Itc Limited vs Three-N-Products Pvt. Ltd.

Prabha Sridevan, J

In all the above cases, facts are identical. The marks are label marks containing the words 'AYUR' and are in respect of goods of different classes,

namely

ORA/60/2006/TM/DEL -- No. 536259B in class 31

ORA/61/2006/TM/DEL -- No. 536260B in class 32

ORA/80/2006/TM/DEL -- No. 536258B in class 30

ORA/101/2006/TM/DEL -- No. 536257B in class 29

The applicant seeks revocation of the marks on the ground that they have not been used, they are in contravention of S. 9, 11 and S. 18(1) of the

Trade Marks Act, 1999 and they are not distinctive of the goods of the respondent.

The applicant is a leading company in India engaged in manufacturing diverse goods. They have applied for registration of the marks

AYURVIBHA, AYURUVAR and AYURBHOG and had obtained registration. In May 2004, the respondent instituted C.S. No. 124/2004 in the

Hon'ble Calcutta High Court for restraining the applicant from using the above marks ""or any other marks with the word Ayur as a prefix or suffix.

On 10th June, 2004, ex parte injunction was granted against the applicant. On coming to know from the plaint filed by the respondent, that they had

obtained registration for the trade mark AYUR in class 29, 30, 31 and 32 in Nos. 536257B to 536260B respectively, the applicants had filed these

petitions for rectification.

According to the applicant Ayur per se is generic and not distinctive nor inherently capable of distinguishing the respondent's goods. Along with the

rectification application, the applicant has filed the interim injunction order dated 10/06/2004 and the web pages using the key words Ayur.

The respondent filed his counter statement claiming that they had been engaged in the manufacture of cosmetic products, ayurvedic formulas, body

case and health care products since 1984 under the trade mark Ayur. They had obtained registration in respect of several goods in several classes and

in several countries. They had acquired considerable reputation and have spent huge amounts in respect of the trade mark Ayur. According to them,

the products are being sold by various permitted users namely M/s. R.D.M. Products Private Limited, M/s. Ayur International and Paratha Junction.

The respondent contented that the applicant is not a person aggrieved and the grounds under S. 47(1)(b) of the Act will not arise since the continuous

period of use of 5 years and 3 months as per the section is not completed. According to the respondent, the trade mark Ayur is an invented word. The

Hon'ble Calcutta High Court has also restrained M/s. Karnataka Soaps and Detergents Ltd. in using Ayur CARE. They denied that the mark was not

distinctive or that it was not registerable under S. 9, 11 and 18(1) of the Act. They claimed that they had a bonafide intention to use the mark. The

web search results cannot be relied on. They filed the following documents. (1) Their opposition proceedings against the applicants mark; and (2) List

of opposition proceedings filed against the respondent against the mark Ayur applied for registration by different proprietors etc.

In reply to the counter statement, the applicant claimed that the number of invoices filed are too few to establish the trade mark AYUR is

distinctive of the products. A rejoinder was also filed by the respondent.

Mr. Majumdar, the learned counsel for the applicant submitted these applications are filed in 2006 and thereafter there were developments in the

civil suit filed in the Calcutta High Court. On 11/04/2008, an ex parte injunction had been extended for a further period. Then on 24/04/2008, a fresh

application was filed for the same relief. On 02/05/2008, that interim application was dismissed. An appeal was filed. But then the suit has been

withdrawn with liberty to file a fresh suit. The learned counsel submitted that though the suit has been withdrawn since the respondent had reserved

his liberty to sue the applicant again, the applicant continues to be a person aggrieved. The learned counsel submitted that the respondent has not till

date asked for rectification of the applicant's mark. The learned counsel submitted that Ayur can never be held to be a distinctive mark. All the four

classes in these four applications related to food and Ayur means ""life"". The learned counsel submitted that the respondent had no bonafide intention to

use the mark but however submitted that ground relates to S. 47(1)(b) would apply only to ORA/101/2006/TM/DEL and not to the other ORAs. He

submitted that the respondent has used the mark only in classes 3 and 5. He referred to the documents to show that if the Paratha Junction Menu

Card is accepted as proof of use, it is not only in relation to goods but only to services. At the most, the use can only said to be sporadic use. The

learned counsel submitted that the respondent cannot rely on strong observations in the judgment and claim that their mark is a well-known mark. The

learned counsel submitted that the claim to a well-known mark must be proved by the production of evidence to satisfy the Court that the mark is a

well-known mark. The learned counsel submitted that even if all other grounds are not accepted at least in public interest, the mark Ayur should go.

The learned counsel for the respondent submitted that the Hon'ble High Court of Delhi had observed that Ayur is a well known mark and therefore

the onus to prove that the mark was not registerable is very much higher. According to the learned counsel for the respondent, S. 11(6) and 11(7) of

the Trade Marks Act, 1999 apply only to the Registrar and not to a court. The learned counsel submitted that the mark is invented because at that

time, when the respondent adopted the word, there was no other mark Ayur. The learned counsel submitted that at least one Court has protected the

mark and its distinctiveness and its secondary significance, and this should weigh this Board. He also repeatedly stressed the ground of long user and

diversification. The learned counsel also submitted that this Board may pass any order or direction, which would protect marks owned by other, which

use the word Ayur.

Several decisions were cited and in many of them the respondent is a party. The advertisement in the Trade Marks Journal and the four marks in

question were produced by the learned counsel for the applicant and they all show that on the date of application, i.e. 3rd September, 1990, in all the

four cases, the user was ""proposed to be used.

(1) Three-N-Products Private Limited Vs. Emami Limited - In this case, the Division Bench of the Hon'ble High Court of Calcutta held that Ayu or

Ayur cannot said to be invented words bearing no meaning and the plaintiff cannot claim exclusive right over the words Ayu or Ayur and did not want

to interfere with the single Judge's findings that the plaintiff's prior used mark which has acquired a distinctiveness was sought to be adopted by the

defendant. But the Division Bench clearly held that, at that stage, the plaintiff cannot legitimately claim that Ayu and Ayur shall in no case be used by

any other person. In this particular case, small variation was held to be sufficient to distinguish the two marks.

(2) In 1970(3) SCC 665 - 1. National Bell Co. & 2. Gupta Industrial Corporation Vs. Metal Goods Mfg. Co. (P) Ltd. and another, the Hon'ble

Supreme Court held that the principle underlying S. 32(2) of the old Act, was that the property in a trade mark persists so long as it continues to be

distinctive of the goods of the registered proprietor.

(3) AIR 1977 MADRAS 166 - Agha Hyder Hussain and another Vs. Omar Khayyam Wineries (Pvt.) Ltd. and another - This case was referred to

show that the applicant is not a person aggrieved.

(4) (2003) 11 SCC 92 - Hardie Trading Ltd. and another Vs. Addisons Paint & Chemicals Ltd. - This case was cited again to show who is a person

aggrieved both under S. 46(3) of the old Act and S. 56 of the old Act.

(5) (2011) 1 SCC 125 - Infosys Technologies Ltd. Vs. Jupiter Infosys Ltd. & Anr. - This case was cited to show that the applicant must not only be a

person aggrieved on the date of the application but must continue to remain a person aggrieved until such time as the rectification application is finally

decided and if the applicant is not shown to have ever traded or intended to trade in any goods covered by the appellant's registrations and as such the

first respondent is not a ""person aggrieved"".

(6) AIR 1985 Bom 306 - Hami Brothers Vs. Hami & Co. And Anr. - Here it was held that when the mark had continuously remained on record from

1964 and was never challenged, the petition was filed merely as a counterblast to the prosecution launched by other parties, and the petition deserved

to be dismissed.

(7) (1960) 1 SCR 968 : AIR 1960 SC - Corn Products Refining Co. Vs. Shangrila Food Products Ltd. - In this case, Hon'ble Supreme Court held that

there is trade connection between glucose and biscuits and a likelihood of confusion or deception.

(8) 2010 (43) PTC 311(Del.) - Three-N-Products Pvt. Ltd. Vs. Holistic Health Care Pvt. Ltd. - In this case, the plaintiff was the respondent here.

The Hon'ble High Court of Delhi held that at the interlocutory stage, it appears that the plaintiff was able to demonstrate the distinctiveness of their

mark.

(9) Latha C. Mohan Vs. Cavinkare Pvt. Ltd. and Anr. - In this case, IPAB held that the mark has been removed on the ground of no bona fide use

for more than five years and one month.

(10) 2012 (50) PTC 535(Del.) - IHHR Hospitality Pvt. Ltd. Vs. BESTECH India Pvt. Ltd. - In this case, 'Ananda' is the trade mark and the Division

Bench held that very strong evidence should be shown by the Registered Proprietor of the mark 'Ananda' to show that he had achieved secondary

significance and, that upon seeing the mark 'Ananda' it would immediately bring to the mind the appellant.

(11) 2000 (20) PTC 489 - Three-N-Products (P) Ltd. Vs. Pardesi General Store & Ors. - Here the plaintiff was the respondent. The Hon'ble Delhi

High Court held that the plea of phonetic difference cannot be accepted and Ayur is a Hindi word and not an invented word.

(12) 95 (2002) DLT 271 - Three-N-Products Pvt. Ltd. Vs. Yashwant And Ors. - In this case, the Hon'ble Delhi High Court held that the defendants

are exploiting the reputation of the plaintiffs and that the word Ayur with the short 'A' is an inventive word and that even if it is a dictionary word, it is

capable of exclusive appropriation since the plaintiff has earned enormous goodwill. This judgment was also cited by the respondent to support their

case.

(13) 15 RPC 476 - The Eastman Photographic Materials Co, Ltd's Application (1898) A.C. 571 - Here the mark was 'Solio' and even though 'Sol' may

have the meaning to some Latin word for 'Sun', 'Solio' was an invented word.

It is clear from the documents filed by the respondent that they have considered the words Ayu and Ayur and not the whole mark as their exclusive

property. Therefore we find in the opposition proceedings filed by the respondent, marks like Mayur, Ayur Research, Yogi Ayur Labs, Ayur Deva and

even the mark Guruvayurappan (a very famous temple of Kerala), have been attacked by the respondent. Both the Hon'ble Delhi High Court and the

Hon'ble Calcutta High Court have held that Ayu and Ayur cannot said to be an invented word. Many documents have been filed to show that the

impugned marks have been used in relation to goods under class 29 to 32. Class 29 to 32 broadly deals with food stuffs of various kinds and

categories. It is true that in some invoices, we find that there is sale of Herbal Tea. The learned counsel for the applicant submitted that Herbal Tea

would come in a different classification. Even assuming this would come under class 32, the first instance of sales is only in 1999. It may be noted that

at the time of application in 1990, it was a proposed to be used mark. The agreement with Paratha Junction, even if it is accepted, is dated 05/07/2002.

There is no evidence of sale of food stuffs under this mark prior to 2005. Even after 2005, these food stuffs, for example, Ayur Shakti Rooh-E-

Khushbu can only be treated as part of the services rendered by Paratha Junction. There is no evidence to show that the mark was used in respect of

goods itself. Even if we accept this evidence, the use is only from 2005 through Paratha Junction. Therefore, the plea of long user is not established.

That apart, in TRA/138/2004/TM/DEL - IPAB Order No. 117 of 2012 - Hindustan Unilever Ltd. Vs. M/s. Three-N-Products (P) Ltd. and Anr.,

we have dealt with identical marks, but in classes 3 and 5. We had held there that Ayur is a generic word and in public interest, it cannot be

monopolized by anyone. We had held in that case that in public interest the respondent cannot be allowed to monopolise the words Ayu and Ayur.

Ayush, in fact, is a Department of the Government under the Ministry of Health, exclusively devoted to alternative medicine and systems (Ayurveda,

Unani, Siddha and Homeopathy). The words Ayu or Ayur cannot claim to have acquired secondary significance when there are so many traditional

connotations signifying healthy long life, etc. The IHHR Hospitality Pvt. Ltd. case cited supra relating to the word 'Ananda' squarely applies here.

Most of the decisions that were cited here have been referred to in Hindustan Unilever Ltd. case cited supra which we have decided earlier. In

conclusion, in that case, we had given several reasons why we were removing the marks of the respondent. Some of them are relevant here:-

(a) The respondent has admitted ""Ayur"" means 'life'. Therefore their contention that ""AYUR"" is an invented word is unacceptable;

(b) The respondent claims that the mark is used for non-ayurvedic product. If so, the use of ""AYUR"" is deceptive since the ordinary consumer will

think it is an ayurvedic product;

(c) Contrarily the respondent also claims it is rooting their products in Ayurveda. If so, use of the mark is descriptive and cannot be accepted;

(d) ""AYU"" and ""Ayur"" are words belonging to the public domain; no one can appropriate it exclusively;

(e) Admittedly, ""Ayur"" means life and the words are associated in the public consciousness with 'Ayurveda' and 'healthy life' and no one can

appropriate it to oneself;

(f) The respondent has not proved that the mark has acquired distinctiveness and in fact such a mark can never acquire distinctiveness. It is like using

the mark ""Soap"" for soap;

(g) The applicant on the other hand has produced evidence to show that ""AYUR"" means 'Ayurveda' to the consumers or it means 'life' or 'ayurvedic'

product, so the mark is likely to cause confusion and deception;

(h) The respondent has stated before the English Court in the decision of the Cancellation Division, that 'Ayurveda' means 'science of life'. Therefore

the respondent has misled the Registrar. This mark shall not remain on the Register;

(i). The mark cannot pass either the test of Section 11 nor the test of Section 9 of the Act; and

(j) Public interest would be harmed if this mark remains in the register thereby preventing other persons in our country access to a common Indian

word denoting an ancient system of medicine.

Nothing has been placed before us to reconsider this view.

At this juncture, we have to deal with the concept of well known mark. Well known mark is defied in S. 2(zg) as extracted below:-

well-known trade mark"", in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses

such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a

connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-

mentioned goods or services.

Sub-Section 6, 7 and 11 of Section 11 deal with Registrar determining whether the trade mark is a well-known trade mark.

Section 11(8) reads as follows:-

Where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the

Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.

Section 11(9) and (10) again deal with the manner in which the Registrar shall proceed in determining a mark is a well-known trade mark. For us,

S. 11(8) alone is relevant, since in the instant case, it is the observation of the Hon'ble Delhi High Court that is cited before us. The words used are in

the section ""trade mark which has been determined to be well-known in at least one relevant section of the public in India by any court."" Therefore, it

clearly requires a full trial on the issue and thereafter a determination by the Registrar or the Court whether the mark is a well-known mark. A

reference or an observation in an interlocutory application by a Court will not amount to a determination under S. 11(8). Therefore, even though the

Act does not lay down guidelines how the Court shall determine whether a mark is a well known trade mark, it is apparent that the Court will also be

guided by those reasons. The well known label cannot be granted for the asking. There must be strong evidence to prove the case of the person

claiming that his mark is a well-known mark.

We may visualize a sham litigation where the registered proprietor claims his mark to be 'well-known' mark and the other side for reasons best

known to them concedes the position. Then, shall the stamp of well-known mark given in such a litigation be held against others who may genuinely

fight the register ability of the allegedly well-known mark? Well known mark according to the Act enjoys a certain privilege. Therefore, the

determination that the mark is well known will be arrived at only on strong and unimpeachable evidence that the mark is in fact a well known mark.

The applicant had been prevented from marketing his goods by an injunction order. It is true that the suit had been withdrawn. But the respondent

had reserved his liberty which again meant that at any time the applicant ventured into the market with his goods, he may face a litigation. This is

sufficient to make the applicant a person aggrieved.

It is indeed unfortunate that the Registrar who registered the first mark Ayur for the respondent, had not endorsed that the respondent will not

have an exclusive right to AYUR. If he had done that, the respondent may have come up with modifications. Further, with such a registration, the

respondent would not have ventured to launch an attack on anyone who 'dared' to use A.Y.U.R. anywhere in their marks. If the respondent had not

attacked others and had dealt with the mark as a label mark, claiming no exclusive right to the letters A.Y.U. & R. perhaps this mark would not have

been challenged. The Registrars who are vested with the important duty of deciding which marks are registerable should make their decision wisely

and correctly. We doubt if anyone in India can plead ignorance of the meaning of the words Ayu or Ayur. It is very unfortunate that by casually

granting this registration, the Registrar has generated unwarranted litigation.

The concession by the learned counsel for the respondent that the mark may be modified appropriately cannot be considered now. It comes very

late. Further till date all the proceedings launched by the respondent on various Courts and before the Registry claiming exclusive right to the words

A.Y.U. and R have not been withdrawn. We do not find any reason to differ from our earlier view which was in respect of goods in class 3 and class

5 in which the respondent was undoubtedly carrying on his trade. His case is weaker with regard to goods in other classes. Therefore, for the reasons

which persuaded to us to remove the mark in all other cases and on the facts of this case too, we allow the rectification applications. The

Miscellaneous Petition Nos. 381/2012, 382/2012, 383/2012 and 388/2012 are closed.