The case of the applicant is that they are carrying on business in manufacture and sale of salt since the year 1976 in the name and style as “AKAR Enterprises”. The trade mark “AKAR” with a particular artistic work, 2 design and get up and fonts for marketing of salt adopted by the applicant and has become distinctive on the ground of long and continuous use and acquired reputation and goodwill. The applicant had obtained the registration of the trade mark “AKAR” under No.556425 and 556426 in class 30. =there is enormous delay of 10 years in filing their present application in spite of knowing very well that the first respondent is continuously using the impugned trade mark “AKASH” right from the year 1999 and even as per their admission to the effect that they came to know about it from 14/03/2009 but they have not raised their little finger to file the present application and to take any action. It is seen that even the Civil Suit was filed only in the year 2009 in OS No.4431/2009 on the file of Additional City Civil Court, Bengaluru and the present application is filed only after nine years. It is pertinent to note that both the applicant and first respondent are having their business place in Bengaluru and also in the same area at New Tharagupet and such being the position it is unimaginable to state that the applicant came to know the use of impugned trade mark only in the year 2009. Considering all these aspects we are of the firm view that the first respondent is entitled to invoke the provision under section 33 in respect of the effect of acquiescence though the learned counsel for the applicant took pain to contend the present facts would not make out the case of acquiescence. In view of the above said reasons we are unable to countenance such contention. In view of the aforesaid reasons the ORA/82/2014/TM/CH is hereby dismissed.

INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex, Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai – 600 018  ORA/82/2014/TM/CH TUESDAY THIS THE 1 st DAY OF MARCH, 2016.
Hon’ble Shri Justice K.N. Basha …Chairman
Hon'ble Shri Sanjeev Kumar Chaswal …Technical Member(Trademarks)
M/s AKAR Enterprises, at No.63, 2nd Main Road, Bangalore-560 002. … Applicant (Represented by – Mr. Harikrishna S. Holla)
 Vs.
1. M/s Sri Nanjundeshwara Traders, No.32/1, 3rd Cross 3rd Main Road, New Tharagupet, Bangalore – 560 002. …Respondent No.1 2. Mr. R.B. Vijayarajan, 1-H/3, Dhamotharanagar Main Road, Thoothukudi – 628003, TAMIL NADU. …Respondent No.2.
3. The Deputy Registrar of Trade Marks, I.P. Building, Industrial Area, G.S.T. Road, Chennai – 600032. …Respondent No.3. (Represented by – Mr.P.V.S. Giridhar) ORDER (No.20 of 2016) Hon’ble Shri Justice K.N. Basha, Chairman This application is filed by the applicant seeking for the relief of expunging and removing the trade mark “AKASH” bearing No.1147895 in class 30 in the name of M/s Sri Nanjundeshwara Traders, the first respondent herein. The second respondent stated to be a contract manufacturer of the first respondent herein.
CASE OF THE APPLICANT
2. The case of the applicant is that they are carrying on business in manufacture and sale of salt since the year 1976 in the name and style as “AKAR Enterprises”. The trade mark “AKAR” with a particular artistic work,
 2
design and get up and fonts for marketing of salt adopted by the applicant and has become distinctive on the ground of long and continuous use and acquired reputation and goodwill. The applicant had obtained the registration of the trade mark “AKAR” under No.556425 and 556426 in class 30.
3. The further case of the applicant is that they are the prior user and obtained prior registration of the trade mark “AKAR”. It is their case that they came to know about the use of the impugned trade mark “AKASH” by the first respondent herein which is deceptively similar to the applicant’s trade mark. It is stated that they have issued a legal notice dated 14/03/2009 calling upon the respondent 1 and 2 to cease and desist from using the trade mark “AKASH”. The first respondent has sent a reply to the legal notice through their counsel on 01/04/2009 denying the entire allegations. Thereafter the applicant filed a suit against the respondents 1 and 2 in OS No.4431/2009 on the file of the Additional City Civil Court, Bengaluru and the same is pending as on date.
4. It is stated that in view of the deceptive similarity of the impugned trade mark “AKASH” with that of the applicant’s trade mark “AKAR”
(i) It causes confusion among the consumers.
(ii) The applicant submitted that the first respondent have obtained the registration of the impugned trade mark “AKASH” in class 30 under No.1147895 on proposed to be used basis on 01/11/2002 and got the registration on 04/04/2005 and is valid upto 01/11/2022. Till the date of filing the application, the respondent has not been manufacturing and selling goods under class 30 of the Trade Marks Act. (iii) The applicant stated that the impugned trade mark is registered without any bonafide intention on the part of the first respondent to use the trade mark in relation to the goods and the first respondent is not using continuously for the period of five years from the date of which the trade mark is actually entered in the register and as such the 3 impugned trade mark is liable to be removed from the register on the ground of violation of section 47 (1) (a) and (b). It is also stated that there is violation of section 50 (ii) of the Trade Marks Act.
COUNTERSTATEMENT OF THE FIRST RESPONDENT
5. The first respondent emphatically denied the entire allegations contained in the application stating that all the grounds are frivolous, untenable and devoid of any factual or legal basis and there has been no violation of any provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act). (i) It is the case of the first respondent that they are the prior adopter and user of their trade mark “AKASH” and obtained a high reputation and goodwill due to its long, continuous and extensive use. In order to substantiate their claim they produced the sales invoices right from the year 1999-2000. They have also filed sales tax return along with their counter.
(ii) The first respondent applied for registration of their trade mark “AKASH” on 01/11/2002 since their trade mark attained the distinctive character and after following the procedure the registration certificate was issued to them and got the registration of the trade mark on 04/4/2005. It is the claim of the first respondent that they are using the trade mark from the year 1999 and produced the documents namely sales invoices from the year 2002.
(iii) The first respondent stated that though the applicant claimed usage of their trade mark from 1976 that they have stated even in the application in respect of sales turn over only from the year 1998-99. It is stated that the impugned trade mark “AKASH” is visually, phonetically and semantically different from the applicant’s trade mark “AKAR”. It is further 4 stated that even fonts are different in style, manner, artistic work and device from the applicant’s label.
(iv) The first respondent also stated that the impugned trade mark “AKASH” does not violate the provisions under section 9, 11, 18, 47 and 57 of the Act. It is categorically stated by the respondent that they are using the impugned trade mark right from the year 1999 honestly without any malafide intention. It is stated that the application filed by the applicant only in the year 2014 ie. fifteen years after the mark was registered in spite of knowing fully well all along the impugned mark was in wide use. The applicant has filed the present application with malafide motive. Therefore it is stated that the application is liable to be dismissed.
ARGUMENTS OF THE COUNSEL FOR APPLICANT
6. Mr. Harikrishan S. Holla, the learned counsel for the applicant would vehemently contend that the impugned trade mark “AKASH” has been wrongly registered and wrongly remaining in the register and as such the same is liable to be removed from the register and put forward the following contentions:-
(i) The applicant is the prior user of their trade mark “AKAR” right from the year 1976 in respect of salt and they have also obtained prior registration of their mark “AKAR” on 15/09/2000 and as such the first respondent suppressing registration of their mark and wrongly obtained the registration of the impugned mark “AKASH” only on 04/04/2005.
(ii) The applicant in order to substantiate their prior use they have stated about their sales turn over from the year 1998-99 to 2012-13 and thereby acquire distinctiveness by their long and continuous use of their trade mark “AKAR”.
5
(iii) The impugned trade mark “AKASH” is visually, phonetically and structurally similar to the applicant’s trade mark “AKAR” which would cause confusion among the consumers. (iv) In order to establish that they are selling their product salt under the trade mark “AKASH” they have produced the factual materials.
(v) The applicant with a view to proving the unauthorized use of impugned trade mark which is deceptively similar to that of the applicant’s trade mark, the applicant apart from issuing the legal notice in the year 2009 ultimately filed a Civil Suit under OS No.4431/2009 on the file of Additional City Civil Court at Bangaluru and the same is pending. The respondent having got the registration of the impugned trade mark without bonafide intention to use the same has caused irreparable damage to the business of the applicant and in view of their non use of the impugned trade mark provision under section 47 is also attracted.
(vi) Therefore, it is contended that the applicant has established the violation of the provisions under section 9, 11, 18, 47 and 57 by the first respondent and the impugned trade mark “AKASH” is liable to be expunged and removed from the register.
ARGUMENTS OF THE LEARNED COUNSEL FOR THE FIRST RESPONDENT
7. Mr. P.V.S. Giridhar, the learned counsel for the first respondent would strenuously contend that the present application is liable to be dismissed on the basis of the false, frivolous and baseless allegations contained in the application and would submit the following contentions :-
(i) The first respondent is the prior user of the impugned trade mark “AKASH” right from the year 1999 and the documents have been 6 produced from the year 1999 and got the registration on 04/04/2005 on the basis of the application submitted on 01/11/2002.
(ii) Though the applicant claimed the usage right from the year 1976, the applicant has miserably failed to prove by producing any single document to substantiate their claim except making bald and vague sales figures in the application without submitting any single document of invoices or any other documents.
(iii) The impugned trade mark “AKASH” cannot be stated to be visually, phonetically and semantically similar to that of the applicant’s trade mark “AKAR”.
(iv) Even the labels of the first respondent’s trade mark “AKASH” is entirely different from the label of the applicant’s trade mark “AKAR” in colour, design and style and both the fonts are entirely different.
(v) Even the meaning of the two trade marks viz. the first respondent trade mark “AKASH” means “SKY” and the applicant’s trade mark “AKAR” means “SHAPE” and as such there is no question of any deceptive similarity between the two marks in any manner which was likely to cause confusion and deception among the consumers. The applicant stated that they came to know about the impugned trade mark on 14/03/2009 and they have not taken any action of filing this present application immediately but they have waited for a period of 10 years by filing application before this Bench and as such the first respondent is entitled to invoke the provision under section 33 of the act as the applicant had acquiescence for a continuous period of five years of use of the trade mark of the first respondent and as such the applicant is not entitled to
7
seek relief of declaration that the registration of the impugned trade mark is invalid.
 DISCUSSIONS AND FINDINGS
8. We have given our careful, thoughtful and anxious consideration to the rival contentions put forward by either side and also thoroughly scanned through the entire materials available on record. 9. At the outset we are constrained to state that the impugned trade mark “AKASH” is visually, structurally and phonetically different from that of the applicants trade mark “AKAR” and as such there is no question of any deceptive similarity of the impugned trade mark as that of the applicant’s trade mark. We have also seen the labels of the trade marks of the applicants and the first respondent and it is pertinent to note that the label mark also consisting fonts in different style, colours, art works and device. If it is taken both the label together it looks entirely different from one another for a blanket eye. Therefore, by no stretch of imagination it can be contended by the applicant that the impugned trade mark “AKASH” is deceptively similar to that of the applicant’s trade mark “AKAR”. Therefore, there is no violation of provision under section 11 committed by the first respondent herein.
10. The applicant has claimed that they are the prior user of the trade mark “AKAR” right from the year 1976. It is pertinent to note that the applicant has not filed even a scrap of paper to establish that their trade mark is in use from the year 1976. It is seen that the applicant has come forward with the statement of sales turn over from the year 1998-99 to 2012-13. Here again we have to state that the said statement is nothing but the self declaration and cannot substantiate or authenticate by producing a single document of sales invoices or any other documents.
8
11. It is their further contention that they got the registration of their trade mark “AKAR” in the month of September, 2000 and as such they are the prior registered owner of their trade mark “AKAR” and the first respondent has got the registration only in the year 2005. It is well settled by a catena of decisions that mere registration itself is not sufficient to establish the prior use and it is incumbent on the part of the applicant to substantiate their claim of prior use by producing authenticated documents of sales of their goods. As far as the first respondent is concerned they have claimed prior use from the year 1999 and they have also produced registration of sales tax even in the year 1999 and there after produced the sales invoices from the year 2002 and they got the registration of their trade mark “AKASH” on 04/04/2005 on the basis of their application dated 01/11/2002. Therefore by no stretch of imagination it can be claimed by the applicant that they are the prior user.
12. The last but not the least contention put forward by the learned counsel for the first respondent is that there is enormous delay of 10 years in filing their present application in spite of knowing very well that the first respondent is continuously using the impugned trade mark “AKASH” right from the year 1999 and even as per their admission to the effect that they came to know about it from 14/03/2009 but they have not raised their little finger to file the present application and to take any action. It is seen that even the Civil Suit was filed only in the year 2009 in OS No.4431/2009 on the file of Additional City Civil Court, Bengaluru and the present application is filed only after nine years. It is pertinent to note that both the applicant and first respondent are having their business place in Bengaluru and also in the same area at New Tharagupet and such being the position it is unimaginable to state that the applicant came to know the use of impugned trade mark only in the year 2009. Considering all these aspects we are of the firm view that the first respondent is entitled to invoke the provision under section 33 in respect of the effect of acquiescence though the learned counsel for the applicant took pain to contend the present 
 9 
facts would not make out the case of acquiescence. In view of the above said reasons we are unable to countenance such contention. 
13. In view of the aforesaid reasons the ORA/82/2014/TM/CH is hereby dismissed. No order as to cost.
(SANJEEV KUMAR CHASWAL) (JUSTICE K.N. BASHA) TECHNICAL MEMBER CHAIRMAN Reportable : YES / NO plb

applicant is the proprietor of the trade mark CITI WEALTH ADVISORS/CITIGROUP WEALTH ADVISORS (Annexure ‘A’). The applicant came to know about the impugned trade mark through a search. They missed the advertisement of the impugned trade mark and therefore did not oppose the same. According to them “WEALTH ADVISORS” is descriptive and it would be against public interest to grant monopoly to a single trader to the word “WEALTH ADVISORS” involving services in Class 36 and it is also stated that the word “WEALTH ADVISORS” has become publici juris in respect of the services falling under Class 36. Therefore they sought for rectification. The evidence filed by them is at Annexure ‘A’. ‘A-16’ is an advertisement of the applicant which speaks of their online brokerage facility called “CITI WEALTH ADVISORS”. Exhibit ‘A-18’ is the dictionary meaning of wealth. Annexure ‘B-1” is “ASK Wealth Advisors”. Annexure ‘B-3’ is Wealth Advisors, Inc. Annexure ‘B-4’ is “Tamalpais Wealth Advisors” and so on.

INTELLECTUAL PROPERTY APPELLATE BOARD

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

ORA/7/2010/TM/CH

 FRIDAY, THIS THE 9^th DAY OF MARCH, 2012

Hon’ble Smt. Justice Prabha Sridevan                    …  Chairman

Hon’ble Ms.S. Usha                                                       …  Vice-Chairman

Citibank, N.A./Citigroup Inc.

399, Park Avenue,

New York,

United States of America, 10043.                                  …  Applicant

                         (By Advocate:  Mr. Rajesh Ramanathan)

                                                            Vs.

Wealth Advisors (India) Pvt. Ltd.

Lemuir House, Ground Floor,

10, G N Chetty Road,

T. Nagar,

CHENNAI-600017.                                                         …  Respondent

                (By Advocate:  Ms. Subha Shiney and Arun C. Mohan)

  ORDER (No.52/2012)

Hon’ble Smt. Justice Prabha Sridevan, Chairman:

            An application for removal of the mark Wealthadvisors (logo) bearing No.1317858 in Class 36. 

2.         According to the applicant, applicant is the proprietor of the trade mark CITI WEALTH ADVISORS/CITIGROUP WEALTH ADVISORS (Annexure ‘A’). The applicant came to know about the impugned trade mark through a search. They missed the advertisement of the impugned trade mark and therefore did not oppose the same. According to them “WEALTH ADVISORS” is descriptive and it would be against public interest to grant monopoly to a single trader to the word “WEALTH ADVISORS” involving services in Class 36 and it is also stated that the word “WEALTH ADVISORS” has become publici juris in respect of the services falling under Class 36. Therefore they sought for rectification. The evidence filed by them is at Annexure ‘A’. ‘A-16’ is an advertisement of the applicant which speaks of their online brokerage facility called “CITI WEALTH ADVISORS”. Exhibit ‘A-18’ is the dictionary meaning of wealth. Annexure ‘B-1” is “ASK Wealth Advisors”. Annexure ‘B-3’ is Wealth Advisors, Inc. Annexure ‘B-4’ is “Tamalpais Wealth Advisors” and so on.

3.         In the Counter Statement the respondent contended that they are a Full Service Investment Advisory Company established in the year 2004. They had honestly adopted the mark “Wealthadvisors” and “WAI” monogram logo. They have extensively and widely advertised the mark. According to them their mark has become distinctive and capable of distinguishing their services. They have been awarded the Best Performing Financial Advisor in South India. A lot of thought has gone into conceiving and creating the WAI logo. It has also set up its own Research and Support teams to fulfill these requirements. Its product lines include Mutual Deposits, Life Insurance and General Insurance. The Respondent caters to a large clientele including Banks, Institutions, Insurance Companies, Corporates, Trusts, Provident Funds, Small and Medium Enterprises, High Net Worth Investors and Emerging High Net Worth Investors. The respondent has described how they have designed the WAI logo. According to them the applicant is not the registered proprietor of the service mark “CITI WEALTH ADVISORS”. According to them “Wealthadvisors” is a coined word, an arbitrary word and it has fulfilled all the conditions and provisions for a trade mark to be registered. The respondent has referred to the extensive, unique and tremendous goodwill that has accrued to them by virtue of extensive use of the service mark “Wealthadvisors” and the logo. The respondent works closely with corporate giants like TATA Asset Management, Birla Sun Life Asset Management, IDFC Mutual Fund, Reliance Mutual Fund, ABN AMRO, HDFC Mutual Fund, Prudential ICICI Mutual Fund, DBS Chola Mutual Fund, JP Morgan Asset Management Franklin Templeton Investments, Karvy Computershare, CAMS Pvt. Ltd., Fortis Mutual Fund, Union Bank of India, City Union Bank, Hanmer & Partners Communications, Bharti AXA General Insurance and so on and  this goes to show the credibility of the respondent and the extent of its popularity in industry circle. The respondent submits that it is enrolled as an AMFI Registered Mutual Fund Advisor (Association of Mutual Funds in India) and is a winner at UTI MF – CNBC TV18 Financial Advisor Awards in the Category “Best Performing Regional Financial Advisor (South)” in the year 2008-09.  The respondent has been chosen to partner leading Banks like Union Bank of India and City Union Bank to offer Wealth Management Solutions to their respective clientele. The evidence they have filed are the certificate of incorporation with the Registrar of Companies and the registration with the SEBI, the details of their income tax return, the lease agreement with regard to the premises which they are occupying, the certificate by the Chartered Accountant to show the worth of their assets and that they are an independent full-service investment advisory company (emphasis supplied). They have also filed their equity mutual fund report of the Indian Corporate Briefs and various newspaper cuttings to show that the respondent has won awards.

4.         The learned Counsel for the applicant submitted that the impugned mark is devoid of distinctive character. It is descriptive and on the date of application the user was from 20.5.2004. He submitted that example of coined word/arbitrary trade marks are marks like “Apple” in relation to computer but the words “WEALTH ADVISORS” with regard to the services that they are providing is purely descriptive. He also submitted that with regard to the impugned mark which does not possess distinctiveness and is purely descriptive the Board should see whether it has acquired distinctiveness on the date of user, which is May, 2004. Only then the mark deserves to be registered and not otherwise.

5.         The learned Counsel for the respondent submitted that the two words are suggestive not descriptive and in the business, the words used are “Wealth Management” and not “Wealth Advisor”. The date of application is 28.10.2004. But there is evidence that they had used the mark from 20.5.2004. The mark is a logo and not ‘word per se’. The learned Counsel submitted that the applicants have not denied the prior adoption by the respondent. There are other firms using the word “Wealth Advisors” and no rectification has been filed against them. This is not a case where Section 36(2) of the Trade Marks Act, 1999 (in short ‘Act’) will apply. The learned Counsel submitted that the person alleging that the words are descriptive should prove the same. Further the services are given to a class of customers who are capable of distinguishing the marks and their services.

6.         The following cases were cited:

(i)         2008 (37) PTC 332 (IPAB) – Soci&eacutete des Produits Nestle S.A., Appellants Vs. Super Star Confectionery Co. (P) Ltd., Respondent: The decision of this Board where the word “COFFEE TIME” was held to be descriptive and that when the application has been made in the year 1991 claiming the user from the same year it could not have acquired distinctiveness in a short span of time. 

(ii)       2005 (30) PTC 1 (SC) – Godfrey Philips India Ltd., Appellant Vs. Girnar Food & Beverages (P) Ltd., Respondent in which it was held that a descriptive trade mark may be entitled to protection if it has assumed a secondary meaning identifying it with a particular product or being from a particular source – There is no such evidence here.

(iii)       [2001] EUECJ C-383/99 P – Procter & Gamble Company, Appellant Vs. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Respondent:: Here the mark was BABY-DRY and word combination like BABY-DRY can be regarded as being wholly descriptive in nature and they are lexical inventions bestowing distinctive power on the mark – Here “WEALTH ADVISORS” cannot denote any other services except the services that the respondent provides.

(iv)       1986 PTC 235 – Globe Super Parts, Plaintiff Vs. Blue Super Flame Industries and Another, Defendants: Here the mark was “SUPERFLAME” and it was held that it was a coined, fancy and invented name.  The word “SUPERFLAME” was used in connection with ‘Gas Cookers’ and ‘Stoves’ - That is not so in the present case.

(v)        2003 (26) PTC 555 (Raj) – Perry Bottling Company, Appellant Vs. S.S. Soda & Soft Drinks Company & Others, Respondents:  This relates to the mark “Perry’s Fruit Beer” as under:

“15.     The learned Counsel for the respondents tried to support the impugned order of the Trial Court by submitting that the rules framed under the Prevention of Food Adulteration Act, 1954 provide for the standards for Fruit Juice as well as four Fruit Beverage or Fruit Drinks. I perused Clause A.16.01 of the Prevention of Food Adulteration Rules, 1955 which provides that Fruit Juice means the unfermented and unconcentrated liquid expressed from sound, ripe, fresh fruit and with or without the substance mentioned in Clauses (a) and (b) of Clause A.16.01 and it also provides the standards of the acidity which should be present for different category of fruits etc.  Fruit Syrup is provided under Clause A.16.03 whereas Fruit Squash is provided under Clause A.16.04 and Fruit Beverage or Fruit Drinks is provided under Clause A.16.05 and, for other articles, in subsequent clauses but no word is given like “Fruit Beer” under these Rules also. It is also alleged by the plaintiff that the word “Fruit Beer” is a combination word invented by the plaintiff and is being used by the plaintiff since its inception. It is not the case of the defendants that the defendants invented this word “Fruit Beer”. The respondent-defendants could not place on record any material to show that the above word “Fruit Beer” was in existence prior to its use by the plaintiff and also that “Fruit Beer” represents a particular item or commodity by which it can be gathered that “Fruit Beer” is a description of a particular item and it was in existence before the date from when the plaintiff is claiming that he invented it. Learned Counsel could not point out from any dictionary that “Fruit Beer” is a name or has been defined any where. Therefore, prima facie, it is held that the plaintiff is registered holder of the trade mark – That does not apply to this case.

(vi)       [1972] R.P.C. 28 – Carlsberg Bryggerierne Og Tuborgs Bryggerier De Forene De Bryggerier Aktieselskabet and Carlsberg Scottish Importers Limited Vs. Tennent Caledonian Breweries Limited:  This relates to the mark “Special Brew” and it was held that it has become distinctive of the petitioner’s product.  In this case, the petitioner had distributed “Special Brew” in 1952 and in 1970. When the dispute arose the respondents claimed the name had become descriptive to a very strong lager – Here the usage is 5 months on the date of application so this decision does not apply.

(vii)      [1977] R.P.C. 21 – BLUE PARAFFIN Trade Mark:  This is related to the trade mark “BLUE PARAFFIN” as under:

“Held, dismissing the appeal, (1) that on the evidence, the words BLUE PARAFFIN possessed at least some inherent aptitude to distinguish the paraffin of the applicant’s proposed registered user and had been found to be in fact adapted to distinguish in a high degree.

(2)  that a mark is registrable provided that it has some inherent attitude to distinguish and that it is to some extent in fact adapted to distinguish the goods of the applicant from the goods of others.”

            There is no such evidence here.

(viii)     [1896] R.P.C. Vol.XIII 218 – Reddaway Vs. Banham: This is related to the words “Camel Hair” as under:

”Held, that when words which are descriptive of an article have come to denote the goods of a particular manufacturer, he is entitled to restrain others from description of the goods; that the findings of the jury were warranted by the evidence; that the Plaintiffs were entitled to an injunction in the form granted by the judge; and that the Order of the Court of Appeal should be reversed.”

            There is no such evidence in this case.

(ix)       [1900] R.P.C. Vol.XVII 266 – In the Matter of Trade Mark No.96,997 (“SAVONOL”): This is related to the trade mark “SAVONOL” and it was held that “SAVONOL” was an invented word and the motion to rectify must be dismissed with costs – We hold “Wealth Advisors” is not an invented word but description.

(x)        J. Thomas McCarthy, Third Edition, Volume 1 published by Clark Boardman Callaghan 11.23 - McCarthy on Trademarks and Unfair Competition: This is an extract from McCarthy on Trademarks and Unfair Competition which gives a list of non-descriptive words and merely suggestive, to include, words like ACOUSTIC RESEARCH for loud speakers.

(xi)       2011-4-L.W.449 – Eco Lean Research & Development A/S, Petitioner Vs. Intellectual Property Appellate Board, Chennai-18 and The Assistant Registrar of Trade Marks, Trade Marks Registry, Chennai-32, Respondents:  This was cited to show that one of the test is to consider the nature and kind of customers – That does not arise here where we have held that the mark is purely descriptive.

(xii)      2007 (34) PTC 370(Del.) – Ishi Khosla, Plaintiff Vs. Anil Aggarwal and Anr., Defendants: This is related to the mark “Whole Foods”.  It was held by the Delhi High Court that the plaintiff was using the term differentially from the dictionary meaning given to the words and therefore interim injunction was granted – Here the mark has not acquired secondary meaning.

7.         In this case we have already seen the documents, the Certificate of the Chartered Accountants which shows that the respondent company is an independent full-service investment advisory company. The words “Wealth Advisors” clearly indicate the nature of services provided by the respondent which provide solutions for wealth management including risk profiling, asset allocation and portfolio monitoring. Any one with a fair knowledge of English if confronted with the word “Wealth Advisors” will surely understand that the person who describes himself as providing services under that name would be advising how to invest, allocate their funds in shares and how to increase their wealth. The word more descriptive than “Wealth Advisors” cannot be found for describing the services provided by the company. It is identical to the case reported in 2008 (37)PTC 332 (IPAB) (cited supra) where this Board held that if the user was claimed in 1991 and the application was made in 1991 the trade mark could not have acquired distinctiveness. Here the user claimed is 2004 and the application is made in 2004. There is no evidence to show that in the short span of few months the word “WEALTH ADVISORS” had become so associated with the respondent as to distinguish. The fact that their income is high and they have filed huge returns is hardly relevant. All the advertisements are newspaper reportings subsequent to the date of application can also not lend strength to the respondent’s case. 

8.         Ultimately in considering the question whether a mark has acquired distinctiveness or is descriptive it would depend on the facts of the case and the evidence.

9.         In the present case, at the risk of repetition, the mark was applied for on 28.10.2004 claiming user from 20.5.2004 and therefore the mark should have attained distinctiveness in 5 months, that is, the date of application since the words “WEALTH ADVISORS” are purely and absolutely descriptive. The applicant is a Bank which provides services/describes itself as “CITI WEALTH ADVISOR” and therefore the applicant is rightly aggrieved that to grant monopoly over the words “WEALTH ADVISORS” to one person would cause injury to them. In fact this is another reason why the mark should be rectified because the trade mark itself consists of words which are purely descriptive. The pleadings regarding how WAI logo was devised is not relevant here and since the mark mainly consists of the word “WEALTH ADVISORS”, that is the only feature which strikes the eye.

10.       We will summarise our description regarding distinctiveness.  In this case on the date of application even according to the respondent they have been using only for a few months. What they got is some newspaper reports and the income tax returns. To our mind this does not amount to use of the mark in relation to the goods or services; in this case services.  Even if we were to accept it as “use” it does not equal distinctiveness and in all trade marks proceedings whenever we refer to the word “use” it is always in relation to the services or goods and when we talk of distinctiveness or descriptiveness those words are also used only in relation to the use. The mark cannot be considered in isolation.  To use the oft quoted example of “Apple” which the learned Counsel for the applicant also referred to,  if “Apple” is used as a trade mark for tinned apples, then it is descriptive, but when “Apple” is used for computers it was held to be distinctive. Therefore there can be no decision regarding the registrability of a mark in vacuum, it has to be in relation to the goods or services. 

11.       The respondents have described themselves as an “investment advisory company”. Therefore when we consider the services that they render there could be no argument that “Wealth Advisors” describes them. They may as well have called themselves “Investment Advisors”.  It makes no difference.  It clearly describes their services. It is purely a descriptive mark. In 1996 RPC page 281 – British Sugar PLC, Plaintiff Vs. James Robertson & Sons Ltd., Defendant, the following passage is found:

“…There is an unspoken and illogical assumption that “use equals distinctiveness”. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word “Soap” as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark.”

They cannot do better than this.

12.       The submission of the learned Counsel for the applicant that the mark is purely descriptive must be accepted. The learned Counsel for the respondent raised another objection. According to him no rectification application can be filed unless the certificate has been issued to the registered proprietor. The learned Counsel for the applicant submitted that on verification from the web, it was found that it was registered. On 14.9.2011 we directed the Trade Marks registry to send us the records.  Under cover of letter dated 8.12.2011, the Deputy Registrar forwarded the reconstituted file which showed that registration was granted in 2009. Therefore the ORA is not premature.  We see no condition imposed in the Act that Section 57(1) & (2) can be invoked only if the registration certificate has been issued to the registered proprietor. If the registered proprietor is able to demonstrate that registration has in fact, not been granted then the position may be different. But in this case the registration has been granted as is evident from the records of the Trade Marks Registry and therefore the rectification has been rightly filed. The objection of the Counsel for the respondent deserves to be rejected.

13.       ORA/7/2010/TM/CH is allowed. The Registrar is directed to remove the trade mark registered under No.1317858 in Class 36 from the register of trade marks. No order as to costs.

(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.)

INTELLECTUAL PROPERTY APPELLATE BOARD-In these circumstances, the registrations in her name deserve to be removed. It appears that the division of property between the estranged couple is under consideration before the matrimonial Court, at that time the rights to the intellectual property in these trade marks may also be decided. The Civil Court has directed the Registrar of Trademarks to maintain a status quo, the respondent apprehended that blank papers signed by her may be misused by her husband Mr. Matang Sinh. That is to restrain the Registrar from effecting any change of name. But this status quo cannot stand in the way of our deciding these rectification applications which have been filed in accordance with law. 16. For all the aforesaid reasons, the rectification applications ORA/64/2009/TM/DEL and ORA/65/2009/TM/DEL are allowed with a direction to the Registrar of Trade Marks to remove the trade marks registered under Nos.1239523 and 1239515 in Class 41 and Class 38 respectively from the register of Trade Marks. All Miscellaneous Petitions are closed.

INTELLECTUAL PROPERTY APPELLATE BOARD

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

 * * * * * * *

CIRCUIT BENCH SITTING AT DELHI

M.P. No.51/2009 IN ORA/64/2009/TM/DEL & ORA/64/2009/TM/DEL

AND

M.P. No.52/2009 IN ORA/65/2009/TM/DEL & ORA/65/2009/TM/DEL

 FRIDAY, THIS THE 9th DAY OF  MARCH, 2012

Hon’ble Smt. Justice Prabha Sridevan                    …  Chairman

Hon’ble Ms.S. Usha                                                        … Vice-Chairman

Positiv Television Private Limited

7C, Doctors’ Lane

New Delhi-110001                                                            …  Applicant

(By Advocate:  Shri Neeraj Grover)

                                                            Vs.

1.   Ms. Manoranjana Singh

      D-47, Gulmohar Park

      New Delhi-110049

      Also at

      103, Kharghuli

       Guwahati

       ASSAM-781004.                                  

2.  The Registrar of Trade Marks

      Trade Marks Registry

       Baudhik Sampada Bhawan

       Plot No.32, Sector-14,

       Dwarka

       New Delhi-110075.                                           … Respondents

                          (By Advocate:  Shri Harsh Vardhan Tripati)

  ORDER(No.54/2012)

Hon’ble Smt. Justice Prabha Sridevan:

The applicant has applied for removal of the trade mark under Nos.1239523 and 1239515 in the name of the first respondent in Class 41 and Class 38 respectively. The dispute is really an off shoot of the matrimonial discord between the respondent and her husband.

2.         The applicant Company was incorporated on 21.01.2003 with Mr. Matang Sinh and Manoranjana Sinh, as its first Directors (the parties describe themselves as Sinh also and that does not have a bearing on the decision in this case). According to the applicant, it was the brainchild of Mr. Matang Sinh, former Union Minister and Member of Parliament. The first respondent was the Director of the Company because she was his wife. He floated other companies including NE Television Network Pvt. Ltd. and North East Multimedia Private Limited. The first respondent had no responsibility or any active role to play in the running of his company. After the incorporation, the applicant company had adopted the trade/service mark(s) NE Television, NE TV, NE News, NE Network for launching its own TV channels. The adoption of the trade mark(s) was duly resolved and recorded in the Minutes of the Board meeting. The Board of Directors authorized the first respondent to take necessary steps for protection of the trade marks of the company by filing appropriate applications for registration of the trade marks in the name and on behalf of the applicant company. The first respondent misused the authorization and fraudulently obtained registration of the trade mark “NE Television” and “NE News” in her own name instead of obtaining it in the name of the applicant company. Appropriate applications were filed by the respective companies and the marks were brought into active use by the applicant’s company since March, 2003. By long and continuous use these marks have obtained popularity and reputation and have come to be associated with the applicant’s companies. In the meanwhile, the relationship between Mr. Matang Sinh and the respondent deteriorated. The respondent No.1 preferred to stay back in Guwahati away from her husband pretending to look after the administrative affairs of the company but actually to siphon off the funds of the companies. Various allegations regarding official embezzlement, misappropriation of funds by the first respondent and also adultery have been stated in the rectification petitions but we are not concerned with them. We are only concerned with whether the marks have to be removed.  But it is easy to see that there has been action by one party and retaliation by the other whether justifiable or otherwise. Criminal proceedings are pending between each other and the proceedings under the “Protection of Women from the Domestic Violence Act, 2005” are also pending and also a petition for divorce. But for the purpose of this case we will only refer to the pleadings that are relevant. Firstly on 11.2.2009, the first respondent entered the registered office of the applicant company with some musclemen and she threatened the employees and staff of the applicant company that she would demolish the business of the applicant company and that she had the exclusive rights to use the trade marks. To prevent the repetition of such action, a Suit was filed before the Hon’ble High Court of Delhi and ex parte orders were obtained on 12.2.2009 to restrain her from entering the applicant’s company. It is only then that it was learnt that the trade marks had been registered in her name though it continues to be the property of the applicant. Enquiries further revealed that these two applications had been made claiming user from 1.9.2003/9.1.2003 though the applicant company had adopted them much earlier and the respondent had never used the mark in her personal capacity till date. The applicant apprehends that the respondent would file a suit for infringement of the registrations which she has unlawfully obtained in her name. Being aggrieved, they have filed these rectification applications for removal of the mark under Sections 47 and 57 of the Trade Marks Act, 1999 (hereinafter referred to as the ‘Act’).

3.         The documents filed along with the applications are Exhibit ‘P-1’ which is the extracts of the Minutes of the Meeting of the Board of Directors on 12.2.2009 to seek rectification of the marks. Exhibit ‘P-2’ is the certificate of incorporation of the petitioner company. Exhibit ‘P-3’ is the copy of Form No.32 which shows that Mr. Matang Sinh and the respondent had been appointed as Directors. Exhibit ‘P-4A’ is the certificate of incorporation of “NE Television Network Private Limited” and the exhibit ‘P-4C’ is the certificate of incorporation of “Positiv Radio Private Limited”. Exhibit ‘P-4’ series are the certificates of incorporation of the group companies of the petitioner. Exhibit ‘P-5’ is the extract of the Minutes of the Meeting of the Board of Directors of the applicant’s company by which it is resolved that the respondent No.1 is authorized to appear and act on behalf and represent the company inter alia before the Trade Marks office and also for registration of the names of the channel in the Trade Marks office.  Exhibit ‘P-6’ series are copies of the application filed by the applicant company with the Ministry of Information & Broadcasting along with the supporting undertaking and other documents signed by the respondent as authorized signatory of the company and as the Chairperson for the applicant company and where the Ministry of Information & Broadcasting has addressed her as the Chairperson of the applicant company. Exhibit ‘P-7’ collectively are documents relating to the use of the channel by the applicant and the group companies. The advertisement bills raised are in the name of the applicant’s company for broadcasting in Ne Television or NE Hifi.  Exhibit ‘P8’ is the copy of Form 32 submitted with the Registrar of Companies.  Exhibit ‘P9’ is the copy of the F.I.R. got registered by the first respondent against Mr. Matang Sinh. Even here she has described herself as CMD, NETV. Exhibit ‘P10’ collectively are copies of the orders passed by the Hon’ble Delhi High Court. Exhibit ‘P11” and ‘P12’ are print outs of the online status of the trade marks No.1239523 and No.1239526 in Class 41. Exhibit ‘P13’ is for trade mark No.1239515 in Class 38. In all these, the proprietor’s name is shown as the first respondent. Exhibits ‘P14’ to ‘P17’ are copies of the relevant Trade Marks Journal.

4.         In response to this the first respondent filed her counter statement. All the allegations have been denied. It is alleged that the rectification petitions are a belated attempt by the applicant to rob the respondent of her statutory rights and the reputation she has built over a number of years. It is claimed that the respondent is an established media professional for over 20 years and that she has started her own media business in 2000 and that in connection with all the businesses she was the first one to adopt the distinctive trade mark ‘Ne” and “NE” (including the stylized versions thereof) and logos. According to her, it was she who permitted the applicant to use the trade mark “Ne” as the company was set up by her to operate her broadcast and entertainment business. She got married in 1995 to Matang Sinh. She left her job and career after the marriage.  She set up two companies, Overarch Communications Private Limited and Positiv Press Private Limited. The respondent owned 60% of the equity stake and Mr. Matang Sinh did not own any equity in these companies. Initially the respondent was undertaking programming for and on behalf of the Doordarshan Kendra, Guwahati. Then she decided to launch the said channel under the applicant’s company. Mr. Matang Sinh was made as one of the Directors only because he was her husband. It was her idea and her initial art work and logo that resulted in the creation of the logo. The trade marks have been identified solely with the respondent. It was she and her father who used their goodwill to convince the Ministry of Information & Broadcasting to grant licenses. Against this background, she was shocked to come across a public notice issued by the applicant’s company to the public not to interact with her. In October 2008, the respondent orally communicated to the Director of the applicant’s company that she does not wish that the applicant use the trade marks in question. When they did not stop the illegal use she issued a legal notice on 23.3.2009. After the illegal ouster of the respondent from the management of the applicant’s company, the quality of the programmes dropped drastically. She therefore filed a Civil Suit before the District Judge and an order of status quo was directed to be enabled. She denied the Minutes of the Board Meeting as was alleged by the applicant’s company. According to her there are no merits in the rectification petitions. This is the result only of a marital disharmony. She has filed evidence in support of her counter statement. Annexure ‘D1’ are documents to show the association of the respondent with “NeTV”. ‘D1’ is addressed by The Gauhati Manipuri Social Organisation to the respondent praising the fearless reporting through her popular private channel. There is another document which speaks of an attack on NETV chief. All these documents which are web pages describe the first respondent as CMD, NETV.  Annexure ‘D2’ is the notice addressed to the applicant company, Mr. Matang Sinh and Mr.R.N. Singh.  Here it is stated -

“8.        Our client permitted the Company to use “Ne” in February 2003 and subsequently permitted the Company to start using Ne TV and Ne Television in relation to broadcast and entertainment services. The Company’s use was a permissive use and the Company was permitted to use the ‘Ne Trademarks” in consideration of our Client’s control of the business and since Our Client was solely responsible for setting up, managing and developing the business of the Company, since the very inception of the Company and also because Our Client controlled the Company’s use of the ‘Ne Trademarks” and hence the quality of services offered under “Ne Trademarks, while managing the business of the Company. The Company was also permitted to use “netv” in the domain name of the Company’s website and other activities.”

Annexure ‘D3’ is a letter addressed to the Registrar of Trade Marks by the respondent stating that there have been blank papers signed by her in good faith when she and her husband lived in harmony which can be misused. Annexure ‘D4’ is a copy of the plaint filed by her and it says that onFebruary 11, 2009, the plaintiff, that is, the first respondent had asked the applicant and her husband and other officers of the applicant company not to use the trade mark. Annexure ‘D5’ is the order ofstatus quo.

5.         To this a reply was filed by the applicant denying her statement that she had a valid reputation as a journalist which has been built over the years. All her statements made in the counter statement have been denied.

6.         On the basis of these, the Counsel made their respective submissions.

7.         The learned Counsel for the applicant submitted that there was never any intention nor any authorization to the respondent to register the mark in her name. Therefore when she made an application to the Registrar of Trade Marks it could only be in her capacity as Director of the applicant’s company. She cannot press the claim of exclusive right. The licenses have been applied only in the name of the applicant’s company, the adoption and user is .by the applicant’s company. The claim of proprietorship made before the Trade Marks Registry was on behalf of the applicant and not in her name. The respondent has no TV channel. The respondent has misused her authority, she is not the proprietor of the mark. The learned Counsel for the appellant referred to AIR 1957 Mad 76 – B.S. Ramappa Vs. B. Monappa and Anr. which was the case of registration of a trade mark obtained by fraud.

8.         The learned Counsel for the respondent submitted that when the application was made in 2004, considering the relationship, it is difficult to believe that only in 2008, the petitioner Mr. Matang Sinh knew about the registration in the respondent’s name. It is not correct to say that she played no active role in the company. She was authorized to do everything. The Company Law Board has ordered that she should be reinstated as Director. The respondent’s documents show that she is identified with the quality of services offered and therefore the goodwill associated with the trade mark must accrue to the respondent.

9.         We have considered the materials on record and the documents. The applicant company was incorporated with the respondent and her husband as Directors. The two impugned trade marks are “NE Television” and “Ne Television”. On 25^th October, 2004, NE Television Network Private Limited was incorporated.  Exhibit ‘P5’ is a Board resolution dated 22.1.2003 which states that the Chairman had -

“….apprised the Board that the Company proposes to launch TV Channels and had adopted the names “NE Television”, “NE Network”, “NE TV’ and “NE News” for such channels.  The Board has been apprised that mandatory licenses and permissions are required to be obtained from the Ministry of Information and Broadcasting to run the TV Channels. The Board also seeks to obtain protection for the names of the TV channels under the relevant rules so as to prevent others from launching similar names in respect of TV channels.

It was discussed in the meeting to authorize Mrs. Manoranjana Sinh, Director of the Company to sign and execute different documents on behalf of the Company and to authorize her with the general powers to apply/file for the licenses and permissions from the Ministry of Information and Broadcasting for uplinking of aforesaid channels and also to get the said name registered with the Trademarks office:

“RESOLVED THAT Mrs. Manoranjana Sinh, Director of the Company be and is hereby authorized to sign and execute all agreements, undertakings, applications, power of attorneys, papers, receipts, all documents relating to the application seeking licenses and permissions from the Ministry of Information and Broadcasting for uplinking of the said TV channels and registration of names of the Channels with the Trade Marks Office in the name and on behalf of the Company and to do all or any of the acts, deeds, matters and things as may be considered expedient and necessary on behalf of the Company.

RESOLVED FURTHER THAT Mr. Manoranjana Sinh, Director be and is hereby authorized to appear and act on behalf and represent the Company in all matters before the Ministry of Information and Broadcasting, Trade Marks Office and to sign and execute all applications, returns, objections, documents, agreements and papers that may be required for and on behalf of the Company in or in relation to any matter in which it is interested or may be concerned in any way.

RESOLVED FURTHER THAT Mr Manoranjana Sinh, Director be and is hereby authorized to sub-delegate all or any powers hereby conferred to other officer/officers of the Company as she may think fit.”

This is the crucial document.

10.       The application made for permission to uplink the TV channel to the Ministry of Information & Broadcasting shows that the applicant is the applicant’s company. The official seal carries the applicant company’s name with the words “NE NETWORK”. ‘P6C’ is the affidavit/undertaking where the first respondent in the capacity of the Chairperson has applied for approval and permission for uplinking of the TV channel “NE NETWORK”. In the Form 2B which is signed by her as Chairperson of the Positiv Television Pvt. Ltd. has stated –

“Whereas I, M/s Positiv Television Pvt. Ltd. have applied to the Ministry of Information  & Broadcasting for approval/permission for uplinking of a TV channel NE NETWORK….”

Exhibit ‘P6D’ is addressed to the Deputy Director (INSAT) on behalf of the applicant’s company which seeks for permission for uplinking of “NE TV” news channel and it says the following words –

“It is hereby confirmed and requested that the name of the Channel will be “NE TV” and not NE NETWORK as mentioned in our original application, the change in name being only for simplicity of message and easy identification of the Channel. Hence the approval may kindly be given in the name of “NE TV”.”

Exhibit ‘P6E’ is the communication from the Ministry of Information & Broadcasting in which the aforesaid Deputy Director had addressed the respondent as Chairperson of the applicant’s company stating that –

“…the undersigned is directed to convey permission to M/s. Positiv Television Pvt. Ltd. to uplink their “NE Television” channel in Regional languages of North East & English language (in digital mode) through applicant company’s own teleport located at Rehabari, A.K. Azad Road, Guwahati (Assam), for a period of ten years, subject to the following:

i)                    Compliance with terms & conditions contained in Annexures I, II.

ii)                  Compliance with the undertakings given by the applicant cokpany in the affidavits as in Form 2A and Form 2B submitted along with its application, as referred above, during the period of validity of this permission.

iii)                That the applicant company has been permitted to utilize THAICOM 3 satellite, and it should switch over to INSAT capacity when becomes available.  In this regard, the licence would be reviewed after three years.”

and by paragraph 3 the petitioner is advised to approach the WPC Wing, Ministry of Communications & IT for obtaining operational license.  Exhibit ‘P6F’ is a brief letter from the Ministry of Information & Broadcasting addressed to the respondent stating that –

“This is with reference to your letter dated 24.12.2003 requesting for change in satellite with regard to permission given to your company vide this Ministry’s letter of even number dated 21.10.2003 to uplink your “NE TELEVISION” channel from India using THAICOM 3 satellite. You have requested to uplink through APR-1 (INSAT 2E) instead of THAICOM 3 satellite…”

and the reference is clearly about permission given to the company. The permission is not given to the respondent. Exhibit ‘P7’ collectively shows that for the advertisements made in any television channel, payments should be made in favour of the applicant. So the entire evidence filed by the applicant shows that the respondent was only acting in her capacity of Chairman of the applicant. And any reference to her in connection with NE TV is only because of the official capacity.

11.       From the evidence we are unable to accept the respondent’s claim that it was she who started the company and that she was in the media business, and that she had built up reputation as a journalist. These are submissions made by her Counsel not supported by evidence. But the evidence before us shows that it is only after the Board Resolution that permission from the relevant Ministries was sought. This was signed by her only in her official capacity. The applicant’s company launched TV channels adopting the name “NE Television”, “NE Network”, “NE TV” and “NE News”. The Chairman apprised the Board as seen from the extract of the Minutes of the Meeting dated 22.1.2003. It is thereafter that the permission to uplink the TV channel was applied for. This is signed by the respondent as Chairperson and the authorized signatory of the Company.  It is on 22.1.2003 that the Resolution was passed authorizing her to sign all applications seeking licenses and permissions from the Ministry of Information & Broadcasting for uplinking such channels. The Resolution has already been extracted above. In this case it is evident we must accept the applicant’s case that any application made by her has only been in her official capacity and claiming proprietorship as an individual cannot be accepted.

12.       We called for the records relating to the Board meeting from the Central Bureau of Investigation (CBI) on 16.2.2012. The officer from the CBI produced the documents. We have gone through the records. It records the presence of the respondent in the Board meeting held on 22.1.2003. In fact other subsequent Board meetings also record her presence until perhaps the marital disputes started. In the absence of any evidence to the contrary we have to accept that the respondent was present at the Board meeting.

13.       In AIR 1957 Mad 76 (cited supra), the dispute was between two proprietors, who were the Sons of one Bolar Ramappa.  Ramappa had two factories, one called ‘Indian National Tile and Lime Works’ and the other called ‘Jayaram Tile Works’. The tiles manufactured by Ramappa had a trade mark which may be described as “Taj Double Bavta”. The appellant who is also Ramappa was assisting his father. The appellant made an application to the Registrar of Trade Marks in 1946 to register the trade mark. He gave his business address as Manager, Jayaram Tile Works claiming user from 1936. The application was in the year 1946.  It was registered on 12.5.1950. The father settled ‘Indian National Tiles Works” who was one of the respondents by a deed document and on 8.2.1953 the father settled for Ramappa, the appellant, “Jayaram Tile Factory”. The dispute started because the respondent also started using the trade mark in respect of the father. The appellant filed a suit for infringement.  He claimed that he was the registered proprietor of the trade mark and that by the settlement deed he was now the proprietor of the words “Jayaram Tile Factory”. The respondent however alleged that the registration had been obtained by the appellant by fraud which consisted of wilful misrepresentation by the appellant that he was the sole proprietor of the trade mark. The father was alive during the trial and his evidence professes ignorance of the action of the appellant. The trial Court held that the claim made by him that he was the proprietor of the mark was incorrect. The Hon’ble Madras High Court directed a joint registration, but the Division Bench did not accept it and directed the entry in the appellant’s favour must be expunged. Applying this ratio we hold that the registration was obtained by wilful misrepresentation.

14.       In the Suit filed by the respondent it is alleged that on 11.2.2009 the respondent had repeatedly reminded the applicant and other officers “to stop using the “Ne Trademarks” and the Works, including on February 11, 2009”. In fact the cause of action in the Suit refers to 11.2.2009 and another in March, 2009. The notice also refers to the repeated reminders to the applicant company and its officers to stop using the “Ne Trademarks” including on February 11, 2009. This notice is dated 23.3.2009 which speaks of permission given by the respondent to use the mark in February, 2003. The Suit filed by the applicant is dated 12.2.2009. According to the applicant, it was a case of illegal entry by the respondent along with musclemen and followed by verbal duet and threats. According to the respondent she reminded the applicant and other officers to stop using the trade marks including on 11.2.2009. The resolution of the Board of Directors of the applicant is on 22.1.2003. The applications to the various Ministries are in April, 2003. The respondent’s case is that some time in February, 2003 she directed the applicant to use the mark. If as per her submission she permitted the applicant to use the mark in February, 2003, then her claim of user from 1.9.2003 in the application runs contrary to this submission. The applications are made on September 25, 2003 claiming the user from 1.9.2003 in one case and in the other from January, 2003.  But in her counter statement she states that she had adopted and started using it from January, 2003. Further if her case is true, the Board resolution was unnecessary. If she had indeed created an original art work and commissioned an independent graphics designer for valuable consideration as stated in paragraph 16 of her counter statement, then she should have named the graphics designer or provided evidence in this regard which might have made her case more convincing. It is clear that by using the authorization given by the applicant company to apply before the Registrar of Trade Marks, she had applied in her own name. These acts would have naturally come to light only when the marital discord arose and she started exerting her personal right adverse to the company on behalf of which she was authorized to make such applications. The applications made by her in her personal capacity were clearly on the basis of misrepresentation. The applicant must have been under the impression she had applied pursuant to the Board Resolution dated 22.1.2003. Legally the respondent is not the proprietor of the marks.

15.       In these circumstances, the registrations in her name deserve to be removed. It appears that the division of property between the estranged couple is under consideration before the matrimonial Court, at that time the rights to the intellectual property in these trade marks may also be decided. The Civil Court has directed the Registrar of Trademarks to maintain a status quo, the respondent apprehended that blank papers signed by her may be misused by her husband Mr. Matang Sinh. That is to restrain the Registrar from effecting any change of name. But this status quo cannot stand in the way of our deciding these rectification applications which have been filed in accordance with law. 

16.       For all the aforesaid reasons, the rectification applications  ORA/64/2009/TM/DEL and ORA/65/2009/TM/DEL are allowed with a direction to the Registrar of Trade Marks to remove the trade marks registered under Nos.1239523 and 1239515 in Class 41 and Class 38 respectively from the register of Trade Marks. All Miscellaneous Petitions are closed.

(S. Usha)                                                                          (Justice Prabha Sridevan)

Vice-Chairman                                                                 Chairman

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