At, Intellectual Property Appellate Board
By, THE HONOURABLE SHRI JUSTICE M.H.S. ANSARI
By, CHAIRMAN & THE HONOURABLE MS. S. USHA
By, TECHNICAL MEMBER
Sejal Shah, Y.J.Trivedi.
(Circuit Bench at Ahmedabad)
Hon'ble Ms.S.Usha, Technical Member:
Application for rectification of the trade mark ?SILVER? registered under No.579098 in class 7 under Sections 57 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act). Applicants have been carrying on the business of manufacturing, marketing and selling monoblock pump sets, submersible pump sets and water pumps since 1981. The applicants have made this application for removal of the mark on the grounds that the registration has been made without sufficient cause and that it wrongly remains on the Register. The applicants have stated that they are the prior users of the said mark and have been using the same since 1983 and that their rights in the said mark ?SILVER? has to be protected. The applicants also submitted that the registered mark which is identical with that of theirs is likely to deceive and cause confusion among the public. The other submission of the applicants is that the registration would be contrary to the provisions of Sections 9,11,12 and 18 of the Act. The said registration has been obtained by playing fraud upon the Registrar. The applicants also submitted that the registered mark has not been put to use and as such is liable to be removed from the Register.
2. The respondents filed their counter statement denying the various allegations made in the application and prayed that the application be dismissed.
3. The matter was taken up for hearing in the Circuit Bench Sitting held at Ahmedabad on 3.4.2007. We have heard learned counsel Ms.Sejal Shah for the applicant and learned counsel Shri Y.J.Trivedi for the respondent.
4. Learned counsel for the applicants mainly contended that both the applicants and the respondent?s mark was registered. The applicants were prior in user to that of the respondent. The applicants had been using the mark since the year 1983. The applicants also submitted that their mark was well known all over India. The counsel also drew our attention to the to the sale figures which runs to several lakhs of rupees. The counsel contended that the respondents had adopted the mark with malafide intentions. Learned counsel for the applicant submitted that there was every possibility of confusion being caused as the marks were identical.
4. Learned counsel for the applicants also contended that as the suit was pending before the City Civil Court Ahmedabad and that the rectification petiton has been filed before this Board. The applicants have filed an application for registration of the mark ?SILVER? on 22.12.1993 under No.614552 in class 7 and obtained registration on 21.11.2003. Learned counsel brought to our notice the impugned registration certificate which was filed along with the counter statement, therein the application was made on 12.8.1992 claiming user since 16.4.1991 and obtained registration on 15.12.2000.
5. Learned counsel for the applicants relied on the following judgments in support of her claims:-
Duncan Agro Industries Limited V. Somabhai Tea Processors (P)Ltd. PTC (Suppl) (2) 839 Guj;
Laxmikant V.Patel V. Chetanbhat Shah & Anr ? 2002 (24) ptc 1 (SC)
Pearl Appliances Private Limited V. Jay Engineering Works Ltd. ptc (Suppl) (1) 390 (Del)
Dhariwal Industries Ltd. V. M.S.S.Food Products 2005 (30) PTC 233 (SC)
N.R.Dongre V. Whirlpool Corporation 1996 PTC (16)
Sushil Vasudev V. Kwality Frozen Foods Pvt. Ltd. PTC (Suppl) (2) 235 (Kar)
6. The learned counsel for the respondent mainly contended that the application itself was not maintainable for suppression of material facts. The learned counsel for the respondent drew our attention to the certificate issued by the Registrar of Firms wherein the date of joining the firm of the partners was given as 25.10.1984 and stated that it was false to aver in the application as user from 1981. He also pointed out that the deed of partnership is of the year 2002 and no deed produced for the year 1984. Learned counsel for the respondent submitted that the statement of the applicants as to user was contradictory as it was 1981 in one para and 1983 in the other.
7. Learned counsel for the respondent also pointed out that the goods are different. The respondents were only dealing with the submersible pumps where as the applicants are dealing with the monobloc pumps. He also pointed out to the invoices filed by the applicants in which monobloc pumps only was mentioned. The respondent further submitted that the applicant?s sale was in Gujarat and Madhya Pradesh whereas the respondent?s goods were sold only in South India.
8. The counsel for the respondents also submitted that the trade mark ?SILVER? is not a coined word or a unique word. The respondent?s further submission was that they had been using the mark ?SILVER? since 1991 continuously without any interruption. The respondent has been using the mark since 1991 and that there has been no instance of confusion. The other contention of the respondent was that their application was in the year 1992 whereas the applicant?s application was in the year 1993 and that while applying for registration if the applicant had made a search, the search report would have revealed the conflicting mark.
9. Learned counsel for the respondent further contended that as an applicant the burden of proof lay on them and no document or evidence had been produced to prove their case. The applicants have not opposed to the respondent?s application at the advertisement stage. Thus the application for rectification has been made with malafide intentions where no reputation of their mark has been established.
10. Learned counsel for the respondent also contended that the judgments cited by the applicants were relating to the suit in a passing off action which had no relevancy to the present application. He relied on the judgments reported in AIR 1994 SC 853 and Smithkline & French Laboratories Ltd. V. Eros Pharma (P) Ltd. 2004 (2) CTMR 221 (IPAB) in support of his case.
11. We have carefully considered the submissions of both the counsel and have gone through the pleadings and documents placed before us.
12. The main issue that arises for consideration in a rectification application is that whether the applicant is an aggrieved person. In this connection it is to be noted that any person can file a notice of opposition under Section 21 of the Act while an application to expunge the mark from the Register can be made only by a person aggrieved. The term aggrieved person has been liberally viewed by the judiciary in several cases.
13. In Powell?s TM (1893) 10 RPC 195 CA it was held that persons who are aggrieved are persons who are in some way or other substantially interested in having the mark removed from the Register or persons who would be substantially damaged if the mark remained. It further held
?I should be very unwilling unduly to limit the constructions to be placed upon these words, because ?although they were no doubt inserted to prevent officious interference by those who has no interest at all in the Register being correct and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, in as much as it is public mischief that there should remain upon the Register a mark which ought not to be there, and by which many persons may be affected, who nevertheless would not be willing to enter upon the risk and expenses of litigation.
Whenever it can be shown, as here, that the applicant is in the same trade as a 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, he has a locus standi to be heard as an aggrieved person.?
14. On the above principles the applicants are required to show that their rights are interfered by the registered proprietors to have locus standi to be heard as an aggrieved person. Here in the instant case, we find that the applicants have neither pleaded nor have satisfied this Board to this issue. Therefore, the issue as to aggrieved person in decided against the applicant.
15. The next ground that has been raised by the applicant is that the registered proprietor has obtained registration by playing fraud. The plea of fraud though has been averred in the pleadings there is nothing before us to substantiate the allegation of fraud. In the absence of any cogent evidence before us such a plea cannot be considered. The applicant has neither pleaded any particulars of fraud in the application nor has adduced any evidence therefor. Thus, the applicant has failed to discharge the onus to prove fraud and the issue of fraud is rejected.
16. The issue of maintainability of the application by the respondent is rejected as no such plea has been made in the counter. The ground that this application can be directly entertained by this Board is also negatived. The contention of the learned counsel for the applicant w
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as that the suit was pending before the Civil Court. That contention alone will not give arise to jurisdiction to file the application for rectification before this Board. The validity of the registration has not been raised in the suit as contemplated in the provisions of Section 125 of the Act where this Board has concurrent jurisdiction with the Registrar under Section 57 of the Act it is appropriate that the application in the first instance is filed before the Registrar, unless the provisions of Section 125 of the Act are attracted. Entertaining the application by this Board would have the effect of denying the aggrieved party the right of statutory appeal provided under Section 91 of the Act. We, therefore, are of the view that the application before this Board is thus not maintainable. 17. We are of the view that having rejected all the grounds of the applicant, the application itself is to be dismissed. We, therefore, dismiss the application, allowing the mark to continue on the Register. However, there shall be no order as to costs.