INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex, Annexe-l, 2nd floor, 443, Anna Salai, Teynampet, Chennai 600 018
(Circuit Bench Sitting at Ahmedabad)
ORA/114/2006/TM/AMD
WEDNESDAY, THIS THE 28TH DAY OF DECEMBER, 2011
HON'BLE Smt. JUSTICE PRABHA SRIDEVAN ... CHAIRMAN
HON’BLE Ms. S. USHA … VICE-CHAIRMAN
Sahajanand Laser Technology Limited,
A company Incorporated under the Indian Law,
Trading as Sahajanand Laser Technology,
48-A, Arvind Estate, B/h. Indica Laboratory,
L.B.S. Road, Bapunagar,
Ahmedabad – 380 025. ... Applicant
(Represented by Advocate: Shri R.R.Shah)
Vs
Sahajanand Technology Pvt. Ltd.,
303, Gandhi Smruti Apartment,
Parsi Street, Saiyedpura,
Surat – 395 003.
The Registrar of Trademark,
The Trade Marks Registry,
Ahmedabad. ... Respondents
(Represented by Advocate: Shri S. Suryanarayanan )
ORDER (No.240/2011)
Hon’ble Justice Prabha Sridevan, Chairman:
This rectification application has been filed for removing the trademark Sahajanand with a logo, bearing No: 902852 in class 7. The applicant is Sahajanand Laser Technology Limited and the respondent the trademark holder is Sahajanand Technology Pvt. Ltd.
2. The respondent filed ORA/141/2008/TM/AMD for removal of the applicant’s registered mark No. 1052254. This was dismissed on the ground there was no confusion or deception, and that the objection under S.9 does not survive. It would have been better if both the matters had been heard together, the Board could have got a holistic view. It is the Bar which should urge for joint hearing of such matters, because the pendency of matters with common issues are within their knowledge. In W.P.(C) 4956-57/2005 the Hon’ble Delhi High Court has observed, “Two of the cases were effectively appeals against the orders dated 6th January 2000 and 4th April 2000 respectively of the AR. They concerned the grant of registration in favour of NBRM and KRBL in respect of identical device marks of TAJ MAHAL for rice for export purposes. One of the issues involved in those matters was prior user. The orders of the AR show that evidence had been led before the AR by both parties in the form of affidavits and documents. Had the four cases been heard together, the parties could have relied upon the same evidence for the purpose of their respective claims of prior user. Alternatively, the IPAB could have, in the rectification petitions of KRBL, given a time bound direction to the parties to file their affidavits of evidence and then proceeded to hear all the four cases together. The IPAB would then have had a holistic view of the issue and could have avoided the possibility of inconsistent orders.” Here too, the offending marks are identical, further this rectification proceedings is earlier to the other one filed by the respondent herein. If the pleadings had not been made ready in this case, the Board could have given a time-bound direction to file all the pleadings and heard the matters together. This is a salutary practice and in the interest of all parties concerned, and will advance the cause of justice and facilitate the decision making process too.
3. The applicant’s trademark is Sahajanand and the respondent’s mark is Sahajanand. The applicant applied in 2001, the respondent applied in 2000. The applicant claims user from 28.7.1993, the respondent claims user from 15.3.1993. So both on the basis of application and user the respondent has priority. Now we will examine the pleadings and the evidence against this background.
4. According to the applicant their mark Sahajanand Laser Technology was used by Sahajanand Electronics from 1988. Sahajanand Electronics assigned the mark to Sahajanand Laser Technology in 1993. This is a partnership firm and the partners were Dhirajlal Kotadia, Arvindbhai L.Patel, Dhirajlal J.Babaria and Ashwin Babaria. The deed of partnership is dated 28.7.1993. Dhirajlal Kotadia retired in 2001, and the firm was reconstituted on 20.4.2001. The partners of this reconstituted firm were Lavjibhai P.Patel, Dineshbhai L.Patel, Jyosnaben A. Patel and Rekhaben D. Patel. On 12.9.2001 this firm filed an application for registration of trademark No.1044110 claiming user from 3.6.1997. On 13.3.2006 the firm became Sahajanand Laser Technology Limited. Amendment applications have been filed to change the user from 3.6.1997 to 28.7.1993.
5. The applicant has claimed prior user of the mark and the trade name. In the Civil suit the respondent has stated that the first sale transaction was in March 1994. The respondent has started business under the identical name Sahajanand Laser technology Pvt Ltd.Dhirajlal Kotadia who was the partner in the firm is the director of the respondent’s company and he has started the company to take advantage of the goodwill of the trademark/trade name. Allegations of fraud and false claim of proprietorship have been made against the respondent. There is no bonafide use. So the mark has to be rectified.
6. In the counter statement the respondent alleges laches and delay. Their application was advertised in trademark journal dated 25.11.2003. In the civil suit the respondent had filed a reply on 8.1.2002 referring to this application. The applicant kept quiet, and did not take any action. After the respondent disclosed in the suit that the mark has been registered this application has been filed. The following facts have been suppressed, Sahajanand Laser Technology Pvt. Ltd was earlier Sahajanand Laser SOS Pvt. Ltd., which was incorporated on 15.3.1993. When the application was made Arvind L. Patel was a director of the respondent. Both the respondent and the applicant at the time of its constitution were operating from the same place. Dhirajalal Kotadia was also a partner of the firm Sahajanand Laser Technology and when the other partner who was also a director of the respondent started a branch office at Ahmedabad all the immovable properties of the partnership were handed over to the respondent. When the applicant sought registration of its company Sahajanand Laser Technology (India) Pvt. Limited on 10.10.2001, the respondent objected to it because of the similarity of names, and a fresh application was made to register itself as Shreeji Laser Technology Pvt. Ltd. These facts would show that the applicant cannot call itself the successor of the partnership firm Sahajanand Laser Technology. The applicant is falsely trying to represent that Sahajanand Laser Technology firm and the applicant are one and the same. The applicant commenced its business only on and from 6.11.1995, this is stated in the reply affidavit filed in the suit, but the applicant has not extracted the paragraph in the affidavit fully but in a truncated form. The respondent was incorporated in 15.3.1993, before the retirement of Kotadia and the new firm came into existence only on 28.7.1993. Kotadia retired w.e.f. from 1.4.2000. The allegations of confusion were denied. The respondent is the rightful proprietor of the mark.
7. The reply filed by the applicant apart from attacking the counterstatement has not stated how the transfer of trademark right passed on.
8. We will look at the evidence.
9. On 29th August 2002, the Registrar of Companies (Gujarat, Dadra and Nagar Haveli) certified that Sahajanand Laser Technology Private Ltd, which was originally incorporated on 15.3.1993 as Sahajajanand laser SOS Private Ltd had since changed its name to Sahajanand Technologies Pvt. Ltd., (the respondent herein). The Directors of Sahajanand laser SOS Pvt Ltd., were Dhirajlal Kotadia and Arvindbhai L.Patel (these are seen from Annexure A of the counter statement).
10. On 23.4.2002 Shreeji Laser technology Private Ltd., was incorporated. The Certified copy of the memorandum of association of Shreeji Laser Technology Pvt. Limited shows that originally the name of the company was Sahajanand Laser Technology (India) Pvt. Ltd., and by scratching that and writing in hand Shreeji a fresh application for incorporation had been made. The directors are Arvindbhai L. Patel and others (Annexure C). Annexure D is the copy of the reply affidavit filed in the suit. It is stated that accepting the respondent’s objection to the applicant’s name The Registrar of Companies had declined registration of Sahajanand Laser technology (India) Pvt. Limited. And annoyed by the refusal the suit had been filed. It is stated that the deed of retirement would show that the immovable properties of the firm were to be taken by the partner Kotadia. It is stated that it was because of Kotadia’s efforts the business of the firm flourished and that even in the year 2001 Minimum Alternative Tax of approximately Rs.49.00 lakhs was paid by the respondent. The letter dated 12.10.2002 is the objection of the respondent to the ROC that the applicant has objections to the registration of any company having words “Sahajanand Laser”. Annexure E is Form 32 to record that on and from 12.8.2000 Arvidbhai Patel ceased to be a director of Sahajanand Laser Technology Pvt. Ltd. Annexure G are copies of orders passed as “dismissed as not pressed” on 29.11.2006 applications filed by the applicant herein under 22 CPC. Interestingly the applicant obtained an order from ROC, on 28.2.2006 for changing its name from Shreeji to Sahajanand.
11. Annexure I to the application is the deed of partnership of Sahajanand laser technology. Both Dhirajllal Kotadia and Arvindbhai Patel are partners. It is dated 15.3.1993.Annexure J is the deed of retirement of Kotadia dated 21.12.2000. The deed records that the business will continue in the same name but there is no clause relating to trademark rights. Annexure K is the reconstitution of partnership dated 20.4.2001.Tthe other documents relate to sale etc.
12. The dishonesty of the applicant. The applicant had stated in Para 15 of the rectification application that” The company of respondent No. 1 is doing same kind of business under the identical name Sahajanand Laser Technology Pvt Ltd. Moreover, it has also come to the knowledge of applicant that Shri Dhriajlal V. Kotadia is the Director of Registered Proprietors company who was the part of partnership firm and retired from the said partnership firm that is Respondent No. 1 over here and it seems that after retirement from the partnership, Dhirajlal V. Kotadia started the company in the same name to get whole advantage of the goodwill of the trademark/trade name, logo and copyright subsists in it. This averment is made with absolute malafide. The respondent was already in existence when the applicant adopted this name. The applicant had attempted to get registration of the name Sahajanand laser technology (India) Pvt. Ltd. On that date the respondent company was already in existence as Sahajanand laser technology Pvt. Ltd. It objected to this name being registered. The ROC accepted the objection, and the applicant had perforce to change its name to Shreeji. How it got back the same name in 2006 is inexplicable, but we are not concerned with that. But already there is suppression of material facts. Of course in Annexure D filed with the rectification application they have filed the TM 16. But they have not stated under what circumstances they had to change their name to Shreeji and how they changed again to Sahajanand. No litigant can selectively withhold truth from the court. This is fraud. In S.P. Chengalvaraya Naidu vs. Jagannath 1994 SCC (1) 1 the Hon’ble Supreme Court has held that fraud avoids all. When the applicant had to change its name because the respondent objected the name was similar to theirs, it requires temerity of a great degree to state on oath that the respondent was riding on the applicant’s reputation. That is why carefully Arvindbhai Patel is not the deponent in any of the pleadings. He was in the know of things right from the matter. A dishonest person cannot be treated as a person aggrieved. On this ground alone the application must be dismissed.
13. In an identical situation in 1996 PTC 16 Montari Overseas Ltd., vs. Montari Industries Ltd., the adoption of an identical name as the name of the company which stood registered under the Companies Act, 1956 was held to lack bonafide. The facts there are as follows:
The plaintiff was one Montari Industries. It had several subsidiary concerns. The names of all these companies contained the word ‘Montari’. That was incorporated in 1983. The defendant was Montari Overseas incorporated in 1993. The Court referred to section 20 of the Companies Act which provides that no company will be registered by a name by which a company in existence has been previously registered. In case where a company has been incorporated with a name which is identical or too nearly resembles the name of a company which has been previously incorporated, S.22 makes a provision for getting the name of the former altered. The defendant was the appellant before the Hon’ble Delhi High Court submitted that the adoption of that corporate name using the word ‘Montari’ was not due to lack of bonafide and there has been no evidence to show confusion. The plaintiff/respondent maintained that the adoption was not bonafide. The Hon’ble Delhi High Court observed “normally a company cannot adopt the name which is being used by another previously established company as such a name would be undesirable. In view of the confusion which it may cause or likely to cause in the minds of the public… One of the pernicious effects of adopting the corporate name of another is that it can injure the reputation and business of that person.”
14. Before the Hon’ble Delhi High Court, there was no dispute with the defendant was incorporated 10 years after the incorporation of the plaintiff. In that case the Court held the defendant cannot say it had no knowledge of the corporate name of the plaintiff. Therefore the Court felt that the adoption of the corporate name with the word ‘Montari’ figuring in it was not innocent.
15. The Hon’ble Delhi High Court held that “There is another aspect of the matter. Section 20 of the Companies Act 1956 treats a name of the company to be undesirable if it is identical with or too nearly resembles the name by which a company in existence has been previously registered. Since the legislature itself considers name of a company which is identical with the name of the other pre-existing company to be undesirable, the legislative intent must be given effect to by giving injunctive relief to a plaintiff against a defendant, who has copied the corporate name of the plaintiff.”
16. In this case the respondent company was incorporated in 1993 and its name contained the word “Sahajanand”. In 2001 when the applicant sought registration of incorporation, the applicant was asked to change its name by the Registrar of Companies because of the similarity to the respondent’s name. It is only in 2006, 13 years thereafter the applicant managed to get itself registered on the Register of Companies with the present name.
17. A person who has suppressed the truth is not entitled to any relief from us. On this ground alone we do not think we will entertain this rectification application. Many invoices have been filed to show the date from which the applicant has used the name and the respondent has used the name. Since both the respondent and the applicant are offshoots from the original partnership firm where Arvind Bhai Patel and Dheeraj Lal Kotadia were partners both of them claim on the basis of the use by the firm that their date of user is from 1993. According to the respondent when the partnership severed, the Surat office along with all its properties fell to the share of Dheeraj Lal Kotadia. We have already seen that Sahajanand Laser SOS Pvt. Ltd., was incorporated by Kotadia which later became Sahajanand Laser Technology Pvt. Ltd., the predecessor of the respondent. These are special circumstances for us to consider. ORA/141/2008/TM/AMD filed by the respondent was dismissed by this Board on the ground that there is no confusion or deception. The same finding applies now in favour of the respondent. The applicant cannot be heard to say that when it comes to him there will be confusion and deception. Moreover, it is the applicant who has adopted this business name 13 years later. The adoption of the business name and the trade mark by the respondent cannot be said to be dishonest. Both have given reasons why they have adopted the respective trade marks. Since there is no dishonesty on the part of the respondent we are entitled to invoke our discretion under S.12 of the Trade Marks Act, 1999 in favour of the respondent.
18. But as we have said earlier this rectification application deserves to be dismissed on the ground of fraud and suppression and is dismissed with costs of Rs.10000/-.
(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.)
