Afrox Ltd. And Tradechan Ltd. vs Asugar Engineering Services And The Assistant Registrar Of Trade Marks

Raghbir Singh, J

Appeal No. 9/98 filed in the High Court of Gujarat at Ahmedabad has been transferred to this Board in terms of section 100 of the Trade Marks

Act, 1999 and numbered as TA/Rectt/274/2004/TM/AMD.

First respondent herein filed an application under sections 46 and 56 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the

Act) before the Registrar of Trade Marks at Ahmedabad for rectification of the Register in relation to trade mark No. 414061 registered in the name

of second appellant.

The grounds for rectification taken are that the registration was taken by presenting facts which were wrong and false; that the trademark had not

been used at all in relation to the goods for which it was registered; that there was no bonafide intention on the part of the proprietor to use the mark in

relation to the goods for which it was registered; that the period of more than five years and one month had lapsed since registration was taken and

the mark had not been continuously used; that the registration of the mark was without sufficient cause and it was contrary to the provisions of law;

that the entry of the registration of the trade mark was wrongly remaining on the Register. An alternative plea was taken that if it was held that the

goods for which the first respondent is using the mark 'AZUCAR 80' viz., welding electrodes (electric) and welding apparatus (electric) are same or

goods of same description as the goods for which second appellant holds registration, then, he was the proprietor of the mark 'AZUCAR 80' in respect

of welding electrodes and welding apparatus (electric)and had been using that mark since 1987 regularly and thus the use of the mark by the appellant

was likely to deceive and cause confusion and the registration of the mark was taken against the provisions of section 11 of the Act and that the

registration of the mark comes under the mischief of section 32 of the Act. Second appellant did not file its counter statement. The first respondent

accordingly filed their evidence by way of an affidavit dated 28.12.1991 of Smt. Maya Sampat Gujar along with certain other affidavits. The second

appellant did not file its evidence in support of registration. First respondent filed their written arguments in the Trade Marks Registry on 31.7.1992

and served a copy thereof on the second appellant. Second appellant did not file any written arguments in support of their registration.

The matter was heard by the Assistant Registrar of Trade Marks on 8.10.1992. Counsel for the first respondent was present and nobody appeared

from the side of the second appellant. However, the Assistant Registrar remanded the file to the Head Office of the Registry at Mumbai for verifying

whether renewal of the said mark was done after its expiry on 6.12.1990.

Second appellant filed an interlocutory petition on 10.8.1993 praying that as on the date of application a period of more than five years had not

elapsed and hence the application for rectification is premature and as such no cognizance of such an application should be taken . The first

respondent filed their reply to the interlocutory petition. However, no effective hearing in this regard could taken place. Second appellant filed an

affidavit dated 19.1.1994 of one Shri A.K. Chowdhry. A copy of the said affidavit was served upon the first respondent. The second appellant filed

another interlocutory petition on 24.1.1994 for taking on record its counter statement and affidavit of Shri A.K. Chowdhry as evidence. In its counter

statement it argued that it had honestly adopted the trade mark 'AZUCAR 80' and applied for registration thereof as 'proposed to be used' and the

same has been registered as TM No. 414061 in class 6. The mark has been renewed and it has a bonafide intention to use the mark. The copies of

the aforesaid interlocutory petition and counter statement were neither served by the second appellant or by the Trade Marks Registry upon the first

respondent. Thus the first respondent did not file their reply. The matter which had already been heard by the Assistant Registrar on 8.10.1992 and

had not been finally disposed of had to be heard again by the successor in the office of the Assistant Registrar on 17.10.1996. It appears from the

order of the Assistant Registrar that there had been repeated requests for adjournment on the part of the second appellant and finally he decided to

hear the matter on 17.10.1996 when again the learned counsel for the first respondent was present and none appeared from the side of the second

appellant. The Assistant Registrar at the outset took up for consideration the three interlocutory petitions filed by the second appellant. Learned

Assistant Registrar dismissed the first interlocutory petition dated 10.8.1993 wherein it had been submitted that the application for rectification is

premature because the period of five years having not lapsed on the date of the filing of the rectification application as from the date of registration of

the mark. In matter of the second interlocutory petition dated 24.1.1994 the learned Assistant Registrar decided to take on record the affidavit of Shri

A.K. Chowdhry and the counter statement filed by the second appellant. In relation to the third interlocutory petition dated 15.10.1996 wherein a

request had been made to take on record the affidavit of Dr. Gerd Uwe Bottin, the Assistant Registrar decided against the second appellant for the

reasons stated by him in the said order. Having disposed of the three interlocutory petitions, the Assistant Registrar took up the examination of the

main matter of rectification under issue. He held that the first respondent is an aggrieved person for the purposes of rectification application. In matter

of rectification under section 46(1)(a) and (b) of the Act, the Assistant Registrar held against the second appellant.

In the appeal filed in the High Court of Gujarat at Ahmedabad the appellants have submitted that the first appellant is the manufacturer of the

world-renowned metal rods for use with welding apparatus, used for surface treatment of sugar mill rollers. These metal rods for use with welding

apparatus, also commonly but incorrectly called as welding electrodes, is sold all over the world under the trade mark 'AZUCAR 80'. The first

appellant holds the registration thereto in many countries of the world in class 6. In view of the circumstances prevailing at that time the first appellant

could not directly do business in India and hence the second appellant a British company over which the first appellant had control, applied for

registration of the mark 'AZUCAR 80' under the Act. The registration was granted under No. 414061 in class 6 as on 6.12.1983 in favour of the

second appellant. The second appellant had been supplying 'AZUCAR 80' to dealers in India through its authorized representatives M/s Spectro

Alloys Ltd., at least from 1983. With the liberalization of the economic policies it became possible for the first appellant to trade directly in India and

therefore the trade mark 'AZUCAR 80' together with the business in India came to be assigned to the first appellant. The assignment was duly

ordered on 15.1.1998 by the Trade Marks Registry, Mumbai and has been published in the Trade Marks Journal No. 1173 dated 16.4.1998 on page

Mr. S.M. Gujjar was a senior executive of Spectro Alloys Limited and had been closely associated with the import into India of 'AZUCAR 80'

from the second appellant and its sale for a number of years. Mr. Gujjar resigned from Spectro Alloys Limited with effect from 20.12.1987 and

became associated with the work of his wife, the proprietrix of the firm A sugar Engineering Services, the first respondent herein. The rectification

application filed by the first respondent remained pending over a long period and due to non availability of the Trade Marks Registry File the matter

was heard again. In view of the change of the registered proprietorship of the trade mark, an interlocutory petition dated 15.10.1996 was filed with a

view to taking on record an affidavit from Dr. Gerd Uwe Bottin which had become necessary in view of the assignment of the trade mark in favour

of the first appellant. The Assistant Registrar heard the matter on 17.10.1996 in the absence of any representative of either of the appellants. The

appellants did not receive any notice of hearing fixed for 17.10.1996. Even the review petitions filed by the second appellant were not properly heard

by the Assistant Registrar and was rejected.

The grounds taken in the instant appeal are that the Assistant Registrar did not afford the proper opportunity of representing the case to the

appellants. Adjournments were sought and were not allowed, thus violating the principles of natural justice. The Assistant Registrar contradicts himself

in his order . At some places he writes that the first appellant is the proprietor of the trade mark in question and in the order he concludes that the first

appellant cannot be treated as the proprietor since the assignment has not been recorded. The Assistant Registrar has violated the requirements under

Rule 95 and 53 to 60 of the Trade and Merchandise Marks Rules, 1959. The Assistant Registrar failed to appreciate the judgment of the Division

Bench of the High Court of Madras in OSA 290 and 291 in respect of same parties in respect of same trade marks 'AZUCAR 80'. The conclusions

of the Assistant Registrar that the said judgment are not related to this matter and has no effect, is patently erroneous.

The matter was heard in the sitting of the Board held at Ahmedabad on 22.12.2004. Shri N.A.K. Sarma assisted by Shri Daniel appeared for the

appellants and Shri N.S. Kane appeared for the first respondent.

Learned Assistant Registrar chose the following four areas for passing his orders :-

a) Whether the appellants are aggrieved persons?

b) Whether the impugned registration should be rectified under section 46(1)(a) of the Act?

c) Whether the impugned registration should be rectified under section 46(1)(b) of the Act? and

d) Whether the impugned registration should be cancelled under section 56 read with section 11 of the Act?

But ultimately he restricted his findings to issues at (a) (b) and (c) and appears to have abandoned issue at (d)

Before going into the details of the matter, it shall be useful to mention a few of the relevant dates here. The second appellant applied for registration

of 'AZUCAR 80' under application No. 414061 in class 6 on 6.12.1983. The registration certificate was issued in favour of second appellant on

31.8.1989. Thus for all relevant purposes the date of registration of the mark is 6.12.1983 and the date when the mark actually entered into the

Register is 31.8.89. First respondent had filed the application for rectification on 30.1.1991. These are the dates which will have an effect upon making

a decision in the matter.

Learned Assistant Registrar found that first respondent is an aggrieved person since the second appellant had served a notice upon the first

respondent calling upon him to stop selling / distributing products under the trade mark 'AZUCAR 80' alleging that the first respondent is infringing the

second appellant's trade mark 'AZUCAR 80' bearing registration No. 414061. The law relating to concept of an aggrieved person is well settled and

we find no difficulty in accepting that the first respondent is an aggrieved person in this case. Learned Assistant Registrar has in matter of section

46(1)(a) of the Act decided against the appellants. Section 46(1)(a) envisages that where a trade mark was registered without any bonafide intention

on the part of the applicant for registration that it should be used in relation to those goods by him and there has, in fact, been no bonafide use of the

trade mark in relation to those goods by any proprietor thereof for the time being upto a date one month before the date of the application, the

registered trade mark may be taken off the Register. First respondent has filed elaborate volume of evidence which in itself goes to prove the user of

the mark by the appellants. Learned counsel for the appellants drew our attention to numerous instances in the invoices filed by the first respondent

which go to prove that all along first respondent had been trading in the products of the appellants and she had no manufactured products of her own.

He took us to para 2 of the statement of the case filed by the first respondent at page 16 of the typeset wherein she claims to have adopted the mark

'AZUCAR 80' for her welding electrodes (electric) and welding apparatus (electric)manufactured by her. Again the same thing has been repeated at

page 21 in para 2 in the affidavit in support of the rectification application wherein it has been stated that she adopted the mark 'AZUCAR 80' on

17.11.1987 for the welding electrodes, welding apparatus and welding apparatus (electric) claiming to be her manufacture. However, the invoices

produced by her reveal a different story. The purchase order dated 17.9.1988 from Tulsipur Sugar Company Limited placed at page 74 of the typeset

is with a view to place an order of 'AZUCAR 80' (4mm) welding electrodes manufactured by M/s Tradechan Ltd, U.K. (sole manufacturers of

'AZUCAR 80' worldwide). This is a purchase order from the said sugar company addressed to A sugar Engineering Services, Pune. Another invoice

dated 10.12.1987 placed at page 34 of the typeset is towards supply of 'AZUCAR 80' 4mm electrodes to be supplied to Cawnpore Sugar Mills Ltd.

Similar is the position with the invoices from the first respondent to various other parties placed at pages 36,37 and 38 of the typeset wherein the

description of the goods are mentioned as 'AZUCAR 80' 4mm electrodes. There is an invoice at page 56 dated 25.2.1991 in favour of Andhra Sugars

Ltd., wherein simply the word 'AZUCAR 80'...4mm has been mentioned. So is the position with various other similar invoices placed at pages 66 and

There is a copy of letter dated 17/18-12-1987 from the Malwa Sahakari Shakkar Karkhana Ltd., placed at page 68 wherein specifically the sugar

mill has asked for the supply of 'AZUCAR 80' 4mm, imported electrodes. At page 131 of the typeset submitted by the first respondent is a letter dated

11.1.1982 from J.P. Mukherji & Associates Private Limited to Spectro Alloys P. Ltd. acknowledging receipt of their letter dated 30.12.1981 in relation

to the supply of 'AZUCAR 80' against rupee payment in the next off-season. More important is a letter dated 21.9.1987 placed at page 132 from Shri

S.M. Gujar, husband of the proprietrix of first respondent. It indicates his earlier connections with Spectro Alloys Limited, the company which was

appointed as agents by the appellants for supply of 'AZUCAR 80' in India. The last straw on the camel's back is a letter at page 133 dated 8th June

1988 written by the first respondent firm to The Chodavaram Co-op. Sugars Ltd., introducing themselves to be the exclusive and authorized

representatives of M/s Tradechan Ltd., London for their 'AZUCAR 80' welding electrodes. These are the documents filed by first respondent in

evidence.

Learned counsel for appellants drew our attention to many of the contradictions in the order of the Assistant Registrar wherein at one instance he

refused to take on record the affidavit of Dr. Gerd Uwe Bottin, but ultimately when writing his order he has put reliance upon the submissions made

by him. It is true that the judgment of the Hon'ble High Court of Judicature at Madras is in relation to a passing-off matter between the same parties.

But the conclusions arrived at by that Court in matter of the facts involved cannot be contradicted and in the instant matter whether it be in relation to

examination of the rectification proceedings under section 46(1)(a) or section 46(1) (b), the issue before us is that whether there had been a bonafide

use to get the trade mark registered and actually had there been any use after the registration or not. The said Court having arrived at the conclusion

that the appellants are actually in use of the mark is sufficient to hold us to controvert the plea of the first respondent that the mark be struck off the

Register under section 46(1) (a) of the Act.

In matter of examination under section 46(1) (b), we are in a position to throw away the rectification ordered by the Assistant Registrar at

threshold. The mark was actually put on the Register on 31.8.1989 even though the deeming date of registration is taken as 6.12.1983 and the

rectification application was filed on 30.1.1991. Thus the statutorily prescribed period of five years and one month as reckoned from 31.8.1989 had not

been completed before the filing of the rectification proceedings. Even if by any stretch of imagination the statutorily prescribed period of five years

and one month is reckoned from the deeming date of registration, that is, 6.12.1983, still there is enough as discussed earlier through the invoices and

purchase orders and the various other commercial transactions and by own submission of the first respondent through trade letters addressed by her to

the parties introducing her as the exclusive agent of M/s Tradechan Ltd., London for their 'AZUCAR 80' welding electrodes to indicate that the

appellants trade mark had been very well in use in India. These documents have not been controverted by the learned counsel for the first respondent.

This is enough to estop the first respondent to challenge it in any of the rectification proceedings under the Act. Since the learned Assistant Registrar

has chosen not to examine the matter under section 56 of the Act, we have nothing to determine in that aspect. Since the order of the learned

Assistant Registrar, on merits, is restricted to section 46(1)(a) & (b), we have not taken up the other issues discussed in his order which are not

germane to the basis of his order which is simply restricted to section 46 of the Act. Similarly, in order relating to review petition passed by the

Assistant Registrar, the focus is on the issues which are extraneous to the core of the basis of the order as referred to above. So we find nothing in

the order of review to comment upon.

In view of the above, we are of the opinion that there is no merit in the petition of first respondent praying for rectification of the Register. Thus

we allow the appeal and accordingly reject the rectification application of the first respondent with no order as to costs.