At, Intellectual Property Appellate Board
By, THE HONOURABLE SHRI JUSTICE S. JAGADEESAN
By, CHAIRMAN & THE HONOURABLE DR. RAGHBIR SINGH
By, VICE CHAIRMAN
Ajay Brahme, Ashok K.Chabra.
(Circuit Sitting at New Delhi)
Hon?ble Dr.Raghbir Singh, Vice-Chairman:
C.O. No.8/2002 filed in the High Court of Delhi was filed under sections 56 and 107 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) and the same has been transferred to this Board in terms of section 100 of the Trade Marks Act, 1999 and numbered as TRA/168/2004.
2. As per the petitioner, the petitioner is a company organized and existing under the laws of Canada. Petitioner company is engaged in the business of manufacturing, marketing, selling and trading in respect of polymer modified cementatious materials, woven tapes or cloths of glass and / or steel fibbers, impregnated of bearing cementatious compositions, etc., and is the owner of trade mark ?TAPECRETE?. The said trade mark is registered in Canada and USA. The petitioner entered into a collaboration agreement and technology licence agreement with Mr. Amit Gupta, Director of Structural Water Proofing Company (P)Ltd.,, New Delhi and mutually desired to establish in India an organization and facilities for the purpose of producing, marketing, selling and contracting products manufactured by the petitioner in Canada and it was decided that the name of joint venture in India shall be FRC Composites India Private Limited which company was later on converted into a public limited company under the name and style of FRC Composites India Limited. The petitioner has subscribed 40% of the issued and paid up equity capital of FRC Composites India Limited. It transpired on 22.4.1987 that respondent No.1 at the behest of Mr. Amit Gupta and behind the back of the petitioner applied and obtained registration of trade mark ?TAPECRETE? for polymer modified cementitious materials under No.471218 in class 1 in its own name. The said registration by respondent No.1 was done without the knowledge of the petitioner and that the petitioner was kept in dark about the fraudulent registration all through. Respondent No.1 through its Director Shri Amit Gupta was fully aware that Respondent No.1 is not the owner of trade mark ?TAPECRETE? and the said trade mark belongs to the petitioner company who invented and adopted the same in Canada in the year 1975. Thus respondent No.1 through its Director, Shri Amit Gupta has committed fraud and has fraudulently got registration in its name. Respondent No.1 has further committed a fraud by assigning the trade mark to respondent No.2 by virtue of assignment deed dated 1.4.2000. Respondent No.1 had no rights either to obtain the registered trade mark registered in its name or to assign the trade mark to respondent No.2. Respondent No.1 was always aware of the invention, prior adoption and prior use of the trade mark ?TAPECRETE? by the petitioner in Canada for aforesaid products since 1975. Respondent No. 1 and 2 are not the proprietors of the mark in terms of section 18(1) of the Act. The trade mark registered was not distinctive of the goods or business of respondent No.1 on the date of application dated 22.4.1987. The registration also contravenes the provisions of section 11 of the Act. The petitioner is an aggrieved person entitled to seek rectification.
3. Respondent No.1 in their written submission in the form of affidavit dated 24.1.2003 controverted all the material averments of the petitioner. Respondent No.1 submitted that the petitioner has already concluded an agreement for the sale of 40% of the shareholdings in the respondent company and are now endeavouring to wriggle out of the contract by filing the present suit and the respondent has filed suit of specific performance against the petitioner in that regard. Respondent No.1 submitted that the respondent continuously kept the petitioner informed of the developments in the respondent company. It was only on the active participation of President of the company in Canada that the said trade mark was registered in India. The petitioner was duly informed of the registration of the mark and copies of entire documents relating to the same were handed over to the petitioners.
4. The matter was taken up for consideration by the Board in its sitting held at New Delhi on 14.2.2005. Learned counsel Shri Ajay Brahme appeared on behalf of the petitioner and learned counsel Shri Ashok K.Chabra appeared on behalf of the respondents.
5. Learned counsel for the petitioner submitted that for registration of the mark the petitioner has to be the proprietor in terms of section 18 of the Act. The impugned mark was invented by and adopted by the petitioner and the same was registered in Canada and USA. It was only a technology transfer agreement which was entered into between the petitioner and respondent No.1, whereby respondent No.1 was entitled to use the mark . He can at best be the registered user thereof in terms of section 49 of the Trade and Merchandise Marks Act, 1958. A person being registered user cannot become the proprietor of the mark and the averments and submissions made before the Registrar for the registration of the mark being a proprietor are fraudulent. The counsel submitted that in view of this, necessary rectification in the Register should be done and the mark should be removed from the Register.
6. Learned counsel for Respondent No.1 at the outset submitted that the petition has not been filed in its proper form. Section 85 of the Indian Evidence Act, 1872 requires that the documents filed should be properly notarized. The pleadings in that matter are not proper. He drew our attention to para 9 of first respondent?s written statement wherein it has been stated he kept the petitioner fully informed with the day to day functions of the respondent company and the registration of the said mark in the name of respondent No.1 was duly informed to the petitioner and requested that the petitioner be put to strict proof on that score. He submitted that Mr. Sujeet Gupta, the constituted attorney of the petitioner was a minor on the date of the registration of the mark, that is 22.4.1987. Thus this petition is hopelessly barred. Learned counsel further drew our attention to documents filed by the learned counsel for the petitioner wherein reference about the sale of 40,000 shares held by the petitioner in the respondent No.1 company has been made. There is nothing in the said correspondence as to the petitioner having objections to the registration of the mark.
7. Learned counsel for the petitioner has tried to make out a case that impugned mark ?TAPECRETE? was registered in the name of the petitioner in Canada and USA. The petitioner enjoys a fair amount of transborder reputation. Thus in terms of section 18 of the Act, the petitioner is the proprietor. It is sine qua non for the purpose of registration of trade mark under the Act that at the outset the applicant has to be a proprietor in terms of section 18 of the Act. Thence, he has to prove the distinctiveness of the mark under section 9 of the Act followed by examination under sections 11 and 12 of the Act. Ex facie it looks suspicious that the Indian company which as recent as 9.11.1985 entered into a technology licence agreement with the foreign company could acquire the proprietorship in the mark which was conceived in 1975 in Canada, bears the registration there and in USA and enjoys a worldwide reputation. It is true that in a matter under section 56 of the Act, the initial onus to prove is upon the petitioner to prove that the impugned registration suffers from disabilities under section 56 of the Act. The petitioner has been successful to the extent to prove that they are holding the registration in USA and Canada. There is a transfer of technology agreement between the petitioner and respondent No.1 .
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There is an agreement to form a joint venture company. However, they have failed to explain the circumstances under which the application for registration of the mark was made way back on 22.4.1987 and it took more than 8 years when the certification for registration of the mark was issued by the Registrar of Trade Marks on 13.6.1995. Lot of process might have undergone towards the registration of the mark. No submission has been made in this regard as to how he could not take any action to stall the registration by filing an opposition and how come about at a late juncture when the negotiations for the selling of their holdings in India to the respondent company were on, the issue of rectification cropped up. Since the burden is upon the petitioner in this regard and that they have utterly failed in it, the rectification petition is dismissed. No order as to costs.