India International vs Sureshkumar R. Vachhani

S. Usha, J

Both the applications are for rectification of Trademark "MARUTI" and both are label marks registered under No. 465531 and 684046 in class 21 respectively under the provisions of the Trade Marks Act 1999 (hereinafter referred to as Act).

2 . The case of the applicant is that the applicant is the sole proprietor carrying on business of manufacturing and marketing a variety of household articles, kitchenware and domestic appliances including pressure cookers. The applicants have been carrying on business since the year 1981. The applicants are well known in trade and enjoy a very high reputation for their products because of excellent quality and efficiency.

The applicant is the proprietor of various trademarks which are used in respect of Pressure Cookers and they are operating all over India. They are also exporting the goods to some other countries like Nepal, Bangladesh etc.

4 . On 1st January, 1981, the predecessors in business of the applicant adopted the trademark "MARUTI" in respect of its goods and since then the trademark is in use continuously, uninterruptedly and openly in the market by the predecessor and now by the applicant.

The trademark "MARUTI" is duly registered in favour of the applicant and is validly subsisting in the register. The applicant's trademark in relation of pressure cooker is well recognized by the members of trade and public. The annual sales turn over achieved by the applicant for the year 1997-1998 is Rs. 23,21,143/- which substantially increased to Rs. 61,43,174/- in the year 2007-2008. They have spent considerable amount for their advertisement.

6 . By virtue of prior adoption and prior user, the applicant is the rightful and lawful proprietor of the trademark "MARUTI" in respect of pressure cookers. Under these circumstances adoption, use or registration of the trademark "MARUTI" or any other deceptively similar trademark is in violation of statutory and common law rights of the applicant.

7 . The applicant is very vigilant in taking action against infringers and had filed several suits before various High Courts restraining the infringers and successfully obtained interim orders.

8 . The applicant is the honest and bonafide adopter of the trademark "MARUTI" and had been using the same for more than 28 years. During the month of January, 2008, the applicant came to know that the respondent had illegally adopted and obtained registration of the trademark "MARUTI" for their identical goods. The applicants came to know this from the search conducted at the Trade Mark Registry and report obtained by the applicant. After making necessary enquiry the applicant came to know that the respondent had never used the trademark "MARUTI" but had only got it registered. It is therefore, the applicant filed the rectification application against the trademark "MARUTI" registered by the respondent. The said registration is in contravention of the provisions of the Act and therefore deserves to be rectified on the following grounds.

) The trademark registered in the name of the respondent is wrongly remaining on the register. It has been registered without any bonafide intention on the part of the respondent to use the same in relation to the goods for which registration has been obtained.

) The registration has been obtained by making wrong statement before the Registrar.

) The registration has been obtained in contravention of sections 9(1)(a) of the Act, 9(2)(a) of the Act and 11(1) of the Act.

) The respondent is not the proprietor of the trademark "MARUTI" and therefore the registration has been obtained in contravention of the section 18(1) of the Act.

) The impugned trademark is liable to be removed as the use of the mark by the respondent is likely to cause confusion and deception among the public.

) The registered proprietor has not used the mark as on the date of application and even after registration or even on the date of application for rectification.

Therefore, the mark deserves to be expunged/rectified/removed.

The respondent filed their counter statement raising a preliminary objection that the applicants have not made the Trademark Registry as party in the rectification application. The applicant has also not mentioned anywhere that he is a person aggrieved. In view of the above, the rectification application deserves to be dismissed in limini.

1 0 . The respondent further stated that they are the partners of the registered partnership firm and are the legitimate/lawful proprietor of the trademark "MARUTI" in respect of goods Sev Machine, housewares, kitchen wares, hollow wares, glass wares, thermo wares, utensils, water filters included in class 21.

Shri Sureshkumar Ramjibhai Vachhani and Shri Ayushkumar Popatlal Patel have started a partnership firm namely Maruti Industries w.e.f. 03/2/1986 and have been doing the business under the trade name and trading style "MARUTI". The said partnership firm has been registered under the Partnership Act, 1932 before the Registrar of firms on 25/09/1999 at Rajkot. On 11/09/1989 Shri Ayushkumar Patel retired from the said partnership firm. On 12/09/1989 Smt. Ranjanben Ayushkumar Patel entered into the partnership firm. Thereafter, Shri Sureshkumar Ramjibhai Vachhani and Smt. Ranjanben Ayushkumar Patel became partners in the firm w.e.f. 15/08/1992. Shri Ayushkumar Popatlal Patel entered the partnership firm w.e.f. 01/04/1994. Smt. Ranjanben Ayushkumar Patel retired on 01/07/1995. Shri Ayushkumar Popatlal Patel also retired on 01/04/2005. Shri Sureshkumar Ramjibhai Vachhani and Shri Jigar Sureshkumar Vachhani are the present partners w.e.f. 01/04/2009.

The trademark "MARUTI" is not only the trademark of the respondent but also the trading style and trade name which is a leading feature of the respondent's firm.

The respondents are the proprietors of the trademark "MARUTI" and have been using the said trademark since the year 1986 openly, uninterruptedly, continuously and exclusively and consequently the said trademark has been registered and is validly remaining in the register.

1 4 . The respondent's firm has spent significant amount towards promoting, advertising and marketing. The respondent's goods have thus acquired tremendous reputation and goodwill over the aforesaid trademark. The respondent further denies the averment made in the application for rectification. The respondent denies that the applicant is carrying on business since the year 1981 in respect of household goods under the trademark "MARUTI".

On completion of the pleadings the matter was listed for hearing and we heard Mr. Nakul Sharedalal, learned counsel for the applicant and Mr. Sejal D. Shah, learned counsel for the respondent.

1 6 . The learned counsel for the applicant submitted that the two trademark applications are under No. 465531 and 684046. The mark under No. 465531 is a label mark in English. The mark under No. 684046 is also a label mark in Hindi. The learned counsel also submitted that the mark under No. 465531 is in respect of kitchen wares whereas the mark under No. 684046 is in respect of pressure cooker and kitchen wares.

1 7 . The learned counsel for the applicant submitted that they had conceived and adopted the trademark "MARUTI" in English and had been using the same since 1981. In fact their application under No. 425442 has been registered as early as 1984 in respect of pressure cooker.

1 8 . During the year 2008 from a search report obtained from the Trade Marks Registry, the applicant came to know that the respondent has obtained registration and therefore they filed application for rectification. The learned counsel for the applicant would also submit that they had been using it from the year 1981 and the first bill is dated 13/10/1985. The learned counsel also submitted that they have produced copies of the advertisement since the year 1994. Further the applicant submitted that as early as in the year 1988 various third parties had requested for dealership of the applicant's goods bearing the trademark "MARUTI". He also produced a letter written by Durga Steel Corner dated 28/09/1988 at page 71 of the application. In support of the same at pages 117 and 118 the newspaper cuttings were filed to prove their use of the trademark as early as 1988. The learned counsel finally submitted that even though the respondent claims user since 1986, the first document is of the year 1999 and not earlier as claimed in their application for registration.

The learned counsel for the applicant relied on the judgment in

(i) (1894) 11 RPC-Powell Vs. Birhingham Vinegar Brewery Co.-Wherein it was observed that "the person is an aggrieved person if the mark used by the other person is identical for identical goods".

(ii) 1995(15) PTC 165 (SC)-Power Control Appliances and Others Vs. Sumeet Machines Pvt. Ltd. and Others-"The counsel submitted that the settled principle of law relating to trademark is that there can be only one mark, one source and one proprietor and therefore use by any third person is likely to cause confusion among the public."

(iii) 1999 (19) PTC 414 (Bom)-Reliance Industries Ltd. Vs. Anand Traders and Others-"The established principles to be observed for deciding deception or similarity were that the marks are to be remembered by general impression, overall similarity is the touch stone, marks must be looked at from the first impression of a person of average intelligence and imperfect recollection, overall structure, phonetic similarity and similarity of idea are important. Marks must be compared as a whole and the mark must not be placed side by side for considering similarity.

In reply, the learned counsel for the respondent submitted that the application for rectification is liable to be dismissed for two reasons namely the Trademark Registrar has not been made party to the proceedings and the applicant in his application for rectification has not stated anywhere that he is aggrieved person on account of the mark which is under rectification from the register.

21 . The learned counsel vehemently submitted that they had been using the mark from the year 1986, it is not only their trademark, it is their trading style, trading name and house mark. The learned counsel then brought to our notice the sales figures and submitted that they had very good sales and the sales turn runs to several lakhs of rupees. The learned counsel submitted that there has been no rejoinder filed by the applicant and therefore whatever has been stated in the counter statement has been admitted by the applicant.

The learned counsel for the respondent took us to the Annexure 'C' wherein it is seen that the respondent have been manufacturing the kitchen ware articles under the trade name "MARUTI" and therefore they are the proprietor of the trademark "MARUTI".

The learned counsel for the respondent also submitted that the partnership firm came into existence on 03/02/1986.

Finally the learned counsel for the respondent submitted that there has been a delay on the part of the applicant in taking steps to file application for rectification and for this reason no relief ought to be granted. The learned counsel also submitted that there has been no instance of confusion or deception proved by the applicant because of the mark on the register.

The learned counsel for the respondent relied on few judgments--

(1): 2008 (37) PTC 654 (IPAB)-Kirorimal Kashiram Marketing & Agencies Private Limited Vs. Ravinder Kumar Khanna & Anr.-"Similarity in the name in the trademark alone is not sufficient to make out a case either of infringement or of passing off for in both the cases confusion or deception is the essential element."

(2) 2010 (44) PTC 381(Del)-Stokely Van Camp, Inc. & Anr. Vs. Heinz India Private Limited-"Mere use of the mark alone does not necessarily translate in the mark obtaining secondary distinctive meaning. Defendant's use of the expression does not prima facie appear to be dishonest for the reason that these are words or expressions used commonly to describe what appears to be the functional utility of an isotonic drink. To succeed in said case he must demonstrate more than simply the sole use of the descriptive term."

(3) 2010 (43) PTC 578 (Mad)-A. Habeebur Raliman Sons, S. Beedi Factory Vs. Rajender trading as Rajendar & Sons-"Mere existence of the mark on the register cannot be proof of use of the mark."

(4) 2002(25) PTC 763 (Cal)-Honda Motor Company Limited Vs. Kewal Brothers & Anr.-"There is no explanation as to why no action was taken for a long period inspite of having knowledge of the opponents use. So no relief could be granted."

(5) 2007(35) PTC 708 (Bom)-Charak Pharmaceuticals (India) Limited and Anr. Vs. Glenmark Pharmaceuticals Limited-"Interim injunction not granted on the ground that they have not approached the Court at the earliest time."

(6) 1996 PTC (16)-Vishnudas trading as Vishnudas Kishendas Vs. Vazir Sultan Tobacco Co. Ltd.-"If a trader or manufacturer actually trades in or manufacturers only one or some of the articles coming under a broad classification and such trader or manufacturer has no bonafide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be allowed to enjoy monopoly in respect of all the articles which may come under such broad classification."

(7) 2007 (34) PTC 136(IPAB)-Bal Krishan Jindal Vs. Mohinder Singh & Anr.-"No evidence on record to prove confusion. Failure to discharge. Rectification dismissed.

In the rejoinder the learned counsel for the applicant submitted that there has been no delay in filing the application for rectification. In fact, the applicant came to know of the respondent's registration in the year 2008 and had filed application immediately but due to certain defects pointed out by the Registry of the Board, there has been delay in numbering the application. The learned counsel also submitted that the sales figures given in the counter statement are not certified by chartered accountant so cannot be relied on. The learned counsel also relied the judgment AIR 1986 SC 137--American Home Products vs. Ma Laboratories Private Limited and submitted that the applicant is aggrieved person as the marks are identical for identical goods. The learned counsel prayed that the rectification application be allowed.

27 . We shall first deal with the applications for registrations. The first application under No. 465531 in class 31 was filed on 05/01/1987 claiming user since 01/01/1986 for the trademark "MARUTI" (label mark) in English. The other application under No. 684046 in class 21 was filed on 17/10/1995 claiming user since 10/09/1995 for the trade mark "MARUTI" (label mark) in Hindi. The first application was in respect of kitchenware, houseware etc. whereas the second application was for kitchenware, houseware and also pressure cooker.

2 8 . The respondents in their trademark application though claim user since 01/01/1986 and 10/09/1995 respectively have not substantiated their claim of use either since 1986 or 1995. The respondents 1st invoice/bill is dated 04/11/1999 and not earlier i.e. 1986 or 1995 as claimed in their application for registration.

The respondents in their counter statement have admitted that they started the partnership firm namely M/s. Maruti Industries w.e.f. 03/02/1986. They have also stated that their firm was registered with the Registrar of firms on 25/09/1989. Even assuming the business was carried on by the firm without obtaining registration, the use could be only from 03/02/1986 as admitted by the respondents and not since 01/01/1986 as claimed in the application for registration. However, the 1st bill is dated 04/11/1999 which is subsequent to the date of user claimed in the application for registration and therefore the trademark shall not be allowed to continue on the register for wrong date of use.

The second application is dated 17/10/1995 and the date of use claimed in the application is since 10/09/1995. The respondents have relied on the same documents for their use. The 1st document here again is the bill dated 04/11/1999.

On perusal of the records, it is seen that the respondents have not proved their claim of use either since 01/01/1986 or 10/09/1995.

This Board has held in several matters that a trade mark shall not be allowed to continue on the register if a wrong statement of use is given.

Based on the above principle, we think the impugned trade mark deserves to be removed by allowing the applications for rectification. Accordingly, the applications for rectification are allowed with a direction to the Registrar of Trade Marks to remove the trade marks registered under Nos. 465531 and 684046 in class 21. There shall be no order as to costs.