(Circuit Bench Sitting at Delhi)
ORDER (No.248 of 2010)
S. Usha, Vice- Chairman
1. Application for removal of the trade mark 'Agrawal Packers & Movers' registered under No.1275683 in class 39 under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as Act).
2. The applicants company was constituted in the year 2003 under the Companies Act, 1996, providing services in the field of Carriers, Logistic, Transport, Packers & Movers etc. In October, 2003, the applicant had adopted the trading style and name as M/s. Aggarwal Packers & Logistics Private Limited. The same was adopted out of love and respect to its director Mr. Ram Pratap Aggarwal who denoted his skill and experience to build up the company. After establishing the company, Mr. Ram Pratap Aggarwal resigned from the company in the month of September, 2005.
3. The word Aggarwal / Agrawal / Agarwal was found by Maharaja Agrasen who was the founder of Aggarwal / Baniya Community. The word Aggarwal is basically used by baniya community as their surname to represent or indicate their community. The community established its goodwill in the business and is popularly known for their business skill. A list of traders advertisement shows that the Agrawal word is common to trade and is used in all type of business. The applicant bonafidely adopted M/s. Aggarwal Packers & Logistics (P) Ltd. as its trade name and styles is using the same openly for the last 6 years.
4. The applicants are using the said trade mark openly and without any interruption and has thus established its own reputation and goodwill. The applicants have advertised its trade mark openly all over India through various medias. The respondent has claimed its exclusive right over the word 'Aggarwal / Agarwal / Agrawal' on the basis of registration No.1275693 in class 39 – the impugned trade mark. The claim is due to wrong registration which is bad in law and the same deserves to be removed from the register to maintain the purity of the register.
5. The applicant is a person aggrieved within the meaning of the Act on the following grounds:-
a) that the presence of the impugned trade mark takes away the rights of the applicant.
b) that the existence of the trade mark on the register would be in contravention of the provisions of section 9, 11, 18, 31, 47 & 56 of the Act;
c) that the impugned trade is neither adopted to distinguish nor is capable of distinguishing the respondents goods in any circumstances;
d) that the presence of the impugned trade mark is causing confusion and inconvenience and therefore bad in law and is without sufficient cause;
e) that the registration has been obtained by playing fraud;
f) that in the interest of justice, equity and good conscious the application be allowed
6. The respondent herein filed their counter statement denying the allegation made in the application for rectification. The respondents preliminary objection was that the application has been made with malafide intentions. The applicant and the respondent are contesting both criminal and civil matters with regard to the trade mark. The applicant is restrained by an order of injunction from using Aggarwal and/or Aggarwal Packers and/of Aggarwal Packers & Logistics and/or Aggarwal Packers & Logistics (P) Ltd. or any other similar/identical trade mark similaR to that of the respondents herein like Aggarwal Packers & Movers and the order was made absolute with the consent of both the parties on 26.11.2008.
7. During the pendency of the suit, the applicant had also moved the court for an order of stay of the suit and allow them to file an application for rectification in February, 2009. Pending this interlocutory petition, the applicant had filed this application for rectification in may 2009. In December, 2009, the Hon’ble High Court observed that
'Prima Facie the application is not maintainable in view of the admitted `position that at the time when the suit was instituted, no proceedings for rectification were pending before the Registrar or an appeal thereto before the Appellate Board, Learned counsel for the applicant/defendants does not dispute that the proceedings for rectification were instituted after the framing of issues in the present suit; therefore, there can be no doubt that no leave of the Court was sought before filing the said proceedings, Learned counsel for the applicant/defendants seeks a short accommodation to persuade the Court to the contrary.'
8. Despite the above observation, the applicant has sought for further orders from the High Court. Unless the appropriate leave is granted by the Civil Court, the Appellate Board has no jurisdiction to decide the same. The rectification application has been filed without appropriate leave being granted as mandated by section 124 (1)(b)(ii) of the Act and is liable to be dismissed. The applicant can not file this application without showing and obtaining prima facie satisfaction of the court.
9. The applicants have not made out any grounds as how they are person aggrieved to file this rectification application when they have consented for the interim injunction to be made absolute till the disposal of the civil suit. The respondent in or around April, 2004, was shocked to learn that the applicants were pressing themselves to be channel partners of the respondents. That apart, the respondent had received several letters from various clients stating the fraud committed by the applicants. The respondent had immediately initiated criminal action against the applicant. During investigation, the police had confiscated four fake rubber stamps of the respondent and other documents from the premises of the applicants directors demonstrating that the applicant was dishonestly trying to make an impression that the applicant was a channel partner of the respondent. Even after the criminal action, the applicant continued with the illegal activities. The respondent therefore initiated a civil suit before the Hon’ble High Court of Delhi. The Hon’ble High Court had confirmed the order of injunction order in November, 2008 with the consent of both the parties.
10. In view of the above, it is apparent that the present application for rectification is fraudulent, frivolous & vexatious without any merits. The application for rectification is therefore liable to be dismissed in limine.
11. On merits, the respondent stated that they are a loading, packing, moving & logistics service provider engaged inter alia in the business of providing public carrier and carrier from goods, passengers, merchandise, commodities and other products and transportation of goods and luggage of all kind of description since 1988. The respondents company commenced by formation of a partnership by the name and style of M/s. Agarwal Packers & Movers in the year 1988. The same name was also used by the respondents predecessors. Subsequently in the year 1991, the respondent was formed by the partners of M/s. Agarwal Packers & Movers. On incorporation the respondent continued to trade under the trade mark 'Agarwal Packers & Movers'. In the year 1993, M/s. Agarwal Packers & Movers was merged in the respondents company vide agreement dated 01.04.1993 and presently M/s. Agarwal packers & Movers is a unit of the respondent company.
12. The trade mark 'Agarwal Packers & Movers' and other formative marks are registered in class 39 and are subsisting as on date in the name of the respondent. The respondents annual turnover under the trade mark 'Agarwal Packers & Movers' in the year 1993-94 was Rs.18,406, 119.00 which increased to Rs.2,616,624,061.00 in the year 2007-08. The respondent had caused wide publicity through various medias. The advertisement expenses was Rs.3,13,991.00 in the year 1993-94 and in the year 2007-08 it increased to Rs.4,86,10,522.00.
13. By virtue of long and continuous use, the trade mark 'Agarwal Packers & Movers' is associated with the respondents business by the trade and public and with none else. By such long use, the trade mark has acquired distinctiveness in respect of the business. The respondents trade mark has acquired the status of a well known mark as per the provisions of section 2(zg) of the Act. The mark is therefore inherently distinctive and adopted to distinguish the services of the respondent from those of other traders.
14. The respondent further stated that the applicant is not a person aggrieved and stated that the rectification application is filed as a counter blast to the civil suit filed before the Delhi High Court. The respondent thereafter denied all the various other allegations made in the application for rectification.
15. The applicants filed their reply to the counter statement. The applicant denied the averments made in the counter statement. The applicant stated that nobody can have monopoly over the word Aggarwal Packers & Movers. The applicant also stated that the respondent was only blocking the applicant from carrying on the business.
16. We have heard Shri L. B. Rai, Counsel for the applicant and Shri Prabhu Tandon, Counsel for the respondent during the circuit bench sitting at Delhi on 20th September, 2010.
17. The learned counsel for the applicant contended that the trade mark Agarwal is used by a community as a surname and so registration is against the provisions of section 9(1)(b) of the Act. The counsel also submitted that the mark 'Agarwal' was used by various persons in transport business and drew our attention to the web site print outs filed alongwith the application for rectification. The counsel relied on the judgment reported in 2007(35) PTC 616 – Rajendra Kumar Aggarwal vs. Union of India & another to say that the word Agarwal being a surname cannot be registered.
18. The counsel further submitted that the respondent had not produced any document before the Registrar for obtaining registration. The impugned trade mark was registered in the year 2005. The counsel also stated that there is no permission required to be taken from the civil court for filing an application for rectification. The counsel finally submitted that the impugned registration is in violation of the provision of section 9 of the Act.
19. The learned counsel for the respondent contended that the user was proved before the Registrar and based on that the registration was granted and denied the submission of the applicant that no user was proved. The exparte order of injunction was granted on 3.11.2006 and subsequently with the consent of the parties the injunction granted on 3.11.2006 was made absolute on 28.11.2008. The rectification application has been made on 18.05.2009. The provisions of section 124 of the Act seeking permission of the civil court to file rectification application has not been complied with. On this ground alone, the rectification application ought to be dismissed. The counsel relied on the judgment reported in 2007 (35) PTC 59 (Del) – Pfizer Products Inc. Vs. Rajesh Chopra & Ors. in regard to the proposition that prior permission ought to have been obtained from the civil court where the suit is pending before moving an application for rectification.
20. In rejoinder the counsel for the applicant submitted that no such permission under the provisions of section 124 is required.
21. We have heard and considered the arguments of both the counsel and have gone through the pleadings and documents.
22. An application for rectification can be filed by a person aggrieved only and not by any person as in the case of an opposition to a registration of a trade mark. To be a person aggrieved, the applicant must show that because of the existence of the impugned trade mark on the register, it could not do a thing lawfully which it could lawfully do.
23. In Powell’s Trade Mark Case, Lord Herochelle held,
'Whenever it can be shewn, as here, that the applicant is in the same trade as the person who has registered the Trade Mark, and wherever the Trade Mark, if remaining on the Register, would, or might, limit the legal rights of the Applicant, so that by reason of the existence of the entry on the Register, he could not lawfully do, that which but for the existence of the mark upon the Register, he could lawfully do, it appears to me that he has a locus standi to be heard as a person aggrieved.'
24. In the instant case on hand, the respondent had filed a suit for infringement and passing off against the applicant. The court had granted ad interim injunction which subsequently was confirmed by the court with the consent of both the parties. The applicant being a defendant in the suit is therefore a person aggrieved. The contention of the respondent was that the applicant had consented for making the injunction order absolute and therefore cannot be said to be an aggrieved person. In this regard we are of the view that the order of injunction granted and made absolute is only in the interim stage and the main matter is yet to be decided. In such circumstances, we are of the view that the applicant is a person and has a locus standi to file an application for rectification.
25. The preliminary objection was that the applicant had not taken permission from the civil court when the suit was pending before filing this application for rectification and therefore this application has to be dismissed. We think it fit to decide the preliminary objection before going into the merits of the matter. This issue has been discussed and dealt with in various matters by this Board. The case relied on by this Board is the Astrazeneca’ Case 2006(32) PTC 733 (Delhi) and the Patel Field Marshal Case 1999 PTC (19) 718 (Guj). The Board had relied on the judgments and held that permission is to be obtained in Reckitt benckiser (India) Limited vs. Godrej Sara lee Ltd. 2008 (36) PTC 531 (IPAB) as follows:
'the ratio of the judgments cited supra and relied upon by Shri Subhojit Roy Ld. Advocate, appears to be that an application for rectification cannot be filed without showing, establishing and obtaining prima facie satisfaction of the Court (before which the suit for infringement is pending) that there is material sufficient to invalidate the registration of the mark, invalidity of which is questioned in the suit. Once a suit for infringement of Trade Mark is instituted the objector gets a right to move an application for rectification after the Civil Court, trying the suit based on infringement of the Trade Mark, has examined prima facie tenability of the plea with respect to invalidity of the registered mark and makes an order raising an issue in the suit. If no plea as to invalidity of registered Trade Mark is raised in the infringement suit no question of filing rectification application arises. The parties to the suit must adhere to the procedure prescribed in Secti
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on 124 with respect to the filing of rectification proceedings. The question of determination of issue as to invalidity of the registered mark and abandonment of it due to non-prosecution are interwoven in the scheme of the Act. Therefore, if there is abandonment of the plea as to the validity of the mark albeit for the purposes of the suit the objector is not entitled to move rectification application as he would have disentitled himself to plead for judgment in the light of the decision, if any, obtained de hors the procedure prescribed therefore under section 124. In case a plea is deemed to have been abandoned, the only remedy of the party concerned may be to approach that very Court, to extricate himself from the consequence of abandonment, or higher Forum.' 26. The facts of the case is that an exparte interim order was passed in the year 2006 and was made absolute with the consent of the parties in the year 2008. The rectification application has been filed in the year 2009 when the suit was pending where leave was not obtained for filing this rectification application. The rectification application has been filed after the issues were framed in the civil suit. The observation made in the above judgment – Godrej Sara Lee case (Supra) by this Board squarely applies to this case. 27. We therefore are of the view that the rectification application is not maintainable as the provisions contemplated under section 124 of the Act has not been complied with. In the above circumstances, the rectification application is dismissed with no order as to costs. Miscellaneous Petition No.127/2009 and Diary No.3059 are disposed off in the above terms.