The last case relied on was “Ajodhya Bhagat and others Vs State of Bihar and others” – 1974 AIR (SC) 1886 where it was held “ that the appellant cannot be allowed to raise the grounds in appeal, which were not taken in the petition.” 31. Obviously, the opponent/respondent are in the rice trade and have been alert enough to oppose the impugned mark at the first available opportunity. We agree with the applicant that many of the bill/invoices furnished by the opponent are prima facie suspicious. But how does that improve the prospect of securing the applicant the registration of the impugned mark?. This is not a case where the validity of the opponent’s registered trade mark is in issue. This Board is meant for imparting justice between the parties. One who comes to us must come with a clean hand. The Assistant Registrar who heard the matter has come to the conclusion that the applicants are not and cannot be the proprietor of the impugned trade mark. He has also ruled that they are not entitled to the benefit Section 12. The respondent /opponent have adopted and registered the impugned mark prior in point of time. The Assistant Registrar has ruled that concurrent use of the mark would result in likelihood of confusion. It is not the case of the applicant that the first use in commerce of their mark is prior to the respondent/opponent. The Assistant Registrar has taken judicial notice that the impugned mark is confusingly similar and they do not qualify for registration under Section 12 of the Act. From the reading of the documents and pleading we believe that the applicant/appellant are making an all out eleventh hour efforts to leapfrog into the register through the appellate route having failed to make the cut before the Assistant Registrar. Adopting an identical mark for same goods in the same class is a high risk crime and even the best case scenario so ably put forward by the Learned Counsel for the applicant/appellant at the hearing cannot save either the applicant or his application. Who can deny that there will be total confusion in the market if the applicants trade mark is allowed to co-exist on the register?. This Board will do its best to discourage illicit commerce by use of such tainted mark. Making concession under Section 12 which is essentially meant for a public purpose in respect of the impugned mark is totally unwarranted giving rise to public misgivings and would erode the legislative intent for which it was engrafted in the Act. On a totality of the case, we have no reasons to interfere with the findings of the Assistant Registrar. Once we come to this conclusion , all other incidental grounds vigorously raised both by the appellant (dubious supporting documents) and the respondent including (complicated ownership history of the appellant trade mark which passed through several hands) need not be gone into at length and in finer details to sort out unresolved conundrums and acknowledged disconnect as these do not materially alter the factual position of the case. This is the gist of what can be extrapolated from the voluminous case record. The appeal is accordingly dismissed with cost of Rs.5,000/- to be paid to the opponent /respondent herein.

INTELLECTUAL PROPERTY APPELLATE BOARD

  Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai,

       Teynampet, Chennai-600018

*****

(CIRCUIT BENCH SITTING AT DELHI)

     OA/05/2007/TM/DEL

                    FRIDAY  THIS  THE   18^th  DAY  OF MAY,  2012  

            HON’BLE MS. S.USHA                                  …         VICE CHAIRMAN

            HON’BLE SHRI V.RAVI                                  …        TECHNICAL MEMBER

           

            M/s Khushiram Beharilal,

            5190, Lahori Gate,

            Delhi – 110 006.                                    …                  Appellant/Applicant

(Represented by Advocates:  Shri S.K. Bansal & Shri Saurabh Kapoor)

                                               

                                                                  Versus

            1.Ms Jaswant Sjngh,  Balwant Singh,

               Dhab Wasti Ram

               Amritsar 143 006.                               …                  Respondent No.1/

                                                                                                     Opponent

           

            2.The Assistant Registrar of Trade Marks,

                Baudhik Sampada Bhavan,

                Plot No.32, Sector 14,

                Dwarka,

                New Delhi 110 075.                           …                  Respondent No. 2

(Represented by Advocates: Shri K.K. Arora & Shri Gaurav Arora)

ORDER (No. 126/2012)

           

            HON’BLE  SHRI.  V. RAVI,  TECHNICAL MEMBER:

           

            This is an appeal made by the applicant/ appellant herein against the order of the Assistant  Registrar of Trade Marks, New Delhi dated 12.10.2006 refusing an  application for the registration of the trade mark  “TRAIN”  brand for basmati rice under No. 609141 in Class 30 and allowing  the opposition No. DEL-T-2040-56425 filed by the above said  respondent.

2.         The grounds on which the appellant has preferred the appeal is as briefly as follows:-

            A. The Order of the Assistant Registrar is contrary to the law and the facts of the case.   The Assistant Registrar has failed to appreciate that the documents filed /relied on by the opponents/respondents are forged and fabricated, inter-alia, on the following grounds :-

            i)          Exhibit 37 of the alleged invoices filed by the above respondent shows telephone number which are different from Exhibit 43 both filed before the Registrar.  The discrepancy in the telephone number is for the same period in the alleged invoices for the same calendar year and therefore the documents filed by the respondent are doctored and forged.

            ii)         Similarly, in Exhibit No.5 (invoice dated 08.05.1985); exhibit No.14 (invoice dated 14.03.1987); Exhibit  No.28  (invoice dated 16.08.1995); Exhibit No. 29 (invoice dated 23.08.1995) and  Exhibit 30 (invoice dated 07.10.1997) the impugned trade mark TRAIN brand depicted on the bills do not correspond to the goods for which it is registered  viz. rice.  It is alleged that the respondents have imprinted the same on the impugned bills at one go without taking into consideration the description of the article/goods mentioned thereon.   It is further alleged that all the invoices filed by the respondent were prepared prior to 1988 when the trade mark application was still pending and not registered.

            iii)        It is further alleged that the various invoices filed by the respondent before the Registrar from 1985 to 2002 is based on the signature of the same person ( at the place of the seller ) which is highly improbable and the impugned bills appear to have been prepared at the same time at one go.  Further, for the period, 1995 -2002, trade mark application registered under No. 405933 is   missing  on the invoices. 

            iv)        It is also alleged that the Rice License No., Sales Tax License and  R.D. No. of the respondent  and  C.S.T. No. are varying on the impugned invoices.

            v)  The respondents  are allegedly engaged in the impugned business of rice since 1978. However, the bills/invoices pertaining for the period 1985 – 1987 bears C.S.T.No. 01.07.1957 and STL No. dated 28.03.1949.    From this, it is clear that the bills and invoices filed by the respondents are forged.

            vi)   It is further alleged that the sale transaction never occurred in as much as most of the invoices do not bear the signature of the buyer even though the signatures of the  sellers is present 
throughout .

            vii)  It is further stated that the bills tendered do not bear the complete address of the purchaser.

        B.  The Assistant Registrar also erred in accepting the objections raised under Section 11 of the Act by the respondent and reached the wrong conclusion that the respondent herein is the prior user of the impugned trade mark without verifying the documents filed by the respondent which are forged and fabricated  and cannot be relied on.  The Assistant  Registrar has failed to appreciate the special circumstances in favour of the applicant/appellant under Section 12 and he has further failed to give due consideration to the honest adoption and concurrent user of the applicant/appellants mark since April 1990.  The Assistant Registrar was also wrong in rejecting the request in  Form-16 dated 17.02.2006 filed by the applicant/appellant..  The applicant/appellant states that they qualify  for registration of the mark  and are also entitled to the benefit of the Section 12 of the Trade Marks Act.  It is further alleged that the order of the Assistant Registrar suffers from non-application of mind and he exercised his 
discretion for  irrelevant  and extraneous consideration.   In the  interest of   justice the present appeal be allowed and the 
applicant /appellant pray that the order of the Assistant Registrar should be quashed/set  aside and application No.609141 in class 30 should proceed to registration.

 3.           The case of the respondent is as follows:

1)         One Shri Anil Kumar Mittal, Shri Arun Kumar Gupta and Shri Anoop Kumar Gupta trading as M/s Khushiram Behari Lal applied for the registration of a trade mark consisting of the word and device of ‘TRAIN’ in respect of rice in class 30 claiming the use of the said mark since August, 1991.  The application was made on 11.10.1993 under No. 609141.

2)         The said trade mark was advertised in trade mark Journal No. 1224 dated 01.06.2000 which was promptly opposed by the respondent/opponent herein.

3)         After the filing of respective evidence by both the parties, the matter was listed for hearing on 07.06.2004 and it was adjourned from time to time and fixed for final hearing on 26.02.2006.

4)         Just five days before the date of final hearing, a request on Form  TM-16 for amending the use/user was suddenly made by the applicant/ appellant  after a gap of almost six years from the date of publication of the impugned trade mark.  Even this was filed by another entity M/s Khushiram Behari Lal Limited.       

5)      The respondent herein objected to the request of TM -16 in his comments dated 23.02.2006.

6)         The hearing was consequently adjourned and finally heard on 03.04.2006.  Both the parties have argued the matter before the Assistant Registrar.

7)         The respondent had pleaded before the Assistant Registrar to reject the impugned application outright  as the applicant had failed to establish entitlement to trade mark.

            8)         It is the case of the respondent that impugned trade mark  “TRAIN” is identical to and in respect of same description of goods  as the respondents registered the trade mark No.405 933 in Class 30.

            9)         The Respondent have also secured   copyright registration for the  artistic label comprising  the  word  & device of the trade mark  under No.A-  44877/84.

            10)      The Registrar had rightly refused the impugned trade mark as it  is  hit  by  Section 9 & 11 of the Act. 

            4.        It is further stated that since the respondent’s right to the  registered  trade mark under No.405933 in Class 30 extends to all cognate Class of goods, the Registrar had rightly allowed the opposition and  the identical trade mark under No. 609141 was correctly refused.

            5.       The respondent state that the present appeal is not maintainable.  Since the appellant firm M/s Khushiram Behari Lal  Limited had assigned all  the  rights  relating  to  the  trade  mark and  goodwill  in favour of M/s Khushi Ram Behari Lal Limited by virtue of assignment dated 01.04.1996, the appellant/applicant has no   locus standi   to file   this appeal as the impugned application  under No.609141 no longer  belongs  to them.

            6.       Another preliminary objection is that the applicant/appellant havenot furnished a copy of the assignment agreement to the respondent for scrutiny.

            7.       The present appeal is liable to be dismissed in view of the filing of  the different documents by different persons at different stages of these proceedings  and   making  different and  contradictory claims as detailed below:-

a)         Application No.609141 dated 11.10.1993 was filed by ‘ANIL KUMAR MITTAL, ARUN KUMAR GUPTA and ANOOP KUMAR  GUPTA trading as a partnership firm of     “M/s KHUSHIRAM  BEHARILAL” (as appeared in the Trade Marks Journal N0.1224  dated 1.06. 2000);

b)         The counter-statement dated 19.06.2001 has been filed by ‘ANIL   KUMAR MITTAL, ARUN KUMAR GUPTA and ANOOP   KUMAR GUPTA’, trading as, being the partners of “ 
            M/S     KHUSHIRAM   BEHARILAL (EXPORT   DIVISION)”;

c)         “KHUSHIRAM BEHARILAL (EXPORT DIVISION)” is      alleged in       turn to have been taken over  by “M/S KHUSHI  RAM   BEHARI   LAL LIMITED” by virtue of execution of an Agreement     dated 01.04.1996, followed by a petition in Form TM-16           dated 30.11.1999     and as stated vide paragraph 4 of the   aforesaid counter-statement as well as vide paragraph 2 of  an   affidavit dated 07.10.2002;

d)         The Affidavit dated 07.10.2002 has been filed by “Mr. Anil  Kumar Mittal”  in support of application and in his capacity        as        a “Managing Director’ of ‘KRBL LIMITED’

8.       A few export invoices filed by  the applicant / appellant  in  respect       of         the impugned application  are subsequent to the crucial date of filing i.e.         11.10.1993  and        also by different firms and        such    evidence have been rightly declined  and refused by       the hearing officer.   

            9.       No cogent documentary evidence has been filed by the appellant/applicant in support of the various exaggerated claim based on        false   and contradictory statement as to the user and proprietorship of the impugned identical trade mark at different stages of the opposition  proceeding. The appellant/ applicant,  therefore, lacks   bonafide as also honesty  and   locus   standi to file the present appeal.

            10.       Learned Asst. Registrar has rightly refused this impugned application in accordance with the various provisions of law and  as per materials available on record.

            11.      In view of the foregoing,  the  present  appeal  deserves to  be dismissed with exemplary costs.

           

            12.       Since, the counsel for the respondent had earlier raised an  objection as to one of us (Vice Chairman) hearing the matter, we had asked him whether this Board can hear the matter.  The counsel,  therefore, made an endorsement that he was willing to argue the matter before us.

            13.       We have heard the learned  counsel for  both the sides present and also perused various documents and the case laws relied on by the respective parties.   Before giving our ruling it would be in the fitness of things to summarise the grounds on which the impugned  trade   mark ‘TRAIN’  under No. 609141 was refused by the Asst. Registrar.  

14.       In his order and decision dated 12^th October, 2006, the    Asst.   Registrar has rejected a request by the Applicant/Appellant seeking ante  dating of use of the impugned trade mark from 1991 to April 1990     mainly on the ground that the request was made belatedly six years after filing of the application.   He further held that the claim of the proprietorship of the mark by the applicant/appellant to the impugned mark is false in as much as the respondent /opponents are already the proprietor of ‘TRAIN’ brand in Class 30 under No. 405933 for all kind of rice and who also hold copyright registration for the same.  In emphatic terms, the Asst. Registrar concludes  “The applicants mark is copied from the opponents registered trade mark.  The claim to proprietorship made by the applicant is false and fraudulent with dishonest intention because a similar mark has already been used in relation to similar goods by the opponent.”  The Assistant Registrar then analysed the objection under Section 11 of the Act and came to the conclusion that opponent / respondent are prior user of the identical mark for same goods and so the impugned mark is reasonably likely to cause confusion and deception amongst substantial number of persons and the objection under Section 11 was consequently upheld.  He also rejected the applicants/ appellant claim under Section 12 and 18(1) and refused the impugned application.

15.       The Learned counsel for the applicant/appellant relied on the following case laws in support of his argument.

1. “ Veerumal Praveen Kumar      Vs        Needle Industries (India ) Ltd & Another”  -  2001 / PTC 889 (Del ) DB

            2. “Corn Products  Refining Co.,  Vs   Shangrila Foods  Products  Ltd.”  - (AIR 1960 SC 142 SCR 968)

            3. “ Jain Electronics    Vs   Cobra Cables (P)., Ltd., Another”   -  ( IPAB -2005 (31) PTC  330)

            4. “ Jain Electronics    Vs   Cobra Cables (P) Ltd. &  others”  -- [ 2011 (45) PTC 52 (Del)

16.         Opponent/respondent had relied on the following case laws during the arguments.  

1.         “National Sewing Thread Co. Ltd., Chidambaram    Vs       a) James Chadwick & Bros Ltd. & b) The Registrar of Trade Marks,  Intervener”

(AIR 1953 SC 357)

2.         “Jeevan Diesels & Electrical Ltd.  Vs Jasbir Singh Chadha (HUF) & another”   -   2012 (1) Civil Court Cases 159, Delhi High Court

3.         “Mohd. Akram Ansari     Vs   Chief Election Officer & Others ” -- Supreme Court 2008 (1) R.C.R.(Civil) 566:

4.         “S.P. Chengalvaraya Naidu (dead)     Vs  Jagannath (dead)  -- (Civil Appeal No.994 of 1972 – AIR 1994 Supreme Court 853.

5.         “Gupta enterprise    Vs    Gupta Enterprise & another --  AIR 1998  Delhi 232.

6.         “Topline Shoes Ltd.    Vs     Reserve bank of India . (Gujarath) ”-  Gujarat High Court  - Special Civil Appln. No. 3011 of  2000.

7.         “State Bank of Travancore  Vs  M/s Kingston Computers (I) P. Ltd.”  (SC)     -   2011 (2) R.C.R. (Civil) 869  

8.         “Ayodhya Bhagat and others      Vs    State Bank of Bihar and others”    -  1974 AIR (SC) 1886 

            We shall deal with all these decisions later.

17.       The function of  a trade mark is to indicate the origin of the goods and distinguish it from others in the trade.  Trade mark rights are the moral capital on which business is done.  In the instant case,  the finding of   the Assistant Registrar has been attacked largely on the strength of dubious bills and invoices relied on in support by opponent/respondents in support of his prior registered trade mark.    In the first instance,   the question arises why the veracity of these documents relied on by the opponents is being raised at the appellate stage when the same was available and not challenged  by the appellant/applicant in the proceedings before the Assistant Registrar.   There is nothing in the record to show that this issue has been agitated before the Assistant Registrar  it  being the Court of first instance which could have gone into great details whether the documents relied on by the opponents  are forged and fabricated.  There are judgements both of the Hon’ble Supreme Court and High Court to show that when a point is pressed and not dealt with, the remedy is to file a review. Nevertheless the applicant/appellant had succeeded in raising doubts which needs to be examined.  The first of these relate  to discrepancy in telephone number of the opponents bill for the same period.  No conclusion based solely on this can be inferred as trading firms do have many lines to run their shops/business.  The next point raised is that mark in the invoice do not relate to the goods for which it is registered.  Some bills of the opponent refers to  ‘husk’ containing the mark.  ‘Husk” is an intermediate stage in the processing of rice and rice elements and one should not read too much is such minor deviation.  After all merchants in the rice trade do not have same level of education as the legal community and in any event a serious analysis would indicate both  are goods of the same description.  Merely because some bills of the opponents are not rice specific, by itself it is not fatal to the opponents/respondent case.   It is appropriate to consider the pattern of trade with particular reference to factors such as (use of the mark, the users, physical nature of the relevant goods, channel distribution, position in retail outlet, competitive leaning and market segmentation).    We may usefully quote Jacob J in British Sugar   

            “When it comes to construing a word used in a trade mark specification, one is concerned with how the product is, as a practical matter, regarded for the purpose of trade.    After all a trade mark specifications is concerned with use in trade.”           

             

18.         Even so, the applicants/ appellant  have  raised a number of other doubts about the credential of the opponents evidence which would lead one to believe that the impugned mark has been willfully refused by the Assistant Registrar.  But that misses the basic flaw in the applicant’s case.  No matter how much he may canvas, the fact of the matter is the opponents are already the registered proprietor of another trade mark under No.405933 in Class 30 in respect of  rice since 1983.  Even if disregard the non-allowance of TM-16 ante dating user from 1991 to April 1990, records indicate that it was opponent who first adopted the trade mark ‘TRAIN’ for basmati rice way back in 1983 which is at least seven years before the same mark for the same goods was adopted by the applicant.   It is well settled law that if the applicant at the time of making an application had knowledge that the mark as applied for is similar to another  mark in the register and  that has already been used by another trader in relation to similar goods, then the claim of proprietorship by him is false and fraudulent.  In this case, the applicant/appellant have failed to make out case for registration of the impugned mark.  The Assistant Registrar had good reason to believe that the subsequent adoption and use and its application for registration for the same mark in respect of the same goods should not be allowed.

19.       We shall now review the various decision relied on by the Applicant.

      2001 PTC 889 (Del) (DB) __“Veerumal Praveen Kumar  Vs Needle Industries (India) Ltd. & another” 

            This case was relied on to show that if the plaintiff allowed the defendant to expend money for considerable period in building up a business under a similar mark, he won’t be allowed to stop the business of the defendant by securing an injunction.  Our attention was also drawn to para 24 where it was observed that there was nothing on record to show any reputation of the goods in India of the respondent while denying grant of interim relief to him.  But this case can be easily distinguished as the impugned mark was promptly opposed by an earlier registered proprietor and the continued user after the appellant trade mark was published in the TM journal was at his own risk and the opponent cannot be faulted for this.    

20.       The next case relied on by the Appellant was “ Corn Products Refining Co.  Vs     Shangrila Food Products Ltd.”   (AIR 1960 SC 142)  to establish his reputation in which it was held  “ The reputation with which we are concerned in the present case is the reputation of the trade mark and not the maker of the goods bearing the trade mark” and in Para 12 it is mentioned “ It would be wrong in this case to say that the appellant’ trade mark had not acquired any reputation amongst the general public and hence there is no reasonable apprehension of  being confused or deceived by the use of the respondents proposed mark.” Here also, the fact is that the appellant    adopted their mark in 1990, applied for in 1993 and was opposed after publication in 2000.  Any reputation built up was open to challenge by a prior adopter and user and hence this case will not support the appellant.   

21.       Another case relied was 2011 (45) PTC 52 (Del.) _ “Jain Electronics Vs Cobra Cables (P) Ltd & Others” decided by IPAB where ‘the copies of invoices and the bills produced by the appellant do not reveal that the appellant had sold the voltage stabilizers under the brand ‘Cobra’ .- “Unless the trade with the description of goods or goods is identified by the trade mark  mentioned in the bills or invoices, the relation between the two cannot be inferred and  cannot be said to have been established”.

22.       The above decision was carried in appeal in the Delhi HC 2011(45)PTC 52 (Del), wherein Justice Muralidhar in para 8 had concluded that  “Respondent No. 1 is right in pointing out that the user had to be in relation to the goods and not merely the invoices”.    We find that not all the bills of the opponents are questionable to conclude that original registration was itself obtained by fraud.  In any event, we cannot embrace the argument that because of the original registration of the respondent’s trade mark was purportedly obtained by wrongful means, the appellant should be allowed to proceed to registration.  

23.       We shall now examine the case laws relied on by the respondent.

            In AIR 953 SC 357 __ “National Sewing Thread Co. Ltd., Chidambaram  Vs James Chadwick & bros Ltd. and Registrar of Trade Marks (intervenor) “.  Our attention was invited to para 22 cited as below:-

            “The principle of law applicable to such cases are well stated.  The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant.  It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of Section 8 and therefore it should be registered. Moreover in deciding whether a particular trade mark is likely to deceive or cause confusion that duty is not discharged by arriving at the result by merely comparing it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the mark.  The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing. ”  

            There is no doubt in our mind that the adoption and use of the same mark for the same good will lead to total confusion in the market as affirmed by this decision.

24.       The  next case relied on by the respondent  was “M/s Jeevan Diesels & Electronic Ltd.   Vs  Jasbir Singh Chadha (HUF)   & Another, ” Delhi HC 2012(1) Civil Court cases 159 (Delhi) where it was held ‘A point urged but Court did not deal with same -- Party to file an application immediately either for review of any other application to bring this on record before the trial Court – having not done so, the matter cannot be allowed to be raised before the appellate Court.    We have already commented on this point elsewhere.       

25.       Another case relied on by the respondent was  “Mohd. Akram Ansari Vs Chief Election Officers & Others”    in Supreme Court  2008 (1) R.C.R. (Civil 566 in civil Appeal no. 4981 of 2006) where in para 14 it was observed as follows:-

            “ In this connection we would like to say that there is a presumption in law that a judge deals with all the points which have been pressed before him,  It often happens that in a petition or appeal several points  are taken in the memorandum of the petition or appeal, but at the time of arguments only some of these points are pressed.  Naturally a judge will deal only with the points which are pressed before him in the arguments and it will be presumed that the appellant gave up the other points, otherwise he would have dealt with them also.  If a point is not mentioned in the judgment of a Court, the presumption is that that point was never pressed before the learned Judge and it was given up.     However, that is a rebuttable presumption.  In case the petitioner contends that he had pressed that point also (which has not been dealt with in the impugned judgment), it is open to him to file an application before the same learned Judge ( or Bench) that the other points were in fact pressed, but were not dealt with in the impugned judgment, it is open to the concerned Court to pass appropriate orders, including an order of review.  However, it is not ordinarily open to the party to file an appeal and seek to argue a point which even if  taken in the petition or memorandum filed before the Court below.  The party who has this grievance must approach the same Court which passed the judgment, and urge that the other points were pressed but not dealt with”.  This is precisely the point that has been troubling us and the respondent has cited the right authority to prove his point. 

26.      The respondent also relied on was “S.P. Chengalvaraya Naidu (dead)   Vs   Jagannath (dead) & others (dead)”   -  AIR 1994 SC 853 where it was mentioned in para 7 of the Judgement as follows:-

            The High Court in our view, fell into patent error.  The short question before the High court was whether in the facts and circumstances of this case, Jagannath obtained the preliminary decree by playing fraud on the court.  The High Court, however, went haywire and made observations which are wholly perverse.  We do not agree with the High Court that there is no legal duty cast upon the plaintiff to come to court with a true case and prove it by  true evidence.  The principle of “finality of litigation” cannot be pressed to the extent of such an absurdity that it becomes as engine of fraud in the hands of dishonest litigants.  The courts of law, are meant for imparting justice between the parties.  One who comes to the court, must come with clean hands.  We are constrained to say that  more often than not, process of the court is being abused.  Property-grabbers, tax-evaders, bank-loan-dodgers and other unscrupulous persons from all walks of life find the court process a convenient lever to retain the illegal gains indefinitely,  We have no hesitation to say that a person whose case is based on falsehood, has no right to approach the court.  He can be summarily thrown  out at any stage of the litigation.”   

27.       The  next case relied on by the respondent  was M/s Gupta Enterprise   Vs  Gupta Enterprises & Another  -- AIR 1998 Delhi High Court 232 where the head note reads as follows:- 

            “ Trade and Merchandise Marks  Act (43 of 1958), S.21 ---Opposition to registration ---Locus standi – Application for registration of trade mark – Said trade mark alleged by opponent to be belonging to a partnership firm – Allegations by opponent that dissolution of said Firm took place and other partner surrendered his right in said firm in favour of opponent by an agreement – Failure on part of opponent to place said agreement before Registrar – Failure to prove by any document that he acquired exclusive proprietary right on said trade mark and to prove prior user – He had no locus standi to file opposition. ”

28.       Another case relied on by the respondent was  “Topline Shoes Ltd.,   Vs     Reserve Bank of India, ” Gujarat HC 2002 (1) ISJ (Banking) 175 where it was held by the Learned Judge   ” In view of the settled position of law, I am of  the view that Mr. H.M.G. Murthy on behalf of petitioner company, who is neither having a Power of Attorney on behalf of the company nor authorized by any resolution of the company, has no right of audience even though he may be Managing Director of the company”.

29.       The same principle (also relied on by Respondent ) was re-affirmed by the Apex Court  in ‘ State Bank of Travancor   Vs  Kingston Computer (I) P. Ltd., (SC) 2011 (2)  R.C.R. (Civil) 869 head note of which is reproduced below: -

            “Civil Procedure Code – Suit by a company – Who can file the suit on behalf of company – Suit for recovery of money filed by Plaintiff who claimed himself to be a Director of Company – No evidence produced that he was Director and no resolution of Board of Directors produced authorizing him to file the Suit – Suit filed on basis of authority letter issued by Chief Executive Officer of Company who had no such power – Suit rightly dismissed  by trial Court .

30.       The last case relied on was  “Ajodhya Bhagat and others    Vs   State of Bihar and others” – 1974 AIR (SC) 1886 where it was held “  that the appellant cannot be allowed to raise the grounds in appeal, which were not taken in the petition.”       

31.       Obviously,  the opponent/respondent are in the rice trade and have been alert enough to oppose the impugned mark at the first available opportunity. We agree with the applicant that many of the bill/invoices furnished by the opponent are prima facie suspicious.  But how does that improve the prospect of securing the applicant the registration of the impugned mark?.   This is not a case where the validity of the opponent’s registered trade mark is in issue.  This Board is meant for imparting justice between the parties.  One who comes to us must come with a clean hand. The Assistant Registrar who heard the matter has come to the conclusion that the applicants are not and cannot be the proprietor of the impugned trade mark.   He has also ruled that they are not entitled to the benefit Section 12.  The  respondent /opponent have adopted and registered the impugned mark prior in point of time.   The  Assistant Registrar has ruled that concurrent use of the mark  would result in likelihood of confusion.  It is not the case of the applicant that the first use in commerce of their mark is prior to the respondent/opponent.  The Assistant Registrar has taken judicial notice that the impugned mark is confusingly similar and they do not qualify for registration under Section 12 of the Act.  From the reading of the documents and pleading we believe that  the applicant/appellant are making an all out eleventh hour efforts to leapfrog into the register through the appellate route having failed to make the cut before the Assistant Registrar.   Adopting an identical mark for same goods in the same class is a high risk crime and  even the best case scenario so ably put forward by the Learned Counsel for the applicant/appellant at the hearing cannot save either the applicant or his application.  Who can deny that there will be total confusion in the market if the applicants trade mark is allowed to co-exist on the register?.  This Board will do its best to discourage illicit commerce by use of such tainted mark.  Making concession under Section 12 which is essentially meant for a public purpose in respect of the impugned mark is totally unwarranted giving rise to public misgivings and would erode the legislative intent for which it was engrafted in the Act.  On a totality of the case,   we have no reasons to interfere with the findings of the Assistant Registrar.    Once we come to this conclusion , all other incidental grounds vigorously raised both by the appellant (dubious supporting documents) and the respondent including (complicated ownership history of the appellant trade mark which passed through several hands) need not be gone into at length and in finer details to sort out unresolved conundrums and acknowledged disconnect as these do not materially alter the factual position of the case.  This is the gist of what can be extrapolated from the voluminous case record.  The appeal is accordingly dismissed with cost of Rs.5,000/- to be paid to the opponent /respondent herein.     

(V. Ravi)                                                                                      (S. Usha)

Technical Member                                                                   Vice Chairman

(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)

The provisions of Rule 50 (2) are mandatory and the Registrar has no discretion. If the evidence affidavit has not been filed within the time prescribed, the opposition would have to be deemed to have been abandoned. The Registrar has also no discretion in extending the time beyond the maximum period of one month prescribed under Rule 50(1).” 19. It is against the judgement cited in 2006 (32) PTC 287 (IPAB) that this order has been passed. Therefore, 2006 (32) PTC 287 (IPAB) cited has been over ruled. 20. In the present case the order shows that the Assistant Registrar had disallowed the TM-56 holding that the opponent may file their evidence in reply under Rule 52. 21. The order is correct. If the appellant wants to file any evidence in reply, they may do so subject to any objection that may be raised by the respondents herein that the evidence is not strictly in reply but the main evidence itself. Therefore, the evidence, if filed by the appellant, shall be strictly considered and only that evidence which is strictly in reply may be received as such and nothing else. The appeal is, therefore, dismissed with costs of Rs.2,500/-.

INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex Annexe-I, 2^nd Floor, 443 Anna Salai, Teynampet, Chennai-600018

(Circuit Bench Sitting at Delhi)

OA/8/2006/TM/DEL

FRIDAY, THIS THE 18^th DAY OF MAY, 2012

HON’BLE SMT. JUSTICE PRABHA SRIDEVAN    … CHAIRMAN

HON’BLE SHRI V. RAVI                                               … TECHNICAL MEMBER

M/s Mahalakshmi Products,

Sandeep Cinema Compound,

Muzzafarnagar (U.P.)                                                     … Applicant

(Represented by Advocate: Shri Shravan Kumar Bansal

and Shri Saurabh Kapoor)

Vs.

1. M/s Surinder Engineering Works,

     Dhobiana Road,

     Bhatinda,        Punjab – 151 001.

2.  The Assistant Registrar of Trade Marks,

     Baudhik Sampada Bhawan,

     Plot No. 32, Sector – 14,

     Dwarka, New Delhi – 110 075.                                  …  Respondents                                          

(Represented by Advocate: V.P.Ghiraiya)

ORDER (No.125/2012)

Hon’ble Smt. Justice Prabha Sridevan, Chairman:

          This appeal is against the dismissal of an application which deals with the procedure for the opponent to file his evidence.

2.                 The respondent filed an application bearing No. 615914 for registration of the mark VENUS label per se in class 9. It was advertised in the Trade Marks Journal No.1232 dated 01.10.2000. The appellant filed notice of opposition on 26.12.2000. The respondents filed their counter statement on 03.12.2001. This was served to the appellant on 23.09.2002. The appellant took several extensions of time for filing their evidence and extensions were duly granted on 26.12.2002, 27.01.2003, 26.02.2003, 30.04.2003, 30.06.2003, 28.07.2003 and 22.08.2003. Finally on 18.12.2003 they submitted a letter that “the opponents do not wish to file evidence in support of the opposition but want to rely upon the submissions made in the notice of opposition.” The respondent filed their evidence under Rule 51 which was taken on record and the appellant was asked to file evidence, if any, as per Rule 52, by an office letter dated 19.08.2004. It was then that the appellant filed the interlocutory petition in which the impugned order has been passed on 17.09.2004. The Assistant Registrar of Trade Marks held that the appellant could file their evidence in reply but the delay cannot be condoned. Against that the present appeal has been filed.

3.                  The learned counsel for the appellant submitted that the impugned order must be set aside in the interest of justice and it is submitted that procedural law should not come in the way of rendering justice and the time limits specified in the rules are not mandatory in nature and delay can be condoned. They relied on the following judgements:

(i)                 2006 (32) PTC 287 (IPAB) Hindustan Level Ltd., vs. Surinder Corporation & Anr.

(ii)               2009 (41) PTC 474 (Del.) Liberty Footwear Company vs. Force Footwear Company & Ors.,

(iii)              AIR 1997 SC 3243 Jaipur Development Authority vs. Smt. Kailashwati Devi

(iv)           2000 PTC 53 S.Z. & Company vs. Modern Bidi Factory

4.                 The learned counsel for the respondent submitted that there was nothing wrong with the impugned order. What is being filed is not the evidence in reply but the main evidence under Rule 50 which cannot be permitted. The learned counsel read out the relevant rules and submitted that the rules are very clear in this regard.

5.                 We will first refer to the judgements.

(i)           In 2006 (32) PTC 287 (supra) appellant was called upon to file evidence in support of opposition. The appellant in that case kept seeking extension of time and submitted that the power of the Registrar under Rule 50 was directory and not mandatory. The order of the Registrar was also cryptic and therefore the matter was remanded.

(ii)         In 2009 (41) PTC 474 (supra) where the Hon’ble Delhi High Court held that the IPAB has its power of following its own procedures and where no time is prescribed, Rule 14 can be invoked.

(iii)        AIR 1997 (SC) 3243. In this the parties sought permission to adduce additional evidence pending trial. This was refused on the ground that the party which had not filed evidence before the trial court cannot do so later. The Hon’ble Supreme Court held that there is no justification to restrict the provisions to Order 41 Rule 27(1) (aa) only to those who have adduced evidence in the trial court.

6.                 Section 21 of the Act deals with the opposition to registration. The following steps are spelt out in the said section:

(a) within three months from the date of advertisement or re-advertisement, any person may give his notice of opposition and the opponent has one more month, if allowed by the Registrar, on application made in the prescribed manner and on payment of prescribed fee. Rule 47(6) provides for the manner in which such applications for extension can be made i.e. in TM 44 before the statutory period of three months expires;

(b) The Registrar to whom this notice of opposition has been given, serves a copy of the same to the applicant;

(c) within two months from the receipt of this notice by the applicant, the applicant shall serve the counter statement. If he does not file the counter statement his application is deemed to have been abandoned. When the applicant sends counter statement, the Registrar serves a copy of it on the opponent and the evidence filed by the opponent and the applicant shall be submitted in the prescribed manner and within the prescribed time to the Registrar.

7.                 These, in brief, are the steps leading from the date of advertisement to the date when the Registrar begins his hearing. S.21(4) clearly states, that the evidence which the opponent submits must be in the prescribed manner and within the prescribed time and so it is with the applicant. It is important to remember that the procedures in Trade Marks application have a fixed time structure. This is important because the obtaining of registration, and the application for removal of such registration are all in public interest and in the interest of commerce. The purpose is to protect the commercial health. The Rules in this regard are Rules 52 and 53. Time is clearly specified and therefore, we cannot invoke Rule 51 which applies to extensions of time “not being a time expressly provided in this Act.” Rule 50 deals with evidence in support of opposition. The opponent has two months’ time to file evidence and one month more if the Registrar allows it.

8.                 In the present case, counter statement was served on the opponent on 23.09.2002. The evidence under R.50 should have been filed on or before 23.11.2002. The outer limit of extension that the appellant could have obtained is one months more i.e. 23.12.2002. On the other hand he had obtained several extensions which was extended periodically from 26.12.2002 to 22.08.2003. We are not sure if the Registrar has the power to do it in view of the explicit words in the rule. The Rule reads that the opponent has to leave with the Registrar such evidence by way of affidavit “within two months from service on him of a copy of counterstatement or within such period not exceeding one month in the aggregate thereafter.” This does not mean every extension of time can be one month. It should be understood to mean that the total extension of time, if calculated, should not exceed one month. So the maximum time an opponent has for filing his evidence can be three months and not more. The opponent has the option to file such evidence within the period mentioned above or he may intimate to the Registrar that he does not desire to adduce evidence but intends to rely on the facts stated in the notice of opposition.

9.                 Sub-rule 2 deals with the abandonment of opposition. That is, if he neither files his evidence within two months or within one month thereafter, nor has he stated in writing that he does not wish to file evidence, then the opposition is deemed to have been abandoned.

10.             Sub-rule (3) deals with the application for extension of time of period of one month.

11.             If we need any clarification regarding the period by which the two months time for filing evidence can be extended, sub-rule (3) makes it clear. Before the expiry of the period of two months the extension of the period of one month can be applied for in Form TM-56.

12.             We  are repeating this section only to make it abundantly clear to the Trade Marks Registry as well as to the practitioners that no extension of time can be taken if in aggregate three months period had lapsed from the date on which counterstatement had been served on the opponent.

13.             Once the Rule 50 period is past, we move to Rule 51. Once the applicant has received copies of the affidavit in support of opposition, or intimation that he does not desire to adduce evidence then, “within two months or within such further period not exceeding one month in aggregate thereafter, if allowed by the Registrar, the applicant may leave evidence by way of affidavit and deliver to the opponent copies of the same or he might intimate to the Registrar that he does not desire to adduce any evidence but to rely on the facts stated in the counterstatement, or on the evidence that had already been left by him along with the application.” Sub-rule (2) makes it clear that extension of time cannot be more than one month in aggregate above the statutory period of two months period.

14.             Next comes Rule 52, which is evidence in reply. This shall be filed within one month from the date of receipt of copies of the applicant’s affidavit or one month more, if the Registrar allows it and evidence by affidavit in reply. This evidence shall be confined to matters strictly in reply. The next stage is further evidence which can only be by leave of the Registrar who may, at any time, if he thinks fit grant such leave. The present application along with TM-56 has been filed to receive evidence under rule 50. The facts are as follows:

(i)                 on 18.10.2003, the appellant had written a letter stating that they do not wish to file evidence in support of opposition but want to rely only upon the submissions;

(ii)               This is informed to the respondent’s counsel by the Registrar of Trade Marks drawing his attention to rule 51. The corresponding rule in Trade and Merchandise Marks Rule 1959 were different. There, there was no restriction that only one month extension can be given and not more. Therefore, the decisions arising out of the earlier Act gave discretion to the Registrar to extend time. The present Rules came into force in 2003 on 15.09.2003. Thereafter the Registrar could not extend the time beyond the one month period. If we allow the applicant to file his evidence, after rule 51 stage has crossed, it would result in grave miscarriage of justice to the applicant. The applicant is given the option not to file any evidence but to rely on the facts stated in the counterstatement or the evidence already left by him in connection with the application. He may choose to do that because, the opponent had declared that he would not be filing any evidence but would be relying on the facts stated by him in the opposition. Now, by filing a condonation of delay petition if the opponent files the evidence under Rule 50, the applicant would be greatly prejudiced. It matters little whether in this case the applicant had exercised that option or not. We have to construe the rule as it should be applied regardless of the factual position. The Rule is clear and unambiguous. The object of the Rule and the effect of the Rule is further made clear by the words “this evidence shall be confined to matters strictly in reply” in Rule 52 which means that the opponent can not give the primary evidence to prove the facts pleaded in the statement of case. Under Rule 51 in the counterstatement the applicant may have raised a new allegation which goes to the root of the matter which would have a bearing on the opponent’s case which the opponent must rebut.  So he is given the opportunity to plead in reply and to file evidence to prove his pleadings. That is the purport of Rule 52.

(iii)              Nor can we expand the scope of Rule 53 which deals with further evidence. Further evidence itself means evidence in addition to whatever has been already filed. Therefore, if the opponent had filed evidence under Rule 50, or evidence in reply under Rule 52, then the Registrar may give him leave to file further evidence. So is the case with the applicant. Bur further evidence is not an opportunity to give the parties who have not filed any evidence earlier.

15.             The law in this regard has already been laid down by the Hon’ble Delhi High Court in 2007 (35) PTC 388 (Del.) Surinder Corporation, USA vs. Hindustan Lever Limited and another. As regards the effect of S.21 (4), the learned Judge held thus:

            “6…

The crucial expressions used in the aforesaid provision are “in the prescribed manner” and “within the prescribed time”. It, therefore, becomes necessary to examine as to what is meant by the word “prescribed”. Section 2(1) (s) defines “prescribed” to mean prescribed by rules made under the Act. Section 157 of the 1999 Act relates to the powers of the Central Government to make rules. Sub-section (2) provides the specific matters for which rules may be made. Clause (vii) of sub-section (2) specifically refers to submissions of evidence and the time there for under sub-section (4) of Section 21. It is clear that the Central Government had power to make rules with regard to inter alia, submissions of evidence and the time therefore under sub-section (4) of Section 21.”

16.     Then reading rule 50, the learned judge held in para 7 as follows:

“7. Reading Rule 50, it is clear that the evidence by way of affidavit in support of an opposition to the registration of a trade mark has to be filed within two months of the service of a copy of the counter-statement on the opponent. This period of two months is further extendable by a period of one month in the aggregate thereafter as the Registrar may on request allow. Clearly, in the first instance, the evidence affidavit has to be filed within two months of the receipt of a copy of the counter-statement. The Registrar may extend this period by a further one month in the aggregate if a request for the same is made in time. Sub-rule (2) of Rule 50 makes it clear that if an opponent takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition. It is also interesting to note that sub-rule (3) refers to the application for extension of the period of one month mentioned in sub-rule (1). It is also stipulated that such an application has to be made in Form TM-56 accompanied by the prescribed fee before the expiry of the period of two months mentioned therein. So, it is clear that a strict regimen has been prescribed for the filing of evidence by way of affidavit in support of an opposition. A plain reading of the provisions makes it abundantly clear that the evidence has to be filed within two months in the first instance and, if an appropriate application for extension of time is made before the expiry of the period of two months and if such application is allowed by the Registrar, then latest by a further month. In other words, under no circumstances can the evidence affidavit be filed beyond the maximum three months prescribed under the said rule. In case the opponent has not taken steps within the prescribed time, then there is no option left with the Registrar but to deem that the opponent has abandoned his opposition…

…

There is no doubt that Rule of the 2002 Rules has been validly framed in exercise of the Central Government’s rule making powers under Section 157 (1) in general and Section 157 (2) (vii) in particular. In this background, it can be safely stated that the time and manner prescribed in Rule 50 of the 2002 Rules should be treated as having been prescribed by the 1999 Act itself.

9. The decisions referred to in the cases of Delta Impex (supra), Pranam Enterprises (supra) and Popular Construction (supra) all clearly indicate that where the statute itself prescribes a maximum condonable period, then it would not be open to the authorities under that statute to extend the period for doing an act beyond the prescribed maximum condonable period. It is, therefore, clear that the Registrar does not have any power to extend the time for filing the evidence affidavit beyond the maximum period of one month after the initial period of two months.”

17.     The learned Judge has also dealt with rule 105 and S.131 in the foregoing words.

            “…The said rule stipulates that an application for extension of time under Section 131 of the 1999 Act has to be made in Form TM-56. It may be remembered that this is the same Form TM-56 in which an application for extension of time is required to be made under Rule 50 (3). However, the extension of time permissible under Rule 105 is not applicable to the following cases:

i) where time is expressly provided in the Act ; or

ii) where time is prescribed by Rule 79 or by sub-rule (4) of Rule 80; or

iii) where time for the extension of which provision is made in the rules.

Therefore, in cases where time is expressly provided for doing of an act under the 1999 Act or where provision for extension of time for doing such act is made in the rules itself, then Rule 105 would have no applicability…In any event, Rule 50 (1) specifically makes provision for the extension of time for filing the evidence affidavit. That being the case, Rule 105 cannot have any application…An exception has been carved out in Rule 105 with regard to provisions made in the Rules for extension of time. But, no exception has been made in Rule 50. Therefore, Rule 105 would have no application insofar as the filing of an evidence affidavit in support of an opposition beyond the prescribed time is concerned. It is only Rule 50 which would apply. In fact, sub-rule (2) of Rule 105 itself circumscribes the power of the Registrar to extend time by using the expression "subject to the provisions of the rules where a maximum time limit is prescribed". Rule 50 (1) prescribes a maximum time limit. Therefore, even under Rule 105, the Registrar cannot extend time beyond the prescribed maximum time limit”.

18.      The learned judge also dealt with the Full Bench judgement in Hastimal Jain and had observed that the words unless the Registrar otherwise directs are missing in the present rule 52 and that therefore,

            “The new Rule 50 (2) simply and plainly states that if an opponent takes no action under sub-rule (1) within the time prescribed therein, he shall be deemed to have abandoned his opposition….

            … Whereas Rule 50 of the 2002 Rules specifically provides for extension of time not exceeding one month in the aggregate. This introduces a clear stipulation that the Registrar’s powers to grant extension of time are limited to one month in the aggregate beyond the two months prescribed under the said Rule. This limitation was not there in the earlier Rule, but it is definitely there in Rule 50 of the 2002 Rules. The second instance is that the words “unless the Registrar directs” have been consciously deleted from sub-rule (2) of Rule 53 in its new incarnation in Rule 50(2). It is obvious that the legislature wanted to make the provision mandatory and did not want to give any discretion to the Registrar in this connection. The object is apparent that the delays be cut down in deciding the application for registration of a trade mark…

…

17. Lastly, I would like to observe that the Intellectual Property Appellate Board in arriving at the conclusion that it did was under the impression that the Registrar had discretion in the matter and was exercising a discretionary power. This premise is not correct. The provisions of Rule 50 (2) are mandatory and the Registrar has no discretion. If the evidence affidavit has not been filed within the time prescribed, the opposition would have to be deemed to have been abandoned. The Registrar has also no discretion in extending the time beyond the maximum period of one month prescribed under Rule 50(1).”

19.             It is against the judgement cited in 2006 (32) PTC 287 (IPAB) that this order has been passed. Therefore, 2006 (32) PTC 287 (IPAB) cited has been over ruled.

20.             In the present case the order shows that the Assistant Registrar had disallowed the TM-56 holding that the opponent may file their evidence in reply under Rule 52.

21.             The order is correct. If the appellant wants to file any evidence in reply, they may do so subject to any objection that may be raised by the respondents herein that the evidence is not strictly in reply but the main evidence itself. Therefore, the evidence, if filed by the appellant, shall be strictly considered and only that evidence which is strictly in reply may be received as such and nothing else. The appeal is, therefore, dismissed with costs of Rs.2,500/-.   

(V. RAVI)                                                                                  (JUSTICE PRABHA SRIDEVAN)

TECHNICAL MEMBER                                                       CHAIRMAN

(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)