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Judgment
K.N. Basha, J
The applicant preferred this application seeking for the relief of removal of the trade mark under sections 19, 47, 57 and 125 of the Trade Marks
Act, 1999 (hereinafter referred as the Act) in respect of the impugned trade mark No. 1146955 in class 24 in the name of M/s. Mehta Fabrics, 344/2,
Somwar Peth, Madhavnagar-416406 (Dist. Sangli). The case of the applicant is that they are doing business in the name and style as M/s. Anand D/B
Mills having office at 4/110, New Cloth Market, Ichalkaranji-416115 (Dist. Kolhapur). The applicants are the prior user and original adopters of the
trade mark SEN GUPTA registered under No. 1144323 in class 24 in respect of Dhoties and Textile piece goods. They are using the trade mark from
1985. They have registered the said trade mark as per registration No. 1144323 in class 24 dated 18/10/2002 produced as Annexure to Exhibit 'A'.
They came to know about the impugned mark SENGUPTA of 1st respondent through advertisement in the Trade Mark Caution Notice regarding
registration of the impugned trade mark as per Registration No. 1146955 published in the New Paper ""Dainik Mahasatta"" dated 09/10/2007, which
they have produced as Annexure to Exhibit 'B'.
Thereafter, the applicants preferred an application dated 15/11/2007 before the Registrar of Trade Marks namely the 2nd respondent under RTI
Act, 2005, seeking details as to whom the impugned trade mark SEN GUPTA in the name of the 1st respondent was accepted. The 2nd respondent
sent a reply on 30/11/2007 which was produced as Annexure in Exhibit 'D'. It is stated in the said letter that the goods were not properly published in
the Trade Marks Journal No. 1346 dated 16/04/2006 and accordingly corrigenda was issued for the goods as per Form TM-1 of the applicant which
was published in the Trade Marks Journal No. 1381 dated 01/12/2007.
The main grounds taken by the applicant is that the impugned trade mark was obtained by the 1st respondent by playing fraud and misleading the
Registrar i.e. the 2nd respondent. The registrar has not verified the existence of a similar trade mark of the applicant in the register of Trade Marks.
The 2nd respondent has committed mistake by giving advertisement without even specifying the nature of goods and has given the second
advertisement realizing the mistake. When the applicant have made an attempt to oppose the impugned trade mark of the 1st respondent, the same
was refused to be accepted by the 2nd respondent.
The 1st respondents are not the honest adopters of the impugned trade mark and the impugned trade mark is imitation of the applicant's registered
trade mark SEN GUPTA.
The applicants have been engaged in the business of manufacturing and marketing of Dhoties by using the trade mark from the year 1985 and on
the other hand, the 1st respondent had only proposed to use the impugned trade mark. Therefore, the entry relating to the said registered trade mark
wrongly remains in the register.
When the matter is taken up for hearing today, the perusal of records reveals that this Board passed an order dated 13/02/2013 specifically stating
that the respondent neither appeared in person nor was represented through any counsel. Therefore, the Registry was directed to issue notice to both
the parties regarding future date of hearing. The Registry sent a notice in respect of date of hearing etc to the respondent as well as to their counsel
on record. But even today none of them appeared before the Board. As a result, we are left with no other alternative except to proceed to hear the
matter from the learned counsel for the applicant.
Mr. Ramchanda R. Mandhane, learned counsel for the applicant would reiterate the grounds raised in the application and strongly contented that
they are the prior user of the trade mark SEN GUPTA as they were using it from 1985. It is pointed out that the applicant registered the said trade
mark as per certificate annexed at Exhibit 'A' namely the Trade Mark No. 1144323 dated 18/10/2002. It is contended that the impugned trade mark
was applied for registration only on 29/10/2002 and it is specifically stated in the Annexure to Exhibit 'E' that it was ""proposed to be used"". Therefore,
it is contended that it is very clear that the applicants are the prior user of the trade mark SEN GUPTA and they got it registered earlier to that of the
1st respondent.
The learned counsel for the applicant would further contend that before accepting the registration of the trade mark, the Registrar i.e. the 2nd
respondent has not searched the register of trade mark to find out whether any similar trade mark was already registered or not. As such, the
impugned trade mark wrongly remains in the register.
We have given our careful consideration to the contentions put forwarded by the learned counsel for the applicant and perused entire material
available on records.
At the outset, it is to be stated that the perusal of entire available materials on record, more particularly annexed Exhibits 'A' to 'E' namely
Certificate of Registration of the applicant and the Application for Registration of the impugned trade mark by the 1st respondent makes it crystal
clear that the applicants are the prior user of the trade mark SEN GUPTA right from the year 1985, engaged in the textile goods and on the other
hand, the 1st respondent specifically stated in their application as ""proposed to use"" the said trade mark. It is relevant to note that the applicant's trade
mark and the 1st respondents trade mark are similar and identical. Both are the same name, SEN GUPTA and as such, there is no doubt that the
customers would be definitely misled by the trade mark of the 1st respondent.
Yet another important factor in this matter is that the 1st respondent has not complied with Rule 24(3) of the Trade Marks Rules, 2002 hereinafter
referred to as Rules. The said provision under the Rules is given hereunder:-
Request to Registrar for search.--(3) Any person may request the Registrar, in Form TM-60 to cause a search to be made and for issue of
certificate under sub-section (1) of section 45 of the Copyright Act, 1957 (14 of 1957) to the effect that no trade mark identical with or deceptively
similar to such artistic work, as sought to be registered as copyright under the Copyright Act, 1957 (14 of 1957) has been registered as a trade mark
under the Trade Marks Act, 1999 (47 of 1999) in the name of, or that no application has been made under that Act for such re-registration by any
person other than the applicant. The certificate shall ordinarily be issued within thirty working days of the date of request:
Provided, however, the Registrar may call for a statement of requirements from the applicant and if the requirements are not complied within two
months from the date of such calling of the statement, the request in Form TM-60 may be treated as abandoned.
Reading of the above said provision makes it very clear that the 1st respondent ought to have preferred an application in TM-54 to cause a search
to be made out to find out whether the mark is deceptively similar or identical to any other trade mark as per the trade mark register. At this juncture,
it is also relevant to point out that the 2nd respondent, namely the Registrar of Trade Marks is also required to cause a search to be made amongst the
registered trade marks in order to find out whether any identical or deceptively similar trade mark was registered in the register of Trade Marks. Rule
37 reads here under:-
Acknowledgement and Search.-- (1) Every application for the registration of a trade mark in respect of any goods or services shall on receipt, be
acknowledged by the Registrar. The acknowledgement shall be by way of return of one of the additional representations of the trade mark filed by the
applicant along with his application, with the official number of the application duly entered thereon.
(2) Upon receipt of the application for registration of trade mark, the Registrar shall cause a search to be made amongst the registered trade marks
and amongst the pending applications for the purpose of ascertaining whether there are on record in respect of the same goods or services or similar
goods or services any mark identical with or deceptively similar to the mark sought to be registered and the Registrar may cause the search to be
renewed at any time before the acceptance of the application but shall not be bound to do so.
Reading of the above said provision makes it clear that it is mandatory on the part of the Registrar to make a search to find our whether any identical
or deceptively similar trade mark was registered as per register of trade marks, on receipt of such application seeking for relief of registration of the
trade mark by any party. As far as the instant case is concerned, the undisputed fact remains that neither the 1st respondent made any application as
per provision under section 24(3) to make search nor the 2nd respondent, namely the Registrar of Trade Marks complied with the mandatory provision
under Rule 37. Therefore, we have no hesitation to hold that the impugned trade mark is liable to be removed from the register of the 2nd respondent
herein. We have also already pointed out about the prior use of the applicant is trade mark SEN GUPTA and it is admitted case of the 1st respondent
that they had only propose to use the impugned trade mark. In view of the foregoing, the rectification application is allowed. No order as to costs.