Jagadamba Cloth Co. vs Aditya Udhyog And The Registrar Of Trade Marks

S. Usha, Technical Member

This Application is for rectification/removal of the registered trade mark label 'HAWRA MAIL' registered under No. 1090001 in Class 24 under

the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

The applicants and their predecessors are engaged in the business of manufacturing and marketing textile piece goods including dhoties and sarees

for more than three decades. The applicants had been using the trade marks 'HOWRAHPOOL' openly, extensively and continuously since 1969. The

applicants had also registered their trade mark ""HOWRAHPOOL"" under application No. 336249 in Class 24 in respect of bleached dhoties.

The Respondent No. 1 has obtained the impugned registration by fraud and misstatement. The registration has been obtained under the name and

style of Aditya Sovereign Mills, whereas the respondent No. 1 has been carrying on business under the name Aditya Udyog. The respondent No. 1

had copied a part of the trade mark from Finlay Mills Ltd., Mumbai which is also a registered trade mark of that Mill. The trade mark ""HAWRA

MAIL"" other part of the respondent No. 1's trade mark was also registered by another company M/s Shree Jashnani Textiles. The impugned

registration was obtained without any intention to use the mark. The registration is illegal and is registered without sufficient cause and is wrongly

remaining on the Register.

The use of the impugned trade mark by the respondent No. 1 is likely to cause confusion among the public as the goods are same and the trade

marks are deceptively similar. The applicant's mark ""HOWRAHPOOL"" has gained immense goodwill and reputation among the public. By wide

publicity and sales the public associate the trade mark ""HOWRAHPOOL"" with the applicant's goods only and with none else.

The rival marks are deceptively similar and the use of the same by the respondent No. 1 is likely to cause confusion and deception and as the

applicants are prior adopters and users of the trade mark are aggrieved persons as per the provisions of Section 57 of the Act. The impugned trade

mark for registration has been applied on 26.03.2002 claiming user since 03.08.2000 which is one and half years of use and hence the registration is in

contravention of the provisions of Section 12 of the Act.

The trade mark was not honestly and bonafidely used. The mark was not adopted to distinguish and not capable of being distinguished and hence

the registration was in contravention of the provisions of Section 9 of the Act.

The applicants are using the trade mark ""HOWRAHPOOL"" since the year 1969 and are the rightful owners of the trade mark.

The impugned trade mark, if allowed to remain on the Register, will affect the purity of the Register. The respondent No. 1 has adopted a similar

trade mark only with the ulterior motive to take advantage of the reputation of the applicant's trade mark. The trade mark has been registered in

contravention of the provisions of Section 9 and 11 of the Act. The respondent No. 1 is not the proprietor of the trade mark and hence the registration

is on contravention of Section 18 of the Act.

The registration contravenes the provisions of Section 47 of the Act as the respondent No. 1 had no bonafide intention to use the said trade mark.

On the above grounds the application for rectification has got to be allowed by removing the mark from the Register.

The respondent No. 1 had filed their counter statement denying the various allegations made in the application for rectification. The respondent

No. 1 stated that the trade mark ""HAWRA MAIL"" was applied for registration only after a search was made in the market and in the Trade Mark

Registry. The Assistant Registrar had also granted registration only after satisfying that there was no such mark either identical or similar pending or

registered. The respondent No. 1 has also further stated that the word Aditya was used as identification, as Aditya Udyog was their trading style. It is

further stated that on the date of application for registration of the impugned trade mark ""HAWRA MAIL"" no application for the registration of trade

mark ""HOWRAHPOOL"" was pending. The status in the examination report from the Trade Marks Registry was shown as Nil.

The respondent No. 1 had also stated that the mark was registered in accordance with the Trade Marks Act. The registration with disclaimer has

been accepted by the respondent subject to conditions of the provisions of Section 17 of the Act. The applicants are not persons aggrieved and as

such cannot file this application for rectification. The respondent No. 1 is using the trade mark since the date of adoption and so are entitled to the

benefits under Section 12 of the Act.

The respondent No. 1 state that they had made a search in the Trade Mark Registry if any similar mark was pending and as no such application

was pending the respondents had made the application. The mark was distinctive on the date of application and hence qualifies for registration under

Section 9 of the Act.

The respondent No. 1 further states that on verification found so many trade marks like Howra Bridge, Howra Stores, Howra King etc., were

pending, the marks being not similar, the respondents had applied for registration and obtained the same. The respondent is the true and original

adopter of the trade mark ""HAWRA MAIL"". The applicants are not aggrieved persons. The application has caused unnecessary hardship to the

respondents. The applicants have filed this application only to harass the respondents. The respondents pray that the application be dismissed with

costs.

The matter came up before us on 03.04.2008 at the Circuit Bench at Mumbai. We have heard the arguments of Shri M.P. Mirchandani, learned

Counsel for the applicant and Shri W.S. Kane, learned Counsel for the respondent No. 1.

The main contention of the learned Counsel for the applicant was that the applicant had adopted the trade mark ""HOWRAHPOOL"" as early as

1969 for textile goods and also obtained registration. The respondents had adopted a deceptively similar trade mark ""HAWRA MAIL"" in the year

2000 and had applied for registration in the year 2002 which is subsequent to that of the applicant.

The applicant drew our attention to Exhibit A document filed along with the application and submitted that the trade mark has been taken from

others trade mark and pointed out that it has been filed as Exhibit B and C. The applicant submitted that the respondent No. 1's adoption is therefore

not honest.

The applicant also submitted and referred to Section 2(1)(i) of the Act - false trade description. The applicant submitted that the impugned trade

mark was a combination of an earlier two trade marks and was to be removed from the Register.

The applicant relied on the judgment reported in AIR 1963 SC 449 in support of his contention that the rival marks are to be considered as to the

overall similarity of the composite marks, though a critical comparison may disclose some difference.

The learned Counsel for respondent submitted that his arguments were three fold - firstly the rival trade marks were not similar; secondly, the

applicants were not the proprietors of the trade mark and thirdly the marks' belonging to third parties are not to be relied on.

The respondent No. 1 submitted that the respondents have been exclusively and continuously using the trade mark and so the public associate the

said trade mark ""HAWRA MAIL"" with that of the respondent No. 1 only. The applicants have allowed the respondent No. 1 to expand the business

and so the respondent No. 1 is entitled for concurrent registration as per the provisions of Section 12 of the Act. The respondent No. 1 further pointed

out to the documents marked as Exhibit B filed along with the application and submitted that there were various trade marks like Howrah Bridge,

Howra Mail etc., since 1968 itself where no steps were taken by the applicants and this application is made only to harass the respondent No. 1.

The respondent No. 1 also submitted that Aditya was is trading style and so the same has been incorporated in the trade mark label. The

respondent No. 1 drew our attention to the applicant's sales invoices filed as Exhibit B along with affidavit of evidence and submitted that the

applicants were dealing only with sarees whereas the respondent No. 1 were dealing with dhotis and so the goods were different and there was no

possibility of confusion.

The respondent No. 1 submitted that they had wide sales and brought to our notice the sales figures mentioned in the affidavit of evidence filed by

the respondent No. 1. The respondent No. 1 further contended that the registration was not in contravention of Sub-Sections (2) and (3) of Section 11

of the Act. There was no objection from Finlays Ltd., and so was not attracted by Sub-section (5) of Section 11 of the Act.

The respondent No. 1 argued that the applicant's mark ""HOWRAHPOOL"" was a word mark whereas the respondent No. 1's trade mark

HAWRA MAIL"" was a label mark. So when the marks are compared as a whole is not similar. Howrah is a geographical word. The respondent No.

1's trade mark ""HAWRA MAIL"" is attracted by the provisions of Section 12 of the Act and is not liable to be rectified.

In reply to the citation AIR 1963 Sc 449, the respondent No. 1 submitted that even in that judgment, it has been held in para 14 that if a trader

allows one to grow cannot later stop for any reason. Here in this case, the respondent No. 1 is using the marks since 2000 continuously without any

interruption and cannot be prevented.

In rejoinder to the respondent No. 1's arguments, the applicants submitted that the rival marks were deceptively similar and that the applicants

were prior users since 1969 and that their rights were being affected and so they were persons aggrieved.

We have carefully considered the arguments of both the counsel and also have gone through the documents.

In a rectification application, the main issue for consideration is whether the applicant is a person aggrieved or not. Any person may oppose an

application for registration as per the provisions of Section 21 of the Act, whereas an application for rectification can be filed only by a person who is

really affected or injured in some way or other if the trade mark is allowed to remain on the Register. The object of purifying the Register is of public

interest. The locus standi is to be determined in the interest of the public than in the private individual. A person aggrieved is a person who will, in a

reasonable probability, suffer any loss or injury by any other person claiming to use it. Any person who has used the registered trade mark prior to the

registration of the impugned mark is a person aggrieved. Here in this instant case we find that the applicant has been using the trade mark since 1969

whereas the respondent has been using their trade mark since 2000 nearly after three decades later to that of the applicant and hence the applicant is

a person aggrieved.

We shall now deal with the next issue as to whether the registration has been granted in contravention of Section 9 and 11 of the Act. Section 9

deals with the absolute grounds and Section 11 deals with the relative grounds for refusal of the registration. Sub-section (1) of Section 9 deals with

the broadest ground for refusal namely - marks which are devoid of distinctive character, which may serve in trade to designate kind, quality etc.,

which has become customary in the current language. The proviso to Sub-section (1) provides that the trade mark shall not be refused registration if

the mark has acquired distinctiveness by use or the mark has become a well known mark. Sub-section (2) deals with marks which are likely to cause

confusion or deception or which are likely to hurt the religious feelings of a person and Sub-section (3) of Section 9 deals with mark which are in

effect descriptive of the goods.

On a plain reading of the provisions of Section 9 it is clear that a mark to be registered should be distinctive of the goods or be capable of being

distinguished either by use or by being a well known mark. Here we find that the trade mark application has been applied on 26.03.2002 claiming user

since 03.08.2000. The use therefore is for a period of one and a half year only by which the mark could not have acquired distinctiveness. Therefore,

we are of the opinion that the objection under Section 9 of the Act is correct.

As regards the objection under Section 11 is concerned, the provisions of Section 11 is very clear which provides that where there exists a

likelihood of confusion on the part of the public because of the identity with an earlier trade mark or similarity of goods or services the trade mark shall

not be registered.

When marks are not identical, the question is what is the degree of similarity between the marks, which entail likelihood of confusion on the part of

the public, including the likelihood of association of the earlier trade mark. While comparing marks, it is not correct to take a part of the word and

compare it with the part of the other, the mark should be compared as a whole.

The Hon'ble Supreme Court has also held in Corn Products v. Shangrila Food Products Ltd. that, ""it is well recognised that in deciding a question of

similarity between two marks, the marks have to be considered as a whole.... We have to approach it from the point of view of man of average

intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is

reasonably likely to cause a confusion between them"".

Based on the observations, we are of the view that, here in this case on hand, the goods are similar and the marks are also similar, the possibility of

confusion is to be arrived at considering the class of customers. The goods here are the ones which is being purchased both by the literate and

illiterate people and so there is every possibility of confusion being caused. Therefore the objection under Section 11 of the Act sustains.

On perusal of the documents filed by the applicants we find that the applicants though have given sales figures from the year 1987 have produced

invoices only from 1997, claiming user since 1969. We are of the opinion that the respondents are only from 2000 whereas the respondent No. 1 has

filed invoices from the year 1997 though seem to be claiming user since 1969. Being prior in the point of time of use, the applicants have valid right

than that of the respondent No. 1. The applicants thus being the proprietors of the mark and the application under Section 18 is allowed.

The objection under Section 47 of the Act raised by the applicant is rejected as no cogent evidence produced to substantiate the same as the

applicants have only pleaded the same in their grounds for rectification.

Having answered all the issues in favour of the applicants, the application for rectification is allowed and the registered trade mark No. 1090001 in

Class 24 is expunged from the Register. The Registrar of Trade Marks is therefore directed to remove the trade mark registered under No. 1090001

in Class 24 from the Register of Trade Marks. However, there shall be no order as to costs.