(Circuit Bench Sitting at Delhi)
S. Usha, Vice-Chairman
1. This is an application for removal of the trade mark SONI label for sugar boiled confectionery registered under No.580397 in class 30 under the provisions of the Trade and Merchandise Marks Act, 1958 (hereinafter called the Act). The above application was filed before the Hon?ble High Court of Delhi in C.O.No.19/2001. Pursuant to the provisions of section 100 of the Trade Marks Act, 1999, the application was transferred to this Appellate Board and re-numbered as TRA/161/04/TM/DEL.
2. The brief facts of the case are:-
The applicant No. 1 is a private limited company and the applicant No. 2 is the director of the applicant No. 1 company. The applicants are carrying on the business of manufacturing and marketing of boiled sugar confectionery under various trade marks. Among the various trade marks, the applicant is also using the SONI label which is represented and sold in packing having distinctive artistic features, get up, colour and design.
3. The respondent No. 1 is the registered owner of the trade mark registered under No. 580397 in class 30. The respondent No. 1 assigned the trade mark to the respondent No. 2 by a deed of assignment dated 20.04.2001. The respondent No. 2 filed a suit for infringement of trade mark against the applicant No. 1 in the District Court under No. 21/2001. The said suit has been filed by misrepresenting the facts before the District Court.
4. The trade mark SONI label was first adopted and used by the firm M/s Sardar Confectionery Works in the year 1982 for which Shri Harjeet Singh the proprietor, who had designed and developed the design of SONI label. In the year 1986, the proprietorship firm was converted into a partnership firm with Shri Trilok Singh, Shri Harjeet Singh and Smt. Paramjeet Kaur, W/o Shri Amarjeet Singh were made partners. In the year 1986, an application for registration of the trade marks under No. 446193 was filed by the respondent No. 1 (Mr. Harjeet Singh as partner) which is still pending.
5. Shri Amarjeet Singh and Shri Harjeet Singh, sons of Shri Trilok Singh, Smt. Charanjeet Singh, W/o Shri Kawaljeet Singh and Smt. Paramjeet Singh, W/o Shri Amarjeet Singh carried out the business as a family business. Shri Kulwant Singh filed a suit against the assignee of the respondent No. 1 ? M/s Sardar Confectionery who is the real brother-in-law of Shri Kawaljeet Singh the proprietor of the respondent No. 1 is also carrying on business of trading under the Soni label for toffees/boiled sugar confectionery by purchasing goods for the applicants.
6. In the year 1987 M/s Nutrine Confectioneries filed a suit for infringement against M/s Sardar Confectionery Works and Shri Kawaljeet Singh. The suit was dismissed as there was no record to prove that Kawaljeet Singh was the proprietor of SONI label.
7. The impugned application for registration was filed without any prior intimation to the family members of Mr. Trilok Singh who were carrying on business of manufacturing sugar boiled confectionery. In the year 1992, Shri Kawaljeet Singh started another firm with the name M.s Sardar Food Products, where all the family members participated in the business. In the year 1995, Shri Amarjeet Singh as sole proprietor started the business of M/s Kalsa Industries, where Shri Kawaljeet Singh also participated in the business. In the year 1996, M/s Jagjeet Foods Private Limited was founded, where Shri Amarjeet Singh and Shri Kawaljeet Singh were directors. Both M/s Sardar Foods and M/s Jagjeet Foods Private Limited continued to carry on their business of manufacturing sugar boiled confectionery under various trade marks including SONI label. In April 2001, Shri Kawaljeet Singh was removed from the Directorship of M/s Jagjeet Food Private Limited.
8. In view of the above, the impugned trade mark registered under No. 580397 in class 30 has been wrongly registered by concealment of facts and fabrication of documents without permission from the family members of Shri Trilok Singh. By the impugned registration, the respondents are preventing the applicants from carrying on their business using the trade mark SONI label. The trademark SONI label is a joint family property which the respondents cannot claim any exclusive right over the same. The applicants are bonafide and honest adopters and users of the trade mark SONI label. The grounds of rectification are ?
(i) the impugned trademark registration is an abuse of process of law;
(ii) the impugned registration has been obtained with a malafide and dishonest intention;
(iii) there are errors in the registration and the same is liable to be rectified;
(iv) the impugned trade mark registered has not been put to use upto a date of one month before the date of this application for rectification for a period of five years;
(v) the use of the impugned trade mark by the respondent No. 2 (assignee) is not to be taken as ?use? by the registered proprietor;
(vi) the trade mark is liable to be removed from the register under section 18 of the Act;
(vii) the registration is made without sufficient cause and is wrongly remaining on the Register; and
(viii) the registration is in violation and contravention of the provisions of the Act.
9. The respondents No. 1 and 2 filed their counter-statement stating that the instant application is not maintainable either on law or on facts of the law. The applicants are the permitted user of the respondents and are using under the respondents. In view of the above, the application is barred by the principles of estoppel, waiver, acquiescence as also by delay and latches. The applicants are not persons aggrieved and cannot maintain an application for rectification. Shri Kawaljeet Singh, sole proprietor of the respondent No. 2 is carrying on the business under the trade mark. Prior to this respondent No. 2 becoming a sole proprietor, M/s Sonik Industries was a partnership consisting of Shri Kulwant Singh and Smt. Charanjeet Singh and Shri Kawaljeet Singh. On 31.03.2002, Shri Kulwant Singh retired and a deed of dissolution was executed. The respondent No. 2 is the proprietor of the impugned trade mark label SONI.
10. The respondent No. 1 adopted the trade mark SONI label in the year 1989 and continuously used the same till 20.04.2001. The said trade mark was assigned to the respondent No. 2 by a deed of assignment dated 20.04.2001 and thereafter the respondent No. 2 has been continuously using the same without any interruption. The respondent No. 2 has intimated necessary steps to bring on record the changes, before the Registrar of Trade Marks which is pending.
11. The trade mark SONI label has acquired distinctiveness by its get-up, colour scheme and lettering style. The mark has acquired statutory protection by its honest adoption and continuous use. The aforesaid goods bearing the trade mark SONI label has acquired high demand in the market on account of standard quality and precision. The respondent had bonafide intention to use the trade mark and had been using the same without any interruption from any corner. The sales turnover of the respondent?s goods runs to several lakhs of rupees. The respondents have also spent huge amounts towards advertisements in various medias.
12. The applicants have violated the rights of the respondent and therefore the respondent initiated ciivl suit for infringement in S.No.201/2001. The applicants thereafter filed a civil suit against the applicant before the Delhi High Court in Suit No.2458 of 2001. Both the suits are pending. At no point of time the trade mark SONI label was assigned to the applicants. In fact, the applicants were mere licencee of the respondents under trade mark label SONI.
13. The applicants were aware of the use of the impugned trade mark SONI label by the respondents. They were also aware of the respondent?s application for registration as well as its registration. The other contents made in the grounds of rectification application are denied.
14. The matter came up for hearing at the Circuit Bench Sitting on 21.09.2010 at New Delhi. Shri S.M.Gupta, learned counsel appeared for the applicants. Shri S.K. Bansal, learned counsel assisted by Shri Sourab Kapoor appeared for R1 and R2 and Shri Nitin Gupta, learned counsel appeared for the respondent No. 3. We have heard the arguments of the counsel for both parties.
15. The counsel for the applicant stated that Shri Harjeet Singh was the proprietor of the trade mark SONI liable who adopted the trade mark in the year 1982 for manufacturing sugar boiled confectionery. The applicants had been using the impugned trade mark since the year 1982 whereas the respondents started using the same sine 1989. The counsel pointed out that a certificate issued by the authorities under Prevention of Food Adultration Act, 1954 dated 20.02.1986 will prove the user by the appellants and the certificate also bears the trade mark SONI mentioned.
16. The counsel further submitted that in a suit filed before the High Court of Madras, the respondent had not produced any document to prove their proprietorship and the suit was dismissed. So this will go to prove that in the year 1987, the respondent No. 1 had no right in the trade mark SONI label. There were two suits one against the other and so the applicants are persons aggrieved. The applicants have obtained registration by playing fraud.
17. The counsel for the applicant relied on the judgement reported in 2002 (25) PTC 587 (Del) Darshan Lal Dhooper Vs Motia Rani and Others ? Dissolution of partnership firm, where no terms regarding the exclusive claim regarding the trade mark ? registration is illegal and is in violation of the principles of natural justice and 2005 (31) PTC 335 (IPAB_ Texmo Industries Coimbatore & Ors. Vs. Aqua Pump Industries & Ors. ? one of the partner cannot proclaim himself as rival to the other and as joint owner, not permissible and trade mark not to be used in rivalry.
18. The counsel for the respondents brought to our notice that both the labels used by the applicants and the respondents filed along with the affidavit of evidence dated 02.08.2007. On a bare perusal of the two labels, it is seen that the marks are deceptively similar. The counsel further drew our attention to the partnership deed and the assignment deed.
19. The counsel drew to our notice the show cause notice dated 21.03.2007 issued by the Commissioner of Central Excise stating that the M/s Jagjeet Foods (P) Ltd., the applicant No. 2 herein is engaged in the business of manufacturing candies, toffees etc. since April 1996. It was also stated that Mr. Amarjeet Singh, the applicant No. 1 had informed the authorities that they were manufacturing the goods under the brand name SONI which belong to M/s Sardar Food Products, the respondent No. 1 herein at page 69 of the same notice. Mr. Amarjeet Singh had admitted in the letters dated 21.11.1997 and 24.11.1997 that SONI is not their brand and is registered brand of M/s Sardar Food Products and Mr. Kanwaljeet is the proprietor of the said firm.
20. The respondents have admitted that the applicants are licensees The counsel finally relied on the judgements in support of his contention 1998 PTC (18) 739 Ziff-Davis Inc. vs. Dr. D.K.Jain and Ors., 2000 PTC 244 (DB) J.K.Jain & ors. Vs. Ziff-Davies Inc., AIR 1974 SC 471 Nagindas Ramdas vs. Dalpatram Iccharam alias Brijram and ors., 2009 (39) PTC 104 (Del) (DB) Dabur India Ltd., vs. Amit Jain and Anr.
21. We have heard and carefully considered the arguments of both the counsel and have gone through the documents.
22. The first issue is whether the applicant is a person aggrieved to file and maintain an application for rectification. It is not a disputed fact that both the applicants and the respondents have filed civil suits against each other. It is also an admitted fact that both are manufacturing sugar boiled confectioneries. At the same time, the applicants have admitted before the Central Excise authorities that the respondents are engaged in manufacturing of the sugar boiled confectioneries under the brand name SONI label and they are the proprietors of the trade mark. When that be the case, the applicants cannot be said to be aggrieved persons. Therefore, the applicants have no locus standi to file and maintain an application for rectification.
23. The next ground was that they suppressed the material facts and has fabricated the documents. This ground has not been supported by any documentary evidence. In fact, the contention of the applicant is that Mr. Harjeet Singh is the founder of the trade mark since the year 1982 for which no evidence is produced. On perusal of the cause title Shri Harjeet Singh is also made a respondent in the application for rectification, against whom no relief is sought nor details given for impleading except for a bald statement that the respondent No. 2 is a proforma party who adopted the trade mark first and is the owner of the copyright. The respondent No. 3 had not filed any counter-statement whereas has filed some affidavit of evidence in the year 2009. On direction by the Board on 13.02.2009, the respondent No. 3 filed vakalat by engaging a counsel. In the affidavit of evidence the respondent No. 3 had stated that they did not file counter-statement to the application as they were only a proforma party. But later as there arose a dispute between the three respondents, criminal action was initiated by the respondent No. 3 against the respondents No. 1 and 2. Therefore, in the year 2009, the respondent No. 3 has chosen to file the affidavit of evidence stating that he is the founder adopter of the impugned trade mark SONI label.
24. We are also of the view that though the applicant claims the trade mark to be the family trade mark, there is no evidence to substantiate the statement. There is no proof to say that the mark was adopted by Mr. Harjeet Singh which is the contention of the applicants. If that be so why Mr. Harjeet Singh is made as one of the respondent. In fact, Mr. Harjeet Singh should have joined the applicants against the respondents for rectification. We, therefore, are of the view that the applicants have not made a case for removal of the impugned trade mark on any account.
25. On perusal of the show-cause notice issued by the Commissioner of Central Excise date
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d 21.03.2007, the applicant has admitted that they are carrying on business since April 1996 with the brand SONI label, which belonged to the respondent No. 1. The applicant No. 1 also admitted that SONI brand is not his brand and it is registered brand of M/s Sardar Food Products. When there is a clear admission that the respondent No. 1 is the proprietor of the trade mark SONI label then the issue as to whether it is a family mark or otherwise does not sustain. Considering these facts of admission in the year, 12007 the applicants have instigated the respondent No. 3 to file affidavit of evidence in the year 2009 (who did not wish to file counter-statement since the year 2001 as they were of the view that they were only proforma party and as there was no relief prayed against them) to get away the admission is our opinion. 26. We find force in the argument of the respondents that the application is barred by the principles of estoppel and waiver. The respondents have claimed user since 1989 which fact has not been disputed by the applicants except for the submission that the trade mark SONI label is a family trade mark and the respondents have obtained registration behind their back. The respondents have produced documents to prove their user since 1989. Having not opposed to the use of the trade mark by the respondent, the applicants have acquiesced the use and now are estopped from filing this application for rectification. 27. For the foregoing reasons, we think it fit to dismiss the application for rectification and allow the registration to continue on the Register. There shall be no order as to costs.