ITC Limited vs Golden Tabacco Limited And Ors.

Manmohan Singh, J

By this order, we propose to decide the following two rectification petitions filed by the applicant against the respondent No. 1 who had obtained the

registration from respondent No. 2.

The Applicant has filed the Rectification being No. 81/2016 application under Section 57 r/w Section 47 of the Trade Marks Act 1999 seeking

removal of the registered Trade Mark No. 347870 (hereinafter, the ""Impugned Trade Mark/Impugned Label"", depicted below).

The Impugned Trade Mark is a label mark.

The Applicant has filed the second Rectification application being no. 82/2016 under Section 57 r/w Section 47 of the Trade Marks Act, 1999

seeking removal of the registered Trade Mark No. 1387061 (hereinafter, the ""Impugned Trade Mark/Impugned Label"", depicted below).

The Impugned Trade Mark is a label mark.

Hearing in both matters are for remaining arguments conducted through video conferences. Most of facts and legal issues are common. Thus both

are being decided by common single order.

About applicant

The applicant is a manufacturer in the cigarette industry and has a wide range of invaluable brands. The applicant's highly popular portfolio includes

brands like GOLD FLAKE, INDIA KINGS, CLASSIC, NAVY CUT, PLAYERS, SCISSORS, CAPSTAN, BERKELEY, WILLS, BRISTOL,

FLAKE, SILK CUT, DUKE, ROYAL, etc. It is submitted that the applicant has been able to command recognition and reputation among the

consumers by continuous value creation for consumers through significant investments in creating and bringing to market innovative product designs,

maintaining consistent and superior quality, state-of-art manufacturing technology, and superior marketing and distribution.

The applicant's predecessor in business in or about the year 1905, conceived and adopted a distinctive trade mark viz. GOLD FLAKE for the use in

relating to cigarettes. The applicant has over the years created numerous variants of the said trade mark GOLD FLAKE.

The first registration secured by the applicant was way back in the year 1942 and the same is still valid and subsisting. Copies of Legal Proceedings

Certificate as obtained by the applicant in relating to some of the applicant's GOLD FLAKE registration are collectively annexed hereto and marked

as Exhibit ""A2"". The applicant and its predecessors have been using the trademark GOLD FLAKE for more than 100 years openly, continuously and

extensively in India.

The total sales of goods under the trade mark GOLD FLAKE and its variants for the past several years are as under:

Invoices, by way of simple, evidencing the manufacture and substantial sale of cigarettes under the said trade mark GOLD FLAKE and its variants

are annexed hereto and collectively marked as Exhibit 'A5'. In the year 2002, GOLD FLAKE was ranked as the top most brand in terms of sales

value. Copy of newspaper article showing the aforesaid status achieved by the GOLD FLAKE is annexed hereto and collectively marked as Exhibit

'A6'.

The advertisement figures set out herein below:

Copy of the Chartered Accountant's certificate verifying the above stated figures along with copies of the past advertisements and other promotional

materials, as permissible under the law, relating to the applicant's said trademarks which are collectively marked as Exhibit 'A7'.

For the years 1997 to 2001, the applicant sponsored for the World Series of the ATP Tour Professional Tennis Tournament held in India. The

tournament was titled as ""Gold Flake Open"". These tournaments received wide advertisements and were watched keenly by millions in India as well

abroad. Copies of advertisements in relation to the same are annexed as Exhibit ""A8'.

The applicant herein in the year 2014 had filed a suit for infringement and passing off against NTC Industries Limited NTC) before the High Court

at Bombay. The Hon'ble Bombay High Court had passed an order dated 29.09.2015 favoring the applicant. A copy of the said order is annexed as

Exhibit 'A10'. NTC has filed an appeal against the said order and the same is pending before the High Court of Bombay. Till the date of filing of this

petition no stay has been obtained against the said order by NTC.

The facts of applicant's case against the respondent No. 1

The applicant has alleged that in the past, the respondent no. 1 had attempted to infringe upon the applicant's rights in its trade mark and copyright

by copying the applicant's trade mark and trade dress and the applicant being extremely vigilant has taken appropriate steps before the appropriate for

a against the respondent No. 1 to protect its intellectual property rights.

It is also alleged that the respondent No. 1 appears to have secured a label registration No. 164653 with the words ""Diamond Indian Gold Flake

which was registered in the year 1954 as appears from the Trade Marks Registry Website. The right of the respondent No. 1 to this registration is not

admitted. However, the said label was advertised inter alia with the disclaimer that there would be no exclusivity in the words 'Gold Flake'. It is stated

that this label registration does not appear to be valid presently.

It is stated that the respondent No. 1 also appears to have secured a label registration No. 316648 with the words 'Golden's Gold Flake' in the year

1976. The said label was advertised inter alia withy the disclaimer that there would be no exclusivity in the words 'Gold Flake'. This label registration

also does not appear to be valid now.

In the year, 1979 the respondent No. 1 filed three label applications viz., TM 347869, 347870 and 354742 for registration of different Golden's Gold

Flake labels and they appear to have been subsequently registered. While registration under application no. 347870 appears to be subsisting, there are

no renewal records available with the Trade Mark Registry relating to TM Nos. 347869 and 354742. The application for registration of TM Nos.

347870 and 354742 were made on ""Proposed to be used basis and were advertised inter alia with a disclaimer that there would be no exclusively in

the words ""Gold Flake"".

The registration No. 347870 is the subject matter of rectification No. ORA/81/2016, the same rectification is also be decided.

Details of impugned trade mark which is under rectification is given as under:

a) Application No. 1387061

b) Trade Mark/Logo: GOLDEN'S GOLD FLAKE(LABEL)

C) APPLICATION DATE: 23/09/2005

D) DATE OF ADVERTISEMENT: JOURNAL 1346-0 DATED: 16/06/2006

E) DETAILS OF REGISTRATION: 21/03/2007

The applicant's registration details

Details of Trade Marks applied/registered in the name of applicant herein:

a) TRADE MARK REGISTRATION NO.: 7678

b) Class: 34

c) Date of application 11/11/1942

d) Certificate Detail: Certificate No. 14544, dated 05/05/1967

It is submitted by the applicant that the respondent No. 1 has abandoned most of its label mark registrations, however had always used the trade

mark GOLDEN'S GOLD FLAKE clandestinely which are closely similar to the label of the applicant solely with the intention of usurping the

reputation and goodwill acquired by the applicant. As far as labels which are subject matter of present rectifications GOLD FLAKE is not used by the

respondent No. 1 is in fact evident from its website. The website of the respondent No. 1 does not have any reference of the trade mark GOLD

FLAKE or its use. Screenshots of the website are collectively annexed as Exhibit ""A13"".

The applicant submits that in 1979, the applicant filed a trade mark application being TM No. 348904 for registration of GOLD FLAKE. This

application was opposed by the respondent No. 1 inter alia on the basis of its earlier label registrations and applications for ""Golden's Gold Flake"". The

Respondent No. 1 contended, among other grounds, that the trade mark ""Gold Flake"" is descriptive and common to trade. The Deputy Registrar of

Trade Marks, by his order dated 06.01.1992 (reported in 1992 (12) PTC 73), rejected the opposition filed by the respondent No. 1 and held that the

words ""GOLD FLAKE"" is distinctive of the applicant and it is neither open to the trade nor has become common to the trade. The afore said order

passed by the Trade Mark Registry is annexed as Exhibit ""A14

Previous details OF THE IMPUGNED TRADE MARK - NO. 347870

On 05.04.1979 the Respondent No. 1 had originally applied for registration of a label containing ""GOLD FLAKE"" under Application No. 347870 (the

Impugned Application"") which is depicted herein below:

This label (""Label No. 1"") is not the subject-matter of the present rectification as the Respondent No. 1 subsequently amended and abandoned the

above label altogether.

In December, 1979 the Respondent No. 1 applied for amendment of the above label by removing the lower half of the roundel as depicted below:

As per applicant the Respondent No. 1 abandoned this label altogether as well. This label (""Label No. 2"") is also not the subject-matter of the present

rectification.

The Respondent No. 1 again applied for amendment on 13.09.1990 of the Impugned Application by completely changing the design especially the

use of the roundel and intersecting rectangle with ""GOLD FLAKE"" written on it. The new label comprised of a rectangular box with ""GOLD

FLAKE"" written inside and a design of leaves on the bottom and top of the rectangle. This label was registered on 13.11.1992 and is depicted below:

The above label (""Label No. 3"") is the Impugned Trade Mark/Impugned Label which is the subject matter of the present rectification application field

inter alia on the grounds of non-user of the label

The applicant submits that since other label was used by the respondent No. 1 other than the agreed label which is similar to label of the applicant

who has no option but to file a suit in the year 1979 against the slavish copying of the trade dress of the applicant's GOLD FLAKE brand before the

High Court at Calcutta being C.S. 988 of 1979 against the respondent no. 1 herein. It is stated that the offending label in C.S. No. 988 of 1979 was not

any of the labels registered by the respondent No. 1 earlier. It was alleged that the said offending label which objected in the suit was a slavish

imitation of the applicant's registered label. Later in the year 2002 a settlement was arrived at and the suit was decreed on 24.06.2002 in terms of

which the respondent No. 1 agreed not to use the offending labels/marks which were subject matter of the suit or any mark deceptively similar to

labels which were in dispute. It was agreed that the respondent No. would be at liberty to use the label registered under TM No. 347870. Copy of the

decree dated 24.06.2002 passed by the Hon'ble High Court of Calcutta along with the settlement is annexed as Exhibit ""A15"".

It is a matter of record that during the pendency of suit at Calcutta High Court in the year 1990, the respondent No. 1 once again launched its

products under two labels which were identical and/or deceptively similar to labels of the applicant used in respect of the applicant's cigarettes packs.

The applicant filed two civil suits being C.S. No. 477 of 1990 and C.S. 478 of 1990 before the Hon'ble Madras High Court. The Hon'ble Court had

passed an order of injunction dated 24.07.1990 restraining the respondent No. 1 from infringing the applicant's trade marks. A copy of the common

order dated 24.07.1990 passed by the Single Judge of the Madras High Court in O.A. Nos. 2554 & 2557 of 1990 allowing interim injunction restraining

respondent no. 1 from infringing applicant's GOLD FLAKE labeled is annexed and marked as Exhibit A16.

Thereafter, on an appeal preferred by the respondent no. 1, the Division Bench of the Hon'ble High Court of Madras was, by its judgment dated

05.02.1991 in OSA Nos. 134 and 135 of 1990, had confirmed the said injunction order dated 24.07.1990 and dismissed the appeals filed by respondent

No. 1. A copy of the order dated 05.02.1991 passed by the Division Bench of Madras High Court in OSA. Nos. 134 & 135 of 1990 is annexed and

marked as Exhibit 'A17'. The Special Leave Petition filed by the respondent No. 1 challenging the judgment dated 05.02.1991 passed by the Division

Bench was dismissed as withdrawn on 07.09.1995. A copy of the said order dated 07.09.1995 passed by the Supreme Court in SLP Nos. 9119 and

9120 of 1991 is annexed and marked as Exhibit 'A18'.

On 27.06.2003, the Applicant's suits in the Madras High Court being CS No. 477 and 478 of 1990 were also disposed of in terms of the

compromise arrived at between the Applicant and the Respondent No. 1. It was agreed that the Respondent No. 1 would be permitted to use the two

labels given in Annexure 'D' to the Memorandum of Compromise depicted herein below.

These two labels are distinct and different from the Impugned Trade Mark. These were allowed to be used and part of annexure-D to the

compromise deed and on the basis the consent decree was passed in favour of applicant and against the respondent No. 1. The impugned label of the

two suits were permanently restrained.

It is contended on behalf of the applicant that though the Applicant withdrew its opposition to registration of the Impugned Trade Mark before the

Dy. Registrar and agreed that the Respondent No. 1 was at liberty to use the Impugned Trade Mark before the Calcutta High Court, the Respondent

No. 1 has, in fact, not used the said Impugned Trade Mark at all. It is submitted that both these events do not save the Respondent No. 1's Impugned

Trade Mark from rectification proceedings(under S. 47 and S. 57). If the same is not used as it is and registration is wrongly remaining on the

Register. It is submitted that the statutory consequence as envisaged in Section 47(1)(a) and Section 47(1)(b) of the Trade Marks Act will follow as

such a consequence is independent of any concession that may have been given by the Applicant. The labels which are the subject matters of two

rectifications are not same labels which are allowed by the High Court, Calcutta and Madras High Court in view of the settlement arrived between the

parties. The contention of the applicant counsel is that label allowed by the Calcutta High Court has not been used by the respondent No. 1, which is

subject matter of rectification No. 81/2016.

It is also alleged on behalf of applicant that the applicant were constrained to file the rectification No. 81/2016 when sometime in the year 2015,

the Respondent No. 1 introduced labels comprising the words ""GOLD FLAKE"" which were slavish copies of the Applicant's ""GOLD FLAKE"" label.

It is alleged that the above new labels were in total breach of the undertaking given by the Respondent No. 1 to the Madras High Court and the

Calcutta High Court which were allowed by virtue of settlement before two High Courts. It was the case of the applicant that these new labels also

infringed the trade marks and copyright of the Applicant and resulted in passing-off of the products of the Respondent No. 1 as that of the Applicant.

These labels not the labels referred in annexure-D to the decree Memorandum of Compromise executed in CS No. 477 of 1990. These labels are in

contravention of the decrees passed by the Madras High Court.

The applicant thereafter instituted proceedings being C.S. No. 801 of 2015 before the Madras High Court. On 01.10.2015, the Madras High Court

granted ex parte injunction in favour of the Applicant. However by order dated 07.12.2015 the said order was vacated.

The Applicant challenged the vacating of the injunction in OSA Nos. 260 to 262 of 2015 before the Madras High Court. During the pendency of

the appeal before the High Court at Madras, the instant rectification application was filed by the Applicant.

During the pendency of the present rectification, by an Order dated 26.07.2018, the Division Bench of the Madras High Court allowed the appeal

being OSA Nos. 260 to 262 of 2015 and restored the injunction granted to the Applicant, holding, inter alia, that:

. GOLD FLAKE brand is absolutely owned by the Plaintiff (ITC Limited) who is also the prior user and is having registration dating back to

11.11.1942 .""; and,

The addition of the word GOLDEN'S to GOLD FLAKE will not legitimize the use by the defendant of the words GOLDEN'S GOLD FLAKE in its

cigarette packet .""; and,

.the Plaintiff is the exclusive proprietor of the mark GOLD FLAKE and hence, GOLDEN'S GOLD FLAKE which is deceptively similar will

certainly deceive the customers into believing that GOLDEN'S GOLD FLAKE also belongs to the Plaintiff"";

Against the aforesaid Order dated 26.07.2018, the Respondent No. 1 filed an SLP before the Hon'ble Supreme Court. By an Order dated

07.09.2018, the Hon'ble Supreme Court held that, ""We are not inclined to interfere with the judgment of the Division Bench of the High Court"" and

disposed of the SLP filed by the Respondent No. 1 with the following observations:

..we are not inclined to interfere with the judgment of the Division Bench of the High Court except to state that, in the meanwhile, it will be

permissible for the petitioner to use the same packaging as is contained in the Compromise Decrees at Page Nos. 136 and 146 of the SLP paper-

book. Learned senior counsel appearing on behalf of the respondent has brought to our notice that a rectification application is pending. Nothing stated

either in our order or in the modified judgment of the High Court will stand in the way of the application, which should be decided on its own merits.

The suit will be decided on its own merits without regard to the observations by the Division Bench or by this Court.

It is evident from the order of the Hon'ble Supreme Court that: (a) this Rectification Application should be decided on its own merits and no other

proceedings should have any bearing on the same; and (b) till the final disposal of the suit before the Madras High Court being C.S. 801 of 2015, the

Respondent No. 1 was allowed to use only the following two labels bearing the words ""GOLD FLAKE"".

The said 2 labels permitted by the Hon'ble Supreme Court do not include, and are different from the Impugned Label, the subject of rectification

petition no. 81/2016.

Person aggrieved

The applicant is a person aggrieved within the meaning, scope and ambit of the provisions contained in section 47 and 57 of the Trade Marks Act and

is entitled to file this Application. Both parties are in the same trade. Secondly every time, the respondent No. 1 had threaten the applicant to use the

similar labels which were not the subject matter of three labels allowed by the court. Both parties are also litigating in courts.

It is also a matter of fact that in 1994, the applicant filed a trade mark application being TM No. 619143 for registration of GOLD FLAKE label

mark. This application was opposed by the respondent no. 1. The respondent No. 1 contended, among other grounds, that the trade mark "" Gold Flake

have no direct or other reference to the character or quality of the goods and that the respondent No. 1 had failed to substantiate that Gold Flake had

become common to the trade. The order passed by the Trade Marks Registry is annexed as Exhibit 'A20'.

The Applicant seeks removal of the Impugned Trade Mark No. 347870, inter alia, on the following grounds that:

(i) The Impugned Trade Mark was registered without having any bona fide intention to use the mark in the course of trade.

(ii) The Impugned Trade Mark has not been used for a period of 5 years, up to three months prior to the filing of the instant rectification application

and

(iii) The presence of the Impugned Trade Mark/Impugned Label in the register is an entry wrongly remaining on the register. The Respondent No. 1's

malafide conduct, public interest and the overriding statutory duty of the Tribunal mandates its removal.

The rectification of the Impugned Trade Mark, being Trade Mark Application No. 347870 in Class 34 was filed on 21.03.2016. Thus the relevant

period for the purposes of the present rectification are for the purposes of Section 47(1)(a) and Section 57 the relevant period would be 1990 to

21.03.2016 (date of filing of the rectification application) and for the purpose of Section 47(1)(b), the relevant period would be 21.12.2010 to

21.12.2015.

Re: Rectification petition to the trade mark No. 1387061 which is subject matter of case No. 82/2016

The Applicant seeks removal of the Impugned Trade Mark No. 1387061, inter alia, on the following grounds that:

The Impugned Trade Mark was registered without having any bonafide intention to use the mark in the course of trade [S. 47(1)(a)]. The Impugned

Trade Mark has not been used for a period of 5 years, up to three months prior to the filing of the instant rectification application [S. 47(1)(b)]; and the

presence of the Impugned Trade Mark/Impugned Label in the register is an entry wrongly remaining on the register. The Respondent No. 1's malafide

conduct, public interest the trade mark is liable to be removed under Section 57 of the Act also.

The said ORA/82/2016/TM/MUM was filed for rectification of the Impugned Trade Mark being Trade Mark Application No. 1387061 in Class

The relevant period for the purposes of the present rectification are as follows: For the purposes of Section 47(1)(a) and Section 57 on 5/3/2016.

Admittedly the label which is under challenge in ORA/82/2016/TM/MUM (the companion matter). which is filed for removal of trade mark label

registered under No. 1387061. The specimen is depicted in para 3 of our order is not the subject matter of compromise arrived between the parties

before Calcutta High Court and Madras High Court. The application for registration was filed subsequent to the said decrees passed in favour of the

applicant. It is the case of the applicant, it was breach committed by the respondent No. 1 by filing fresh application.

The relevant period would be 2007 to 05.03.2016 (date of filing of the rectification application). For the purpose of Section 47(1)(b), the relevant

period would be 05.12.2010 to 05.12.2015. The pleadings of both parties are almost similar except few facts stated above. It is not necessary to repeat

all facts and response to repeat the same.

Counter-Statements in the present rectifications

The respondent is a part of the Dalmia Group of Companies who have diverse business interests, inter alia, in the manufacture and sale of chemicals,

textiles, ayurvedic medicines as well as information technology. In and around the year 1930, the respondent was incorporated as a Company and

contrary to the applicant, was promoted by an Indian, Mr. J.H.V. Narsee Monjee. It was in and around the year 1979, that the respondent was taken

over by the Dalmia Group of Companies.

Since the inception in 1930, the respondent has been manufacturing, marketing and selling several tobacco products, all of which are of world-class

standards in terms of quality specifications. At present the respondent provides gainful employment to about 400 persons. The respondent's

manufacturing unit is located at Vadodara in Gujarat, and has in fact recently implemented the ISO 9001-2008 Standards. Apart from the impugned

Gold Flake Trademark, the respondent is also manufacturing and selling other popular brands of cigarettes, such as, Panama, Chancellor, Golden's, Taj

Chhap, Kings, June, Just Black, and Style. The respondent is also one of India's largest exporters of cigars and cigarettes.

41.1. The respondent was earlier known as GTC Industries Ltd. It has continuously been in the business of manufacturing cigarettes for several

decades. One of the earliest applications filed by the Respondent was on 22.06.1954 vide Trade Mark Application No. 164653 under class 34 for the

registration of its Trade Mark ""DIAMOND INDIAN GOLD FLAKE"" in which, the mark ""GOLD FLAKE"" figures prominently in its trade dress. On

18.09.1956 the Trade Mark Registry granted registration of the aforementioned mark in favour of the respondent vide Certificate of Registration

bearing No. 55388.

41.2. The Respondent submits that it has even prior to being granted the registration of the said Trade Mark and also since then continuously and

extensively been and continues to use the said trade mark ""GOLD FLAKE"" while selling the cigarettes that are being manufactured by it. As

submitted the respondent has continuously been using the said Trade Mark ""GOLD FLAKE"" by making certain minor changes from time to time in

the overall get-up and combination of colours and with regard to which it has secured valid registration in relation to the said Trade Mark ""GOLD

FLAKE"" and its variants, the particulars of which are hereinafter set out

a) Trade Mark application number 316648, under class 34, was filed on 12.07.1976 with regard to the mark ""GOLD FLAKE"".

b) Trademark application number 347870, under class 34, was filed on 05.04.1979 with regard to the mark ""GOLD FLAKE"".

c) Trademark application number, 354742 under class 34, was filed on 25.10.1979 with regard to the mark ""GOLD FLAKE"".

d) Trademark application number 1387061 under class 34, was filed on 23.09.2005, with regard to the mark ""GOLD FLAKE"".

e) Trademark application number 347869 under class 34, was filed on 05.04.1979, with regard to the mark ""VIRGINIA GOLD FLAKE"".

The aforementioned registration have since then been renewed from time to time.

41.3. The respondent's sales turn over for the last three years which is confined only to the sale of its cigarettes under its brand name ""GOLDEN'S

GOLD FLAKE"" are hereinafter set out:

41.4. The applicant as well as the respondent have from time to time redesigned and changed the colour combinations and get-up of their respective

packets/cartons in which the cigarettes have and continued to be sold under the brand name Gold Flake. In fact, especially during the last few years,

both the applicant as well as the respondent have substantially varied/altered not only their respective designs but also the colour combinations and get-

up of the packages and cartons in which the cigarettes manufactured by both parties that are being sold using the trade mark ""GOLD FLAKE"". The

respondent has made further changes in the get-up of the packets/cartons of the cigarettes that are being sold under the brand name GOLDEN'S

GOLD FLAKE. The said newly designed package was being sold until 31st March, 2016. Thereafter, this is, since April 1, 2016, the respondent has

changed its entire get-up of the package/carton in order to comply with G.S.R. No. 228(E) dated 26.03.2016 issued by the Government of India,

Ministry of Health and Family Welfare, which warranted that 85% of the package on both sides ought to depict the pictorial and statutory warnings.

This per se would clearly establish the fact that the cause of action based on which this application had been filed has completely disappeared and

hence, the application as framed would no longer be maintainable and is consequently, liable to be dismissed.

41.5. The respondent submits that it was only on two occasions in the past when the respondent had introduced changes in its cigarette package

design, the applicant had filed C.S. No. 988 of 1979 in the Hon'ble Calcutta High Court and later C.S. Nos. 477 and 478 of 1990 in the Hon'ble

Madras High Court alleging infringement and passing off of its Trade Marks bearing registration Nos. 7678 and 110438. There were no allegations in

the pleadings and consequently no reliefs claimed with regard to alleged infringement of the applicant's copyrights. However, the specific plea raised

by the applicant while seeking reliefs in C.S. Nos. 477 and 478 of 1990 were based on the allegations that the respondent had copied the roundel

design, including the intersecting rectangle, the style of printing, three stars and rectangular border lines in red and tarnished gold, and wide red band at

the top of the packet in the case of regular size filter cigarette package trade dress. The aforementioned three suits were ultimately compromised

based on decrees passed by the Hon'ble Calcutta High Court on 24.06.2002 and by the Hon'ble Madras High Court on 18.07.2003 and 27.06.2003

respectively (hereinafter referred to as the Said Compromise Decrees). It was based on the said Compromise Decrees passed in the aforementioned

suits, that the applicant has been emboldened to file this wholly vexatious application. In fact, by raising this very plea, the applicant had filed C.S. No.

801 of 2015 in the Hon'ble Madras High Court and in application Nos. 1069 to 1071 of 2015 also sought for an interim injunction restraining the

respondent from using its Trade Mark. The said application No. 1069 to 1071 of 2015 was dismissed on 07.12.2015. The applicant being aggrieved by

the said dismissal filed O.S.A. No. 260 to 262 of 2015 and in M.P. No. 1 of 2015 sought for an order of injunction which was also declined by the

Hon'ble First Bench of the Madras High Court by order dated 23.03.2016. A copy of the order dated 23.03.2016 in M.P. No. 1 in O.S.A. No. 260 of

2015 are annexed as Annexure-A1.

41.6. Further, the respondent's market share when compared to that of the applicant is relatively minor. The respondent is also facing severe financial

constraints and has in fact been referred to the BIFR under the Sick Industrial Companies Act, 1985. The applicant has by taking advantage of this

situation and obviously with a mala fide intent to gain monopoly over for the purpose of continuing to dominate the market has been repeatedly

initiating proceedings solely for the purposes of obstructing the respondent from using its registered trademark GOLDEN'S GOLD FLAKE.

41.7. The application pertains to Trademark No. 1387061 registered under class 34. On 23/09/2005 the respondent had applied for the registration of

the said mark under the category of ""Proposed to be Used"". The Trade Mark Registry after issuing the examination report and upon being convinced

with the said explanation had permitted the said mark to be advertised in the Trade Mark Journal, which is identified under Trademark Journal No.

1346-0, dated 16.06.2006.

Inspite for it being advertised in the Trademark Journal, there were no objections raised by the applicant. After satisfying the requirements of the

trademark registry, the registration of the trademark was granted with no right to the exclusive use of the all descriptive and miscellaneous matter

appearing on the label, vide TM Certificate No. 621266, dated 21/03/2007. The said Trademark is also associated with Trademark application Nos.

347870 and 354742. The said proceedings have since become final and binding on the parties.

41.8. The applicant has filed C.S. No. 988 of 1979 before Hon'ble Calcutta High Court, against the respondent's another registered mark No. 347870.

The said suit was filed restraining the respondent from selling and/or offering for sale and/or advertising ""GOLD FLAKE"" cigarettes in packets

bearing the impugned marks being annexures ""D"" and ""F"" to the said plaint and/or and other similar mark which are deceptively similar to the said

labels/marks being annexures ""D"" and ""F"" to the said plaint. The Hon'ble Calcutta High Court had vice order dated 24.06.2002 recorded the Terms of

Settlement between the parties, in terms of which, the respondent had undertaken not to use the labels, marks set out in Annexures ""D"" and ""F"" of the

plaint or any mark deceptively similar to the said labels/marks but will be at liberty to use the labels/and/or marks registered under No. 347870 in Class

34 in respect of Cigarettes pursuant to the consent order dated 20.09.1990 recorded by Mr. T.R. Subramanium, Deputy Registrar of Trade Marks,

Bombay and that the applicant will not in any manner interfere with the respondent's use of the said registered mark no. 347870.

Based on the settlement that was arrived at, the aforementioned suit was decreed on 24.06.2002 in terms of which the respondent had agreed not to

use the offending labels/marks that wee the subject matter of the suit or any mark deceptively similar to the said labels, which undertaking is still being

adhered to by the respondent. As submitted, the applicant had recognized the respondent's right to use the label registered under TM No. 347870.

Despite this settlement, the applicant has filed this application for the removal of TM No. 347870, which was subject matter of the settlement in C.S.

No. 988 of 1979, all of which, would clearly establish that the applicant is violating the Terms of Settlement/decree dated 24.06.2002 that has been

recorded by the Hon'ble High Court of Calcutta. This is annexed as Annexure-A2.

41.9. It is submitted that sine the present application pertains to a trademark that is associated to TM No. 347870 which is the subject matter of the

settlement in C.S. No. 988 of 1979, this would clearly establish that the applicant is violating the Terms of Settlement/decree dated 24.06.2002 that has

been recorded by the Hon'ble High Court of Calcutta. This would also be evident from the letter dated 11.11.2005 submitted by the respondent to the

Trademark Registry, confirming that the present application pertains to and is associated with the TIM No. 347870.

Reply to the Counter Statement under rule 11 of the Intellectual Property Appellate Board (Procedure) Rules, 2003

The trade mark registration number 164653 in Class 34 for the trade mark DIAMOND INDIAN GOLD FLAKE has not been renewed and the same

is liable to be removed from the register of trade marks. In any event, the said registration is not valid or subsisting and in effect has been given a go

by the Respondent. By a reply dated 19.10.2015, the Registrar of Trade Marks has informed the counsel for the Applicant that the said registration

no. 164653 in class 34 does not appear to be in force. Accordingly, the said lapsed trade mark registration which was subsisting in the name of the

Respondent no. 1 herein is of no consequence in the present proceedings. A copy of the reply dated 19.10.2015 received from the Registrar of

Trademarks is annexed as Exhibit A24.

The applicant has denied that the Respondent has even prior to being granted the registration of the said Trade Mark and also since then continuously

and extensively been and continues to use the said trademark ""GOLD FLAKE"" while selling the cigarettes that are being manufactured by it. It is also

denied that the Respondent No. 1 has continuously been using the said Trade Mark 'GOLD FLAKE' by making certain minor changes from time to

time in the overall get-up and combination of colours as alleged or at all. It is stated that the Respondent No. 1's mark is not GOLD FLAKE.

42.1. With regard to the registrations enlisted, it was denied that all the marks are renewed from time to time and the Respondent No. 1 is put to strict

proof thereof.

a) With regard to Trade Mark Application No. 316648, the Registrar of Trademarks by a letter dated 19.10.2015, has informed the counsel for the

Applicant that the said registration in class 34 does not appear to be in force. The said registration in any event is not subsisting. In any event the same

and claim thereto has been given a go by the Respondent. As such no reliance can be placed thereon.

b) With regard to Trade Mark No. 347870, the present application has been filed for its removal on the basis of the grounds stated therein.

c) With respect to Trade Mark Application No. 354742, the same does not appear to be in use and the same is removed. The said registration in any

event is not subsisting. In any event the same and claim thereto has been given a go by the Respondent. As such no reliance can be placed thereon.

d) With regard to Trade Mark No. 1387061, the Applicant has filed ORA No. 82/2016/TM/MUM for its removal on the basis of the grounds stated

therein.

e) With respect to Trade Mark Application No. 347869 the same does not appear to be in use and the Respondent No. 1 has failed to renew the said

trademark and as such the same is of no consequence at all. The said registration in any event is not subsisting. In any event the same and claim

thereto has been given a go by the Respondent. As such no reliance can be placed thereon.

42.2. The Applicant states that on few occasions the Respondent No. 1 attempted to use the trademark GOLD FLAKE in labels similar to the

Applicant's trademark the same resulted in civil suits being filed against the Respondent No. 1, the details of which are given in the Application for

Rectification filed by the Applicant.

42.3. With reference to paragraph 6 of the counter statement, It is denied that at no point in time was there any opposition from the Applicant about

the Respondent's use of the name ""GOLD FLAKE"", which forms an integral part of the Trade Mark for which registration was granted in favour of

the Respondent as alleged or at all. As already established in the rectification application, The applicant has time and again taken steps against the

misuse of the trade mark GOLD FLAKE by the Respondent No. 1 herein and also against other entities. The sales turnover as listed out in para 7 by

the Respondent No. 1 is disputed and the Respondent No. 1 is called upon to prove the same with documentary evidence. I say that the said sales

figures are not supported by proper invoices nor have they been certified by a chartered accountant.

42.4. It was denied that the Respondent No. 1 was using the brand GOLDEN'S GOLD FLAKE or that it was making any changes to its labels, etc.

and put the Respondent No. 1 to strict proof of the same. It was also denied that changes in the permitted use of label on cigarette packs would

clearly establish the fact that the cause of action based on which this Application had been filed has completely disappeared or that the Application as

framed would no longer be maintainable or is consequently, liable to be dismissed as alleged or at all. The application for rectification was filed by my

Company on 18.03.2016, before the aforesaid notifications of the Government of India, Ministry of Health and Family Welfare referred to by the

Respondent No. 1 came into force.

42.5. In reply to paragraph 10 of the counter statement, save and except what are matters of record, the contents of the paragraph were denied and

disputed and the Respondent No. 1 is put to strict proof of the same. I deny that the Respondent No. 1 had only on two occasions in the past

introduced changes in its cigarette package design as alleged or at all. I state that apart from the circumstances leading to the filing of civil suits by the

Applicant Company in the Hon'ble High Courts of Calcutta and Madras, there was no proof of use of the trademark GOLDEN'S GOLD FLAKE by

the Respondent No. 1, and in particular of the impugned trademark registration no. 347870. Hence it was stated it is wrong to say that the Applicant

has not made out even a prima facie case or that with the mala fide intent to harass and cause grave prejudice to the Respondent, has instituted this

present proceeding which for the aforementioned reasons would not be maintainable and therefore, liable to be dismissed in limine as alleged or at all.

42.6. In reply to paragraph 11 of the counter statement, its denied that my Company has been obstructing the Respondent No. 1 from using its

registered trademark. It is the Respondent No. 1 who has been inviting litigations by its infringing activities. I further deny that the Applicant has by

taking advantage of the financial position of the Respondent No. 1 herein and with a mala fide intent to dominate the market has been repeatedly

initiating proceedings solely for the purposes of obstructing the Respondent No. 1 from using its registered Trademark GOLDEN'S GOLD FLAKE as

alleged or at all. It is vehemently denied that the Applicant has any mala fide intent or that the Applicant has any intention to thwart the Respondent

No. 1's growth in the market as alleged or at all. It was denied that the Respondent No. 1 is lawfully entitled to exploit the trade mark GOLD FLAKE

as alleged or at all. I vehemently deny that there is absence of any deception or that GOLD FLAKE marks are being used by the Respondent No. 1

continuously from 2013 as alleged or at all. It is pertinent to point out herein that the Respondent No. 1 has made contradictory statements with

respect to its use of the trade mark. On one hand the Respondent No. 1 says that the Respondent No. 1 has been continuously using the trade mark

since the last several decades and on the other hand the Respondent No. 1 itself claims to be using the trade mark only from the year 2013. Such

statements make it abundantly clear that the alleged use of the trade mark GOLD FLAKE at best is sporadic and/or clandestine and solely to make

profits riding on the goodwill of my company's trade mark GOLD FLAKE. I further state that I am not aware that the Respondent No. 1 has recently

introduced GOLD FLAKE marks in certain parts of India or that they are in no way similar to that of the Applicant's mark so as to cause any

confusion and/or deception in the minds of the public as alleged or at all. It was stated that all these averments made by the Respondent No. 1 are

devoid of any details. I vehemently deny that no act of infringement or passing off could said to have been committed by the Respondent No. 1, or that

in the absence of any cause of action, the Applicant would be disentitled to initiate these proceedings as alleged or at all.

42.7. With reference to paragraphs 12(a) to 12(e) the contents therein are baseless denials and I reiterate the submissions made by my Company in

the corresponding paragraphs of the rectification application. The proceedings before the High Court at Calcutta and Madras High Court and the

settlement/compromise decree are all matters of record which do not call for any comments. I vehemently deny that the Applicant is violating the

Terms of the Settlement/decree dated 24.06.2002 that has been recorded by the Hon'ble High Court of Calcutta annexed to the counter statement as

Annexure-A2 as alleged or at all. I say that it is the Respondent No. 1 herein who has time and again tried to infringe the brand of my company

herein. I say that the Respondent No. 1 has miserably failed to adduce any evidence showing use of the impugned trade mark. I say that the

submissions made by the Respondent No. 1 that this application is wholly vexatious/misconceived or that the Applicant is not entitled to any of the

reliefs as prayed for or that this Application is liable to be dismissed in limine with exemplary costs are absolutely baseless.

Both Rectification applications were heard together for removal of the registered Trade Mark No. 347870 and 1387061. Written submissions have

been filed by the parties separately in both matters.

We have gone through the pleading as well as the material placed on record. Both petitions are filed by the applicant for removal of trademarks

registered in the name of respondent no. 1 under Sections 47 and 57 of the Act.

It emerges from the pleadings of the applicant that the applicant's predecessor in business conceived and adopted the trademark GOLD FLAKE

in the year 1905. The applicant's trademark no. 7678 having the words GOLD FLAKE as its essential feature is registered since 11.11.1942.

It is undisputed facts that the applicant is a registered proprietor of several trademarks comprising of the words ""GOLD FLAKE"" as their essential

features. Over the years, the applicant has applied for different labels but the main features namely (1) words GOLD FLAKE (2) the rounded device,

(3) the device of the star etc. have remained common.

The applicant's sale in FY 2014-15 of GOLD FLAKE cigarettes was Rs. 16,486.71 crores and its sale from April, 2015 - August, 2015 was Rs.

11,846.97 crores. The applicant has been rated as one of the top 5 of India's Most Valuable Companies by Business Today and as the Most Admired

Company by Fortune India. Judicial notice of the applicant's goodwill has been taken by the Bombay High Court in NOM No. 662 of 2014 in Suit No.

431 of 2014- ITC Ltd. v/s NTC Industries Limited.

Now, the only question before us as to whether the respondent no. 1 has used the mark which is the subject matter of trade mark nos. 347870 and

1387061 in Class-34 during relevant period of time as mentioned early and as to whether the respondent no. 1 has produced cogent and clear evidence

about the user of the label is question or the label/mark used by the respondent no. 1 after the consent is closely similar to the mark/label of the

applicant. The registrations of respondent No. 1 of the labels are subject to disclaimer of the words Gold flare, Virginia, Filter, numb oral 10 and device

of Tobacco leaves meaning thereby no exclusive rights are granted of T.M. No. 347870.

The contention of respondent No. 1

It is contented on behalf of the respondent no. 1 that the applicant has approached this forum with frivolous contention that the respondent has

abandoned and is not using their mark ""Golden Gold Flake"" in light of the Consent Decree dated 24.06.2002 by the Hon'ble Calcutta High Court in

C.S. No. 988 of 1979 and Consent Decree dated 27.06.2003 in C.S. Nos. 477 and 478 of 1990 passed by the Hon'ble High Court of Madras in the

previous litigations between the same parties.

It is admitted on behalf of respondent No. 1 that none of the parties has challenged the said Decrees. The respondent no. 1 has also admitted that

consent recorded before the Deputy Registrar of Trade Marks as well as before the Hon'ble Calcutta High Court who has restricted the respondent

no. 1 to use only a particular label/mark, otherwise being the registration is liable to be removed for breach of decrees passed, if the case is made out

of rectification.

The next submission on behalf of respondent no. 1 that the respondent no. 1 is in active manufacturing and sale of cigarettes by the name of

Golden Gold Flake and have used the labels by the respondent. The applicant is only trying to circumference the law laid down by the Hon'ble

Supreme Court of India in respect of consent decree in the matter 'Daljit Kaur and another v/s Muktar Steels Pvt. Ltd. and another 2014(1) RCR

(Civil) 625, 2013(14) Scale 527, 2013(16) SCC 607"", by not adhering to the contents of the compromise and trying to infringe the right of the

respondent to use ""Golden Gold Flake"" in any possible way. This act of the applicant is not permissible in law.

It is also submitted on behalf of respondent no. 1 that invoices countersigned by the Excise Officer as mandated under Rule 11(1) of the Central

Excise Rules, 2002 showing excise division, excise classification, time of removal of the goods, vehicle registration no. and rate of duty as emulated in

Rule (1) of Central Excise Rules, 2002. The invoices show the Golden Gold Flake cigarette directly dispatched to buyer as well as the cigarette

dispatched to buyers from the Branch Offices as well. The above said invoices are already submitted.

It is alleged that the stock transfer meant for sale from the branch offices as earlier put on record are signed by Shri S.P. Malkoti and other

employees of the company, who have been by resolution dated 30.09.2008 authorised to sign the same on behalf of the company and the list of same

is also with the Central Excise Department.

The above fact shows that the above stock transfers to sub offices of company are authentic and were made in respect of goods to be sold from

branch offices as is prevalent in the trade. The copy resolution as well as the intimation of the same to Excise office is also submitted.

It is stated that the respondent no. 1 has produced sales figure in para no. 7 of the counter statement and in furtherance of the same is putting the

certificate of Chartered Accountant, certifying the figures mentioned therein as true. The certificate of Chartered Accountant is also submitted. It is

stated that stock is transferred to branch offices for sale, and this is norm of the trade and the same is also evident from the stock transfer receipts

also by the applicant himself with his petition to sustain his sales figures.

As regard cogent evidence in order to prove the use of label/mark which has been allowed to be used in view of the undertaking given by the

respondent no. 1 before the Calcutta High Court, it is submitted by the respondent no. 1 that the advertisement of cigarettes has been banned

throughout India vide notification of Govt. of India in year 2003 and even surrogacy advertisement of cigarettes is banned, and therefore, no

advertisement of cigarettes is done by any manufacturers and same is not even allowed as per the law. The Govt. of India in India notified ""The

Cigarette and other (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution), Act, 2003"". The

Exhibit A7 of the applicant, in respect of advertisement expenditure itself shows no expenditure after 2003. Advertisements submitted by the applicant

are quite old and their sponsoring a tournament 20 years ago is totally irrelevant in the present case and specially when they themselves have

recognized the right of respondent to the brand name GOLD FLAKE in court of law by Consent Decree in year 2003.

It is alleged that the norms of Government of India in respect of 85% warning came into effect from 26.03.2016 and the present petition was filed

on 18.03.2016 and counter in the present petition was filed on 21.09.2016. At that time, as 85% warning had become mandatory, everyone including

the applicant, had to change their design.

It is stated that the above facts would clearly show that there is no violation of Section-47 and Section-57, on the other hand, the applicant has

stopped using and manufacturing and selling of cigarettes as per the Trade Mark No. 7678. The applicant has filed the present suit so as to establish

the monopoly in the market by taking away the legal right of the respondent no. 1 where the Consent Decrees were passed by two learned High

Courts. The applicant has filed his false petition as it is aware that the respondent no. 1 is continuously manufacturing and selling its cigarettes as per

its registered trade marks. The applicants have not attached or filed any certificates under Section 65B(4) of Evidence Act of the web-poses. Thus

the applicant is bar to use such documents.

The Respondent No. 1 has relied on several purported registrations bearing the words ""GOLD FLAKE"" to defend the removal of the Impugned Trade

Mark under the present rectification. The Respondent No. 1 has relied on the compromise (as stated hereinbefore) between the parties to defend the

present rectification on that ground. The Respondent No. 1 has produced documents purportedly relating to the Impugned Label along with its

Miscellaneous Petition in an attempt to prove the use of the Impugned Label. It is stated on behalf of respondent No. 1 that the restrain orders passed

in three suits are only in retention of these labels which are objected. However, the respondent no. 1 is entitled to use the labels which are allowed by

the courts. The label which is subject of rectification no. 82/2016 to Trade Mark No. 1387061 is not similar to the labels which the restraint orders

were passed. Thus, the question for granting prayer in case no. 82/2016 does not arise. Thus the applicant is not the person aggrieved.

In reply to the additional evidence filed by the respondent no. 1, it is the case of the applicant is that the purported invoices are not genuine since:

(a) the same are not countersigned by an Excise Officer as mandated by Rule 11(1) of the Central Excise Rules, 2002.

(b) the purported invoices do not contain the address of the concerned Central Excise Division, Excise Classification, time of removal of the goods,

vehicle registration number and rate of duty as mandated by Rule 11(2) of the Central Excise Rules, 2002.

(c) the purported invoices do not mention whether they are copies of invoices marked as (i) original for buyer, (ii) duplicate for transporter or (iii)

triplicate for assessee, as mandated by Rule 11(3) of the Central Excise Rules, 2002.

It is alleged that the purported advertisements produced are photographs of wholly dissimilar and different labels.

It is stated by the applicant that the Respondent No. 1 has also relied on the following trade mark registrations which have all been abandoned/are

not in force/not renewed. These do not assist in saving the Impugned Trade Mark.

It is submitted that above marks have also never been used and the Respondent No. 1 has not filed any evidence to show use thereof. The purported

advertisements produced by the Respondent No. 1 are also of some other labels and not of the above-depicted labels. In any event, the Respondent

No. 1 cannot prove use of the Impugned Trade Mark by falling back on the purported use of the allegedly associated trade marks including Trade

Mark No. 164653 (which in any event is not valid and no longer in force since 22.06.2010).

56.1. As has also been stated above, after the Applicant pointed out that the Impugned Label, or for that matter any label featuring the words ""GOLD

FLAKE"" do not appear or form part of the website extract relied upon by the Applicant, the Respondent No. 1 annexed an extract from their website

dated 23.08.2016 where they included some other packs bearing the words ""GOLDEN's GOLD FLAKE"". However, the Impugned Trade

Mark/Impugned Label does not appear even in this extract annexed by the Respondent No. 1.

56.2. It is submitted that the CA Certificate is in respect of the brand ""Golden Gold Flake"" and there is nothing to relate the said CA Certificate to the

Impugned Trade Mark. Further, the same CA certificate has been sought to be relied upon to evidence the use of two different trade marks. The

Respondent No. 1 has clearly not even clarified whether the purported sales figures pertain to Registration Nos. 347870 or 1387061.

It is submitted without prejudice that the CA Certificate is ex-facie ante-dated. In the Miscellaneous Petition, the Respondent No. 1 has pleaded that

after they received instructions/advice from their advocate in Delhi on 20.09.2018, the Respondent No. 1 immediately requested the CA to verify the

sales of GOLDEN'S GOLD FLAKE cigarettes in the preceding years. The Company CA thereafter verified the accounts and issued the CA

Certificate to them. However, interestingly, this CA Certificate is dated 27.08.2018, i.e., almost one month prior to the instruction issued by the

advocate on the basis of which CA was purportedly requested to issue the said certificate. Thus, the CA certificate is wholly irrelevant, not authentic

and cannot be relied on. In fact, the Respondent No. 1's intention to play a fraud on this Tribunal is clearly evident from this document, and the

averments made in respect of the same.

It is stated on behalf of applicant that even assuming for the sake of argument, the purported sales figures pertain to any mark containing ""GOLDEN'S

GOLD FLAKE"" such figures would clearly evince that such sales turnovers is meagre and inconsequential. In fact, such sales figures would only

establish, that the purported use of the mark ""GOLDEN'S GOLD FLAKE"" has always been clandestine, sporadic and only to make easy gains by

riding upon the goodwill and reputation of the Applicant.

56.3. The documents are not originals/certified copies of the photocopies annexed to the Respondent No. 1's Miscellaneous Petition: On a mere glance

at the documents filed, it would be evident that the documents are different from the photocopies annexed to the Respondent No. 1's Miscellaneous

Petition for additional documents and cannot be called to be original or authentic or certified copies. This is in contravention to the specific direction of

the Delhi High Court order dated 13.09.2019. On this ground alone, the additional documents ought not to be considered and should be discarded.

The respondent no. 1 has filed the same set of documents for two different labels: There is nothing to relate the purported invoices/stock transfers

with the Impugned Trade Mark. Hence, these invoices ought to be ignored altogether. In fact, like in the Counter Statement, the Respondent No. 1

has produced the same evidence i.e., the same purported invoices and stock transfers for both Application No. 347870 and 1387061. It goes without

saying that the same purported invoice cannot possibly evidence use of two different labels. Thus, these purported invoices ought to be rejected at the

threshold. It may also be noted the Respondent No. 1 has filed several purported invoices pertaining to the years 2016 and 2017 which are beyond the

relevant period, in an attempt to mislead the Hon'ble IPAB.

Moreover, the CA Certificate filed by the Respondent No. 1 mentions the purported ""sale effect ed pertaining to the company's Brand ""Golden Gold

Flake"" for the under mentioned period ."" Thus, this CA Certificate is purportedly in respect of the brand ""Golden Gold Flake"" and there is nothing to

relate the said CA Certificate to the Impugned Trade Mark. Further, the CA certificate produced has been sought to be relied upon to evidence the

use of two different trade marks, i.e., label mark under Application No. 347870 and 1387061. Both the labels are different. Moreover, as has been set

out in detail below, this purported CA Certificate is ex-facie ante-dated, wholly irrelevant, not authentic and cannot be relied on. In fact, the

Respondent No. 1's intention to play a fraud on this Tribunal is clearly evident from this document, and the averments made in respect of the same.

56.4. GTC's PRODUCTS - PACKAGING -: In the Miscellaneous Petition, the Respondent No. 1 has produced photographs of labels of cigarette

packs which are completely dissimilar to the Impugned Trade Mark. In any event, such labels produced in the Miscellaneous Petition are wholly

irrelevant as the labels are affixed on packs with 85% statutory health warning. This warning under The Cigarettes and Other Tobacco Products Act,

2003 (COTPA) was introduced only with effect from 01.04.2016. Thus, the new products/packaging produced by the Respondent No. 1 is after the

relevant period during which the Respondent No. 1 is required to prove use of the Impugned Trade Marks. The packs produced in the Miscellaneous

Petition are clearly manufactured for the purpose of present litigation and are of no consequence; it is evident from the cigarette packs produced with

the Miscellaneous Petition that they were manufactured in the year 2018.

56.5. As stated above in the counter statement, the Respondent No. 1 has averred that the Golden's Gold Flake cigarette packs has undergone

substantial alterations and variations"" including in the design, colour combination, get up etc. In the counter statement, the Respondent No. 1 has

produced purported advertisements and its website containing Golden Gold Flake packs with different labels altogether. There is nothing in the said

purported invoices/stock transfer relate Respondent No. 1 to the Impugned Trade Marks and therefore the same are irrelevant and ought to be

ignored entirely.

56.6. It is submitted on behalf of applicant that in addition to the above infirmities which are sufficient to ignore the new evidence of purported invoices

altogether, the Respondent No. 1 has attempted to rely on purported invoices which ex facie cannot be treated as evidence and which do not pertain

to the Impugned Trade Mark.

It is stated on behalf of applicant that the Respondent No. 1 has produced 412 purported invoices for the relevant period (see Relevant Period above),

i.e., up to 21.12.2015. It is submitted that 278 of such purported invoices are ex-facie stock transfers. Such fact would be apparent from a mere

glance at the index filed by the Respondent No. 1 for each of the volumes. For convenience, relevant page numbers along with volume reference are

given below:

It is alleged that in order to prove use as contemplated under the Trade Marks Act, commercial and genuine use has to be proved. Such use must be

one which is of some benefit or profit to the person. It is submitted that though stock transfers mention value of the goods/cigarettes, they are not of

any profit to the Respondent No. 1. Therefore, stock transfers cannot be considered to be actual use of the Impugned Trade Mark under the Trade

Marks Act, 1999.

56.7. It is submitted that in the remaining 134 purported invoices, 75 purported invoices pertain to the brand ""GGF Special"". It is submitted that the

Impugned Trade Mark does not contain the word ""Special"". Therefore, these also ex-facie does not relate to the Impugned Trade Mark. Relevant

pages are given below:

It is submitted that out of the remaining 59 purported invoices, 4 purported invoices do not mention the mark ""Golden Gold Flake"" and are of no

consequences to present proceedings. It is submitted that of the remaining 55 purported invoices, 9 purported invoices pertain to marks in different size

packs/packaging, i.e., packs containing two cigarettes, five cigarettes etc. The Respondent No. 1 has not produced any pack bearing the Impugned

Trade Mark in this size. Therefore, even these do not relate to the Impugned Trade Mark. It is submitted that of the remaining 46 purported invoices,

1 purported invoices mention the mark ""GOLDEN GOLD FLAKE MATRIX"". This is a separate mark with a different label. The Respondent No. 1's

application for registration of this mark was opposed by the Applicant. Subsequently, the Respondent No. 1 abandoned such application. For the

remaining 45 purported invoices, and in fact for all the purported invoices relied upon by the Respondent No. 1, there is nothing to relate the purported

invoices with the Impugned Trade Mark. Hence, these invoices ought to be ignored altogether. The fact remains that the Respondent No. 1 has relied

upon same set of purported invoices for the other mark under rectification, i.e. Application No. 1387061, as well.

In this connection, it is submitted that Rule 93 of the Central Excise Rules, 1944, (repealed in the year 2002) mandated that each label used in

connection with a cigarette packet shall be submitted to the Excise Commissioner for his approval before they are brought into use. The relevant

portion of the rule is reproduced herein below for ready reference:

Central Excise Rules, 1944

D. MANUFACTURED TOBACCO

Manufacture and disposal of excisable tobacco products.-

No excisable tobacco products shall be delivered from any factory except under the following conditions:-

(b) Each such packet, whether retail or wholesale, shall be enclosed by, and at the expense of, the manufacturer, in a wrapper or other outer covering,

and, unless exempted by the Central Board of Excise and Customs, by general or special order, each such packet, or the manufacturer's label affixed

thereto, shall bear in clearly discernible characters, the following particulars-

(i) the name and address of the factory;

(ii) the number of his Registration Certificate in Form L4; and

(iii) the trade brand of the product.

Specimens of all such wrappers, outer covering or labels shall be submitted to the Commissioner for his approval before they are brought into use.

In respect of the Impugned Label, the Respondent No. 1 has not produced any letter in terms of Rule 93 intimating the excise authorities of its

intention to use the Impugned Label or any letter from the concerned excise authorities granting such approval.

It is submitted on behalf of the applicant that there is not a single point of sale material, newspaper advertisement or any other advertisement

which shows that the photographs were actually used for publicity which would be the case in the event of any bonafide use. The respondent has also

not pleaded special circumstances for non-use of the trade mark. Thus, there is clearly an intention to abandon the impugned trade mark. [Hardie

Trading Limited v/s Addison Paint (2203) 27 PTC 241(SC) ]

Discussions

As already mentioned during the pendency of opposition proceedings, the respondent had applied for amendment of TM No. 347870 (the

impugned trademark) by completely changing the design especially the use of the rounded and intersecting rectangle with GOLD FLAKE written on

it. The new label comprised of a rectangular box with GOLD FLAKE written inside and a design of leaves on the bottom and top of the rectangle.

In the opposition proceedings on 20.09.1990, a settlement was arrived at by which the Deputy Registrar of Trademark allowed the request on Form

TM-16 dated 13.09.1990 for amending the label as described hereinabove. He further put a disclaimer on the words GOLD FLAKE, VIRGINA

FILTER, numeral 10 and device of tobacco leaves.

In view of the amendment and substitution of the label sought to be registered, the applicant withdrew its Opposition No. BOM-4946 and the

impugned trademark 347870 proceeded to registration. The terms of settlement and order passed thereon on 20.09.1990 are reproduced below:-

THE TRADE AND MERCHANDISE MARKS ACT, 1958

Before the Deputy Registrar of Trade Marks

IN THE MATTER OF

Application No. 347870 in the

name of M/s. GTC Industries

Limited, Tobacco House, Vile

Parle, Bombay-400056 in Cl. 34

AND

IN THE MATTER OF

Opposition No. BOM-4946 thereto

By M/s. I.T.C. Limited, Virginia

House, 37, Chowringhee,

Calcutta-700071.

ORDER

Proceedings having been taken under Section 21 of the Trade & Merchandise Marks Act, 1958 by the abovenamed Opponents to oppose the

registration of the mark applied for by the abovenamed applicants and in view of the settlement arrived at between the parties and the request on form

TM-16 dated 13.9.90 and 17.9.90 filed by the applicants for amending the label and the name of the applicants, it is hereby ordered that:

The request on form TM-16 dated 13.9.90 for amending the label is allowed.

The request on form TM-16 dated 17.9.90 for amending the name of the applicants to GTC Industries Limited is allowed.

The application shall proceed to registration subject to disclaimer of the words GOLDFLARE, VIRGINIA, FILTER, NUMERAL 10 and DEVICE

OF TOBACCO LEAVES.

The Opposition No. BOM-4946 is treated as withdrawn.

The amended label as substituted to be notified in the Trade Mark Journal.

There is no order for costs as agreed to between the parties.

Signed and Sealed at Bombay this 20th September, 1990.

29th day of Bhadra, 1912(Saka)

Sd/-

(T.R. SUBRAMANIAN)

Deputy Registrar of Trade Marks

It is admitted position that this amended label as depicted above which is the subject matter of the present rectification being

ORA/81/2016/TM/MUM. It is the case of the applicant that despite registration, the respondent never used the mark at any time after the settlement

on 20.09.1990 before the Deputy Registrar of Trademarks.

It is not denied on behalf of respondent No. 1 that on 24.06.2002, the applicant's suit in Calcutta High Court - CS No. 988 of 1979 was decreed on

the basis of compromise entered into between the applicant and respondent where (i) the respondent undertook not to use the infringing/offending

labels impugned in the said suits (ii) the applicant agreed not to interfere with the respondent's use of the Impugned Trade Mark, except the label

which was subject matter of Registered Trade Mark no. 347870 where the consent of the parties was recorded by the Deputy Registrar of

Trademarks on 20.09.1990.

It is the case of applicant that the respondent has never used the impugned TM even after the compromise of 2002. Therefore, the respondent had

no bonafide intention to use the impugned mark at the time of registration or thereafter in 1990 or 1992 or 2002. Copy of terms of settlement is

reproduced.

Suit No. 988 of 1979

IN THE HIGH COURT OF CALCUTTA

Ordinary Original Civil Jurisdiction ITC Limited an existing Company within the meaning of the Companies Act 1956 having its Registered Office at

Virginia House, 37 J.L. Nehru Road, Kolkata 700071, within the aforesaid jurisdiction

..Plaintiff

Versus

Golden Tobacco Company Limited an existing Company within the meaning of the Companies Act, 1956 having its Registered Office at Ville Parle,

Mumbai 400056, outside the aforesaid jurisdiction.

Calcutta Trading Company, a firm carrying on business at 167, Netaji Subhas Road, Kolkata 700001, within the aforesaid jurisdiction

Defendants

TERMS OF SETTLEMENT

By consent of the parties the above suit is settled and disposed of on the terms and conditions as stated hereunder:-

It is recorded that the defendant No. 1 Golden Tobacco Co. hereby gives an undertaking to Court that it will not use the Labels or Marks being

annexures 'D' and 'F' of the Plaint or any Mark deceptively similar for the said Labels/Marks being annexures 'D' or 'F' to the Plaint but the defendant

will be at liberty to use the Labels and/or Marks registered under No. 347870 in class 34 in respect of Cigarettes pursuant to the consent order dated

20th September 1990 of Mr. T.R. Subramanium, Deputy Registrar of Trade Marks, Bombay and the plaintiffs will not interfere with the defendant

No. 1's use of the said Registered Mark No. 347870 in any manner. In this connection copies of the above (i) consent order (ii) the Registration

Certificate dated 13th November 1992 issued by the Registrar of Trade Marks, Bombay and (iii) the Registered Label/Mark under above Registration

No. 347870 are filed herewith and marked as Annexure 'A', 'B' and 'C' respectively and the same be kept on record and be a part of these

proceedings.

It is recorded that each party will pay and bear their own costs and incidental expenses of this Suit.

It is recorded that in view of the settlement arrived by and between the parties as stated herein above, the above suit is disposed off accordingly

and all interim orders stand vacated.

All parties will act on the signed copy of the minutes of the order on usual understanding.

It is pertinent to mention here that on 06.01.1992, one of the TM applications filed by the applicant comprising of GOLD FLAKE as its essential

feature came up for hearing before the Deputy Registrar of Trademark, Calcutta. The respondent opposed this application (CAL-1565) and cited the

impugned trade mark No. 347870 in its objection. The Dy. Registrar allowed registration of the applicant's trade mark and dismissed the respondent's

opposition in a well-reasoned judgment [reported in 1992 (12) PTC 73].

Both parties earlier addressed the arguments on many occasion. When the matters were taken for final argument on 08.08.2019, the respondent

no. 1 referred two applications for taking additional documents on record before the date fixed. The applications were rejected by order dated

09.09.2019, however, on filing the Writ Petitions no. 9490/2019 by the respondent no. 1 for taking the additional documents on record. The prayer was

allowed on certain conditions by order dated 16.09.2019 by the Hon'ble High Court of Delhi. The respondent no. 1 as per compliance has filed the

additional documents and costs were also paid. The validity and genuineness of the documents are still challenged on behalf of applicant.

The matter was taken up for further hearing, however, arguments could not be completed due to COVID-19. With the consent of parties The

matters were put up for final hearing on 01.07.2020 for remaining arguments. The proceedings were conducted through video conferences. The

arguments were concluded on 01/07/2020 by both parties.

The case of applicant is that it was a dishonest act of respondent no. 1 who has to be stopped somewhere. Therefore the two rectification

petitions have been filed for non-user.

Legal proposition

Under Section 47(1)(a) of the Trade Marks Act, a registered trade mark has to be taken off the register if such trade mark was registered without

any bona fide intention to use the mark in relation to the goods or services.

Time and again, on the issue of non-user of the mark, the courts have held that a genuine and real intention to use a mark was dealt by the

Supreme Court in Kabushiki Kaisha Toshiba Versus Tosiba Appliances Company and others reported in (2009)10 SCC-766 where the Hon'ble

Supreme Court has observed as follows:

The intention to use a trade mark sought to be registered must be genuine and real. When a trade mark is registered, it confers a valuable right. It

seeks to prevent trafficking in trade marks. It seeks to distinguish the goods made by one person from those made by another. The person, therefore,

who does not have any bona fide intention to use the trade mark, is not expected to get his product registered so as to prevent any other person from

using the same. In that way trafficking in trade mark is sought to be restricted"".

The said preposition of law has not been disputed by the respondent No. 1. The burden of proof to establish the user during relevant period is

always upon the registered proprietors. Thus there is no force in the submissions on the respondent no. 1 that since the certificate under Section 65(2)

is not filed, therefore, web-poses cannot be examined. These are the documents belonging to respondent no. 1. The respondent no. 1 could have

denied such documents specifically.

In Imperial Group Limited V/s. Philips Morris Company Limited, reported in 1982 FSR 72(CA) where the Court of Appeal held the following:

According to the judgments given in this court in that case a bona fide use should be ""ordinary and genuine"" (per Lord Evershed M.E. at p. 36),

perfectly genuine,"" ""substantial in amount,"" ""a real commercial use on a substantial scale"" (per Jenkins L. J. at p. 41) and not ""some fictitious or

colourable use but a real or genuine use"" (per Morris L.J. at p. 42).The plaintiffs never intended to use the mark ""Nerit"" in the ordinary course of their

business; their use of it was not substantial; it was not a real use in any commercial sense; it was a colourable stratagem for making their trade rivals

think that they were using the mark ""Nerit"" in a way which gave it the protection of the Act

No bonafide use of the Impugned Trade Mark, thus attracting Section 47(1)(b) Under Section 47(1)(b), a registered trade mark will be removed if

a continuous period of five years has elapsed after registration of the mark, prior to three months form the date of filing of the Application for

Rectification, wherein the Impugned Trade Mark has not been used, unless special circumstances exist which prevented the registered proprietor from

using the trade mark.

When the proceedings under section 47(1)(b) non use for statutory period of five years is admitted as a fact, then the defence that the non-use

must be proved by a party taking a defence. The onus is upon the registered proprietor who is claiming continuous user. The use here means

impugned trade mark label and not some other label which is extensively alters.

From the material on record. it is apparent that the Respondent No. 1 has not undertaken any use, much less bona fide use, of the Impugned Trade

Mark. The Impugned Application was filed in the year 1979. The label for which the application was filed, was amended to its present form

(Impugned Label) on 13.09.1990 and it was registered on 13.11.1992. There is no evidence of any use of the Impugned Label in this period. There is

also no evidence of any use of the Impugned Label subsequently, and especially during the relevant period.

In the present case in response to the Applicant's specific case that the Impugned Label has not been put to use the Respondent No. 1 has

specifically admitted substantial alterations and variations to its labels in its pleadings. The relevant parts are as follows:

the Respondent have from time to time redesigned and changed the colour combinations and get-up of their respective packets/cartons in which the

cigarettes have and continue to be sold under the brand name Gold Flake The Respondent has made further changes in the get-up of the

packets/cartons of its cigarettes that are being sold under the brand GOLDEN'S GOLD FLAKE.

It is further submitted that owing to variations in the type of cigarettes that are being launched from time to time in keeping with constantly changing

market trends, an acute need is constantly being felt to reinvent the design and package as well .

the Respondent have from time to time, inter alia, been altering their respective get-up/colour combinations and/or trade dress of their cigarette packs

. But there have also been instances where the entire package design/trade dress has been changed.

The case of M/s. Lachhmandas Biharilal vs. Bhagwan Dass etc., ILR (1977)1 Delhi 327 the Hon'ble Delhi High Court, has already taken notice

of the principle followed by the Bench in TOOFAN MAIL's case (unreported) that a matter may also be decided on the basis of facts that were

disclosed from the admission of a party in their statement before the Court, and has further quoted that:

. The Division Bench on appeal found that the addition of the train with a down signal substantially affected its identity and the distinguishing

feature of the mark as used was the train and not the writing around it and so the addition in the registered trade mark was held to be substantially

affect its identity. The Court observed that in view of the matter, admittedly the trade mark as registered had never been used by the appellant-firm;

the trade mark was registered in June 1949 and the appellant-firm had not been using its for ten years; and it was clear from the written statement of

the appellant-firm that it has neither used nor intended to use the trade mark as registered and that it has been using before and after its registration .

Consequently, they had never intended to use the trade mark as registered. With these observations, the appeal was dismissed.

Whether or not a party had a bona fide intention never to use the trade mark must be established as a fact on the material placed on record. Once

the alternative of trademark label is done, it amounts to breach of condition of registration. If a condition is broken, it is open to the Registrar or IPAB

to remove the mark on the ground that the party had no intention to use the mark as registered in the present case, the respondent No. 1 in its

pleadings admitted that the design/packages were altered/changed. The requirement of law is that the party mint the label mark as registered.

It is well-settled that once an Applicant for Rectification pleads non-use of the trade mark based on cogent material, the Respondent No. 1 must

specifically deny setting out the facts on which he denies non-use of the trade mark. The burden of proving bonafide use as also bonafide intention to

use is wholly on the Registered Proprietor/Respondent No. 1. This burden has not been discharged by the Respondent No. 1.

Admitted facts

It is not denied by the respondent No. 1 that the first settlement was arrived between the parties before the Registrar of Trade Marks on 20/09/1990

where the respondent no. 1 was allowed to amend the application for registration of label which is the subject matter of now petition no. 81/2016

under No. 347870. The said application was filed for registration on 05.04.1979 as a label mark. As first label (unamended) was similar to the label of

the applicant, prior to the said settlement recorded on 20/09/1990, the applicant filed a suit for infringement before the Calcutta High Court being suit

no. 988/1979. It is a matter of record, the said label was subsequently changed. Thus the consent was given by the applicant to the amended label

only.

During the pendency of the said suit, the respondent no. 1 adopted and launched similar products under two labels. The applicant filed two suit no.

477/90 and 478/90 before Hon'ble Madras High Court who passed the interim injunction on 24/07/1990.

The injunction was confirmed by the Division Bench of the Hon'ble High Court of Madras by judgment dated 05.02.1991. The S.L.P. was also

dismissed on withdrawn on 07.09.1995.

While decreeing the suit, the respondent no. 1 was allowed to use two labels which were dis-similar to the labels of the applicant. The picture of

the same are displayed in para -24 of our order. Both suits were decreed in favour of the applicant and the respondent No. 1 were permanently

restrained to use the objected two labels.

Subsequently, suit pending before Hon'ble Calcutta High Court was also settled on 27.06.2002 where the decree for permanent injunction was

passed. As per settlement, the respondent No. 1 was allowed to use the label which was the subject of the label registered under No. 347870 in view

of settlement already arrived on 20.09.1990.

It is undisputed fact that the respondent no. 1 over all allowed three labels, the pictures of which are mentioned in para 2 and 24 of our orders

which were allowed by the two Hon'ble High Courts on the basis of settlement arrived. The Calcutta High Court suit was decreed on 24.06.2002 and

two suits were decreed on 27.06.2003 by the Madras High Court. In normal course it was appropriate for the respondent No. 1 to restrict with these

three labels. However, it has not happened in the present case as the respondent No. 1 were using the labels other than the label allowed by both

court for commercial gain.

Yet again, the respondent No. 1 in 2015 in breach of undertaking/decrees passed by the two Hon'ble High Courts adopted and used two labels

which are different than the labels allowed by the two courts. The applicant filed C.S. No. 801/2015 before Madras High Court. The injunction was

passed, which is confirmed upto the Supreme Court. Thus inference can easily be drawn that the respondent no. 1 from very beginning adopting and

using re-designed/altered/modified labels from time to time.

The respondent No. 1 has also filed a large number of applications for registration for further label other than three labels allowed by the courts by

not restricted to these labels. There are no valid reasons given when enquired.

In the pleadings, it was admitted by they respondent no. 1 that the label allowed by the Hon'ble High Court of Calcutta, which was the subject

matter of trade mark no. 347870 on 24.06.2002 was re-designed/altered. The justification given cannot be accepted in view of breach of undertaking

given and on the basis of undertaking the decrees were passed.

There is no valid justification on the respondent no. 1 because of the reason once the first settlement arrived between the parties before the

Registrar of Trade Marks on 20.09.1990 and the label under no. 347870 was allowed then why the respondent No. 1 had been using the

redesigned/altered labels after the settlement. In normal course, the prudent party would restrict to the undertaking given to courts. Not only that, the

respondent no. 1 had continued to file fresh applications for registration of the labels which were other than the labels allowed by the two courts by

virtue of settlement. The said act of respondent no. 1 is not acceptable in law and it amounts to disrespect to the courts who had passed the decree for

permanent injunctions against the respondent no. 1. It went upto 2015 when the fourth suit was filed. It appears to us that it may have been done for

the purposes of commercial gain.

The case of applicant is that it was a dishonest act of respondent no. 1 who had to stop somewhere, therefore the applicant left with no option to

file two rectification petitions on the grounds of non-user of label as registered. for non-user.

86 The Applicant has correctly able to establish the following facts and material that there is no bona fide intention to use and in fact non-use of the

Impugned Trade Mark by the Respondent No. 1:-

a) The trade is not aware of the Respondent No. 1's Impugned Trade Mark which is clear from the various affidavits of the persons in the trade -

Wholesale dealers from New Delhi, Hyderabad, Kolkata, Jaipur, Thrissur, U.P. and Bangalore have affirmed on oath that they have never heard of

GOLDEN'S GOLD FLAKE and/or seen the Impugned Trade Mark and more particularly they have confirmed that the trade mark ""GOLD FLAKE

is exclusively associated with the Applicant.

b) There is no mention of the words GOLDEN's GOLD FLAKE on the Respondent No. 1's Website in an extract downloaded on 26.02.2016. The

Respondent No. 1's website listed other marks such as PANAMA, CHANCELLOR etc. but the Impugned Trade Mark, or, for that matter, any other

label bearing the words ""GOLDEN's GOLD FLAKE"" are conspicuous by their absence. In fact, upon pointing out the above, the Respondent No. 1

annexed an extract from their website dated 23.08.2016 where they included some other packs bearing the words ""GOLDEN's GOLD FLAKE

However, the Impugned Trade Mark/Impugned Label does not appear even in this extract;

c) The Respondent No. 1 has repeatedly failed to show bona fide use of the Impugned Trade Mark (or the mark GOLDEN'S GOLD FLAKE) before

the Trade Marks Registry and the courts in diverse proceedings. For instance:

Proceedings where the Respondent No. 1 has failed to show use

In Trade Mark Application No. 348904 in Class 34:

On 04.05.1979, the Applicant filed a trade mark application being Trade mark Application No. 348904 for registration of a label containing the

trade mark ""GOLD FLAKE"". This application was opposed by the Respondent No. 1 and it was contended, among other grounds that the trade mark

GOLD FLAKE"" is descriptive and common to trade. The Dy. Registrar of Trade Marks, by his order dated 06.01.1992 [reported in 1992 (12) PTC

73], rejected the opposition filed by the Respondent No. 1 and allowed the application of ITC Ltd to proceed to registration, holding that (i) the words

GOLD FLAKE"" are distinctive of the Applicant and (ii) there is no evidence of use of any other label comprising of the words ""GOLD FLAKE"" by

any other trader including the Respondent No. 1. No appeal was filed.

In Trade Mark Application No. 619143 in Class 34

On 10.02.1994 the Applicant filed for registration of its trade mark comprising of the words ""GOLD FLAKE"" as its essential feature. The Respondent

No. 1 filed an opposition being Opposition No. CAL-57394. Despite getting several opportunities, the Respondent No. 1 failed to prove use of its trade

marks and in fact it failed to file its Affidavit of Evidence in Support of the Opposition. The then Senior Examiner of Trademark, Kolkata, vide Order

dated 01 February 2010, rejected the Respondent No. 1's objection and allowed the registration of the mark in favour of the Applicant.

d) Pertinently, the Hon'ble Madras High Court as recently as on 26.07.2018 has observed that: "". The Defendant has failed to show honest, regular,

open and bonafide user of the Trademark GOLDEN'S GOLD FLAKE"".

In the counter statement Respondent No. 1 has not specifically claimed use of the mark as registered. They have claimed to be using an altered

and varied mark. In the pleadings very vogue statements are made. The respondent No. 1 has taken middle path which neither here nor there. There

is no specific statement in the counter-statement that the respondent no. 1 is using only three labels allowed by the Calcutta High Court and Madras

High Court after time of passing the decrees for permanent injunction in favour of the applicants. The same statement is deceitful, the question is why

the respondent no. 1 has filed large number of fresh applications after passing the decrees and settlement and why re-designed/altered labels used In

normal course, the respondent no. 1 ought to have restricted to those labels only which were allowed by the courts. The respondent no. 1 has used

other labels as per record which were not allowed by the courts. There is no cogent and clear evidence is available on record to show that the

respondent No. 1 has only used those label as registered by them. The pleadings and evidence produced by the respondent no. 1 indicate that the

impugned trade marks were not used as registered. The Respondent No. 1 has repeatedly stated that new designs were used with changes in the

colour combination, get-up etc. so as to re-invent the packs. The Respondent No. 1 has also admitted that the pack/designs/trade dresses have been

changed. We are not concerned with the altered labels. We are only concerned with the labels which are subject matter of present two rectification

where the applicant has sought removal. We are aware that we are not empowered to pass injunction order against any label nor we are empowered

to interfere with any decree passed by any courts. Our jurisdiction in the above matters only lies in view of independent jurisdiction under Section 47

and 57 of the Act.

The purported ""evidence"" produced by the Respondent No. 1 in both the counter statements in ORA/81/2016/TM/MUM and

ORA/82/2016/TM/MUM is same. The Respondent No. 1 has even sought to file an identical set of purported 48 stock transfer documents purporting

to be ""invoices"" as evidence of use of two different trade marks label. Not only that the respondent No. 1 has used the same invoices and documents

filed in support of applications filed in breach of two decrees passed by the court in order to claim user for different label. How is it possible that for

different label same identical evidence is used.

It is a matter of fact that once a particular label mark has been allowed by the Hon'ble High Court of Calcutta which is the subject of trademark

No. 347870, the respondent No. 1 was to restrict itself to that label. But it appears that a decree for permanent injunction has been breached. The

respondent no. 1 has failed to file the affidavits from the trade in order to rebut the affidavits/case of the applicant to establish that the respondent No.

1 had only used those labels which are allowed by the two Hon'ble High Courts. If they were obeying the decrees, then why they are adopting and

using the different labels against which the Madras Division Bench has restored the injunction in a suit filed in 2015 and now it is also confirmed by

Supreme Court. Why the respondent no. 1 was not sincere to the labels allowed by the courts. Why fresh applications were filed after passing the

decrees in the year 2002 and 2003 and injunction order in the year 2015. It is a matter of fact that once the decrees are passed, the judgment debtor is

duty bound to comply the same strictly as per terms of the settlement.

This IPAB Tribunal is only concerned the rectifications and relief claims therein. About the non-user of the marks, IPAB is not empowered to

pass any injunction orders of the labels allowed by the Hon'ble High Court of Calcutta and Madras High Court. IPAB has independent jurisdiction to

remove the same from the Register under Section 47 and 57 of the Act. As far as use of the said trade mark in commercial market is concerned, we

do not wish to make any comments. Consequences of law will follow if prayer in the portion is allowed.

It is stated on behalf of the applicant that it is evident, the purported invoices filed by the Respondent No. 1 were to mislead the Tribunal/Board

and to stall the proceedings. They clearly do not pertain to the Impugned Trade Mark. It is respectfully submitted that it is for the Respondent No. 1 to

establish that the invoices relate to the Impugned Trade Mark and the Applicant is not required to prove the opposite. It is humbly submitted that the

invoices produced by the Respondent No. 1 are irrelevant, extraneous and cannot be countenanced to establish the use of the Impugned Trade Marks.

Some of these purported invoices before the Trade Marks Registry, pertaining to the following applications, in December, 2019:

The Respondent No. 1 has not even clarified whether the purported invoices pertain to Registration Nos. 347870 or 1387061. On the face of them,

they are stated to be 48 internal ""STOCK TRANSFERS'. Stock transfers do not reflect commercial use and sale. The purported invoices (stock

transfers) are not genuine since: (1) the same are not countersigned by an excise officer as mandated by Rule 11(1) of the Central Excise Rules 2002;

(2) the purported invoices do not contain the address of the concerned central excise division, excise classification, time of removal of the goods,

vehicle registration number and rate of duty as mandated by Rule 11(2) of the Central Excise Rule, 2002; (3) the purported invoices do not mention

whether they are copies of invoices marked as (i) original for buyer, (ii) duplicate for transporter or (iii) triplicate for assessee, as mandated by Rule

11(3) of the Central Excise Rule, 2002.

Admittedly, the Respondent No. 1 had filed some of these purported invoices before the Trade Marks Registry, pertaining to the following

applications, in December, 2019:

As appeared above the validity of genuineness challenged by the applicant, it would have better for the respondent no. 1 if the respondent no. 1

would have filed separate set of invoices in order to show the use of impugned labels (if used) i.e., another set is for the re-designed/altered labels It is

impossible to judge that the respondent no. 1 has filed invoices and documents as evidence are only pertaining to the impugned labels but some are

used. In the fresh number of applications for altered labels in order to claim the user. Now it is possible and allowable to the respondent No. 1 to use

the same set of invoices in support of fresh/new applications before the Registry.

There is no material, advertisement or any other document which shows that the Impugned Trade Marks were actually used as the case would be

in the event of any bonafide use. The purported advertisements produced in the Counter Statement are mere photographs of wholly dissimilar and

different labels and are irrelevant for deciding the present rectification proceedings.

In nutshell the position is that there is no cogent, evidence is available on record to prove that the documents/evidence produced is in relations to

trade mark labels which are the subject matter of present rectification petitions

As far as use of label which is subject matter of trade mark no. 347870 in class 34 being rectification no. 81/2016 is concerned, in our mind that

the respondent no. 1 has failed to provide any evidence about user the said label as registered. In the pleadings, the respondent no. 1 has admitted that

respondent no. 1 has re-designed/altered the label. Thus, under the strict provision of Section 47 as it was done by the respondent no. 1 for

commercial gain. It has come on record that there is no cogent and clear evidence about the use of label as registered. Thus, it is also wrongly

remaining in Register of Trade Mark without any sufficient cause and the same is removed from the Register in the interest of public and purity of the

Register.

With regard to second rectification no. 82/2016, the application for registration of label mark was filed on 23.09.2005, the mark was registered on

21.03.2007. Originally the application was filed after passing the decree for permanent injunction against the respondent no. 1. The said label applied

for was not the subject of three lab ells allowed by the two Hon'ble High Courts of Calcutta and Madras. One is failed to understand, why such

application was filed. The respondent no. 1 should have been restricted to the label allowed by the courts to the respondent No. 1. This label was

never allowed by the court. This label was also not the subject matter of two suits filed by the applicant against the respondent no. 1. There is no

cogent and clear evidence is produced. It appears to us that the respondent No. 1 is using the same invoices in related to many registered trade marks

and pending applications. Thus, the mark is removed from the Register of Trade Mark under Section 47 of the Act and also under Section 57 as the

entry wrongly remaining on the Register without any sufficient cause.

The respondent no. 1 has no bona fide intention to use both impugned labels registered with respect of its product and as such merely blocking

the Register. In the interest of public both are removed from the Register.

The prayers in both petitions are allowed. Copy of the order be sent to respondent no. 2 to take necessary steps to remove the marks from the

Register.

No costs.