INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018
(CIRCUIT BENCH SITTING AT MUMBAI )
TRA/61/2003/TM/MUM
FRIDAY, THIS THE 6TH DAY OF JANUARY, 2012
Hon'ble Smt. Justice Prabha Sridevan …Chairman
Hon'ble Ms. S. Usha …Vice-Chairman
Smt Manjulaben V Bhatt,
M/s. Aptudet Indusries,
Near Mangal Vikas Society,
Nrusinh Mandir Compound,
Danilimda, Ahmedabad – 380 028,
Gujarat (India). … Applicant
(By Advocate – Shri Manish Saurastri)
Vs.
1. M/s. Hindustan Pencils Pvt. Ltd.,
510 Himalaya House,
79, Palton Road,
Bombay - 400 001.
2. The Registrar of Trade Marks,
Central Building,
M. Karve Road,
Bombay – 400 020. …Respondents
(By Advocate – Shri Nair)
ORDER (No.6 of 2012)
Hon’ble Smt. Justice Prabha Sridevan, Chairman:
This Transferred Rectification Application has been filed for removal of two marks Nos.400868 and 400869 in class 16. The applicant is the sole proprietor of the firm Aptudet Industries. In 1970, the applicant adopted the trade mark “NATRAJ” with the device of “NATRAJ” in respect of sealing wax and since then they have been using this trade mark “NATRAJ” with the device of “NATRAJ”.
2. After five years, ie. in or about 1975, the applicant started manufacturing and marketing chalk sticks under the same trade mark with device. Both the products are sold through out the country. The goods are packed in cartons with the device. The applicant has applied for registration of the trade mark “NATRAJ” under application No.369221 dated 03.12.1980. They have been continuously, openly and extensively using it since 1970. The applicant has achieved unique reputation, goodwill and name among the purchasing public.
3. The respondent manufactures stationery items and has registered the mark “NATRAJ” under NO.400868 in Class 16, as on 03.02.1983 in respect of Stationery, adhesive materials (Stationery), artists materials, paint brushes, office requisites other than furniture and instructional and teaching material (other than apparatus). The respondent also got the device registered under No.400869 in class 16 for the aforesaid goods. The respondent sent a letter on 16.05.1986 asking the applicant to stop using the mark on the ground it was infringement of their mark. On 21.06.1986, the applicant replied to this notice. The respondent sent another registered letter on 21.07.1986 to the applicant’s counsel. To this, reply was given on 05.08.1986. The respondent filed a suit for injunction C.S. No.664 of 1991 before the Hon’ble Delhi High Court. By concealing material facts, the respondent obtained exparte injunction on 19.02.1991. After contest this was vacated on 10.07.1991. Now a review petition has filed by the respondent. The applicant’s goods “NATRAJ” sealing wax has been given the ISI Mark. Since the respondent has obtained registration by suppressing facts and without any sufficient cause, the mark should be rectified.
4. The respondent in his counter stated that they are a well established manufacturers of pencils and other items since 1957. In 1961, the respondent adopted the mark “NATRAJ” with device of “NATRAJ” in respect of various stationery goods and since then they have been using the trade mark and device.
5. The respondents are the registered proprietors of the following marks.
The trade mark “NATRAJ” with the device of “NATRAJ” under No.225923 as of 14.12.1964 claiming user since 22.07.1961 in respect of writing pencils.
They have obtained registration in No.260466 dated 6.11.1969 claiming user from 22.07.1961 in respect of pencils, pencil sharpeners, pencils, fountain pens, erasers and pins, clips and staples.
Device of NATRAJ with the trade mark NATRAJ under No.283730 as of 27.10.1972 claiming user since 1961 in respect of pencils of all kinds, erasers, refills for propelling pens, pencils, pencil sharpeners, pens, fountain pens, pins, clips and wires staples for stapling presses.
The trade mark “NATRAJ” under No.400868 as of 03.02.1983 in respect of stationery, adhesive, materials, (stationery), artists’ materials, paint brushes; office requisites other than apparatus.
Trade mark device of NATRAJ under No.400869 as of 03.02.1983 in respect of stationery, adhesive materials, (stationery), artists’ materials, paint brushes; office requisites other than furniture; and instruction and teaching material (other than apparatus).
All these marks are old marks and their registrations are valid and subsisting. The respondent goods are sold through out India. They have factories in Gujarat, Union Territory of Dadra and Nagar Haveli and Jammu & Kashmir. The respondent has filed its sales figures as Exhibit-R7.
6. The respondent has obtained registration of the copyright of the original artistic work. They have spent large amount of money on sale promotion and advertising. Among the purchasers of the stationery goods are school going children and even semi-literate persons who recognize the goods by the mark. The respondents also referred to the exchange of notice to the reply and also the order vacating the interim injunction and the review petition filed. In the review petition, the respondent’s claim that the benefit of Section 33 cannot be given to the applicant. The applicants have copied the respondent’s mark and device which is calculated to deceive the public. Broadly on these pleadings the parties based their cases.
7. The learned counsel for the applicant submitted that the registration has been obtained on a false statement. There is no user of the mark for sealing wax and chalk for fiver years and one month prior to the filing of the application. There is no sufficient cause shown for the mark remaining in the register. The applicant is a person aggrieved because of the suit filed by the respondent.
8. The applicant had filed affidavit of dealers to support his case as given below.
The affidavit of Dhirajlal Nathalal Shah, partner of the firm of Dhiraj Stationery Mart in which it is stated that he has been purchasing sealing wax and chalk sticks from the applicant for the last 25 years and the respondent are not manufacturing these products. This affidavit is dated 24.07.2004.
The affidavit of Mansukhbai H. Parekh, partner of M/s. Parekh and Company. This deponent has stated that he has been selling products manufactured by the respondent for 15 to 25 years and they have never sold to them sealing wax and chalk sticks. This is also dated 24.07.2004.
The affidavit of Malav Niranjan Contractor, partner of the M/s. Manubhai Lalbhai and Company. He has stated that to the best of his knowledge, the respondent have not manufactured or sold sealing wax and chalk sticks. This is also dated 24.07.2004.
The affidavit of Rajeshbhai H. Parikh of M/s. Parikh and Company. He also stated that to the best of his knowledge, the respondent has not manufactured sealing wax and chalk sticks.
Similar is the affidavit of Pravinbhai Nathalal Shah of Dhiraj Stationers, his affidavit is also to be effect the respondent has not sold sealing wax and chalk sticks.
The affidavit of Viplav M. Pujara of M/s. Navyug Book Depot. He has also stated that the respondent has not manufactured and sold sealing wax and chalk sticks.
The last affidavit is Sumanbhai V. Shah of Suvas Stores who has also given evidence to the same effect.
9. The learned counsel for the applicant submitted that all these affidavits would show that the respondent had never used the mark in relation to sealing wax and chalk sticks and there is no bonafide intention to use. There is a false statement relating to 1958 user.
10. The learned counsel also submitted that it is the duty of the respondent to show that they manufactured all the stationery articles. The claim of user for both goods from 1970 is wrong. Section 36(1)(a) use the word “those goods”. Therefore the respondent must show user in relation to the specific goods.
11. The learned counsel refer to 1996 PTC (16) SC – Vishnudas trading as Vishnudas Kishendas vs. Vazir Sultan Tobacco Co. Ltd., - where the Supreme Court held that “The manufacturer has no bonafide intention to use the mark for the goods which fall under broad classification. The registration of such trader must be limited and confined to the specific article or articles which really concern the trader or manufacturer enjoying the registration made in his favour.
12. The learned counsel appearing for the respondent submitted that the rectification application must be summarily dismissed without going into merits because two independent marks have been attacked by filing only one rectification application and paying one fees. He submitted that while in the body of the rectification applications chalk and sealing wax is mentioned but in the prayer the entire entry is sought to be rectified.
13. The learned counsel referred to section 46 proviso and submitted that if the proviso is invoked, this Board must review the application under Clause a & b of Section 46(1). The learned counsel referred to the pleadings where in para 3, its claim is that the mark was adopted in 1970 for sealing wax in para 4 it is stated that in 1975 the applicants adopted the mark in respect of chalk. But in para 7, contrary to this averments, it is stated that the mark is used in respect of goods since 1970.
14. The learned counsel then referred to the various affidavits filed by the respondent and submitted that even according to the applicant’s witnesses, the respondent is dealing in stationery items.
15. The learned counsel submitted that one of the witnesses has stated that the respondent stocks “all stationery items like pencil, punch machine, carbon papers and other stationery articles which are manufactured and marketed by respondents herein”. Learned counsel submitted that in fact, the respondent does not manufacture punching machine and carbon papers but yet the dealers had associated all the stationery items with the respondents. The learned counsel submitted that the evidence was unreliable. The learned counsel submitted that on these short grounds the rectification petition should be dismissed and then proceeded to argue on merits. He submitted that the application of the respondent has been registered in 1988. The date of registration of the respondent’s mark is 15.11.1988. The rectification application has been filed on 24.02.1992. The learned counsel submitted that Section 46(1)(b) therefore cannot be invoked since a continuous period of 5 years or longer had not elapsed on the date of the application from the date of registration.
16. The learned counsel submitted that the Vazir Sultan case will not apply. The two products were Cigarettes and Zarda and quiwam. The class of customers were different and channels of trade was different, manufacturers were different and Vazir Sultan was a one product company viz. it manufactured only cigarettes. The learned counsel submitted there the decision turned on the peculiar facts of that case. Here all the stationery items manufactured by the respondent would be sold through the same channel as the applicant who is subsequent, both as regards user, adoption and registration. The learned counsel submitted everyone in the market are aware that Hindustan pencils manufacture stationery items.
The learned counsel relied on 1959 RPC No.5 – Hostess Trade Mark
1973 RPC GE Trade Mark - where the use of word summarise. The legal tactics of the registered trade mark, the use of which is likely to cause confusion.
17. In this case, the only complaint in the rectification application is that the respondent has not used the mark in connection with chalk sticks and sealing wax and that there has been no bonafide use and no bonafide intention to use. The respondent has undoubtedly registered the mark NATRAJ prior to the applicant, though originally only in relation to pencils. They have also adopted the device NATRAJ before the applicant. It is the case of the respondent that being in the stationery business, the applicant would definitely have known about the respondent’s mark and device. Therefore according to the respondent, the applicant’s adoption is dishonest. As regards, the allegation of non user, the learned counsel for the respondent submitted that proviso to Section 46(1) will apply and that since the respondent had used bonafide, the mark NATRAJ in relation to the goods of the same description as those for which the mark is registered, the tribunal may refuse the application for rectification.
18. In this case, the respondent has not only used the mark in relation to pencils, there is ample evidence to show that they had used it with relation to a variety of stationery items. In fact, the advertisement filed before us, uses the words “NATRAJ for world class stationery”. The evidence of the applicant’s witnesses also indicate that the respondent was not restricting the use of his mark only to pencils. There are advertisements to show sale of “NATRAJ” Ball pens, Refills, erasers, pencil sharpeners etc. Further, the respondent has produced price lists dated 15.09.1962 which shows sale of crayon pencils and slate pencils, though not under the mark NATRAJ. Therefore the respondent has been selling a variety of stationery items and had established a reputation. If we are satisfied that sealing wax and chalk stick would come under the goods of the same description then the respondent would be entitled to invoke the proviso to Section 46(1)(b).
In Vol. 68 RPC Page 160 the mark Zenith was registered for part of wireless sets and also for complete sets. The mark was ought to be removed on the ground that there was no use of the mark with regard to wireless sets. There was admission that the respondent had use the word Zenith as a trade mark in respect of component parts of wireless sets and the question to be decided was whether complete wireless sets would be goods of the same description and whether the registration of the mark Zenith could be accepted for wireless sets under the proviso to Section 26(1). It was held that the proviso could be invoked in favour of the respondent and to refuse the rectification.
According to the respondent, Section 26(1) of the U.K. Act is akin to our Section 46. Since the use of mark is in relation to many stationery items the chalks and sealing wax would be goods of the same description. The application for rectification must be refused.
In Lyons & Coy Ld’s – 1959 RPC Page 120 - it was held that in such case, the court must look to the nature and composition of the goods to the respective use and functions and the trade channel to which they are marketed and sold.
In Evil Poteris and Eagle Flask Industries AIR 1943 (Bom) Page 192, the Hon’ble Bombay High Court had asked the question where the two categories of goods are commonly dealt by the same trader.
19. In this case the respondent has established strong reputation as manufacturing a variety of stationery items: They are not a one product manufacturer like a Vazir Sultan case, even the applicant’s witnesses clearly admit that the respondent sells a variety of stationery articles: The respondent had adopted the mark and made a name for itself before the applicant had adopted the same marks. Though, of course for chalk sticks and sealing wax. These are all factors which persuade us to exercise our discretion in invoking Section 46(1)(b). We do so for the same reasons as in the Zenith case quoted above. We therefore dismiss the rectification application with costs of Rs. 5000/-.
(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.)
