Dharampal Premchand Limited vs Rupa Zarda Factory

S. Jagadeesan, J

The petitioner filed this petition under Section 56 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act), seeking

cancellation of the registered trade mark No. 496423 in class 34 of the respondent herein. Originally, the petition was filed in the High Court of Delhi

at New Delhi in CO No. 1/1994 and the same stood transferred to this Appellate Board and numbered as TRA/145/2004/TM/DEL.

The petitioner is seeking the cancellation of the registered trade mark of the respondent stating that the petitioner has been engaged in the business

and manufacture and selling various varieties of tobacco since 1929. In the year 1958, the petitioner adopted the trade mark BABA in relation to

chewing tobacco and non tobacco products such as Pan masala, perfume, etc. and the said trade mark has been used both in India as well as foreign

countries by the petitioner for over three decades. The mark of the petitioner has a substantial international reputation due to the long tenure of

extensive use. Further, the said mark is exclusively associated with the goods of the petitioner company. The petitioner has registered the mark

BABA in U.K. as on 5.12.1988, in USA as on 12.6.1990 and in Canada as on 10.2.1989. In India also, it had been registered in various classes. The

petitioner came to know that the respondent had adopted the mark RISHIBABA for chewing tobacco/zafrani patti. The use of the mark BABA with

any prefix or suffix is bound to cause confusion or deception among the purchasers of chewing tobacco. Immediately on coming to know of the

adoption of the said mark RISHIBABA by the respondent, the petitioner filed a suit for permanent injunction and the High Court of Delhi granted an

order of injunction on 16.7.1991 restraining the respondent from marketing and selling chewing tobacco or zafrani patti using the mark BABA. In the

meanwhile, the respondent, clandestinely applied for the registration of the impugned mark and the same was advertised in the Trade Marks Journal

dated 16.12.1990. The petitioner filed the notice of opposition. However, by oversight, the time for filing the notice of opposition had expired and

consequently, the same was deemed to have been abandoned. On 12.2.1993, when the suit was listed for hearing, the petitioner came to know about

the registration of the impugned mark in favour of the respondent. Since, the impugned mark was registered wrongly and is wrongly remaining on the

Register the same is liable to be cancelled. The petitioner also raised the plea that the impugned mark is visually and phonetically similar to the

petitioner's mark and as such, the respondent wants to take advantage of the reputation and goodwill enjoyed by the petitioner. The impugned mark is

liable to be cancelled as the registration of the same is in violation of Sections 11(a) and 11(e) of the said Act. When the respondent was restrained

by way of injunction in suit No. 2010/1991 on the file of the High Court of Delhi from using the impugned trade mark, the registration has been

obtained by the respondent by concealing the fact of injunction. The respondent is not a lawful proprietor of the impugned mark and s such, the

registration is in violation of Section 18(1) of the Act. The adoption of the impugned mark by the respondent is only with malafide intention. This

application for rectification has been filed immediately on coming to know about the registration of the impugned mark.

The first respondent filed a reply stating that the petitioner did not state in the petition that he is an aggrieved person to invoke Section 56 of the

Act. In the absence of any such averment, the petition is liable to be dismissed in limine. The petitioner having failed to oppose the registration of the

impugned mark, it is not open to them to file this petition for rectification as it will amount to latches on the part of the petitioner. The petitioner having

knowledge about the process of registration, it is not open to them to plead the knowledge of registration on the basis of the evidence produced by the

respondent in the suit. The respondent also denied the averments of the petitioner with regard to the use of their mark since 1958. The registration in

foreign countries of the petitioner's mark has nothing to do with this petition since the burden is on the petitioner to establish that the petitioner is the

owner of the mark and the impugned mark is similar to that of their mark. In the absence of any evidence and material regarding proprietorship and

use of the petitioner, the petition is liable to be dismissed. Moreover, the impugned mark RISHIBABA cannot be said to be identical with the mark of

the petitioner BABA. The marks are distinguishable both phonetically as well as visually. The prefix of the word RISHI makes the marks

distinguishable and any purchaser may be able to identify the goods. Hence, there is absolutely no merit in the petition.

The petitioner filed a rejoinder to the reply of the respondent reiterating the grounds stated in the petition and also denied certain averments made in

the reply.

We have heard the arguments of Shri M.S. Bharath on behalf of M/s. Anand and Anand for the appellant and Shri Ashish Prasad on behalf of

M/s. Lall & Sethi for the respondent.

The learned counsel for the petitioner contended that the petitioner has registered the mark BABA brand in India as follows and using the same

since 1958.

The respondent applied for registration of the impugned mark only on 5.12.1985, claiming the user since 1.9.1985 in respect of tobacco. Definitely, the

respondent's mark could not have attained any distinctiveness within the short spell of three months. The respondent obviously adopted the word

BABA with the prefix RISHI to maliciously take advantage of the reputation of the petitioner. In the absence of any explanation on the part of the

respondent to select the word BABA and use the same along with the prefix RISHI is enough to draw an inference adverse to the respondent.

Moreover, the goods of both the parties being of same description, definitely, there will be confusion in the trade and also among the purchasers.

He also relied upon the judgment of the Calcutta High Court in A.F.O.O. No. 369/1975 wherein it was held that the words LAL BABA KESHRI

ZARDA is similar to the trade mark BABA BRAND. He also relied upon the judgment of the Supreme Court in Civil Appeal No. 5307-11/93 -

Hardie Trading Ltd. and Anr. Vs. Addisons Paint and Chemicals Ltd., for the proposition that the petitioner is an aggrieved person. He also relied

upon the judgment reported in 1985 PTC 33 Hindustan Pencils Pvt. Ltd. Vs. Prem Chand Gupta, trading as Universal Trading Company - for the

proposition that failure to oppose at the stage of registration is no ground to refuse the application for rectification. The learned counsel further

contended when there is no bonafide in the conduct of the respondent in adopting the trade mark of the petitioner as part of their mark, the

rectification has to be allowed as the impugned mark of the respondent is wrongly registered, especially in contravention of Sections 11(a) and 12(1)

of the said Act.

Though the learned counsel for the respondent did not argue the matter on the date when the learned counsel for the petitioner argued, he has

submitted a written argument contending that the averments in the petition do not have any application of Section 56(1) of the Act. Further, the

impugned mark RISHIBABA, under no imagination can be said to be similar either phonetically or visually to that of the petitioner. Both the marks

are clearly distinguishable and as such, there cannot be any confusion or deception in the trade. The petitioner's use is also denied and the respondent

is using the mark since 1985 about which the petitioner has full knowledge. The filing of the suit by the petitioner for infringement is also belated and

consequently the registration of the impugned mark is not in violation of any of the provisions of the said Act. Consequently, the petition is liable to be

dismissed.

We have considered the contentions of both the counsel.

So far as the contention of the learned counsel for the respondent that in the absence of any averment in the petition that the petitioner is an

aggrieved person, the petition is not maintainable is concerned, we have to consider whether a specific plea that the petitioner is aggrieved is

necessary or such a plea can be inferred from the averments in the petition and if the averments in the petition establish that the petitioner is an

aggrieved person, the petition can be disposed of on merits?

The petitioner has clearly stated in the petition that he is the registered proprietor of the mark BABA and using the same in respect of chewing

tobacco and non tobacco products. He came to know that the respondent is using the impugned mark RISHIBABA which is almost similar to that of

the petitioner's mark and as such, the respondent had infringed with the registered mark of the petitioner. When the respondent had indulged in using

the impugned mark by which the petitioner's right as the proprietor of the similar mark is offended, then the petitioner cannot be said to be a person

not aggrieved. When the rights of the petitioner as the registered proprietor of the mark is being interfered with by the respondent under the impugned

trade mark, in our opinion, the petitioner is an aggrieved person and the absence of a specific averment in the petition with regard to the

aggrievedness of the petitioner in no way vitiates the petition. We are fortified in our view by the judgment of the Supreme Court in Civil Appeal No.

5307-11/93 - Hardie Trading Ltd. and Anr. Vs. Addisons Paint and Chemicals Ltd., reported in 2003 (27) PTC 241 (SC) in paragraphs 31 and 32 at

page 249 which is as under:

In our opinion, the phrase ""person aggrieved"" for the purposes of removal on the ground of non-use under section 46 has a different connotation

from the phrase used in section 56 for cancelling or expunging or varying an entry wrongly made or remaining in the register.

In the latter case the locus standi would be ascertained liberally, since it would not be against the interest of other persons carrying on the same

trade out also in the interest of the public to have such wrongful entry removed. It was in this sense that the House of Lords defined ""person

aggrieved"" in the matter of Powell's Trade Mark, 1894 (11) RPC 4:

...although they were no doubt inserted to prevent officious interference by those who had no interest at all in the Register being correct and to

exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public mischief that

there should remain upon the Register a Mark which ought not to be there, and by which many persons may be affected, who, nevertheless, would

not be willing to enter upon the risk and expense of litigation.

Wherever it can be shown, as here, that the Applicant is in the same trade as the person who has registered the Trade Mark, 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 he 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."".

So far as the respondent's contention that the petition is not maintainable on the ground of estoppel as the petitioner has failed to oppose the

respondent's impugned trade mark, even though had knowledge of the registration proceedings is concerned, it would suffice to refer to the judgment

of the Delhi High Court in the case of Hindustan Pencils Pvt. Ltd. Vs. Premchand Gupta trading as Universal Trading Company reported in 1985

PTC 33 where the learned judge in paragraph 21 at page 46 held as under:

......... The only question is whether the failure of the petitioner to effectively prosecute his opposition at the earlier stage should preclude him from

seeking the remedy of rectification at a later stage, particularly when the respondent seeks to challenge its rights to use the trade mark in question by

way of a suit. The petitioner's right to move for rectification stems from the language of Sections 46 and 56 and no restriction can be read into these

provisions so as to prevent a person from applying for rectification because he had a chance to oppose the application for registration and had availed

of the same. A person, like the petitioner, who is a rival trader and is being sued by the respondent for infringement of their trade mark, is certainly a

'person aggrieved' by its existence within the meaning of these sections. These words have a very wide meaning and should not be narrowly

interpreted....."".

From the above principles, it is clear that the petitioner is an aggrieved person and as such, the contention of the learned counsel for the

respondent cannot be sustained. This being the petition for rectification, the burden lies on the petitioner to establish his case that the respondent's

mark is wrongly entered and remaining on the Register.

In the petition, the petitioner has stated that they are the registered proprietors of the mark BABA claiming the user since 1968. They also

claimed the registration under 9 marks varying as of 26.12.1963 to 26.11.1984. The prefix or suffix of any name with the registered mark of the

petitioner will cause confusion in the trade in respect of the goods of same description. When the marks are identical, the same cannot be registered

as it would cause confusion and the prohibition under Section 11(a) of the Act is attracted. The respondent's mark being similar to that of the

registered mark of the petitioner, ought not to have been registered and the registration is in violation of Section 11(a) of the said Act.

Section 11(a) of the Act prohibits registration of a mark, the use of which would be likely to deceive or cause confusion. We have to see whether

the respondent's mark is similar to that of the petitioner's mark. The petitioner's mark is BABA BRAND. In some of the marks along with the name,

the device of a monk is also combined. But, the main name of the brand or the registered mark of the petitioner is BABA. The respondent adopted

the impugned mark RISHIBABA. No doubt, the petitioner's mark forms part of the respondent's mark with the prefix RISHI. How far this prefixed

word RISHI distinguishes the mark of the respondent from the mark of the petitioner which is all along been in use since 1968? The documents

produced by the petitioner establish their use of the mark BABA from the year 1976. Whereas, the respondent applied for the registration of the mark

in December, 1985 claiming the user from 1.9.1985.

At the outset, we are of the view that from the date of the use 1.9.1985 till the date of the application 5.12.1985, hardly three months, the

respondent's mark could not have attained any distinctiveness. The respondent also did not produce any sale statistics. The petitioner has produced a

number of bills and Invoices, as already stated, establishes the use of the mark at least from 1976 and there has been continuous use of the same. So,

definitely the petitioner's mark BABA has acquired distinctiveness and also reputation in respect of chewing tobacco, etc. for at least more than a

decade. When the respondent adopted the impugned mark having the petitioner's mark as part of the same, definitely, he might have adopted the

same to have the benefit of the reputation built up by the petitioner. Further, in the absence of any explanation on the part of the respondent as to why

he has chosen to have the word BABA, the registered mark of the petitioner as a suffix to his trade name RISHIBABA, we have to necessarily

conclude that the conduct of the respondent in adopting the petitioner's registered mark is only with the intention to make an unlawful gain on the

reputation and goodwill built up by the petitioner with their trade mark. In such circumstances, definitely, the registration of the impugned mark would

violate Section 9 of the Act.

Coming to the similarity, the petitioner's registered mark being BABA and the respondent's registered mark RISHIBABA, as already held that the

conduct of the respondent being not a bonafide one in adopting the same, definitely the marks are not clearly distinguishable. The respondent has also

failed to explain as to the need for their adoption of the mark BABA as part of their mark. We may also refer to the judgment of this Board in the

case of V.S. Dhanasekar and Ors. Vs. K. Lokaiyan and Ors. - 2004 (28) PTC 445, wherein this Board has held that the 'Elephant brand' is similar to

the 'Elephant head brand' as there is not much of dis-similarity. Similarly, in the case of Times Incorporated Vs. Lokesh Srivastava and Anr.

2005(30)PTC 3 (Del), the Delhi High Court has held that TIME ASIA and TIME ASIA SANSKARAN are identical. The Bombay High Court also

held in the case of Glaxo Group Ltd. and Anr. Vs. Neon Laboratories Ltd. 2004(29) PTC 88 that the marks Tocillin is similar to that of the mark

'CILLIN'. If the principles laid down in the above cases are taken as guidelines, we have no option except to conclude that the impugned mark of the

respondent is identical to that of the petitioner's mark, especially, considering the fact that both are in respect of the goods of same description and as

such, the registration of the respondent's mark is in violation of Section 11(a) of the Act. Consequently, we have to further hold that the impugned

mark of the respondent has been registered wrongly and the same cannot be allowed to continue in the Register of Trade Marks as the wrong action

cannot be continued.

Accordingly, the application T.R.A. is allowed and the respondent's trade mark RISHIBABA is directed to be removed from the Register of

Trade Marks. However, there will be no order as to costs.