At, Intellectual Property Appellate Board
By, THE HONOURABLE MRS. JUSTICE PRABHA SRIDEVAN
By, CHAIRMAN & THE HONOURABLE MR. V. RAVI
By, TECHNICAL MEMBER (TRADE MARKS)
For the Appellant: N.K. Manchanda, Advocate. For the Respondent: None.
Order (119 of 2013)
Prabha Sridevan, Chairman:
This application is for removal of the trade mark H.R.P.L. (letter mark) in the name of the respondent in class 12 Trade Mark 921396 was advertised before acceptance in the Journal dated 25.11.2003. The certificate mentions that the goods in respect of which the Trade Mark is claimed is Bicycle tyres and tubes.
2. The applicant is Hari Rubbers Private Limited. According to them after their incorporation, they started marketing tyres and tubes to be used in different land vehicles including bicycles and cycle rickshaws under the name consisting of letters 'H.R.P.L.' According to the applicant this was derived from the name of the company. In 2004, the applicant added the words 'Hindustan' and had been using the same openly, continuously and extensively. On 3.10.2005 the applicant filed an application for registration of the mark H.R.P.L. Hindustan in class 12 under No.1339207. The aforesaid goods of the petitioner are sold widely in India and the public associates this mark with the applicant’s goods. On 4.5.2006 the respondent issued a legal notice claiming that they had adopted this mark H.R.P.L. in 2000. This is the impugned mark.
3. The applicant contends that the respondent has never carried on business in the goods in question on the date of application. On the other hand, it is the applicant, who had adopted the letters 'H.R.P.L.' in 1991. Therefore the applicant is the prior adopter and prior user of the mark H.R.P.L. and protected under Section 34 of the Trade Marks Act, 1989 (in short ‘Act’).
4. The respondent’s mark ought not to have been registered in violation of Section 9. The respondent has not used mark nor is there any bona fide intention to use. On these grounds the removal was sought for.
5. Counter statement was field by one 'HANDAS Rubbers Private Limited' (previously Hondas Rubbers Private Limited). The respondent claims user of the mark from 24.8.1997. According to them, their adoption was honest and bona fide, as there was no identical mark registered or pending at the time of adoption. They had spent huge amount on publicity. The applicant’s claim of user from 1991 is false. The affidavit of one Pramod Chhikarahn has been filed to prove their case. According to him, he is the Director of M/s. Handa’s Rubbers Private Limited. It is stated in the affidavit that each tyre sold by the company bears the trade name H.R.P.L. and that this is being used since 1998 openly, continuously and extensively and that this name is derived from their trade name styled HONDA Rubbers Private Limited. The affidavit shows the year-wise turnover from 1998 to 2006. The affidavit of the mould maker has also been filed.
6. One Shri Arun Kumar Banerjee has filed an affidavit. According to him, he has manufactured the mould for the respondent and has been supplying moulds of Handa Rubbers Private Limited (now Handa’s Rubbers Private Limited). He has produced sale invoices from 23.2.1999 onwards, six sale invoices are marked by this witness. It is stated that he is partner of the Calcutta Tyre Mould Company. The invoices are in favour of HONDA Rubbers Private Limited. The first invoice dated 23.2.1999 does not indicate any brand name. The second invoice dated 13.12.1999 refers to the word 'Seven Star' The third invoice dated 23.3.2000 refers to the name 'Larsen Seven Star'. The 4th invoice dated 20.2.2001 also refers to 'Seven Star' that shows that it is manufactured by HANDAS Rubber Private Limited. The 5th invoice dated 9.1.2002 refers to the name of 'Good Air' and 'Road King' . The sixth invoice dated 30.9.2003 bear no name. The invoices 1 to 4 are in favour of user HONDA Rubbers Private Limited and invoices 5 and 6 are in favour of user HANDAS Rubber Private Limited.
7. A reply was filed by the applicant stating that it is not known how and when the company’s name was changed from Honda Rubbers Private Limited to Handa Rubbers Private Limited. It is stated that the presence of the mark in the Register does not prove the user. The applicant has filed Exhibit P-1 certificate of incorporation of Hari Rubbers Private Limited of the year 1991. Exhibit P-2 (colly). are invoices which are hand written and shows sales of tyres. Exhibits P-12 to P-18 are computer generated invoices showing the sales of tyres. Exhibit P-13 is the trade advertisement of the applicant. Ex.P-14 is the legal notice issued by the respondent to the applicant and the reply.
8. The learned counsel appearing for the applicant submitted that counter statement ought not to have been received and it has been filed belatedly. There are inconsistent stands relating to the date and user. There is not a single document to prove user. There is not one invoice to show the sales of tyres as HRPL. The learned counsel relied on the following decisions:
i) In MANISH MASALA FOOD PRODUCTS Vs. RADHA SARVESHWAR & CO. & OTHERS (2012 (49) PTC 485);
ii) In JAIN ELECTRONICS Vs. COBRA CABLES (P) LTD. & ANOTHER (2005 (31) PTC 330 (IPAB)); and
iii) In S.P.CHENGALVARAYA NAIDU (D) Vs. JAGANATH (D) (1994 RAJDHANI LAW REPORTER (SC) 100 at 102)
iv) In SURESH KUMAR JAIN Vs. UNION OF INIDA & ANOTHER (2012 (49) PTC 287 (DEL) (DB)
9. There was no appearance on behalf of the respondent in spite of service of notice on them.
10. We find that the trademark registration is in the name of Honda Rubbers Private Limited. The respondent claims in the statement of case that it is Handas Rubbers Private Limited previously Hondas Rubbers Private Limited. The deponent of the affidavit Pramod Chhikara has referred to the company as 'Handa’s Rubbers Private Limited'.
11. Arun Kumar Banerjee, who has been supplying mould claims to have been supplying moulds to Handas Rubbers Private Limited. Therefore, we have four names alleged to be the respondent Honda, Hondas, Handas and Handa’s. It is not clear which one is the right name, though the certificate is in favour of HONDA. We have already dealt with the invoices filed by the respondent and in none of the invoices the brand name H.R.P.L. is found. We have also referred to the pleadings regarding date of user. In the application TM-1 the date of user is said to be 2000 and in the counter statement it is 24.8.1997 and in the affidavit it is 1998.
In 2012 (49) PTC 485 (supra) it has been held that the date of user is the necessary test for any person to succeed in them obtaining registration. When registration have been obtained by giving wrong date of user marks cannot be allowed to be continued.
In 2012 (49) PTC 287 DELHI (DB) (supra) The Delhi High Court held that the regist
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ration of trade mark has been obtained by filing of false statement. In that case, the owner of the mark claimed user from 1995 for which there was no evidence. In 2005 (31) PTC 330 (IPAB) (Supra) This Board held if the bills and invoices do not reveal the trade name, the relationship between the goods identified by the mark and mentioned in the bills is not established. In 1994 Rajdhani Law Reporter (SC) 100 (supra) wherein it is held that Fraud avoids all judicial acts, eclesistical or temporal. 12. In this case, the name of the company is in doubt. The dates of user is in doubt and there is no evidence of user. The applicant has proved his case. The Original Rectification Application is allowed. Mark shall be removed.