(CIRCUIT BENCH SITTING AT MUMBAI)
1. The two marks are identical - 'PRAKASH PACKERS AND MOVERS', even the 'flying bird' logo is identical. Therefore one is evidently flattering the other by imitation. The question is who was the first.
2. The impugned mark is No1105671 in class 16. The applicant’s mark is 1367902 in class 39. We heard both the Counsel.
3. These are the evidence filed by the applicant –
(i) Annexure – I – Copy of certificate of incorporation of Applicant
(ii) Annexure – II – Copy of Resolution of Board of Directors
(iii) Annexure – III – Copy of Affidavit of Mr. Sanjay Agarwal
(iv) Annexure – IV – Copy of label of applicant’s trade
(v) Annexure V – Copy of lease agreement with Mr.T. Lingaya dated 15.09.1995
(vi) Annexure VI – Copy of agreement for providing vehicles with Mr. Ansar Pasha dated 16.10.1995
(vii) Annexure VII – Copy of letter of Punjab & Sind Bank dated 06.09.2005
(viii) Annexure VIII – Sales figures and sales promotional expenses from 1995 to 31.05.2007
(ix) Annexure IX – Copy of assignment deed dated 01.06.2007
(x) Annexure X – Copy of Trade Marls Registry’s Order dated 17.10.2007
(xi) Annexure XI – Copies of plaint, injunction petition of O.S. No.256 of 12005
(xii) Annexure XII – Copies of plaint, notice of motion and order passed in Suit No.2075 of 2007
(xiii) Annexure XIII – Copy of 'B’ report dated 10.06.2007 filed by Kalasipalyam Police Station, Bangalore
4. Along with the Counter Statement, the respondent filed –
(i) Exhibit A - Affidavit of Mr. Ashok Vaidya dated 26th March 1995
(ii) Copy of Chartered Accountant’s Certificate dated 4th July 2007 (Sales Turnover)
(iii) Copy of Chartered Accountant’s Certificate dated 4th July 2007 (Advertising and Sales Promotion Expenses)
(iv) Copies of advertisement and promotional material
(v) Copies of clients letters for the period 1995 to 2007
(vi) Copy of Registration Certificate of the Trade Mark ‘PRAKASH PACKERS & MOVERS with the logo of bird’ in Class -16
(vii) Copies of correspondence exchanged between the Respondent No.1 and the Applicant/Petitioner
5. The respondent also filed M.P. No.138/2007 to receive reply - Exhibit ‘A’ to ‘L’ which we will refer to as –
(i) Exhibit ‘A’ - Copy of Lorry Receipt in the name of Prakash Roadways dt. 02.03.1995
(ii) Exhibit ‘B’ – Copy of Income Tax Return filed by opponent for the financial period 1994-95
(iii) Copy of challan dated 11.12.1996 showing the professional tax paid for period 1995-96 in the name of Prakash Roadways on 16.03.1995
(iv) Exhibit ‘F’ – Copy of Chartered Accountant’s Certificate showing annual turnover for the period 1994-95 to 1998-1999 & 1999-2000 to 2009-2010
(v) Exhibit ‘G’ – Copy of letter by Rishabh Instruments Pvt Ltd. dated 11.04.1995
(vi) Exhibit ‘H’ – Copy of letter by Tata Hydro Electric Power Supply Company Limited dt. 21.04.1995
(vii) Exhibit ‘I’ – Copy of letter by Metallurgical & Engineering Consultants (India) Ltd. dt.27.05.1995
(viii) Exhibit ‘J’ – Copy of letter by CMC Ltd. dt.26.05.2009
(ix) Exhibit ‘K’ – Copy of Affidavit dated 04.07.2007 of Mr Ashok K. Vaidya
(x) Exhibit ‘L’ – Copies of advertisement in The Times of India, Mumbai on 06.03.1995
6. In paragraph 26 of the rectification application, the applicant claimed that the respondent is not the proprietor. The respondent No.1 is the licensee of the applicant. In the counter statement at paragraph 17(iv) and (xxi) it is stated that Sanjay Agarwal who was the predecessor of the applicant was an employee of a company called Eastern Freight Carriers (P) Ltd. which was entrusted with the job of dealing with the packing and moving services of the respondent No.1 in 1999 and that the said Sanjay Agarwal continued to represent respondent No.1 till 2003 and that Sanjay Agarwal started his own business in the name of Punjab Packers and Movers in the year 2001 and P.K. Packers in the year 2001 and because that business could not be established he adopted the name identical to the name of the respondent No.1 in 2003 and copied verbatim the name and style of the respondent along with the 'bird' logo. In the reply to the Counter Statement, the applicant has reiterated that the story is actually the other way round and the respondent No.1 was coordinating with the traders of the western zone in the capacity of the applicant’s licensee and had dishonestly obtained the impugned registration ashing upon the applicant’s goodwill and reputation.
7. As we have stated earlier, the marks are identical including the 'bird' logo. Therefore much will depend upon what the documents speak. We will first deal with the applicant’s documents. Annexure I is the certificate of incorporation which shows that in 2005 Prakash Packers and Movers Private Limited was incorporated. Their case is that their trade mark was adopted in 1995 by Sanjay Agarwal who was fond of his nephew Prakash Agarwal. Both of them started a partnership firm in the name of Prakash Packers & Movers. Sanjay Agarwal conceived the idea of the ‘flying bird’ logo in 2007. The company was incorporated and Sanjay Agarwal assigned and transferred the rights in the mark which he had been using from 1995 to 2007. Annexure II is a copy of the resolution resolving that Mr. Prakash Agarwal will execute all applications. Annexure III is the affidavit of Sanjay Agarwal dated 25.8.2007 speaking of the adoption on or about April, 1995 of the mark and assignment thereof. Annexure IV is a copy of the label of the applicant, a flying bird carrying a bundle against the background of the house with the words 'PRAKASH PACKERS & MOVERS'. Annexure V is a rental agreement dated 15.9.1995 of the premises in favour of Sanjay Agarwal, proprietor of the said Prakash Packers & Movers. Annexure VI is another rental agreement with one Ansar Pasha who was providing vehicles for loading and transporting. Here again the lessee is described as Sanjay Agarwal of Prakash Packers and Movers. Annexure VII is of the year 2005. Annexure VIII is a certificate of the Chartered Accountants certifying the turn over from 1995 to 2007. Annexure IX is the Deed of Assignment. The annexure to the Deed of Assignment are the two trade mark applications 14197927 and 1367902 and the receipt for the consideration for assignment of Trade Marks. Annexure X shows that TM 16 dated 11.6.2007 is allowed. Annexure XI is the plaint filed by the respondent in City Civil Court at Hyderabad where it is stated that the plaintiff (respondent) are a transport organization established in 1989 under the trade mark 'Prakash Packers and Movers' and in the next paragraph it is stated that the trade mark was adopted in 1996 and that in 2004 they came to know that the applicant had copied the trade mark and therefore have sought for injunction. Annexure XII is the proceeding in Hon’ble High Court of Bombay in Suit No.1203 of 2007 filed by the respondent against the applicant for almost the same reason. On 22nd August, 2007 the Hon’ble Bombay High Court held that the respondent is the originator of the mark. Annexure XIII is the ‘B’ report on the complaint filed by the respondent herein which shows that the report is closed as the case having been filed on insufficient evidence. Annexure XIV is the impugned mark.
8. When the matter was argued the order passed in the contempt petition in the Suit filed by the respondent was filed. An undertaking is given therein and the order clearly says that it will not prejudice the rectification proceedings before us. After the matter was argued and orders have been reserved on 14.3.2012, the Counsel for the respondent Shri A.P. Rege had communicated the order passed by the Hon’ble Bombay High Court on 28.3.2012. This order indicated that the defendants, namely the applicant herein, were prior users of the mark 'PRAKASH PACKERS and MOVERS' and that the respondent herein had not produced any sales figures prior to 1998. The notice of motion was therefore dismissed.
9. Now let us look at the respondent’s documents. Exhibit ‘A’ is the affidavit of Shri Ashok Vaidya dated 4.7.2007 wherein it is certified that he created an artistic work 'Flying Bird' for consideration of Rs.543/- by cheque dated 26.3.1995 to Mr. Sat Prakash Om Prakash Gupta who was then trading as Prakash Roadways. The Chartered Accountants’ certificate which is the Exhibit ‘B’ shows the turn over of Prakash Packers & Movers. Exhibit ‘C’ is the advertisement expenses of Prakash Packers and Movers (formerly known as Prakash Roadways). In fact we find that the Chartered Accountant had under the column name of 'assessee' had referred to Satprakash Om Prakash Gupta, C/o Prakash Roadways until 1998. It is only from the assessment year 1999-2000 the name of assessee was changed to Satprakash Om Prakash Gupta, C/o Prakash Packers & Movers. The advertisement expenses of the respondent which is marked as Exhibit ‘C’ is also to the same effect. The advertisement shows PRAKASH PACKERS & MOVERS as being the unit of PRAKASH ROADWAYS. These are all after 2000. Exhibit 'E’ which are client’s letters from the year 1995 to 2007 are documents which show transport of personal belongings by various persons certifying that they used the services of Prakash Packers and Movers (proprietor M/s. Prakash Roadways). Exhibit ‘F’ is the registration certificate. Exhibit ‘G’ is the correspondence exchanged between respondent No.1 and the applicant which shows that Punjab Packers and Movers and Prakash Packers and Movers operating from the applicant’s address have entrusted work to Prakash Packers and Movers, the respondent herein. There is a document which has come from the desk of Shri S.K. Agarwal of Eastern Freight Carriers (P) Ltd. at the Bangalore address which is in the year 2003 addressed to M/s. Prakash Packers. Then we have the other set of documents filed along with the Miscellaneous Petition. Exhibit ‘Q’ is the affidavit of one Praveen Omprakash Gupta according to which he and his brothers had a business called 'Eastern Freight Company' and when Sat Prakash Gupta whom he knew well, asked for some person to look after his business at Bangalore, he suggested the name of Sanjay Agarwal who 'was a staff and he did not have any packers and movers business and after getting the full knowledge of the business Sanjay Agarwal had started the business in some other name'. It seems he did not get any benefit from it. He intentionally and cleverly named Prakash Packers and Movers in ROC which is dated 18.2.2007. Exhibit ‘X’ is the criminal complaint filed in Kalasipalyam Police Station. Exhibit ‘Y’ is the copy of the affidavit filed in City Civil Court, Hyderabad. Exhibit ‘BB' is the complaint filed before the Deputy Commissioner of Police, Borivali. Exhibit ‘CC’ is the affidavit of apology stating that they had stopped using the impugned mark name and in fact they have discontinued the services pending the final hearing of the Notice of Motion. We have already seen that the Notice of Motion was dismissed. Evidence in reply is filed by the respondent in reply to the documents filed by the applicant who have filed a Miscellaneous Petition. In the M.P. No.139 of 2010 the applicant has filed the dismissal of the opposition of the respondent to the registration of the applicant’s mark. A review petition has been filed against this dismissal and the same is pending. Exhibit III is filed along with this M.P. which shows Ansar Pasha’s affidavit to prove the agreement with Mr. Sanjay Agarwal, Proprietor of Prakash Packers and Movers stating that from 16.10.1995 Sanjay Agarwal, proprietor of Prakash Packers and he had a business agreement. Exhibit V is dismissal of the Civil Suit pending before the City Civil Court, Hyderabad on no instructions. Exhibit VI is the affidavit of Mazhar Amir Jan owner of M/s. Asgar Ameer Jan, Artist through whom the bill dated 10.12.1995 to Prakash Packers and Movers, Bangalore has been marked and in his affidavit he has stated that he worked for Sanjay Agarwal. Exhibit VII is the copy of the order dated 15.10.2010 dismissing the complaint filed by the respondent.
10. The applicant has also filed another document at Annexure I which is an affidavit of one Mrs. Neha J. Karakasia. She sent a letter as per the instructions of her client to Mr. Ashok Vaidya who claimed to be the author of the artistic work at the address given in the affidavit sworn to by the said Ashok Vaidya in 2007 and the letter has been returned with the endorsement 'the addressee is not residing at the address given'.
11. There is no evidence to show that applicant was entrusted with the job of packing and moving of respondent No.1 in the year 1999 as pleaded by the respondent and that he continued to represent respondent No.1 since 2003. Similarly there is no evidence to show that respondent No.1 was engaged by Sanjay Agarwal, the predecessor in interest of the applicant to use the trade mark in relation to packing and transportation for western zone. So both these statements are the mere 'ipse dixit' of the parties.
12. It is the case of the respondent that he engaged the services of the applicant, Sanjay Agarwal in 1999. So only after the commencement of the user of the word 'PRAKASH PACKERS AND MOVERS' by the applicant or after 1999 we need to consider whether we have to give any weight to the statement of the respondent. The applicant has produced two documents, one, the rental agreement and the other the business.agreement of Ansar Pasha along with the proof affidavit of Shri Ansar Pasha to show that even in 1995, Sanjay Agarwal was described as the proprietor of Prakash Packers and Movers. It is possible that he was also in the employment of Eastern Freight Carriers (P) Ltd. carrying on the rival business on the side. But we are not concerned with that aspect. Here we only have to see whose adoption of the word was prior user. The applicant has been definitely operating as Prakash Roadways. It is claimed that they were operating from 1985 but even the Chartered Accountants’ certificate refers to statistics from 1995. So both Prakash Roadways of the respondent and PRAKASH PACKERS AND MOVERS of the applicant appears to have commenced in 1995.
13. The respondents cannot claim ownership over the word ‘PRAKASH’. It is a common proper noun. Whether we believe the reason given by the applicant that he adopted the name for his nephew’s sake or not, the fact remains on the date of filing of the reply to the counter statement, Mr. Prakash Agarwal has verified the affidavit and is described as the Director of Prakash Packers and Movers. Their case is that Sanjay Agarwal commenced the business in 1995 and out of his fondness for his nephew called the business PRAKASH PACKERS AND MOVERS. Then they have become partners and finally the company was incorporated with the nephew, Prakash as the Director. Whatever may be the reason, PRAKASH PACKERS AND MOVERS as a business had been conducted by Sanjay Agarwal even in 1995. Therefore the case of the respondent that he allowed them to use the name in 1999 cannot be right. The case of the applicant, that the respondent was allowed to use his name of PRAKASH PACKERS AND MOVERS for the western zone is also not supported by affidavit. However the respondent has produced several documents with each address certified by different persons who had engaged Prakash Packers and Movers to shift their personal belongings. As stated earlier the address given in only one of those documents is the address of the respondent herein. Further Prakash Packers and Movers is described as proprietor, Prakash Roadways. In many of these there are no addresses and in two documents those bills are addressed to one Manish Kumar. It may be that these bills reflect the work done by the respondent as a licensee of the applicant for the western zone or it may b
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e otherwise but clearly Prakash Packers and Movers had no account of its own till 1999-2000 as per the Chartered Accountants’ certificate relating to sales statistics and advertisements. 14. We are not discussing the evidence produced by the respondent for his business as Prakash Roadways. What we are concerned is with the registration of the impugned mark. There is no evidence about independent financial existence of Prakash Packers and Movers the respondent as per the Chartered Accountants’ certificate until 1999. The affidavit of Ashok Vaidya who created in 1995 the logo for Gupta who was then trading as Prakash Roadways cannot support the case of the respondent. In the absence of any clinching evidence we are not able to reject the case of the applicant’s prior user. Once this is established, then the mark of the respondent which is identical and for the same service must go, in public interest. 15. 2006 33 PTC 735 (IPAB) – Agaroma, Applicant Vs. Thai Airways International Ltd. & Anr, Respondents -It is related to the rejection of a case as user on the basis of complimentary items given for free distribution, which has no application here. 16. Since we have looked at all the evidence, even if we give the affidavit of the artist any weight it only speaks of the creation of the logo. There is nothing to show from which date the respondent started using the mark. 17. When both have adopted the same words PRAKASH PACKERS AND MOVERS and it is for the same service, we think the subsequent user must give way to the prior user. The respondent claims user since 1999, the applicant has proved user from 1995. 18. ORA/60/2008/TM/MUM is allowed. No costs. The impugned trade mark bearing No.1105671 in Class 16 is removed. Miscellaneous Petitions No.175/2009 and 138/2010 are allowed.