(CIRCUIT BENCH SITTING AT DELHI)
ORDER (No.48 of 2015)
Sanjeev Kumar Chaswal, Technical Member (TM):
In the instant case, the applicant has preferred a rectification application before the Board, thereby challenging the grant of registration certificate for the trade mark No.757586 in class 25 to the respondent herein.
Case of the applicant:
2. The petitioner has claimed that his father Shri Tarsem Oswal started using the trade mark „OSWAL‟ from the year 1st August,1963.
3. The applicant claims that after their father they are using the trade mark „OSWAL‟ for the last 17 years. The result of effort put by their father in last 40 years is that the applicant‟s trade mark „OSWAL‟ has become well known trade mark within section 11(6) of the Act. The applicant claims huge sales under the trademark 'OSWAL'.
4. The applicant further claims that the respondent has applied for the registration of the trade mark „OSWAL CLASSIC‟ similar to the applicant. After knowing of that fact, the applicant had filed an opposition No.34635 against the application No.757586 in class 25. The learned Deputy Registrar of Trade Marks has granted the registration of the said trade mark 'OSWAL CLASSIC' after abandoning the opposition of the applicant herein due to non prosecution.
5. The applicant further submits that the Civil Litigation between the sister units of the applicant and the respondent is going on in District Court of Ludhiana with regard to impugned trade mark ‘OSWAL CLASSIC’. The respondent has claimed false use and is tainted with commercial dishonesty.
6. The respondent is not a proprietor of impugned trade mark ‘OSWAL CLASSIC’ and further the respondent has no justification of adopting the similar to the registered trade mark ‘OSWAL’, rather the respondent has obtained registration simply to disturb the business of the applicant. Therefore, the respondent being subsequent adopter cannot claim to be a proprietor of the trade mark ‘OSWAL’ within the meaning of the section 18 (1) of the Act.
7. As both the parties are from same place, having identical marks as well as identical goods, so, the respondent‟s adoption of applicant‟s trade mark ‘OSWAL’ is dishonest and is not bonafide. Therefore, there are chances of confusion and deception in the market. Thus, the registration of trademark 'OSWAL CLASSIC' granted to the respondent contravenes section 11 of the Act.
8. The applicant has promoted the trade mark ‘OSWAL’ and has built up reputation and goodwill during the long course of business and as such adoption by the respondent is a deceitful and there are chances of confusion among public in the market.
9. The applicant has further claimed the respondent trademark 'OSWAL CLASSIC' is devoid of distinctive character and has failed to achieve its distinctiveness till the filing of this application as such the impugned registration contravenes section 9 of the Act.
10. The applicant has further claimed that litigation between the applicant and the respondent sister concern is pending in different forums, as such the present applicant is a bonafide aggrieved person to file the present application for rectification.
Case of the respondent
11. The respondent has claimed that he is engaged in business of various kinds of shawls, lohies, blankets and such other textile/hosiery goods since long.
12. The respondent has further claimed that in the year of 1970, the respondent honestly and bonafidely conceived and adopted a trade mark ‘OSWAL CLASSIC’ in respect of the aforesaid goods.
13. The respondent has claimed that by virtue of prior adoption and regular use of the aforesaid trade mark 'OSWAL CLASSIC' the respondent has earned enviable goodwill and reputation in the market.
14. The respondent has claimed that in the year of 1993, the respondent developed an artistic-label comprising of peculiar & distinctive style, get up and format and also comprising of the aforesaid trade mark ‘OSWAL CLASSIC’ and its trade name 'BALDEV RAJ MALHOTRA WEAVING FACTORY‟ along with some descriptive matters, and put it into commercial use.
15. The respondent has claimed huge sales worth of few crores from the year 1970-1971. The respondent has further given figures of the sister concern using the trade mark ‘VINAY OSWAL’.
16. The respondent in his counter statement filed the sales bill showing the use from the year 1998 and has further claimed extensive use of the trade mark ‘OSWAL CLASSIC’.
17. The respondent is the first and prior adopter, user promoter and the true & lawful proprietor of the aforesaid trade mark within the meaning of section 18(1) of the Act, that on account of regular use of the aforesaid trade mark, the respondent has thus gained the proprietary rights in 'OSWAL CLASSIC'.
18. That the petitioner deliberately filed the notice of opposition (No.DEL –T- 4635) against the respondent herein with a view to harass the respondent and paralyze the business of the respondent.
19. That after filing of opposition, the applicant failed to adduce evidence in support of its opposition, support of his claim within the prescribed statutory time of two months. Therefore, the said opposition was abandoned under Rule 50 (2) of the Trade Mark Rules 2002 by Deputy Registrar of Trade Marks.
20. In view of the said abandonment, the Deputy Registrar of Trade Marks has allowed the registration of the respondent impugned trade mark No.757586 in class 25 to proceed.
21. That the applicant has admitted in his application of rectification that he was being fully aware about the respondent‟s prior adoption and extensive use of the aforesaid trade mark.
22. The applicant filed a Civil Suit of 2000, before the District Judge, Ludhiana against the respondent under the provision of the Trade Mark Law and the said civil suit was dismissed as withdrawn by the applicant before the Hon‟ble Court ADJ on 13th of March 2014, as such the applicant has acquiesced itself in pursuing present application against the respondent.
23. The impugned application of the applicant is liable to be dismissed in view of the principles of acquiescence (as provided under section 33 of the Act), delay, latches, waiver & estoppels, as the respondent has regularly been doing its business of the aforesaid goods bearing the aforesaid trade mark openly, since 1970 and to the full knowledge of the petitioner.
24. The order of the Assistant Registrar allowing the registration of trade mark No. 757586 in class 25 has attained finality as the present applicant chose not to file appeal against the said order of the Deputy Registrar of Trade Marks. Hence, the present application of the applicant is barred by the principle of ‘res judicata’ under section 11 of the C.P.C. and being malafide, mischievous and vexatious, is hence liable to be rejected.
25. The word ‘OSWAL’ has become ‘publicis juris’ and common to trade and many of the applications have been registered or pending before the Trade Mark Registry containing the trade mark „OSWAL‟ with prefixes and suffixes and this fact has been admitted by the present applicant in other proceedings, where the applicant or their sister concern is a party.
26. That many persons or concerns have attained registrations of applications are pending for the trade mark „OSWAL‟ with prefix or suffix viz. Oswal products, Oswal Abhay Kumar, Oswal Agro Furnace Ltd., Oswal Agro Mills Ltd., Oswal Alloys, Oswal Apparals, Oswal Chemical Works, Oswal Fan Inds., Oswal Fats & Oils Ltd., Oswal Foods Ltd., Oswal Handloom Inds., Oswal Inds. P. Ltd., Oswal Knit Fab (I), Oswal Knitters, Oswal Lalli Hosiery, Oswal Mfg. Corpn., Oswal Oil Refinary, Oswal Plastic Inds., Oswal Rubbers, Oswal S.P. Spinning, Oswal Soaps & Allied Inds., Pvt. Ltd., Oswal Spinning & Weaving Mills Ltd., Oswal Sportswear Factory, Oswal Sugar Ltd., Oswal Vanaspati & Allied Inds., Oswal Vanaspati & Gen. Mills, Oswal Woollen Mills, Oswal Woollen Mills Ltd., Oswal Worsted & Spinners Ltd., Oswal Yarns Pvt. Ltd. are using word 'OSWAL' as a trade mark or as a part of their respective trade marks/trade names.
27. The registration of impugned trade mark 'OSWAL CLASSIC' of the respondent has been granted to the respondent after having fully satisfied of the impugned trade mark and it has been granted after due to abandonment of their rights by the applicant herein.
28. During the course of the arguments, the applicant has advanced his brief submissions as stated under:-
1. That applicant has started using the trade mark ‘OSWAL’ for the last approximate 44 years from the year 1963 and the said use is honest and bonafide.
2. That both the parties are from same place and selling identical goods so there are chances of confusion and deception in the market. Therefore, the registration granted to the respondent certainly contravenes section 11 of the Trade Mark Act.
3. The appellant further submitted that the impugned mark used by the respondent has not achieved distinctive character until date. Therefore, the registration granted to the respondent contravenes section 9 of the Trade Mark Act.
4. The respondent has obtained registration deliberately disturb the business of the petitioner and the applicant being the prior user of the respondent cannot claim proprietorship of the trade mark ‘OSWAL’ which contravenes section 18(1) of the Trade Mark Act.
5. The respondent trademark 'OSWAL CLASSIC' was devoid of distinctive character and has failed to achieve its distinctiveness as such the impugned registration contravenes the section 9 of the act.
6. The respondent adoption of applicant’s trade mark ‘OSWAL CLASSIC’ is dishonest and is not bonafide, as both the parties are having identical marks as well as identical goods probability having chances of confusion and deception. The registration of impugned trade mark of the respondent contravenes the section 11 of the Act.
7. During the course of the arguments, the applicant has drawn attention of the Board to the relevant annexures containing advertisements and invoices annexed with the application from the year 1996.
29. The Counsel for the respondent submitted his arguments contra to the applicant herein as well as submitted their brief written submissions and are stated as under:-
1. That the respondent has been using the trade mark ‘OSWAL CLASSIC’ from the year 1970 honestly and bonafidely in respect of the hosiery goods such as shawls, lohies, blankets etc. and the respondent filed an application in the year 1977 vide application No. 757586 for the above said goods.
2. The applicant has filed a notice of opposition No.DEL-T-4635 and after submission of counter statement; the applicant did not submit evidence in support as per Rule 50 (2) of the Trade Mark Rule 2002 within the prescribed period of two months. Therefore, the said opposition of the applicant was abandoned.
3. The applicant was very much well aware of the business of the respondent herein and the applicant belongs to same place of area and dealing with same identical goods. Therefore, the applicant cannot use this rectification petition against the respondent herein.
4. During the course of proceedings, the applicant has further filed a civil suit against the respondent herein and the said Civil Suit withdrawn by the applicant herein in the year 2014. Thus, applicant has acquiesced the respondent from the use of the mark 'CLASSIC OSWAL'.
5. The rectification application of the applicant liable to be dismissed in view of the principles of acquiescence (as provided under section 33 of the Act), delay, latches, waiver & estoppels, as the respondent has regularly been doing its business of the respondent was very much within the knowledge of the applicant herein.
6. The applicant has concealed about its various litigations pursued by its sister concern in other pending opposition matters related to the registration of the trade mark ‘OSWAL’. The applicant has concealed and failed to provide all facts to Hon‟ble Board.
7. The applicant is not entitled to the claim of the monopoly over the use of the trade mark ‘OSWAL’ as the word 'OSWAL' has attained the status of the publici Juris and is common to the trade.
8. The respondent has further drawn our attention to various registrations filed under the trade mark ‘OSWAL’ with prefix and suffix which are pending as well as got registered.
9. The applicant has failed in submitting cogent and specific documentary evidence in support of its claim of use of the impugned trade mark in 1963.
10. The counsel for respondent has drawn our attention to Limitation Act 1963 Part-X rule 130 wherein the respondent claims that section 113 of the Limitation Act clearly defines that 'Any Suit for which no period of limitation is provided elsewhere in the schedule 3 years when the right to Sue accrues.
11. The applicant willfully neglected the trade mark opposition which dismissed in the year by the learned Deputy Registrar of Trade Mark on 29th April, 2004. Filing an appeal within the statutory period by the Trade Mark Act and Rules was not filed even though taking the work clause 1 under section 13 of the Limitation Act, the right of filing of appeal was with the applicant from the date of dismissal of this order. Therefore, until 2007, the applicant had a right to initiate legal proceedings against the respondent herein as such now the present rectification is belated and barred by law.
12. The onus is on the applicant to prove that the respondent mark is wrongly remaining in the register or wrongly registered. The applicant has failed to give any cogent proof with regard to wrong registration of the trade mark of the respondent herein.
30. The counsel for the respondent has submitted few of the notable judgments in support of his contention, which are stated as under:
(a) S.P.Changalvaraya Naidu (dead) by L.Rs.v.Jagannath (dead) by L.Rs., (SC)- 1994 AIR (SC) 853 - Inviting our attention to a specific decision of the Apex Court where it is held a litigant, who approaches the court is bound to produce all documents executed by him which are relevant to the litigation – If he withholds a vital document in order to gain advantage on the other side then he would be guilty of playing fraud on the court as well as on the opposite party.
(b) Amritdhara Pharmacy vs Satya Deo Gupta – AIR 1963 SC 449 - 'If a trader allows another person who is acting in good faith to build up a reputation under a trade name or mark to which he has rights, he may lose his right to complain, and may even be debarred from himself using such name or mark. But even long user by another, if fraudulent, does not affect the plaintiff‟s right to a final injunction; on the other hand prompt warning or action before the defendant has build up any goodwill may materially assist the plaintiff‟s case.
(c) Skyline Education Institute (India) Private Ltd. v.S.L.Vaswani (SC) – 2010 AIR (SC)3221 – The word ‘Skyline’ is being used as trade name by various companies/organizations/business concerns and also for describing different types of institute/institutions.
(d) Corn Products Refining Co. Versus Shangrila Food Products Ltd. –AIR 1960 SC 142 - 'The preserve of a mark in the register does not prove its user at all'
(e) National Bell Co. Versus Metal Goods Mfg.Co.(P) Ltd.and ANR –AIR 1971 SC 898 – The burden of proof, however, in such a case is as aforesaid, on the applicant applying under Section 56.
(f) ‘Onus of proof on applicant – Registration of a trade mark and of all subsequent assignments and transmissions of the trade mark is prima facie evidence of the validity thereof. It, therefore, follows that the onus of proof is on the applicant for rectification to show that the mark is wrongly registered or is wrongly remaining on the register. This also is clear from Sections 101 and 102 of the Evidence Act 1872 dealing with burden of proof on the pleading and the burden of adducing evidence‟.
31. After going through the pleadings and arguments advanced by both the parties, there are three notable issues that has emerged from the pleadings and arguments advanced by both parties, are stated as under:
1. Whether the trade mark ‘OSWAL’ attained the status of publici juris and is common true trade?
2. Whether the applicant is entitled to claim monopoly over the use of the trade mark ‘OSWAL’?
3. Whether the application of the applicant is barred under the principles of the acquiescence delay, latches, waiver & estoppel?
32. Now, we are going to deal each issues separately. As far as the issue No.1 is concerned, the counsel for the applicant has not shed light on this particular issue. On contra, the respondent has drawn our attention to the annexure annexed with counter statement and with brief submissions. The respondent brought our notice to the applicant sister concern which has taken different stand to the present petition. Though, said statements made by the applicant sister concern in other judicial proceedings with third parties though does not have direct bearing on this application but certainly, it raises pertinent doubt on the present applicant of pursuing this application with contra stand.
33. On contra, the respondent has further drawn our attention to the other annexures annexed showing the list of trade marks wherein, it shows that many of trade marks have been applied under the name ‘OSWAL’ with prefix and suffix have attained registrations. There are hundreds of trade mark applications, which have been registered or pending in the Trade Mark Registry under various classes including class 25 containing the word ‘OSWAL’ with prefix or suffix.
34. As per Brand analysis report extracted by us to see the authenticity of the contra stand advanced by the respondent, It has observed that the oldest of the application having trade mark ‘VEENA OSWAL’ with device‟ is showing on record of trade mark registry vide trade mark no 194601 having claimed use of the trade mark since 1960. Therefore, the claim of the applicant that the „OSWAL‟ trade mark is being used by the applicant since 1963 is unrealistic in view of the Brand analysis report extracted by us even further the applicant has failed to submit any documents/invoice bills in support of his claim of having use of more than 44 years. Therefore, the claim of the applicant looks little farfetched, therefore goes against him.
35. The contention of the respondent herein that the word ‘OSWAL’ is a known famous cast belongs and identified as bania community dealing in business of north India, thus word ‘OSWAL’ is a common word and many persons of the ‘OSWAL’ community used their caste as trade name. Thus the word ‘OSWAL’ has attained common to trade, further many of registrations have been granted to the word ‘OSWAL’ or registration with prefix or suffix are pending with or granted to the different entities to all sundries. Due to grant of registration of trademark ‘OSWAL’ with prefix or suffix by the trade mark registry to all sundries. The word ‘OSWAL’ with prefix or suffix has lost its purity as registrations have been granted to many owners and has become common to trade. Therefore, no exclusive adopter can claim exclusivity or monopoly excluding others from using the word ‘OSWAL’. In our view, the grant of registrations to the trade mark ‘OSWAL’ with prefix or suffix has lost its exclusivity tag and can be termed as common to the trade.
36. As issue No.2 before us, it clearly shows that the trade mark ‘OSWAL’ having prefix and suffix has attained the part of the common trade as such the applicant claim for exclusivity monopoly over the word ‘OSWAL’ is not tenable, due to multiplicity of the ownership of the trade mark as many of sundries have obtained registrations of trade marks ‘OSWAL’ having prefix and suffix, which are even much prior to the registration granted to the applicant herein.
37. The Apex Court has observed in the case referred by the respondent in Skyline Education Institute (Pvt.) Ltd., v. S.L. Vaswani (supra). "We also find no force in the argument of the counsel for the respondent that the word `skyline' was not a generic word and was an adoptive word as far as education is concerned. A student who would like to go to an educational institution, he is not a lay customer. If a student likes to go to St. Stephens College in Delhi or want to go to Sri Ram College of Commerce or Hindu College, he will go to these colleges and not to other although there may be similarity of names of other colleges. When the learned single Judge came to the conclusion that there is no similarity in the name of two parties, appellant using the name `skyline' as a prefix with the institute of technology and engineering and the respondent using `skyline' business school', a student would not get any deception by both names. A very large number of institutes, firms and companies etc. are using the word `Skyline' as part of their name which fact has not been categorically denied by the respondent."
38. The annexure so far produced by the respondent somewhere support the contention of the respondent that the word ‘OSWAL’ has attained the generic nomenclature, as every sundry has been using word ‘OSWAL’ with prefix or suffix for different classes. Therefore, use of word by all sundries defeats the exclusivity tag as well as lost the relevance of purity of the trade mark register and in such a scenario, the applicant failed to prove that he has exclusive right to use trademark ‘OSWAL’ exclusion of others and the registration of trademark 'OSWAL CLASSIC' granted to the respondent do not contravenes to section 11 of the Act.
39. The respondent has brought to our notice that the annexure filed by him at page No.35 of the documents, wherein one of the proprietors of M/s OSWAL SHAWL EMPORIUM’, Shri Satish Kumar Jain has filed a counter statement in an another opposition proceeding related to trade mark ‘OSWAL’ at para 4 (ii) that there has been no conflict in the market during the last so many years. The opposition is in bad faith. In other proceedings also, the same Mr.Satish Kumar Jain even being party in the present proceeding was also a party of civil proceedings in Ludhiana against the respondent herein, wherein the applicant withdrew the civil case against the respondent herein.
40. The contra stand taken by the applicant in another opposition proceedings as well as withdrawal of the suit clearly shows that the applicant manipulated reply in different proceedings to his own convenience and submitted different stands.
41. The applicant has also taken a stand contra in the other impugned opposition No.DEL-T-1891 to application No.601, 688 in class 25 wherein one of the sister concerns of the applicant has admitted in their counter statement that the contents of those paragraphs are not admitted by us for want of knowledge. The applicant in this petition stated that, 'the opposition in bad faith and has further admitted in para 4 (viii) of the counter statement that their trade mark label as a whole is visually and phonetically different and as such there is no chance of conflict in the market'. However, we submit that the word ‘OSWAL’ in hosiery trade has become common to the trade. Hundreds of manufacturers in hosiery trade are using the trade mark ‘OSWAL’ with various prefixes and suffixes.
42. Furthermore, the applicant though granted a registration in the year 1989 but did not pursue with the cancellation of other registrations, which have been granted subsequently to the applicant. In our view, the applicant has been selective in pursuing the application and opposition. Otherwise, there are many marks, which have been registered and are similar to the applicant registration. Therefore, selective filing of petitions against few shows that the applicant himself admits that the impugned trade mark ‘OSWAL’ has lost its purity exclusivity.
43. Firstly, the applicant not able to satisfy the Bench why he has not pursued timely action against the respondent, and why the applicant withdrew the civil suit thereby allowing respondent to continue to use the trade mark ‘OSWAL CLASSIC’ and claim registration. Secondly, the other argument advanced by the applicant that the respondent adoption of the trade mark ‘CLASSIC OSWAL’ is not honest or bonafide and is of deceptive similarity, as both the parties are from same place, having identical marks as well as identical goods, therefore, there will be chances of confusion and deception in the market.
44. But in the present case, the trade mark label of the respondent is altogether different from the applicant trade mark having clearly mentioning the respondent name, which is notably visible on the trade mark label ‘ Baldevraj Malhotra weaving factory’, so at this stage, we do not find any merit in the contention of the applicant. Further, the applicant has failed to prove that the continuing of trade mark ‘OSWAL CLASSIC’ will cause confusion and deception. The applicant cannot claim monopoly or exclusivity over the word ‘OSWAL’ as there are plenty of registrations granted by registering to all sundries having trade mark ‘OSWAL’ with prefix or suffix. Thus, the registration of trade mark 'OSWAL CLASSIC' granted to the respondent do not contravenes section 11 of the Act.
45. Now, we take up issue No.3, wherein the applicant has filed a
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n opposition No.DEL-T-4635 but later chose not to pursue the opposition before the Trade Mark Registry, due to non adducing of evidence on time by the applicant herein, the Assistant Registrar abandoned the opposition of the applicant under section 50(2) of the Trade Mark Act and allowed the registration to proceed. That after passing of the order the applicant remain silent and did not file an appeal against the order of the abandonment passed by the Assistant Registrar due to non filing of appeal against the order, therefore the order of Assistant Registrar has attained finality. Further, to this, the applicant also withdrew a Civil Suit pending in the District court, which was pending against the respondent. 46. The applicant was very much aware of the existence of the respondent business. The respondent has admitted that both the parties belongs to same area and using identical trade marks for identical goods, as such, the business of the respondent was very much within the knowledge of the applicant herein, as being the part of the same place and same trade and further abandoning of rights by the applicant against the respondent as mentioned herein above. It clearly suggests that the respondent did not want to pursue the matter against the respondent herein and further allowed the respondent to go manifold under the trade mark ‘OSWAL CLASSIC’. Now as much water has flown down as the respondent has been continued to use the trade mark ;OSWAL CLASSIC’ for all these years and the applicant by merely filing the application for rectification by claiming that the respondent cannot claim to be a proprietor of the trade mark ‘OSWAL’ within the meaning of the section 18 (1) of the Act is belated and not sustainable. 47. Keeping in view of the circumstances as enumerated herein above in our considered opinion, the abandoning of opposition proceeding as well as not opting for appeal and as well as subsequent withdrawal of civil proceeding is an act of abandoning rights half way, which clearly comes under the ambit of acquiescence and filing of rectification after the gap of almost 4 years comes under the ambit of delay and latches. The applicant filing an application for rectification at this stage contravenes the principles as enumerated above. The above actions considerably supports the contention of the respondent that applicant actions of not filing of appeal and withdrawing of civil suit against the same respondent is act of waiver and estoppels thereby allowing the respondent use of the word ‘OSWAL CLASSIC’ as trade mark. In our considered view, attracts principles of acquiescence estoppels (as provided under section 33 of the Act). 48. Therefore, in our considered opinion, the applicant has failed to make out his case before the Board. We, therefore, dismiss the rectification application No. ORA/109/2007/TM/DEL of the applicant. There shall be no order as to costs.