application of mind and the Registrar has failed to consider the appellants objections.                    

16.       The counsel then relied on the judgement reported in PTC (Suppl)(1) 490 (Delhi) “ Pritam Das … Vs  Anil Food Industries … “  to say that mere filing of application for registration is not sufficient to  get any relief unless the person is able to prove prior use. 

17.       1981 PTC 121  “The Indian Association of Thermometry and others Vs M/s Hicks Thermometers (India) ltd., and Another”  was relied on to say that it is natural to have affidavits which are stereotyped.   It is only to prove the use of the mark as well as the reputation earned through the use.

18.       The learned counsel finally submitted that they are using the trade mark since 1986, whereas though the respondent had claimed to have been using since 1981 have not produced any document in proof thereof.  The counsel therefore, prayed that the application for registration be allowed. 

19.       In reply, the counsel for the respondent  submitted that they had filed two applications in the year 1997 and had obtained one registration and the other application is opposed by the appellant herein.  Their adoption is from their trading style Capital Cable Industries Ltd.  The appellants adoption is dishonest, therefore the registration ought not to be granted and the appeal be dismissed.    

             

20.       We have heard and considered the arguments and have gone through the documents and pleadings.

21.       The appellants have filed documents from the year 1987 though they claim use since 1986.  On perusal of the documents filed by the respondents, we do not find any document earlier to 01/01/1990.  It is also pertinent to mention here that in the other applications filed by the respondent  under No. 750328 in Class 17 and No. 750330 in Class 9 on 01.03.1997, the user claimed is 1982 whereas in the counter statement filed in the instant matter, the respondent has claimed user since 1981.   We cannot consider any date of user as it has not been proved by respondent as there are different dates as the respondents are themselves not clear in their claim of date of use.  The appellants have filed sufficient evidence in proof of their user since 1986.  The appellant has filed certain C Form of declaration issued by the Central Sales Tax Authorities along with the affidavit of the purchasers.  The C Form is of the year 1986.

22.       The Registrar has held that the proprietorship can be acquired by use or by honest adoption or by registration.  Here the appellants has acquired the proprietorship right by  honest adoption and use.  The appellants have claimed use since 1986 and have proved the same by cogent evidence.  The respondent’s use as observed earlier is not clear and therefore cannot be considered.  The appellants are prior in use and their claim of honest use can be accepted.  The respondent’s registration will be of no use.  The well settled principle is mere registration of the trade mark without any use will not provide any relief.   The respondents registration without any use cannot be considered.  The appellants have proved their use prior to that of  the respondents use. 

23.       On perusal of the records, it is seen that both the appellants and the respondents are carrying on a business of  similar goods with identical marks.  In the case of deciding the issue of deceptive similarity, the class of customers are to be considered.  The class of customers here would belong to all categories.  In such circumstances, we will have to consider the priority in use.  Though the respondents claim user since 1981, their documents are only of the year 1990 whereas the appellants documents are from the year 1986.  The public who are aware of the appellants goods since 1986 are likely to associate the goods only with that of the appellants goods.  There is no doubt the onus is always on the appellant / applicant to prove that there has been no instance of confusion in the market.  The appellant being prior in use, if at all there is confusion it will only be because of the respondent’s goods.  The onus, therefore now shifts on the respondent to prove confusion, which has not been satisfied.  We, therefore, do not think there is any valid reason to refuse the application for registration.      

24.       For the above mentioned reasons, the appeal is allowed and the application for registration of the trade mark CAP CAB under No. 967948 in Class 9 is allowed to proceed for registration.    No  order as to costs.    In view of the fact that the appeal has been disposed off, nothing survives in the Miscellaneous Petition. 

  

(S.USHA)                                                           (JUSTICE PRABHA SRIDEVAN)        

Vice Chairman                                                                                        Chairman

(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)

 

under Section 138 of The Negotiable Instruments Act, 1881. The following two questions arise for consideration: (i) Can cognizance of an offence punishable under Section 138 of the Negotiable Instruments Act 1881 be 1Page 2 taken on the basis of a complaint filed before the expiry of the period of 15 days stipulated in the notice required to be served upon the drawer of the cheque in terms of Section 138 (c) of the Act aforementioned? And, (ii) If answer to question No.1 is in the negative, can the complainant be permitted to present the complaint again notwithstanding the fact that the period of one month stipulated under Section 142 (b) for the filing of such a complaint has expired?= it is noteworthy that the same High Court has in certain cases taken different views on the subject. For instance the High Court of Jammu and Kashmir has in Harpreet Hosiery Rehari v. Nitu Mahajan, 2000 Cri.L.J. 3625 held that dismissal of complaint on ground of that the same is premature is valid; while in S. Janak Singh v. Pritpal Singh, 2007 (2) J.K. 91, it has held that cognizance taken on a complaint filed before expiry of 15 days of the notice, after the expiry of the said period is permissible. A similar difference of opinion can also be seen in two decisions of the Karnataka High Court in Ashok Hegde v. Jathin Attawan, 1997 Cri.L.J. 3691 and Arun Hegde and Anr. v. M.J. Shetty, ILR 2001 Kar 3295. The conflict in the judicial pronouncements referred to above, therefore, needs to be resolved authoritatively. 11Page 12 16. The second question formulated earlier may arise only in case the answer to the first question is in the negative. If no cognizance could be taken on the basis of a complaint filed prematurely, the question would be whether such a complaint could be presented again after the expiry of 15 days and beyond the period of one month under the clause (b) of Section 142 of the Act. Whether or not the complainant can in a situation like the one in the case at hand invoke the proviso to clause (b) and whether or not this Court can and ought to invoke its power under Section 142 to permit the complainant to file a complaint even after the expiry of period of one month stipulated under Section 142 are incidental questions that may fall for determination while answering question no.2. 17. In the light of the above, we deem it fit to refer the two questions formulated in the beginning of the judgment to a threeJudge Bench of this Court. The Registry shall place the file before the Chief Justice for constitution of an appropriate Bench.

Page 1
REPORTABLE
IN THE SUPREME COURT OF INDIA
CRIMINAL APPELLATE JURISDICTION
   CRIMINAL   APPEAL   NO.                    OF   2012
(Arising out of SLP (Crl.) No.5761 of 2010)
Yogendra Pratap Singh …Appellant
Versus
Savitri Pandey & Anr.      …Respondents
  J  U  D  G   M  E  N  T
 
1. Leave granted.
2. This appeal assails an order passed by the High Court
whereby it has allowed a petition under Section 482 of the Cr.P.C.
and quashed the order passed by the Magistrate taking cognizance
of an offence punishable under Section 138 of The Negotiable
Instruments Act, 1881.  The following two questions arise for
consideration:
(i) Can cognizance of an offence punishable under
Section 138 of the Negotiable Instruments Act 1881 be
1Page 2
taken on the basis of a complaint filed before the expiry
of the period of 15 days stipulated in the notice
required to be served upon the drawer of the cheque in
terms of Section 138 (c) of the Act aforementioned?
And,
(ii) If answer to question No.1 is in the negative, can
the complainant be permitted to present the complaint
again notwithstanding the fact that the period of one
month stipulated under Section 142 (b) for the filing of
such a complaint has expired?
3. The questions arise in the following factual backdrop:  
The appellant filed a complaint under Section 138 of the Negotiable
Instruments Act against respondent No.1 Smt. Savitri Pandey in the
Court of Additional Civil Judge (J.D.)/Magistrate, Sonbhadra in the
State of Uttar Pradesh.  The respondent’s case was that four
cheques issued by the accused-respondent in his favour were
dishonoured, when presented for encashment. A notice calling upon
the respondent-drawer of the cheque to pay the amount covered by
the cheques was issued and duly served upon the respondent as
required under Section 138 (c) of The Negotiable Instruments Act,
1881. No payment was, however, made by the accused till 7
th
October, 2008 when a complaint under Section 138 of the Act
2Page 3
aforementioned was filed before the Magistrate. Significantly
enough the notice in question having been served on 23
rd
September, 2008, the complaint presented on 7
th
October, 2008
was filed before expiry of the stipulated period of 15 days. The
Magistrate all the same took cognizance of the offence on 14
th
October, 2008 and issued summons to the accused, who then
assailed the said order in a petition under Section 482 of the
Cr.P.C. before the High Court of Judicature at Allahabad. The High
court took the view that since the complaint had been filed within
15 days of the service of the notice the same was clearly premature
and the order passed by the Magistrate taking cognizance of the
offence on the basis of such a complaint is legally bad. The High
Court accordingly quashed the complaint and the entire
proceedings relating thereto in terms of its order impugned in the
present appeal.
4. We have heard learned counsel for the parties at some
length.  Section 138 of the Negotiable Instrument Act, inter alia,
provides:
“where any cheque  drawn by a person on an account
maintained by him with a banker for payment of any
amount of money to another person from out of that
account for the discharge, in whole or in part, of any
debt or other liability, is returned by the bank unpaid,
either because of the amount of money standing to the
credit of that account is insufficient to honour the
cheque or that it exceeds the amount arranged to be
paid from that account by an agreement made with
that bank, such person shall be deemed to have
committed an offence and shall without prejudice to
3Page 4
any other provisions of this Act, be punished with
imprisonment for a term which may extend to two
year, or with fine which may extend to twice the
amount of the cheque, or with both.”
5. Proviso to Section 138, however, is all important and
stipulates three distinct conditions precedent, which must be
satisfied before the dishonour of a cheque can constitute an offence
and become punishable.  The   first     condition is that the cheque
ought to have been presented to the bank within a period of six
months from the date on which it is drawn or within the period of
its validity, whichever is earlier. The   second     condition is that the
payee or the holder in due course of the cheque, as the case may
be, ought to make a demand for the payment of the said amount of
money by giving a notice in writing, to the drawer of the cheque,
within thirty days of the receipt of information by him from the
bank regarding the return of the cheque as unpaid. The third
condition is that the drawer of such a cheque should have failed to
make payment of the said amount of money to the payee or as the
case may be, to the holder in due course of the cheque within
fifteen days of the receipt of the said notice. It is only upon the
satisfaction of all the three conditions mentioned above and
enumerated under the proviso to Section 138 as clauses (a), (b)
and (c) thereof that an offence under Section 138 can be said to
have been committed by the person issuing the cheque.
4Page 5
6. Section 142 of the Negotiable Instruments Act governs taking
of cognizance of the offence and starts with a non-obstante clause.
It provides that no court shall take cognizance of any offence
punishable under Section 138 except upon a complaint, in writing,
made by the payee or, as the case may be, the holder in due
course and such complaint is made within one month of the date on
which the cause of action arises under clause (c) of the proviso to
Section 138.  In terms of sub-section (c) to Section 142, no court
inferior to that of a Metropolitan Magistrate or a Judicial Magistrate
of the first class is competent to try any offence punishable under
Section 138.
7. A conjoint reading of Sections 138 and 142 makes it
abundantly clear that  a complaint under Section 138 can be filed
only after the  cause of action to do so accrues to the complainant
in terms of clause (c) of the proviso to Section 138 which as
noticed earlier happens only when the drawer of the cheque in
question fails to make the payment of the cheque amount to the
payee or the holder of the cheque within 15 days of the receipt of
the notice required to be sent in terms of clause (b) to the proviso
to Section 138.
8. The upshot of the above discussion is that a complaint filed in
anticipation of the accrual of the cause of action under clause (c) of
the proviso to Section 138 would be a premature complaint. The
5Page 6
complainant will have no legal justification to file such a complaint
for the cause of action to do so would not accrue to him till such
time the drawer of the cheque fails to pay the amount covered by
the cheque within the stipulated period of 15 days from the date of
the receipt of the notice.  It follows that on the date such a
premature complaint is presented to the Magistrate the same can
and ought to be dismissed as premature and hence not
maintainable. That is, however, not what happened in the case at
hand. In the present case, the Magistrate took cognizance of the
offence on 14
th
October, 2008 by which time the stipulated period
of 15 days had expired but no payment towards the cheque
amount was made to the complainant even upto the date the
cognizance was taken.  The commission of the offence was thus
complete on the date cognizance was taken, but the complaint on
the basis whereof the cognizance was taken remained premature.
9. The question in the above backdrop is whether the
subsequent development namely completion of the third
requirement for the commission of an offence under Section 138
could be taken note of for purposes of cognizance under Section
142 of the Act. The complaint filed by the appellant was in our view
plainly premature. The fact that subsequent to the filing of the
complaint an offence under Section 138 had been committed was
no reason for the court to ignore the fact that the complaint on the
basis of which it was taking cognizance of the offence was not a
6Page 7
valid complaint. We say so because Section 142 of the Negotiable
Instruments Act forbids taking of cognizance of any offence
punishable under Section 138 except upon a complaint, in writing,
made by the payee or the holder of the cheque in due course.
Such a complaint in order to be treated as a complaint within the
contemplation of Section 142 ought to be a valid complaint. This in
turn means that such a complaint must have been filed after the
complainant had the cause of action to do so under clause (c) of
the proviso to Section 138. A complaint, that is, premature was no
complaint in the eyes of law and no cognizance could be taken on
the basis thereof.
10. Having said that, we must refer to two decisions of this Court
that were cited at the Bar by learned counsel for the parties in
support of their respective submissions.  In Narsingh Das
Tapadia v. Goverdhan Das Partani and Anr. (2000) 7 SCC
183, a similar question arose before a two-Judge Bench of this
Court. That was also a case where on the date the complaint was
filed the complainant had no cause of action but by the time
cognizance of the offence was taken by the Magistrate, the
stipulated period of 15 days had expired and the commission of the
offence was complete. This Court drew a distinction between
“taking cognizance of an offence” and ”the filing of a complaint by
the complainant”.  This Court held that while there was a bar to the
taking of a cognizance by the Magistrate, there was no bar to the
7Page 8
filing of a complaint and that a complaint filed even before the
expiry of the period of 15 days could be made a basis for taking
cognizance of the offence provided cognizance was taken after the
expiry of the said period.  This Court observed:
“Mere presentation of the complaint in the court cannot
be held to mean that its cognizance had been taken by
the Magistrate. If the complaint is found to be
premature, it can await maturity or be returned to the
complainant for filing later and its mere presentation at
an earlier date need not necessarily render the
complaint liable to be dismissed or confer any right
upon the accused to absolve himself from the criminal
liability for the offence committed.”
11. The other decision pressed into service before us was also
delivered by a two Judge Bench of this Court in Sarav Investment
& Financial Consultancy Private Limited and Another v. Llyod
Register of Shipping Indian Office Staff Provident Fund and
Anr. (2007) 14 SCC 753. There this Court held that Section 138
of the Negotiable Instruments Act contains a penal provision and
creates a vicarious liability. Even the burden of proof to some
extent is on the accused. Having regard to the purport of the said
provision and the severe penalty sanctioned by it, the same
warrants a strict construction.  The Court further held that service
of a notice in terms of Section 138 proviso (b) of the Act is a part of
the cause of action for lodging the complaint under Section 138 and
that service of a notice under clause (b) of the proviso to Section
8Page 9
138 was an essential requirement to be complied with before a
complaint could be filed.
The Court observed:
“16. Section 138 of the Act contains a penal provision.
It is a special statute. It creates a vicarious liability.
Even the burden of proof to some extent is on the
accused. Having regard to the purport of the said
provision as also in view of the fact that it provides for
a severe penalty, the provision warrants a strict
construction. Proviso appended to Section 138 contains
a non obstante clause. It provides that nothing
contained in the main provision shall apply unless the
requirements prescribed therein are complied with.
Service of notice is one of the statutory requirements
for initiation of a criminal proceeding. Such notice is
required to be given within 30 days of the receipt of the
information by the complainant from the bank
regarding the cheque as unpaid. Clause (c) provides
that the holder of the cheque must be given an
opportunity to pay the amount in question within 15
days of the receipt of the said notice. Complaint
petition, thus, can be filed for commission of an offence
by a drawee of a cheque only 15 days after service of
the notice. What are the requirements of service of a
notice is no longer res integra in view of the recent
decision of this Court in C.C. Alavi Haji v. Palapetty
Muhammed”
12. It follows that a complaint filed before the expiry of the
stipulated period of 15 days was not a valid complaint for purposes
of Section 142 of the Act.  To that extent, therefore, the view taken
in the two decisions referred to above are at variance with each
other. That apart, the decision in Narsingh Das Tapadia (supra)
does not, in our opinion, correctly state the legal position and may
require a fresh look by a larger Bench of this Court. The cleavage in
9Page 10
the judicial opinion on the question does not appear to be confined
to the judgments of this Court alone.
13. Judicial opinion on the question is split even among the High
Courts in the country. For instance, the High Court of Calcutta in
Sandip Guha v. Saktipada Ghosh 2008 (3) CHN 214, High
Court of Orissa in Niranjan Sahoo v. Utkal Sanitary, BBSR, [Crl.
Misc. Case No.889 of 1996, decided on 13
th
February, 1998],
High Court of Bombay in Rakesh Nemkumar Porwal v. Narayan
Dhondu Joglekar and Anr. 1994 (3) Bom CR 355, High Court of
Punjab and Haryana in Ashok Verma v. Ritesh Agro Pvt. Ltd.
1995 (1) Bank CLR 103 and the High Court of Andhra Pradesh in
N. Venkata Sivaram Prasad v. Rajeswari Constructions 1996
Cri.L.J. 3409 (A.P.) have taken the view that a complaint filed
within 15 days of the notice period was premature and hence liable
to be quashed.
14. The High Court of Allahabad on the other hand has taken a
contrary view in Smt. Hem Lata Gupta v. State of U.P & Anr.
2002 Cri.L.J. 1522 (All) and held that cognizance taken on the
basis of a complaint filed within 15 days of the notice period was
perfectly in order if such cognizance was taken after the expiry of
the said period.  To the same effect are the decisions of High Court
of Allahabad in Ganga Ram Singh v. State of U.P. & Ors. 2005
Cri.L.J. 3681 (All), High Court of Gauhati in Yunus Khan v.
10Page 11
Mazhar Khan, [2004 (1) GLT 652], High Court of Rajasthan
(Jaipur Bench) in Mahendra Agarwal v. Gopi Ram Mahajan,
[RLW 2003 (1) Raj 673], High Court of Delhi in Zenith Fashions
Makers (P) Ltd. v. Ultimate Fashion Makers Ltd. and Anr.,
[121 (2005) DLT 297], High Court of Madhya Pradesh, Indore
Bench in Bapulal v. Krapachand Jain, 2004 Cri.L.J. 1140, High
Court of Himachal Pradesh in Rattan Chand v. Kanwar Ram
Kripal and Anr. 2010 Cri.L.J. 706 and High Court of Madras in
I.S.P. Solutions India (P) Ltd. and Ors. v. Kuppuraj, 2006
Cri.L.J. 3711.
15. It is noteworthy that the same High Court has in certain cases
taken different views on the subject. For instance the High Court of
Jammu and Kashmir has in Harpreet Hosiery Rehari v. Nitu
Mahajan, 2000 Cri.L.J. 3625 held that dismissal of complaint on
ground of that the same is premature is valid; while in S. Janak
Singh v. Pritpal Singh, 2007 (2) J.K. 91, it has held that
cognizance taken on a complaint filed before expiry of 15 days of
the notice, after the expiry of the said period is permissible. A
similar difference of opinion can also be seen in two decisions of the
Karnataka High Court in Ashok Hegde v. Jathin Attawan, 1997
Cri.L.J. 3691 and Arun Hegde and Anr. v. M.J. Shetty, ILR
2001 Kar 3295. The conflict in the judicial pronouncements
referred to above, therefore, needs to be resolved authoritatively.
 
11Page 12
16. The second question formulated earlier may arise only in case
the answer to the first question is in the negative.  If no cognizance
could be taken on the basis of a complaint filed prematurely, the
question would be whether such a complaint could be presented
again after the expiry of 15 days and beyond the period of one
month under the clause (b) of Section 142 of the Act. Whether or
not the complainant can in a situation like the one in the case at
hand invoke the proviso to clause (b) and whether or not this Court
can and ought to invoke its power under Section 142 to permit the
complainant to file a complaint even after the expiry of period of one
month stipulated under Section 142 are incidental questions that
may fall for determination while answering question no.2.
17. In the light of the above, we deem it fit to refer the two
questions formulated in the beginning of the judgment to a threeJudge Bench of this Court.  The Registry shall place the file before
the Chief Justice for constitution of an appropriate Bench.
……………………….……..……J.
(T.S. THAKUR)
………………………….…..……J.
(GYAN SUDHA MISRA)
New Delhi
April 3, 2012
12