(Circuit Bench at New Delhi)
Honble Shri Z. S. Negi, Chairman:
This order disposes of the above two rectification applications filed by the applicant for the removal of trade marks âMARDAN NO.1 and âMARDAN, respectively, from the Register of Trade Marks or rectification of the Register under section 47/57/125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) and the M.P. No.58/2008 filed by the respondents to 5 for taking its evidence and additional documents on record. During the pendency of the rectification applications, Sardar Upkar Singh, the respondents died on 3.11.2006 and the legal representatives of the deceased respondents filed miscellaneous petitions being M.P. Nos. 7 and 8 /2007 under rule 24 of the Intellectual Property Appellate Board (Procedure) Rules, 2003 for continuation of proceedings and the amendment of cause titles in the pending rectification applications were allowed vide order dated 9.8.2007. Since the facts of both the matters and issues involved and evidence relied therein are almost identical and the parties are also same, the matters, with the consent of counsel for both the sides, were heard together.
2. The applicant, a registered partnership firm trading as Mardan Industrial Corporation, has filed two rectification applications for removal and/or rectification of trade mark MARDAN NO.1 under No.1087559 and trade mark MARDAN under No. 1087560, both as of 15.3.2002 in class 12 in respect of automobiles parts and fittings thereof, registered in favour of the respondents (the Registrar of Trade Marks, respondent No.6 being a proforma party, the respondent Nos. 1 to 5 shall hereinafter be referred to collectively as the respondents). The aforesaid firm initially on 1.9.1990, constituted of Sardar Jagmohan Singh, Sardar Amanveer Singh and Sardar Paramveer Singh as its partners, is engaged in the business of manufacturing and trading in various rubber products used as parts and fittings in automobile. With the retirement of Paramveer Singh from the firm, the partnership firm now consists of two partners, namely, Sardar Jagmohan Singh and Sardar Amanveer Singh. The applicant is the bonafide and rightful proprietor of the aforesaid trade mark MARDAN, which having initially adopted and used by the predecessors of the applicant in the year 1969 and since then the mark has been in regular and continuous use.
3. The applicant claims that it is accorded with exclusive rights along with goodwill in the trade mark/trading style MARDAN by a chain of events, inter alia, that the predecessors in business of the applicant commenced business on 6.5.1972 in the name of Mardan Industries which was a partnership firm consisting of Sardar Kishan Singh, Sardar Upkar Singh and Sardar Jagmohan Singh as partners and Sardar Kishan Singh and Jagmohan Singh, applied for registration of trade mark MARDAN under application No. 280044 in class 12 in respect of parts and fittings in automobile claiming user since April, 1969 which registration lapsed in 1991 due to non renewal; that Sardar Kishan Singh passed away on 22.9.1984 and after his demise, Sardar Jagmohan Singh along with Sardar Upkar Singh and Sardar Harvinder Singh executed a partnership deed on 29.10.1984 wherein it was decided that the business will be carried on by the partners in the name and style of Mardan Industries; that during the continuance of business in the name and style of Mardan Industries, another partnership firm âMardan Industrial Corporation was formed constituting of Sardar Jagmohan Singh, Sardar Parmveer Singh and Sardar Amanveer Singh as its partners, after having no objection certificate dated 09.05.1990 obtained from the three partners of Mardan Industries, to carry on business of the applicant firm from the premises of Mardan Industries (there is also a hand-written settlement wherein everyone has agreed to the applicants business activities); that in November, 1991, the aforesaid three partners of Mardan Industries entered into a family settlement whereby the partnership business under the name of Mardan Industries was to be dissolved, which ultimately stood dissolved in 1992 in terms of the family settlement whereby the three partners decided that the entire assets and liabilities including the goodwill, of the firm Mardan Industries would go to Sardar Jagmohan Singh. Two other family concerns, namely, Ruby Auto (P) Ltd. and M/s Endet Jamshedpur (P) Ltd. would go to Sardar Upkar Singh. It was decided and covered under the Memorandum of Understanding that payments will be made to Sardar Harvinder Singh. The entire assets of Mardan Industries including the trade mark MARDAN along with goodwill has devolved upon Sardar Jagmohan Singh which is evident from the Income Tax Assessment records; that pursuant to this family settlement, Shri Upkar Singh and Shri Harvinder Singh along with their children withdrew their capital in full from Mardan Industries and they were paid their share on 10.01.92 by five cheques all dated 10.01.92 bearing Nos. 669504 to 669508; that to give effect to the said family settlement and understanding arrived at between the three partners of Mardan Industries, an Memorandum of Understanding dated 31.03.1992 was executed in which it was decided that (i) Mardan Industies along with assets and liabilities including goodwill would go to Sardar Jagmohan Singh, (ii) Ruby Auto (P) Ltd would be taken over and run by Shri Upkar Singh and (iii) payments will be made to Shri Harvinder Singh as specified in the Memorandum of Understanding. It is therefore evident from the above that the applicant is the sole owner of Mardan Industries as well as the goodwill of the business including that of the trade mark.
4. It is claimed that the applicant has been using the mark MARDAN extensively and continuously for long period of time and has maintained very high quality standards and expended tremendous amount of money and efforts in promoting and advertising its trade mark which has resulted in creation of tremendous reputation and immense goodwill in the said trade mark amongst the purchasers and the members of the trade. The applicant has created an eye-catching carton comprising of red, white and green colour combination along with a âMI logo represented in a stylised and unique font and the mark is represented in a unique and a distinctive manner thereby constituted an original artistic work capable of being protected as a copyright as envisaged under the Copyright Act. Due to long and continuous use, the mark MARDAN has led to the exclusive association of the said mark with the applicant. Any use of the trade mark MARDAN or any similar sounding and looking mark whether in relation to the same goods or any other goods would inevitably result in an association with the applicant. It is further claimed that the applicant has a prior registration for the trade MARDAN in India under No. 616636 advertised in Trade Marks Journal No. 1 Special Supplementary Journal (Vol. C- Class 11 to 16) at page No.2078 dated 14.6.2003. The applicant has been extremely vigilant in protecting and safeguarding its rights in the mark MARDAN and has time and again resorted to appropriate legal recourse. In light of the facts and circumstances mentioned herein before, the use of the trade mark MARDAN or any other identical or deceptively similar mark by any other trader not connected to the applicant is bound to cause confusion and deception in the minds of the consumers and members of the trade leading to false belief that such third party goods originate from the applicant or that it has some trade connections or association with them.
5. The applicant has instituted a suit No.246 of 2000 in the High Court of Delhi for permanent injunction against respondent No. 1 which was transferred to the District Court on the change of pecuniary jurisdiction and is still pending. During the pendency of the suit, the respondents had clandestinely, without informing the Honble Court filed the application for registration of the impugned mark on March 15, 2002 and obtained registration of âMARDAN No. 1 and âMARDAN under Nos. 1087559 and 1087560, respectively, both in class 12, despite the prior application of the applicant for the same mark MARDAN, which entries in the Register are made without sufficient cause and wrongly remaining on the Register. On account of such entries on other grounds specified in the applications, the applicant is the âperson aggrieved as envisaged under section 57 of the Act. The applicant has sought removal of the impugned trade marks on the grounds, inter alia, that the respondents cannot claim to be the proprietors of the impugned marks and the impugned registrations have been obtained by misleading the Registrar of Trade Marks; that the registrations of the impugned marks are contrary to the provisions of sub-sections (1) and (3) of section 11 of the Act; that the applications for impugned registrations ought to have been refused under section 12 of the Act and that the impugned marks are entered in the register without sufficient cause and the entries are wrongly remaining in the register.
6. The respondents had filed the counter statement to both the applications denying the material averments made in the rectification applications raising certain preliminary objections, inter-alia, that the applicant is not the person aggrieved; that no affidavits in support of the applications have been filed and that the applications have been filed on false and frivolous grounds and the same are liable to be dismissed in-limine. It is stated that the partnership of Mardan Industries was formed by the predecessors of respondents in the year 1966 with Sardar Kishan Singh, Sardar Upkar Singh and Sardar Jagmohan singh as partners. In 1984, after the demise of Sardar Kishan Singh, a fresh partnership deed dated 29.10.1984 was executed with Sardar Upkar Singh, Sardar Jagmohan Singh and Sardar Harvinder Singh as partners. Sardar Harvinder Singh died on 22.09.1998 and the partnership firm continued with the remaining two partners as the partnership deed dated 29.10.1984 provided that the partnership shall not be dissolved due to death of a partner, however the legal heir of the deceased will be eligible to become partner in his (deceased) place. On 03.11.2006 Sardar Upkar Singh died and his elder son Sardar Manjot Singh as Kartha of HUF became the partner, in accordance with the above mentioned terms of partnership deed dated 29.10.1984. Sardar Kishan Singh and Sardar Jogmohan Singh, as partners of Mardan Industries, obtained registration of trade mark MARDAN in 1972 and the said trade mark was removed from the Register in 1991. Thus, it is clear that the trade mark belonged only to the original owner viz. Mardan Industries i.e. the partnership firm. Having these facts in view, it is claimed that Sardar Upkar Singh through (legal representative) Sardar Manjot Singh trading as Mardan Industries is the first user and had acquired the right to the first use of trade mark MARDAN and the applicant trading as Mardan Industrial Corporation has no right/or association of the mark MARDAN since 1966. It is also clear that the partnership continues till date, between the legal heirs of late Sardar Upkar Singh and Sardar Jagmohan Singh, and the mark MARDAN both as trading style and trade mark continues; this fact of continuation of partnership was recognized by the Dena Bank, Shakti Nagar Branch as late as 24.5.1978. Sardar Jagmohan Singh expressed a view to other partners that he wished to expand the business of Mardan Industries. But without the knowledge of the other partners he started doing the same business in the name and style of Mardan Industrial Corporation; at that time the nature and constitution of business was not known to the other partners. Though the applicant in suit No.246 of 2000 has claimed to come into existence of the partnership but the partnership of Mardan Industrial Corporation was registered on 13.1.2002. From time to time, discussions were held between the parties to divide the family assets and various proposals were made but without agreement and therefore, no dissolution of the partnership of Mardan Industries was done. The registration of trade mark MARDAN was again applied for and obtained registration of trade marks MARDAN and MARDAN No.1 in the year 2002 and the registered proprietor of the said trade marks is the said partnership firm. The respondents claim that the partnership is the proprietor of the trade marks MARDAN, M.I. Logo, MARDAN NO.1 and owner of all artistic works on its packaging material and copyright in them and the copyright in cartons marked as A to F vest in the Mardan Industries and the same are in use till date. The respondents have in the counter-statements denied that the registration of trade marks MARDAN and MARDAN NO.1 are in contravention of the provisions of sections 11, 12, 18 and 57 of the Act. Thereafter, the applicant filed replies to the counter-statements along with evidence under rule 11 of the Intellectual Property Appellate Board (Procedure) Rules, 2003 and the respondents filed evidence in support of counter-statements along with additional documents.
7. During the pendency of the rectification applications, the respondents/petitioners filed a miscellaneous petition to take the evidence together with the additional documents on record. The grounds stated in the petition is that the applicant at the time of filing rectification applications did not file any document/evidence but the respondents filed counter-statements along with some supporting documents. The applicant filed reply to the counter-statements along with evidence and in order to make the stand clear, the petitioners thought it necessary to file some additional documents and hence the present miscellaneous petition.
8. The rectification applications and miscellaneous petition came up before us for hearing on 16.9.2008 when Shri M.S. Bharath, Advocate appeared on behalf of the applicant and Ms. Anuradha Salhotra, Advocate appeared on behalf of the respondents. At the outset, when the miscellaneous petition was taken up for hearing, leaned counsel for the applicant fairly conceded that he has no serious objection if the evidence together with the additional documents are taken on record and in view of this, the miscellaneous petition was allowed and after conclusion of the arguments by the learned counsel for applicant, the applications were adjourned to 19.9.2008 as part heard and after the conclusion of the hearing on 19.9.2008, order was reserved. Due to administrative reasons, the reserved order could not be attended to earlier.
9. Learned counsel for the applicant submitted that registration of the impugned trade marks of the respondents are contrary to the provisions of section 11(1) of the Act as the marks are likely to deceive the public and cause confusion amongst the trade. The public and members of trade will assume that the impugned marks originate from the applicant and in this process falsely lead to purchase the goods of the respondents under a mistaken belief that they are purchasing the goods of quality, reliability and other positive attributes originating from the applicant. Thus, the use of the impugned marks, if any, would by themselves cause confusion and deception amongst the members of trade as they would falsely induce them into believing that the respondents are related in some manner with the applicant. Not only this, the trade channels are identical and the consumers are also same. The learned counsel further submitted that the impugned marks are contrary to the provisions of section 11(3) of the Act as the conduct of respondents would amount to passing off its products as that of the applicant and their use would amount to infringement of copyright in the artistic MARDAN label of the applicant.
10. Learned counsel, Shri Bharath, submitted that at the time of applications for registration as also at the time of grant of registration of the impugned marks, the applicant was the proprietor of the trade mark âMARDAN by virtue of prior lapsed registration and the prior applications for registration of trade marks filed in respect of goods which are same as the impugned goods in respect of which the respondents had filed applications for identical trade marks. As such the applications for registration of the impugned trade marks ought to have been refused under the provisions of section 12 of the Act. As the adoption of impugned marks by the respondents are clearly dishonest, there is no question of respondents having claimed honest concurrent use. Moreover, there could have been no other special circumstances for the exercise of discretion by the Registrar in favour of the grant of impugned registrations, but contrary to this, there were overwhelming circumstances for the refusal of the impugned applications. Thus, the entries pertaining to the impugned trade marks have been made without due cause and wrongly remain on the register.
11. Learned counsel submitted that the applicant is the lawful proprietor of âMARDAN and âMARDAN NO.1 trade marks. It is very evident from the facts and circumstances of the case that the applicant is the proprietor of the aforesaid trade marks due to their registration as well as on the basis of prior lapsed trade mark registration and so long the trade marks are on the register, no other person can claim to be proprietor of identical mark for the identical goods. Being tainted and fraudulent, the adoption of the trade marks âMARDAN and âMARDAN NO.1 fail to render any right in the impugned registrations with the respondents. Thus, the respondents are estopped in law and equity from claiming any proprietorship of the trade marks âMARDAN and âMARDAN NO.1 and the impugned applications are at the date of registration violative of section 18(1) of the Act.
12. Learned counsel for the applicant submitted that predecessors of the applicant, a partnership firm constituting of father and two sons as partners, commenced business under the name and style of Mardan Industries and obtained registration for trade mark MARDAN under No.280044 as of 6.5.1972 which registration stood removed from the Register in 1991 for non-renewal. The applicant is the proprietor of registered trade marks âMARDAN and of âMARDAN No.1, both as of 14.1.1994 and the said marks are subsisting and in continuous use till now. He asserted that the partnership was dissolved in view of the execution of memorandum of understanding by the partners and the Mardan Industries along with assets and liabilities including goodwill and trade mark devolved on the applicant. The respondents have, having known this, applied for registrations of identical trade marks with the applicants trade marks and obtained the registration. He went on to assert that the respondents clandestinely filed the applications for impugned registrations subsequent to filing of suit by the applicant and deliberately concealed this fact from the Registrar as well as from the applicant. The learned counsel submitted that the respondents knowing well that the applicant is the proprietor of the said trade marks dishonestly adopted the identical trade mark for identical goods and obtained the registrations by concealing material facts to the Registrar which amounts to fraud. The impugned registrations have been obtained by fraud, as the respondents are guilty of misleading the tribunal as also concealment and suppression of material facts and particulars. The proprietorship claim of respondents to the impugned marks being dishonest and fraudulent, the registrations have been granted without due cause and wrongly remain on the register and is liable to expunged. To bring home his submissions, the learned counsel placed reliance upon the judgments in Baljit Kumar trading as Grand Foundry, Punjab v. Ram Saroop and others, AIR 1972 Delhi 153 and B.S. Ramappa v. B. Monappa and another, AIR 1957 Madras 76. Learned counsel also relying upon the decision in M/s. Power Control Appliances v. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448 submitted that the impugned registration is contrary to the principle of settled law that there can be one mark, one source and one proprietor.
13. On the other hand the learned counsel for the respondents raised certain preliminary objections, firstly, that the applicant is not a person aggrieved and has no locus standi to file the present applications for removal of trade marks âMARDAN No.1 under No.1087559 and âMARDAN under No.1087560 as the partner Sardar Jagmohan Singh of the applicant, who has filed the applications is himself a partner of the Mardan Industries, the respondents. In fact the applications are deliberate and malafide attempt of the applicant of devioding the other partner of the firm, Sardar Upkar Singh through Manjot Singh (Legal Representative) of enjoying such rights in the trade marks MARDAN and MARDAN NO.1. The next preliminary objection is that no affidavit in support of the allegations, submissions, statements made in the applications have been filed along with the applications and thus, no reliance can be placed on such allegations, submissions and statements while deciding the applications.
14. The learned counsel for the respondents submitted that the partnership firm has been trading under the name and style of MARDAN Industries and has been using the trade mark MARDAN even after the lapse of registration of trade mark MARDAN. After the demise of Sardar Kishan Singh, a fresh partnership deed dated 29.10.1984 was executed with Sardar Upkar Singh, Sardar Jagmohan Singh and Harvinder Singh as partners. The partnership continued to use MARDAN as trade mark and part of trading style Mardan Industries and the partnership continued even after the death of Shri Harvinder Singh on 22.09.1998. There is no dispute that MARDAN trade mark was used by the partnership firm Mardan Industries, hence the partners of Mardan Industries are the joint owners of the mark. The applicant has also clearly admitted the fact in para 3 of the statement of case that the trade mark MARDAN was initially used by its predecessors viz. Mardan Industries. It is the submission of the learned counsel that the claim of the applicant that it is the user of mark MARDAN since 1969 is totally false as the user claimed (since April 1990) can be corroborated from the Trade Marks Journal [2078 No.1. Special Supplimentary Journal (Vol.C. Class 11 to 16) Saturday, June 14, 2003].
15. Ms. Salhotra, learned counsel for respondents submitted that the partnership of MARDAN Industries was not dissolved as it is evident from the facts that there was no division of the immovable properties between the partners as envisaged in the Memorandum of Understanding, the division of immovable properties of the partnership was never done as required by the clauses 1 and 2 of the Memorandum of Understanding, the goodwill of Mardan Industries was never surrendered to Sardar Jagmohan Singh, the electricity and water connection continue to be exclusively in the name of Mardan Industries and no division ever took place. She submitted that clause 2 of the Memorandum of Understanding was never complied with and Mardan Industries and Ruby Auto Private Limited continue to operate as independent companies and the registered office of the firm continues to be at Minerva Motor Market, Kasmere Gate, the liabilities of Mardan Industries were never transferred or acknowledged by Sardar Jagmohan Singh and in fact till date Sardar Upkar Singh continue to receive notices and demands in respect of liabilities outstanding against MARDAN Industries. She further submitted that clause 6 of the Memorandum of Understanding provided that in case of default in making payments latest by 31st March, 1992 to Harvinder Singh, the partnership will revert to its earlier status, namely partnership constituted of Sardar Upkar Singh, Sardar Jagmohan Singh and Harvinder Singh but no payments were made to Harvinder Singh as is evident from the copy of notice dated 6th May, 1993, placed on record, which was sent to Sardar Upkar Singh and Sardar Jagmohan Singh. No formal dissolution deed had been drawn or filed with the Income-tax Authorities or Sales Tax Authorities. By taking us through the copies of Sale Tax assessment (for the years 1990-1997) in the name of Mardan Industries and copies of letters dated 7.12.2000 and 11.1.2001 written by Sardar Jagmohan Singh to the Assessor and Collector, MCD, Delhi she submitted that all those documents show that partnership of Mardan Industries was not dissolved and the Memorandum of Understanding was never acted upon and the continuation of the partnership was recognised by the Sales Tax Department by issuance of above referred assessments.
16. The learned counsel submitted that the rights in the use of MARDAN both as trading style and trade mark vest exclusively in MARDAN Industries and Sardar Upkar Singh through Manjot Singh (Legal Representative) and the respondents are the first adopters and users of the said trade mark. The applicant has no right to the use of the said mark either as trade mark or as part of its trading style. Interestingly, while Sardar Jagmohan Singh continues to assert the claim of Mardan Industries, he made no efforts to accept the obligations of the firm. Creditors of the firm begin to make claims and filed a suit against the firm and Sardar Upkar Singh as the first respondent as partner thereof. On the contrary Sardar Jagmohan Singh claiming to be the partner of Mardan Industrial Corporation has represented to the trade that the applicant was sister concern of Mardan Industries and in fact, he started writing to various parties that Mardan Industrial Corporation was the sole selling agent of Mardan Industries and that all orders for supply of the goods of Mardan Industries should be channelised through Mardan Industrial Corporation. In relation to the no objection certificate issued to Sardar Jagmohan Singh on 9.5.1990, the learned counsel drew our attention to sub-paragraphs (i) and (j) of paragraph 7 of the evidence in support of counter-statement which state to the effect that had Sardar Upkar Singh any suspicion that Sardar Jagmohan Singh would setup a partnership in competition with Mardan Industries; he would have not agreed to give such a certificate. Furthermore, the other partners would hardly have thought that Sardar Jagmohan Singh would act against the interest of Mardan Industries a firm in which he was an equal partner.
17. Learned counsel for the respondents denied that the averments made in the applications that the impugned registrations are in contravention of the provisions of sections 11, 12, 18 and 57 of the Act and reiterated the contents of relevant paras in the counter-statement.
18. The statutory requirement to be fulfilled by a person to file an application under sections 47 and 57 of the Act is that the person should be a person aggrieved. The statute does not contain any definition of the expression person aggrieved but the expression has received liberal constrution from the Courts. Judicial pronouncements, therefore, are beneficially referred to determine whether the person seeking removal of trade mark or rectification of register is a person aggrieved and having locus standi to do so. It would be useful to refer to the principle propounded by FRY L. J. in Apolliniaris Co. Ltd.s Tm., (1891) 8 RPC 137 wherein he held thus: âWe approach this question on the assumption, which is necessary of course to answer this question, that the trade mark was wrongly in the register, and further, with these two observations: in the first place, that the question is one of the locus standi; and in the second, that the words âpersons aggrievedâ appear to us to have been introduced into the statute to prevent the action of common informers or of persons interfering from merely sentimental notions, but that they must not be so as to make evidence of great and serious damage a condition precedent to the right to apply. Further, we are of the opinion that whenever one trader, by means of his wrongly registered trade mark narrows the area of business open to his rivals, and thereby either immediately excludes or, with reasonable probability will in future exclude a rival from a portion of that trade into which he desires to enter, that rival is an âaggrieved personâ. Again, if that effect is produced or likely to be produced, by the wrongful trade mark, is not the exclusion, but the hampering of a rival trader, that rival trader, again, is in our opinion, a person aggrieved. A man in the same trade as the one who has wrongly registered a trade mark and who desires to deal in the article in question is prima facie an aggrieved person. In the same case the Lord Justice went on to say: âIf the owner of the registered trade mark says to a defendant in a litigation, â I am the owner of the registered trade mark and therefore you are doing me a wrongâ, the person attacked ought to be at liberty to reply to two things: first, âYou ought not to be on the registerâ, and secondly, â even if you ought, I have done you no wrong.â The completeness of the second line of defence ought not to preclude the attacked person from availing himself of the first. If I am assailed by the conclusion of a syllogism I am at liberty both in logic and in law, to defend myself by denying both, or either of the two propositions which are alleged in support of the conclusion and I am aggrieved if I am unjustly deprived of that right. The Honble Supreme Court in National Bell Co. (P) Ltd. and Anr. V. Metal Goods Mfg. Co. Ltd. and Another, PTC (Suppl) (1) 586 (SC) at p.593 has observed that the expression âaggrieved personâ has received liberal construction from the courts and includes a person who has, before registration, used the trade mark in question as also a person against whom an infringement action is taken or threatened by the registered proprietor of such a trade mark. Person aggrieved includes rivals in the same trade who are aggrieved by the entry of rivals mark in the register of trade marks or persons who are in some way or the other substantially interested in having the mark removed from the register or person who would be substantially damaged if the mark remained on the register. No doubt, in the present cases, the applicant and the respondents are rivals in the same trade and the applicant has claimed to have used the trade marks before registration but the applicant herein is a partnership firm claiming to be the registered proprietor and prior user of the trade marks MARDAN and MARDAN NO. 1. It is noticed from record that the certificate of registration stand in the name of Jagmohan Singh trading as Mardan Industrial Corporation. The inference that can possibly be drawn is that the applicant is a proprietary firm of Jagmohan Singh, not a partnership firm constituting of Jagmohan Singh and Amanveer Singh. Further, in order to be the proprietor of the trade marks, the applicant Jagmohan Singh has not proved with cogent evidence that he is not a partner of Mardan Industries and the partnership of Mardan Industries stood dissolved. In case, the partnership of Mardan Industries continues, Jagmohan Singh cannot obtain registration of identical mark MARDAN to which the partners of the partnership firm are joint owners, which includes Jagmohan Singh also, and as being a partner of that firm, he cannot be permitted to have an identical mark to that of the firm. Having regard to these facts, we are of the opinion that the applicant, partnership firm Mardan Industrial Corporation is prima facie not the person aggrieved and has no locus standi to initiate the present proceedings. The discussion contained in the following paragraphs will be of assistance to appreciate further the issue.
19. On the face of rival claims by the contesting parties, the central issue is whether the partnership firm is still in existence or the same had been dissolved and wound up and if wound up in whom the goodwill, trade mark and trade name of the said firm lie. The material averments made in the statement of the case and the grounds of application are that the partnership firm Mardan Industries has by virtue of memorandum of understanding dissolved, but the same is disputed by the respondents. The partnership firm is unregistered firm and the last deed by which partnership was reconstituted is dated 29.10.1984. Clause (6) of that partnership deed provides that the due to death of a partner, the partnership shall not be dissolved; however, one of the legal heirs of the deceased shall be eligible to become a partner. Clause (9) of the deed states that the partnership is at will; clause (10) provides that any dispute or difference which may arise between the parties or their representatives with regard to deed shall be referred to arbitration and clause (11) provides that for residuary provisions, the Indian Partnership Act shall apply. Section 43 of the Indian Partnership Act, 1932 provides procedure for the dissolution of partnership at will. The said section 43 provides that where a partnership is at will, the firm may be dissolved by any partner giving notice to all the other partners his intention to dissolve the firm. By merely stating in the partnership deeds that the same is at will it does not become a partnership at will. It is, however, required to be determined whether the said partnership is at will. If Mardan Industries is a partnership at will, the procedure laid down in the Indian Partnership Act, 1932 has not been followed. This determination has to be made after taking into account the circumstances and effect of various other clauses in the partnership deed. It has been held in R. Ramakrishnan V. VJ John and Ors. AIR 1978 NOC 28 (Pat) that âMerely because it is so stated in the partnership deed, it will not become a partnership at will. The circumstance and the effect of various other clauses in the partnership deed have to be consideredâ. It is obvious that this Appellate Board has no jurisdiction to determine this question and this can be determined by a court of competent jurisdiction.
20. It is the undisputed fact that the partnership firm has been using the trade mark MARDAN even after registration of MARDAN was removed from the register in 1991. The firm is therefore proprietor of the trade mark. In other words, the partners were co-proprietors or joint proprietors of the mark. The memorandum of understanding does not contain any whisper of goodwill, trade mark or dissolution of the partnership firm. Clause 6 of the memorandum of understanding reads thus: â6. That in the event of default in payment as mentioned in Cl.No.5 the partnership under the name and style MARDAN INDUSTRIES will be deemed to have the same status as it was on 31-3-92 to be specific Mr. Harvinder Singh will retire from the firm on receipt of the said amount. Any liabilities contacted after 1-4-92 by Mardan Industries or Mardan Industries (India) will be reverted back to Mr. Jagmohan Singh.â The respondents has stated in the affidavit evidence that the payment of Rs. 7.5 lacs and Rs. 5.77 lacs by the partners Shri Upkar Singh and Jagmohan Singh, respectively, have not been made to the third partner, Harvinder Singh. The averment of non-payment of the aforesaid amounts corroborates with a copy of notice dated 6.5. 1993 by Shri G.V.Dass, Advocate on behalf of the third partner issued to Shri Upkar Singh and Jagmohan Singh. If that be so, the partnership firm, in terms of clause 6, is in the same status as it was before the date of signing of memorandum of understanding and as such no taking over of running business of Mardan Industries occurred. The contesting parties have not furnished any information about the aforesaid payments, in terms of clause 5 of the memorandum of understanding, after service of the said notice on the defaulting partners. Further, the copies of Sales Tax Assessment orders placed on record also suggest that the firm was not dissolved at least till 1996. If the dissolution of the partnership has not taken place, the firm is the proprietor of the trade mark. When the firm is the proprietor of trade mark MARDAN due to non-dissolution thereof, the applicant could not have applied for registration of trade mark MARDAN and MARDAN NO.1 in his name, i.e. in the name of Jagmohan Singh trading as Mardan Industrial Corporation. Likewise, Jagmohan Singh is not a person aggrieved as a partner cannot have a separate identical business in competition to the firms business. However, this Appellate Board has no jurisdiction to interpret and determine whether the memorandum of understanding is acted upon or not, such jurisdiction lies with the Civil Court. During the course of hearing, the applicant furnished a paper detailing the dates and events that took place in the case, wherein it is noticed that the applicant has indicated two issues as disputed facts, namely, first, Whether the MOU was acted upon and second, Whether the Partnership Firm is presently subsisting. When the applicant was aware that the nature of issues involved are such which can be determined by the Civil Court, the present applications before this Appellate Board appears to be filed with malafide intention to harass the respondents for which the respondents deserves to be compensated, howsoever, token amount it may be.
21. In view of the above, we do not consider it necessary to go into the merits of the applications. The applicant may, if it is so advised, get the issues, of dissolution of Mardan Industries and whether the trade mark including goodwill of that firm devolved on the applicant be determined first by the Court of competent jurisdiction/ arbitrator.
22. The result is that the applications are dismissed as premature and the miscellaneous petition of the respondents stands disposed of in terms of paragraph 8 of this order. The applicant shall pay a sum of rupees two thousand to respondents as costs within a month from the receipt of copy of this order.