Kamala Devi vs P.M. Palani Mudaliar And Co. And Ors.

S. Jagadeesan, J

The applicant has filed the petition under Section 56 of the Trade and Merchandise Marks Act, 1958 in O.P. No. 712/1995 on the file of the High

Court of Madras. The said O.P. was transferred to this Appellate Board under the provisions of Section 100 of the Trade Marks Act, 1999.

The applicant has filed this petition seeking a direction directing the 7th respondent to cancel the Trade Mark 144 of respondents 1 to 6 covered

under Registration of Trade Mark No. 497120 in Class 24 dated 2.9.1988.

The case of the applicant is that they are carrying on the business in handloom, towels and lungies ever since 1975 with the label containing 744. By

virtue of long, extensive and continuous use, the said Trade Mark label 744 has become distinctive of and is exclusively identified with the goods sold

by the applicant. The said Trade Mark label 744 represents the 7th house in the Horoscope of the applicant's husband Shri Premraj Chordia in which

the four planets viz., Sun, Moon, Mercury and Jupiter with 6th Rasi Virgo are situated. The artistic work of 744 label was thus extracted from the

Horoscope of the applicant's husband and was designed by the Astrologer. While so, the respondents No. 2 to 6 who are the partners of the first

respondent firm applied for their artistic label 144 on 2.9.1988. The same was advertised in the Trade Mark Journal on 16.6.1993 and thereafter it was

registered as there was no opposition. The respondents No. 2 to 6 at the time of applying for registration of the Trade Mark 144, they claimed use of

the same since the year 1974. But, in the other proceedings, such as C.C. No. 5105/93 on the file of the III Metropolitan Magistrate, George Town,

Chennai, and Criminal Miscellaneous Petition O.P. No. 7490/1994, before the High Court of Madras as well as in C.S. No. 1017/1995 on the file of

the High Court of Madras, they claimed the use of the said Trade Mark 144 from the year 1982. This conflicting statement of respondents 2 to 6 in

respect of the use of the disputed trade Mark 144 clearly proves that the respondents have made false representation and obtained the Certificate of

Registration by fraud, incorrect statements and also by misrepresentation. In view of the false representation, they are not eligible and entitled to claim

the proprietorship of the disputed Trade Mark. The respondents 1 to 6 have also filed a suit C.S. No. 1017/1995 on the file of the High Court of

Madras for the action of infringement against the applicant. Since the registration of their Trade Mark was obtained by false and misrepresentation,

the respondents cannot maintain any legal action against the applicant on the basis of the said Trade Mark. Now that it is clear that the respondents 2

to 6 have obtained the registration of their Trade Mark 144 on misrepresentation, the same is liable to be cancelled and hence the petition has been

filed for the said relief of cancellation of the Trade Mark 144 of the respondents 2 to 6.

A detailed counter affidavit was filed by the respondents wherein it is stated that the first respondent firm has been continuously and uninterruptedly

using the Trade Mark 144 brand label since the year 1974. The first respondent is a recognized Export House certified by the Government of India.

They were dealing with handloom goods under different Trade Mark and one such being the disputed brand label 144. In the counter statement, the

respondents 2 to 6 have also given a statement of turnovers from the year 1987-88 to 1994-95. The first respondent has also registered the Trade

Mark brand label 144 under the Copyright Act under No. A-52012/92. It is also stated that the filing of the petition by the applicant is only as a counter

blast for the suit filed by the respondents for the infringement action. Through several other averments had been stated in the counter affidavit, in our

view they are not necessary for the disposal of this application.

The ground on which the application was filed by the applicant as seen from paragraph 6 of the application is that at the time of applying for

registration of the Trade Mark 144 before the Registrar, the respondents claimed the use of the same since 1974. Whereas, in other proceedings

commenced in the years 1993, 1994 and 1995, the respondents claimed the use of the disputed Trade Mark since 1982 and this discrepancy with

regard to the claim of use in respect of the year would amount to misrepresentation and also false statement which would result in the cancellation of

the registered Trade Mark.

In our view, the applicant has totally failed to establish their case. In any rectification proceedings, the onus of proof is on the applicant who comes

to the Court seeking the rectification of the Register of the Trade Mark Registry. The due process for registration of the respondents' Trade Mark 144

had been followed. It is not the case of the applicant that there is any defect in the procedure adopted by the Registrar. As already stated, the only

urge of the applicant for the removal of the Trade Mark of the respondents is that there is a discrepancy in respect of the year of use of the disputed

Trade Mark by the respondents. The respondents have produced evidence in their typed set of documents which contains the Invoices of the first

respondent to Rangaswamy & Co. of Vijayawada, which are available at pages 5 to 18, 21 to 27, 29 and 30. These Invoices relate to the date

19.6.1976 to 24.10.1982. The learned counsel for the applicant did not challenge these documents if the respondents. These documents clearly

establish that the first respondent is using the Trade Mark brand label 144 from the year 1976. In all these Invoices, there is a reference to the goods

with the brand label 144 because the other brand Trade Marks which are being used by the respondents have also found a reference. Hence, these

documents would clearly establish the respondents' use of the disputed Trade Mark at least from 1976, When that be so' the discrepancy in the year

of use as claimed by the respondents in various proceedings may not be of any assistance to the applicant in this application for rectification of the

Register. When the evidence available on record establish the use of the disputed Trade Mark by the respondents 1 to 6 from 1976, their claim of use

from 1974 as claimed before the Registrar can be accepted.

The respondents has applied for registration in the year 1988 and got it registered in the year 1993. This petition is nothing but a counter blast for the

suit filed by the first respondent which is clear from the averments in the application. In paragraph 8 of the application, the applicant has stated as

follow: ""The said respondents have no right or authorities to file the suit against the petitioner on the basis of the registered Trade Mark No. 497210.

When the certificate itself is obtained by misrepresentation the question of infringing the respondents' Trade Mark does not arise at all."" We may also

like to consider as to whether the plea raised by the applicant for cancellation of the respondents' Trade Mark 144 would fall under the purview of

Section 56. Sub-section (1) of Section 56 is as follows:-

Power to cancel or vary registration and to rectify the register. --On application made in the prescribed manner to a High Court 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.

The above provision enables a person aggrieved in respect of a registered Trade Mark, to make an application to the High Court or to the Registrar.

The Court or the Registrar can pass order as it may think fit for cancellation or varying the registration of the Trade Mark on the following grounds:

(1) Any contravention of the condition entered on the Register in relation to the Trade Mark; or (2) failure to observe a condition entered oh the

Register in relation thereto.

In our considered view, the applicant has not made any reference to any of the grounds as contemplated under Section 56(1) of the Act for the

cancellation or varying the registration of the Trade Mark. On this ground alone, the application is liable to be rejected.

For all the reasons stated above, we hold that the application is devoid of any merits and consequently, the same is dismissed.