ORDER (No.112 of 2012)

PRABHA SRIDEVAN, CHAIRMAN:

1. The applicant seeks the removal of the mark THAAYAR under No. 1328933 in respect of wet idly dosa flour, wet adai flour, wet rava dosai flour, wet products derived out of cereals and flour, dry idly in Class 30.

2. There are cross suits filed between the parties and they are pending. According to the applicant, the applicant’s adoption of the Trade Mark THAYAR was prior to the respondent. The respondent’s adoption is fraudulent.

3. The applicant claims that they have acquired tremendous reputation and goodwill in respect of goods associated with their mark. The statement of case contains a list of their trade mark applications, the class of goods and the status of applicant. According to them even people going to North India buy THAAYAR products. The mark has been used for several years. One Mr. M.K. Ramanathan was carrying on the business of Dairy and Home links since 1927. He had applied for registration of the mark THAYAR Dairy as early as 1987. The applicant entered into a lease agreement with Mr. M.K. Ramanathan and according to the applicant, the mark THAAYAR Dairy has been continuously used. But the respondent is doing the business in the same premises, by winning one of the sons of Shri M.K. Ramanathan and have adopted the mark. The respondents are aware of the mark of the applicant. The mark is a clear modification of the applicants mark. With the addition of ‘A’, to THAYAR cannot make a big difference. Anyway, the name and the articulation is the same. In Tamil the two words Thayar and Thaayar will sound the same. The respondents will gain an unfair advantage by the use of the mark. The respondents had obtained injunction from the Hon’ble Madras High Court. On appeal, it was modified. The applicants applied for the mark on 21.06.2004. In respect of the objections, considering the distinctiveness of the mark, it was advertised on 17.01.2005. The applicant has given his sales statistics. Subsequent to this, the respondent has applied for the mark THAAYAR claiming a fraudulent user from 05.05.1997. According to the applicant, this is contrary to the provisions of the Trade Marks Act, and it must be removed.

4. In the evidence in support of the application, they have filed the TM application dated 01.08.2003 in Class 30. Annexure ‘B’ is the registration certificate and Annexure ‘C’ is the lease Agreement. Annexure ‘D’ is the Memorandum of Agreement. The rent receipts which show the rent received from Shri M.K. Ramanathan C/o Thayar Dairy have been produced to show that the original owner had been using the word 'Thayar Dairy / or carryng on business in the name of Thayar Dairy. There is an affidavit by Shri M. K. Ramanathan claiming to be sole proprietor of THAYAR Dairy stating that he had applied for registration of the mark in No. 478710 and that it has been continuously used from 1927. Sales figures have been given. It has been signed by Shri M. K. Ramanathan on 16.12.1989. We cannot accept this affidavit in evidence, since the deponent Mr. Sundaram in whose name the evidence has been filed has not stated that he is familiar with the signature of Mr. M.K. Ramanathan. It could have been proved by the affidavit of a person who is familiar with the signature of M.K. Ramanathan. The lease agreement is in favour of the applicant Mr. M. Sundaram and hence that can be looked into. We cannot receive the Will as evidence. But however, in the sale deed, executed by the sons of Shri M.K. Ramanathan in favour of the proprietor, the applicant there is a reference to the Will. This is also confirmed by their letter addressed by the two sons in a Stamp Paper which bears the applicant’s name. Therefore, for the fact that the business of Thayar Dairy has been transferred to the applicant, there is evidence. But we are unable to receive the M.K.Ramanathan’s affidavit or the Will as evidence since it has not been proved in accordance with law. Then we have the judgement of the Hon’ble Madras High Court and the Certificate of the Chartered Accountant with regard to cooking butter. We also have evidence to show that the mark has been used in relation to various products.

5. Now, we come to the evidence filed by the respondent in the Counter Statement. According to the respondent, from 1997, the respondent is making the preparation mentioned in the certificate under this mark . The respondent has obtained ISO 2001-2000 and HACCP Certificate. According to them they were the first to introduce the concept of wet flour etc. in an organized manner in packets. According to them it is because of their goods that a new entry has come under the Sales Tax Act relating to ready to use wet flour paste. When they have advertised the mark, it had acquired secondary meaning to denote the respondent’s products alone. The applicant was running a provision store in the name of Thayar Dairy and was in fact marketing the respondent’s products. Suddenly, a cease & desist notice was issued, all efforts at mediation failed. There is absolutely no dishonesty in adoption and respondents are the registered owner. They have filed the partnership deed of THAYAR food products, the adoption of the mark, the invoices of THAYAR Idly flour over the years. It is relevant to note that in Exhibit ‘C’, there is sale of THAYAR Idly flour in 28.06.1998 through Food World, Nilgiris and in fact THAYAR Dairy at page -57. From pages 57 – 67 are invoices of THAYAR Dairy in the years 2002- 2003, 2004 – 2005 and 2006. These are of THAYAR food products. The advertisement in the various media have been filed and articles about THAYAR Food products have also been filed. Annexure ‘G is the ISO certificate. Annexure ‘H’ is the HACCP certificate. Annexure ‘I’ is the certificate given by Central Food Technological Research Industry. Then there are the Commercial Tax Assessment orders.

6. In ORA/117/2007/TM/CH, the respondent had filed rectification of the applicants mark and the applicant’s mark has been removed, since the Board was of the opinion that this applicant has used the mark only as a trading style and not as a trade mark. We are informed that this order has been challenged before the Madras High Court.

7. The learned counsel appearing for the applicant submitted that Shri M. K. Ramanathan applied for the mark THAYAR but it was not renewed after 2001. According to the learned counsel along with the business, the trade mark with goodwill got transferred. He referred to M.P. 242/2011 which is theaffidavit of Mr. Sundaram in the Civil Suit and the cross examination of Shri Ananda Krishnan.

8. In the cross examination of the respondent, Mr. Ananthakrishnan has stated that he knew about such business under the name THAYAR Dairy in Ranganahan Street. He has stated that the statement in the article that the THAYAR food products had been in existence for 60 years is not correct. Before taking the premises on lease, which belongs to Shri Muthukrishnan, son of Shri M.K. Ramanathan, he has been doing Data Entry job. In cross examination, he has stated that he chose the name THAYAR for his products and he knew that Shri M. Sundaram was running the shop in the name of THAYAR Dairy. He stated in cross examination in 1997 that he has sold the products under the trade mark THAYAR. He has stated that prior to 1997, he did not use the word THAYAR from 1997 and he has added that they have used the word THAYAR Dairy. He has stated that both the products look alike except for the address. He has stated that it is wrong on the part of the applicant to start marketing Idly flour. The evidence of Shri. Sundaram has also been filed. In the cross examination he has stated that Wet flour batter is not included in the application in exhibit B-1. According to him he has been doing wet batter business from 1977. He has stated that the wet batter are ordered to be prepared outside and we packed the products in our pouch. He has given specific names of the persons from whom he has purchased the wet batter. According to him Exhibit P-7 & P -8 differ. He is not aware whether the respondents marketed their products everywhere. According to him he came to know only in 2006, respondents are marketing their products wet batter in the name of THAAYAR. He has denied that he is purchasing the wet batter from the respondents. He would deny that he knows Mr. Mahadevan & Ananda Krishnan, the partners of respondents.

9. The learned Counsel stated that the evidence would show whether it is a deliberate intention to decide the evidence of the applicant as PW 1 but it would show that they had bonafidely adopted the mark THAYAR. The invoices of THAYAR food products would not help the respondents since the link has not been proved. According to him, the applicant can take advantage of the user by Shri M. K. Ramanath. by virtue of trading.

10. We have to consider the evidence filed before us. Eschewing with enormous documents that have been filed on both the sides, we find that even in 1998, THAYAR Dairy had received 13 packets of 600 gms of 'Thayar Idly Mavu' from Thayar Food Products. There are documents to show that Thai food products also had sold Wet Idly Mix and Wet Adai Mix to Thayar Dairy in 2002. The applicant denies knowledge of Thai food product as stated in evidence, he does not know from whom he had purchased and they came to know only in 2006 that the defendants are marketing their products i.e. wet batter under the name THAYAR. He had also denied knowledge of the respondents. We have to reject this evidence since Thai Food Products and Thayar Food Products have the same address and in any event, the bill dated 01.08.1998 shows that it is only in the name of the respondent and it is an invoice to the appellant. Therefore, this is a positive act of acquiescence. They are aware of the respondents / defendants existence and they have themselves purchased Idly batter described as Thayar Idly Mavu. He had actively taken benefit of the goods marketed by the respondent unde

r the name i.e. in the impugned mark herein. 11. The user claimed is 05.05.1997. We have already referred to the invoice of the respondent selling Thayar Wet Idly Mavu to the applicant themselves. There are many documents showing wide publicity, the user is proved and the fact that the applicants allowed them to grow is made clear from the evidence. These are special circumstances. The fact that the applicant had purchased Idly batter from respondents shows that it was not clandestine use. It was open continuous use. Being a supplier of wet batter under the mark, the respondent would have thought with justification that the applicant had no objection to the respondent’s use. Therefore, we do not think the mark deserves to be removed. However, considering the fact of use by the applicant, we will exercise our discretion and restrict the respondent to use the mark to the specific goods mentioned in the certificate. 12. The registration certificate shows that registration is claimed only for wet batter. The respondent is restricted to use this mark only to these goods above. ORA is ordered accordingly.