INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018
* * * * * * *
CIRCUIT BENCH SITTING AT DELHI
M.P. No.51/2009 IN ORA/64/2009/TM/DEL & ORA/64/2009/TM/DEL
AND
M.P. No.52/2009 IN ORA/65/2009/TM/DEL & ORA/65/2009/TM/DEL
FRIDAY, THIS THE 9th DAY OF MARCH, 2012
Hon’ble Smt. Justice Prabha Sridevan … Chairman
Hon’ble Ms.S. Usha … Vice-Chairman
Positiv Television Private Limited
7C, Doctors’ Lane
New Delhi-110001 … Applicant
(By Advocate: Shri Neeraj Grover)
Vs.
1. Ms. Manoranjana Singh
D-47, Gulmohar Park
New Delhi-110049
Also at
103, Kharghuli
Guwahati
ASSAM-781004.
2. The Registrar of Trade Marks
Trade Marks Registry
Baudhik Sampada Bhawan
Plot No.32, Sector-14,
Dwarka
New Delhi-110075. … Respondents
(By Advocate: Shri Harsh Vardhan Tripati)
ORDER(No.54/2012)
Hon’ble Smt. Justice Prabha Sridevan:
The applicant has applied for removal of the trade mark under Nos.1239523 and 1239515 in the name of the first respondent in Class 41 and Class 38 respectively. The dispute is really an off shoot of the matrimonial discord between the respondent and her husband.
2. The applicant Company was incorporated on 21.01.2003 with Mr. Matang Sinh and Manoranjana Sinh, as its first Directors (the parties describe themselves as Sinh also and that does not have a bearing on the decision in this case). According to the applicant, it was the brainchild of Mr. Matang Sinh, former Union Minister and Member of Parliament. The first respondent was the Director of the Company because she was his wife. He floated other companies including NE Television Network Pvt. Ltd. and North East Multimedia Private Limited. The first respondent had no responsibility or any active role to play in the running of his company. After the incorporation, the applicant company had adopted the trade/service mark(s) NE Television, NE TV, NE News, NE Network for launching its own TV channels. The adoption of the trade mark(s) was duly resolved and recorded in the Minutes of the Board meeting. The Board of Directors authorized the first respondent to take necessary steps for protection of the trade marks of the company by filing appropriate applications for registration of the trade marks in the name and on behalf of the applicant company. The first respondent misused the authorization and fraudulently obtained registration of the trade mark “NE Television” and “NE News” in her own name instead of obtaining it in the name of the applicant company. Appropriate applications were filed by the respective companies and the marks were brought into active use by the applicant’s company since March, 2003. By long and continuous use these marks have obtained popularity and reputation and have come to be associated with the applicant’s companies. In the meanwhile, the relationship between Mr. Matang Sinh and the respondent deteriorated. The respondent No.1 preferred to stay back in Guwahati away from her husband pretending to look after the administrative affairs of the company but actually to siphon off the funds of the companies. Various allegations regarding official embezzlement, misappropriation of funds by the first respondent and also adultery have been stated in the rectification petitions but we are not concerned with them. We are only concerned with whether the marks have to be removed. But it is easy to see that there has been action by one party and retaliation by the other whether justifiable or otherwise. Criminal proceedings are pending between each other and the proceedings under the “Protection of Women from the Domestic Violence Act, 2005” are also pending and also a petition for divorce. But for the purpose of this case we will only refer to the pleadings that are relevant. Firstly on 11.2.2009, the first respondent entered the registered office of the applicant company with some musclemen and she threatened the employees and staff of the applicant company that she would demolish the business of the applicant company and that she had the exclusive rights to use the trade marks. To prevent the repetition of such action, a Suit was filed before the Hon’ble High Court of Delhi and ex parte orders were obtained on 12.2.2009 to restrain her from entering the applicant’s company. It is only then that it was learnt that the trade marks had been registered in her name though it continues to be the property of the applicant. Enquiries further revealed that these two applications had been made claiming user from 1.9.2003/9.1.2003 though the applicant company had adopted them much earlier and the respondent had never used the mark in her personal capacity till date. The applicant apprehends that the respondent would file a suit for infringement of the registrations which she has unlawfully obtained in her name. Being aggrieved, they have filed these rectification applications for removal of the mark under Sections 47 and 57 of the Trade Marks Act, 1999 (hereinafter referred to as the ‘Act’).
3. The documents filed along with the applications are Exhibit ‘P-1’ which is the extracts of the Minutes of the Meeting of the Board of Directors on 12.2.2009 to seek rectification of the marks. Exhibit ‘P-2’ is the certificate of incorporation of the petitioner company. Exhibit ‘P-3’ is the copy of Form No.32 which shows that Mr. Matang Sinh and the respondent had been appointed as Directors. Exhibit ‘P-4A’ is the certificate of incorporation of “NE Television Network Private Limited” and the exhibit ‘P-4C’ is the certificate of incorporation of “Positiv Radio Private Limited”. Exhibit ‘P-4’ series are the certificates of incorporation of the group companies of the petitioner. Exhibit ‘P-5’ is the extract of the Minutes of the Meeting of the Board of Directors of the applicant’s company by which it is resolved that the respondent No.1 is authorized to appear and act on behalf and represent the company inter alia before the Trade Marks office and also for registration of the names of the channel in the Trade Marks office. Exhibit ‘P-6’ series are copies of the application filed by the applicant company with the Ministry of Information & Broadcasting along with the supporting undertaking and other documents signed by the respondent as authorized signatory of the company and as the Chairperson for the applicant company and where the Ministry of Information & Broadcasting has addressed her as the Chairperson of the applicant company. Exhibit ‘P-7’ collectively are documents relating to the use of the channel by the applicant and the group companies. The advertisement bills raised are in the name of the applicant’s company for broadcasting in Ne Television or NE Hifi. Exhibit ‘P8’ is the copy of Form 32 submitted with the Registrar of Companies. Exhibit ‘P9’ is the copy of the F.I.R. got registered by the first respondent against Mr. Matang Sinh. Even here she has described herself as CMD, NETV. Exhibit ‘P10’ collectively are copies of the orders passed by the Hon’ble Delhi High Court. Exhibit ‘P11” and ‘P12’ are print outs of the online status of the trade marks No.1239523 and No.1239526 in Class 41. Exhibit ‘P13’ is for trade mark No.1239515 in Class 38. In all these, the proprietor’s name is shown as the first respondent. Exhibits ‘P14’ to ‘P17’ are copies of the relevant Trade Marks Journal.
4. In response to this the first respondent filed her counter statement. All the allegations have been denied. It is alleged that the rectification petitions are a belated attempt by the applicant to rob the respondent of her statutory rights and the reputation she has built over a number of years. It is claimed that the respondent is an established media professional for over 20 years and that she has started her own media business in 2000 and that in connection with all the businesses she was the first one to adopt the distinctive trade mark ‘Ne” and “NE” (including the stylized versions thereof) and logos. According to her, it was she who permitted the applicant to use the trade mark “Ne” as the company was set up by her to operate her broadcast and entertainment business. She got married in 1995 to Matang Sinh. She left her job and career after the marriage. She set up two companies, Overarch Communications Private Limited and Positiv Press Private Limited. The respondent owned 60% of the equity stake and Mr. Matang Sinh did not own any equity in these companies. Initially the respondent was undertaking programming for and on behalf of the Doordarshan Kendra, Guwahati. Then she decided to launch the said channel under the applicant’s company. Mr. Matang Sinh was made as one of the Directors only because he was her husband. It was her idea and her initial art work and logo that resulted in the creation of the logo. The trade marks have been identified solely with the respondent. It was she and her father who used their goodwill to convince the Ministry of Information & Broadcasting to grant licenses. Against this background, she was shocked to come across a public notice issued by the applicant’s company to the public not to interact with her. In October 2008, the respondent orally communicated to the Director of the applicant’s company that she does not wish that the applicant use the trade marks in question. When they did not stop the illegal use she issued a legal notice on 23.3.2009. After the illegal ouster of the respondent from the management of the applicant’s company, the quality of the programmes dropped drastically. She therefore filed a Civil Suit before the District Judge and an order of status quo was directed to be enabled. She denied the Minutes of the Board Meeting as was alleged by the applicant’s company. According to her there are no merits in the rectification petitions. This is the result only of a marital disharmony. She has filed evidence in support of her counter statement. Annexure ‘D1’ are documents to show the association of the respondent with “NeTV”. ‘D1’ is addressed by The Gauhati Manipuri Social Organisation to the respondent praising the fearless reporting through her popular private channel. There is another document which speaks of an attack on NETV chief. All these documents which are web pages describe the first respondent as CMD, NETV. Annexure ‘D2’ is the notice addressed to the applicant company, Mr. Matang Sinh and Mr.R.N. Singh. Here it is stated -
“8. Our client permitted the Company to use “Ne” in February 2003 and subsequently permitted the Company to start using Ne TV and Ne Television in relation to broadcast and entertainment services. The Company’s use was a permissive use and the Company was permitted to use the ‘Ne Trademarks” in consideration of our Client’s control of the business and since Our Client was solely responsible for setting up, managing and developing the business of the Company, since the very inception of the Company and also because Our Client controlled the Company’s use of the ‘Ne Trademarks” and hence the quality of services offered under “Ne Trademarks, while managing the business of the Company. The Company was also permitted to use “netv” in the domain name of the Company’s website and other activities.”
Annexure ‘D3’ is a letter addressed to the Registrar of Trade Marks by the respondent stating that there have been blank papers signed by her in good faith when she and her husband lived in harmony which can be misused. Annexure ‘D4’ is a copy of the plaint filed by her and it says that onFebruary 11, 2009, the plaintiff, that is, the first respondent had asked the applicant and her husband and other officers of the applicant company not to use the trade mark. Annexure ‘D5’ is the order ofstatus quo.
5. To this a reply was filed by the applicant denying her statement that she had a valid reputation as a journalist which has been built over the years. All her statements made in the counter statement have been denied.
6. On the basis of these, the Counsel made their respective submissions.
7. The learned Counsel for the applicant submitted that there was never any intention nor any authorization to the respondent to register the mark in her name. Therefore when she made an application to the Registrar of Trade Marks it could only be in her capacity as Director of the applicant’s company. She cannot press the claim of exclusive right. The licenses have been applied only in the name of the applicant’s company, the adoption and user is .by the applicant’s company. The claim of proprietorship made before the Trade Marks Registry was on behalf of the applicant and not in her name. The respondent has no TV channel. The respondent has misused her authority, she is not the proprietor of the mark. The learned Counsel for the appellant referred to AIR 1957 Mad 76 – B.S. Ramappa Vs. B. Monappa and Anr. which was the case of registration of a trade mark obtained by fraud.
8. The learned Counsel for the respondent submitted that when the application was made in 2004, considering the relationship, it is difficult to believe that only in 2008, the petitioner Mr. Matang Sinh knew about the registration in the respondent’s name. It is not correct to say that she played no active role in the company. She was authorized to do everything. The Company Law Board has ordered that she should be reinstated as Director. The respondent’s documents show that she is identified with the quality of services offered and therefore the goodwill associated with the trade mark must accrue to the respondent.
9. We have considered the materials on record and the documents. The applicant company was incorporated with the respondent and her husband as Directors. The two impugned trade marks are “NE Television” and “Ne Television”. On 25th October, 2004, NE Television Network Private Limited was incorporated. Exhibit ‘P5’ is a Board resolution dated 22.1.2003 which states that the Chairman had -
“….apprised the Board that the Company proposes to launch TV Channels and had adopted the names “NE Television”, “NE Network”, “NE TV’ and “NE News” for such channels. The Board has been apprised that mandatory licenses and permissions are required to be obtained from the Ministry of Information and Broadcasting to run the TV Channels. The Board also seeks to obtain protection for the names of the TV channels under the relevant rules so as to prevent others from launching similar names in respect of TV channels.
It was discussed in the meeting to authorize Mrs. Manoranjana Sinh, Director of the Company to sign and execute different documents on behalf of the Company and to authorize her with the general powers to apply/file for the licenses and permissions from the Ministry of Information and Broadcasting for uplinking of aforesaid channels and also to get the said name registered with the Trademarks office:
“RESOLVED THAT Mrs. Manoranjana Sinh, Director of the Company be and is hereby authorized to sign and execute all agreements, undertakings, applications, power of attorneys, papers, receipts, all documents relating to the application seeking licenses and permissions from the Ministry of Information and Broadcasting for uplinking of the said TV channels and registration of names of the Channels with the Trade Marks Office in the name and on behalf of the Company and to do all or any of the acts, deeds, matters and things as may be considered expedient and necessary on behalf of the Company.
RESOLVED FURTHER THAT Mr. Manoranjana Sinh, Director be and is hereby authorized to appear and act on behalf and represent the Company in all matters before the Ministry of Information and Broadcasting, Trade Marks Office and to sign and execute all applications, returns, objections, documents, agreements and papers that may be required for and on behalf of the Company in or in relation to any matter in which it is interested or may be concerned in any way.
RESOLVED FURTHER THAT Mr Manoranjana Sinh, Director be and is hereby authorized to sub-delegate all or any powers hereby conferred to other officer/officers of the Company as she may think fit.”
This is the crucial document.
10. The application made for permission to uplink the TV channel to the Ministry of Information & Broadcasting shows that the applicant is the applicant’s company. The official seal carries the applicant company’s name with the words “NE NETWORK”. ‘P6C’ is the affidavit/undertaking where the first respondent in the capacity of the Chairperson has applied for approval and permission for uplinking of the TV channel “NE NETWORK”. In the Form 2B which is signed by her as Chairperson of the Positiv Television Pvt. Ltd. has stated –
“Whereas I, M/s Positiv Television Pvt. Ltd. have applied to the Ministry of Information & Broadcasting for approval/permission for uplinking of a TV channel NE NETWORK….”
Exhibit ‘P6D’ is addressed to the Deputy Director (INSAT) on behalf of the applicant’s company which seeks for permission for uplinking of “NE TV” news channel and it says the following words –
“It is hereby confirmed and requested that the name of the Channel will be “NE TV” and not NE NETWORK as mentioned in our original application, the change in name being only for simplicity of message and easy identification of the Channel. Hence the approval may kindly be given in the name of “NE TV”.”
Exhibit ‘P6E’ is the communication from the Ministry of Information & Broadcasting in which the aforesaid Deputy Director had addressed the respondent as Chairperson of the applicant’s company stating that –
“…the undersigned is directed to convey permission to M/s. Positiv Television Pvt. Ltd. to uplink their “NE Television” channel in Regional languages of North East & English language (in digital mode) through applicant company’s own teleport located at Rehabari, A.K. Azad Road, Guwahati (Assam), for a period of ten years, subject to the following:
i) Compliance with terms & conditions contained in Annexures I, II.
ii) Compliance with the undertakings given by the applicant cokpany in the affidavits as in Form 2A and Form 2B submitted along with its application, as referred above, during the period of validity of this permission.
iii) That the applicant company has been permitted to utilize THAICOM 3 satellite, and it should switch over to INSAT capacity when becomes available. In this regard, the licence would be reviewed after three years.”
and by paragraph 3 the petitioner is advised to approach the WPC Wing, Ministry of Communications & IT for obtaining operational license. Exhibit ‘P6F’ is a brief letter from the Ministry of Information & Broadcasting addressed to the respondent stating that –
“This is with reference to your letter dated 24.12.2003 requesting for change in satellite with regard to permission given to your company vide this Ministry’s letter of even number dated 21.10.2003 to uplink your “NE TELEVISION” channel from India using THAICOM 3 satellite. You have requested to uplink through APR-1 (INSAT 2E) instead of THAICOM 3 satellite…”
and the reference is clearly about permission given to the company. The permission is not given to the respondent. Exhibit ‘P7’ collectively shows that for the advertisements made in any television channel, payments should be made in favour of the applicant. So the entire evidence filed by the applicant shows that the respondent was only acting in her capacity of Chairman of the applicant. And any reference to her in connection with NE TV is only because of the official capacity.
11. From the evidence we are unable to accept the respondent’s claim that it was she who started the company and that she was in the media business, and that she had built up reputation as a journalist. These are submissions made by her Counsel not supported by evidence. But the evidence before us shows that it is only after the Board Resolution that permission from the relevant Ministries was sought. This was signed by her only in her official capacity. The applicant’s company launched TV channels adopting the name “NE Television”, “NE Network”, “NE TV” and “NE News”. The Chairman apprised the Board as seen from the extract of the Minutes of the Meeting dated 22.1.2003. It is thereafter that the permission to uplink the TV channel was applied for. This is signed by the respondent as Chairperson and the authorized signatory of the Company. It is on 22.1.2003 that the Resolution was passed authorizing her to sign all applications seeking licenses and permissions from the Ministry of Information & Broadcasting for uplinking such channels. The Resolution has already been extracted above. In this case it is evident we must accept the applicant’s case that any application made by her has only been in her official capacity and claiming proprietorship as an individual cannot be accepted.
12. We called for the records relating to the Board meeting from the Central Bureau of Investigation (CBI) on 16.2.2012. The officer from the CBI produced the documents. We have gone through the records. It records the presence of the respondent in the Board meeting held on 22.1.2003. In fact other subsequent Board meetings also record her presence until perhaps the marital disputes started. In the absence of any evidence to the contrary we have to accept that the respondent was present at the Board meeting.
13. In AIR 1957 Mad 76 (cited supra), the dispute was between two proprietors, who were the Sons of one Bolar Ramappa. Ramappa had two factories, one called ‘Indian National Tile and Lime Works’ and the other called ‘Jayaram Tile Works’. The tiles manufactured by Ramappa had a trade mark which may be described as “Taj Double Bavta”. The appellant who is also Ramappa was assisting his father. The appellant made an application to the Registrar of Trade Marks in 1946 to register the trade mark. He gave his business address as Manager, Jayaram Tile Works claiming user from 1936. The application was in the year 1946. It was registered on 12.5.1950. The father settled ‘Indian National Tiles Works” who was one of the respondents by a deed document and on 8.2.1953 the father settled for Ramappa, the appellant, “Jayaram Tile Factory”. The dispute started because the respondent also started using the trade mark in respect of the father. The appellant filed a suit for infringement. He claimed that he was the registered proprietor of the trade mark and that by the settlement deed he was now the proprietor of the words “Jayaram Tile Factory”. The respondent however alleged that the registration had been obtained by the appellant by fraud which consisted of wilful misrepresentation by the appellant that he was the sole proprietor of the trade mark. The father was alive during the trial and his evidence professes ignorance of the action of the appellant. The trial Court held that the claim made by him that he was the proprietor of the mark was incorrect. The Hon’ble Madras High Court directed a joint registration, but the Division Bench did not accept it and directed the entry in the appellant’s favour must be expunged. Applying this ratio we hold that the registration was obtained by wilful misrepresentation.
14. In the Suit filed by the respondent it is alleged that on 11.2.2009 the respondent had repeatedly reminded the applicant and other officers “to stop using the “Ne Trademarks” and the Works, including on February 11, 2009”. In fact the cause of action in the Suit refers to 11.2.2009 and another in March, 2009. The notice also refers to the repeated reminders to the applicant company and its officers to stop using the “Ne Trademarks” including on February 11, 2009. This notice is dated 23.3.2009 which speaks of permission given by the respondent to use the mark in February, 2003. The Suit filed by the applicant is dated 12.2.2009. According to the applicant, it was a case of illegal entry by the respondent along with musclemen and followed by verbal duet and threats. According to the respondent she reminded the applicant and other officers to stop using the trade marks including on 11.2.2009. The resolution of the Board of Directors of the applicant is on 22.1.2003. The applications to the various Ministries are in April, 2003. The respondent’s case is that some time in February, 2003 she directed the applicant to use the mark. If as per her submission she permitted the applicant to use the mark in February, 2003, then her claim of user from 1.9.2003 in the application runs contrary to this submission. The applications are made on September 25, 2003 claiming the user from 1.9.2003 in one case and in the other from January, 2003. But in her counter statement she states that she had adopted and started using it from January, 2003. Further if her case is true, the Board resolution was unnecessary. If she had indeed created an original art work and commissioned an independent graphics designer for valuable consideration as stated in paragraph 16 of her counter statement, then she should have named the graphics designer or provided evidence in this regard which might have made her case more convincing. It is clear that by using the authorization given by the applicant company to apply before the Registrar of Trade Marks, she had applied in her own name. These acts would have naturally come to light only when the marital discord arose and she started exerting her personal right adverse to the company on behalf of which she was authorized to make such applications. The applications made by her in her personal capacity were clearly on the basis of misrepresentation. The applicant must have been under the impression she had applied pursuant to the Board Resolution dated 22.1.2003. Legally the respondent is not the proprietor of the marks.
15. In these circumstances, the registrations in her name deserve to be removed. It appears that the division of property between the estranged couple is under consideration before the matrimonial Court, at that time the rights to the intellectual property in these trade marks may also be decided. The Civil Court has directed the Registrar of Trademarks to maintain a status quo, the respondent apprehended that blank papers signed by her may be misused by her husband Mr. Matang Sinh. That is to restrain the Registrar from effecting any change of name. But this status quo cannot stand in the way of our deciding these rectification applications which have been filed in accordance with law.
16. For all the aforesaid reasons, the rectification applications ORA/64/2009/TM/DEL and ORA/65/2009/TM/DEL are allowed with a direction to the Registrar of Trade Marks to remove the trade marks registered under Nos.1239523 and 1239515 in Class 41 and Class 38 respectively from the register of Trade Marks. All Miscellaneous Petitions are closed.
(S. Usha) (Justice Prabha Sridevan)
Vice-Chairman Chairman
(This order is being published for present information and should not be taken as a certified copy issued by the Board.)
