INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018
ORA/8/2010/TM/MUM
WEDNESDAY, THIS THE 28th DAY OF DECEMBER, 2011
Hon’ble Smt. Justice Prabha Sridevan … Chairman
Hon’ble Ms.S. Usha … Vice-Chairman
Mrs. Susheelamma Sundara Rao … Applicant
Trading as
Krupa Homoeopathists at
No.31, City Market,
Bangalore-560002.
(By Advocate: Ms.P.V. Rajeswari)
Vs
Dr. Rupa Kothari
Trading as
Krupa Homoeopathic Clinic
A-1, Kailash Plaza
90 Feet Road
Ghatkopar
Mumbai-400075. … Respondent
(By Advocate: Ms. Usha Chandrasekhar)
ORDER(No.239/2011)
Hon’ble Ms.S. Usha, Vice-Chairman:
Application for removal of the trade mark “Krupa Homoeopathists” registered under No.1344586 in Class 42 from the register of trade marks under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
Brief facts of the case:
2. The applicant’s husband Dr.D. Sundara Rao a leading Doctor specialized in Homoeopathy was carrying on clinical services for the past several years. He started his practice in the year 1947 at Ramanagaram and shifted to Bangalore from 28.03.1952. He adopted the trade mark “Krupa Homoeopathists” on 28.03.1952 as well adopted the same as his trading style for his clinical services. By virtue of such long, continuous and extensive user since 1952 the trade mark has become distinctive of his services.
3. In the year 1994, the respondent herein came to Bangalore from Bombay to get training in Homoeopathy from Dr.D. Sundara Rao. The respondent underwent training for 5 years and left to Mumbai to start her independent practice. The applicant’s husband Dr.D. Sundara Rao died on 30.12.2004 and therefore the applicant continued the clinical service assisted by Dr. Sumana Shivaram and Dr. Geetha under the trading style and trade mark “Krupa Homoeopathists”.
4. The applicants had applied for registration of the trade mark “Krupa Homoeopathists” under Nos.1878994 in Class 5, 1878995 in Class 16 and 1878996 in Class 42. Dr.D. Sundara Rao was a registered homoeopathic practitioner.
5. The respondent herein who was trained by Dr.D. Sundara Rao had copied the trade mark and had obtained registration under No.1344586 in Class 42 claiming user since 01.12.1997. The respondent’s adoption of the impugned trade mark is dishonest as has been adopted from Dr.D. Sundara Rao. The applicants are prior user of the trade mark and therefore entitled to file this application for rectification. The applicant is a person aggrieved within the meaning of Section 57 of the Act. The impugned registered trade mark is not distinctive nor is capable of being distinguished. The registration is in contravention of the provisions of Sections 9, 11, 12 and 18(1) of the Act. The impugned registration was made without sufficient cause and the continuance on the register is likely to cause confusion. In the interest of purity of Register, interest of justice, equity and good conscience the impugned registration be removed from the Register of Trade Marks.
6. The respondent in her counter statement stated that she is a homoeopathic doctor practicing since 1998. She worked in Government Hospitals during her degree. In 1991, she met Dr. Sundara Rao, the applicant’s husband when she was in the second year of Homeopathic degree. In the year 1994, she joined Dr. Sundara Rao. She resided with Dr. Sundara Rao throughout her stay in Bangalore. In the year 1997, she left to Bombay and started her independent practice. The respondent not only assisted Dr. Sundara Rao in his service but also handled his city clinic in Bangalore.
7. The respondent with the blessings of Dr. Sundara Rao left to Bombay and on his insistence and desire independently adopted “Krupa Homeopathists” as her trading name. By letter dated 8.5.1998 he expressed his happiness and full consent to the respondent to adopt the trade name “Krupa Homeopathists”. In the letter he had mentioned that the letter was written to her by his wife the applicant herein under instructions from him.
8. The respondent adopted the trade mark “Krupa Homeopathists” to respect the wishes of her Guru. She adopted the name Krupa as ‘K’ for Kothari and ‘Rupa’ as her name from the name Rupa Kothari. The clinic in Bombay under the name “Krupa Homeopathists” was inaugurated by Dr. Sundara Rao along with his wife the applicant herein.
9. The respondent applied for registration of the impugned trade mark No.1344568 and obtained the same. The respondent has been using the mark since 1997 with the knowledge and consent of the applicant. The respondent states that in medical profession, patients seek assistance of a particular doctor and not by their service name.
10. The respondent is aggrieved by the application for rectification as it has no basis in law and it is purely vexatious and frivolous only to harass the respondent. In fact, the applicant has suppressed vital information before this Board. They have not made out any valid ground for rectification.
11. Dr. Sundara Rao was the sole proprietor of the trade mark “Krupa Homoeopathists”. The applicant herein had full knowledge of the respondent’s adoption of the trade mark “Krupa Homeopathists”. The applicant herself cannot be the proprietor of the mark since the services are of a personal nature, therefore the applicant has no locus standi to file the present application. The rest of the averments were denied by the respondent.
12. The applicant filed her reply to the counter statement stating that the applicant i.e. Dr. Sundara Rao permitted the respondent to use the name “Krupa Homeopathists” but never thought that she would claim monopoly over the same. The respondent had filed the impugned application just three months after the date of death of Dr. Sundara Rao. The respondent was aware of the fact that the applicant was continuing the services of Dr. Sundara Rao with the assistance of other doctors. Dr. Sundara Rao gave permission for the respondent to use the name as the respondent was already using the name in order to avoid any displeasure. The other contents were denied.
13. On completion of the pleadings, we heard Ms.P.V. Rajeswari, learned Counsel for the applicant and Ms. Usha Chandrasekar, learned Counsel for the respondent on 14.9.2011 and 7.10.2011.
14. The learned Counsel for the applicant submitted that the impugned application was made on 15.3.2005 claiming user since 1.12.1997 and the certificate was issued on 30.5.2007. The application has been made on 15.3.2005 after the death of Dr. Sundara Rao only with other intentions. The applicants have made applications for registration in Classes 5,16 and 42 which are pending. The Counsel then pointed out to letter dated 8.5.1998 written by Dr. Sundara Rao to the respondent and submitted that it was not a natural one. The respondent is not the proprietor as per the provisions of Section 18(1) of the Act. The Counsel then relied on a passage from the book “Law of Trade Marks & Passing Off” by P. Narayanan and submitted the onus to prove proprietorship was on the applicant. AIR 1969 Bombay 24 – Sunder Parmanand Lalwani and others, Appellants v. Caltex (India) Ltd. Respondent was also relied on in support of the above proposition. The applicant’s Counsel finally submitted that the adoption was dishonest and the mark ought to be rectified.
15. The learned Counsel for the respondent in reply submitted that the respondent underwent training from the year 1992 and completed her course in the year 1994. The respondent submitted that they had been using the trade mark “Krupa Homoeopathists” since the year 1997 with the consent and knowledge of the applicants. If that is the case, the applicant can not have any objection for the registration. Having acquiesced the use now cannot oppose the same. In this context the respondent relied on the judgment reported in 2008 (37) PTC 413 (SC )- Khoday Distilleries Limited (now known as Khoday India Limited), Appellants vs. The Scotch Whisky Association and Ors., Respondent and the respondent relied on Bowden Wire case reported in 1913 (30) RPC 30. There has been a delay in filing rectification application. The applicant has not built goodwill on her own but only of Dr. Sundara Rao. The respondent therefore prayed that the trade mark to continue on the register and the application for rectification be dismissed.
16. The matter was heard at length and orders were reserved on 14.9.2011. Subsequently we found that the matter pertains to Mumbai Jurisdiction and the Registry of this Board had by mistake numbered and posted the matter in Chennai. We therefore directed the registry to list the matter for clarification. On 07.10.2011, when the matter was listed, we suggested to both the Counsel if this matter could be settled amicably in order to avoid any embarrassment. They were given 15 days time to report to this Board. We received a reply that they could not enter into any settlement and therefore we proceeded to pronounce this order. It was also made clear to both the Counsel that this matter pertains to Mumbai jurisdiction and the Jurisdictional High Court would be Hon’ble Bombay High Court.
17. We have heard and considered the arguments of both the Counsel and have also gone through the pleadings and documents.
18. The main issue to decide is to see whether the applicant is a person aggrieved and has a locus standi to file and maintain an application for rectification. Persons are aggrieved who are in some way or the other interested in having the mark removed from the register or persons who would be damaged or injured if the mark remained on the register. The applicant herein has been rendering medical services under the trade mark “Krupa Homoeopathists”. In fact the applicant’s husband Dr. Sundara Rao was providing services since three decades. The applicant who continues to provide service through other doctors is a person aggrieved as the impugned trade mark if on the register would cause damage to them. Therefore the applicant is a person aggrieved and has a locus standi to file and maintain an application for rectification.
19. On perusal of the letter dated 8.5.1998 written by the applicant and attested by the applicant’s husband Dr. Sundara Rao, it is stated –
“I am glad to know that you want to open your clinic and name it as Krupa Homoeopathists. I am very happy to know your loyalty and affection to our Institution. You are completely at liberty to use that name without any liability on your side. Nobody can find fault with you or claim anything from you on this count.
All my best wishes for your prosperity. This is in handwriting of my wife and I have attested my signature.”
20. The letter has been written to the respondent by the applicant in her own handwriting and appears to indicate that Dr. Sundara Rao allowed the respondent to use the name for the clinic and nothing more. The letter seems to be very unnatural.
21. In an application for rectification, the onus is always on the applicant to prove his case. The onus then shifts to the respondent. The decision relied on by the applicant AIR 1969 Bombay 24 – Sunder Parmanand Lalwani and others, Appellants v. Caltex (India) Ltd. Respondent is not relevant to this case on hand as it was an appeal against the order of the Registrar where the onus was on the applicant for registration. The applicants have failed to discharge the onus.
22. The main defence of the respondent was that the applicant had acquiesced in their use and so the application for rectification is not maintainable. The Counsel relied on the Khoday’s Judgment (supra). We do not think that that case applies to the facts of this instant case. The mark in that case was on the register for more than 18 years, here that is not the case. This submission is therefore rejected as the mark was registered on 30.5.2007 and the rectification application was filed on 24.12.2009.
23. The impugned trade mark “Krupa Homoeopathists” has been put to use since 1997 which fact has not been refuted/denied by the applicant. The wordings in the letter dated 08.05.1998 written by the applicant on behalf of Dr. Sundara Rao to the respondent seems to be not natural. Dr. Sundara Rao could not have anticipated things in advance. The respondent’s explanation for adoption of the trade mark ‘K’ stands for Kothari and Rupa is her name is something which cannot be accepted. No doubt Dr. Sundara Rao with his blessings allowed the respondent to use the name “Krupa Homoeopathists” as her clinic name. The respondent has applied for registration after the death of Dr. Sundara Rao which cannot be said to be bonafide. Considering the facts stated above and in the interest of justice, we exercise our discretion and allow the registration to continue on the register with area limitation. The registration granted will be restricted to the State ofMaharashtra only. The applicant shall have the right to continue her services under the said trade mark.
24. Accordingly, the rectification application is disposed of with a direction to the Registrar of Trade Marks to impose the area limitation and to issue a fresh registration certificate on the respondent surrendering the original certificate of registration No.1344586 in Class 42. No order as to costs.
(S. Usha) (Justice Prabha Sridevan)
Vice-Chairman Chairman
REPORTABLE: YES/NO
RR/-
(This order is being published for present information and should not be taken as a certified copy issued by the Board.)
