Ganesh Grains Limited vs Mahabir Prasad Daruka And Ors.

Sanjeev Kumar Chaswal, Technical Member

The applicant has filed the Rectification application for removal of Trademark "GANESH (LABEL)" registered under No. 1122598 in class 30 under section 47/57/125 of the Trade Marks Act, 1999. The Applicant are well known manufacturer and exporter of, inter-alia, atta, maida, all the wheat products, suji, besan, coffee, tea, cocoa, sugar, rice, pulses, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces and spices and various other edible products falling in different classes under the International Classification of Goods and Services [NICE Classification] (hereinafter referred to as the said goods.)

Case of the Applicant:-

The mark GANESH was originally adopted by the Applicant in or about the year 1936 and since then the same has been extensively, continuously and uninterruptedly used in course of trade in respect of the said goods. By virtue of such extensive, long and continuous use, the mark GANESH has become distinctive of the goods of the Applicant and is exclusively associated with none else other than the Applicant. The Applicant mark GANESH has become a Applicant trade mark within the meaning of 2(1)(zg) of the Trade Marks Act, 1999.

While conducting routine search the Applicant came across the impugned registration which was obtained by the Respondent No. 1 fraudulently and declaring false date of user. It is pertinent to mention herein that the Applicant made a complaint before the Court of Learned Additional Chief Judicial Magistrate at Asansol (M.P. No. 248/02) against Mr. Mahabir Prasad Daruka for infringing upon the registered trademark "GANESH" of the Applicant and has also filed a First Information Report on 06/09/2003. The Respondent submitted his letter dated 19/01/2004 to Raniganj Chamber of Commerce gave an undertaking to the effect that he would never use the mark "GANESH" in the future.

The applicant is an aggrieved person and has local standi in this case, as observed by various Courts that whenever the registration of a particular trademark operates in restraint of what would otherwise have been his legal rights. Whatever benefit is gained by registration must entail a corresponding disadvantage upon a trader who might possibly have had occasion to use the mark in the course of his business. The Applicant is; therefore, a person aggrieved within the meaning of Section 57 of the Trade Marks Act 1999 and has the locus standi to file the instant application for rectification.

The impugned mark has been wrongly registered as same is a copy of the earlier Applicant registered trade mark of the Applicant which cannot be the exclusive property of the Respondent no. 1. The label under the impugned application consists of the mark GFM GANESH which is structurally, visually, phonetically and conceptually similar to both earlier Applicant registered trademarks GANESH and GFM being Applicant trademarks, public and trade associate the marks with the Applicant along and none else. The purchaser public associate the same with the Applicant solely.

It is submitted that on coming across the impugned mark in respect of same goods and/or goods of same description, public and trade will be in a state of wonderment as to whether the goods of Respondent no. 1 under the impugned mark have emanated from the Applicant or have been manufactured and/or marketed by the Applicant or have been manufactured and/or marketed by the Applicant or whether the Respondent no. 1 are in some way associated with the Applicant. Any adverse publicity, which might be generated from the poor quality of the goods of the Respondent no. 1 is bound to spoil the impeccable reputation, which the Applicant have painstakingly created in the trademark GANESH and GFM. As such the use of the impugned mark by the Respondent no. 1 would cause confusion and deception and, therefore, its registration is prohibited under Section 9(2) (a) of the Act, 1999.

The adoption of the impugned mark is much subsequent to the adoption and use of the marks GANESH and GFM by the Applicant. Thus, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association of the impugned mark with the mark of the Applicant and the same, therefore, is hit upon by the provisions of Section 11(1) of the Act.

The after the year 2004 the Respondent no. 1 has never used the impugned mark as claimed in the impugned application. Therefore, it is apparent on the fact of record that the Respondent no. 1 has neither used the impugned mark nor has any bonafide intention to use the same and as such the same is liable to be removed from the register under Section 47(1) of the Trade Marks Act 1999. Furthermore, the Respondent no. 1 has already given undertaking that he would never use the mark GANESH.

The impugned mark has wrongly remained in the Register without just and sufficient cause and if permitted to remain is likely to adversely affect the public interest and would lead to hardship, prejudice and embarrassment to the Applicant. is contrary to various sections of the said Act and as such it should be removed from the Register in the interest of the public and to maintain the purity of the Register. Hence the said registered mark should be removed from the Register in public interest and to prevent the members of the public and the trade from being deceived.

The respondents have failed to controvert the averments made by applicant in its Rectification application, therefore the averments made in the Rectification Petition goes un-rebutted. The registration of the trademark "GANESH (LABEL)" granted to the respondent is contrary to the provisions of Section 11 (1)(a), 11(1) (b), 11(2)(a) and (b), 11(3), 11(10) and various other relevant provisions of the Trademarks Act, 1999.

As per registry record the respondent did not file any counter statement, written submissions or pleadings nor did documents to justify the adoption and usage of the mark after obtaining registration of the same. Factually, the respondent had failed to plead his case or file its counter with regard to their usage of impugned registered trademark after obtaining its registration, wherein this at this stage the registered proprietor cannot wriggle out of his own undertaking submitted on 19th January 2004, to the President/Hony. Secretary, Raniganj Chamber of Commerce, Raniganj that he would not be using the brand name "GANESH" on any of their packaged wheat products ever in future and requested the President/Hony. Secretary, Raniganj Chamber of Commerce, Raniganj to resolve the dispute.

The applicant counsel has referred the citations to buttress his pleadings and arguments in the matter, the applicant relies upon in support his submissions the applicant counsel has further referred the citations in the instant matter;

In Allergan Inc. And Anr. v. Intas Pharmaceuticals 2013 (53) PTC 36 (Del)) the object of the Trade Marks Act is to protect the proprietary rights of a registered trademark holder, at the same time the object is not to facilitate any monopoly of such registered trade mark holder, despite non-use of the trade mark by him as contemplated by the Act. A trade mark has no meaning, even if it is registered, unless it is used in relation to goods and/or services. A Trademark which drops out of the use dies when there are no goods offered for sale as there is no use of the trade mark. The mark can lose its distinctiveness by non-use, where non-use is on the part of registered trade mark holder.

In the other case as held in Ciba Limited v. M. Ramalingam & S. Subramaniam, reported in AIR 1958 BOM 56, the consideration both Section 46 and Section 10, it has got to be remembered that the primary duty of the Court is towards the public and maintenance of the Purity of the Register. When a case is sought to be made that a particular trade mark is likely to deceive or cause confusion, the contest is not so much between the parties to the litigation as it is a contest between the party defending his right to a particular trade mark and public, and the duty of the Court must always be to protect the public irrespective of what hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive of cause confusion.

In other case of in Rati Traders v. K.P. Pouches Pvt. Ltd. 2004 (25) PTC 254 (MP) it was observed that in between two parties claiming actual user as against the prior user, the party who is prior in point of time will have the advantage over the other. Even in regard to the prior registration of the trademark, as against prior user, the action of the later will prevail.

In other case of Biochem Pharmaceutical Industries v. Pharma Synth Formulations Limited 2000 PTC 361:- in support of the proposition that the person who actually uses the same in the course of his business has a preferential right and it entitled to seek legal remedy of passing off action against the one who adopts identical mark later on.

It is a well settled principle of Trademark Law that Prior use of the goods will override the subsequent user, even though subsequent user has a registered trademark. Thus, the right conferred by registration of trademark is subject to the rights of the prior user of the mark. The Supreme Court in the case of S. Syed Mohideen v. P. Sulochana 2016 (2) SCC 683 : 2016 (66) PTC 1 [SC] had held that the scheme of the Act is such where rights of the prior user are recognised superior than that of the registration and even the registered proprietor cannon disturbs interfere with the rights of the prior user.

The applicant counsel has referred the another citation to buttress his pleadings and arguments in the matter of M/s. Shell Transource Limited v. Shell International Petroleum Company Ltd., 2012 SCC IPAB 29: [2012] Hon'ble Intellectual Property Appellate Board 25 Para 14. We have considered the rival submissions and the materials before us. There is no disagreement with the position that he who pleads nonuser must prove it. But when the applicant has pleaded non-user, the respondent must specifically deny it stating the facts on which he denies non-user. In the absence of specific denial we can only hold that the allegations stands admitted.

Keeping in view of the peculiar facts and circumstances, in our opinion the applicant is a person aggrieved as the applicant is being using of similar name may cause loss and injury to the applicant. The said impugned registered trademark registered in favour of respondent that may cause confusion and deception in relation to the business of the applicant and further the respondent had rendered an undertaking to not to use the impugned mark "GANESH " in question.

After going through the documents submitted by the applicant, in our considered opinion the applicant is certainly, is a prior user of the Trademark 'GANESH and GFM' and holding registration in various and all registrations are still valid and subsisting. As the applicant is a manufacturer and exporter and the same has been extensively, continuously and uninterruptedly used in course of trade in respect of the said goods as such the mark GANESH has become distinctive of the goods of the Applicant.

The respondent has obtained the impugned registration with a view to en-cash the goodwill and reputation of the trademark GANESH and GFM accrued in favour of applicant. As such the respondent is not the honest proprietor of the trademark "GANESH (LABEL)" within the meaning of Section 18(1) of the Trade Mark Act. Thus, the trade mark "GANESH (LABEL)" of the respondent is liable to be removed from the Register as the respondent is not the prior adopter "GANESH (LABEL)" Even the claim of the applicant of the prior user has not been contested by the respondent, who has failed to file counter statement or any evidence.

We are fully further agree with the legal propositions referred by the applicant in support of the above case, in the case of Ciba Limited v. M. Ramalingam & S. Subramaniam, (supra) the duty of the Court must always be to protect the public irrespective of what hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive of cause confusion. In another case of Rati Traders v. K.P. Pouches Pvt. Ltd., (supra) it was observed that in between two parties claiming actual user as against the prior user, the party who is prior in point of time will have the advantage over the other. In another case of S. Syed Mohideen v. P. Sulochana., (supra) It was had held that the scheme of the Act is such where rights of the prior user are recognised superior than that of the registration and even the registered proprietor cannon disturb interfere with the rights of the prior user.

In our considered view, the respondent no. 1 has failed to rebut allegations thus in our view it is to be deem to be admitted against the respondent in favour of the applicant herein. Furthermore, the Respondent no. 1 has already given undertaking that he would never use the mark "GANESH (LABEL)" as such the respondent has failed to establish the use of the impugned trademark from date of three months before the date of the application, a continuous period of five years from the date on which the trade mark is entered in the register such period there was no bona fide use in relation to those goods by its owner.

Keeping in view of the extensive submissions made herein above by the counsel for the applicant along with supporting judgments, we are of the considered opinion that the registration of the impugned trademark "GANESH (LABEL)" in is granted contrary to the provisions of Sections 9, 11, 47 & 57 under the Trade Marks Act, 1999 and Rules thereto, as such the present original rectification application deserves to be allowed thereby directing the Registrar of Trademarks to rectify the trademark "GANESH (LABEL)" registered under No. 1122598 in class 30 from the Trademark Register in order to maintain the purity of the Trademark Register.

In view of the above submissions we allow the application and direct the Trademark registry to remove the mark "GANESH (LABEL)" registered under No. 1122598 in class 30 for the interests of equity and natural justice. The copy of the order is sent to the Registrar of Trademarks in order initiate necessary steps for removal of the trademark having registered trade mark "GANESH (LABEL)" registered under No. 1122598 in class 30 within 15 days of the receipt of this order. The Copy of the order be sent to the respondent No. 2 for taking the necessary steps in accordance with law.

Order as no cost.