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Judgment
S. Usha, J
This is an application for rectification of the trade mark No. 578607 in class 25 of the trade mark PONNIS. The applicant and the respondent were
carrying on business in textile and garments since the year 1965. Their father Mr. E.S. Marimuthu Nadar in the year 1965 started business in the
name and style of M/s. E.S. Marimuthu Nadar & Sons. In 1980, the sons of Mr. E.S. Marimuthu Nadar joined together with him as partners. The firm
was using the trade mark PONNIS for selling variety of textile garments including nighties, bra, panties, petticoats and blouses.
Apart from this firm, there were two independent business entities namely M/s. Shanthi Textiles - sole proprietor Mr. E.S.M. Guruswamy, the 1st
respondent herein and M/s. E.S.M. Tex - partner Mr. E.S.M. Erulappan, the applicant herein.
Mr. E.S. Marimuthu Nadar, who had great respect for the family deity by name 'Pon Erulappasamy' and also the affection he had for his eldest
daughter by name Ponni, had conceived and adopted the trade mark Ponni. The respondent suppressed the fact that trade mark Ponni was the
property of the joint family business, approached the Registrar and obtained registration.
The proprietorship concern M/s. Shanthi Textiles and M/s. E.S.M. Tex were started for the purpose of extension of business and compliance with
the various revenue laws. M/s. E.S.M. Tex was using the mark PONNIS with the device of paddy crop at least since the year 1995. The respondent
was aware of the applicant's use. The respondent had also given the consent in writing to the applicant for using the trade mark Ponni. After having
consent in writing, the respondent filed a civil suit before the District Court Virudhunagar and obtained an ex parte injunction order dated 29/11/2008
which subsequently was vacated. The applicants became aware of the impugned registration from the pleadings in the civil suit.
The joint family business was registered under the Tamil Nadu General Sales Tax Act and Central Sales Tax Act and is also assessed to
Commercial Sales Tax.
On the death of Mr. E.S. Marimuthu Nadar on 10/01/2002, the appellant and the respondent continued to be the partners of M/s. E.S. Marimuthu
Nadar & Sons. On 31/03/2006, by executing a fresh partnership deed, the name of the firm M/s. E.S. Marimuthu Nadar & Sons was changed to M/s.
E.S.M. Textiles. On 21/11/2006, the firm M/s. E.S.M. Textiles underwent a change in constitution, whereby the applicant's wife was inducted as a
partner. The 1st respondent retired from the firm by deed of retirement dated 25/11/2006 in view of certain disputes. It was stated that the retiring
partner will not use the trade mark of the firm. At the time of retirement, the respondent had consented for the applicants use of the trade mark Ponni
and the device of paddy crop.
The sales figures of the textiles goods sold under the trade mark Ponni by the applicant under the firm name M/s. E.S.M. Tex was Rs. 42,74,662 in
the year 1999-2000 which increased to Rs. 5,19,97,667 in the year 2007-2008.
The applicant is a person aggrieved within the meaning of section 57 of the Act. The trade mark Ponni was adopted by the applicant's father from
the family deity's name 'Pon Erulappasamy' and from his elder daughter's name Ponni. The trade mark Ponni is a joint family property and the
respondent cannot claim to have an individual right in the mark. The respondent had filed a civil suit for infringement and passing off against the
applicant before the District Court, Virudhunagar.
The registration obtained is erroneous and unsustainable. The respondent has obtained registration by fraud and in bad faith. The impugned mark
has been registered without sufficient cause. The registration is in contravention of the provisions of the Act.
The 1st respondent filed their counter statement stating that the applicant and the respondent along with their father were carrying on business in
textiles. It was subsequently converted into a partnership firm. During the course of business, the respondent had started a separate business under
the name Shanthi Textiles in the year 1986. It was solely carried on by the respondent, the applicant herein Mr. E.S. Marimuthu Nadar had no role in
the said business.
The respondent honestly conceived and adopted the trade mark Ponnis on 19/12/1986. They had been openly, continuously and extensively using
the trade mark without any interruption. They were registered as a small scale industry in the year 1988. In order to protect their trade mark, they
applied for and obtained registration on 05/08/1992 claiming user since 19/12/1986. The respondent had given oral permission to the applicant and Mr.
E.S. Marimuthu Nadar to use the trade mark Ponnis. They were using the trade mark Ponnis during the period 1999 & 2000 and subsequently stopped
using the trade mark. Thereafter, the partnership firm was reconstituted and on 25/11/2006, the respondent retired from the firm. The respondent
came to know that after his retirement, the applicant along with his wife were carrying on the business using the trade mark Ponnis. Therefore, the
respondent initiated the suit against the applicant. The applicant as a counterblast has filed this rectification application. The applicant was aware of
the respondent's use of the trade mark Ponnis since 1986 or at least since 1992 and not 2008 as claimed in the application for rectification.
The applicant started the business under the name M/s. E.S.M. Tex only in the year 1997. They have not used the trade mark Ponnis. It is further
denied that the trade mark Ponnis is a joint family business property. It is also denied that the applicant was given a letter by the respondent to use the
trade mark. In fact the letter is a forged one. If such consent was given, then the respondent would not have filed a civil suit against the applicant.
This only proves the malafide intention of the applicant.
We heard learned counsel Mr. Arun C. Mohan for the applicant and learned counsel Mr. Shelton D. Durairaj for 1st respondent.
The learned counsel for the applicant reiterated the facts of the case. Interim Injunction was granted and subsequently vacated in the suit. The
trade mark Ponnis is a family business property and the respondent cannot claim separate right over the trade mark. The counsel relied on the Exhibit
at page 223 of the application and submitted that they were carrying on business together (letter written to the Bank Manager stating that they are
carrying on business --E.S. Marimuthu Nadar & Sons, E.S.M. Tex and Shanthi Textiles and that the loan will be paid by them). The counsel then
referred to the Chartered Accountants Certificate to show their sales turnover.
At page 23 of the counter statement, in the bills, it was the applicant's signature and this proves that it was a joint family property.
The counsel relied on
(1) AIR 1973 SC 2572 (V 60 C 461) - Sohan Lal & Others Vs. Amin Chand & Sons & Others - Partnership Firm - Dissolution of Firm - Trade Mark
forming part of assets - Right to exclusive use of the trade mark not allowed.
(2) 2000 PTC 335 - Bagla & Co. Vs. Bagla Cosmetics - Use of family name as part of a trade name. Members of the same family using the name -
Interim Injunction cannot be granted.
In reply, the counsel for the respondent submitted that neither the applicants nor the family used the trade mark. It was the respondents who
conceived and adopted the trade mark Ponnis and had been using the same under the business name M/s. Shanthi Textiles. The first invoice is dated
25/12/1986. There is no merits in the application and ought to be dismissed.
We have heard the arguments of both the counsel and have carefully considered and have gone through the documents and pleadings.
The application for rectification can be maintained only by a person aggrieved as per the provisions of the Act. In this case on hand, the applicants
plea is that the marks are identical and also that a suit was filed against them. They are aggrieved. There is no doubt that the plaintiff or the defendant
is a person aggrieved and can maintain an application for rectification. The applicant and the respondent are brothers. Both are aware of each others
trade and business. The applicants have not disputed the respondent's use of the trade mark since 1986. The applicants though claim user since 1995
in the application for rectification, have claimed user since 01/01/1997 in their application for registration. Except for one or two bills from the painter,
there is nothing produced by the applicant to prove their use as they claim it to be a family business property. The applicant cannot be said to be
aggrieved by the mark on the register and therefore the applicant has no locus standi to file this application.
In an application for rectification, the burden is always on the applicant to satisfy as to how and why the marks deserves to be rectified. The
applicants are not clear as to the date of user. They claim to have used the mark since 1995 in their application for rectification for which there is no
evidence. In their application for registration of the trade mark filed on 16/02/2009, they claim user since 01/01/1997 for which again there is no
evidence. Their other contention is that they were carrying on a joint family business and the trade mark Ponnis belonged to the joint family business.
There is no evidence for the same. We have perused the partnership deed and the retirement deed. There is no mention of the trade mark. In our
considered view, the applicants have adopted the trade mark only with the idea of making undue profit at the cost of the respondent's reputation. A
suit has therefore been filed and this application is only a counterblast to the civil suit. The application for rectification is therefore dismissed for the
reasons stated above with a costs of Rs. 10,000/-. Consequently, the Miscellaneous Petition No. 58/2012 is closed.