Medical Technologies Limited vs Neon Laboratories Limited

sk wp2669.11

IN THE HIGH COURT OF JUDICATURE AT BOMBAY

APPELLATE SIDE

WRIT PETITION NO.2669 OF 2011

Medical Technologies Limited,

a company incorporated under the Companies Act, 1956, having its registered office at Sydney House, Premchandnagar Road, Bodakdev,

Ahmedabad, Gujarat. : Petitioner ig (Orig.Applicant for Rectification)

V/s.

1. Neon Laboratories Limited, a company incorporated under the Companies Act, 1956, having its registered office at

140, Damji Shamji Industrial Estate, Mahakali Caves Road, Andheri (East),

Mumbai--400 093.

2. The Deputy Registrar, Intellectual Property Appellate Board,

Annexe I, Guna Complex, 2nd floor, Anna Sallai, Chennai--600 018.

3. The Registrar of Trade Marks, The Trade Marks Registry,

Intellectual Property Bhavan, Near Antop Hill Head Post Office, S.M. Road, Antop Hill, Mumbai--400 037. : Respondents (No.1 Regd. Proprietor) ...

Mr.Janak Dwarkadas, Senior Advocate, with Mr.Vinod Bhagat and

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Mr.Dhiren Karania i/b. Mr.G.S.Hegde & Mr.V.A.Bhagat for the petitioner.

Mr.Virag Tulzapurkar, Senior Advocate, with Mr.Amit Jamsandekar i/b. Mr.S.N.Nair for the respondent no.1.

...

CORAM : D.D. SINHA AND SMT.V.K.TAHILRAMANI, JJ.

Date of Reserving ) : 08.02.2012. the Judgement. )

Date of Pronouncing ) : 03.04.2012. ig the Judgement. )

JUDGEMENT (Per D.D.Sinha, J.)

Heard Mr.Dwarkadas, the learned Senior Advocate for the

petitioner and Mr.Tulzapurkar, the learned Senior Advocate for the

respondent no.1.

2. This Writ Petition is directed against the order dated 29.5.2009

passed by the Intellectual Property Appellate Board (for short "IPAB")

whereby the petitioner's rectification application seeking expunction of

entry made in the Register of Trade Marks of the trade mark "ROFOL"

registered in the name of the respondent no.1 came to be dismissed.

Similarly, the order dated 10.8.2010 passed by the IPAB whereby the

petitioner's clarificatory application seeking review of the order dated

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29.5.2009 came to be dismissed.

3. The facts which have given rise to the filing of the present petition

are as follows:-

(i) The Respondent no.1 made an application for registration of the

trade mark "ROFOL" on 19.10.1992. The said trade mark was registered

with effect from 19.10.1992. The respondent no.1 started using the mark

"ROFOL" with effect from 16.10.2004.

(ii) The petitioner filed a civil suit for passing off before the City

Civil Court, Ahmedabad, on 19.7.2005 on the basis that the mark

"ROFOL" used by the respondent no.1 is deceptively similar to the mark

"PROFOL" used by the petitioner. The petitioner has claimed use of the

mark "PROFOL" since April 1998.

(iii) The petitioner has claimed proprietorship of the mark "PROFOL"

on the basis that they are the first user of the mark "PROFOL". The

respondent no.1 has also filed a suit before this Court on the basis that the

mark "PROFOL" used by the petitioner is deceptively similar to the mark

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"ROFOL" registered in the name of the respondent no.1.

(iv) It is the stand of the petitioner that its predecessor made an

application for registration of mark "PROFOL" in class 05 of Fourth

Schedule to the Trade Marks Rules, 2002, vide application no.803692 and

the same is still pending. The respondent no.1 has filed an opposition to

the said application of the petitioner. The mark "PROFOL" has not been

registered.

(v) The petitioner obtained an ex parte order against the respondent

no.1 on 20.7.2005 in Suit No.1244 of 2005 filed before the City Civil

Court, Ahmedabad. On 17.10.2005 the said ex parte order is confirmed

by the City Civil Court, the respondent no.1 is injuncted from using the

mark "ROFOL". The respondent no.1 filed an appeal against the order

dated 17.10.2005 which came to be dismissed by the Gujarat High Court

vide order dated 19.12.2005. The respondent no.1 challenged the order of

the Gujarat High Court dated 19.12.2005 before the Hon'ble Supreme

Court by filing Special Leave Petition on 16.1.2006. The same was

admitted by the Apex Court on 30.1.2006. The said order of the Apex

Court reads thus:-

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ORDER

"Special Leave granted.

No interim order except that the respondents

shall maintain accounts.

Liberty to mention for early date of hearing.

We make it clear that so far as the parties are

concerned, whatever rights they have in law may be

urged in proceedings pending before the other

Courts."

(vi) The petitioner on 25.2.2006 filed rectification application under

sections 47, 57 and 127 of the Trade Marks Act, 1999 (hereinafter

referred to as the "Act"). The respondent no.1 filed its counter statement

to the rectification application on 17.6.2006. On 7.5.2008 the petitioner

filed its reply to the counter statement of the respondent no.1.

Rectification application was dismissed by the IPAB vide order dated

29.5.2009 and the clarificatory application of the petitioner seeking

review of the said order also came to be dismissed by the IPAB vide order

dated 10.8.2010. The petitioner being aggrieved has filed the present Writ

Petition under Articles 226 and 227 of the Constitution of India for setting

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aside the said orders passed by the IPAB.

4. Mr.Dwarkadas, the learned Senior Advocate appearing for the

petitioner, has contended that the petitioner acquired the right in the trade

mark by virtue of: (i) its use in relation to vendible goods; (b) its

registration either for goods or for services; and (c) its acquisition through

an assignment from its predecessors. The rights acquired through prior

use are however superior to rights acquired through registration, as

registration does not confer any additional right. It is contended that in

other words, the common law rights are superior to statutory rights. In

order to substantiate his contention, reliance is placed on the decision of

this Court in Consolidated Foods Corporation v. Brandon & Co. Pvt.

Ltd. (AIR 1965 Bombay 35). It is, therefore, contended that as between

the two competitors who are desirous of adopting such a mark, it is

entirely a question of who gets there first. It is the case of the petitioner

that the petitioner is the prior user of the mark "PROFOL" and, therefore,

has acquired common law rights to use the mark which is superior to the

rights acquired by the respondent no.1 by registration of the mark in the

year 1992. The contention of the learned counsel for the petitioner,

therefore, is that the petitioner is the proprietor of the mark "PROFOL".

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5. Mr.Dwarkadas has submitted that section 28 of the Act though

gives the registered proprietor of the trade mark exclusive right to use the

trade mark in relation to the goods or services in respect of which the

trade mark is registered and to obtain relief in respect of infringement of

trade mark, however, such right is subject to other provisions of the Act as

can be seen from the words of section 28(1) of the Act. It is submitted

that on the other hand, common law right under section 27(2) of the Act

remains wholly unaffected as is evident from the starting words "Nothing

in this Act shall be deemed to affect rights of action against any person for

passing off goods or services as the goods of another person or as services

provided by another person, or the remedies in respect thereof." It is

contended that the Act was enacted for the purpose of saving vested rights

and was not enacted to throw away the common law rights acquired by

one in the rightful use of its trade mark.

6. Mr.Dwarkadas has contended that the respondent no.1 has

registered its trade mark "ROFOL" under no.583227 dated 19.10.1992 in

class 05 which was duly entered in the Register of Trade Marks on

14.9.2011 whereas the petitioner commenced use of its trade mark

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"PROFOL" since April 1998 through its predecessor, Haematal

Biologicals Ltd. It is contended that the said predecessor of the petitioner

had conceived and adopted the trade mark "PROFOL" independently and

honestly from the ingredient molecule Propofol. Therefore, such

adoption of the trade mark by the petitioner's predecessor was honest,

independent and was not with any knowledge of the respondent no.1's

trade mark "ROFOL". It is contended that the petitioner's said

predecessor used to get its medicinal and pharmaceutical preparations

manufactured under the trade mark "PROFOL" on a loan license basis

from its common law licensee, Core Laboratories Ltd. Core Laboratories

had accordingly on 22.4.1998 applied to Food & Drug authorities for

grant of manufacturing license for its formulation, propofol injection I.V.

and had thus been manufacturing and marketing the said goods under the

trade mark "PROFOL" since the years 1998 as licensee of the petitioner's

predecessor, Haematal Biologicals Ltd. Vide a licence agreement dated

1.4.1999, the petitioner's predecessor licensed the use of its trade mark

"PROFOL" to Claris Lifesciences Ltd. On 17.2.2000 the running

business of the petitioner's predecessor, Haematal Biologicals Ltd., was

amalgamated with the petitioner and all properties, assets, rights including

intellectual property rights in the trade mark "PROFOL" amongst others

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came to be transferred and vested in the petitioner, viz., Medical

Technologies Ltd. On 1.11.2001 the petitioner had issued necessary

licence in favour of Claris Lifesciences Ltd. for use of its trade mark

"PROFOL". The petitioner through its predecessor is the rightful owner

and lawful proprietor of the said trade mark "PROFOL" by virtue of its

use since April 1998. The petitioner's trade mark "PROFOL" is duly

registered in Columbia, Sri Lanka, Kazakhistan, Uzbekistan and Vietnam.

In India, however, the trade mark "PROFOL" is pending for registration.

It is contended that the petitioner's predecessor has sold its goods under

the trade mark "PROFOL" in excess of Rs.325 crores. Such goodwill and

reputation has been acquired by the petitioner in the said trade mark

"PROFOL" which has become distinctive from the petitioner's goods and

has further come to be identified in the trade and in the minds of the

public with the petitioner and none else. Thus, valuable common law

rights have come to vest in the trade mark "PROFOL" of the petitioner.

7. Mr.Dwarkadas, the learned Senior Advocate for the petitioner,

has further contended that in July 2005, the petitioners learnt of misuse of

its trade mark "PROFOL" by the respondent no.1, hence filed a suit

before the City Civil Court, Ahmedabad. Vide ex parte order dated

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28.7.2005 the respondent no.1 was restrained from using the mark

"ROFOL" The respondent no.1 resisted the said injunction order by

relying heavily on its registration and pointed out that such registration

gave it the exclusive rights conferred under section 28(1) of the Act.

However, the order of injunction came to be confirmed. The appeal filed

by the respondent no.1 also came to be dismissed by the Gujarat High

Court on 19.12.2005. Thus, it is contended by the counsel for the

petitioner that the proposition of common law rights acquired through use

are superior to statutory rights acquired through prior registration. The

respondent no.1 filed a civil suit for infringement and passing off against

the petitioner in this Court where no ad-interim or interim orders are

passed in favour of the respondent no.1. Mr.Dwarkadas, therefore,

contended that in the instant case, it is absolutely clear that from the year

1998, it is the petitioner's trade mark which is in use and the respondent

no.1 has been rightfully restrained from using the impugned mark

"ROFOL". Thus, it is the petitioner who is the true and rightful owner

and lawful proprietor of the trade mark "PROFOL".

8. The counsel for the petitioner has submitted that the IPAB has

erred in dismissing the rectification application and has wrongly held that

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the petitioner has not been using the said trade mark "PROFOL" by itself

but through the licensee. It is well-settled position in law that use of the

trade mark by the licensee amounts to and enures to the benefit of the

licensor. In the present case, the respondent no.1 had not used the trade

mark for 12 long years since its registration. It dishonestly commenced

such use only upon getting to know that the trade mark "PROFOL" of the

petitioner had acquired tremendous goodwill and reputation.

Mr.Dwarkadas further submitted that the Board did not decide other

ground for rectification, viz., section 57 of the Act, the impugned

registration is granted without sufficient cause and the entry thereof

wrongly remains on the register. This issue though pleaded has not been

decided upon by the Board which has caused great prejudice to the

petitioner.

9. It is further submitted by the counsel for the petitioner that the

Board has given contrary finding on the issue of the petitioner being the

"aggrieved person". The Board also did not decide the issue regrading

grant of injunction order passed by the City Civil Court, Ahmedabad,

against the respondent no.1 and the use of "ROFOL" by the respondent

no.1 would amount to causing confusion and deception leading to passing

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off the appellant's goods sold under the mark "PROFOL". It is, therefore,

contended that the orders passed by the Board impugned in the present

Writ Petition are not sustainable in law and deserves to be quashed and set

aside.

10. Mr.Dwarkadas has submitted that the adoption of the trade mark

by the petitioner is bona fide and has been undertaken without any

knowledge of the respondent no.1's mark "ROFOL". The petitioner has

been extensively using the trade mark "PROFOL". The respondent no.1,

on the other hand, has been under an injunction and has been restrained

from using its trade mark "ROFOL", while the petitioner's trade mark

"PROFOL" is in continuous use since 1998. The mark "ROFOL" by the

respondent no.1 has not been in use till 2004. It is contended that apart

from having applied for registration, the respondent no.1 had never used

the mark at any time prior to the use thereof by the petitioner. The

respondent no.1 upon realising the fact that immense goodwill and

reputation has been earned by the petitioner in its trade mark "PROFOL"

and, therefore, mischievously commenced use of the mark "ROFOL".

Immediately the petitioner instituted a civil suit and obtained injunction

order in July 2005 which is in operation and the said injunction is

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operating till today.

11. Mr.Dwarkadas further submitted that even if it is presumed that

the mark of the respondent no.1 is not liable to be removed under section

47 of the Act, even then this Court may consider whether: (a) the mark is

liable to be removed on account of it being wrongly remaining on the

Register or; (b) on the ground of having been registered without sufficient

cause under section 57 of the Act. It is contended that where common

law user (like the petitioner) has on account of prior honest adoption and

use, acquired proprietorship over the mark during the period when the

application for registration of the respondent no.1 was pending since

1992, the respondent no.1, the registered proprietor of the mark, has done

nothing for 12 long years and introduced its goods only after the common

law mark of the petitioner has acquired tremendous goodwill in its mark.

12. It is further contended by the counsel for the petitioner that the

impugned registration of mark "ROFOL" wrongly remains on the

Register of Trade Marks without any sufficient cause, especially when the

respondent no.1 has been restrained from using the said trade mark. If the

said registration continues to remain on the Register, it would cause

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undue harm to the petitioner who has used the mark "PROFOL", but

cannot get on the register in view of the said entry wrongly remaining

thereon. Mr.Dwarkadas, therefore, contended that in these circumstances,

the impugned registration ought to have been rectified and cancelled by

the Board.

13. Mr.Tulzapurkar, the learned counsel for the respondent no.1, has

submitted that most of the contentions canvassed by the leaned counsel

for the petitioner are not material to the issue which was raised by the

petitioner before the Board by filing the rectification application under

section 47 of the Act because, the rectification application was based only

on the ground of the alleged non-use of the trade mark "ROFOL" by the

respondent no.1. The scope of rectification application of the petitioner

was limited to the provisions of section 47 of the Act and, therefore, the

only question the Board was required to decide was whether or not the

petitioner has proved the terms and conditions of section 47 of the Act

before taking over the registered trade mark of the respondent no.1. It is

submitted that the petitioner has miserably failed to satisfy the

requirements of section 47 of the Act. On the other hand, the petitioner

has, in fact, admitted that the mark "ROFOL" has been used by the

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respondent no.1 in the year 2004 and, therefore, the petitioner filed a civil

suit for passing off against the respondent no.1. It is, therefore, contended

that the Board was justified in dismissing the rectification application of

the petitioner.

14. The counsel for the respondent no.1 has submitted that the

argument of the petitioner that the Board has erred in recording contrary

finding as far as maintainability of the rectification application on the

ground that the petitioner is not an aggrieved party within the meaning of

section 47 of the Act is completely erroneous and incorrect. The Board

has expressly held that the petitioner is an aggrieved party and has locus

and is entitled to file the rectification application.

15. It is further contended by the counsel for the respondent no.1 that

the finding of the Board that the petitioner has not used the mark since its

adoption till now and, therefore, it cannot be a person aggrieved to

institute the proceedings and had no locus to be heard in respect of the

contention that the mark "PROFOL" has been used by the petitioner's

predecessor in title since 1998 as a licensee of the petitioner. The finding

is recorded by the Board to that effect because the petitioner has failed to

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prove any licence as alleged and the Board on the basis of the evidence on

record held that there is no registered user and there is no connection in

the course of trade between the petitioner and the licensee.

Mr.Tulzapurkar has contended that the said finding is on a completely

different point and cannot be confused with the petitioner's locus as an

aggrieved party to seek rectification. It is submitted that the contention

of the petitioner that the Board has not considered the licensee

arrangement between the petitioner and its licensee and use of mark by

the petitioner through its licensee since 1998 is incorrect. The Board,

after considering the evidence on record, has held in paragraph 23 of the

judgement which reads thus:-

"From the documents here before referred, it is

abundantly clear that the applicant is, since

adoption of the mark PROFOL, neither using itself

the mark nor used through a registered user. There

is nothing to show real trade connection between

the applicant and the goods under the trade mark

PROFOL. The proposition of law appears to be

that that trade mark cannot be got registered and

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held by persons as `investors' only and with no

intention whatsoever to use the same in connection

with any goods and services [see para 19 in Sun

Pharmaceuticals Industries Limited vs. Cipla

Limited, MIPR 2008 (3) 0384]. The applicant

cannot claim user as it has no product in the market

which can be claimed to be originated from it and

whatever vendible product under the name Profol

is available originates from the licensee that is

manufactured, marketed, sold and advertised are

by the licensee and the product has no trade

connection or association with the applicant since

1998. There is nothing in the pleadings to show

that the licensee is a registered user and the

applicant has no control or supervision on the

quality or manufacturing of the medicinal

product."

The counsel for the respondent no.1, therefore, submitted that the

petitioner has failed to prove that there is a valid licensing arrangement as

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alleged by the petitioner. The finding of the Board is based on evidence

produced by the petitioner and, therefore, it is not correct to say that the

Board has not considered the use of the mark by the petitioner since 1998

through its licensee.

16. Mr.Tulzapurkar further argued that, in any event, even if it is

presumed in the petitioner's favour that the use of the trade mark began

from the year 1998, this makes no difference as admittedly the respondent

no.1's registration is of 19.10.1992. On that date, the petitioner's mark

"PROFOL" was not even in existence. Thus, on the question of

proprietorship, the use of the trade mark "PROFOL" by the petitioner

from April 1998 is of no avail. The counsel for the respondent no.1 has

submitted that from the rectification application filed by the petitioner, it

is clear that the petitioner sought rectification of the respondent no.1's

mark only on the ground of the alleged non-use of the mark by the

respondent no.1. It is vaguely mentioned in paragraph 12 of the

application for rectification by the petitioner that the entry in respect of

mark is made without due cause and wrongly remaining on the register

because the mark is not used by the respondent no.1. Thus, all the

grounds taken by the petitioner even in respect of section 47 in the

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rectification application are in respect of the alleged non-use of the mark

by the respondent no.1. Hence, the Board has considered this aspect and

rejected the claim of the petitioner on the basis of the material before it,

keeping in view the admitted position that the respondent no.1 did use the

mark "PROFOL" from October 2004.

17. The learned counsel for the respondent no.1 has submitted that

the grounds raised by the petitioner in the rectification application

basically refers to non-use of the trade mark by the respondent no.1 and,

therefore, the petitioner sought rectification of the register under section

47 of the Act. Reference to section 57 of the Act in the cause title of the

rectification application is only to allege non-use of the trade mark and to

seek rectification under section 47 of the Act. This is evident from the

grounds taken in paragraph 12 of the rectification application. There is

no separate ground taken by the petitioner in the rectification application

under section 57 of the Act, but the allegations made regarding `entry

without sufficient cause', `wrong entry' and `bona fide intention to use'

are related only to the alleged non-use of the mark by the respondent

no.1.

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18. Mr.Tulzapurkar, the learned Senior Advocate for the respondent

no.1, has submitted that a bare reading of the grounds and comparing

them with the provisions of section 47(1) of the Act, it is ex facie clear

that the requirements of section 47 are not satisfied at all. The non-use

alleged by the petitioner is not upto three months prior to the date of the

rectification application. The rectification application was filed on

1.3.2006. Admittedly, the respondent no.1's use began in October 2004.

Hence, the fact of non-use in view of section 47(1) has not been proved.

It is further contended that there is no evidence placed by the petitioner to

prove that the entry of the trade mark registered in respect of the

respondent no.1 is made without any sufficient cause and remaining

wrongly on the register and, therefore, the contentions canvassed by the

learned counsel for the petitioner are liable to be rejected.

19. Mr.Tulzapaurkar has submitted that the claim made by the

petitioner of the proprietorship of the mark by virtue of prior use of the

mark is completely incorrect and untenable. The proposition of law

advanced on behalf of the petitioner that the common law rights are

superior to the rights acquired by the registration of the mark on the basis

of decision of this Court in Consolidated Foods Corporation (supra) is

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wrong and contrary to the statutory provisions as well as the law declared

on the issue by this Court and the Supreme Court. The respondent no.1

submitted that the alleged use by the petitioner is admittedly much

subsequent to the acquisition of the proprietary rights in the trade mark

"ROFOL" by the respondent no.1 and also subsequent to the claim and/or

constructive use by the respondent no.1 of the mark "ROFOL". It is,

therefore, contended that the petitioner cannot claim any common law

rights on the basis of the alleged use over the statutory rights of the

respondent no.1. The rights of proprietorship in the mark "ROFOL"

solely vests in the respondent no.1 by virtue of registration of mark in the

name of the respondent no.1 and also by virtue of the deemed and/or

constructive use of the mark prior to the adoption and use of the mark

"ROFOL" by the petitioner. It is contended that once the mark of the

respondent no.1 is registered, even if not used, the respondent no.1 is

entitled to an exclusive right under the Trade and Merchandise Marks

Act, 1958 which shall be from the date of the application which may be

much prior to the use of the mark. The counsel for the respondent no.1,

therefore, contended that the petitioner cannot claim proprietary right in

the mark by subsequent use and destroy the statutory right of

proprietorship of the respondent no.1. It is contended that in view of the

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prior claim of the proprietorship of the mark by way of an application to

the Trade Mark Registry by the respondent no.1, even though the claim is

made as "proposed use" in the application, the rival trader (petitioner)

cannot claim common law rights in the mark by commencing use of the

same subsequent to the statutory claim by the applicant. It is contended

that the proprietorship in the trade mark can be acquired by: (i) making an

application for registration or, (ii) by actually using the mark in respect of

the goods or, (iii) by way of an assignment.

20. Mr.Tulzapurkar has submitted that the application for registration

of the mark is made by the petitioner under the provisions of section 18 of

the Act which expressly provides that any person claiming to be the

proprietor of a trade mark used or proposed to be used by him can make

an application for registration of the mark. Therefore, for claim or

proprietorship of the mark, it is not necessary for the applicant to actually

use the same and the proprietorship in the mark can be acquired by

making an application to the Registrar of Trade Marks under section 18 of

the Act and having the trade mark registered. It is submitted that if the

rival trader has not started using the mark in respect of the goods prior to

the date of application by the applicant for the registration of the mark,

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then the actual use of the mark by the rival trader is of no consequence

and he cannot make any claim of proprietorship.

21. In order to substantiate his contentions, Mr.Tulzapurkar placed

reliance on the decision of the Madras High Court in Mohan Goldwater

Breweries (Private) Limited v. Khoday Distilleries Private Limited &

another, reported in 1977 IPLR 83, the decision of this Court in Sunder

Parmanand Lalwani and others v. Caltex (India) Ltd., reported in AIR

1969 Bombay 24, the decision of the Supreme Court in Meghraj Biscuits

Industries Ltd. v. Commissioner of Central Excise, U.P., reported in

(2007) 3 SCC 780 and the decision of the Supreme Court in Hardie

Trading Limited v. Addisons Paints & Chemicals Limited (2003) 11

SCC 92 (paragraphs 26 and 27).

22. Mr.Tulzapurkar has further submitted that the reliance placed by

the petitioner on the provisions of section 27 of the Act shows that the

issue involved in the petition is a complex question of law in view of the

non obstante clause in section 27 which saves the common law rights also

deserves to be rejected. It is contended that section 27 saves the right of a

person who already has a common law right to institute an action in

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passing off. In the present case, the petitioner is claiming common law

rights after the respondent no.1 acquired the statutory rights. If the

petitioner seeks protection under section 27, then the petitioner first has to

prove that the petitioner is the proprietor of the mark, which in the present

case in view of the acquisition of the proprietary right prior to the

petitioner by the respondent no.1 is not possible. Mr.Tulzapurkar has

submitted that it is well-settled principles of law relating to trade mark

that there can be only one mark, one source and one proprietor. It cannot

have two origins.

23. Mr.Tulzapurkar has submitted that the Board has considered the

issue involved in proceedings under section 47 of the Act and has rightly

passed the orders which are sustainable in law. On the basis of material

on record and on a full and proper consideration thereof, the orders are

passed in accordance with the well-settled principles of trade mark law.

There is no arbitrariness, violation of natural justice or irregularity in the

proceedings and, therefore, are sustainable in law and the petition is liable

to be dismissed.

24. We have given our anxious thoughts to the rival contentions

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canvassed by the respective counsel for the parties, considered the facts

involved and the decisions cited. We would like to reiterate some of the

basic facts which are more or less not in dispute. Those are as follows:-

The application for registration of the trade mark "ROFOL" was

made by the respondent no.1 on 19.10.1992 and the mark was registered

with effect from 19.10.1992. The Respondent no.1 has started using the

mark "ROFOL" with effect from 16.10.2004. The petitioner has claimed

the use of the mark "PROFOL" since April 1998. The respondent no.1

claimed proprietorship of the mark "ROFOL" with effect from

19.10.1992. The petitioner filed a civil suit for passing off before the

City Civil Court, Ahmedabad, on the basis that the mark "ROFOL" used

by the respondent no.1 is deceptively similar to the mark "PROFOL"

used by the petitioner. The respondent no.1 has also filed a civil suit

before this Court on the basis that the mark "PROFOL" used by the

petitioner is deceptively similar to the mark "ROFOL" registered in the

name of the respondent no.1. The petitioner on 25.2.2006 filed

rectification application which shows that the same is filed under sections

47, 57 read with section 125 of the Act. The Board dismissed the

rectification application vide order dated 29.5.2009. The clarificatory

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application of the petitioner seeking review of the said order was also

dismissed by the Board by order dated 10.8.2010. The said orders passed

by the Board have been impugned in the present Writ Petition.

25. Mr.Dwarkadas, the learned counsel for the petitioner, has

contended that the petitioner is a person aggrieved who is entitled to file

rectification application under section 47 of the Act, however, the Board

has recorded contrary finding on the issue of "person aggrieved". The

contention of the petitioner does not hold water in view of the factual

findings recorded by the Board in this regard in paragraph 20 of the

impugned order, the relevant portion thereof reads thus:-

"Person aggrieved includes rivals in the same trade

who are aggrieved by the entry of rival's 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

persons who would be substantially damaged if the

mark remained on the register. Though the

application does not contain any specific averment

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that both parties are in the same trade, but it could

be inferred from the pleadings that the applicant is

in the same trade as that of the registered proprietor

and the registered trade mark of the registered

proprietor/respondent no.1 limits the rights of the

applicant to carry on the business of manufacturing

and market pharmaceutical and medicinal

preparation and as such the applicant is prima facie

aggrieved by the entry of the rival's mark on the

register of trade mark. The applicant is in one way

or the other substantially interested in having the

mark of respondent no.1 removed from the register.

The applicant, in our opinion, is prima facie the

person aggrieved. As has been held that where a

person shows himself to be a person aggrieved by

making necessary statements in the application for

rectification in that behalf, such person would

obviously have the locus or purpose of making an

application for rectification (see Ciba Ltd. v. M.

Ramlingam, AIR 1958 Bom. 56), so is the

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applicant herein has locus standi to file and

maintain the present application."

The above referred finding recorded by the Board clearly demonstrates

that the petitioner is held to be "person aggrieved" for the purpose of

invoking the provisions of section 47 as well as section 57 of the Act and,

therefore, the contention canvassed by Mr.Dwarkadas in this regard

cannot be accepted.

26. It is true that in paragraph 23 of the order, the Board has observed

thus:-

"............................ The applicant cannot claim user

as it has no product in the market which can be

claimed to be originated from it and whatever

vendible product under the name Profol is

available originates from the licensee that is

manufactured, marketed, sold and advertised are

by the licensee and the product has no trade

connection or association with the applicant since

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1998. There is nothing in the pleadings to show

that the licensee is a registered user and the

applicant has no control or supervision on the

quality of manufacturing of the medicinal product.

When the applicant has not used the mark since its

adoption till now, it cannot be a person aggrieved

to institute this proceeding and no locus to be

heard."

The above referred finding of the Board needs to be considered in its right

perspective. The said finding is in respect of a different issue i.e. the

petitioner has not used the trade mark from its adoption till now nor there

is evidence to show that the licensee was a registered user and, therefore,

cannot be a person aggrieved to institute proceedings and has no locus to

be heard in respect of the contention of the petitioner that the mark

"PROFOL" has been used by the petitioner's predecessor in title since

1998 as a licensee of the petitioner. The contention of the petitioner based

on the above referred finding of the Board that the Board has held that the

petitioner cannot be an aggrieved person and has no locus to file an

application under section 47 is incorrect and cannot be sustained in view

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of the specific finding given by the Board in paragraph 20 of the

judgement whereby the petitioner is not only held to be a person

aggrieved but also a person who had a locus for making an application for

rectification.

27. The contention of the petitioner that the Board has not considered

the use of mark "PROFOL" since 1998 and the use of the mark by the

licensee is the use of mark by the petitioner is also not sustainable in law

in view of the finding recorded by the Board in paragraph 23 of the

judgement, the relevant observations are as follows:-

"From the documents here before referred, it is

abundantly clear that the applicant is, since

adoption of the mark PROFOL, neither using itself

the mark nor used through a registered user. There

is nothing to show real trade connection between

the applicant and the goods under the trade mark

PROFOL. The proposition of law appears to be

that that trade mark cannot be got registered and

held by persons as `investors' only and with no

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intention whatsoever to use the same in connection

with any goods and services (see para 19 in Sun

Pharmaceuticals Industries Limited vs. Cipla

Limited, MIPR 2008 (3) 0384]."

28. Mr.Dwarkadas vehemently argued that the petitioner is the prior

user of the mark "PROFOL" and has acquired common law rights to use

the mark which is superior to the rights acquired by the respondent no.1

by registration of the mark in the year 1992. Hence, the petitioner as the

proprietor of the mark "PROFOL" is concerned, the same is based on the

decision of this Court in Consolidated Foods Corporation (supra).

29. The decision of this Court in Consolidated Foods Corporation

(supra) has been considered by the Apex Court in Meghraj Biscuits

Industries Ltd. v. Commissioner of Central Excise, U.P. wherein in

paragraphs 17, it has been observed as under:-

"17. The Trade Marks Act, 1999 has been enacted

to amend and consolidate the law relating to trade

marks, to provide for registration and better

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protection of trade marks and for prevention of the

use of fraudulent marks. Under Section 28 of the

Trade Marks Act, 1999, registration gives to the

registered proprietor of the trade mark the exclusive

right to the use of the trade mark in relation to the

goods in respect of which the trade mark is

registered and to obtain relief in respect of

infringement of the trade mark in the manner

provided by the Trade Marks Act. It is correct to say

that the Registrar, Trade Marks, can issue

registration certificate under Section 28 of the Trade

Marks Act with retrospective effect. The question

before us is : What is the effect of issuance of

registration certificate with retrospective effect?

This question has been decided by the Bombay High

Court in the case of Sunder Parmanand Lalwani v.

Caltex (India) Ltd. in which it has been held vide

paras '32' and '38' as follows: (AIR pp. 31 & 33-34)

"32. A proprietary right in a mark can be obtained in

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a number of ways. The mark can be originated by a

person, or it can be subsequently acquired by him

from somebody else. Our Trade Marks law is based

on the English Trade Marks law and the English

Acts. The first Trade Marks Act in England was

passed in 1875. Even prior thereto, it was firmly

established in England that a trader acquired a right

of property in a distinctive mark merely by using it

upon or in connection with goods irrespective of the

length of such user and the extent of his trade, and

that he was entitled to protect such right of property

by appropriate proceedings by way of injunction in a

Court of law. Then came the English Trade Marks

Act of 1875, which was substituted later by later

Acts. The English Acts enabled registration of a new

mark not till then used with the like consequences

which a distinctive mark had prior to the passing of

the Acts. The effect of the relevant provision of the

English Acts was that registration of a trade mark

would be deemed to be equivalent to public user of

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such mark. Prior to the Acts, one could become a

proprietor of a trade mark only by user, but after the

passing of the Act of 1875, one could become a

proprietor either by user or by registering the mark

even prior to its user. He could do the latter after

complying with the other requirements of the Act,

including the filing of a declaration of his intention

to use such mark. See observations of Llyod Jacob J.

in Vitamins Ltd.'s Application for Trade Mark, RPC

at p.12, and particularly the following:

"A proprietary right in a mark sought to be

registered can be obtained in a number of ways. The

mark can be originated by a person or can be

acquired, but in all cases it is necessary that the

person putting forward the application should be in

possession of some proprietary right which, if

questioned, can be substantiated".

Law in India under our present Act is similar.

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38. A person may become a proprietor of a trade

mark in diverse ways. The particular mode of

acquisition of proprietorship relied upon by the

applicant in this case is of his user for the first time

in India in connection with watches and allied goods

mentioned by him of the mark "Caltex", which at

the material time was a foreign mark belonging to

Degoumois & Co. of Switzerland and used by them

in respect of watches in Switzerland. Before the

Deputy Registrar and before Mr. Justice Shah,

proprietorship was claimed on the basis that the

applicant was entitled to it as an importer's mark.

Several authorities were cited and were considered

and principles deduced and relied upon in that

behalf. In our opinion, it is not necessary in this case

to go into details about facts in the various decided

cases dealing with importer's marks. In many of

those cases, the dispute was between a foreign trader

using a foreign mark in a foreign country on goods

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which were subsequently imported by Indian

importers and sold by them in this country under

that very mark. In short it was a competition

between a foreign trader and the Indian importer for

the proprietorship of that mark in this country. We

have already reached a conclusion that so far as this

country is concerned, Degoumois & Co. have totally

disclaimed any interest in the proprietorship of that

mark for watches etc. In India, the mark `Caltex'

was a totally new mark for watches and allied

goods. The applicant was the originator of that mark

so far as that class of goods is concerned, and so far

as this country is concerned. He in fact used it in

respect of watches. There is no evidence that that

mark was used by anyone else in this country before

the applicant, in connection with that class of goods.

Unquestionably, the applicant's user was not large,

but that fact makes no difference, because so far as

this country is concerned, the mark was a new mark

in respect of the class of goods in respect of which

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the applicant used it. We therefore, hold that the

applicant is the proprietor of that mark."

[emphasis supplied]

30. The Apex Court in view of the above referred findings recorded

by this Court in paragraphs 32 and 38 in the case of Sunder Parmanand

Lalwani v. Caltex (India) Ltd. (as observed hereinabove) made the

following observations in paragraph 18 of the judgement in the case of

Meghraj Biscuits Industries Ltd., the relevant portion of which is as

under:-

"On reading the above quoted paragraphs from the

above judgment, with which we agree, it is clear

that the effect of making the registration certificate

applicable from retrospective date is based on the

principle of deemed equivalence to public user of

such mark. This deeming fiction cannot be

extended to the Excise Law. It is confined to the

provisions of the Trade Marks Act."

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31. The Apex Court in paragraph 19 of the judgement in the case of

Meghraj Biscuits Industries Ltd. has observed thus:-

"In Consolidated Foods Corpn. v. Brandon and

Co., Pvt. Ltd. it has been held vide paras 27 and 30

that the Trade Marks Act merely facilitates the

mode of proof. Instead of compelling the holder of

a trade mark in every case to prove his proprietary

right, the Act provides a procedure whereby on

registration the owner gets certain facilities in the

mode of proving his title."

32. The law laid down by the Apex Court in the case of Meghraj

Biscuits Industries Ltd. clearly demonstrates that the Act has been

enacted to consolidate the law relating to trade marks, to provide for

registration and better protection of trade marks and for preventing the

use of fraudulent marks. Similarly, under section 28 of the Act,

registration gives to the registered proprietor of the trade marks the

exclusive right to the use of the trade mark in relation to the goods in

respect of which the trade mark is registered and to obtain relief in respect

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of infringement of the trade mark in the manner provided by the Act.

Similarly, the Registrar, Trade Marks, can issue registration certificate

under section 28 of the Act with retrospective effect. Similarly, it is

evident from the decision of the Apex Court in Meghraj Biscuits

Industries Ltd.'s case that the effect of making registration certificate

applicable from retrospective date is based on the principle of deemed

equivalence to public user of such mark. This deeming fiction is confined

to the provisions of the Trade Marks Act.

33. In view of the law declared by the Apex Court in Meghraj

Biscuits Industries Ltd.'s case, it is further evident that the common law

principle that the proprietary rights acquired by use of marks and the first

user of the mark is the proprietor will not hold water, particularly where

the claim to the proprietorship of a mark is made by another trader by

way of an application under the provisions of the Act for registration of

the mark prior to the use of the mark by another trader.

34. The Madras High Court in the case of Mohan Goldwater

Breweries (Private) Limited, considering the decision of this Court in

Consolidated Foods Corporation has observed thus:-

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"The learned counsel for the appellants relied on

the decision of Shah J. (as he then was) in

Consolidated Foods Corporation v. Brandon &

Co., A.I.R. 1965 Bombay 35 in support of his

contention that by virtue of their user the appellants

are entitled to resist the application for registration.

In that case an applicant filed an application for

registration of a mark consisting of the word

"Monarch" on 23-1-1957. This application was

opposed by the opponents on the ground that they

had been using the word "Monarch" even prior to

1951, that the use of the said word by the

applicants was likely to deceive or cause confusion

that the registration would be contrary to Section

11(a) of the Act, and that the adoption and use of

the proposed mark by the applicants was not

bonafide. It was found that the opponents had been

using the mark with the word "Monarch" long

before 1951 in respect of food products

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manufactured by them and that, therefore, the

application for registration of the mark could not be

ordered. The reasoning of the learned Judge was

that as between the two users of the marks:

Monarch" in this country, the opponents had a

priority both in adoption of the mark and in user

thereof and, therefore, the applicant company was

not entitled to claim the mark as a proprietor and

apply for registration thereof. In that case the

opponents had established prior user of the mark

which was sought to be registered by another and,

therefore, the registration was rightly refused. But

the facts of this case are different. Here the user

pleaded by the opponents is subsequent to the date

of application for registration. The appellants

cannot, therefore, seek any support from the said

decision."

The above referred observations made by the Madras High Court clearly

demonstrate that prior user of the mark which is sought to be registered

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by another can be a ground for refusal to register the trade mark sought to

be registered by rival trader. However, in the instant case, the respondent

no.1 applied for registration on 19.10.1992 and was granted registration

on 19.10.1992 whereas the petitioner is claiming common law rights

based on user of the mark from 1998 and, therefore, the decision of this

Court in Consolidated Foods Corporation does not further the case of the

petitioner. The Madras High Court has also observed in the judgement in

the case of Mohan Goldwater Breweries Pvt. Ltd., which reads thus:-

"It is no doubt true that it is incumbent on an

applicant for registration of a trade mark to

establish that he is the proprietor of the trade mark

and that he has either used or proposed to use the

same. As the opponents in this case have not made

an assertion of earlier proprietorship, and they

claim to have acquired a proprietory interest in the

mark only by subsequent user, the claim of the

applicants for registration cannot in any sense, be

said to be not well founded. If the rights of parties

have to be decided with reference to the date of the

application for registration, then the subsequent

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adoption and user by the opponents is of no

consequence. It is true, as pointed out by a Full

bench in Gaw Ken Lye v. Saw Kyone Saing

A.I.R. 1939 Rangoon 343, as between two

competitors who are each desirous of adopting a

mark which is distinctive in character, it is, to use

the familiar language, entirely a question of who

gets there first and the one who started using the

mark first should be protected. But that principle

will not apply to cases of registration of trade

marks under Section 18 which permits a person

claiming proprietary interest and proposing to use

the mark, without actually using the same. If the

principle of "who enters the field first" is adopted

for purpose of registration, then Section 18

enabling a person proposing to use a trade mark to

apply for registration will be meaningless, as any

person using that mark subsequently can easily

defeat the earlier application for such

registration".

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35. In other words, the law declared by the Madras High Court clearly

establishes that it is the date of registration which is the decisive date and

the rival contender though started using the mark first, but subsequent to

the date of registration cannot be protected on the basis of the principle of

who entered the field first based on common law principle that the

proprietary right can be acquired by use of mark and the first user of the

mark is the proprietor.

36. The contention of Mr.Dwarkadas that the common law rights under

section 27(2) of the Act remains wholly unaffected as can be seen from

the starting words "Nothing in this Act shall be deemed to affect rights of

action against any person for passing off goods or services as the goods of

another person or as services provided by another person, or the remedies

in respect thereof" and, therefore, the Act was not enacted to throw away

a common law right acquired by one in the rightful use of its trade mark is

concerned also does not further the case of the petitioner. So far as section

27 is concerned, the provisions of this section are attracted in altogether

different situation and, therefore, needs to be understood in the right

perspective.

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37. Section 27 of the Act deals with the effect of registration and sub-

section (2) thereof contemplates that nothing in this section shall be

deemed to affect the rights of action against any person for passing off

goods or services as the goods of another person or as services provided

by another person, or the remedies in respect thereof. The common law

rights of the trade mark owner to take action is only against any person

for passing off goods as goods of another person recognised by this

section. Whereas section 28 of the Act deals with rights conferred by

registration and it gives the registered proprietor of the trade mark the

exclusive right to use trade mark in relation to goods in respect of which

the trade mark is registered and to take action in respect of infringement

of trade mark in the manner provided by the Act. As already observed

hereinabove, the Apex Court in the case of Meghraj Biscuits Industries

Ltd. has held that the effect of making registration certificate applicable

from retrospective date is based on principle of deemed equivalence to

public user of such mark. In the instant case, it is not in dispute that the

respondent no.1 made an application for registration with effect from

19.10.1992 itself, though the respondent no.1 has started using the mark

"ROFOL" with effect from 16.10.2004. However, in view of the

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principle of deemed equivalence to public user of such mark by the

respondent no.1, it will have to be construed that the respondent no.1 had

started the use of the mark "ROFOL" with effect from 19.10.1992 as per

the deeming fiction and claimed proprietorship of the said mark with

effect from 1992 whereas the petitioner has claimed the use of the mark

"PROFOL" since April 1998. It is in view of these undisputed facts as

well as the law declared by the Apex Court in the case of Meghraj

Biscuits industries Ltd. and by the Madras High Court in the case of

Mohan Goldwater Breweries (Private) Limited, the petitioner though

started using the mark "PROFOL" first, but subsequent to the date of

registration of the mark "ROFOL" of the respondent no.1, the petitioner,

in the facts and circumstances of the present case, therefore, cannot

claim superior rights based on the common law principles on the ground

that the petitioner started the use of the mark "PROFOL" first with effect

from April 1998 i.e. prior to the use of the mark "ROFOL" by the

respondent no.1, since the same is subsequent to the date of registration of

the respondent no.1's mark "ROFOL" and, therefore, the contention

canvassed by Mr.Dwarkadas in this regard is devoid of merit and,

therefore, rejected.

38. In the instant case, the contention canvassed by the counsel for

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the respondent no.1 that in view of prior claim of proprietorship of the

mark by way of application to trade mark registry by the respondent no.1,

even though the claim is made as "proposed user" in the application, the

petitioner cannot claim superiority of right based on common law

principles in the mark by commencing the use of the same subsequent to

the date of registration of the respondent no.1's mark "ROFOL", has merit

and is sustainable in law in view of the finding recorded in the foregoing

paragraphs of this judgement.

39. It is no doubt true that the application for removal of trade mark

from the register or rectification application by the petitioner is under

sections 47, 57 and 125 of the Act. However, the grounds raised by the

petitioner and reflected in paragraphs 12, 13, 14 and 15 would show that

the primary ground of the petitioner seeking removal of trade mark of the

respondent no.1 from the register is that the mark which was registered in

the name of the respondent no.1 in respect of the goods pharmaceutical

preparation, which is registered on the application by the respondent no.1

was without any bona fide intention to use the mark in the year 1992 and

the respondent no.1 did not use the mark till the year 2004 and this clearly

establishes that there is no intention to use the mark by the respondent

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no.1 on the date of the application. Section 47 of the Act provides for

removal from register and imposition of limitations on the ground of non-

use. Sub-section (1) contemplates that registered trade mark may be

taken off the register in respect of the goods or services in respect of

which it is registered on application made in the prescribed manner to the

Registrar or the Appellate Board by any person aggrieved on the ground

either:

(a) that the trade mark was registered without any bona fide intention

on the part of the applicant for registration that it should be used in

relation to those goods or services by him or, in a case to which the

provisions of section 46 apply, by the company concerned or the

registered user, as the case may be, and that there has, in fact, been

no bona fide use of the trade mark in relation to those goods or

services by any proprietor thereof for the time being up to a date

three months before the date of the application; or

(b) that upto a date three moths before the date of the applciation, a

continuous period of five years from the date on which the trade

mark is actually entered in the register or longer had elapsed during

which the trade mark was registered and during which there was no

bona fide use thereof in relation to those goods or services by any

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proprietor thereof for the time being.

In the instant case, the Board considered this aspect and the relevant

observations in paragraph 27 of the order read thus:-

"In this case, the grounds mentioned in clause (a)

of sub-section (1) of section 47 of the Act do not

cumulatively exist. The applicant has averred at

paragraph 12 of the application "that the mark

which was registered in the name of respondent

no.1 in respect of the goods pharmaceutical

preparation,which is registered on the application

made by the respondent without any intention to

use the mark in the year 1992 and have not used

the mark till the year 2004". The respondent has

by filing certain specimen copies of invoices from

30.10.2004 to 6.6.2005 proved that they have been

suing the mark since 2004 (before the date of filing

of present application) till injunction was granted

against them by the court. The respondent No.1

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has also filed specimen of promotional and

advertising material, proof of publicizing their

trade mark in CIMS, Indian Journal of Anesthesia

and statement of sales of products with brand name

ROFOL for the periods October 2004 to March

2005 and April 2006 to June 2006 (sic 2005),

though the statement of sales of is not certified by

the Chartered Accountant. Though the respondent

No.1 has not proved user for certain period and

have not given any explanation for such non-user

yet the allegation that the respondent No.1 has

obtained registration of impugned mark without

any bona fide intention to use is unsustainable

because if the respondent No.1 has developed a

drug and applied for registration of trade mark and

got the mark renewed, as such renewal is evident

from the Exhibit C-4, it is difficult to agree or

believe that there was no bona fide intention to use

the impugned mark, more so when it is not the case

of the applicant that the respondent no.1 has

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abandoned the impugned mark. Further, the use of

the impugned mark by the respondent No.1 since

2004 negates the allegation of the applicant. Even

if for the sake of argument we assume that the

respondent has no bona fide intention to use, no

provision has been brought to our notice which

empowers this Appellate Board to remove the mark

on such ground without having regard to the

statutory period specified under section 47 of the

Act. The cumulative existence of both the grounds

of clause (a) of sub-section (1) of section 47,

referred to above, are not found in this case, hence,

the alternative ground under clause (a) is not

applicable in this case. It is undisputed that the

respondent has got the impugned mark registered

as on 19.10.1992 and the same was registered on

14.9.2001. It is settled that the expression `trade

mark was registered' occurring in clause (b) of sub-

section (1) of section 47 of the Act would mean

that the trade mark was actually put on the register,

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having regard to the definition of "registered trade

mark" in section 2(1)(w) of the Act. Thus the

statutory period of 5 years and three months would

be computed from the date on which the trade mark

was actually entered in the register. In this case,

the impugned mark was entered in the register on

14.9.2001 and the statutory period of 5 years three

months would complete on 15.12.2006. The

present application has been filed on 1.3.2006 that

is say the present application was filed about 9

months before the completion of the statutory

period specified under the Act. Thus the

application is premature. Even the respondent

No.1 has proved the use of the impugned mark

since 2004 till the injunction was granted by the

court. Hence, no relief can also be granted under

clause (b) of sub-section (1) of section 47 of the

Act."

The above referred observations made by the Board are based on factual

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aspect of the matter which clearly shows that the respondent no.1 got the

mark registered on 19.10.1992 and the same was re-registered on

14.9.2001. The petitioner submitted application for rectification on

1.3.2006. It is, therefore, clear that the statutory period of five years and

three months was not elapsed prior to the date on which the application

for rectification was made by the petitioner. The statutory period of five

years and three months prior to the date of the application would have

completed on 15.12.2006. However, the petitioner filed the application

for rectification on 1.3.2006 i.e. nine months before completion of the

statutory period specified under the Act. Similarly, it is not in dispute that

the respondent no.1 started use of the mark "ROFOL" in the year 2004

and the application of the petitioner for rectification was submitted on

1.3.2006 which clearly shows that non-use of the trade mark by the

respondent no.1 upto three months prior to the date of rectification

application is not proved by the petitioner as required by the provisions of

section 47(1) of the Act. In the circumstances, the findings recorded by

the Board in this regard, in our view, are sustainable in law.

40. The contention of Mr.Dwarkadas that the Board did not consider

the grounds raised by the petitioner in the rectification application in

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respect of section 57 of the Act is concerned, it is necessary to consider

the provisions of section 57 of the Act as well as the grounds raised in the

rectification application by the petitioner. Section 57 provides the power

to cancel or vary registration and to rectify the register. Sub-section (1)

contemplates that application made in the prescribed manner, Appellate

Board or to the Registrar by any person aggrieved, the Tribunal may make

such order as it may think fit for cancelling or varying the registered trade

mark on the ground of any contravention, or failure to observe the

condition entered on the register in relation thereto. Perusal of the

rectification application does not show any ground raised by the petitioner

in order to demonstrate that the respondent no.1 committed contravention

or failed to observe a condition entered in the register in relation thereto.

Similarly, sub-section (2) of section 57 contemplates that any person

aggrieved by the absence or omission from the register of any entry made

in the register without sufficient cause or by any entry wrongly remaining

on the register, or by any error or defect in any entry in the register, may

apply in the prescribed manner to the Appellate Board or to the Registrar,

and the tribunal may make such order for making, expunging or varying

the entry as it may think fit. Perusal of the rectification application would

show that in paragraphs 14 and 15 of the said application, the petitioner

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has merely stated that the registration obtained by the respondent no.1 and

the entry made in the register is without any sufficient cause and,

therefore, the same is defective as the registered proprietor has not used

the mark and has no intention to use the mark even after registration for a

sufficiently long period. Similar grounds are raised in paragraphs 15 and

16 of the application. In the instant case, the respondent no.1 though got

the mark "ROFOL" registered on 19.10.1992, the same was re-registered

on 14.9.2001 and also started use of the said mark with effect from

16.10.2004 and, therefore, the impugned order passed by the Board is

sustainable in law. The relevant observations made by the Board in

paragraph 26 read thus:-

"26. The allegation of the applicant that the entry

of impugned mark was made on the register

without any sufficient cause and the same is

wrongly remaining on the register has been not

substantiated. Likewise, the allegation that that the

respondent No.1 has obtained by making false

statement regarding their intention to use the mark

before the Trade Marks Registry remains

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unsubstantiated either by production of copy of

Registrar's order whereby registration was allowed

or any other cogent order. We have already stated

that the use of mark commenced in the year 2004

by the respondent No.1 negates that allegation."

41. The learned counsel for the respondent no.1 has cited the decision

of the Apex Court in Hardie Trading Ltd. v. Addisons Paint & Chemicals

Ltd. (2003) 11 SCC 92) in order to demonstrate the conditions to be

proved by the applicant before the Registrar directs removal of registered

trade mark. The relevant observations are in paragraphs 26 and 27 of the

said decision which read thus:-

"26. Thus before the High Court or the Registrar

directs the removal of the registered trade marks

they must be satisfied in respect of the following:

(1) that the application is by a "person

aggrieved";

(2) that the trade mark has not been used by the

proprietor for a continuous period of at least five

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years and one month prior to the date of the

application;

(3) there were no special circumstances which

affected the use of the trade mark during this

period by the proprietor.

27. The onus to establish the first two conditions

obviously lies with the applicant, whereas the

burden of proving the existence of special

circumstances is on the proprietor of the trade

marks. These conditions are not to be

cumulatively proved but established seriatim.

There is no question of the third condition being

established unless the second one has already been

proved and there is no question of the second one

even being considered unless the High Court or the

Registrar is satisfied as to the locus standi of the

applicant."

The above referred observations clearly demonstrate that the aggrieved

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person such as the petitioner who had applied for rectification has to

prove that the respondent no.1 has not used the trade mark "ROFOL" for

a continuous period of at least five years and one month prior to the date

of the application. In the instant case, the Board has rightly held that this

condition has not been proved by the petitioner and in the absence thereof,

establishing the third condition by the proprietor of the trade mark does

not arise. In these circumstances, the findings recorded by the Board in

this regard, in our view, are sustainable in law.

42. For the reasons stated hereinabove, the impugned orders passed

by the Board are just, proper and are sustainable in law. The petition

suffers from lack of merit and the same is dismissed. No order as to costs.

(D. D. SINHA, J.)

(SMT.V.K.TAHILRAMANI, J.)

Suundaresan

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