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


Pankaj Group, New Delhi v/s The Goodyear Tyre & Rubber Co., Ohio, USA

    No:........................
    Decided On, 20 January 1987
    At, Registrar of Trade Marks Kolkata
    By, THE HONOURABLE MR. H.P. SHUKLA
    By, ARTM
    For the Applicant for Rectification: A.K. Goel, Advocate.


Judgment Text
H.P. Shukla, ARTM:

1. On 2nd November, 1982 Subash Vij, trading as Pankaj Group, 3434, Desh Bandhu Gupta Road, Paharganj, New Delhi (hereinafter referred to as the Applicant or Applicant for Rectification) filed an application for rectification of the Register on form TM-26 under Sections 46 & 56 of the Act by removal of trade mark No. 12116 registered in Class 20 in the names of The Goodyear Tire and Rubber Company (a corporation organised under the laws of the State of Ohio, U.S.A.), 1144, East Market Street, Akron, Ohio, U.S.A. (hereinafter referred to as the "Registered Proprietors"). The grounds of Rectification as contained in the Application for Rectification on form TM-26, read as under: -

The entry made on 15th Feb., 1943 of the above mentioned trade mark in the Register has been made without sufficient cause and is an entry wrongly remaining on the Register.

The above mentioned trade mark consisting of GOODYEAR label was registered under No. 12116 in Class 20. The same was registered without any bonafide intention on their part that it should be used in relation to the goods in respect of which it was registered by them and there has, in fact, been no bonafide use of the trade mark in relation to the goods by the said Registered Proprietors for the time being upto a date one month before the date of application for rectification.

That upto a date one month before the date of the application for rectification, a continuos period of five years or longer has elapsed during which there was no bonafide user thereof in relation to the goods in respect of which it was registered by the Registered Proprietors.

The above-mentioned registration of Trade Mark No. 12116 in Class 20 is thus contrary to Sections 9, 11, 12, 18, 46 and 56 of the Trade and Merchandise Marks Act, 1958.

2. In the statement of the case the Applicant has in addition relied on the following grounds which read as under: -

The applicants are carrying on an established business of Foam and are selling Mattresses, Pillows and Cushions under the Trade Mark GOODYEAR FOAM label and the source of manufacturer is also written on the label i.e. Manufactured by Pankaj Group.

The applicants have filed an application for the registration of trade mark GOODYEAR in Class 20 in respect of Mattresses, Pillows and Cushions and the same has been numbered 385792 by the Trade Marks Registry. The said application is pending registration.

The applicants have also filed an application for the registration of artistic work GOODYEAR and the same is pending for registration before the Registrar of Copyright, Copyright Office, New Delhi.

The applicants are the proprietors of the Trade Mark GOODYEAR FOAM label in respect of Mattresses, Pillows and Cushions by virtue of long user as against any other person claiming right to the same.

The registered proprietors of Trade Mark No. 12116 have threatened with the Legal Notice No. ARL: mw : DELINF 465 dated 1st October, 1982 to the applicant of taking legal action against applicants' use of GOODYEAR label on the basis of above said registration, therefore the applicants are the aggrieved persons and as such this application for cancellation or rectification has been made.

The entry in respect of the said registered trade mark No. 12116 was made in the register without sufficient cause within the meaning of section 56 of the Act.

The registration in the name of the registered proprietors is bad in law and is liable to be removed from the register.

The applicants under the aforesaid and other considerations 'Persons aggrieved' within the meaning of sections 46 and 56 of the Trade and Merchandise Marks Act, 1958.

The foregoing constitutes sufficient grounds for learned Registrar to remove this mark from the register or to rectify the Register as may be deemed fit and proper in the circumstances of this case. It is therefore prayed that the Trade Mark GOODYEAR label under No. 12116 be removed from the register and the cost of the proceedings be awarded to the applicant.

3. On 6th July, 1983, the Registered Proprietors filed their counter-statement. While denying all the material allegations contained in the Application for Rectification including statement of the case, the Registered Proprietors have stated that import restrictions prevailing in India precluded them from using their trade mark under No. 12116 which constitutes a special circumstance excusing non-use of the mark in India. The Registered Proprietors have also relied on their several registrations in India of the same mark in different classes for different goods in this connection.

4. The evidence in support of Application for Rectification consists of an affidavit by Subash Vij, the Applicant for Rectification dated the 4th June, 1984 alongwith affidavits from by (1) Monga Ram dated the 11th June, 1984, a partner of M/s. R.S. Foam, at Village Nawda (near Delhi), (2) S. Kumar dated the 11th June, 1984, Proprietor of M/s. Tirath Ram Subhash Chander, 5257, Gandhi Market Sadar Bazar, Delhi and copies of bills and other documentary proof marked as Annexures A to I.

5. The evidence in support of Registration consists of an affidavit by Douglas F. Hill dated the 5th February, 1985 alongwith exhibits A, B and C. Exhibit A consists of name of countries where the Goodyear Tire and Rubber Company and its controlled company own registration of the Goodyear trade mark and other marks containing the words Good year. Exhibit B is photostat copies of the relevant pages taken from Import Policy of India banning the import of consumer items into India, and exhibit C consists of a copy decision in Opposition DEL-3488 issued by the Deputy Registrar of Trade Marks, Delhi.

6. Evidence in reply consists of an affidavit by Subash Vij, Applicant dated 28th May, 1986.

7. After completion of evidence, the matter was set down for hearing. Eventually the matter came up before me for hearing on 17th December, 1986 at 2-00 P.M. when Shri A.K. Goel, Advocate appeared on behalf of the Applicant and none appeared on behalf of the Registered Proprietors. I may mention here that a request on TM-56 was received in the office on 19th December, 1986 afternoon by post for adjournment of hearing but as the matter was already argued by the Applicants' Advocate on 17th December 1986 I did not allow the said request on TM-56. Although I have been deprived of the benefits of the arguments of the Registered Proprietors, yet I have given a very careful considerations on the materials available on the record in arriving at my decisions as I did in this matter.

8. The first question to be decided is whether the Applicant for Rectification is a "person aggrieved" within the meaning of Sections 46 and 56 of the Act, so as to be entitled to file the rectification application.

9. The Applicant has stated that his firm is carrying on an established business of foam and are selling Mattresses, Pillows and Cushions under the trade mark GOODYEAR FOAM which is in label form and the source of manufacture is also written on the label i.e. Manufactured by Pankaj Group. The Applicant has filed the said trade mark for registration under the Act and the same is pending under Application No. 386792 in Class 20 for the aforesaid goods. The applicant has also registered his label under Copyright Act, 1957 under No. A-39381/83. The Registered Proprietors threatened the Applicant to discontinue the use of the aforesaid trade mark issuing a legal notice No. ARL-MW :DEL INF-465 dated the 1st October, 1982 (a copy of which has been filed by the Applicant marked as Annexure E) to take legal action against the Applicant for using the trade mark "GOODYEAR" for his goods. The Registered Proprietors have admitted having issued such legal notice to the Applicant in para 15 of the counter-statement filed by them.

10. The expression "person aggrieved" has been liberally interpreted in various decided cases. It has thus been held Powels' Trade Mark (11 R.P.C. 4) that wherever it can be shown that the Applicant for Rectification is in the same trade as the 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 trade mark upon the Register, he could lawfully do, he has the locus stand to be heard as a person aggrieved. It has been further held in that case that the fact that the trader deals in the same class of goods and could use the impugned mark is prima facie sufficient evidence of his being aggrieved, which can only be displaced by the person who registered the mark upon whom the onus lies by showing that there is no reasonable probability that the objector would have used it although he was free to do so. It has also been observed 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 remains.

11. In the matter of Aktiebolaget Jonkopping Vulcan vs. V.S.V. Planichamy Nadar and others (AIR 1969 Cal. 43), it was held that if the Registered Proprietors served with a notice threatening the Applicants with legal consequences, if they did not stop using their trade mark, the Applicants in that case are persons aggrieved within the meaning of Section 46(1) of the statute.

12. On the basis of facts stated by the Applicant in this case mentioned above, there is little doubt judged by the above tests that the Applicant for Rectification is a "person aggrieved" and as such qualified to file present application for Rectification.

13. In the situation like the above, as faced by the Applicant for Rectification it is indeed difficult to conceive a person more aggrieved than the Applicant for Rectification, who legitimately feels that he would be substantially damaged if the impugned trade mark remained on the Register. I, therefore, hold that the Applicant for Rectification clearly comes within the ambit of "person aggrieved" and is entitled to apply for the removal of the impugned trade mark.

14. The position as to burden of proof in rectification proceedings is that the onus is on the applicant for rectification to make out a prima facie case that the Regd. Trade Mark is liable to be removed on the grounds alleged. Once a prima facie case has been established by the Applicant for Rectification, the onus will shift to the Registered Proprietors to meet such prima facie case and in favour of their registration of the impugned mark.

15. At the hearing Shri A. K. Goel, Advocate for the Applicant vehemently argued that the impugned Trade Mark No. 12116 in Class 20 was registered as of date 15-2-1943 and since then the mark had never been used in India in course of trade for the goods (namely, Furniture; padded upholstery for furniture; loose pads (upholstery for use on the seats of chairs and arm-rests-all made wholly or principally of rubber); mattresses, pillows and cushions) it was registered. The Regd. Proprietors had executed a registered user agreement in favour of Goodyear India Ltd., which was registered with the Registrar of Trade Marks on 14th April, 1951 but the same was not disclosed by the Regd. Proprietors in their counter statement. However, even the Regd. Users have not used the mark in India for the goods the impugned mark is registered. Shri A.K. Goel, Advocate, for the applicant has submitted that in view of the above circumstances the plea of the Regd. Proprietors that they could not use the mark due to import restrictions is not sustainable. Shri Goel, the learned Advocate of the Applicant heavily relied in AIR 1969 Calcutta 43 in this connection and contended that the Regd. Proprietors have actually abandoned the trade mark registered in Class 20 in relation to goods to which the application relates. Shri Goel, Advocate has further submitted that the facts that the Regd. Proprietors have registered the same mark in several other classes for different goods and in foreign countries have nothing to do in this case. The impugned mark has not been registered as defensive trade mark under Section 47 of the Act.

16. Section 46 reads as under: -

Subject to the provisions of section 47, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved on the ground either-

(a) that the trade mark was registered without any bonafide intention on the part of the applicant for registration that it should be used in relation to those goods by him or in a case to which the provisions of section 45 apply, by the company concerned, and that there has, in fact, been no bonafide use or the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or

(b) that up to a date one month before the date of the application a continuos period of five years or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being:

Provided that, except where the applicant has been permitted under sub-section (3) of section 12 to register an identical or nearly resembling trade mark in respect of the goods in question or where Tribunal is of opinion that he might properly be permitted so to register such a trade mark, the Tribunal may refuse an application under clause (a) or clause (b) in relation to any goods, if it is shown that there has been, before relevant date or during the relevant period, as the case may be, bonafide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered.

(2) where in relation to any goods in respect of which a trade mark is registered-

(a) the circumstances referred to in clause (b) of sub-section (1) are shown to goods, to exist so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in, a particular place in India (otherwise than for export from India), or in relation to goods to be exported to a particular market outside India; and

(b) a person has been permitted under sub-section (3) of section 12 to register an identical or resembling trade mark in respect of those goods under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or the Tribunal is of opinion that he might properly be permitted so to register such a trade mark; on application by that person in the prescribed manner to a High Court or to the Registrar, the Tribunal may impose on the registration of the first-mentioned trade mark such limitations as it thinks proper for securing that the registration shall cease to extend to such use.

(3) An applicant shall not be entitled to rely for the purpose of clause (b) of sub-section (1) or for the purposes of sub-section (2) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates.

17. For section 46(3) to apply, the actual non-user of the trade mark must be shown to have been due to the special circumstances of the trade and secondly that non-use must be not due to any intention to abandon or not to use the trade mark in relation to the goods to which application related.

18. The expression "special circumstances" in the trade has been held to meat not only special circumstances merely attendant on or attached to any particular individual business. It must be a kind of special circumstances for all the trade in those particular goods. The non-use must be due to certain external forces such as the war or prohibitive tariff and not due to any voluntary act or omission on the part of the trader. This plea of "special circumstances" as the cause of the non-user is really a defence in the nature of frustration in a contract. Special circumstances like frustration should not be induced by the proprietor himself nor can it be individual. It must always be circumstances beyond control and for which he is not responsible in any. Again, such "special circumstances" must be the direct cause of the non-use. If the non-use is due to other causes apart from special circumstances then the special circumstances cannot be availed to overcome the handicap of non-use of the statutory period of five years. The user or non-user in territories outside India cannot bring the case within Section 46(3) of the Act.

19. Use abroad and advertisement abroad outside the place where the mark is registered are not material. On principles as also on the interpretation of the statute, it must be held that the trade mark law is not extra-territorial and, therefore, use abroad in foreign countries under foreign registration cannot be used within the meaning of the Indian Trade and Merchandise Marks Act. The preamble to the Act says that it is for registration and better protection of trade marks and for prevention of the use of fraudulent marks on merchandise. The preamble and Section 1(2) state that the Act extends to the whole of India. The definition of a trade mark in Section 2(v) speaking of use in relation to goods must be understood as use within the territory of India and not use abroad. Further, under Article 6 of the International Convention for the protection of Industrial property,' each of the national trade marks is to be considered as independent. (1955) 72 RPC 191 and (1913) 2 Ch D 291 and (1898) Ch D 432 and (1951) 68 RPC 103, Relied on.

20. When in proceedings under Section 46 (1) (e) non-use for the statutory period of five years is admitted as a fact then the defence that the non-use is due to special circumstances under Section 46(3) of the Trade and Merchandise Marks Act, 1958 must be proved by the party taking the defence. The onus of proving it is upon that party taking the defence of "special circumstances". (1932) 49 RPC 621, Relied on.

21. On the basis of above guidelines I shall examine the present case.

22. The Registered Proprietors did not file any evidence to show that they have ever used the mark or at least any time before the date of Application for Rectification. They have admitted that they did not use the impugned mark under Regd. Trade Mark No.12116 in Class 20 for the goods for which it is registered. The impugned mark was registered as of date 15-2-1943 and since then it was neither use by the Registered Proprietors themselves nor through their Registered User the Goodyear India Ltd. The Registered Proprietors did not disclose the fact that they had executed registered user agreement with The Goodyear India Ltd. Further the Registered Proprietors have not filed any evidence such as advertisement to show that they have ever used the mark for the goods it is registered. Mr. A.K. Goel, Advocate of the Applicant pointed out at the hearing that the goods for which the mark was registered are the goods which can be manufactured locally. Those goods are meant for manufacture by cottage industries in India. The Registered Proprietors had got registration of the trade mark in the year 1943 with full knowledge of uselessness of such registration when the goods could be manufactured locally by the cottage industries in India and they would not be able to use the impugned mark for the goods it is registered, though it is difficult to prove that a mark has been registered without any bonafide intention to use it. The word "intention" cannotes a present and definite intention at the date of application for registration. Therefore, the absence of such intention may be inferred when there has not been any use of the mark although it has been registered for several years (Muratti Sons & Co. Ltd. Vs. Murad Ltd. (1911) 28 RPC 437), Butt & Co. vs. Dunnet (1898) 15 RPC 534 (C. A.) Further the Registered Proprietors had executed registered user agreement with the Goodyear India Ltd. and was registered on 14th April, 1951 without limit of period. No evidence has been filed by the Registered Proprietors that even the Registered User of the mark were Using the impugned mark. Due to this, there is no force in Registered Proprietors plea that they could not use the mark due to import restrictions as no import restrictions were applicable to registered users who were Indian Company.

23. Though the Registered Proprietors have got registration of the same mark in Classes 7, 9, 25, 12, 24, 16, 6 & Class 8 for different goods, the goods covered under those registrations are not of same description as of the goods covered the impugned trade mark. Further the impugned trade mark is not associated with any of the mark of the Registered Proprietors registered in other several classes. Hence proprietors are not entitled to any benefit under Section 54(1) of the Act. Registration and use of the impugned mark in foreign countries by the Registered Proprietors will not be of any assistance to the Registered Proprietors under Section 46 and/or 56 of the Act.

24. The Registered Proprietors have filed a copy of a decision issued by the Deputy Registrar of Trade Marks, Delhi in the matter of Opposition No. DEL-3488 in support of their registration. In that decision, the Deputy Registrar of Delhi have rejected Registered Proprietor's case under Section 11(a) of the Act which goes against them. However, the case before me does not relate to question regarding proprietorship of the mark. It is question of non-use of the registered mark for more than 5 years one month on the date of Application for Rectification which has been proved and the Registered Proprietors do not come under any of the exceptions available or claimed by them.

25. In view of above reasons, I hold that: -

(a) the trade mark was registered without any bona fide intention on the part of the applicants for registration that it should be used in relation to those goods by them or, in a case to which the provisions of Section 45 apply, by the company concerned, and that there has, in fact, been no bonafide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; and

(b) that up to a date one month before the date of the application, a continuos period of five years or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being:

26. Having held that Section 46(1) (a) and (b) are bar to the continuation of the impugned mark on the

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Register as above, I hold that the entry of the Registered Trade Mark No. 12116 was wrongly made in the Register and is wrongly remaining on the Register under Section 56(2) of the Act. 27. Sections 46 and 56 contain the words "the Tribunal may make such order as it may think fit": and this shows that the exercise to remove the mark is discretionary. However, once the facts are established, rectification is normally ordered. The mere fact that the Registered Trade Mark has been on the Register for a long period is not by itself a ground for exercising of discretion in favour of allowing the impugned mark to continue on the Register. On the other hand, the continuance of a mark which is liable to be removed, is an entry wrongly remaining on the Register. A mark which is registered as a defensive registration under Section 47 of the Act only cannot be removed on the ground of non-use under Section 46 of the Act. Further even if a mark is removed from the Register, common law rights are left wholly unaffected. 28. In Consolidated Food Corporation vs. Branden and Co. Pvt. Ltd., AIR 1965, Bom 35, it was observed that: - " A trader acquired a right of property, in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. Registration under the statute does not confer any new right to the mark claimed or any greater rights than what already existed at Common Law and at equity without registration. It does, however, facilitate a remedy which may be enforced and obtained throughout the State and it established the record of facts affecting the right to the mark. The trade mark exists independently of the registration which merely affords further protection under the statute. Common Law rights are left wholly unaffected. Property in adoption and use of a trade mark is superior to priority in registration". 29. In view of my findings against the Registered Proprietors on the foregoing grounds and having regard to all the circumstances of the case, which warrant the exercise of my discretion also in favour of the Applicant for Rectification, I hereby order that the impugned trade mark be removed from the Register as prayed for. I further order that the said Registered Proprietors shall pay a sum of Rs. 160/- (Rupees One Hundred Sixty only) to the Applicant for Rectification as costs in respect of these proceedings.
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