INTELLECTUAL PROPERTY APPELLATE BOARD=A person who has used the trade mark before the use of the mark by the registered proprietor is a person aggrieved. Lord Watson held in Powels Trade Mark case ; “In my opinion, any trader is, in the sense of the statute, “aggrieved” whenever the registration of a particular trade mark operates in restraint of what would otherwise have been his legal rights. Whatever benefit is gained by registration must instant a corresponding disadvantage upon a trader who might possibly have had occasion to use the mark in the course of his business.” 14. The marks are identical in respect of identical goods. The use of the trade mark by the applicant is prior to that of the respondents. The applicants are not only prior user but are also the registered proprietor of the trade mark even before the respondents use. The applicant is therefore a person aggrieved. 15. In the case on hand, the applicant has been using the mark since 1965 and is a registered proprietor as of the year 1993, whereas the respondent has used the trade mark since 2001 as seen from the impugned application for registration. Though the respondent claims use of the mark since 1965, there is nothing in proof of the same. The respondent has filed few documents like the gift deed, certificate issued by the Registrar of firms, few assessment orders, deed of partnership, copy of order passed by the Hon’ble High Court of Bombay, Nagpur Bench in the appeal against the order passed by the 7th Adhoc District Judge, Nagpur and the Memorandum of Articles of Association. These documents are filed to support their case that they are carrying on business since 1950’s. No doubt the respondent is carrying on business since 1956 but it is their own case that their use of the trade mark SHAKTI is since 2001. The applicant as seen from the records is the prior user of the trade mark SHAKTI. 16. We find that there is nothing on record to prove the respondents use as a trade mark. The respondent have stated in their counter statement that they are using the mark since 1965 but have stated in their application for registration that they are using the trade mark since 2001. Even if we consider the respondents use since 2001, there is no cogent evidence to prove their use. 17. The applicants are the prior user of the trade mark in our view. The applicant’s rights are therefore to be protected. Consequently, the application for rectification is allowed with a direction to the Registrar of Trade Marks to cancel the trade mark registered under No.1038628 in class 16. There shall be no order as to costs.

INTELLECTUAL PROPERTY APPELLATE BOARD Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018 CIRCUIT BENCH SITTING AT MUMBAI ORA/37/2007/TM/MUM FRIDAY, THIS THE 3RD DAY OF FEBRUARY, 2012 Hon'ble Smt. Justice Prabha Sridevan … Chairman Hon'ble Ms. S. Usha … Vice-Chairman Ramesh G. Hirani & Ramkumar, Assudaram Khubchandani, M/s. Shakti Traders, 11, G.M. Market, Gandhibagh, Nagpur – 440 002, Maharashtra … Applicant (By Advocate – Shri Ashok Keyser) Vs. Shakti Press Limited, Shakti House, Wardha Road, Nagpur – 440 012, Maharashtra. … Respondent (By Advocate – None) ORDER (No.32 of 2012) Hon’ble Ms. S. Usha, Vice-Chairman: The original rectification application has been filed to cancel the trade mark “SHAKTI” registered under No.1038628 in class 16 under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act). 2. The applicants are the registered proprietors of the trade mark “SHAKTI” under No.610757 in class 16 in respect of office files, index files, ruled and plain registers, printed registers, cash books, exercise books, ledger books, account books of all types, envelopes, chalk sticks, paper pin, letter pads, writing pads, computer files, diaries of all kinds, duplicate books, gem clips, sign and marker pens, ball pens and ball pen refills. The applicants has openly, honestly, continuously, extensively and uninterruptedly used the trade mark SHAKTI since 1965. The trade mark has acquired distinctiveness by long and extensive user. 3. The impugned trade mark was registered with an ulterior motive of infringing upon the applicants registered trade mark. The registration has been wrongly obtained. The respondents are not the proprietors of the trade mark. The impugned trade mark may be removed from the register in order to maintain the purity of the register. 4. The respondents filed their counter statement opposing the application for rectification. The respondent had denied all the averments made in the application for rectification. The respondents are the market leaders in printing and packaging industry in Central India. The main object is to set up, purchase or otherwise acquire and printing machines and to carry on the business of printing, publishing’s, lithographers, offset printers, stereo types, electro types, photographic printers, engravers, dies sinkers, numerical printers, box makers, paper bag and account book makers, cardboard package and container manufacturers, type founders, manufacturers of and dealers in playing, visiting railway, festivals complementary and fancy cards and other stationery products and Note Book and Exercise Books etc. 5. The respondent stated that one Late Shri Kashiram Dhote, the founder of the Shakti Group of companies commenced the business of Litho and offset printing in 1950’s by the name Shakti Offset Works. Thereafter by a Gift Deed, gifted the said business along with goodwill to his sons namely Sadanand Kashiram Dhote and Gajanan Kashiram Dhote. In November, 1956 a partnership firm was formed and registered with the Registrar of Firms on 13.12.1956. Therefore from 1950’s the respondent had been using the trade mark and is known to the public at large. M/s. Shakti Offset Press Private Limited was subsequently converted into public limited company. The word Shakti has become a part of their corporate name – “Shakti group of Companies”. 6. The respondents are using the trade mark on their products and they are the aggrieved person and have filed rectification application against the applicant’s trade mark. The respondents have spent huge amount towards promotional activities. The applicant has filed no evidence regarding confusion or deception. The respondents sales turnover runs to `.314,14,114.70 and `.286,16,674.73 for the periods 2004-2005 and 2006-2007 respectively. The applicant has acquiesced the respondent’s use of the mark. The applicant has not opposed the registration before the Registrar. 7. The applicant filed a civil suit for injunction against the respondent which was declined by the 7th Adhoc D & S Judge against to an appeal has been preferred before the Hon’ble High Court of Bombay. The respondent therefore prayed that the rectification application be dismissed and the impugned registration to continue on the register. 8. The applicant filed their reply to the counter statement denying the averments made in the counter statement. 9. We have heard Shri. Ashok Keyser, counsel for the applicant and none appeared for the respondent despite service of notice and were therefore set ex-parte. 10. The learned counsel for the applicant submitted that they adopted and used the trade mark SHAKTI since 1965. They are the registered proprietors of the trade mark under No.610757 in class 16 as of 01.11.1993 claiming user since 01.05.1965. The applicant filed a civil suit against the respondent. 11. The respondent applied for registration of the impugned trade mark on 21.08.2001 claiming user since 01.04.2001 who are therefore subsequent to the applicants. The respondents though claim user since 2001 in their application for registration, have falsely claimed user since 1950 in their counter statement to the application for rectification. The respondent has not filed any evidence as to use of the trade mark. 12. We have heard and considered the applicants arguments and have gone through the pleadings and documents. 13. The main issue for consideration is whether the applicant is a person aggrieved. A person who has used the trade mark before the use of the mark by the registered proprietor is a person aggrieved. Lord Watson held in Powels Trade Mark case ; “In my opinion, any trader is, in the sense of the statute, “aggrieved” whenever the registration of a particular trade mark operates in restraint of what would otherwise have been his legal rights. Whatever benefit is gained by registration must instant a corresponding disadvantage upon a trader who might possibly have had occasion to use the mark in the course of his business.” 14. The marks are identical in respect of identical goods. The use of the trade mark by the applicant is prior to that of the respondents. The applicants are not only prior user but are also the registered proprietor of the trade mark even before the respondents use. The applicant is therefore a person aggrieved. 15. In the case on hand, the applicant has been using the mark since 1965 and is a registered proprietor as of the year 1993, whereas the respondent has used the trade mark since 2001 as seen from the impugned application for registration. Though the respondent claims use of the mark since 1965, there is nothing in proof of the same. The respondent has filed few documents like the gift deed, certificate issued by the Registrar of firms, few assessment orders, deed of partnership, copy of order passed by the Hon’ble High Court of Bombay, Nagpur Bench in the appeal against the order passed by the 7th Adhoc District Judge, Nagpur and the Memorandum of Articles of Association. These documents are filed to support their case that they are carrying on business since 1950’s. No doubt the respondent is carrying on business since 1956 but it is their own case that their use of the trade mark SHAKTI is since 2001. The applicant as seen from the records is the prior user of the trade mark SHAKTI. 16. We find that there is nothing on record to prove the respondents use as a trade mark. The respondent have stated in their counter statement that they are using the mark since 1965 but have stated in their application for registration that they are using the trade mark since 2001. Even if we consider the respondents use since 2001, there is no cogent evidence to prove their use. 17. The applicants are the prior user of the trade mark in our view. The applicant’s rights are therefore to be protected. Consequently, the application for rectification is allowed with a direction to the Registrar of Trade Marks to cancel the trade mark registered under No.1038628 in class 16. There shall be no order as to costs. (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.)