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Judgment
V. Ravi, Technical Member
The applicants herein are seeking removal from the register of registered trade mark under No. 846440-B in class 30 in the name of the partnership firm consisting of Manjula Pushpavadan Kandoi, Umesh Pushpavadan Kandoi and Jitesh Pushpavadan Kandoi all trading as SHRI JAGDISH FARSAN. In fact, two applications for cancellation of the impugned mark has been filed under No. ORA/119 & ORA/120 by two different partners of the same applicants firm herein. In this context, the same applicant firm had sought the removal of the very same trade mark of the respondent through two other partners under No. ORA/08/2005/TM/AMD & ORA/134/2006 TM/AMD in respect of registered trade mark No. 486584 for an identical mark for identical goods which was dismissed by the Board as no case was made out. The only point of difference is the cancellation of the impugned mark is sought in the name of different partners of the same applicants firm in respect of an identical trade mark registered under a different application number in the same class. But the issues, pleadings, evidences and arguments advanced in the present proceeding is identical to what had been set out in ORA/08/2005/TM/AMD & ORA/134/2006 TM/AMD. We therefore, do not intend to exhaustively narrate the sequence of events set out except to briefly outline the contours of applicant's case and respondents defense for easy understanding.
The case of the applicant is briefly as follows:--
The applicant are carrying on business of manufacturing and sale of sweet, farsan and namkeen. The respondent/registered proprietor has filed a suit in the District Court, Baroda under C.S. No. 9/2009 for infringement and passing off on the strength of the impugned registration. The Hon'ble Court was pleased to issue notice to the applicant and therefore he is a 'person aggrieved' to seek cancellation of impugned mark.
The word Jagdish is the name of a Hindu God in India and many traders have adopted it as a trade mark. In fact there are 13 such entities which are using Jagdish as a trade mark in Baroda. Thus the respondent cannot claim exclusive monopoly right on the same.
The applicant state that he took a franchise agreement from one Jagdishchandra Prahladprasad Shah(who was in fact one of the applicant in ORA/08/2005 referred to earlier) to market their farsan and sweet products under the trade mark JAGADISH and it is the applicants livelihood and business.
The specific grounds for seeking removal of the impugned mark are detailed below:
i) the impugned mark is registered in the name of three partners but there are in fact other joint owners/co-owners as is clear from the suit filed against the applicant in the city Civil Court at Baroda.
ii) the impugned mark is only proposed to be used whereas in the suit the claim of user date are different. Before the registrar of trade mark the respondents have claimed users since 1986 whereas in the suit it is mentioned as 19th March, 1999 and hence the registration has been obtained by fraud based on false user claim.
iii) The impugned mark is common to trade used by more than 10 person in the market and therefore it is contrary to sections 9, 11 & 12 of the Act. The applicant herein have been using the trade mark Jagdish for the same good to the knowledge of the respondent and therefore filing of suit against the applicant is an abuse in the process of law.
iv) The respondent have not sought correction of the Trade Marks Journal and the mark as shown in the registration certificate is different from the trade mark published in the Journal. In view of the foregoing, the applicants seek the removal of the impugned mark in the name of the respondent. On verification, the mark as published and as registered are one and the same.
The case of the respondent is one of complete denial of all the averments, contentions, claims and allegations made by the applicant. The respondents have given very detailed grounds in support of registration in the counter statement. These would require to be looked into if we are to examine the case on merits.
It is clear that this allegation of the applicant is false and without any substance. We are also unable to comment on the discrepancies of user as claimed before the registrar and as agitated in the civil court by the respondent as the relevant material are not before us.
As mentioned earlier, the findings of this case is to be co-jointly read with our rulings in ORA/08/2005/TM/AMD & ORA/134/2006/TM/AMD vide IPAB Order No. 269 dated 26.11.2012. The applicant have raised objections under Section 9, 11, 12 and 18(1) of the Act and claimed locus to file the instant application as 'person aggrieved' in view of the suit filed by the respondent.
Concerning section 9, we have explained the law on the point earlier. No even the extreme fringe elements in our society who subscribe to a muscular version of Hinduism would agitate the removal of impugned mark on grounds of offending their religious susceptibilities particular as the goods in question relates to sweets and farsan offered as Prasad to the divine.
Next we take up the objection under section 11 of the Act. It is best to reproduce our views on this in ORA/08/2005/TM/AMD and ORA/134/2006//TM/AMD.
The next ground for attack is based on section 11 more specifically on the ground of public confusion as a result of the continued presence of the impugned trade mark on the register. The validity of the impugned trade mark has been questioned on the ground that it is no longer distinctive of the applicant's goods. Distinctiveness may be lost, where there has been several infringements and the proprietor neglects to take prompt action to restrain them. As was said by James L.J. in Ford v. Foster (1872) LR 7 Ch 611 at p.625.
The occurrence of a few fraudulent infringements without the knowledge of the proprietor of the trade mark will not make the mark common to the trade. "It has been said that one murder makes a villain and millions a hero; but I think it would hardly do to act on that principle in such matters as this, and to say that the extent of a man's piratical invasions of his neighbour's rights is to convert his piracy into a lawful trade.
However, the case here is materially different. If 13 other entities are trading under the trade name 'Jagdish' for sweets and farsan is that a helpful framework to seek cancellation of a registered trade mark? We think not. Expropriation of the registered trade mark of the respondent should be on a significant scale that would lead to disruption of the respondents business. No registered proprietor can completely stop all pirates on a nation wide or even district basis. The applicant themselves lay claim to 'Jagdish' and law permits its co-existence on the register if he satisfies the conditions specified in Section 12 of the Act. Such confusion as may occur as per record is essentially owing to the willful misconduct of using the impugned registered trade mark by other traders and not out of respondents neglect or inaction. Further, no evidence has been led by the applicant that he has used the impugned trade mark prior to the respondent. In these circumstance, objection raised under Section 11 is not well founded.
We next take the objection under section 12 of the Act and quote the earlier findings on this point.
We next look into the objection raised under section 12 in that the respondent cannot be given the benefit of that section for its continued survival in the register. In examining the register between trade mark law and legitimate competition the fact that impugned trade mark has been in the register for several decades, its original adoption could possibly be purely innocent and independent do weigh heavily on our mind. There has been a slew of litigation between the parties. The cancellation proceedings are now being invoked. We do not think circumstances warrant the removal of the impugned mark. At best, quite possibly both the applicant (since 1998) and respondent (at least since 1986) are using the mark in good faith over time. Even so a trademark 12 years junior as is admittedly the case here cannot oust an owner with superior use. There is a possibility that the applicant may succeed on grounds of acquiescence in the trial court proceeding. But even if registered, the owner of the earlier right (respondent) herein can seek to invalidate a later registration right up to the end of the 5 year period post registration, even where it has been aware of the use of the later mark for a longer period. Section 12 ascribes standalone significance to the honest concurrent user doctrine and is an exception to the absolute protection to trade marks. We are therefore not persuaded to believe that there is any serious basis for an objection under section 12 of the Act.
On the issue of proprietorship of the mark para 24 of the earlier order is relevant.
The other issue to be examined is the objection under section 18 that the respondent are not the proprietors of the impugned trade mark. It is well settled that a trader acquires a property right in a distinctive mark merely by using it upon or in connection with the goods irrespective of length of use and extent of his trade. Registration is only a prima facie proof of ownership and right to its exclusive use. The respondent here have substantiated the proprietary claim in as much it has passed the rigors of a registration process in addition to the use in India of the impugned mark. On the date of application of the impugned mark, no bad faith has either been alleged or involved. The impugned trade mark has already been on the register for over two decades. To allege at this stage that the respondent cannot be its owner is both preposterous and fallacious. The applicant and 13 other traders cannot gang up and divest the ownership of a lawfully registered trade mark of the respondent merely to thrive on the commercial magnetism associated with 'JAGDISH'. Such bullying tactics makes no impression on the Board and we rule that the respondent are the legitimate owner of the impugned trade mark.
It would appear that the applicants are somehow determined to expunge the impugned mark whatever it takes. We have given detailed reasoning in the ORA/08/2005/TM/AMD & ORA/134/2006 TM/AMD of the view of this Board on the matter. No new issues have been raised in the pleading to justify the removal of the impugned mark. We have serious misgivings in the manner in which the applicants are setting up organized cancellation petitions one after the other. It only serves to incriminate themselves using possibly shell companies to oust a lawfully registered trade mark. Access to law does not mean that the applicants repeatedly take up the same issue through disingenuous misrepresentation and through different partners. Both the applications suffers from manifest infirmity and total insubstantiality and we cannot go back on our earlier ruling for the sake of the convenience of the moment and are bound to uphold the majesty of law. In the result, both ORA/119 & 120/2009/TM/AMD is dismissed as without any substance. There is no order as to costs.