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Judgment
V. Ravi, Technical Member
In these proceedings the applicant M/s Sunshine Textiles Mills, Andhra Pradesh are seeking cancellation of the registered trade mark 1312052 in
Class 24 of the respondent M/s ADEPU RAMAIAH NARAYANA & CO from the register of trade mark The trade mark in question is ""ADEPU"".
The case of the applicant is that ""ADEPU"" is the family name initially jointly owned by both the applicant and the respondent as a family business
under the name and style of ""ADEPU RAMAIAH NARAYAN COMPANY The joint family business was started with the trade name ADEPU in
1986. The respondent is the brother of the applicant. The respondent's father was the kartha of the HUF using the trade name ""ADEPU"". A family
dispute took place which resulted in a partition and by dissolution deed dated 30.03.2005 all the immovable assets of the family stood partitioned. The
applicant was allotted the business of M/s. Jayalaxmi Associates, Hyderabad. In addition, it is alleged that the joint family business was also orally
partitioned which was confirmed by the joint declaration by way of affidavit dated 11.04.2005.
Subsequent to the family partition, the applicant made an application to the Trade Mark Registry, Chennai for registration of two trade marks
namely 1) ADEPU under No. 1509126 and the other a composite label mark under No. 1509197 both previously owned by the joint family.
3 . In the meanwhile, the respondent filed a Civil Suit in the District Court of Karimnagar in O.S. No. 2007 seeking a permanent injunction to restrain
the applicant from using the trade mark ""ADEPU"". The respondent had applied for the trade mark ""ADEPU"" under No. 1312052 and had obtained
registration of the said mark.
4 . It is the case of the applicant that the respondent had falsely claimed exclusive right to the trade mark ""ADEPU"" since 1986 in their application
made to the Trade Mark Registry. Further, the respondent without the knowledge of their father and the joint family obtained the trade mark
registration for ""ADEPU 222"" along with the photograph of the grandfather and the common brand name of the device label used by the joint family.
After obtaining the fraudulent registration, the respondent raised a dispute and was successful in partitioning the joint family property and the business.
It is brought to the notice of the Board that at the time of filing the trade mark application by the respondent, the joint family entity was still in
existence. This is confirmed by the affidavit of the father dated 28.03.2007 in O.S. 4 of 2007 before the 3rd Additional District Judge of Karim Nagar,
Andhra Pradesh confirming that both the applicant and the respondent are permitted to use the trade mark. The applicant further stated that the
impugned registration was obtained in contravention of Section 14 of the Trade Marks Act, 1999 which provides that prior consent in writing is
necessary in respect of a trade mark which falsely suggests a connection with a living person or person recently dead (""20 years"") to adopt the same
for use as a trade mark. Thus, the respondent had surreptitiously obtained the registration of the trade mark in his own name behind the back of his
father and has played a fraud on the trade marks registry. In the circumstances, the registered trade mark 135052 should be expunged from the
register.
The evidence in support of the application for rectification includes a copy of the registration certificate under No. 1312052; a copy of the partition
deed made on 30. 03.2005, the joint declaration by way of affidavit executed on 11th March, 2005; a Copy of additional representation for registration
of trade mark under No. 1509127 and No. 1509126 both dated 30th November, 2006 etc.
The case of the respondent is briefly as follows. A partnership firm was started in 1986 under the name and style of ""ADEPU RAMAIAH
NARAYAN CO."". In 1993, thi was converted into sole proprietary concern without any change in the trade name. The respondent has adopted and
used three trade marks ""ADEPU"", ""ADEPU 222 "" (Label) and ""ADEPU 555"" (Label). In respect of the label marks, the main feature is the word
ADEPU"" with the photograph of the grandfather at the top of the label ""ADEPU RAMAIAH NARAYAN"" depicted in oval shape with artistic
design, togethe with numerals 222 or 555 below the photograph with the expression ""Adepu Fabrics"" which is used underneath the device of a wheel
and other descriptive matters. The said trade mark was adopted in 1986 to distinguish the respondent's goods from those of the other manufacturers.
After the joint family partnership firm was dissolved, the respondent secured sales tax licenses and have been manufacturing and marketing the goods
under the trade name ""ADEPU RAMAIAH NARAYA COMPANY"".
7 . In order to safeguard respondent's right to the trade mark, he has sought registration for the same claiming user from 1986 and the said registration
is valid and subsisting. When it came to the knowledge of the respondent that the applicants were clandestinely supplying the goods bearing the
impugned trade mark label, the respondent filed a suit in the Court of District Judge at Karim Nagar for infringement and passing off and obtained an
interim injunction restraining the applicant from infringing the respondents exclusive statutory right to the said registered trade mark and passing off.
The respondent further states that the impugned application is not maintainable in as much as the applicant is not a ""person aggrieved"". The respondent
denies the joint family business stood orally partitioned at any point of time. Further, the applicant started using the trade mark ADEPU only in 2005
under the name and style of M/s. Jayalaxmi Associates and therefore he cannot claim to be the prior user of the trade mark ""ADEPU"". Crucially, the
applicants were silent for more than a decade and allowed the respondent to use the mark without any hindrance. The respondent further raised the
question whether the applicant himself had sought the consent of all the legal heirs when he applied for registration of the trade mark label under
application No. 1312052 which consists of the photograph of the grand father SHRI. RAMAIAH. Just because the respondent is the brother of the
applicant it does not mean that he is free to claim the right to trade mark ADEPU. In fact the respondent is sole proprietor of the said mark to the
knowledge of the applicant for over a decade. Considering the distinctive character of the mark and use of the same by the respondent for almost two
decades, objections raised under Section 9, 11 & 18 of the Trade Mark Act are not tenable.
8 . The list of documents filed by the respondent in support of their case include certified copy of registered trade mark 1315052 for the trade mark
ADEPU 222 Vat licence, APGST registration certificate, CST regd. Certificate, sales tax assessment orders from 1993 to 2005, sales figures certified
by Chartered Accountant, Sales bills from 1995 to 2006, letter of CTO, Karimnagar, Joint declaration, family settlement deed, Caution Notice issued in
Eenadu newspaper, plaint in O.S. 4/2007 filed in the Court of 3rd Additional District Judge, Karimnagar and its counter etc.
9 . We have heard the counsel for both sides. Before dwelling on the merits of this petition, it is useful to bear in mind that where the ownership of a
trade mark is disputed, it causes significant disruption for both sides. Adjudicating authorities should make every effort to stop malicious trade mark
squatting independent of litigation rules. The purpose is to prevent unfair competition in trade mark ownership affirmation, protect the interest of
consumers as also the relevant public and maintain a fair and competitive platform.
Against this backdrop, what does the record of this case show? It is the case of the applicant that the impugned trade mark was a joint family
property till 2005. To counter this the respondent states that the partnership was converted into a sole proprietary concern in 1993. What documentary
proof has been relied to support this claim? The respondent had secured sales tax licence on 4th May, 1993 under no. ADB/05/03/1895. In our view
this is not a clear cut proof. There is substance in the applicants assertion that the joint family business subsisted till march, 2005 as the respondent
was a party to the family partition. A scrutiny of the partition deed show that out of six firms carried on by the HUF, in fact five firms were allotted to
the respondent namely (1) Adepu Ramaiah Narayana & Co. (2) Shri Rama Weaving and Dyeing Works (3) Maruthi Textiles (4) Vishnu Textiles and
(5) Sai Textiles all located at Sircilla. The business of M/s Jay Laxmi Associates was allotted to the applicant located at Hyderabad. However, the
Partnership Deed is silent on the issue of goodwill and trademark stated to be jointly used by all prior to partition. The specimen copies of invoices
furnished by the respondent is quite confusing. For instance at page 112 of document furnished by respondent, the trade name in the invoice is
depicted as 'ADEP RAMAIAH NARAYANA & Co.' dated 02.11.2005. Similarly some bill bear the trade mark 'ADEP' and in some the trade name
is shown as 'ADEP RAMAIAH NARAYANA & CO.' Some bills contain the photo of the grand father an father of the respondent and many other
do not. We are unable to arrive at any meaningful conclusion on the issue of ownership of the trade mark based on the materials before us particularly
the various invoices. It is therefore, necessary to rely on the Partition Deed which is part of the record to draw suitable inference.
On the issue of 'Person Aggrieved', the settled law is any person whose legal rights are in some way adversely affected and having standing to
prosecute for an appellate remedy to qualify the test under Section 57(2) of the Act. In this case, the applicant have been injuncted from using a
disputed trade mark by an appropriate Court. Being aggrieved by what the applicants perceive as an unjust order, the have petitioned the Board
seeking to expunge the registered trade mark No. 1312052 which purportedly is based on false claim of ownership of the trade mark that strikes at the
root of the registration. We, therefore, hold that the applicants are indeed 'Person Aggrieved' within the meaning of section 57(2).
We now examine the substantial grounds on which the registered trademark No. 1312052 of the respondent is sought to be cancelled by the
applicant. The first of these is the claim of false claim to the 'exclusive use' to the registered trade mark by the respondent. In O.S. No. 4 of 2007 the
respondent have made a claim that they have applied and secured registration for two composite label mark ADEPU 222 and ADEPU 555 claiming
user from ""1986"". At other places in the said O.S. No. 4, the respondent claim the use of the trade mark as a sole proprietor since 1993. If this is true,
then the respondent had made a false representation to the Trade Mark Registry concerning use of the impugned mark which is a misrepresentation.
The use of a trade mark in relation to goods or services is designed to protect against unfair competition. In other words, the owner of a trade mark
has to assert and demonstrate that he is using his mark, in the normal course of trade, to claim proprietorship of the mark in relation to the goods for
which he seeks registration. In this instant case, since the claim of proprietorship of the mark itself is disputed by the applicant and the family partition
took place only in 2005, the respondent have clearly usurped the trade mark in 1993 without the consent of the karta and during the currency of the
HUF. The right of property in a trade mark when protected by statute gives the right to restrain other persons from using the mark. The statutory
protection has been secured in this case by asserting a false claim of use of the mark since 1986. That position at once stigmatizes the exclusive right
claim to the trade mark against all comers and this has been rightly questioned by the applicant who have equal stake in the disputed trade mark in
their capacity as part of HUF. It is only on the strength of registration that the respondent have obtained an injunction to restrain the applicant from
using the said mark. We, therefore, uphold the claim of the applicant that the respondent cannot claim to be the proprietor of the mark within the
meaning of section 18(1) as it stands in the register.
The next issue agitated by the applicant is that registration of the impugned mark was secured in contravention of section 14 of the Act which
reads as follows:-
Use of names and representations of living persons o persons recently dead.-Where an application is made for the registration of a trade mark which
falsely suggests a connection with any living person, or a person whose death took place within twenty years prior to the date of application for
registration of the trade mark, the Registrar may, before he proceeds with the application, require the applicant to furnish him with the consent in
writings of such living person or, as the case may be, of the legal representative of the deceased person to the connection appearing on the trade
mark, and may refuse to proceed with the application unless the applicant furnishes the registrar with such consent.
Ex facie the records of the case speaks for itself. The father files an affidavit in 2007 in the Civil Court stating both the applicant and respondent
can use the impugned trade mark. The respondent in this case has improperly secured registration behind the back of both the applicant and the father
who was the Karta of HUF until 2005 and the owner of the trade mark. Clearly the provisions of section 14 of the Act is being violated by the
respondent both in letter and spirit. To apply for registration of a mark, an applicant has to invoke section 18(1) claiming to be the proprietor of the
mark. On the date of filing that was not the case with respect to respondent's application. The registered mark of the respondent is therefore, hit by
both sections 14 and 18(1) of the Act. A case of willful and dishonest misappropriation of the trade mark has been made out by the applicant. Once
registered, the respondent avowedly stands to benefit from the 'exclusive right' to the registered trade mark. The registration as it stands will result in
wrongful loss to the applicant. In the circumstance we cannot allow the beneficial interest in the trade mark to continue to be vested in the registered
proprietor. We accordingly uphold the objection raised under Section 14 of the Act. The application for rectification is consequently allowed and the
registered trade mark No. 1312052 is ordered to be removed from the register with costs of Rs. 5000/-. The Registrar is directed to cancel/remove
the impugned mark ""ADEPU"" registered under No. 1312052 in Class 24.