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S. Sudhakar Vs. M/S. âandeuro;andoelig;grbâandeuro;? Dairy Food Pvt. Ltd. and Another - Court Judgment

LegalCrystal Citation
CourtIntellectual Property Appellate Board IPAB
Decided On
Case NumberORA 138 & 139 of 2010/TM/CH
Judge
AppellantS. Sudhakar
RespondentM/S. âandeuro;andoelig;grbâandeuro;? Dairy Food Pvt. Ltd. and Another
Excerpt:
.....heard together and a common order is being passed. 3. the applicant is the joint proprietor of the trademark / label œudhaiyam? and is carrying on business through shri lakshmi agro foods pvt. ltd. the said company is engaged in the business of marketing food and allied products under the said trademark œudhaiyam?. the company is inter-alia engaged in the manufacture and / or marketing activity of dhall under the trademark / label œudhaiyam?. 4. the applicant through its group entities are the traders of all types of food and allied products such as dhall, atta, rawa, maida, salt, rice, spices, fried gram appalam, idli batter etc. the applicants goods are sold under the trademark œudhaiyam? in the state of tamil nadu and in other states of india. 5. the trademark.....
Judgment:

ORDER (No.44 of 2014)

Ms. S. Usha, Vice-Chairman

The two rectification applications are for removal of the trademarks œUdhayam? and œGRBs Udhayam? registered under Nos.785124 and 1077180 in class 29 respectively under the provisions of section 57 of the Act.

2. The facts of the case are one and the same and the issues, therefore the matters were heard together and a common order is being passed.

3. The applicant is the joint proprietor of the trademark / label œUdhaiyam? and is carrying on business through Shri Lakshmi Agro Foods Pvt. Ltd. The said company is engaged in the business of marketing food and allied products under the said trademark œUdhaiyam?. The company is inter-alia engaged in the manufacture and / or marketing activity of Dhall under the trademark / label œUdhaiyam?.

4. The applicant through its group entities are the traders of all types of food and allied products such as Dhall, Atta, Rawa, Maida, Salt, Rice, Spices, Fried Gram Appalam, Idli batter etc. The applicants goods are sold under the trademark œUdhaiyam? in the state of Tamil Nadu and in other states of India.

5. The trademark œUdhaiyam? was honestly conceived and adopted by the applicants predecessors in the year 1940. The applicants grandfather conceived the trademark œUdhaiyam?. The said business was later carried on under the trademark œUdhaiyam? by the applicants father in partnership, M/s Karuppiah Nadar. The said firm continued to purchase and sell the same exclusively through Shri Lakshmi Agro Foods Pvt. Ltd.

6. In order to cater to the increasing retail demand, another partnership under the name of Shri Lakshmi Agro Foods was constituted in the year 1993. After the constitution of this firm, M/s Karuppiah Nadar and Sons discontinued the sale. The entire dhall was sold to Shri Lakshmi Agro Foods which in turn sold Dhall under the trademark œUdhaiyam? in retail quantities. M/s Karuppiah Nadar and Sons and M/s Shri Lakshmi Agro Foods function like a single group.

7. The applicants trademark œUdhaiyam? had gained immense reputation and good will among the public. The applicants have obtained registration of their trademark œUdhaiyam? under No.595393B in class 30. The applicants have obtained various registrations. The applicants have continuously, uninterruptedly and extensively used their trademark since 1940. They have spent substantial amounts towards advertisement of the goods bearing the trademark œUdhaiyam?. It has acquired distinctiveness among the public. Their sales turn over runs to several lakhs of rupees. Due to extensive sales and advertisement, their trademark œUdhaiyam? has become a well known mark and commands high reputation in India. The applicants are entitled to protection of their trademark and that no other person can claim any right in respect of the trademark.

8. In March 2010, the applicants filed a civil suit for infringement and passing off against the respondent. The applicant then came to know that the respondents are the registered proprietors of the trademark impugned herein.

9. In 2008, the applicants were informed about the respondents goods bearing the trademark œUdhayam?. The respondents marketed ghee outside the state of Tamil Nadu with the trademark œGRB Ghee? and inside the state of Tamil Nadu as œGRBs Udhayam Ghee.? The trademark œGRB? was used in a very insignificant manner and the mark œUdhayam? was predominantly used. Realizing the immense reputation held by the applicants well known trademark œUdhaiyam?, which has been assiduously built by the applicants over the years, the respondent had consciously adopted the trademark œUdhayam? identical to the applicants trademark. Thus the conduct of the respondents clearly evidences the dishonest intent.

10. In order to amicably resolve the issue, the applicant had approached Mr. G. R. Balasubramaniam, the founder and Chairman of the respondent. He undertook to desist from using the trademark œUdhayam? and however requested for time to exhaust the existing stock. In fact he had changed the website and had shown only œGRB? ghee as its product.

11. Recently, the applicant came to know that the respondent continued to surreptitiously use the trademark œGRBs Udhayam?. The applicant had therefore instituted a civil suit before the Honble High Court of Madras for infringement and passing off and the same is pending.

12. The adoption of the trademark œUdhayam? by the respondent in respect of ghee is fraudulent and dishonest. The trademark adopted by the respondent is identical and / or deceptively similar to that of the applicants trademark and there is a likelihood of confusion and deception among the public. The goods dealt with by the applicants and the respondent is purchased by both literate and illiterate consumers, who will certainly be deceived and confused.

13. In such circumstances, it is respectfully submitted that the very registration is without just cause and contrary to the provisions of the Act. The mark is liable to be struck off on the following grounds that --

(1) the adoption of the trademark œGRBs Udhayam? by the respondent is tainted with malafide intentions;

(2) the impugned trademark is identical with the applicants registered trademark œUdhaiyam?;

(3) the applicants are the prior users and registered proprietors of the identical trademark œUdhaiyam? in respect of allied and cognate goods;

(4) the impugned trademark had no reputation with regard to the respondents goods for which the registration was obtained;

(5) the impugned trademark œGRBs Udhayam? is devoid of distinctive character and not capable of distinguishing the goods from that of the applicants;

(6) the impugned trademark œGRBs Udhayam? would create confusion among the public and deceive the public into believing the goods emanate from the applicants;

(7) the impugned trademark, adoption and use by the respondent would constitute infringement of the applicants trademark;

(8) the adoption by the respondent is with malafide intention to make illegal gains out of the reputation built by the applicants;

(9) the use of the impugned trademark œGRBs Udhayam? would result in the dilution of the applicants trademark œUdhaiyam?;

(10) the impugned trademark wrongly remains on the register without sufficient cause and

(11) the registration is in contravention of the provisions of the Act.

14. The respondent herein filed the counter statement stating that the applicant Mr. S. Sudhakar has no locus standi to file the present application since the application for trademark was registered in the name of the partnership firm. The present application cannot be entertained since it is filed by the applicant who is not the sole and exclusive owner of the mark. He is not a person aggrieved within the meaning of the provisions of the Act.

15. The respondent is carrying on business of manufacturing and marketing the highest quality of Agmark certified dairy products that constantly delights the customers with the promise of taste and purity.

16. Mr. G.R. Balasubramaniam, the Managing Director of the respondent has been in the ghee business for several decades. The firm Udhayam Dairy Farm is in existence since 1984. The brand œGRB? was started in the year 1990. They are manufacturing ghee under the subject brand œUdhayam? in respect of ghee as a sole proprietary firm G.R. Balasubramaniam and Co. since the year 1993 and subsequently under the trademarks œGRB? and œUdhayam.? The trade marks were assigned to œGRB? Dairy Foods from 20/01/1999. On 26/03/2001 œGRB? Dairy Foods was taken over by œGRB? Dairy Foods Private Limited. The company has grown with a multi crore turn over.

17. The trademarks namely œUdhayam? under No.785124 was applied for registration in the year 1998 and obtained registration in the year 2006. The trade mark GRBs Udhayam under No.1077180 was applied in the year 2002 and registered in the year 2005.. A regular search was conducted in the Trademarks Registry before adopting the trademarks.

18. The said trademark has become a synonym of quality, reliability and authenticity and has become synonymous with the products sold there under.

With such continuous and extensive use, the mark has acquired immense goodwill and valuable reputation for the goods sold.

19. The respondents are the owner of the copyright of the artistic work cow device embedded in the trademark label and there has been an ever increasing demand for the products bearing the said trademarks œGRB? œUdhayam?.

20. The subject trademark was honestly adopted to mark a distinction between the superior products manufactured by the respondents and the similar products.

21. Gem of India Award and Best Ghee Award were received by the respondents. This was flashed in the Newspapers and therefore the applicants were aware of the respondents adoption and use. The respondents are the registered proprietors of the trademark œGRB? in various labels and are also the owners of the Copyright in the Trademark. The sales turnover and the expenses for advertisement for the trademarks œGRB?, œUdhayam Ghee? and œGRBs Udhayam Ghee? are several lakhs of rupees. The subject trademarks are well known within the meaning of sections 11 (6) to (9) of the Act.

22. The respondents are the true bonafide proprietors of the trademark which is not identical or similar to the applicants trademark. The respondents trademark has acquired secondary meaning and is capable of distinguishing the goods manufactured by their firm. There is no confusion or deception. The applicants have not adopted the trademark in the year 1940 as there is no evidence for the same. The applicants predecessor was established in the year 1976 therefore the user claimed since 1940 is denied. The applicant when they applied for registration is claimed to have been proposing to use in the year 1993 whereas the respondents have used it since 01/04/1993. The rest of the applicants averments were denied by the respondents.

23. We heard Mr. Madan Babu, the learned counsel for the applicant. The learned counsel for the applicant submitted that the two marks are identical. The applicants trademark is œUdhaiyam? and the respondents trademark is œUdhayam?.

24. On coming to know of the respondents use of the trademark œUdhayam? the applicants filed a civil suit for infringement where an order of interim injunction was granted and was later suspended. The respondents also filed a civil suit against the applicant. The respondents have not filed any rectification against the applicants registration till date. The applicants have locus standi to file this instant rectification application and relied on the judgement reported in 2008 (36) PTC 150 “ S. Sudhakar and another vs. S.S.P. Durairaj -- Any one of the joint trademark holders can file the suit to protect the registered trademark.

The applicant ie. Mr. Sudhakar is a joint proprietor of the trademark œUdhaiyam? and has an interest to protect the said mark.

(2003 11) SCC 92 “ Hardie Trading Ltd. vs. Addison Paints and Chemicals Ltd. -- Aggrieved person “ a person against whom a civil suit is filed based on the registered trademark is a person aggrieved.

Settled preposition is that no two persons can use the same trademarks. 1994 (2) SCC448 “ Power Control Appliances vs. Sumeeth Machines

25. The applicants trademark is œUdhaiyam? and the same has been used by the applicant and his predecessors since the year 1940. The applicants have produced evidence of use of the trademark œUdhaiyam? since 1990. They are the registered proprietors of the trademark œUdhaiyam? as of 23/04/1993. The applicants sales turn over by sale of their products under the trademark runs to approx. Rs. 178.50 crores.

26. Few judgements were relied on in this regard “

(1) AIR1965 SC 980 “ Durga Dutt Sharma Vs. Navaratna Pharmaceuticals -- œIf the essential features of the trademark have been adopted by the other, the fact that the get up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences would be immaterial.?

(2) 2001 (5) SCC 73 --- Cadila Health Care Vs. Cadila Pharmaceuticals

(3) 2000(4) CTC 222 --- R. Gopalakrishnan Vs. M/s Venkateswara Camphor Works.

27. The applicants predecessors had honestly conceived and adopted the trademark œUdhaiyam? in respect of Dhall as early as in 1940. The applicants predecessor M/s Karuppiah Nadar and Sons have been trading in Dhall under the trademark œUdhaiyam? alone and generated sales turn over of Rs. 3.16 crores as early as 1997. The applicants have placed the chartered accountants certificate in proof of the same.

28. MANU/DE/0740/2010 “ Marico Limited and another Vs. Madhu Gupta --The applicants statement that they are using since 2002 is plausible for the reason that they have pleaded as well there is a mention of the sales turn over since 2003-04.

29. The respondent is the subsequent user of the trademark œUdhayam? in respect of ghee. The respondents adopted the trademark œUdhayam? only in the year 1993 and the 1st document is dated 30/04/1993. Their sales turn over for the sale of ghee under the trademarks œGRB? and œUdhayam? is only Rs.4.49 lakhs. The use of the trademark œUdhayam? by the firm Udhayam Diary Farms is only of the year 1991. The applicants are therefore prior user of the trademark œUdhaiyam? and therefore the respondents cannot claim any right over the trademark œUdhayam?.

2004(6) SCC 145 “ Sathyam Infoway Ltd. Vs. Sifynet Solutions Pvt. Ltd.-- If two rivals claim to have individually invented same trademark then the trader who is able to establish prior user will succeed.

30. The applicant had applied for registration of the trademark œUdhaiyam? in April 1993 long prior to the respondents application for registration of the trademark œUdhayam? in January, 1998. If a search had been conducted, the applicants mark would have been reflected. In 1994 a search was conducted and the existence of the trademark was on the register and so the adoption cannot be said to be honest. The counsel relied on the judgement AIR 1991 Bom 76 “ M/s National Chemicals Vs. Reckitt and Colman.

31. The respondents have no reason for the adoption of the mark œUdhayam? in respect of ghee. The respondents were only using the trademark œGRB?. They had not applied for registration in the year 1994 when the search was made. The trademark œUdhayam? was not used till the year 1993. They had abandoned the trademark œUdhayam? in the year 1985. The respondents have stated so in the plaint filed before the Madras High Court in a civil suit against the applicant. Having not explained the reason for adoption, the adoption is presumed to be dishonest “ AIR1998 Bom 312 “ M/s Lupin Laboratories Vs. M/s Jain Products and 2004 (3) SCC 90 Midas Hygiene.

32. The dishonest intention of the respondent in adopting the trademark in respect of ghee is evident from the following “

1. Ghee under identical label is marketed simultaneously under the trademarks œGRB?, œGRB Udhayam? and œUdhayam?;

2. There is no difference in either the character or quality of the ghee sold under various trademarks and

3. The first registration was in respect of ghee under the mark œGRB? restricting the sale in the state of Karnataka only.

33. Absence of fraudulent intention in adopting a trademark is no defence “ 2002 (3) SCC 65 “ Laxmi Kant V. Patel Vs. Chetanbhai Shah.

34. The trademark œUdhayam? is not distinctive of the respondents goods. According to the respondent the proprietary concern Udhayam Dairy Farm was changed to a partnership firm G.R. Baladubramaniam and Brothers. The name was thereafter changed to GRB Dairy Foods and later to GRB Dairy Farms Private Limited. Earliest use of the trademark œUdhayam? by the respondent was in 1993. It is ought to be inferred that the name œUdhayam? was discontinued from 1985 when G.R. Balasubramaniam and Brothers came into existence.

1962 (1) WLR 380 “ Norman Kark Publication Ltd. Vs. Odhams Press Ltd.

1981 WLR 193 “ Cadbury-Schweppes PTY.Ltd. Vs. Pub Squash Co. Pvt. Ltd.

35. Alleged use of the name Udhayam Dairy Farm by the respondents predecessors does not amount to use in trademark sense.

36. Even assuming the respondents predecessor had adopted the name Udhayam Dairy Farm in respect of the proprietary concern the same does not amount to use of œUdhayam? in the trademark sense. Trademark is different from property mark and the alleged use of the name Udhayam Dairy Farm by the respondents predecessor is only a property mark and not a trademark.

1973 (1) SCC 56 ” Sumat Prasad Jain Vs. Sheojanam Prasad 1977 IPLR 161”Pan American World Airways Vs. Registrar

MANU/MH/0119/2007 : 2007 (35) PTC 334 “ Raymond Limited Vs. Raymond Pharmaceuticals Pvt. Ltd.

37. The use of a deceptively similar trademark in respect of different class of goods is immaterial.

5 USPQ 2d 1944 “ Wynn Oil Co. Vs. Thomas 38 USPQ 2d 1161 “ Champions Golf Club Vs. The Champions Golf Club MANU/MH/0076/1997 “ Aktiebolaget Volvo Vs. Volvo Steels 2009(39)PTC 149 “ Ford Motor Company Vs. Ford Service Centre

38. In reply the counsel for the respondent submitted that the applicant has no locus standi to file the present application since there is a variance in the names of the partners.

39. The respondents are dealing in Agmark dairy products from 1984 through M/s G.R. Balasubramaniam and Brothers as also Udhayam Dairy Farm. An application was filed for the brand œUdhayam? in respect of ghee and butter in the name of G.R. Balasubramaniam and company in 1998 with a claim of use of the trademark œUdhayam? from 01/04/1993. On 20/01/1999 the business of G.R. Balasubramaniam and Company, including the trademark œUdhayam? was assigned to œGRB? Dairy Foods and thereafter on 26/03/2001 the goodwill including the trademark was taken over by M/S GRB Dairy Foods Pvt. Ltd. in the terms of the agreement.

40. The search report of the year 1994 shows the honesty of the respondent in adopting and the filing of the application for the trademark œUdhayam?.

41. The respondents reputation is across the country and also outside India. The products bearing the trademark œUdhayam? are available with hundreds of distributors and dealers. The products bearing the trademark œUdhayam? and œGRBs Udhayam? have ever increasing demand and are advertised through various medias.

42. Besides the trademark œUdhayam? registration, the respondent is the registered proprietor of the trademark œGRB? and device of cow.

43. The respondent denied the applicants claims that they are the registered proprietor and prior user. The goods are different which fall under different classes ie. 30 and 29 respectively. The applicants goods have no reputation as no evidence is filed to prove the same. There is no instance of confusion or deception. The applicants claim use as proposed to be used on 23/04/1993 whereas the respondents use is since 01/04/1993 which is definitely prior to the applicants.

44. The applicant is not a person aggrieved and has no locus to file the present rectification application. The falsity in the hollow claim of the applicant to have found the registration of the respondent in 2010, after filing of suit is manifest. The respondents are carrying on business for two decades under the trademark œUdhayam? and œGRBs Udhayam? and the proceedings initiated by the applicant is only out of malafides and trade jealousy.

45. The respondents have filed sufficient documents since the year 1985. This also proves the existence of M/s Udhayam Dairy Farm and the use of the expression œUdhayam? as early as 1984. From 1993, the respondents advertisements are produced which would have been in the knowledge of the applicants. In the year 1994, a search was conducted and the search report is a proof of their use of the trademark œUdhayam?. They have received several certificates appreciating their quality goods. All the above averments have been supported by necessary documents.

46. We have heard both the counsel and have carefully considered their arguments and have gone through the pleadings and documents.

47, The matters relate to two trademarks namely œUdhayam? ghee (label mark) under No.785124 in class 29 and œGRB Udhayam? ghee (label mark) under No.1077180 in class 29.

48. The application under No.785124 in class 29 was filed on 06/01/1998 claiming user since 01/04/1993 for the trademark œUdhayam? ghee. For the trademark œGRB Udhayam? ghee the application under No.1077181 in class 29 was made on 31/01/2002 claiming user since 01/04/1993.

49. We shall first decide the issue, whether the applicant is a person aggrieved and has a locus to file an application for rectification. In this instant case, there are two civil suits filed by the applicant against the respondent as well the respondent has filed a civil suit against the applicant. Both the suits are pending. The applicant as a person affected by the respondents use has filed a suit as well the applicant is aggrieved because of the suit filed by respondent based on the impugned registration. That apart the other contention of the respondent is that the applicant Mr. Sudhakar is not the sole proprietor of the trademark and has no locus to file this application and therefore not materiable.

We are not able to accept this contention as the respondents themselves have filed the suit against M/s Shri Lakshmi Agro Foods Pvt. Ltd. represented by its Director Mr. S. Sudhakar. We do not find any reason to accept the respondents objection. The applicant is therefore a person aggrieved and has a locus standi to file and maintain an application for rectification.

50. Next we will deal with the applications. The application under No.785124 for the trade mark Udhayam Ghee was filed on 06/01/1998 claiming user since 01/04/1993. The 1st invoice is dated 21/12/2001 and not earlier. The respondents forcefully argued that they had been using the name Udhayam as their trading style at least since 30/04/1993 and therefore they have proved their use as claimed in the application. The other document is the issuance of Agmark Certificate issued by the concerned authorities which is dated 05/06/1998. This is subsequent to the date of user claimed. There are various advertisements. The various advertisement evidence will not prove the use. Use means actual use/commercial use and not advertisement which will not evidence the respondents use.

51. The respondents have failed to prove the use as claimed in their application for registration. The respondents that apart has filed few labels of the impugned trade marks. We do not find any label mark used by the respondents. It is further necessary to mention that this Board has not allowed the trade mark to continue in the register for mentioning wrong date of use. The impugned trade mark therefore deserves to be removed.

52. The other application under No.1077180 is for the trade mark œGRBs Udhayam? in class 29. This is also a label mark with the device of cow. The letters GRB is written in a small font and the mark Udhayam is in a bigger font. The application has been made on 31/01/2002 claiming user since 01/04/1993. There are few advertisement receipts issued by the marketing companies which is of the year 2004. This receipt will not prove use of the mark. Even if we are to consider those receipts that is only of the year 2004 and not earlier ie. of the year 1993 as claimed in the application for registration. Therefore there is no proof of their use since 01/04/1993 as claimed.

53. The respondents have not given any reason for their adoption of the trade mark œUdhayam? except that they had been carrying on business under the trading style Udhayam Dairy Farm. On perusal of the records, it is seen that the respondents had been carrying on business under the name Udhayam Dairy Farm between the period 1991-1993. Thereafter it has been under the name G.R. Balasubramaniam and Brothers, G.R. Balasubramaniam and Co., G.R. Balasubramaniam, GRB Dairy Foods, GRB Dairy Foods Pvt. Ltd. When that is the case, the respondents statement that they have adopted the trade mark œUdhayam? from the trading style cannot be accepted.

54. The other contention of the respondent was that the goods are different. In our considered opinion the trade channels are the same when that is so then the class of customers are to be considered. The customers who purchase the goods of the applicants and the respondents belong to all class ie. literate and illiterate. Therefore, there is every possibility that there may be confusion among the public. The respondents contention does not hold good.

55. Considering the fact that the respondents have not satisfied the Registrar as regards the date of use, the mark deserves to be removed for wrong date of user. This Board has taken this view in a number of judgements and the same applies to this case too. In view of the above, we allow the rectification application with a direction to the Registrar to cancel the trade marks registered under No.785124 and 1077180 in class 29. There shall be no order as to costs.


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