Latha C. Mohan vs Cavinkare Pvt. Ltd. And Anr.

Raghbir Singh, J

OP No. 304 and O.P. No. 305 of 2003 were filed in the High Court of Judicature at Madras and the same have been transferred to this Board in

terms of Section 100 -of the Trade Marks Act, 1999 and have been numbered as TRA/39/2003/TM/CH and TRA/40/2003/TM/CH respectively.

Shri Narayanan learned counsel for the petitioner and Shri A.A. Mohan, learned counsel for the first respondent appeared in the hearing held at

Chennai.

The petitioner herein above claims to be in the business of beauty products in Chennai and Bangalore at various outlets. She claims to have started

her business in 1981. She, having come to know in February 2003 that 'KANYA' is a brand owned by the first respondent for beauty products, filed

CS/36/03 in the High Court of Judicature at Madras that, since the name 'KANYA' had acquired high level of commercial reputation for the plaintiff

in running beauty parlours, relief of permanent injunction restraining the defendant from in any manner passing off its goods with the trade mark

'KANYA' by using the petitioner's name be issued. The petitioner on a study conducted by her came to know that the first respondent had two trade

marks for the word 'KANYA', namely, No. 584307B for certain beauty products and No. 598586B for herbal medicinal formulations registered in its

favour on 6.11.1992 and 3.6.93 respectively. The petitioner claims that as per documents produced by the first respondent it has used the 'KANYA'

label for marketing anti-lice hair preparation in 1993 and there is no further evidence of its continuous use after February, 1994. First respondent has

not taken any licence under the Drugs and Cosmetics Act which is essentially required for these products. In an advertisement mela hosted by the

first respondent on 22.2.03 in Chennai, the first respondent circulated a hand out 'CAVINKARE Reality show brief wherein information was given to

the effect that herbal anti-lice product which was withdrawn was contemplated to be revived as a brand in the hair care category. Thus, the petitioner

concludes that the two trade marks obtained by the first respondent in 1992-93 had been abandoned in 1994 and since then it has not used those

marks. The petitioner claims of having used the brand 'KANYA' for carrying on the business of beauty parlours since December, 1981. Marketing of

beauty products hair care and skin care by the first respondent are bound to create wrong impression of their origin. The petitioner claims that the two

marks of the first respondent are in violation of Sections 9, 11, 12 and 18(1) of the Act and thus those are disentitled to protection in a court of law.

There is a non-user of both the marks since 1994. Mark No. 598586B in class 5 has never been used. The cause of action for rectification application

arose in 1994 when the first respondent abandoned the use of the trade mark and on 22.2.2003 when it declared in an advertisement mela in Chennai

that it intends re-launching a product in the name of 'KANYA' after a lapse of nine years.

First respondent in his counter statements filed on 29.12.03 in both the cases has disputed the claims of the petitioner. The first respondent claims

that the news item about the re-launch of the programme carried out in the newspapers on 15.2.03 was indeed an expansion of its business and had

nothing to do with the revival of the abandoned brand 'KANYA'. First respondent denied having committed any act of passing off. First respondent

alleged that the petitioner's business is a service industry and the respondent holds registration in class 3 and class 5 in respect of the trade mark

'KANYA' word and label respectively. Whereas the petitioner holds registration in class 16 for the trade mark 'KANYA BEAUTY PARLOUR' with

hand mirror device in respect of paper articles, stationery etc. First respondent submitted that he had taken a licence from the Drug Controller for the

manufacture of these products.

The issue before us is to decide as to the application for rectification of the register moved by the petitioner under Sections 46, 56 read with Section

108 of the Trade and Merchandise Marks Act, 1958. The learned counsel from both the sides produced their evidences in type set form. First

respondent holds trade mark Registration No. 598586B dated 3.6.93 in respect of herbal medicinal formulations, medicaments, pharmaceutical

preparations in class 5 and trade mark Registration No. 584307B in respect of detergents including cleansing agents for special purposes, car

shampoos, perfumery, deodorants, hair care products, personal care products, cosmetics and toiletries, face creams, lip salves, preparation for cleaning

teeth, mouth washes, sunscreen creams, lotions, shaving cream, after-shave lotion, nail polishes, pomades, brilliantine, cleaning and polishing

preparations in class 3. The registrations were taken originally in the name of Beauty Cosmetics Ltd. from Kranes Cosmetics (P) Ltd. on assignment

and the said Beauty Cosmetics Ltd., got its name changed to Cavinkare Limited and accordingly a fresh certificate under the Companies Act, 1956

was issued by the Registrar of Companies. Thus, the original company which got its trade mark registration is still holding those trade marks since

1993.

The petitioner is a proprietary concern engaged in the business of beauty parlours. She obtained her trade mark registration 703898 dated 2.4.96.

Although her registration is for the paper and paper products, the learned counsel for the first respondent submitted that she had never been in the

business of marketing paper or paper products. This is also amply borne out of its submissions made in the application moved for rectification of the

register under TRA/41/2003/TM/CH. The business of beautification, skin care and hair styling as claimed by the petitioner falls within the sphere of

business relating to services. The Trade and Merchandise Marks Act, 1958 covers filed about the registration of trade marks relating to goods only

and not in relation to services.

The petitioner holds the trade mark registration 703898 dated 2.4.96 in class 16 in respect of paper and paper articles, books, printed materials,

publications, brochures, pamphlets and other stationery items included in class 16 in relation to trade mark 'KANYA BEAUTY PARLOUR' with

device of hand mirror. Under the present petition it is not for us to decide as to the validity of that registration. But it is sufficient for us to assume that

the goods for which registration stands i.e. paper etc., are surely different from the description of goods covered under the registrations under

challenge held by the first respondent and thus there is no case for passing off and deceptive similarity as contended by the petitioner. Thus, the

general and sweeping contention raised by the petitioner that the first respondent's marks are in violation of Sections 9, 11, 12 and 18(1) does not stand

the scrutiny of law in this regard. Again, the petitioner could have taken up these matters in opposition when these marks were advertised for

registration.

The next question which arises for our consideration is as to whether the petitioner withstands the test of an aggrieved person in terms of Section

46 of the Act. The expression ""aggrieved person"" has received liberal construction at the hands of the courts and includes a person who has, before

registration, used the trade mark in question as also a person against whom an infringement action is taken or threatened by the registered proprietor

of such a trade mark [National Bell Co. v. Metal Goods Manufacturing Co. (P) Ltd., AIR 1971 SC 898 (904)].

The major premise of the petitioner in her application for rectification of the register rests on Section 46(1)(b) of the Act. The distinguishing

features of rectification of register based upon Clause (b) of Sub-section (1) of Section 46 has been succinctly brought out by Justice Madon in his

judgment in American Home Products Corporation v. Mac Laboratories Pvt. Ltd., AIR 1986 SC 137 (pg 154, para 33 and 34) as under:-

The distinction between Clause (a) and Clause (b) is that if the period specified in Clause (b) has elapsed and during that period there has been no

bona fide use of the trade mark, the fact that the registered proprietor had a bona fide intention to use the trade mark at the date of the application for

registration becomes immaterial and the trade mark is liable to be removed from the register unless his case falls under Section 46(3), while under

Clause (a) where there had been a bona fide intention to use the trade mark in respect of which registration was sought, merely because the trade

mark had not been used for a period shorter than five years from the date of its registration will not entitle any person to have that trade mark taken

off the Register.

Under both these clauses the burden of proving that the facts which bring into play Clause (a) or Clause (b) as the case may be, exists is on the

person who seeks to have the trade mark removed from the Register. Thus, where there has been a non-user of the trade mark for a continuous

period of five years and the application for taking off the trade mark from the Register has been filed one month after the expiry of such period, the

person seeking to have the trade mark removed from the Register has only to prove such continuous non-user and has not to prove the lack of bona

fide intention on the part of the registered proprietor to use the trade mark at the date of the application for registration. Where, however, the non-user

is for a period of less than five years, the person seeking to remove the trade mark from the Register has not only to prove non-user for the requisite

period but has also to prove that the petitioner for registration of the trade mark had no bona fide intention to use the trade mark when the application

for registration was made.

The major emphasis in Clause (b)(1) of Section 46 is that during the period of five years and one month immediately before filing of the application

there was no bona fide use of the registered trade mark in relation to those goods for which it has been registered by the proprietor thereof for the

time being. The expression ""bona fide use"" implies that there has been a real and genuine use of the mark. Morris L.J. in Electrolux Ld. v. Electrix

Ld., (1954) 71 RPC 23 at page 42 (CA) said in relation to corresponding Section 26 of the UK Act of 1938:

The Legislature, in my view, had in mind that someone could not gain immunity from attack by asserting use when there was really only some

fictitious or colourable use and not a real or genuine use.

The following observations in Harold Radford & Co. Ld's Appl, (1951) 68 RPC 221 relating to the expression ""in relation to goods"" are relevant for

the purpose of the present case:-

From this, it seems to me that use of a mark in advertising media must be concurrent with a placing of the goods on the market if it is to be registered

as ""trade mark"" use within the meaning of Section 68. Hence, I must hold that use of a mark in advertising media (solus) i.e. without any goods to

offer concurrently with such advertising media is not ""trade mark"" use within the meaning of Section 68. I would add that to hold otherwise would

seem to me to nullify the effect of certain sections of the Act. For instance, a proprietor of a registered trade mark might, without having any goods to

offer, advertise his mark at periodic intervals, and thereby prevent any attack being made upon the mark under the provisions of Section 26(1) of the

Act.

Glossing upon the above observations of Mr. Faulkner in Harold Radford & Company case, J. Falconer in Hermes Trade Mark in the High Court of

Justice, Chancery Division 1982 RPC 425 observed as follows:-

Thus, if the registered proprietor should commence a series of advertisements featuring his mark as part of an introductory campaign, prior to putting

his goods on the market under the mark, but before they were actually on the market, in my judgment such use would clearly be use of the mark in the

course of trade, not upon the goods or in physical relation thereto, but it would be in other relation thereto, the point being that it would be use in the

course of trade in those goods, albeit in advertisements"".

J. Ajoynath Roy in Kabushiki Kaisha Toshiba v. Toshiba Appliances Co. & Ors., 1994 PTC 53 (Cal), explained the law relating to rectification in

India as under:-

Thus a mere use of the mark in advertising or other publication media is insufficient as 'use'. That is quite understandable, because if it were not so,

trafficking in trade marks could be legally indulged in, for a mark could be registered and thus kept alive merely by advertisement without even putting

any goods into the market.

Affidavit filed by the first respondent in respect of its case relies upon number of bills and invoices relating to the sale of its products since May,

1993. Many invoices and Bills are for the publicity and advertisement done by them. Closer scrutiny of the Bills and invoices indicates that those are

confined to the year 1993 and further those relating to sale of its products are restricted to Kanya anti-lice powder. The invoices for publicity and

advertisements are from Oglivy & Mather Ltd. and all those relate to the year 1993. All these bills invoices have been issued in the name of, or

addressed to, Kranes Cosmetics Private Limited, assignor company of the first respondent. This fact relating to restricted gamut of the bills and

invoices not going beyond 1993-94 was accepted at bar by the learned counsel of the first respondent. However, he put a strong reliance upon the

continued progress of expansion undertaken by the first respondent and for that matter he drew our attention to news item published in the Hindu

Business Line dated 13.2.03 and the Metro Plus dated 18.2.03 wherein it was reported that the first respondent with a view to expand its business

activities had proposed to launch business promotional drive for its hair care products under the trade mark 'KANYA' by organising a contest for the

advertising agencies scheduled to be held on 22.02.03. It is important to cull out the relevant portion of the news items which is relatable to the trade

mark 'KANYA'. It was mentioned:-

CavinKare, in association with the Ad Club has organised a contest that would revolve around hair care brand, 'KANYA' from its stable"". ""The

upshot of this exercise is that if CavinKare likes the campaign, it could use it to push the brand.

The market research contests with a view to have a feel of the market in order to take decisions, for producing goods and identifying the brands

and their potential is no substitute of the ""advertisements"" so assiduously emphasised by the Courts in India and England as being a vehicle of bona

fide use under Section 46(1)(b). In those scheme of things, the definite product with a definite brand through identified sale channels is sought to be

offered through advertisements.

In the result we find that there had not been bona fide use for more than five years one month in relation to the goods for which the registration of

the trade mark had been given. Consequently, we allow these applications and direct the second respondent herein to rectify the register by removing

both the registered trade mark Nos. 584307B and 598586B of the first respondent from the register. No orders as to costs.