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M/S GDP Hospitality Pvt. Ltd v/s M/s Herbs & Spice Catering P.Ltd & Another

    ORA/281 of 2008/TM/CH
    Decided On, 14 September 2011
    At, Intellectual Property Appellate Board
    For the Applicant: Shri Dhruva, Advocate. For the Respondents: P.V. Rajeswari, Advocate.

Judgment Text
Order No.141/2011


1. The original rectification has been filed for removal /cancel the trade mark Herbs & Spices in class 16 under registration No. 1161098 under the provisions of the Trade Marks Act, 1999 ( in short the Act.)

The brief facts of the case are:

2. The applicant is a private limited company. They adopted and used the trade mark 'Herbs & Spices' in the year 1999. The applicants carried on a specialty restaurant business as a partnership firm initially with one Dr. Mohammed Ghouse. After the demise of Dr. Mohammed Ghouse, the business was taken over as a going concern by the applicant company.

3. The applicants business relates to providing food & drink, restaurant, hospitality services and banquet related activity. The trade mark was chosen to more specifically describe and related to the cuisine, wherein herbs are particularly used in preparing continental foods and spices while preparing South Indian Foods. The applicant submits that the dining experience in a traditional farm house with a touch of antiquity surrounded by a huge garden hosting variety of plantations including many herbs and spices speaks for the mark adopted. The applicants have also applied for registration of the trade mark in class 42 under Nos. 1529560 & 1529561.

4. The respondent had adopted and used the impugned trade mark Herbs & spices in the year 2001 who are subsequent user. The applicants had been extensively using the trade mark since 2000. They have had a sales turnover of Rs, 23,90,833 in the ear 2000-2001 which increased to 1,29,91,445/- in the year 2005-2006. They have spent Rs. 2,50,000/- towards publicity expenses.

5. In the year 2007, the applicant came to know of the respondents use of the trade mark 'Herbs & Spices' & therefore, issued a legal notice to the respondents. The respondents herein sent a reply to that notice. Subsequently, the respondent filed a suit in OS No. 25100/ 08 before the Additional City Civil Court, Bangalore and obtained an Injunction Order which was later vacated. This necessitated the applicant to file this instant application for rectification on the round that the impugned registration is in contravention of the provisions of Sections 9, 11 & 18 of the Act.

6. The respondent herein filed their counter statement stating that they are

Engaged in the business of running restaurant, self service restaurant, fine-dining restaurants etc. Mrs. Monisha Malik along with Mr. Pankaj Ramesh were carrying on homely business under the name and style of 'Herbs & Spice' since 01.08.1999. In this regard an article was published in the Times of India, Bangalore Edition on 20.08.1999 & 28.08.1999. Subsequently, it was registered under the Companies Act on 28.02.2001. On 03.03.2001, by virtue of a deed of assignment Mrs. Manisha Malik assigned the right, title & interest in favour of the company. Eversince, the formation of the company, the respondents have been using the trade mark extensively and continuously. They have spent huge amounts towards its publicity expenses. The sales turnover for the year 2001-02 is Rs. 8,02,996 which has increased to Rs. 78,10,683 in the year 2007-2008. The respondents’ predecessors have been using the trade mark 'Herbs & Spices since 01.08.1999. The respondents have also obtained copyright registration.

7. In January, 2004, the respondents came to know of the applicants use of the trade mark 'Herbs & Spices' & therefore contacted the applicant and informed them about their use. The applicant therefore changed their name as 'Spices & Herbs' and thereafter closed down their business in November, 2004. In 2007, the applicant issued a cease & desist notice for which a reply was also sent by the respondent.

8. The rest of the counter statement were mere denials and the issue regarding the maintainability of the applicants application for registration.

9. We have heard Mr. Dhruva for the appellant and Ms. P.V. Rajeswari for the respondent.

10. The learned counsel for the applicant submitted that they adopted the trade mark in the year 1999 and used continuously since 2000. The impugned trade mark has been adopted by the respondents on 28.02.2001 subsequent to that of the applicants. In the year 2007, the respondents opened a Bakery in Whitefield. In the year 2008, the respondents filed a Civil suit for injunction before the Additional City Civil Court, Bangalore where an order of injunction was granted and after contest vacated. The counsel then reiterated all that was stated in the application for rectification.

11. The learned Counsel for the respondent submitted that the impugned application was filed in the year 2002 claiming user since 2001. The rectification application has been filed as a counter blast to the suit filed by the respondent. The counsel further reiterated what was stated in the Counter Statement.

12. We have heard and considered the submissions of both. The application for rectification is filed only by a person aggrieved whereas any person may oppose an application for registration as per the provisions of Sec 21 of the Act. In the instant case, the respondents have filed a Suit against the applicant as well and have opposed the registration of the applicants application for registration. The applicant is, therefore a person aggrieved and can maintain an application for rectification.

13. The next issue is to decide as to who is the prior user and adopter of the trade mark. The applicants claim user since the year 2000 whereas the respondents claim user since the year 1999 though in the impugned application the user claimed is since 2001. The only contention of the respondent is that their predecessors adopted the trade mark 'Herbs & Spices' in the year 1999 and by way of assignment deed dated 03.03.2001 the respondents are using the said trade mark since 28.02.2001. They also state that the mark was being used since 1999 but the present label is being used since 2001. Even assuming the respondents contentions to be true & correct, the assignment deed is dated 03.03.2001, then how is that the respondent can claim user since 28.02.2001, and if respondents are claiming a right from their predecessors they could have claimed user since 1999. Whereas in the impugned application filed in the year 2002 they claim user only since 2001. They cannot now try to bring in a change to suit their convenience. It is also seen that the other two applications in Class 42 which have been filed by the respondents on 26.09.2007 under Nos. 1605598 and 1605599 are only, after the receipt of the legal notice issued by the applicants where they claim user since 2006.

14. The assignment deed filed by the respondent is not free from doubt. It is, not known as to where from the stamp paper was purchased, the stamp vendor’s name is not mentioned. There is no signature of the witness to the deed of assignment. The document seems to have been created for the purpose of this case. As contended by the applic

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ant, the respondent had not mentioned the assignment in the suit, whereas they have created this deed and now rely on this document before this Board. They have also moved the Civil Court for amendment to include this deed of assignment to claim the user since 1999 through their predecessor. Therefore, on these facts, we are of the opinion that it has been created only for this case. The respondents user if at all can be only from the year 2001 which is subsequent to that of the applicants. Any person who comes to Court with unclean hands cannot be protected. 15. For the reasons stated above, the application for rectification is allowed with a direction to the Registrar of Trade Marks to remove the trade mark 'Herbs & Spices' in Class 16 under No. 1161098. No order as to costs.