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M/S. Shiva Tobacco Company Vs. Md. ZaheeruddIn and Another - Court Judgment

LegalCrystal Citation
CourtIntellectual Property Appellate Board IPAB
Decided On
Case NumberORA. No. 159 of 2010/TM/CH
Judge
AppellantM/S. Shiva Tobacco Company
RespondentMd. ZaheeruddIn and Another
Excerpt:
.....s. usha, vice-chairman: the instant original rectification application is for removal of the trade mark tiger brand label registered under no. 1330146 in class 34 under the provisions of the trade marks act, 1999 (hereinafter referred to as the act). 2. the brief facts of the case are “ the applicant is a partnership firm. the applicants predecessors in title and the present applicants are engaged in the business of manufacture and sale of inter alia chewing tobacco etc. in the year 1955, m/s. jagan nath and sons, the predecessor in title of the applicant adopted the trade mark tiger brand (word per se and the label) in respect of chewing tobacco of their manufacture and sale. the trade marks tiger brand / sher chhap (label) and tiger brand represented in a circular device along.....
Judgment:

Order ( No. 29 Of 2014)

1. Ms. S. Usha, Vice-Chairman:

The instant original rectification application is for removal of the trade mark Tiger Brand label registered under No. 1330146 in class 34 under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

2. The brief facts of the case are “

The applicant is a partnership firm. The applicants predecessors in title and the present applicants are engaged in the business of manufacture and sale of inter alia chewing tobacco etc. In the year 1955, M/s. Jagan Nath and Sons, the predecessor in title of the applicant adopted the trade mark Tiger Brand (word per se and the label) in respect of chewing tobacco of their manufacture and sale. The trade marks Tiger Brand / Sher Chhap (label) and Tiger Brand represented in a circular device along with a picture of Tiger were registered in the name of M/s. Jagan Nath and Sons under Nos. 167909 and 256652 respectively. The trade marks were used continuously till 1973.

3. Owing to the differences among the partners, the assets and liabilities were divided through arbitration, all rights and liabilities in the trade marks Tiger Brand / Sher Chhap (label) along with the goodwill accrued thereto fell to the share of one partner Mr. Shiv Prasad Aggarwal. After acquiring the exclusive right in the trade marks as well as the registration, Mr. Shiv Prasad Aggarwal took over his sons Mr. Rattan Lal Aggarwal, Mr. Mohinder Kumar and Rajinder Mohan (minor) admitted to the benefit as partners and started the firm under the name Shiva Tobacco Company in the year 1973. Necessary steps were taken to have the name changed before the Registrar of Trade Marks and were allowed by the Registrar of Trade Marks. By virtue of continuous use of the trade mark by the predecessors, the applicants are entitled to the benefit of the use of the trade marks.

4. The applicants have spent tremendous time, efforts and money in promoting, publicizing and popularizing the trade mark since its adoption. On account of priority in adoption, long, continuous, extensive and exclusive use of the trade mark, the applicants trade marks have acquired tremendous and enviable goodwill and reputation among the public and trade.

5. The sales figures and promotional expenses run to several lakhs of rupees. The applicants trade marks have become distinctive by long and extensive use. Any reference of the trade marks is only indicative of the applicants source of manufacture and none-else.

6. The applicants are the registered proprietors of various other trade marks namely Tiger Brand and Tiger Brand (label) under Nos. 288271 and 299270 respectively. The same have been duly renewed and are subsisting. The use of the mark Tiger and / or Sher or any other mark visually, phonetically or structurally similar is bound to cause confusion and deception among the purchasing public.

7. An application under No. 1495476 in class 35 for registration of the label mark was advertised in the Trade Marks Journal No. 1402 trading as Tiger Snuff. The essential feature of the said label mark is the device of Tiger and Tiger (word per se). The said application was opposed by the applicant herein. The respondent Mr. Md. Zaheeruddin filed their counter statement to the notice of opposition, wherein it was stated that they are the registered proprietors of the impugned trade mark. The present application for rectification is therefore filed to expunge the entry relating to registration No. 1330146 in class 34 on the following grounds that:-

"(1) the registration of the trade mark Tiger Brand label under No. 1330146 in class 34 has been wrongly made and is wrongly remaining in the register;

(2) the entry relating to the registered trade mark has erroneously been made without sufficient cause;

(3) the respondent was not the proprietor of the trade mark on the date of application for registration as per section 18 of the Act;

(4) the respondent Is falsely claimed to have been using the trade mark on the date of application and section 9(1) of the Act was and is an absolute bar to the registration;

(5) the respondent obtained registration though no use was made or has been made by them for the goods under registration;

(6) the impugned trade mark was neither distinctive on the date of application for registration nor on the date of commencement of these proceedings;

(7) the registration has been obtained in violation and breach of the provisions of section 11 of the Act;

(8) the respondent with a malafide and dishonest intention with an ulterior motive to trade upon the reputation of the applicant and to gain illegal profits, applied for registration of an identical trade mark and obtained registration;

(9) the registration was obtained by playing fraud with the Registrar of Trade Marks;

(10) the respondent obtained registration by suppressing material facts;

(11) the registration has been obtained in contravention of the provisions of sections 9(1), 11(1) and (2) of the Act;

(12) the respondent has never used the trade mark for the goods for which the registration has been granted;

(13) the trade mark was registered without any bonafide intention to use the said mark in relation to Snuff and there has been no bonafide use of the trade mark for a period of three months before the filing of this application for rectification;

(14) upto a date before the filing of the application for rectification a continuous period of five years from the date on which the impugned trade mark was actually entered in the register or longer had lapsed during which period there was no bona fide use of the trade mark;

(15) the respondent has relied on this trade mark against the applicant in another opposition proceedings and therefore, the applicant is a person aggrieved and is entitled to an order to rectify the said trade mark."

8. The respondents filed their counter statement stating the various facts and denying the certain allegations made by the applicants.

9. The respondents stated that he is the sole proprietor of the firm M/s. Tiger Snuff Manufacturing Company. The respondent is engaged in the business of manufacture and trade of snuff of the said goods and in the year 1962 honestly and bonafidely through its predecessor i.e. father adopted and started using the trade mark Tiger Brand label. Ever since 1962, the respondent has been using the said trade mark in relation to the goods “ snuff continuously and extensively without any interruption in the States of Karnataka, Tamil Nadu and Andhra Pradesh.

10. The respondent has been using the said trade mark in a composite label bearing unique and original artistic features including that of a get up and placement and the respondent owns the copyright thereon.

11. The said trade mark was initially registered in the name of the respondents father Mr. Md. Azeemuddin Patvegar under No. 320131 in class 34 as on 08/11/1976. The said registration lapsed for non renewal. Mr. Md. Azeemuddin, father of the respondent passed away in April 1994. On the death of the father, the respondent took over the business and the trade mark under a mutual family understanding and arrangement between the legal heirs and had been using the trade mark.

12. With a view to safeguard its rights and interests, the respondent applied for registration under Nos. 1330146 in class 34 and No. 1495476 in class 35. The application under No. 1495476 in class 35 was opposed by the applicant herein and the same is pending. The respondents sales turnover runs to several lakhs of rupees. The respondents trade mark has become distinctive of their goods and the public identify the goods as the respondents source and origin.

13. The respondents trade mark is a well known trade mark under section 2(1)(zg) of the Act. The respondent is the proprietor of the trade mark label as also of its goodwill and reputation.

14. The impugned application for rectification is neither maintainable in law, nor on facts. The applicant is neither a person aggrieved nor has locus to file or maintain a petition.

15. The application is not maintainable as the applicant has no proprietary right in the trade mark. The goods are different and therefore the application is not maintainable. The application has been filed after a long delay. The applicant has not opposed the respondents trade mark registered under No. 320131 in class 34 as they are not aggrieved.

16. The respondent denied all the averments made by the applicant including the proprietorship and the date of use.

17. On completion of the pleadings, the matter was listed for hearing. Mr. Gurvinder Singh, learned counsel for the applicant and Mr. S.K. Bansal, learned counsel for the respondent were present.

18. The learned counsel for the applicant submitted that the application for registration of the impugned trade mark was filed on 05/01/2005 under No. 1330146 claiming user since 01/01/1962. The application has been filed in the name of Md. Zaheeruddin trading as Style Tiger Manufacturing Company. The counter statement has been filed by Tiger Manufacturing Company for which there is no explanation as to how the two firms are related. The applicants are registered proprietors of the trade mark Tiger Brand / Sher Chhap under No. 167909 as of 18/02/1955. They are also registered proprietors of various other trade marks bearing the name Tiger etc.

19. The applicants sales turnover and promotional expenses runs to several lakhs of rupees. The document Annexure B at page 7 dated 01/01/1960 is an invoice which proves the applicants use since at least 1960 and is prior to the respondents use. The applicants predecessors were using the trade mark and it was registered in their name which subsequently were changed in the name of the applicants after the change in the constitution of the firm.

20. The applicants are persons aggrieved as the respondents have relied on this registration in an opposition proceedings between the same parties. The marks are phonetically similar and when considering the class of customers, the possibility of confusion and deception is certain. The applicants are the prior adopters, users and registered proprietors of the trade mark.

21. The respondents have obtained registration by playing fraud. The registration has been obtained by the wrongful proprietor by giving false date of user. The impugned trade mark is not distinctive on the date of application for registration or on the date of registration nor on the date of application for rectification. The respondents in the counter statement filed by them in the opposition proceedings in application No. 1495476 have admitted that the use is only in the state of Karnataka, Andhra Pradesh and Tamil Nadu. The first registration under No. 320131 was granted on territorial basis.

22. The respondents though claim use from their predecessor, there is nothing in the counter statement as to the family understanding or arrangement. There is no whisper as to how the trade mark devolved on the applicant i.e. the respondent herein. No family understanding or arrangement filed. There is no sales proof though the user claimed since 01/01/1962. The user if at all is only since 1994 and not earlier.

23. The respondents defence is that the goods are different and that this rectification application is filed out of business jealousy. If the goods are different, then how can there be business jealousy. The respondents contention that there is delay in filing this application is not correct as the applicants came to know of this registration in the year 2009 and this application for rectification was filed in the year 2010. There is no sales figures or promotional expenses given. The respondents have not conducted search before filing this application for registration.

24. The learned counsel relied on these judgments:-

(1) TA/166/2003/TM/DEL and TRA /128 and 129/2004/TM/DEL dated 09/12/2011 “ M/s. Khushi Ram Behari Lal vs. M/s. New Bharat Rice Mills and Anr. “ User not proved as claimed in the application for registration and therefore application for rectification allowed.

(2) ORA/92/2010/TM/DEL and ORA/275/2009/TM/KOL dated 08/02/2013 “ Bata India Limited vs. Relaxo Rubber Ltd. and Anr. -- Registered Trade Marks to be removed for wrong date of user.

(3) ORA/119/2011/TM/AMD dated 13/11/2013 “ Sudheer Bahl vs. M/s. Khyber Restaurant and Anr. -- œThere is no evidence in the invoice/bill to prove the use since 11.07.1975 as claimed in the impugned application for registration.?

(4) 2011 (45) PTC 52(Del.) “ Jain Electronics vs. Cobra Cables P. Ltd. and Ors. “ The goods were electric cables and voltage stabilizers and therefore goods were different. Electric cables were used in Voltage Stabilizers. Trade channel is essentially the same. Use of an identical make in respect of two goods is bound to cause confusion and deception.

(5) 2007 (35) PTC 22(Del.)(DB) “ Satnam Overseas vs. Deputy Registrar of Trademarks and Another “ No reason for adoption of the trade mark cannot said to be a bonafide adoption.

(6) 1983-PTC-34 “ Prince Rubber Industries vs. K.S. Rubber Industries “ The trade mark complained of is similar to the plaintiffs trade mark, the plaintiff has a right, prima facie, to claim for a restraint order.

25. Section 23 if applied Section 47(1)(b) is also applicable. Section 57 is applicable.

26. In reply, the learned counsel for the respondent submitted that the onus is always on the applicant to prove their case. The applicant is a non existing entity. There is no cause of action arising for the applicant to file this application for rectification. The goods are different. Vishnudas Case “ 1997 (4) SCC 201 is applicable.

27. The plain reading of the provisions of sections 47 and 57 stresses the word may and therefore it is the discretion of the Board to grant the relief.

28. The respondent is the sole proprietor for both the firms namely Style Tiger Manufacturing Company and Tiger Manufacturing Company and therefore there is no third party involved.

29. The documents filed by the applicants are not valid. The applicants advertisement is of the year 1973-74 only. In the State of Karnataka the use is only in the year 2000. The impugned trade mark was used by the respondents predecessor since 1962. The counsel also relied on various registrations with the trade mark Tiger / Tiger Device.

30. The respondents relied on these judgments:-

(1) 2008 (38) PTC 97(Del.) “ FDC Limited vs. Ajay G. Piramal and Ors. “ When there are other similar marks either registered or pending registration, it is beyond comprehension that the respondents mark is likely to cause confusion.

(2) AIR 1995 CALCUTTA 73 “ Cycle Corporation of India Ltd. vs. T.I. Raleigh Industries Pvt. Ltd. and others “ Registration already obtained but not renewed and hence the mark was abandoned, but they were using the trade mark. The subsequent user cannot take advantage of the same.

31. The judgments relied on by the applicants are all relating to infringement action and so not relevant to this case.

32. In rejoinder, the learned counsel for the applicant submitted that on the facts, the Vishnudas Case is different. No evidence as to distinctiveness proved by the respondent. There is no document in the name of the respondent to prove the use.

33. We have heard both the counsel and carefully considered the same and have gone through the pleadings and documents.

34. The main issue would be to decide whether the application is maintainable or not, for various reasons.

35. The applicants have filed this application for rectification based on the averment and reliance on this impugned registration in the counter statement filed by the respondent in another opposition proceedings between the same parties before the Registrar of the Trade Marks. Therefore, the applicants are aggrieved and have the locus to file this application for rectification.

36. The other reasons as to the application not maintainable is that the goods are different and that the applicants have no proprietary right in the trade mark. These two points as to the goods are different and the applicant is not the proprietor of the trade mark have to be dealt with separately. In fact we have held that the applicant is a person aggrieved and the application is maintainable, if that be the case, it is not clear as to how the respondents stated that the applicants have no proprietary right. We, therefore, reject the respondents contention as to maintainability.

37. The other issue would be to see if the respondents are the proprietors of the trade mark. The respondents claim use of the trade mark since 1962 through their predecessors. This application for registration has been filed on 05/01/2005 claiming user since 01/01/1962. There is no material on record to prove their statement that the respondent acquired the right and title to the business and trade mark under a family undertaking and arrangement after the death of the father.

38. The respondents as applicants for registration have not proved their proprietorship to the trade mark. The registration is therefore, in contravention to section 18 of the Act. The respondent has argued that he is the sole proprietor of the firms Style Tiger Snuff Manufacturing Company and Tiger Snuff Manufacturing Company and so the two firms are the same and that Tiger Snuff Manufacturing Company could file counter statement for Style Tiger Snuff Manufacturing Company. We are not able to accept this contention for the simple reason that there is no averment or explanation given in the counter statement as to either of the two firms or as to how they acquired the title from their predecessor.

39. The date of user claimed in the application for registration is 01/01/1962 whereas the documents i.e. Central Excise Licence is dated 23/11/1976 which is in the name of Mr. Azeemuddin. If at all the respondents had been using, it would only be from 1994 after the death of Mr. Azeemuddin which is the admitted statement of the respondents. It is not clear whether the trade mark was earlier in the name of a partnership firm or sole proprietorship firm as it has been stated, to be a partnership firm in some of the documents. As regards the date of use being a wrong one, we think it is a case where the mark has to be rectified. The Board has held in several cases (New Bharat Rice Mill Case (Supra) that a mark deserves to be cancelled for wrong user. The impugned trade mark here therefore, deserves to be rectified.

40. Having observed all the grounds in favour of the applicant, we think it fit to allow the application for rectification and cancel the impugned trade mark. We, therefore, allow the rectification application with a direction to the Registrar of Trade Marks to cancel the trade mark registered No. 1330146 in class 34. There shall be no order as to costs.


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