(Circuit Bench Sitting at New Delhi)
S. Usha, Vice- Chairman:
1. The transferred rectification application filed for cancellation of the registered trade mark Nos. 249986 and 291763 in class-25 under sections 107, 46 and 56 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) before the Hon?ble High Court of Delhi in C.O.No.28/01 and transferred to this Appellate Board pursuant to section 100 of the Trade Marks Act, 1999 and has been re-numbered as TRA/165/04/TM/DEL.
2. The applicant is carrying on business of manufacturing and marketing hosiery items under the trade mark ?DOLLAR? since the year 1972. The goods bearing the said trade mark are being continuously and extensively sold throughout India by the applicant and his licensee. The applicant is the registered proprietor of the trade mark ?DOLLAR? under Nos.410586 and 480223 in class 25 in respect of hosiery goods including Ganjies and Jangias and hosiery goods respectively. The said registrations have been renewed and still subsisting and valid till date. The applicant is also the proprietor of the artistic work ?DOLLAR? duly registered under No.A-30088/80 under the Copyright Act, 1957.
3. The respondent No.1 claiming to be the registered proprietor of the trade mark ?DOLLAR? under Nos.249986 and 291763 in class 25 along with one Smt.Durga Devi, the sole proprietor of M/s Kedia Knitwear had filed a suit for infringement and passing before the Hon?ble High Court of Delhi under suit No.2032/2000. In the suit, the first respondent had contended that the trade marks were subsisting and was used by them along with the licensee namely M/s Kedia Knitwear.
4. The applicant herein had contended in the suit that the first respondent had abandoned its trade mark as early as 1972 and never used the trade mark in respect of the specification of goods for which the said trade mark was registered. The alleged deed of assignment dated 01.05.1987 between the first respondent and M/s Kedia Knitwear is a false and fabricated document. The applicant is a person aggrieved within the meaning of the Act and is a fit and competent person to file and institute the present application as the first respondent had initiated legal action against the applicant based on the impugned trade mark registration.
5. The impugned trade mark registration is liable to be cancelled on the following grounds:-
(a) The registration ought to be cancelled for the reason that there has been no bonafide use of the said trade marks in relation to the specification of goods for which they are allegedly registered for a period of more than five years and one month from the date of filing of this application.
(b) The impugned registration No.249986 having lapsed for non-renewal and having been removed from the register vide notification published in the Trade Marks Journal No.982 dated 1.5.1990 at page 214 could not be renewed and such renewal is void abinitio.
(c) The impugned registration No.249986 is liable to be cancelled as the renewal after lapse of time cannot be made by the registered proprietor.
(d) The impugned registration is liable to be removed from the register on account of the fact that to the knowledge of the applicant the first respondent and its alleged licensee is claiming to be the registered proprietor of the said trade mark by way of public notices and therefore the trade mark in any case, due to conflicting proprietary claim has ceased to be distinctive in favour of the first respondent.
(e) The renewal granted in respect of the impugned registered trade mark under No.291763 in class 25 is illegal, unlawful and beyond the statutory provisions of the Act as neither the renewal fees for renewal has been filed within the prescribed time nor has it been filed for renewal by a competent person.
(f) The impugned registration has been obtained by playing fraud upon the office of the second respondent.
(g) The impugned trade marks were not distinctive at the time of registration and hence the registration is in contravention of the provisions of section 9 of the Act.
(h) The impugned registrations are disentitled to protection in a court of law.
(i) The impugned registrations were made without any sufficient cause and are remaining on the Register without any sufficient cause.
6. The first respondent filed their counter statement denying the various material allegations made in the application for rectification. The present application is merely a concoction and fabrication of facts and is an abuse and misuse of the process of law. The application is bad for misjoinder of cause of action as cancellation of two registered trade marks cannot be sought in one application. The application is bad in law on the ground of acquiescence, delay and laches and is barred by law of limitation.
7. The application for rectification is a counter blast to the suit filed by the first respondent and its licensee against the applicant. The applicant is not the proprietor of the trade mark label ?DOLLAR? and is the pirator of the first respondent?s trade mark and has no locus standi to file the present application. The applicant had fraudulently adopted the impugned trade mark only to earn on the goodwill and reputation of the first respondent and to infringe the first respondent?s registered trade mark.
8. The applicant adopted the trade mark ?DOLLAR? much subsequent to the first respondent?s adoption only to cause deception and confusion in the market and to pass off his spurious goods as that of the first respondent. The first respondent is the proprietor, continuous, bonafide and honest user of the trade mark ?DOLLAR? label. They adopted the trade mark in the year 1966 and have been using the same continuously till date including through its licensee. The first respondent has spent considerable amounts on the publicity of the said trade mark through various medias by which the goods bearing the trade mark ?DOLLAR? enjoys high reputation in the market.
9. The impugned trade mark registration under Nos.249986 and 291763 in class 25 is conclusive and valid as per the provisions of section 32 of the Act. The applicant is not an aggrieved person and hence this application is not maintainable . The first respondent denied the applicant?s user since 1972 and stated that only in the year 2000, the first respondent came across the applicant?s goods bearing the trade mark ?DOLLAR? and immediately filed a suit against the applicant. The applicant?s trade mark registered under Nos.410586 and 480223 in class 25 are wrongly remaining on the Register and are to be expunged. The first respondent never abandoned the trade mark and the first respondent along with the licensee have been using the same continuously till date. The licence user agreement dated 01.05.1989 is valid and not a fabricated one.
10. The registrations are legally valid, proper and genuine and are in accordance with law. There is sufficient cause for their registration and for their remaining on the Register. The first respondent therefore prayed that the application for rectification be dismissed and the registrations may be allowed to continue on the Register.
11. The applicant filed the reply to the counter-statement denying the contentions made therein.
12. We have heard Shri Ajay Sahni learned counsel for the applicant and Shri S.K.Bansal learned counsel for the first respondent in the Circuit Bench Sitting at Delhi on 26th and 27th August, 2009.
13. The learned counsel for the applicant submitted that the applicant is a person aggrieved as a suit has been filed by the first respondent herein for infringement and passing off. Both the trade marks under No.291763 and 249986 have not been renewed. The registration No.291763 has been renewed after the lapse of time by a third person who claims to be the licensee. The year-wise sales turnover given by the first respondent in the written statement filed as annexure A is only from the year 1989 though they claim to be using since 1972 apart from that the sales turnover is that of the first respondent and the licensee which again is not made clear as to whose sales turnover it is.
14. The counsel further pointed out to the documents filed at page 15, 16 and 17 and also at pages 22 and 23 of the typed set of papers filed by the first respondent and stated that the registrations have been granted in favour of the first respondent and the renewal has been granted in favour of the licensee which remains not valid. The counsel drew our attention to the Trade Mark Journal notification dated 01.05.1990 at page 122 of the typed set of papers where the list of registered trade marks were removed for non payment of renewal fees was given and at page 131- No.249986 was mentioned. The counsel relied on the judgment of this Appellate Board reported in 2006(32) PTC 402 (IPAB) in support of his contention that the renewal not made by the registered proprietor is not a valid renewal.
15. The counsel further submitted that in the warning notice at page 46 of the typed set filed by the first respondent, it is stated that M/s Kedia Knitwears is the registered proprietor of the trade mark whereas in the written statement filed to the application for rectification, it is stated that M/s Kedia Knitwears is the licensee which statements are contrary.
16. The main issue raised by the applicant was that when the mark has been removed from the Register, can it be subsequently brought on record. The other issue raised by the applicant was that this application has to be decided under the new Act i.e. the Trade Marks Act, 1999 and not the old Act i.e. the Trade and Merchandise Marks Act, 1958. The counsel for the applicant relied on various decisions in support of their contention.
17. The learned counsel for the first respondent contended that though the applicant claims to be the proprietor of the trade mark, no document has been filed in proof of the same. The registration under No.249986 is a word mark registered as of 18.06.1968 and the other registration under No.1291763 is a label mark registered as of 31.10.1973. The first respondent is the prior user.
18. The mark said to have been removed from record was subsequently renewed. Both the marks have been renewed and are still subsisting as on date for which sufficient proof has been filed. The counsel submitted that as per the provisions of sub-rule 2 of Rule 63 of the Trade Marks Rules, 2003, the renewal may be made either by the registered proprietor or his agent. The counsel further submitted that the onus lies on the applicant for rectification to prove the grounds which has not been proved by sufficient evidence. The counsel also relied on various judgments in support of his contentions.
19. We have carefully considered the arguments of both the counsel.
20. The application being a rectification application for removal of the trade marks from the Register of Trade Marks, the foremost issue for consideration is whether the applicant is a person aggrieved to maintain this application. The provisions of section 21 of the Act provides that any person may oppose an application for registration whereas an applicant can maintain an application for registration only if that person is aggrieved in some way or the other affected or injured if the trade mark remained on the Register. A person dealing in the same class of goods to which the registered trade mark relate, or persons who are in some or the other way substantially interested in having the mark removed from the Register, are persons aggrieved and include persons who opposed the application for registration of the trade mark. The test for such determination is propounded in Powell?s Trade Mark, 1894 (11) RPC 4. A person aggrieved includes rivals in the same trade who are aggrieved by the entry of the rival?s mark in the Register or person whose legal rights would or might be limited if the mark remains on the Register, he could not lawfully do that which, but for the existence of the mark on the Register, he could not lawfully do. The Hon?ble Supreme Court in National Bell Co. (P) Ltd. & Another Vs. Metal Goods Mfg.Co. Ltd. & Anr PTC (Suppl) (1) 586 (SC) at page 593 has observed that the expression ? aggrieved person? has received liberal construction from the Courts and includes a person who has, before registration, used the trade mark in question as also a person against whom an infringed action is taken or threatened by the registered proprietor of such a trade mark. Person aggrieved includes rivals in the same trade who are aggrieved by the entry of rival?s mark in the Register of Trade Marks or persons who are in some way or the other substantially interested in having the mark removed from the Register or person who would be substantially injured / damaged if the mark remained on the Register. The applicant is in one way or the other substantially interested in having the mark of the first respondent removed from the Register. The first respondent herein has filed a suit against the applicant for passing off. The applicant, therefore, in our opinion, is prima facie, the person aggrieved and as such has the locus standi to file and maintain an application for rectification.
21. The other issues are that the registrations granted have not been either renewed by the registered proprietor or prescribed fees not paid within the prescribed time for renewal, registration obtained by fraud, registered trade mark wrongly remaining on the Register without sufficient cause.
22. We shall first deal with the issue as to the renewal of the registration. The trade mark registered under No.249986 was not renewed and the mark was removed for non-payment of prescribed fees as the same was notified in the Trade Mark Journal No.982 dated 01.05.1990 at page 214. The removal was rectified and restored to Register which application was made by the licenced user other than the registered proprietor. This is clear from the documents filed by the first respondent filed as additional documents. In the instant case, it is also seen that M/s Kedia Knitwears who is said to be the licensee has filed the renewal application which is not valid. Sub-section (2) of section 25 of the Act reads as follows:-
(2) The Registrar shall, on application made by the registered proprietor of trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of seven years from the date of expiration of the original registration or of the last renewal of registration, as the case may be, (which date is in this section refereed to as the expiration of the last registration)?.
23. On a bare perusal of the above, it is clear that the Registrar shall on application made by the registered proprietor of the trade mark within the prescribed period and with the prescribed fee renew the registration. In this connection, it is to be seen who is the registered proprietor. ?Registered proprietor? has been defined under section 2(1) (q) of the Act ??the person for the time being entered in the register as proprietor of the trade mark.?
24. In the instant case, there is no doubt that M/s R.G.Oswal Hosiery Industries is the registered proprietor of the trade marks under No.s 249986 and 291763 and M/s Kedia Knitwear is the licensee. When that be the case, we have our own doubt as to how the application has been filed by the licensee as seen in the documents at pages 17,18,23 and 24. We have also gone through the agreement dated 01.05.1989 entered into between M/s R.G.Oswal Hosiery & M/s Kedia Knitwear where the so called licensee i.e. M/s Kedia Knitwear is permitted to use the trade mark and will have no right over the same.
25. During the course of arguments, the counsel for th
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e first respondent placed before us the Trade Marks Journal notification as to the renewal of the registration under Nos. 249986 and 291763 but the counsel had not produced any evidence to say how a mark which was removed has been restored back to the Register. He also produced notices received from the Trade marks Registry about the expiry of the registration pertaining to the year prior to 1989 i.e. date of agreement and subsequent renewals were not placed before us. 26. We also place reliance on the judgment of the Supreme Court in Ramachandra Keshan Adhe (Dead) by lrs.Govind Joli Chavare & Others, AIR 1975 SC 915 in regard to our view that the registrar had no powers to renew the application when the application has not been filed for renewal by the registered proprietor. ?When a power is given to do a certain thing in a certain way the thing must be done in that way or not at all and other methods of performance are necessarily forbidden?. 27. In the case on hand, the application for renewal has been made by the licensee and not the registered proprietor, then the Registrar cannot exercise his power under the said provision. The registrations in such circumstances ought to be removed as not valid. 28. The renewal when considered to be not valid nothing survives and the marks are to be expunged from the Register. When that be the case, the other issues as to registrations whether obtained by fraud or whether the mark is wrongly remaining on the Register without sufficient cause does not lie. 29. In view of the above, we direct the Registrar of Trade Marks to expunge the trade marks under Nos.249986 and 291763 in class 25 from the Register. Accordingly, the rectification application is allowed. No order as to costs.