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Judgment
Z.S. Negi, J
This is an application for removal of trade mark No. 1072315 in Class 34 from the Register of Trade Marks or rectification of the Register under
Section 47/57/125 of the Trade Marks Act, 1999 (hereinafter referred to the Act).
The case of M/s A. Habeebur Rahman Sons, represented by its Managing Partner Shri A. Mohamad Ashraf, is that the applicant firm is the
leading manufacturer of 'Beedies' and had been carrying on business for a long time. In the course of the said business, the applicant had honestly
conceived and adopted the trade mark 'S. Beedi' together with a letter 'S' in respect of 'Beedies' since 1930 and had been regularly using the said
mark in the course of trade in connection with the aforesaid products sold by them. The applicants have also adopted the trade mark 'S. Beedi'
together with the letter 'S' written in an artistic manner in respect of their beedi ring label, kattu label as well as packet label and they have been using
the said trade mark and have done and are still doing extensive business and their products have become distinctive of products of the applicants'
manufacture only and none else. The applicants have also been using the trade mark S. Mark Jadi Beedies together with the letter 'S' written in an
artistic manner in their kattu and packet labels since 11.2.1993. The applicants have spent considerable amounts and efforts for promoting the sales of
their product bearing the aforesaid trade mark 'S. Beedi'. There is an ever increasing demand of the applicants' product which is evident from the
sales turnover of their Beedies sold under the trademark S. Beedi/S. Mark Jadi Beedies which was in the year 1960-61 to the tune of Rs. 36,27,212.00
which arose to Rs. 54,82,47,168.40 in the year 2006-07. The applicants have stated that the sales turn over for the years 1930 to 1959-60 are not
available since the accounts were destroyed for want of space. It is further stated that the unwary and illiterate purchasers refer to and identify the
applicants' beedies the trade mark S. Mark Jadi Beedi/S. Beedi.
The applicants claim is that they have obtained registration of trade mark S. beedi/S. Mark Jadi Beedis together with letter 'S' written in an artistic
manner bundle label as well as ring label and they have setout the details of 14 registered trade marks in paragraph 4 of the application and have also
furnished photo copies of the said trade mark registration certificates/certified copies for legal use. The applicants have also obtained registration of
their artistic work 'S. Beedi' labels under No. A-52292/93, A-52290/93, A-52293/93 and A-52289/93 together with the letter 'S' written in an artistic
manner under the Copyright Act, 1957. It is stated that the respondent herein has in the year 2007 obtained registration of trade mark letter 'S' with a
malafide intention and to trade upon the reputation earned by the applicants in respect of 'beedies' and the impugned registration was obtained by the
respondent behind the back of the applicants. The respondent's trade mark is identical and is virtual copy of applicants' registered trade mark S. Beedi
together with the letter 'S' written in an artistic manner and the respondent has no right whatsoever to adopt the letter 'S' written in an artistic manner
as part of its trade mark in respect of beedies.
It is also submitted that the respondent's initial adoption of the trade mark letter 'S' written in an artistic manner is dishonest and the respondent is
not entitled to the registration of the impugned mark and the respondent at the time of making application for registration of the impugned mark was
fully aware about the existence of the applicants' trade mark. The impugned trade mark of the respondent was not adapted to distinguish its products
in terms of the provisions of Section 9 and the impugned mark offends the provisions of Section 11 of the Act. It is also submitted that the respondent
is not the proprietor of the impugned trade mark under the provisions of Section 18(1) of the Act since the initial adoption of the impugned trade mark
is dishonest, and the respondent is not entitled to claim registration under Section 12 of the Act. The impugned registration was made without any
sufficient cause, remaining on the register without sufficient cause and the impugned registration has been obtained fraudulently and by making
material misrepresentation as to the proprietorship over the impugned trade mark. It is also submitted that the applicants are engaged in the same trade
as that of the respondent and in the goods for which the impugned mark is wrongly registered; such registration of the mark is causing embarrassment
to the applicants in their business, besides loss of goodwill and reputation, and as such the applicants are the persons aggrieved within the meaning of
Section 57 of the Act and are entitled to file the present rectification proceedings.
The respondent filed the counter-statement on 07.03.2008 and affidavit in support of the evidence on 26.11.2007, denying the material averments
and, after raising the preliminary objection that the applicants have failed to explain as to how they become the persons aggrieved and have locus
standi to maintain this application, has submitted that the respondent is the proprietor of Sri Raghavendraswamy Beedies (RS Jadi Beedis) trading as
K. Rajendra & Sons since 2001. The respondent claims that he has obtained the Central Excise License and selling his products since 2001 in the
market without any interruption from any body and obtained the registration of trade mark' Sri Raghavendra Swamy Beedies (RS Jadi Beedi) together
with letter RS (clubbing) written in an identical artistic manner. The applicant or any beedi manufacturers situated in all over India have not raised any
objection. He has submitted that whether the applicants are leading manufacturers, how they adopted their trade mark or whether their mark has
acquired reputation and goodwill including the sale figures and documentary evidence claimed to be furnished along with the application being
irrelevant are of no consequence in view of the unambiguous language of Section 47 of the Act. It is further submitted that the questions whether the
respondent had made misstatement, concealed material facts or wrongly claimed proprietary right to the trade mark at time of registration of the trade
mark are to be decided in the suit filed by the applicants being C.S. No. 845 of 2007 before the High Court of Madras for the same relief which is
pending. All the documentary evidence said to have been filed along with the present application is also irrelevant in the present proceedings for the
submissions made herein and also for the reason that the merits and demerits of the application for rectification are irrelevant in an application filed
under Section 47 of the Act. The applicants have not taken any steps since 2002 to September 2007 and not raised any objections before any authority
including this Appellate Authority. It is averred by Shri K. Rajender in his affidavit that the product of the respondent is sold in the market of A.P.
State only and more particularly in Khammam, Krishna and Guntur Districts only and he has never used or misused the applicants' label on his
products and never sold in the market. It is submitted that for the reasons stated in the counter-statement, this Appellate Board may be pleased to
dismiss the application with exemplary costs in the interest of justice. Thereafter, the applicants on 15.2.2008 filed the reply affidavit to the counter-
statement of the respondent.
After completion of the pleadings, the application was taken up for hearing wherein Mrs. P.V. Rajeswari, Advocate appeared on behalf of the
applicants and Shri Hema Prakasa Rao, Advocate appeared on behalf of the respondent.
Mrs. P.V. Rajeswari, learned Counsel for the applicant submitted that the applicant is the person aggrieved and can file and maintain the present
rectification application. The applicant and the respondent are engaged in the same trade and the goods are also of the same description. It is the
submission of the learned Counsel that the impugned registration of the respondent's mark is causing embarrassment to the applicant in its business
besides loss of goodwill and reputation.
Learned Counsel submitted that the mark of the respondent is adapted to distinguish its goods from the goods of the others and as such the
impugned mark is not registrable under Section 9 of the Act. The applicant is the registered proprietor of several trade marks, the impugned mark of
respondent ought not to have been granted registration without satisfying the distinctiveness of such mark. The impugned mark of the respondent has
been registered in contravention of the provisions of Section 9 of the Act.
The impugned mark of the respondent is a slavish imitation and copy of the applicant's more than a century old extensively used registered trade
mark, was asserted by the counsel for the applicant. The use of the respondent's mark in the course of trade will cause confusion or deception in the
mind of unwary consumers and trade and thus the goods of respondent will be passed off as the goods of the applicant. Learned Counsel further
submitted that the trade channel and consumers of the goods of the applicant and the respondent are also common. Thus the impugned trade mark of
the respondent offends the provisions of Section 11 of the Act.
It is submitted that the initial adoption of the trade mark by the respondent is dishonest as the respondent was fully aware of the existence of the
trade mark of the applicant at the time when it had applied for registration of the impugned trade mark. Since the initial adoption of the impugned trade
mark is dishonest, the respondent is not entitled to claim registration under Section 12 of the Act.
Learned Counsel submitted that the respondent had copied the applicant's well established and registered trade mark letter 'S' with a malafide
intention to trade upon the reputation earned by the applicant in respect of beedies and obtained the registration of the same behind the back of the
applicant and as such the adoption is dishonest and he is not entitled to registration under Section 18 of the Act. The respondent has no right
whatsoever to adopt the letter 'S' written in an artistic manner as part of his trade mark in respect of beedies. The respondent was fully aware at the
time of applying for registration of the impugned mark that the applicant's mark was in existence; therefore the respondent is wrongly claiming the
proprietary rights in the impugned trade mark and no such right exists with him.
It was also submitted that the impugned registration is the outcome of fraud, misrepresentation, concealment of material facts and matters on the
part of the respondent. The respondent has obtained the impugned trade mark registration fraudulently and material misstatement as to his
proprietorship over the trade impugned trade mark.
Shri K. Hemaprakasa Rao, learned Counsel for the respondent, raised the preliminary issue that the applicant is not the person aggrieved to file the
present application seeking removal of registered trade mark of the respondent. The applicant has failed to explain as to how the applicant has become
the persons aggrieved and how it has locus standi to maintain the application. The mere ground that registration of trade mark of the respondent is
causing embarrassment to the applicant, it cannot make the applicant the person aggrieved.
Learned Counsel submitted that Section 47 of the Act invoked in the present application does not apply to the facts of the case. It is not the case
of the applicant that the respondent has no bona fide intention to use the mark or the same has not bonafidely used after obtaining registration by the
respondent. In fact, the respondent has been using the mark continuously and uninterruptedly and the copies of invoices filed by the respondent prove
this fact beyond doubt.
Learned Counsel for the respondent submitted that the two competing marks of the applicant and the respondent are not identical or similar as the
applicants mark is single 'S' written in an artistic manner and the respondent's mark is 'RS' (clubbed) written in an artistic manner. On the carton box
of the respondent's beedies 'RS' is written in an artistic manner within a square and along top square 'Sri Raghvendra Swamy Beedies' is written and
along the bottom square line 'K. Rajender & Sons, Shiva Nagar, Warangal-2 (A.P.)' is written. According to the learned counsel, the use of mark of
the respondent in the course of trade is not likely to cause confusion or deception in the minds of the people.
Learned Counsel referred to a passage from the book of Dr. S. Venkateswaran on The Law of Trade Marks and Passing-off, Fourth Edition,
Reprint 1999 (page 664) which reads thus: ""(2) Partial removal of the mark.- In the case of a compound mark where only a part thereof is
objectionable the Court will generally make an order for the removal of such part of the mark only, See Biegel's Tm. (1887) 4 R.P.C. 525; In re
Concord Canning Co.'s Tm. (1932) 49 R.P.C. 323 ('Norwegian Sardines'); Blair v. Stock (1885) 52 L.T. 123 ('Strathmore' strck out); Masha Bibi v.
Hassan Mohammed Rowther O.S.A. No. 12 of 1955 Mad. H.Ct. and not for expunging the whole mark from the Register."" He submitted that the
respondent's mark is a compound mark the Appellate Board may consider for removal of the objectionable part of the mark.
After hearing the arguments of both the sides and on perusal of records, the first question to be considered is whether the applicant is the person
aggrieved under Section 47 or Section 57 of the Act to file the present application. The Courts have given liberal construction to the expression person
aggrieved. A trader dealing in the same class of goods to which the registered trade mark relate, or persons who are in some way or the other
substantially interested in having the mark removed from the register, are persons aggrieved and include persons who opposed the application for
registration of the applicant. The test for such determination is propounded in Powell's Trade Mark 1894 (11) RPC 4. A person aggrieved includes the
rivals in the same trade who are aggrieved by the entry of the rival's mark in the register or person whose legal rights would or might be limited if the
mark remains on the register, he could not lawfully do that which, but for the existence of the mark on the register he could lawfully do. The applicant
in the present case is in the same trade of manufacturing beedies like the respondent. The applicant has also stated that it is the person aggrieved
because it has filed a suit for infringement, etc. of its trade mark and that the impugned registration of the respondent's mark is causing
embarrassment to the applicant in its business besides loss of goodwill and reputation. We are of the view that the registration of trade mark obtained
by the respondent is in restraint to the legal rights of the applicant and therefore, the applicant is in one way or the other substantially interested in
having the mark of respondent removed from the register. The applicant is in our prima facie opinion the person aggrieved and has locus standi to file
and maintain the present application.
The applicant has raised objection that the respondents trade mark is not adapted to distinguish the products/goods of the respondent in terms of
Section 9 of the Act. In all legal proceedings relating to a registered trade mark, Section 31(1) of the Act provide that registration of trade mark under
the Act shall be the prima facie evidence of the validity of such registration. The onus to rebut such statutory presumption is on the applicant who
seeks removal of the registered mark from the Register of Trade Marks. In the present case neither there is any material on record nor any
explanation or reason put forward during the course of argument as to what are the grounds to lead us to conclude that the impugned mark of the
respondent is not adapted to distinguish the goods of the respondent from the goods of others. Such a bald averment will not lead us anywhere. Shri K.
Rajender, trading as K. Rajender & Sons in his counter affidavit has stated that he is running the business in beedies since 2001 and applied for
registration of trade mark on 8.1.2002. This statement has not been rebutted by the applicant to show that the impugned mark at the time of making
application had not acquired distinctive character. We, therefore, reject the objection under Section 9 as not proved.
The next issue to be considered is whether the two trade marks are deceptively similar likely to deceive or cause confusion to public. A trade
mark cannot be registered if it is of such nature as to deceive the public or cause confusion or it is similar with an earlier trade mark and goods
covered by the trade mark are similar. Judicial pronouncements have laid several tests to determine the similarity or otherwise of a mark. The marks
are not to be compared placing them side by side but overall structural and phonetic similarity be considered from the point of view of an unwary
purchaser of average intelligence and imperfect recollection. The question whether the two marks are likely to give rise to confusion or not is a
question of first impression and it is well recognized that in deciding question of similarity between two marks, the mark have to be considered as a
whole see Corn Products Refing Co. v. Shangrila Food Products Ltd. The question of deceptive similarity has to be approached from the point of view
of a man of average intelligence and imperfect recollection. The applicant's mark is 'S. Beedi' together with the letter 'S' written in an artistic manner
and the respondent's mark is 'sri Raghavendra Swamy Beedies (RS Jadi Beedi) together with letter RS (clubbing) written in an identical artistic
manner. The font, manner and style of 'RS' and 'S' is identical and the first impression on seeing them would be that both are same or similar marks.
Phonetically both give closely similar sound and if slurred then the similarity is very close. The carton box used by both the parties, in their colour
scheme, getup and size are so similar that at first look one will take both are same carton boxes unless some one closely examines them or one is
gifted with Sharlockhome's eyes. There is great probability of confusion or deception being caused on the public and the trade. The question of
confusion and deception is linked with the use of the mark. If there is no use of the trade mark, the question of causing confusion or deception does
not arise. The respondent has filed copies of invoices and from 31.5.2001 to 15.10.2007 and copies of detailed account sheets from 31.5.2001 to
15.10.2007. The applicant has, except copies of trade marks certificates/certified copies for legal use, has not filed a shred of documents to prove or
show its use of the mark in the course of trade. Mere existence of mark on the register cannot be proof of use of the mark. Though the applicant has
given handsome sales figures in the application but not an iota of invoice has been filed. The sales statement is not certified by the Chartered
Accountant. In the absence of any invoice/document, we are unable to come to a conclusion that the applicant is using the trade mark or that the
applicant is in the trade of beedies and the respondent's goods under his trade mark is causing confusion or deception. Without cogent documentary
evidence on record, we are not to inclined pass any adverse order against the respondent. The applicant has failed to prove its ground of objection
under Section 11 of the Act.
Regarding concurrent registration, we see that no such plea has been taken by the respondent in its counter-statement nor the applicant has touched
this aspect of concurrent registration during the course of arguments.
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. In the instant case the respondent obtained the registration of the trade mark and it is, therefore, for him to establish
his proprietary right. It is evident from the records that the respondent has not made a whisper about how he adopted the trade mark and in view of
the provisions of Section 31 of the Act, the rebuttal of the statutory presumption is to be made by the applicant. We cannot assume that the respondent
has dishonestly adopted the trademark. We cannot uphold the applicant's plea that the respondent was fully aware at the time of making application
for registration. There is nothing on record to show that the applicant has made advertisements to popularize its mark to assume that the respondent
might have come to know the existence/use of the mark of the applicant. The applicant has not attempted to prove that the respondent was aware of
its mark and he has malafidely and dishonestly copied its trade mark.
Regarding submission of the counsel for the respondent that this Appellate Board may consider the removal of the objectionable part, we had
afforded opportunity to both the parties to work out an amicable resolution but of no avail. The respondent is not agreeable to remove the artistic 'S'
from its trade mark.
In view of the above discussion, we, in the absence of documentary evidence to prove use of the trade mark of the applicant, cannot allow the
application and the same deserves to be dismissed. Accordingly, the rectification application is dismissed without any order as to costs.