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Judgment
Z.S. Negi, J
1 . The applicant has filed this application for the removal of Trade Mark No. 1350531, registered in the names of Neelesh H. Doshi Hasmukh H.
Doshi, Rakesh H. Doshi, trading as Paras Electronics, from the register of trade marks or rectification of the register under Sections 47/ 57/ 125 of the
Trade Marks Act, 1999 (hereinafter referred to as the Act).
2 . The applicant and its predecessors in business are stated to be engaged in the business of manufacturing and marketing coaxial cables including
connectors, digital satellite, electrical and electronic accessories since the year 1997. It is claimed that the applicant, a private limited company
incorporated in the year 1995 under the Companies Act, 1956 and its predecessors are the prior users, prior adopters and registered proprietors of the
trade mark HARMONY which is registered under No. 1290536 as of 17.6.2004 in class 9 in respect of the above mentioned goods. They have been
using trade marks consisting of and/or containing the word HARMONY since the year 1997 and the word HARMONY is the main and essential
feature of applicant's corporate name. The applicant claim to be continuously using the trade mark since 1997 and owing to long, continuous and
extensive use of the mark and strategic sale promotion, it has generated reputation and goodwill and thus the registered proprietors are the rightful
owners of the said trade mark in respect of coaxial cables.
3 . The applicant has sought the removal of the mark from the register on the grounds, inter alia, that the registered proprietor/respondent No. 1 has
obtained the registration of trade mark under a wrong classification of goods; that the registration of trade mark HARMONY is in contravention of
Sections 9 and 11 of the Act; that the registration was obtained by making false claim of honest adoption and proprietorship by the respondent No. 1
and the same is in contravention of Section 18 of the Act; that the registration was obtained by fraud and misguiding the Registrar of Trade Marks and
that the entry relating to the impugned mark was made without sufficient cause and is wrongly and without cause remaining on the register.
The applicant claiming to be the person aggrieved has sought the removal of the impugned trade mark from the register or rectification of the register
under Section 47/ 57 of the Act.
4 . The respondent No. 1, a sole proprietorship firm (which was a partnership firm earlier) filed the counter-statement denying the material averments
made in the application and stating that the firm made an application No. 1350531 for registration of trade mark HARMONY along with logo on
12.4.2004 in respect of coaxial cable in class 6 claiming user since 1.4.2001. It is claimed that no fraud has been committed by the them and it is not
their fault if the Registrar has registered their application in class 6 as the Registry is the final authority under Section 7 of the Act in deciding the class
and that they should not be made to suffer after five years of filing the application and granting registration by the Registrar of Trade Marks. It is
further claimed that the applicant and the respondent No. 1 were functioning more or less as sister concerns- both were aware of the activities of
each other and two of the partners of the respondent No. 1 were also directors of the applicant. The applicants were fully aware of the use and
adoption of the mark by the respondent No. 1 and in fact joint advertisements were made in their respective names in March, 1998. The applicant filed
application for registration of the trade mark after its directors Mr. Neelesh H. Doshi and Rakesh H. Doshi resigned from the directorship in April,
2004, by making false statement that they have been using the mark since 31.12.1997, whereas they have in fact started using the for the first time in
2003-2004 only.
It is claimed that the respondent No. 1 is the proprietor of the trade mark by virtue of prior use and adoption and the applicant is fully aware of this
fact and thus the applicant has obtained the registration of trade mark through fraud by claiming user since 31.12.1997. The respondent No. 1 claims
that its prior use of trade mark should be protected as provided by Section 34 of the Act. It is further claimed that in the applicant's notice of motion
No. 2497 of 2006 in suit No. 2039 of 2006, the High Court of Bombay refused to grant interim injunction against the respondent No. 1 on the ground
of not adducing evidence in support of reputation and use of trade mark and also that both the parties were registered proprietors, the applicant has
filed the present rectification application to circumvent their difficulty in not being able to file the evidence of reputation or use in that suit. The
respondent has requested that this Appellate Board may see through the applicant's game and refuse its application for rectification. A submission is
made in the counter-statement that this Appellate Board may direct respondent No. 1 to correct the error by amending the classification from class 6
to class 9.
An affidavit by Shri Deepak Sewhani, Director of applicant, was filed on 9.5.2007 as evidence in support of rectification. Thereafter, Shri M.P.
Mirchandani, Trade Mark & Patent Attorney, vide letters dated 11.3.2008 and 7.6.2008 requested the Registry of the Appellate Board to appoint the
matter for final hearing at the earliest as the applicants and the respondents have filed their respective reply and evidences. The matter came up for
hearing before us at Circuit Bench sitting at Mumbai on 4.2.2009 when Shri M.P. Mirchandani, Advocate appeared on behalf of the applicant and Shri
Hiral Chandrakant Joshi, Patents &Trade Marks Attorney (photo copy of the General Power of Attorney dated 28.9.2006, in favour of Shri H.C.
Joshi, forwarded to the Registry vide letter dated 20.1.2009 but the same has not been taken on record as the same was for the purpose for all
proceedings before the Registrar of Trade Marks, Mumbai) filed Form 5 seeking adjournment on the ground that the proprietor of the subject trade
mark has expired and his wife who has taken over the proprietorship is presently unable to attend office and other proceedings of trade mark. The
respondent has neither furnished any proof to suggest that the wife of deceased has taken over the proprietorship firm nor deputed any representative
to confirm or contradict the position. However, on questioning the learned Counsel for the applicant, he submitted that the widow is not looking after
but the brother is looking after the work. Having regard to the prima facie error in the classification of goods, we have decided to hear the learned
Counsel for the applicant and decide the matter by taking into consideration the pleadings of the respondent No. 1.
Shri Mirchandani, learned Counsel for the applicant, submitted that applicant has been using the mark since 1997 and has obtained registration of
the mark and subsequent registration of trade mark obtained by the respondent No. 1 for similar goods affects the legal rights of the applicant. The
High Court of Bombay refused to grant interim injunction against the respondent No. 1 on one of grounds that both the parties are registered
proprietors of the trade mark and also taking cognizance of continuing the trade mark of respondent No. 1 on the register. As such, the Hon'ble Judge
was misled by the false and fraudulent registration of the trade mark in favour of the respondent No. 1. The applicant is, therefore, the person
aggrieved to institute the present rectification application.
Learned Counsel for the applicant submitted that the impugned trade mark of the respondent No. 1 is obtained under the wrong classification of the
goods. By filing a copy of the Nice Classification - 8th Edition Part II, and also by taking us through a copy of letter No. T.M.R. 08 dated 21.08.2006
from the Registrar of Trade Marks, Mumbai confirming that the 'CO-AXAIL' cables will be falling under class 9 which are for the electric purpose,
the learned Counsel submitted that on this ground alone the impugned registration is liable to be removed from the register as the entry thereof is made
without any sufficient cause and wrongly remaining on the register; the entry depicting wrong classification is against the purity of register. He
submitted that the respondent No. 1 has in the counter-statement admitted that the application for registration was made in class 6 as it was not aware
of the distinction of classification that the cables of metal non-electric falls under class 6 and cable of metal electric fall under class 9. The learned
Counsel relying upon the judgment of Division Bench of High Court of Delhi in Gopal Krishan v. Mex Switchgear (P) Ltd. and Anr.: 1993 (13) PTC 1
(Del) (DB) submitted that in such cases the amendment or rectification of class by the respondent No. 1 cannot be allowed. Learned Counsel
stressed that the applicant could not file opposition as the advertisement made in the Trade Marks Journal was under class 6 not under class 9 and the
same escaped attention of the applicant. The respondent No. 1 has deliberately applied under class 6 with the purpose to confuse the Trade Marks
Registry as the respondent No. 1 knew that applicant's identical mark for similar goods was in use and in that eventuality the Registrar was bound to
refuse registration if it sought registration under class 9.
Learned Counsel submitted that the applicant has adopted and used the mark since 1997 which is much prior to the respondent No. 1. The user
claimed by the respondent No. 1 is fraudulent and dishonest from its inception and the adoption of the impugned mark by the respondent No. 1 cannot
be considered to be honest. He pointed out that the respondent No. 1 in paragraph 4 of the counter-statement has stated that the applicant and
respondent No. 1 were working as sister concerns and two partners of respondent No. 1 were also directors of the applicant company. He submitted
that that nothing more is required to substantiate that the respondent No. 1 having full knowledge of the use of trade mark by the applicant and the
goodwill and reputation accrued to it has dishonestly adopted the trade mark HARMONY to ride piggy-back on the goodwill and reputation of the
applicant's trade mark.
1 0 . Learned Counsel submitted that the impugned registration obtained by the respondent No. 1 is in contravention of the provisions of Sections 9 and
11 of the Act. The impugned mark is devoid of any distinctive character, that is to say, not capable of distinguishing the goods of the respondent No. 1
from those of the other traders. The use of the impugned mark by the respondent No. 1 in respect of the same/similar goods as that of the applicant,
that is to say, co-Axial cables, is likely to deceive or cause confusion. The purchasing public and trade may, having regard to the wide and immense
reputation and goodwill earned by the applicant in its registered trade mark HARMONY used in respect of Co-Axial cables, think or assume that the
goods are originating from the applicant or there is some trade connection between the applicant and the respondent No. 1.
Lastly, learned Counsel for the applicant submitted that the respondent obtained the impugned registration by fraud and by making misleading
representation regarding use and proprietorship of the impugned mark. The material facts regarding the applicant's prior adoption and use and
popularity were suppressed while obtaining the impugned registration by the respondent No. 1. It is not the claim of respondent No. 1 that it had no
knowledge about the trade mark in use by the applicant and there is no explanation from the respondent No. 1 as to what made it settle on the mark
HARMONY or what was the reason for adoption of the mark only which was deceptively similar to the mark of the applicant. Learned Counsel
concluded by submitting that the present rectification application may be allowed and the impugned mark of respondent No. 1 is removed from the
register of trade marks.
Any person may file notice of opposition but only the person aggrieved can file rectification application. The expression 'person aggrieved has not
been defined under the Act but the expression 'person aggrieved has received liberal construction from the Courts. It would be worthwhile to have a
look at a few legal propositions laid down by the Courts. In Wright, Crossley and Co. S.T.M. 1898 (15) R.P.C. 131, it was held as under:
I further accept the statement of the Court of Appeal, that a man in the same trade as the one who had wrongfully registered a Trade mark and who
desires to deal in the article in question is prima facie an aggrieved person but only prima facie; and the circumstances of the case may show that an
individual applicant is not a person aggrieved. I think, notwithstanding what was said in that case, and has been said in other cases dealing with Trade
Marks, that an applicant, in order to show that he is a person aggrieved, must show that in some possible way he may be damaged or injured if the
Trade Mark is allowed to stand and by possible I mean possible in a practical sense; and not merely in a fantastic view.
In Prestige Housewares (India) Ltd. and Anr. v. Prestige and Ors.2000 PTC 513 (Mad), it was observed that whenever it is shown 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 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, he has a locus standi to be heard as a person aggrieved.
In the light of above proposition of law, let us see if the applicant is the person aggrieved within the meaning of Sections 47 and 57 of the Act.
From the pleading it is evident that the applicant is in the same trade as the respondent No. 1 who has wrongfully registered the trade mark and
desired to deal in the article in question and by existence of the registration of respondent No. 1 on the register, the applicant has not been granted
interim injunction against the respondent No. 1 by the High Court of Bombay. Thus the existence of entry of mark of respondent No. 1 on the register,
the applicant could not obtain interim injunction which the applicant could lawfully be obtained but for the existence of the mark upon the register.
Therefore, prima facia, the applicant is the person aggrieved.
1 4 . The next issue is whether the impugned mark registered under wrong classification is liable to be expunged from the register or the Appellate
Board may pass order directing the respondent No. 1 to amend the class 6 to class 9. It is an undisputed fact that the respondent No. 1 applied for
registration of trade mark in respect of goods in class 6 whereas the goods actually fall under class 9 and the Registrar has granted registration. Sub-
section (2) of Section 57 of the Act provide that any person aggrieved by the absence or omission from the register of any entry, or by any entry made
in the register without sufficient cause, or any entry made wrongly remaining on the register, or any error or defect in any entry in the register, may
apply in the prescribed manner to the Appellate Board or to the Registrar, and the tribunal may make such order for making, expunging or varying the
entry as it may think fit. The error crept in any entry may be clerical or substantial in nature and when the error is not clerical but of a substantial
nature, the mark have to be expunged from the register. The case on hand is not clerical error as the respondent No. 1 has admitted that the
application for registration was made in respect of goods in class 6 as the respondent No. 1 was not aware of the distinction of the goods. Because of
wrong advertisement in Trade Marks Journal under the wrong class many persons, especially those who are not dealing in or with goods under class
6, might not have noticed or went through the advertisements and thus might not have opposed the application. This is exactly what the applicant has
averred in the pleadings and in this way the purpose for which advertisement is envisaged by the statute stands defeated. In the case of Gopal Krishan
(supra), the appellant filed application for registration of trade mark 'MAX STANDARD' in class 11 and after scrutiny the application was accepted.
The appellant later on filed application seeking amendment of the accepted application in relation to date of user and change of classification from
class 11 to class 9. The respondent filed opposition and the appellant filed reply thereto but ignoring the reply, the Trade Marks Authority passed order
to the effect that application had been abandoned. Appellant filed review application and during the pendency of the review application the respondent
filed interlocutory application praying that the application which was originally filed and later amended should be dismissed. The Deputy Registrar
allowed the interlocutory application and withdrew the acceptance of the application for registration. The appellant preferred an appeal before the
Single Judge and to the Division Bench.
The Division Bench of High Court of Delhi conforming the order of the Deputy Registrar of Trade Marks held as under:
...Once acceptance has been granted under class 11, then the question of amending the application can under no circumstances arise for the purposes
of changing the class. This is precisely what has been alleged by the respondent in the present case and in our opinion rightly so. Applying the analogy
of Order VI Rule 17 of the Code of Civil Procedure, it would appear to us that by seeking to amend the application, with a view to change the class
and also the date of user, the appellant is in effect filing a new application which is not permissible under the said provisions. In the grab of amendment
the character of the earlier application is sought to be changed and a totally new application will come into existence bypassing the provisions of Rule
38 and this cannot be allowed.
There is no provision Act which envisage amendment of class of goods after the application is advertised in the Trade Marks Journal. Even on an
application made to the Registrar under Section 58 of the Act, the Registrar has no power to permit change in class of goods. When the Registrar has
not been conferred with such power by the statute, this Appellate Board cannot issue any direction to the respondent to amend the classification of
goods from class 6 to class 9. In our considered view, the entry of registration is liable to be removed from the register of trade marks on the grounds
that that it is made in the register without sufficient cause and is wrongly remaining on the register.
The issue next to be examined is whether the applicant is the prior adopter and user or the respondent No. 1. The applicant is incorporated on
4.9.1995 as a private limited company under the Companies Act, 1956 and the explanation for adopting HARMONY is that it is part of the corporate
name and the trade mark as well. On the basis of record available with us and having regard to the fact that these averments remain un-rebutted, we
have no reason or basis to reject the explanation of the applicant. The claim of the applicant that it has used the mark since 1997 corroborates with the
copies of random invoices and sales figures and approximate advertisement expenses (certified by the Chartered Accountant) from the years 1996-
97 to 2005-06 filed by the applicant and the first such invoice is of 1.11.1999 with Sales Tax registration number with effect from 17.9.1996. It is
stated at paragraph 12 of the affidavit evidence of Shri Deepak Sewhani, Director, it is stated that in the invoices they have been mentioning their
cable serial Nos. as 023T6, RG11, RG6, 323T6, etc. The averment made by the respondent No. 1 in the counter-statement that he was aware that the
applicant adopted and used the mark in 2003-2004 only cannot be accepted in the absence of any material substantiating the veracity of such
statement. The copies of registration certificate and Trade Marks Journal in support of the said statement do not prove that the applicant has adopted
and used the mark from the year 2003-04, in fact those copies prove the date of making application, etc. On the face of copies of invoices, sales
figures, etc. filed by the applicant it is difficult to sustain such an averment of respondent No. 1. There are copies of full page advertisements from the
year 1998 to 2007 (with the exception that such copies for the years 2000 to 2003 are neither produced nor explained about their non-production).
Respondent No. 1 has filed a copy of order dated 30.6.2006 passed by the Hon'ble High Court of Bombay in Notice of Motion No. 2497 of 2006 in
Suit No. 2039 of 2006 by which the Hon'ble High Court refused to grant ad-interim order against the defendant (respondent No. 1 herein) on the
grounds that the plaintiff (applicant herein) has failed to establish the use of trade mark and reputation accrued thereto and both the parties are
registered proprietors. We are afraid that the said order can be treated as conclusive finding by the Court to accept as an evidence to demolish the
documentary evidence filed by the application in the case on hand. Though the order does not expressly say that the Court's finding is prima facie but
generally ad-interim order is passed on prima facie finding of the Court. On the other hand, respondent No. 1 claims to be the prior user and original
adopter and in support of its claim of user the respondent No. 1 has filed only a copy each of Packing List dated 29.12.2000 and an invoice dated
5.3.2001, a copy of joint advertisement made in March 1998 by the applicant and the respondent No. 1 and a copy of caution notice with illegible date
in ink. The copy of Packing List dated 29.12.2000 issued by Modage Exports Limited is addressed to Paras Electronics, Karnataka but it has not been
explained as to how Paras Electronics, Karnataka is related to Paras Electronics, Mumbai. In the other copy of invoice dated 5.3.2001, there is no
description of goods sold but only amount is shown. It is not known as to whether the respondent had sold the coaxial cable or something else. The
evidentiary value of this document is not free from doubt as the respondent No. 1 has claimed use of the trade mark since 1.4.2001. There is no
explanation from the respondent No. 1 as to how and for what reason it settled on the mark similar to the applicant's mark. Even if we assume that
the evidence adduced by the respondent No. 1 is acceptable, then also the respondent No. 1 is in no way prior to applicant in adoption and use of the
impugned mark. From the above discussion of evidences on record from the applicant and the respondent No. 1, it is beyond doubt that the applicant is
the prior adopter and user of the mark HARMONY.
Now we would come to the issue as to whether the registration of trade mark of respondent No. 1 is in contravention of the provisions of Sections
9, 11 and 18 of the Act. The impugned mark at the time of registration cannot be said to be of distinctive character on the face of the applicant's mark
which was in use and also adopted prior to the respondent No. 1. It cannot also be said that the impugned mark had acquired distinctiveness by user
as the respondent No. 1 has failed to adduce any plausible evidence therefor. In both the competing marks the dominant feature is the word
HARMONY. While compared both the marks as a whole, they are phonetically identical and this over all phonetic identity will cause confusion and
deception as the purchaser will ask the goods by pronouncing the mark HARMONY. From the point of view of a man of average intelligence and
imperfect recollection, he will tend to remember the main features of the competing marks, which is HARMONY in both the marks. The goods are
similar, the trade channel and consumers are common in both the cases. We have already stated that there is no explanation from the respondent No.
1 justifying the adoption of the impugned mark. The applicant's prior adoption and use has been established. In the light of the pleadings, the
respondent No. 1 cannot say that at the time of adoption of the impugned mark it was not aware that the applicant was using the identical mark. The
adoption of mark by the respondent No. 1 is, no doubt, dishonest, with malafide intention to misappropriate the goodwill of the applicant. When the
adoption of mark is dishonest, respondent No. 1 cannot claim to be the proprietor of the impugned mark. The respondent No. 1 is not entitled either to
protection under Section 34 of the Act, as has been claimed by it on the basis of prior user.
In view of the above, the application is allowed and the Registrar of Trade Marks is directed to remove the trade mark under No. 1350531 as of
12.4.2005 in class 6. There shall be no order as to costs.