INTELLECTUAL PROPERTY APPELLATE BOARD- The plea of non-user is raised to remove the mark and the person defending registration does not plead the facts to show user or bonafide intention to use. Would the person pleading non-user be still bound to adduce evidence of non-user. This is the question in this case.=The fact that applicant filed multiple applications for the mark, or that there is correspondence between applicant and counsel regarding applicant’s applications, hardly establishes a bona fide intent to use the mark. If the filing and prosecution of a trademark application constituted a bona fide intent to use a mark, then in effect, lack of a bona fide intent to use would never be a ground for opposition or cancellation, since an inter partes proceeding can only be brought if the defendant has filed an application. The absence of documentation coupled with applicant’s failure to take testimony or offer any evidence supporting its bona fide intent to use convince us that applicant did not have a bona fide intent to use the mark. Further, that Denny Jaeger, applicant’s chief executive officer, believed BLACK MAIL to be a good mark for future use does not establish a bona fide intent to use. Likewise, applicant’s mere statement that it intends to use the mark, and its denial that it lacked a bona fide intent, do not establish, in fact, that it had a bona fide intent to use the mark in commerce when it filed the involved application. Evidence bearing on bona fide intent is “objective” in the sense that it is evidence in the form of real life facts and by the actions of the applicant, not by the applicant’s testimony as to its subjective state of mind. That is, Congress did not intend the issue to be resolved simply by an officer or applicant later testifying, “Yes, indeed, at the time we filed that application, I did truly intend to use the mark at some time in the future.” 17. This is correct. In this case, there is no pleading rebutting the allegation of non-user. The above passage indicates how bonafide intention is pleaded and if necessary proved. The mere fact that a mark is registered cannot be evidence of use or bonafide intention to use, for then all s. 47 applications must fail. 18. In J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, §19:14 (4th ed. 2009) it is observed “here the complete lack of documentation or testimony clearly outweighs any subjective or sworn intent to use the mark.” 19. In the present case, (a) The deed of assignment of the trade mark cannot take effect for want of compliance of section 42; and (b) The ground of non-user is accepted and the conditions of Section 47(i)(a) are satisfied. 20. The continuance of the mark in the register is without justifiable cause. In these circumstances, the trade mark is liable to be removed/cancelled. The Registrar is therefore directed to remove the impugned trade mark SHELL AUTOSERV under No. 1237451 in class 36 from the register.

INTELLECTUAL PROPERTY APPELLATE BOARD Guna Complex, Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai – 600 018 (Circuit Bench Hearing at Mumbai) M.P.No. 182 & 183 of 2009 in ORA/223/2008/TM/MUM and ORA/223/2008/TM/MUM FRIDAY THIS, THE 3rd DAY OF FEBRUARY, 2012 Hon’ble Smt. Justice Prabha Sridevan -- Chairman Hon’ble Ms. S. Usha -- Vice Chairman SHELL TRANSOURCE LIMITED GROUND FLOOR, SHAH INDUSTRIAL ESTATE -- Applicant SAKI VIHAR ROAD, ANDHERI (EAST) MUMBAI – 400 072, MAHARASHTRA (By Advocate Ms. Usha Athreya Chandrasekhar) Vs. SHELL INTERNATIONAL PETROLEUM COMPANY LTD. “SHELL CENTRE” LONDON SE1 7NA E N G L A N D -- Respondent (By Advocate Shri Abhishek Nayar) ORDER No. 31/2012 HON’BLE SMT. JUSTICE PRABHA SRIDEVAN, CHAIRMAN: 1. The plea of non-user is raised to remove the mark and the person defending registration does not plead the facts to show user or bonafide intention to use. Would the person pleading non-user be still bound to adduce evidence of non-user. This is the question in this case. 2. This application has been filed for removing the mark SHELL AUTOSERV under Registration No. 1237451 in class 36. 3. The ground on which the applicant seeks rectification is that the impugned mark has not been used by the respondent in respect of the services for which it is registered. The applicant has been using the mark since February 2003. SHELL is part of their corporate name since 1990. The applicant is the largest growing BPO delivering quality services. They serve fifty of the counters leading banks and are also one of the four major franchisee of NSDL. They have been in the business since 1990 and have registered large and impressive sales of their business under the name SHELL COMPUTERS LIMITED and since 2003 under the name SHELL TRANSOURCE LIMITED. They afford various services in the financial and insurance sectors. Because of extensive floods, the applicant is unable to produce the necessary records. In February 2006, the applicant adopted a distinctive thumb imprint device also. They have achieved an enviable reputation because of the quality of their services. When the Trade Marks Act extended its protection to service marks, the applicant has filed the following applications:- · Application No. 1636283 in respect of Records management services, namely, document indexing for others, Business process outsourcing services, Human capital management outsourcing services, Outsourcing services (business assistance), Management information, Document management and reproduction, sales promotion for others, compiling of statistics, computerized file management system, transcription, Data search services, business research, book keeping services, cost price analysis included in class 35 · Application No. 1636282 in respect of Insurance and financial information and consultancy services, Cheque verification, processing and collection services, Cash management services, Commercial registered and transfer agent services, Telephone calling services included in class 36 · Application No. 1636281in respect of Electronic and physical capture and storage of data and related services included in class 39 · Application No. 1636280 in respect of Electronic imaging, scanning, digitizing, alteration and/or retouching of (indicate type of visual material, e.g. photographic images, artwork, paintings, etc.) included in class 40 and · Application No. 1636279 in respect of Identification verification services, namely, providing authentication of personal identification information, Software development, Data Analysis, Data conversion services included in class 42 of the Trade Marks Act, 1999 claiming use since 2003. They are all pending registrations. The respondent has filed C.S. No. 915/2008 before the Hon’ble Delhi High Court. The respondent has neither used nor do they have a bonafide intention to use the mark. Even after eight years, there is no iota of evidence of use nor a bonafide intention to use. On the date of application, the impugned mark was “proposed to be used”. If there is no evidence of use thereafter then the mark is liable to be struck off. The applicant is “a person aggrieved” as the applications filed by the applicant is opposed by the respondent. The mark must be removed. 4. The respondent’s case is that the registration must stand. The applicant has not proved non-user by way of affidavits from dealers and traders. The applicant must succeed on the strength of this case, not really on the weakness of the other side. Therefore according to the respondent, the mark does not deserve to be removed. 5. Broadly, on the above pleadings, the parties came before us. 6. The Learned Counsel for the applicant submitted that the respondent has not shown how it is entitled to be the proprietor of the registered Trade Mark. The Deed of Assignment contains no recital relating to consideration. The relationship between the assignor and the assignee is not clear. The assignment is without goodwill and is contrary to section 42 of the Trade Marks Act, 1999. No application has been made to the Trade Mark Registry for the change of name. The mark has been never used for the services for which it is registered. The applicant has been in business from 1980. But the civil suit has been filed by the respondent only in 2008. None of the allegations have been specifically traversed in the counter statement. Therefore, they stand un-rebutted and on the ground of non-user, the mark must be removed. 7. The Learned Counsel for the respondent submitted that the documents filed by the applicant only show that they functioned as a BPO and the mark has not been used for services rendered. The applicant’s mark has not been used and has not therefore acquired distinctiveness. SHELL TRANSOURCE is only a trade name and the applicant cannot claim “user” as a trade mark for goods or services. The respondent has intention to use. The applicant is not a person aggrieved. 8. Both sides filed written submissions. In addition, the respondent has filed Miscellaneous Petition No. 182 & 183 of 2009. By these Miscellaneous Petitions, the respondent seeks to file the Deed of Assignment to show that the impugned mark was assigned to SHELL BRANDS INTERNATIONAL AG from the respondent herein and therefore appropriate amendment must be effected. 9. Miscellaneous Petition No. 182/2009 is for amendment of the counter statement in view of the assignment. Miscellaneous Petition No. 183/2009 is for early hearing of the amended affidavit. 10. The impugned mark was registered on 13.06.2006. The user is “proposed to be used”. The Assignment Deed shows that it is without goodwill. Section 42 provides that any assignment of a trade mark whether registered or un-registered if made otherwise than in connection with the goodwill, the assignment will not take effect unless the assignee makes an application to the Registry for directions with respect of the advertisement of the assignment. This application shall be made not later than the lapse of six months from the date on which the assignment is made and at any rate not exceeding three months even if the period is extended. This extended period must be allowed by the Registry. Therefore, for an assignment of trade mark to take effect, the following conditions should be satisfied when it is made “otherwise than in connection with the goodwill of the business”, (a) An application should be made by the assignee to the Registry; (b) This application should seek directions with respect to the advertisement of the assignment to advertise it in such a form and manner and within such period as the Registrar may direct; (c) This application should be made not later than expiration of six months from the date on which the assignment is made; and (d) If it can not be made within those six months the applicant must seek extension of time from the Registrar. (e) The Registrar may allow the extension sought for which shall not exceed three months in all. Therefore, the time within which the application is to be made is prescribed in Section 42 the purpose for which the application is made is also explained, and the manner of compliance with the directions of the Registrar is also set out. 11. In this case, the alleged assignment has been made in 2005 and the Miscellaneous Petitions are filed in 2009. There is no averment in the affidavit in support of the application that the application has been made to the Registry as per Section 42. We cannot give effect to the assignment. This is a peculiar situation where the existing respondent has allegedly transferred their rights over the trade mark and such assignment is not recorded as per section 42. As far as we are concerned, we cannot take note of the assignment. This objection relating to the Assignment Deed raised by the applicant in the Miscellaneous Petition No. 82 and 83 of 2009 deserves acceptance. Therefore amendment cannot be allowed. Therefore the Miscellaneous Petitions will have to be dismissed. 12. The applicant relied on the following judgments:- (a) Trademark Trial and Appeal Board’s judgment in Research In Motion Limited Vs. NBOR Corporation of 12.2.2009 to show with regard to evidence on lack of bonafide intent; (b) Intellectual Property Appellate Board (IPAB)’s judgment in Royal Snacks Food Products Vs. NABISCO Inc. dated 10.1.2005 to show with regard to non-user, the Board has mentioned that “it may be worthwhile to refer to the judgment of the Supreme Court in Milment Oftho Industries & Ors. Vs. Allergan Inc. 2004 (28) PTC 585 (SC):- “However, one note of caution must be expressed. Multinational Corporations who have no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian company by not permitting it to sell a product in India, if the Indian company has genuinely adopted the mark and developed the product and is first in the market. Thus, the ultimate test should be who is first in the market.” 13. The respondent relied on the following judgments:- (a) AIR 2009 SC892 (Kabushiki Kaisha Toshiba Vs. TOSIBA Appliances Co. and Ors.), it was held that “Nature of evidence required for filing non-use rectification: Since non user is a negative fact, it can be proved by affidavit evidence. The affidavit should clearly state the details of investigation made by the deponent regarding non user, the persons whom he contacted and the trade directories or other published documents he has consulted and names of individuals contacted who are potential customers of the goods in question and so on. The applicant has to establish that the mark sought to be removed has not been used in relation to the goods during the relevant period. Once a prima facie case of non use is established, the onus shifts to the registered proprietor to prove his case.” “Applying this to the present case, it is submitted that the present rectification has been filed by the applicant without any use of its mark SHELL TRANSOURCE in relation to the services for the mark SHELL AUTOSERV in class 36 under registration No. 1237451. Thus, the applicant it is not the person aggrieved under the Act as required under section 47 of the Act which is a pre-requisite for filing the rectification application. It is further submitted that the Applicant is not a person aggrieved since he has not used the mark SHELL TRANSOURCE and no practical damage or injury would be caused to the applicant if SHELL AUTOSERV stands in the register. ” (b) In Wright, Crossley, and Co. (1898) 15 RPC 131 it was held that…….”an applicant, in order to show that he is a person aggrieved, must show that in some possible way he may be damaged or injured if the trade mark is allowed to stand; and by ‘possible’ I mean possible in a practical sense, and not merely a fantastic view’. (c) In Revlon Vs. Rajendra Kumar 1995 AIPC 30 at 34-37 (Cal) where it was held that only after satisfactory evidence is filed to establish non-user then the onus will shift to the registered proprietor. (d) AIR 1993 Bom 185 Eagle Potteries Private Ltd. Vs. Eagle Flask Industries Private Ltd., it was held “There can be no doubt that the burden of proving non-user will always be on the party making the averments in the Petition. No other evidence either by way of Affidavits from dealers and traders or oral evidence has been lead to show that there has been no use by the 1st Respondent or that these are not goods of the same description. The Court held that merely making an averment is not sufficient. If a party wants to prove a particular fact, the burden is on that party and in cases like the present where the valuable rights of a registered owner are sought to be taken away, the burden must be strictly discharged. (e) State of Rajasthan and Ors. Vs. Nandlal and Ors. 1993 (Suppl.) 1 SCC 681 the Hon’ble Supreme Court held that the allegations made by each of the petitioners have to be established by him. It is settled proposition of law that burden of proof always lies upon the party who makes certain allegations and seeks relief on it. The Court has to address itself whether the party, which has made the allegations, has discharged the burden of proving the allegations. Further, the party must succeed on the strength of its own case rather than on the weakness of the case of the other side. Such a party is under a legal obligation to prove its case irrespective of the fact whether the opposite party has proved its case or not. A mere destruction of the case of the defendant in absence of establishment of his own case, carried the petitioner nowhere. 14. We have considered the rival submissions and the materials before us. There is no disagreement with the position that he who pleads non-user must prove it. But when the applicant has pleaded non-user, the respondent must specifically deny it stating the facts on which he denies non-user. In the absence of specific denial we can only hold that the allegations stands admitted. This is the spirit of Order 8 Rule 3 and Rule 5 (CPC). There must be pleading of a fact and then there must be acceptable evidence to prove the same. The respondent should have pleaded that they have in fact used the mark after registration and set out the details regarding that. If the respondent does not plead that they had in fact used the mark it would be difficult for the applicant to prove non user. In fact it is unnecessary. Not having pleaded that they had used the mark the respondent cannot let in evidence to show how they have used the mark. Let us take the example of a suit on a promissory note. The plaintiff sues because of non-payment. The defendant can plead non-execution of course. But if he accepts execution then he should plead the facts to show when he returned the loan. Then the plaintiff can prove that the repayment is false. But if the defendant merely denies non-payment, the plaintiff would find it very difficult to prove non-payment. The task is many times more difficult in a case of non-user. 15. The applicant has shown that they have been trading in the name of SHELL TRANSOURCE with regard to financial services. They are aggrieved because of the Suit filed by the respondent. The main defence of the respondent regarding the pleading of non-user is that the applicant has not proved that the respondent has not used the mark. 16. The Revlon case (cited supra) is used to defeat rectification applications on the ground that there is no evidence let in by the applicant seeking rectification that the registered proprietor has not used the mark. In the present case, apart from stating that “The applicant has miserably failed to show how the respondent has registered the mark SHELL AUTOSERV without a bonafide intention to use the mark in relation to the services in respect of which it is registered” the respondent has not pleaded that they have used it. We have gone through the counter statement and we found that in the primary objections, para 3 (iii) the above averment is found and in the para-wise reply, in para 7, it is stated that viz-a-viz the applicant’s submission in para 22 the respondent submitted that they had registered the mark with a bonafide intention to use the said mark in India in relation to the services for which it is registered. There is absolutely no pleading that they are using the mark after registration. Unless the respondent had pleaded that they are in fact using the mark, there is no duty cast on the applicant to prove that they are not using. Without pleading to that effect, the applicant’s case is as good as admitted and the respondent cannot in fact let any evidence of user and has not in fact let in any evidence. The mark remains as a “proposed to be used mark”. As regards bonafide intention too, the respondent must state the facts to show such intention, otherwise it would be difficult for the applicant to let in any evidence or file affidavits to show bonafide intention i.e. what transpires in the minds of the persons that who run the respondent company. For that, there must be intrinsic evidence on the side of the respondent like internal correspondence or advertisements etc., to show that there was some intention to use. There is no pleading regarding the user. If so, the applicant need not prove non-user. It is for the respondent to first plead bonafide intention; which they have not done. Therefore, in the absence of pleading regarding use or bonafide intention to use, we have to accept the applicant’s case. In this case, we may look at the order of the Trademark Trial and Appeal Board in Research In Motion Limited Vs. NBOR Corporation of 12.2.2009, where it is held that “In sum, applicant has no documentation to demonstrate that it had the requisite bona fide intent to use the mark BLACK MAIL in commerce when it filed the present application. As evidenced by its responses to discovery requests, applicant has no plans relating to use of the mark, no plans relating to trade channels or target customers, and no plans for expansion and growth of its product line to be sold under the mark. So as to be clear, the record it completely devoid or any evidence such as product design efforts, test marketing, correspondence with prospective licenses, preparation or marketing plans or business plans, creation of labels, marketing or promotional materials, and the like. Applicant has not rebutted opposer’s showing that applicant lacked the requisite bona fide intent. The fact that applicant filed multiple applications for the mark, or that there is correspondence between applicant and counsel regarding applicant’s applications, hardly establishes a bona fide intent to use the mark. If the filing and prosecution of a trademark application constituted a bona fide intent to use a mark, then in effect, lack of a bona fide intent to use would never be a ground for opposition or cancellation, since an inter partes proceeding can only be brought if the defendant has filed an application. The absence of documentation coupled with applicant’s failure to take testimony or offer any evidence supporting its bona fide intent to use convince us that applicant did not have a bona fide intent to use the mark. Further, that Denny Jaeger, applicant’s chief executive officer, believed BLACK MAIL to be a good mark for future use does not establish a bona fide intent to use. Likewise, applicant’s mere statement that it intends to use the mark, and its denial that it lacked a bona fide intent, do not establish, in fact, that it had a bona fide intent to use the mark in commerce when it filed the involved application. Evidence bearing on bona fide intent is “objective” in the sense that it is evidence in the form of real life facts and by the actions of the applicant, not by the applicant’s testimony as to its subjective state of mind. That is, Congress did not intend the issue to be resolved simply by an officer or applicant later testifying, “Yes, indeed, at the time we filed that application, I did truly intend to use the mark at some time in the future.” 17. This is correct. In this case, there is no pleading rebutting the allegation of non-user. The above passage indicates how bonafide intention is pleaded and if necessary proved. The mere fact that a mark is registered cannot be evidence of use or bonafide intention to use, for then all s. 47 applications must fail. 18. In J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, §19:14 (4th ed. 2009) it is observed “here the complete lack of documentation or testimony clearly outweighs any subjective or sworn intent to use the mark.” 19. In the present case, (a) The deed of assignment of the trade mark cannot take effect for want of compliance of section 42; and (b) The ground of non-user is accepted and the conditions of Section 47(i)(a) are satisfied. 20. The continuance of the mark in the register is without justifiable cause. In these circumstances, the trade mark is liable to be removed/cancelled. The Registrar is therefore directed to remove the impugned trade mark SHELL AUTOSERV under No. 1237451 in class 36 from the register. (Ms. 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.)