Achi Masala Foods (P) Ltd. vs Registrar Of Trade Marks,Office Of The Trade Marks Registry And S.D. Murali,Trading Asthe Aachi International

S. Usha, J

The original rectification application Nos. 42/2008 and 51/2008 for removal of the trade mark No. 886993 dated 17.11.1999 in class 32 from the

Register of Trade Marks under Sections 11, 18 and 57 of the Trade Marks Act, 1999 (hereinafter referred to as the Act). Both the applicants i.e. the

sole proprietor of Aachi Spices & Foods as registered trade mark proprietor and the licencee Aaachi Masala Foods Private Limited are persons

aggrieved and have individually filed the rectification application for removal of the trade mark. The facts are one and the same in both the cases and

hence were heard together and a common order is being passed.

The applicants commenced business of manufacturing and marketing various kinds of masalas and spices for Indian tastes in the year 1975. Over

the years the applicants grew into one of the leading manufacture and marketer of spices in India. The trade mark AACHI has become a household

name. Within a short span of 10 years the applicant has expanded its business to various kinds of consumer goods. The applicant has now become one

of the leading manufacturers of packaged masalas through its licencee Aachi Masala Foods (P) Ltd. The applicant has spent a substantial amount for

advertising their products bearing the trade mark AACHI through various medias. The trade mark AACHI is unique and distinctive of the applicant's

goods and no one has used the trade mark. Because of the efforts put in by the licensor and the licencee, the trade and the public associate the mark

with the applicants and none else. The turnover runs to several lakhs of rupees.

On 1.11.2004, the applicant field an application for registration of the trade mark AACHI MASALA and obtained registration under No. 1318495.

The applicant has also filed various applications for registration of the trade mark AACHI in different class for various description of goods. The mark

AACHI MASALA is being used by the applicant ever since its adoption in the year 1995 without any interruption. The applicant was carrying on

business under the trading style Naveen Products and subsequently changed its trading style to Aachi Spices and Foods. The applicant's trade mark

has gained good reputation and goodwill among the public and the people associate the mark only with the applicant and none else. The use by any

other person will amount to infringement of the applicant's registered trade mark.

The applicant manufactured its products under his supervision and control through one M/s Nazareth Foods (P) Ltd. since 23.07.2001. On

20.06.2006 Aachi Masala Foods (P) Ltd., was incorporated for marketing all products all over India and abroad. On 22.12.2006, the applicant changed

its trading style from Naveen Products to Aachi Spices & Foods and obtained a certificate of registration under the Central Sales Tax Rules, 1957.

subsequently from 01.04.2007 on license user agreement Aachi Masala Foods (P) Ltd marketed all the products using the trade mark AACHI.

Nazareth Foods (P) Ltd. used to process the masala preparations as job worker under the supervision and control and they used to pack the product

according to the label and packets supplied by Aachi Masala Foods (P) Ltd., with the due approval of the applicants.

Recently the applicants came across the first Respondent's impugned registration for mineral water and soft drinks which is a blatant infringement

of the applicant's registered trade mark No. 1318495 in class 30. The public will inevitably be deceived if the Respondent's goods under the same

trade mark are available for sale in the market. The broad and essential features of the trade mark are to be considered to test the similarity of the

marks. The first Respondent's use of the trade mark which is deceptively similar to that of the applicants' registered trade mark is causing confusion

and deception among the public and the trade.

The applicants are the prior users of the trade mark since 1995 whereas the first Respondent is the subsequent user from the year 1997 as such

applicants have exclusive right to the trade mark AACHI. The trade channels are the same. The first Respondent was aware of the applicants' trade

mark and thus the first Respondent's adoption amounts to fraud.

The first Respondent's adoption is dishonest and is with malafide intention to enrich upon the goodwill earned by the applicants. The applicants being

aggrieved by the grant of registration has approached this Appellate Board for removal of the impugned trade mark. The grounds of rectification are:

a) the applicant is the prior user of the trade mark AACHI and has spent huge amounts for developing the trade mark. The first Respondent being the

subsequent user is not entitled for registration under the provisions of Section 11(1) (2) and (3) of the Act;

b) the use of identical mark will lead the public being deceived;

c) the learned registrar ought not to have granted registration of the identical trade mark in favour of a subsequent user;

d) the entry is wrongly remaining on the Register and is liable to be rectified;

e) the mark has been registered without sufficient cause

The applicant has therefore prayed that the impugned trade mark AACHI registered under No. 886993 dated 17.11.1999 in class 32 be removed

from the register of trade marks.

We have heard Shri N. Ramesh learned Counsel for the applicant. Despite service of notice for the hearing on 22.1.2010, none appeared nor have

they filed their counter-statement.

Learned Counsel for the applicant contended that the applicant was the registered proprietor of the trade mark AACHI in various classes. The

impugned registration was granted in favour of the first Respondent in respect of mineral water and soft drinks. Learned Counsel for the applicant

prayed that the application be allowed and mark be removed from the register of trade marks.

We have carefully considered the arguments of the counsel and have gone through the typed set of documents and the pleadings. The main issue

that arises for consideration in an application for rectification is whether the applicant is a person aggrieved to file and maintain an application for

rectification. Any person may file an opposition to the registration of a trade mark as per the provisions of Section 21 of the Act. An application for

rectification may be filed only by a person aggrieved by the trade mark remaining on the register of trade marks. Any trader who is in any way injured

or restrained in his business or embarrassed by the registration of the mark will be a person aggrieved. In Powell's trade mark, Lord Herschell stated

as follows:

Wherever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade marks, and wherever the trade

mark, if remaining on the register, would, or might limit the legal rights of the applicant, so that by reason of the existence of the entry on the register

could not lawfully do that which, but for the existence of the mark upon the register, he could lawfully do, it appears to me he has a locus standi to be

heard as a person aggrieved.

In the case on hand, it is seen that the registered proprietor i.e. the first Respondent has claimed user since 1995 as well as the applicant also

claims to have used since 1995. It is also to be noticed that though the applicant claim user since 1995 not a single document filed in support of the

same. If at all seen from the documents, it is to be taken that the applicant has started using the trade mark only since 2000 and not earlier to that.

Here the only grievance is the marks are identical, in such case if a person has adopted the mark after the registered proprietor's trade mark was first

used, that person cannot be said to be a person aggrieved. Therefore, we are of the opinion that the applicant is not a person aggrieved and has no

locus standi to file and maintain this application for registration.

The other ground of rectification was that the marks are identical and that the registration is in contravention of the provisions of Section 11 of the

Act. There is no doubt, when the marks are identical possibility of confusion and deception is certain. In the instant case the burden lies on the

applicant to prove that there has been confusion or deception. That apart, the first Respondent only being the prior user can complain of similarity and

confusion and deception and not the applicant. The issue that the mark registered is hit by the provisions of Section 11(3) of the Act is also rejected. In

a passing off action, priority prevails over the registered user is the settled principle of law. Here again we find that the first Respondent has claimed

use since 1995 whereas on records placed before us, the applicants are from the year 2000 subsequent to that of the first Respondent. Though the

first Respondent has not appeared before us, we are to consider the date of user as 1995 only. In an application for rectification the onus is on the

applicant to prove his case. Here it is seen that the applicant has not produced any document to prove his case prior to the year 2000. We also

observe that the certificate of registration under No. 13184995 relied on by the applicant has been filed in the year 2004 claiming user since 10.5.2002.

The objection

The applicants have not produced even a single document, say bills, vouchers, advertisements etc., to prove their user since 1995 except for sales

figures and advertisement expenditure. The applicant though stated to have spent huge amounts towards promotional expenses by advertisements, we

do not find any voucher for the same nor any advertisement. The only advertisement proof filed for the year 2006 which is again after the first

Respondent's use.

The other ground is that the registration ought not to have granted registration for an identical mark. On perusal of the applicant's documents it is

seen that the applicants have made the application in the year 2000 only whereas the first Respondent have applied in the year 1999, so obviously we

think the applicant's mark could not have been cited as a conflicting mark at that time.

The allegation that the first Respondent's claim of use since 1.1.1997 is false and baseless. We do not find any such date in the application for

registration. In fact, on perusal of the trade marks journal, it is seen that the first Respondent claims to have used the mark since 31.3.1995. As

already observed, the applicant though have claimed to have used the trade mark since 1995, no documentary evidence produced before us to

substantiate their claim of use. Therefore, the objection under Section 18 of the Act also does not sustain.

Marks which are calculated to deceive are not registrable and if registered is considered to be wrongly remaining on the register. Here it is for the

applicant to prove that if the mark is allowed to continue on the register would lead to confusion and deception. The applicant has not proved the same

and the claim that the mark is wrongly remaining on the register is rejected.

In view of the above reasons, we do not think it necessary to cancel the trade mark AACHI registered under No. 886993 in class 30 from the

register of trade marks. Accordingly, the rectification applications are dismissed with no order as to costs.