w w w . L a w y e r S e r v i c e s . i n



M/s. Manish Masala Food Products v/s M/s. Radha Sarveshwar & Co. & Others


Company & Directors' Information:- B. P. FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15311MP1994PTC032994

Company & Directors' Information:- S P P FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15412DL2004PTC128666

Company & Directors' Information:- MANISH FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15319WB2003PTC095918

Company & Directors' Information:- J S FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15314OR1991PTC002964

Company & Directors' Information:- H R B FOOD PRODUCTS PVT LTD [Active] CIN = U15146WB1988PTC045281

Company & Directors' Information:- V D FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15400DL2012PTC231717

Company & Directors' Information:- P R FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U74899DL1989PTC030483

Company & Directors' Information:- S S FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15310MH2003PTC142530

Company & Directors' Information:- B K FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15312OR1996PTC004541

Company & Directors' Information:- O H P FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U52205DL1999PTC100269

Company & Directors' Information:- K V FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15122DL2007PTC162739

Company & Directors' Information:- K. C. FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15431JK1982PTC000554

Company & Directors' Information:- K I C FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15316DL1979PTC009757

Company & Directors' Information:- R B FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15313DL2010PTC202753

Company & Directors' Information:- R K B FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15490KL2013PTC033500

Company & Directors' Information:- RADHA FOOD PRODUCTS PVT LTD [Strike Off] CIN = U15411WB1992PTC057107

Company & Directors' Information:- S K G FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15419UP1991PTC013771

Company & Directors' Information:- B H FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15134DL1997PTC084273

Company & Directors' Information:- N S FOOD PRODUCTS PVT LTD [Strike Off] CIN = U15412WB1992PTC055591

Company & Directors' Information:- H N FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15146UP1990PTC011540

Company & Directors' Information:- V K FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15412UP1988PTC010023

Company & Directors' Information:- B M FOOD PRODUCTS PVT LTD [Strike Off] CIN = U15419WB1993PTC060386

Company & Directors' Information:- I K FOOD PRODUCTS PVT LTD [Strike Off] CIN = U15412WB1991PTC051852

Company & Directors' Information:- S S V FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15499AP1982PTC003547

Company & Directors' Information:- S Q P FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15100MH2003PTC139217

Company & Directors' Information:- F S FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15311MH2000PTC126031

Company & Directors' Information:- Z K FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15400MH2010PTC209818

Company & Directors' Information:- M B S FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U01112WB2003PTC096375

Company & Directors' Information:- N D FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15131DL2002PTC115754

Company & Directors' Information:- C K M FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U51909KL1998PTC012358

Company & Directors' Information:- G S C FOOD PRODUCTS PVT LTD [Strike Off] CIN = U15316WB1985PTC038398

Company & Directors' Information:- A K G FOOD PRODUCTS PVT LTD [Under Liquidation] CIN = U15412WB1990PTC049789

Company & Directors' Information:- J M D FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15419DL1998PTC097578

Company & Directors' Information:- L K FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15200TG2016PTC103411

Company & Directors' Information:- FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15431JK1966PTC000304

Company & Directors' Information:- R R FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15490PN2015PTC154753

Company & Directors' Information:- A N FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15400TG2013PTC091969

Company & Directors' Information:- R V S K FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15490DL2012PTC245851

Company & Directors' Information:- K G Y FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15400KA1984PTC005909

Company & Directors' Information:- FOOD PRODUCTS (INDIA) PVT. LTD. [Strike Off] CIN = U15311HR1994PTC032356

Company & Directors' Information:- RADHA FOOD PRODUCTS PVT. LTD. [Strike Off] CIN = U99999DL2000PTC003688

Company & Directors' Information:- M K FOOD PRODUCTS PVT LTD [Strike Off] CIN = U15209DL1979PTC009924

    M.P.No.132 of 2011 in ORA/170 of 2009/TM/CH & ORA/170 of 2009/TM/CH, M.P. No.131 of 2011 in ORA/171 of 2009/TM/CH & ORA/171 of /2009/TM/CH, M.P. No.133 of 2011 in ORA/191 of 2009/TM/CH & ORA/191 of 2009/TM/CH

    Decided On, 06 January 2012

    At, Intellectual Property Appellate Board

    By, THE HONOURABLE SMT. JUSTICE PRABHA SRIDEVAN CHAIRMAN & THE HONOURABLE MS. S. USHA VICE-CHAIRMAN

    For the Applicant: M.P. Mirchandani, Advocate. For the Respondents: K. Hema Prakasa Rao, P.V. Ramana, Advocates.



Judgment Text

ORDER (No.10/2012)

S. Usha, Vice Chairman:

1. All the four matters pertain to the registration of the trade mark 'MANISH's. ORA/170/2009/TM/CH, ORA/171/2009/TM/ CH and ORA/191/2009/ TM/CH are with regard to the rectification of the trade mark registered under No.1218966 in Class 31, 1218967 in Class 30 and 1249101 in Class 29 respectively. The original appeal No.OA/41/2008/TM/CH against the order of the Registrar dated 17.12.2007 dismissing the opposition and allowing the registration of the trade mark 'MANISH’S' under No.810381 in Class 30 under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

2. As the matters pertain to the registration of the trade mark 'MANISH’S' and the issues involved in all the four matters and the parties concerned are one and the same a common order is being passed in all the four matters.

3. The applicant/appellant and their predecessors are engaged in the business of manufacturing/marketing of 'Spices' under the trade mark 'MANISH' since the year 1976-77. They have been using the same continuously and uninterruptedly since then. They are also the proprietors of the trade mark 'MANISH MASALA' under application No.1249337 in Class 31, 'MANISH MASALA' under No.1249336 in Class 29 and 'MANISH MASALA' under No.532343 in Class 30 and the said registration are still valid and subsisting. The words 'MANISH' forming part of their trading style has remained as the main and essential feature in their trade and business. By virtue of such extensive and continuous use the mark 'MANISH MASALA' had come to be exclusively associated with their company. The respondent’s mark 'MANISH’S' under No.1218966, 1218967 and 1249101 are likely to deceive and cause confusion as the public associate the trade mark only with that of the applicant and with their firm’s business. The customers would be bound to wonder as to whether the respondent’s goods bearing the trade mark 'MANISH’S' emanate from the applicant. Since the registered trade mark 'MANISH’S' is identical with the registered trade mark of the applicant, the applicant are aggrieved persons within the meaning of Section 57 of the Act.

4. The applicant also states that the respondent’s claim of user since 1982 is false. The impugned trade mark was not in use since 1982 as claimed by the respondent. The impugned trade mark was not inherently distinctive nor is it entitled to protection under Section 9 of the Act, which is contrary to law. If the impugned mark is allowed to remain on the Register it would affect the purity of the register. The registration also is contrary to the provisions of the Act and the common law for the time being in force. The registration has been obtained by claiming false proprietorship and suppressing material facts before the Registrar of Trade Marks. The registration is contrary to Section 11 of the Act. The impugned trade mark has been made without sufficient cause and is wrongly remaining on the register.

5. The impugned registration is liable to be rectified as the registration has been obtained by playing fraud and the trade mark is registered without any bonafide intention on the part of the registered proprietor, i.e., respondents not using the trade mark in relation to the goods for which the registration has been obtained. The impugned registration is liable to be cancelled as the registration is in contravention of the provisions of Section 9,11,18,47 and 57 of the Act.

6. The first respondent filed the counter statement stating that they are engaged in the business of procuring/processing and trading in inter alia jeera, poppy seeds, black pepper etc. and other spices and dry fruits for a long time under the trade mark 'MANISH’S'. They also submitted that the mark is registered and is subsisting. They have conceived, adopted and commenced using the mark to distinguish their goods from other traders. They have been using the mark continuously, openly and extensively without any interruption since the year 1982. They further stated that their adoption is bonafide, honest and concurrent. The trade mark is inherently distinctive of the goods in relation to which the registration has been obtained.

7. By virtue of extensive use there has been an increase in the sale bearing the trade mark 'MANISH’S'. The mark is recognized and identified exclusively with the respondent and with the public.

8. The respondent’s preliminary objection was that the applicant has not filed the English translation of the document relied on by them along with the application for rectification and therefore submitted that they cannot rely on those documents.

9. The respondent further stated that the application has been filed only with malafide intentions out of trade jealousy which is against the principles of law. The respondent also stated that the applicant have no locus standi to file the present proceedings as they have not filed any documents to say that how they succeeded to the mark and how they are entitled to file the application for rectification. The applicant had been using 'MANISH' as their trade mark but they have failed to explain as to why they applied for registration of the expression 'MANISH MASALA' together with a logo as their trade mark. For this reason alone and for the reason that the applicant have not come to the Court with clean hands, the application for rectification ought to be dismissed. The period of user claimed by them in the present proceedings is false and baseless as they have claimed user since 1985 in the other applications which are already registered.

10. The applicants are not the prior users of the trade mark and the documents filed by them cannot be relied on as they are all fabricated and therefore they cannot be said to be persons aggrieved and therefore they have no locus standi to file the rectification application. The applicants are subsequent users and have no right to initiate action against the respondent and therefore these rectification applications are liable to be dismissed with costs.

11. The applicant filed their reply to the Counter Statement denying the facts that the respondents are engaged in the business of procuring/processing various products like spices, dry fruits etc. for a long time particularly since the year 1996. The applicant in reply to the respondents averment that the applicants are not the proprietors of the trade mark have stated that Shri Lakshmi Chand Hansraj Nagda is the proprietor of 'MANISH MASALA' mark and the same has been changed to 'Manish Masala Food Products Mumbai'. A specific request was filed in form TM-24 for change in the constitution and the same has been allowed and therefore they are the present applicants and have the right to file this rectification application. The trade mark 'MANISH' was conceived and adopted by the applicant’s predecessor in the year 1976 and they have been using it continuously and extensively.

12. The applicants further stated that the Exhibits filed along with the counter statement cannot be relied on because the sales tax assessments orders from the year 1981-1982 to 2000-2001 do not mention the impugned trade mark and therefore it is irrelevant to the purpose of this case and the other document, namely, the notice of the Metrology Department also does not have the trade mark mentioned. The other document, namely, the advertisement is of the year 2000-2001 and there is no single advertisement of the year 1981-82. The birth certificate of ‘Maneesh Kumar Rathi’ produced by the respondent does not prove use of the mark 'MANISH'. The other documents involved are all false as they were hand written and cannot be relied on.

OA/41/2008/TM/CH:

13. This appeal arises from the order of the Deputy Registrar dated 17.12.2007 dismissing the opposition No.MAS-158510 and allowing the application No.810381 in Class 30 to proceed to registration confining the sale to the State of Andhra Pradesh. The respondent herein filed an application for registration of the trade mark 'MANISH’S', a label mark in respect of 'spices for sale in the State of Andhra Pradesh only' under application No.810381 in Class 30 on 16.7.1996. The mark was claimed to be used since 1991. The mark was advertised before acceptance under Section 20(1) proviso in the trade mark journal No.MEGA 2 dated 25.9.2003.

14. The appellant herein filed their notice of opposition objecting to the registration of the impugned trade mark on the ground that they are engaged in the business of manufacturing/marketing spices under the trade mark 'MANISH' since the year 1975. They are also the registered proprietors of the trade mark 'MANISH MASALA' under No.532343 in Class 30 and are also the proprietors of the trade mark 'MANISH MASALA' under No.1224658 in Class 30. The opponents/appellants further objection was that the use of the impugned trade mark by the respondent applicant was identical and hence will cause confusion in the trade and public. The appellant stated that the respondent is not and cannot be considered to be the proprietor within the meaning of Section 18(1) of the Act and the registration is in contravention of the principles of Section 9,11 and 18 of the Act.

15. On completion of the pleadings the Deputy Registrar heard the matter and passed the impugned order with a finding that the objection under Section 9 is waived and the issue is decided in favour of the respondent as the respondent has claimed user since 1991 with substantial proof and have given sales figures from the year 1991 to 2003. The objection under Section 11 of the Act was also rejected on the ground that the onus to prove the reputation of their trade mark in order to justify the likelihood of confusion or deception was on the appellant and not on the respondent. As the appellant have not established their reputation nor have they satisfied the likelihood of confusion and deception, the objection under Section 11 was also rejected. The other finding of the Deputy Registrar was that the respondents have produced evidence to prove their use since the year 1982 and the appellant’s identical mark was deceptively similar and therefore the opponents/applicant business would only cause confusion and deception all over India except for the State of Andhra Pradesh. The Registrar also decided the objection under Section 12 of the Act in favour of the respondent stating that the respondent are prior user of the mark under Section 34 of the Act.

16. As the respondents have submitted that they are doing business only in the State of Andhra Pradesh for the goods ‘spices’ only and therefore their request that the mark should be allowed for registration only in the State of Andhra Pradesh was considered and the objection under Section 18 was rejected by the Registrar.

17. The sales figures given in the affidavit filed by the respondents proves the user since 1975 but the applicants are using only from the year 1985. The respondents being the prior user of the trade mark, the issue as to the proprietorship was also decided in favour of the respondent. Aggrieved by the said order, the applicant filed this instant appeal on the same lines as in the above three rectification applications. The respondents had also filed their counter statement in this appeal in the same lines as that in the rectification application.

18. The learned Counsel for the applicant/appellant submitted that the rival marks were MANISH Vs MANISH’S. The applicant has been using the trade mark 'MANISH' for a long time and are the registered proprietor of the trade mark under No.532343 as of 1990. The respondents have filed an application for registration under No.810381 in Class 30 (impugned application in OA/41/2008/TM/CH) on 16.7.1996. The opposition was on the grounds that the registration would be in contravention of Sections 9,11 and 18 of the Act. The documents filed by the respondent – the commercial tax assessment orders since the year 1982 does not prove their use of the trade mark as it does not have the trade mark mentioned. In the certificate issued by the Inspector(Legal), Metrology Department dated 25.9.2002 at page 299 of the appeal papers, the trade mark 'MANISH’S' is mentioned. The earliest is of the year 1998 a certificate issued by the Food Inspector, Karimnagar District dated 9.10.1998. The other small bills filed along with the counter statement from pages 359-437 have the name 'MANISH' and not 'MANISH’S'. The respondent has not given any sales figures, whereas the applicants have given sales figures since the year 1976-77. The impugned registrations are in contravention of the provisions of Sections 9,11 and 18 of the Act.

19. The Counsel has relied on few judgments:

(i)AIR 1993 – Bom 237– Poddar Tyres Ltd., Plaintiff Vs. Bedrock Sales Corporation Ltd. and another, Defendants

(ii)AIR 1988 Delhi 282 –P.M. Diseels Pvt. Ltd., Plaintiff Vs. Thukral Mechanical Works, Defendant

(iii)1995 PTC 18 – M/s. Gold Star Co. Ltd., Plaintiff Vs. M/s. Gold Star Industries & Ors., Defendants

(iv)PTC Supp (1) 844 Delhi – Avis International Ltd., Petitioner Vs. Avi Footwear Indusries and another, Respondents

(v)AIR 2002 SC 117 – Mahendra and Mahendra Paper Mills Ltd., Appellant Vs. Mahindra and Mahindra Ltd., Respondent

20. The learned Counsel for the 1st Respondent submitted that they had been using the word mark 'MANISH’S' since the year 1982 and the label mark since 1991 and relied on the commercial assessment order dated 17.05.1982. The Counsel then pointed out that in the applications for registrations filed by the appellant there were several discrepancies in the constitution of the firm. The word 'MANISH' was used as a trading style and not as a trade mark. Mere registration will not prove use and reliance was placed in AIR 1960 SC 142 – Corn Products Refining Co., Appellants Vs. Shangrila Food Products Ltd., Respondents.

21. The Counsel further submitted that the registrations are confined to the State of Andhra Pradesh and so no confusion or deception among the public. The legal notice was issued in the year 2003 and the registrations were granted in the year 2005 and the rectification has been filed only in the year 2009. The appellants are dealing only with masala and not with other goods like dry fruits. The applications relied on by the appellant in Class 29 is pending registration.

22. In reply to the respondents arguments as to the appellants proprietorship the Counsel for the appellants submitted that necessary steps had been taken for the change in the constitution.

23. We have considered the argument of both the Counsel and have carefully gone through the pleadings and documents. Before we deal with the merits of the case, we would give the details of the impugned applications for registration:

(i) ORA/170/2009/TM/CH – Application No.1218966 in Class 31 dated 29.07.2003 for the mark 'MANISH’S (a word mark). The user claimed since 30.01.1982.

(ii) ORA/171/2009/TM/CH – Application No.1218967 in Class 30 dated 29.07.2003 for the mark 'MANISH’S' (a word mark). The user claimed since 30.01.1982.

(iii) ORA/191/2009/MT/CH – Application No.1249101 in Class 29 dated 12.11.2003 for the mark 'MANISH’S' (a word mark). The user claimed since 02.01.1982.

(iv) OA/41/2008/TM/CH – Application No.810381 in Class 30 dated 16.07.1998 for the mark 'MANISH’S (a label mark) -

The user claimed since 01.01.1991.

24. The appellants being aggrieved by the impugned order dated 17.12.2007 has preferred the original appeal No.OA/41/2008/TM/CH.

25. In the case of rectification applications, we will have to decide whether the applicant is a person aggrieved within the meaning of the provisions of the Act. Any person who will be injured or affected by the registration will be a person aggrieved. 'Powells' Trade Mark is a classic definition of the person aggrieved. Lord Herschell held as follows:

'Wherever it can be shown, as here, that the Applicant is in the same trade as the person who has registered the Trade Marks, 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 a person aggrieved'

26. Both the appellant and the respondent have been carrying on business under identical marks for similar goods. The appellants are aggrieved by the registration of the impugned trade mark as they are prior users and are also registered proprietors of the trade mark. Therefore, the appellants are aggrieved person within the meaning of Section 57 of the Act.

27. Next, we shall deal with the user of the mark by both the appellants and the respondents. The appellants claim user since the year 1985 whereas the respondents have claimed user since the year 1991 for label mark and since the year 1982 for word mark. As the applications are for rectification of the respondents trade mark MANISH’S (word mark and label mark) we will have to ascertain as to whether the respondents have produced sufficient documents to prove their user as per the claim.

28. We have looked into the documents filed by both the parties. In this regard, it is pertinent to mention the fact that the respondent had first filed an application for registration of the label mark in the year 1998 claiming user since 1991. The other three registrations under rectification are filed in July 2003 after the legal notice issued by the applicant in June 2003. The fact that the respondent has claimed user since 1982 in these registrations is only due to the reason that the applicant has claimed use since 1985 in their applications for registration which was stated in their legal notice. Therefore, the date of user since 1982 in the three registrations cannot be accepted. Even if we are to accept the dates mentioned both in the rectification matters as 1982 and in the appeal as 1991, there is not a single evidence to prove the use either from 1982 or 1991 whereas the 1st document is of the year 1997 only. When the registrations have been obtained by giving wrong date of user, the marks cannot be allowed to continue on the Register.

29. The date of use is the necessary test for any person to succeed in them obtaining the registration. The misstatement of date of use has been given only to take advantage of prior user. In 1994 (1) SCC 1 – S.P. Chengalvaraya Naidu Vs. Jagannath it has been held that any person who approaches the Court with unclean hands will not get any relief.

30. We shall now deal with the documents filed in original appeal. The respondents have no doubt filed documents from the year 1982 - the first document is the commercial tax assessment order dated 17.05.1982 which does not have the trade mark 'MANISH’S' mentioned. No doubt the respondent had been carrying on business under the trading style 'Radha Sarveshwar & Co.'. from the year 1982. We are not concerned about the date from which the respondent had been carrying on business, we are only concerned about the date of use of the impugned trade mark. The Offence Notice dated 03.11.1997 is the first such document which has the trade mark mentioned. The notice is is

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sued to the respondent and two others for the offence committed, i.e., they have not mentioned the address of the manufacturer, the net content and the retail price. The date of user can therefore be said to be only since 1997 and not earlier than that. 31. The Registrar has erroneously held that the onus of establishing confusion is always on the opponent/appellant, which is totally contradictory to the well settled proposition of law. In AIR 1953 SC 357 – National Sewing Thread Co. Ltd., Chidambaram, Appellants Vs. James Chadwick and Bros. Ltd., Respondent – The Registrar of Trade Marks, Intervener, it was held at para 22 - 'The principles of law applicable to such cases are well-settled. The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant. It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of S.8 and therefore it should be registered….' 32. Based on the above observation, the onus is cast on the respondent to satisfy the Registrar that the grant of registration would not cause confusion among the public. The other findings of the Registrar as to use, rejection of the objection under Section 12 and 18(1) and others are set aside. 33. For the reasons stated above, we hold that – (a)the original rectification application Nos.ORA/170/2009/TM/CH, ORA/171/2009/TM/CH and ORA/191/2009/TM/CH are allowed since the respondent has not proved user as claimed in their application for registration; (b)the original appeal No.OA/41/2008/TM/CH is also allowed as the respondent has not proved the claim of use; (c)the Registrar of Trade Marks is therefore directed to remove/cancel the trade mark 'MANISH’S' registered under Nos.1218966 in Class 31, 1218967 in Class 30 and 1249101 in Class 29 from the register and the application No.810381 in Class 30 a label mark be refused registration. 34. The original rectification applications and the original appeal are ordered accordingly with costs of Rs.5,000/- each. The Miscellaneous Petitions are also dismissed.
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