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Judgment
Manmohan Singh, J
The Applicant has ruled the present petition tor cancellation/removal registered trademark No. 1760000 in class 34 from the Register.
The case of the Applicant-
The Applicant has adopted the trade mark "HOWRAH BIDI (LABEL)" in the year 1941 but since the year 1995, the Applicant has been using the trade mark "HOWRAH. BIDI (LABEL)" for their Biris. The Applicant applied for registration of its trade mark "HOWRAH BIDI (LABEL)" on 3" December 1996, claiming user since 25th August 1995 under application No. 736949 which was not pursued, The Applicant thereafter applied for another registration of the mark "HOWRAH BIDI (LABEL)" in class 34 and the same stands registered in favour of the Applicant under No. 1401112 of 24th November 2005 in respect of said goods.
2.1 The Applicant has been using the distinctive wrapper for the marketing of their products. The colour scheme get up, layout, writing style of wrapper is unique distinctive of the Applicant and the Applicant is also having copyright in said label/wrapper under Indian Copyright Act 1957.
2.2 The Applicant has given the wide publicity to its trade mark 'HOWRAH BIDI (LABEL)' and artistic distinctive wrappers entitled 'HOWRAH BIDF and the said products under the impugned trade mark connotes and denotes the goods and merchandise of Applicant and none else. The Applicant sales of the aforesaid goods under the trade mark "HOWRAH BIDI (LABEL)" runs in several lakh of rupees and have acquired unique reputation and goodwill in public.
2.3 That in the year 1997 the Respondent illegally started using the mark HOWRAH BIDI No. 202 (LABEL)', which is identical/similar to the mark of the Applicant and falsely represented Trade Mark No. 721302 on the wrapper of Biri as its trade mark registration No. for 'HOWRAH BIDI No. 202 (LABEL).
2.4 That the Respondent have started the manufacturing and marketing of Biris under the identical and/or deceptive similar trade mark 'HOWRAH BIDI No. 202 (LABEL)'. That the Respondent have also adopted and copied the identical colour -- scheme, getup lay-out, writing style and arrangement of Applicant distinctive wrappers that amounts' to infringement of Applicant copyright. The Respondent had no right or justification to adopt and use the Applicant well known trade mark "HOWRAH BIDI (LABEL)". To act of the Respondent is a clear violation of Applicant IP rights.
2.5 That the Respondent are well aware about existence of the Applicant trade mark and copyright and they have deliberately with a dishonest and mala fide intention adopted the Applicant trade mark 'HOWRAH BIDI No. 202 (LABEL)' only to trade upon the Applicant hard earned reputation and to earn profits in illegal manner otherwise which they are not entitled to.
2.6 The use and adoption of the trade mark 'HOWRAHBIRI No. 202 (LABEL)' by the Respondents' amount to infringement of Applicant trade mark "HOWRAH BIDI (LABEL)". The Applicant served a legal notice on the Respondent but the Respondent failed to desist the use or reply the said notice.
2.7 Thereafter, the Applicant had filed a suit being Suit No. 57/2010 which is currently renumbered as case civil suit No. 936/2016. The suit is pending adjudication before Preeti Aggarwal Gupta. ADJ-Central -- 10, Tis Hazari District Courts, Delhi. The Applicant herein had initially filed a suit for perpetual injunction and passing off later but later when the trademark of the Applicant was registered, an amendment application was moved by the Applicant herein bringing this fact on record and amending the title of the suit from passing off to infringement the Plaintiffs registered Trademark.
After service of notice the respondent No. 1, has filed the counter-statement in which the respondent No. 1 has derived the contents of the petition and has alleged that the respondent No. 1 is the real proprietor of the mark in question and is prior user of the same, therefore, the rectification petition is liable to be dismissed.
We have gone the pleading as well as the documents placed on record by both parties. We shall discuss the same, if necessary as because counsel for the Applicant has raised the serious legal issue before us that the mark in question is liable to removed as the respondent No. 2 while granting registration has ignored the many mandatory provisions of the Act, Since the acceptance of the application was bad, the subsequent actions on behalf of both parties are immaterial.
The said legal issue raised on the basis of grounds the same are read as under:-
a) The registration of the impugned trade mark if allowed to remain in the register would lead to contravention of various provisions of the Trade Marks Act, 1999. In the Examination Report date 06.06.2009 issued by the Trade Mark Registry, Kolkata upon the Respondent, the registered trademark of the Applicant i.e. No. 1401112 "HOWRAH BIDI No. 102 (LABEL)' which was already valid subsisting and existing on the record on the date of examination was never cited as a conflicting mark and therefore the whole examination process is vitiated.
b) Attention is drawn to the remarks of the Examiner dated 16.08.2010 on the file/record saying that "search is not complete properly and additional search report may be handed over to Applicant Authorized agent". No further additional search report is available on records. Had a proper search been conducted by the Trademark registry, the Applicant Registration No. 1401112--HOWRAH BIDI (LABEL)', would have not been granted. Either it is a grave inadvertent technical error or the examiner was hand in glove with the Respondent, in both the situations, it is proved that registration has been obtained illegally; hence, it ought to be cancelled.
Mr. A.K. Aggli learned counsel appearing on behalf of Applicant has submitted that the registration No. 1760000 has to be removed (sic) on this ground alone as the registration of the trademark of the respondent is vitiated on the cited ground itself because at the stage of issuance of examination report, which was issued by the Trademark Registry on June 6, 2009, an identical trademark 'HOWRAH BIRI' Label, under No. 1401112 in the same class 34 and in respect of the same goods was existing on the records of the Trade Mark Registry was not cited while ignoring the sections and rules.
It is stated that if the registered trademark of the Applicant would have referred the impugned mark 'HOWRAH BIRI 202' could not have been registered owing to the bar contained in section 11(1) of the Act, the Applicant registered trademark No. 1401112 in class 34 was existing as a registered trademark, since January 24, 2008 as well as on the date of examination report and existing even on the date of registration of the trademark No. 1760000. Unless the respondent No. 1 was able to establish honest concurrent-user of the mark registered.
The Counsel for the applicant has also referred the decision of High Court reported in 2009 (41) PTC page 41 in support of his contention. The Hon'ble Delhi High Court in Paragraph 12 has observed "The Court can hold the registration to be invalid on any ground or for non compliance of any of the conditions for registration provided under the Act. As well as, of this Hon'ble Board is further drawn to 2018 (74) PTC page 187 (IPAB).
Mr. Bansal has not disputed the fact that the registration of the Applicant was not cited in the examiner report; his reply is to the above contention that the respondent No. 1 is the prior user and real owner of the mark. He states that the trademark of the applicant would have been cited, his client could have given the proper objection to waive the parties are also in civil litigation pertaining the trademark in question. We have earlier decided in the same issue.
In the case of Prajapati Constructions Ltd. v. Manoj Ramanand Prajapati and Another reported in 2018 (74) PTC 529 involving the same issue, this tribunal in Paragraph 16-24 held as under:-
Prima facie, it also appears to us that the registration obtained by the respondent No. 1 is also contrary to the section 11.1, 11.2 & 11.3 of the Act, which are reproduced below:-
"11. Relative grounds for refusal of registration--
(1) Save as provided in section 12, a trade mark shall not be registered if, because of-
(a) its identify with an earlier trade mark and similarity of goods or services covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
(2) A trademark which--
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor,
shall not be registered, if or to the extent, the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.
+that, its use in India is liable to be prevented--
(a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade; or
(b) by virtue of law of copyright.
Section 11 is the mandatory provision which has the grounds for refusal of registration are mentioned. Admittedly, the trade mark of respondent No. 1 is not identical but as held by us that the trade mark of the respondent is prime facie deceptively similar because the respondent No. 1 used the registered trade mark of the applicant in the mark applied by the respondent No. 1. Thus, it cannot be ruled out that the mark used by the respondent No. 1 cannot cause confusion and deception.
The most important and crucial issue in the present case involved is that when the application for registration was filed on 14th of June, 2012, the trade mark and pending applications of the applicant in the Examiner Report were not cited as conflicted marks by the respondent No. 2. There is a complete procedure which has been ignored by the respondent No. 2 while accepting the application of the respondent No. 1. It is true under section 18 of the Trade Mark Act, 1999, any person claiming to be the proprietor of the trade mark, if he desired for registration, can file the application in the office of Trade Mark Registry. But at the same time after filing the application, the search is to be conducted by the respondent No. 2 as to whether any earlier trademark is registered or pending applications; those are mandatorily to be cited/referred in the Examiner Report.
Rule 37 has a procedure on receipt of application for registration of the trade mark, the same is read as under:-
"Acknowledgement and Search -- (1) Every application for the registration of a trade mark in respect of any goods or services shall on receipt, be acknowledged by the Registrar. The acknowledgement shall be by way of return of one of the additional representations of the trade mark filed by the applicant along with his application, with the official number of the application duly entered thereon.
(2) Upon receipt of the application for registration of trade mark, the Registrar shall cause a search to be made amongst the registered trademarks and amongst the pending applications for the purpose of ascertaining whether there are on record in respect of the same goods or services or similar goods or services any mark identical with or deceptively similar to the mark sought to be registered and the Registrar may cause the search to be renewed at any time before the acceptance of the application but shall not be bound to do so."
We have seen the Examiner Report dated 13th June, 2013 issued to the Respondent No. 1 by the Respondent No. 2. It is evident from the Examiner Report that the registered trademark and the pending applications of the applicant have not been cited in the Examiner Report. It appears from the said report that the Examiner has examined the application of the respondent No. 1 of the mark as SHIVAM and not TRAJAPATF.
It is clear that there is a lapse on the part of the respondent No. 2 in Examiner Report. We failed to understand why the registered trade mark and pending applications have been ignored by the respondent No. 2. Had the said trademarks and pending applications of the applicant been referred in the Examiner Report, the application of the respondent No. 1 ought not to have been allowed. Despite of grave lapse on the part of respondent No. 2, the application of the respondent No. 1 was proceeded further and the same was registered. The respondent No. 2 has even after acceptance of mark (if wrongly) has got the power to withdraw the acceptance in case of an error in view of the mandatory provision of section 19 of the Act, the said provision is read as under:-
"Withdrawal of acceptance--Where, after the acceptance of an application for registration of a trade mark but before its registration, the Registrar is satisfied--
(a) that the application has been accepted in error; or
(b) that in the circumstances of the case the trade mark should not be registered or should be registered subject to the conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the application has been accepted,
the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had not been accepted."
However, in the present case, it has not happened, it may be that it has not come in the notice of respondent No. 2 and the mark was got registered.
Even under Section 57 of the Trade Mark Act, 1999, this Appellate Board as well as the Registrar is in power to make correction in the Register in favour of any aggrieved party if the registration is granted in contravention, or failure to observe a condition entered on the register in relation thereto. Section 57 of the Trade Mark Act. 1999 is read as under:-
"57. Power to cancel or vary registration and to rectify the register,-
(1) On application made in the prescribed manner to the Appellate Board or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.
(3) The tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.
(4) The tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section(1) or sub-section (2).
(5) Any order of the Appellate Board rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly."
In the present case, such power has not been exercised by the respondent No. 2 under section 57(1)of the Act. The applicant has no option but to file the present application. We are of the view that a glaring error has been happened on the part of respondent No. 2 while accepting the trade mark of respondent No. 1. It is the duty of respondent No. 2 to examine the earlier registered trademarks as well as the pending applications otherwise the rights of the owner/registered owner shall be affected and entire system will be collapsed. The respondent No. 2 is bound to comply the mandatory provisions of section 9, section 11, 12 and section 18 of the Act very strictly so as the rule 37 of the Act. In many cases, we have been noticing from rectification proceedings that in the Examiner Report, the registered trade mark and pending applications of the owners have not been cited as conflicting marks. It is a matter of serious concern; lakhs of oppositions are pending in the office of respondent No. 2. Trade Mark Act is a Special Act., All these provisions are mandatory and cannot be ignored as the valuable rights are involved of the owners of trademarks. Different meaning of these mandatory provisions cannot be given despite of settled law for more than five decades.
From the above, it is clear to us that the present case, evidently there is violation of provisions of trademark act and rules in granting the registration of trademark HOWRAH BIRI 202 under No. 1760000 to the Respondent was not proper. The mandatory provision the Act and Rules cannot be ignored by the respondents. It is clarify that in the present order, we are not deciding the issue of ownership of the mark in favour of either party. In petition is being decided purely on the basis of a valid objection, taken by the respondent No. 1 therefore, we are deciding the same.
Thus, the HOWRAH BIRI 202 under No. 1760000 in class 34 is hereby rectified. We may clarify that we are not expressing any opinion on merit of the case. The respondent No. 1 even is entitled to file the fresh application before respondent No. 2 but the same has to be decided as per its own merit.
Copy of order be sent to the respondent No. 2 for taking necessary steps for removal of the impugned mark.
No Costs.