(CIRCUIT BENCH SITTING AT AHEMEDABAD)
V. Ravi, Technical Member:
The applicant is a proprietary concern and is engaged in the business of manufacturing and marketing pressure control walls and regulators, filters, safety shut off system and instrument systems for the last four decades. They are doing extensive business all over India and their products are widely exported. The applicants seek removal of the registered mark NIRMA under no.422864 (in Class 6) of the respondent. The main ground for cancellation are summarised below:
The applicant assert that they are the proprietors of the trade mark NIRMAL with a device since 1973. This mark was inspired and coined from the first name NIRMALA w/o Shri Dinkarrai. V. Desai a former partner of the applicant firm. The applicant had applied for the registration of the trade mark with device under no.1009559 in Class 6 which was opposed by the respondent herein being opposition No.BOM-164430 mainly on the ground of deceptive similarity with registered trade mark NIRMA in Class 6. The Registrar of Trade Marks had refused the applicant’s application for registration which has been appealed before the Board and is pending adjudication. The applicants are therefore ‘person aggrieved’ within the meaning of the Act.
The applicants state that the respondent have not used the impugned mark NIRMA for any of the goods falling in Class 6 and in fact used its registration as an instrument of fraud to deprive rightful proprietors from acquiring valuable statutory protection of its mark.
There has been no use of the impugned mark till date by the respondent registered proprietor nor is there any bonafide intention to use the impugned mark for the goods covered under the said class. In fact more than five years and three month have passed since the impugned mark is entered in the registered without any use of the same.
Objection to the impugned mark is based on section 9(1)(a), 18(1), 47(1) (a) & (b) of the Act. The impugned registration has been made with a malafide motive of blocking bonafide and actual users of other marks. Further, the respondent is not entitled for the benefit of Section 32. As an alternative plea, the impugned registration also offends Section 11(3) of the Act.
2. The case of the respondent is briefly indicated below:
The respondents are engaged in the business of manufacturing and marketing various industrial and consumer goods and the impugned trade mark NIRMA is well known in the market. The respondents have registered NIRMA in all 42 classes under the Trade Marks Act. The impugned mark was adopted in 1969 from the promoters daughter’s name Nirupama. The respondent are mainly engaged in the manufacture of toilet soap, liquid blue, shampoo, detergents and other chemicals.
The respondents has recently acquired a US based company styled 'Searless Valley Minerals'. This company is among the top seven producers of Soda ash in the world which is used in the manufacturing of detergent, glasses and water treatment. The company also owns 31 miles railway track; 6 Electrical engines carrying 1600 railway wagon etc. One of its subsidiary deals with mineral operation.
The respondents further state that in 2003 they had signed an MOU with the Government of Gujarat under Vibrant Gujarat Summit to set up a cement project in Gujarat for which 268 acres of land have been provided by the State Government. In addition, NIRMA has undertaken a host of activities in education and social development area including contribution towards running of schools, colleges both within and outside the State. The respondent is also home to one of the largest pharmaceutical and medical company in Asia spread over 650 acres. In fact the brand NIRMA is the largest in India’s detergent market and it holds 38 % share. NIRMA is registered in 100 countries and sold through two million retailer to over 400 million consumers. The corporate name NIRMA Limited is also registered under the Companies Act 1956 and listed both at the Bombay Stock Exchange and National Stock Exchange. The respondent mark NIRMA is also registered under the Copyright Act,1957.
The respondents have been very vigilant in protecting its trade mark NIRMA. As many as 17 applications before the Registrar of Trade Marks for NIRMA have been opposed by them and have been either abandoned or withdrawn by the applicant. The respondent are also the proprietors of the trade mark NEEMA in as many as 96 countries.
The respondents are also diversifying their business into goods falling in class 6 either by themselves or through its subsidiary company in US. The respondent have taken on long lease of 30 years nine mines in order to extract limestone from them and has obtained ‘in-principle approval’ for the same.
The respondent state that the present rectification application is filed by NIRMAL Industrial Control Pvt. Limited whereas NIRMAL Industries are described as the proprietor. Thus there has been mis-joinder of parties which is a major defect in the present petition. The applicant have not produced the alleged Partnership Deed dated 03.02.2000 wherein NIRMAL Company has been inducted as a partner. Further, no documents have been produced to support the dissolution of Partnership Deed. Thus the applicant cannot be regarded as the proprietor of trade mark NIRMAL. The Registrar of Trade Marks has already refused the application for registration of the NIRMAL as a trade mark in view of the prior registration of the impugned mark. The respondents trade mark NIRMA was born in 1969 whereas the applicant’s mark NIRMAL was born in 1973. Both the parties are in the same market and therefore there is bound to be public confusion by the use of the applicant’s mark in the market. None of the grounds raised by the applicant is tenable and the impugned application for rectification is liable to be dismissed with exemplary costs.
The applicants vehemently deny all the averments made by the respondents in their counter statement and reiterate and reaffirm all the issues and contentions raised in the application for rectification. The applicants submit that the respondent have never used the impugned trade mark for any of the goods covered and falling in Class 6. The respondents are mainly in the business of manufacturing and marketing detergent and soaps and never used NIRMA in relation to control valves. Further, the claim that the impugned mark is used for consumer products and consumer durables by the respondent is a palpably false statement. Besides, the acquisition of a company namely 'SEREAL VALLEY MINERALS (SVM) is irrelevant for the purpose of present proceeding. Also, the booklet of SVM (Annexure ‘C’) provides only details of its mining activity and nowhere in the said booklet anything is mentioned about the respondent. The applicant’s specifically deny that the respondents are doing any business in respect of goods in which the applicants are manufacturing and trading. The applicant’s own trade mark NIRMAL is recognized in trade and business as an accomplished brand. Concerning the 17 opposition filed by the respondent and cited in the Counter Statement none of the cases has been disposed of on merit after adjudication and all the applications have been either abandoned or withdrawn. The reference to NEEMA trade mark of the respondent is irrelevant for the present proceeding. The applicants state that the registration in other countries will not purify the taint of excessive monopoly and protection sought by the respondent in respect of goods for which they have no intention of ever using the impugned trade mark. The Annual Report (Annexure ‘D’) does not prove any use in respect of the goods covered under the impugned registration. The applicants reiterate that the respondents have no case on merit and are trying to side track the real issue by padding up wholly irrelevant documents which have no bearing to the case on hand. The applicant also deny that the subject rectification petition is required to be rejected at the threshold for want of clarification /ownership in the mark NIRMAL. A bare perusal of the petition makes it amply clear that NIRMAL Industry is a proprietary concern wherein NIRMAL Industrial Controls Pvt. Ltd. is its sole proprietor. The applicant also state that the respondents have applied for the registration of the impugned mark NIRMA in class 6 only in 1984 as a ‘proposed mark’ whereas the applicants mark NIRMAL is in continuous use since 1973. Thus, the applicants are the prior user of the trade mark NIRMAL and are entitled to the protection of Section 34 as their trade mark has been honestly and independently conceived at least 12 years prior to the respondent’s trade mark. Further, the applicant state that the order of the Registrar in the opposition has already been challenged and an appeal is pending being appeal No. 07/2010 before the Board. The respondents are misinterpreting the order of the Registrar by giving a one sided picture of the findings. Regarding other technical objections raised by the respondent, the applicant state that the partnership deed is a legal document and it is just a copy and not an extract from Registrar of Firms that requires to be notarized. The applicants state that the respondents are trying to misguide the Board by filing voluminous and totally irrelevant documents showing purported use of NIRMA whereas in truth there is not a single document in the compilation to show any use for any of the goods covered in Class 6. Besides, the sales figure of Rs. 1905 crores of the respondent purportedly in respect of processed minerals are in fact not goods covered by the impugned registration in Class 6 as actually processed mineral falls in Class 1. The respondents have been in the pharma business only very recently. In short this is a fit case to invoke provision of the Section 47(1)(a ) & (b) and expunge the impugned mark from the Register. The impugned mark has not acquired any distinctiveness in relation to the goods for which it is registered. There is no ulterior motive in the institution of the present proceeding. The applicants are person aggrieved and the impugned mark needs to be removed from the register without any further delay.
4. The respondents have filed a Miscellaneous Petition to take on record additional documents. The grounds for this is to rely on some very old records which could not be traced earlier and have a vital bearing on the outcome of the proceeding. The respondent pray that in the interest of justice the MP should be allowed and the additional documents by way of bills and invoices should be taken on record.
5. In response, the applicants submit that these additional documents are not material to the present proceedings. The crucial issue to be decided is whether in fact the respondent has been using the impugned mark NIRMA in respect of goods falling in class 6. Therefore, these documents are not germane to the issues involved in these proceeding. The additional documents lack bonafide. None of the invoices appended therein relates to the trade mark NIRMA in question. The documents only show sale of coals, limestone, soap stone powder and dolomite powder. Clearly these documents are belated and an after thought and the delay is inordinate, unexplained and not justified in the complete absence of any plausible reason. The documents now being sought to be introduced seek to set up a new case for the respondent. None of the invoices bears the trade mark NIRMA for any of goods falling in Class 6. Accordingly, the Miscellaneous Petition requires to be dismissed.
6. The following authorities were relied on by the applicant:
a) 'Ciba Ltd. vs M. Ramalingam and S. Subramaniam' -AIR 1958 BOM 56, (1957) 59 BOMLR 548, ILR 1957 Bom 702
This was a trade mark appeal matter. Broadly, the case of the appellants was that the trade mark 'Cibol' so closely resembles their trade mark ‘Ciba’ was already on the register since 24th August 1946 and therefore the trade mark of the respondents should not have been registered on the 3rd November, 1949.
b) 'upiter Infosys Ltd. Vs Infosys Technologies Limited ' – 2004(29)PTC 385 (IPAB)
Sections 18,32, 46 and 100 –Rectification of Register of Trade Mark-Registration of word Infosys for computer, stationery, hardware, machine and machine tools, etc.-The mark used only for the purpose of computer software-No material to show use of mark for goods for a period five years and one month-Purity of Register of trade mark emphasised-- Application for rectification allowed and directions given for removal of registered mark from the Register of Trade Mark.
7. The respondents relied on the following authorities:
a.. 'Shantaben Karasanbhai Patel & Others' Vs S.C. Jain and Another' - 2001(21) PTC 427 (Del)
Sections 28 & 29 –Permanent injunction-Burden of proof-Where the plaintiffs established that they are the owners of the registered mark NIRMA for their several products including tea, which is an invented name, and the case of passing off and the goods manufactured by defendants are cognate and allied under the name NIRMA TIGER TEA, it is a clear case of infringement entitling the plaintiff to a perpetual injunction against the defendants, especially as the defendant’s application for rectification having been already dismissed earlier.
b. 'REVUE Trade Mark' – 1979 R.P.C. Before Mr. MYALL
Although not all the goods in the registered proprietor’s specification were of the same description as binoculars or exposure meters there was no sufficient reason to exercise the discretion so as to expunge any of the goods in that specification.
c. 'Khoday Distilleries limited (Now known as Khoday India Ltd. ) Vs Scotch Whisky Association & Ors.
Section 56 – Delay-Manufacture of whiskey under the mark ‘Peter Scot’ – Rectification of trade mark after delay of 18 years –Delay ex facie causes prejudice to a manufacturer of a popular brand – Purity of register as also the public interest would indisputably be relevant consideration-when a discretionary jurisdiction has been conferred on a statutory authority, the same although would be required to be considered on objection criteria but as a legal principle it cannot be said that the delay leading to acquiescence or waiver or abandonment will have no role to play – Held, the action was barred under the principles of acquiescence and/ or waiver.
d. 'Teagu Tec India Private Limited Vs Mr. Rikhab Chand Jain' –Order No.178/2011
e. 'Crompton Greaves Limited Vs Madanlal Munshiram Aggarwal' - IPAB Order No.13/2012
8. The matter was listed for hearing on 4th April, 2013 when both the counsel were present. We heard the detailed arguments and perused the documents and records.
9. SUMMARY OF THE APPLICANTS ARGUMENTS:
The counsel for the applicant Shri Vinod Bhagat submitted that the respondent had filed an Miscellaneous Petition being no.106/2013 for which the applicant have filed a reply. Concerning the main matter, the subject rectification application has been filed to expunge from the Register of Trade Marks NIRMA which was applied on 6th June, 1984 as ‘a proposed to be used mark’ for goods falling in Class 6. The registration certificate was issued by the Registrar of Trade Marks on 15.01.1992. The rectification application was filed on 26.06.2010. The main ground of application is based on Section 47(1) (a) and (b) (non use/no bonafide use) and Section 57(2) being wrongly remaining in the Register. The case of the applicant is that they had applied for registration of the Trade Mark NIRMAL in Class 6 which was held by the Registrar of Trade Marks as deceptively similar and the applicant’s application was refused under Sections 9, 11 and 18(1) of the Act. The applicant state that the goods of the registered proprietor under the impugned mark is not sold in the market. The applicants are person aggrieved in as much as their application filed on 16th January, 2001 was refused by the Registrar and an appeal has been filed to be taken up at the Circuit Bench sitting at Mumbai. The impugned registration is a hurdle for the applicant to carry on his business under the trade mark NIRMAL. The applicant claims prior/superior use. Further, there is no evidence how the respondent can be considered as the proprietor of the impugned mark as supporting documents for the acquisition of title to the impugned mark have not been produced? The applicants further assert that their products have been sold to the respondent (Exhibit C & D). The applicant have honestly adopted the trade mark NIRMAL. They have furnished advertisement cutting to substantiate claim of user since 1973. The applicant are therefore prior user and is an established player in the market. The counter statement has been wrongly taken on record without verifying the claim of proprietorship of NIRMA Limited in a stereotyped manner without an iota of evidence. Further the counter statement of the respondent contains no averments on assignment except for providing list of NIRMA trade marks owned by them. The applicants also reiterated the issues raised in the pleadings emphasizing that there is no proof of use of the impugned mark in Class 6. Most of the invoices produced bear no date. Apart from this, the respondents have not filed any civil suit against the applicant. By claiming excessive monopoly for unrelated marks the respondents are only trafficking in trade marks and therefore this is a fit case to expunge the trade marks from the register.
10.SUMMARY OF THE RESPONDENTS ARGUMENTS:
The learned counsel for the respondent submitted that the applicant is not a person aggrieved as goods are different and the respondents are mainly dealing in ores falling Class 6. The adoption of the trade mark NIRMAL by the applicant is dishonest. The applicant had supplied goods to the respondent and are aware of the impugned trade mark. The applicants user is from 2000 and not from 1973. The respondents trade mark NIRMA is a well known mark included in their list of well known marks notified by the Registrar of Trade Marks. This rectification application has been filed after filing of notice of opposition which is merely a counter blast. There has been an unreasonable delay in filing the impugned rectification petition and therefore the applicant are not entitled to any relief. The respondents request in Form TM 24 before the Registrar of Trade Marks is pending to bring the subsequent proprietor on record. The learned counsel also made reference to Gujarat High Court Order where the plea of subsequent proprietorship of the mark by the respondent was upheld. The competing goods are different and the applicants rights are not affected. There are technical lacunas in the rectification petition in as much as the deposition in support of the rectification petition has been made by a person who is not a partner of the applicant’s firm.
The applicants proved first user is from 1990 and that too only in respect of valves and not for any other goods. The burden of proof is on the applicant who seeks removal of the impugned mark.
The learned counsel argued that there is no proof that all goods of the respondent are made of metal and steel falling in class 6. In fact, the respondents are mainly engaged in the business of coal, limestone and dolomite powder. The applicants first invoice dates back to 1981 and although the trade mark NIRMAL is claimed to be in use since 1973. In fact, the respondents have entered the mining business as per record from 2006-07 and that too in USA as per their Annual Report. The question of delay does not arise in rectification proceeding. Therefore, the impugned mark NIRMA in class 6 should be expunged from the register.
12. We first take up the MP filed by the respondent for consideration. Section 92 of the Act provides that the Board shall not be bound by procedure laid down in the CPC but shall be guided by principles of natural justice subject to the provisions of the Act and rules made there under. The broad scheme of the Act and the practice of the Board is in favour of taking additional evidence at any stage of the proceedings to secure the ends of justice. The Board has a discretion to receive such documents on a good cause being shown. The endeavour of the Board is to ensure complete justice. The respondent are in the detergent business and are known throughout the nooks and corner in the country. It is possible in view of its vast array of business ‘some very old documents’ on which they wish to rely on were not readily traceable. We must give them the benefit of doubt. According to them these have ‘vital bearing’ on the outcome of the case and its admission is critical. We allow the same.
13. On the preliminary issue of ‘Person Aggrieved’, the applicants are adversely affected by the Registrar decision refusing his application for registration of the trade mark ‘NIRMAL’. The Trade Marks Act provides an attractive alternative to seek removal of a competitors mark from the register without any time limit if substantial grounds are made out. The Registrar has refused the application which is under appeal. Hence, the applicant derive the required locus to challenge the registration of the impugned mark.
14. The only serious grounds on which removal is pleaded is section 47(1)(a) and 47(1) (b). We will now look into these allegations. Under Section 47(1)(a), the Board has a discretion to remove a mark if it was registered without any bona fide intention of the registered proprietor that it should be used in relation to the goods for which it was registered and there has been, in fact, no bonafide use of that trade mark by the proprietor thereof upto three months before date of cancellation petition. The cancellation petition was filed on 29th June, 2010. The impugned mark was applied for registration on 5th June, 1984 as a proposed to be used mark. It was registered on 15th January, 1992 and is still valid and subsisting. The question under Section 47(1) (a) is has there been any use of the impugned mark between January, 1992 upto March 2010 being the relevant date under consideration? We have carefully perused all the documents tendered by the respondent including the additional documents filed at the last stage. Unfortunately, despite stupendous efforts there is not an iota of credible evidence to prove use of the impugned mark in respect of the goods for which it is registered. The impugned mark has been registered in respect of 'unwrought and partly wrought common metals and their alloys, rolled and cast building materials, metallic pipes and tubes, steel boxes and steel balls included in Class-6.' The respondent have filed voluminous but wholly irrelevant documents having no bearing to the case on hand. These include list of trade marks registered/pending in India; list of copyright registration, an attractive booklet of Searles Valley Minerals, California, USA with colourful pictures; Annual Report of NIRMA 2009 -10; C –Form in respect of opening of limestone mines at Junagadh to various competent authorities; invoices pertaining 2001 to 2010 with no reference to the trade mark NIRMA except its use as a corporate name at the top of the bills and in respect of sale of ‘SODA ASH LIGHT’ and ‘SODA ASH DENSE being goods that do not fall in Class 6. There are also some bills of earlier period from 1997 to 1999 of M/s NIRMA INDUSTRIES Ltd. concerning sale of ‘SOAP STONE POWDER FOR YELLOW CAKES’ which again are not goods falling in Class 6. None of the documents tendered by the respondent show any proof of use of the trade mark NIRMA for any of the goods for which it was registered in Class 6. To the extent that it has been established beyond doubt that the respondent trade mark NIRMA is not being used for the goods and the class in respect of which it is registered, the question arises despite no proof should the Board allow it continue to remain on the register in Class 6? We think not. Everybody knows that NIRMA is a very powerful and a Superstar brand. But the conduct of the respondent presents excessive monopolistic problems based on an absolutist position taken by the registry. There are specific constitutional blessings against excessive monopoly. Trade marks are hallmark of originality. It calls for a high level of understanding and sagacity both of the proprietor and customers. It is primarily designed to ward off unfair competition. The impugned mark is NIRMA and
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the applicants’ mark is NIRMAL. The respondent already have a strong competitive edge irrespective of whether it is dealing in the goods falling in Class 6. But the trade marks law should not be stretched to indulge in trade restraint. The impugned mark is not being used in respect of goods for which the applicants survival in business is dependant. Here we are confronted with a situation where consumer (end user) need not make any choice at all, let alone ‘informed choice’ as the respondent’s goods are nowhere sold as per record in the market in respect of the impugned goods. The applicant’s trade mark NIRMAL, whatever its intellectual significance is also an indicator of its commodity and a bearer of its advertising value. The respondent are repeatedly harping on the fact that NIRMA is a well known mark. That may be so. But in the instant case the Registrar had erred in holding that NIRMAL is deceptively similar to the respondents mark NIRMA and refused registration of NIRMAL. Such a ruling raises glaring question mark on the conduct and knowledge of the concerned official. The registry should not act as a hand holding emissary of well-known marks but should stay focused on the merits of each case. That is what triggered this cancellation petition. That is why we must question the registrar’s hyperbole on the matter. As the father of the Nation had once said 'there is enough on this planet for every man’s need, but not for one persons greed.' How the registry deluded itself in holding ‘NIRMA’ and ‘NIRMAL’ are one and the same is beyond our comprehension? There can be no dispute or doubt that the applicants mark NIRMAL has been coined bona fidely and is not a plagiarised version. The respondent have been unable to prove that the applicant had resorted to fraud or chicanery in the competitive struggle when it adopted the mark NIRMAL and it is not even remotely conducive to source confusion. In legal terms there is no buyer for NIRMA in respect of goods falling in Class 6. The exclusive right to the use of the registered trade mark in relation to the goods for which it is registered mentioned in Section 28(1) subsumes the factual use of the mark in the Indian market. That is not the case here. Hence, our irresistible conclusion is that the impugned mark should go. A convincing case under section 47(1) (a) has been made out by the applicant. Equally, the impugned mark is also hit by Section 47(1)(b) and non use since its inception for the relevant goods has also been established beyond a shadow of doubt. 15. In the result, ORA/133/2010/TM/AMD is allowed and registered trade mark no.422864 in Class 6 is removed from the register. There is no order as to costs. M.P. No. 106/2013 is allowed.