Liberty Footwear Company vs Force Footwear Company & Anr

S. Usha, J

TRA/11/2005/TM/DEL

This is an application for removal of the trade mark registered under No. 214282 B in class 25 under section 56 of the Trade and Merchandise

Marks Act, 1958 (hereinafter referred to as the Act).

The brief facts of the case are as follows:-

The applicant is engaged in the manufacturing and sale of foot wears. The applicant is carrying on the business under the name and style of Liberty

Foot Wear Company, a partnership firm. The applicant has been using the trade mark FORCE 10 in respect of foot wears since the year 1990. The

applicant has filed an application for registration of the trade mark FORCE 10 under No. 553998 in class 25 for foot wears of all kinds and the

application is pending for registration.

The applicant has sold their goods bearing the trade mark FORCE 10 since 1990 and their sales turn over runs into more than ' 38.0 crores. The

public and trade associate the trade mark FORCE 10 with the applicants and with none else.

The respondent No. 1 is claiming to have acquired registration of the trade mark FORCE under No. 214282 in class 25 as of 13.03.1963. The

respondent No. 1 in fact is not using the trade mark since the last many years for more than five years and one month from the date of filing this

petition and is, therefore, liable to be cancelled under the provisions of sections 46 and 56 of the Act.

The applicant and the respondent No. 1 are engaged in the same filed of activity and the applicant has filed this application for rectification and the

same has been objected to by the Registrar of Trade Marks on the ground that the respondent No. 1 is the registered proprietor of the trade mark

FORCE. The impugned registration wrongly remains on the register as the respondent No. 1 is not using the trade mark.

Aggrieved by the said registration the present application has been filed for the removal of the said trade mark on the following grounds:-

(a) that the registration has wrongly been made and is wrongly remaining on the register;

(b) that the respondent No. 1 is not the proprietor of the trade mark in respect of foot wear as the respondent No. 1 has imitated the trade mark of the

applicant;

(c) that the trade mark is not distinctive of the respondent No. 1's goods or its business;

(d) that the trade mark FORCE was not distinctive nor was adopted to distinguish nor was capable of being distinctive;

(e) that the registration was obtained by applying fraud and by concealing the material facts before the Registrar of Trade Marks;

(f) that the impugned trade mark was not put to use for the last five years and one month and is therefore, liable to be removed from the register;

(g) that the applicant has been using the mark FORCE 10 since 1990 continuously, extensively and exclusively and as such the applicant is entitled to

the exclusive use of the mark FORCE 10;

(h) that the applicant is a person aggrieved and is competent to institute the instant rectification application.

The respondent No. 1 herein filed their counter-statement denying the various averments made in the grounds of the rectification application. The

respondent No. 1 stated that the instant rectification application is not maintainable as the necessary ingredient required under the provisions of the

Act has not been made out. The instant rectification application has been filed beyond the period of limitation. The rectification application has been

filed without any cause of action. The instant rectification application is liable to be rejected under the provisions of Order 7 Rule 11 (A) of the Code

of Civil Procedure.

The applicants had adopted the trade mark FORCE 10 in relation to foot wear much subsequent to the adoption of the respondent No. 1 solely with

the view to calculated deception and confusion in the market and to pass off their goods as that of the respondent No. 1. The predecessors of the

respondent No. 1 adopted the trade mark FORCE in the year 1947 and had been using the same continuously upto the first day of June 1984.

Thereafter the said trade mark was assigned to the respondent No. 1 by way of assignment deed dated 01.04.1984. One Mr. Ahmed Mian, the sole

proprietor of Force Foot Wear Company is the predecessor of the respondent No. 1. At present Mr. Nazeer Ahmed is the sole proprietor of the

respondent No. 1. Mr. Ahmed Mian is the father of Mr. Nazeer Adhmed. The respondent No. 1 filed an application on Form TM 24 dated 29.06.1984

for effecting necessary changes in the registered trade mark No. 214282 B in class 25 for the trade mark to be transferred in the name of Mr. Nazeer

Ahmed, the proprietor. The said application is still pending.

The business carried on by the respondent No. 1 is very extensive and the goods bearing the said trade mark are practically distributed in major

parts of the country. The applicant was fully aware about the use and reputation of the respondent No. l's trade mark FORCE at the time when the

applicant adopted the trade mark FORCE 10. The respondent No. 1 enjoys exclusive rights to the use of the said trade mark within the meaning of

section 28 of the Act and nobody is entitled to use the said trade mark or any other trade mark similar or identical with that of the respondent No. 1

without the respondent's leave and license.

The respondent No. 1 claims to be the proprietor of the trade mark FORCE on account of its prior adoption and continuous use. The said trade

mark has become distinctive in relation to the goods and business of the respondent No. 1. The applicant's trade mark FORCE 10 is identical with and

deceptively similar to the respondent's above mentioned trade mark and its use, therefore, amounts to infringement and passing off. The applicant,

therefore, cannot get any relief as they are pirators and infringers and are guilty of violating statutory and common law rights of the respondents. On

this account alone the application deserves to be dismissed.

The respondent No. l's trade mark FORCE has been associated with the respondent's aforesaid goods and the goods bearing the impugned trade

mark enjoys good reputation in the marked which is evident from the sales figures which runs into several lakhs of rupees. The respondent No. 1 has

also widely advertised the said trade mark through various medias and has spent sufficient sum of money on the publicity of the said trade mark. The

applicant has made several mis-statements in connection with the use of the trade mark FORCE 10. The applicant's adoption and use is dishonest and

fraudulent.

The respondent No. 1 denies the averment that the applicant has been using the trade mark FORCE 10 in respect of foot wear since the year

1990. The applicant is called upon to prove the same strictly in terms of law and by means of cogent documentary evidence. The applicant has started

using the trade mark FORCE 10 only recently with a view to take advantage and to trade upon the reputation of the respondent No. 1. The sales

figures given by the applicant since the year 1990 are also wrong and denied. The averments that the respondent No. 1 is not using the impugned

trade mark for more than five years and one month is also denied. In fact the respondent No. 1 has been using the trade mark through its

predecessors since 1947 and by the respondent No. 1 continuously since 1984 till date without any interruption from any corner of the business. The

respondent is also filing cogent and sufficient documentary evidence in support of the same. The respondent No. l's mark is therefore, not liable to be

cancelled under the provisions of section 46 and 56 of the Act. The registered trade mark is legally valid and is liable to be maintained on the Register

on account of its prior adoption and continuous use.

The allegations of concealment of material facts are wrong and denied. The applicant is not a person aggrieved as the applicant is a pirator and

has pirated the trade mark of the respondent No. 1 with a view to take advantage and to trade upon the reputation of the respondent No. 1. The

application is, therefore, not maintainable as the same has been filed with mala fide intentions and false assertions and the same is liable to be

dismissed with costs.

The applicant herein filed their rejoinder to the counter statement and have denied the contentions made in the counter statement. The applicants

stated that they are the earlier user of the trade mark FORCE 10 and have been using the same exclusively and extensively. The applicants also

submitted that the assignment deed said to have been executed by the predecessor in favour of the respondent No. 1 is not proper as no documents to

prove the same were placed before this court. The respondent, in fact, is not using the trade mark FORCE. The applicant denied the various other

allegations made in the counter-statement.

TRA/156/2004/TM/DEL

This is an application for removal of the trade mark registered under No. 553998 in class 25 under the provisions of the Trade and Merchandise

Marks Act, 1956 (herein after referred to as the Act). The applicant is engaged in the business of manufacturing and marketing of foot wears under

the trade mark FORCE. The word FORCE also forms material part of the applicant's trade name i.e. Force Foot Wear Company. The applicant's

predecessors adopted the trade mark FORCE in relation to foot wears and also the trading style Force Foot Wear Company in the year 1947 and

have been continuously using the same upto 01.06.1984. Thereafter, the said trade mark along with the goodwill of the firm was assigned to the

applicant vide deed of assignment dated 01.06.1984. The business carried on by the predecessors and thereafter by the present applicant is very

extensive and the goods bearing the said trade mark has been practically distributed in major parts of the country. The applicant's trade mark FORCE

has become a distinctive trade mark.

The applicant's trade mark FORCE is registered under No. 214282 B in relation to the foot wears in class 25 is registered as of 13.03.1963 and is

still valid and subsisting. The applicant has acquired exclusive right to the use of the said trade mark within the meaning of section 28 of the Act.

The applicant's trade mark has become distinctive and is associated with the aforesaid goods mentioned on account of its long, continuous,

extensive and exclusive use. The goods bearing the said trade mark are highly demanded in the market on account of the high standard acquired and

precision. The public at large associate the said trade mark with the goods of the applicant alone and that the applicant has been using the said trade

mark since the year 1947. The trade mark has acquired tremendous goodwill and reputation on account of high quality products. The applicant's sales

turnover runs to several lakhs of rupees. The applicants have also widely advertised their said trade mark through advertisement and various medias.

The respondent is engaged in the business of manufacturing and marketing of foot wear and had adopted the trade mark FORCE 10. The

respondent is not the proprietor of the trade mark. The respondent was fully aware of the applicant's use of the trade mark as the trade mark was

used since the year 1947. The respondent adopted the trade mark fraudulently, dishonestly and with improper motive only to take advantage and trade

upon the reputation of the applicant and to make illegal gains

The applicant on coming to know of the illegal activities of the respondents instituted a suit bearing No. 1783/1999 for infringement and passing-of

before the Hon'ble High Court of Delhi and the same is still pending adjudication. The respondent fully knowing the proprietorship of the trade mark

FORCE of the applicant filed rectification application before the High Court of Delhi bearing number C.O.No. 10/1998 against the said registered

trade mark No. 214282B of the applicant. The respondent had claimed adoption and use of the mark FORCE 10 since the year 1990. The respondent

is not admitted to be the proprietor and its alleged registration is not legal and regular. The adoption by the respondent is in violation of the statutory

law as well as common law rights.

The applicant is the person aggrieved because of the aforesaid illegal activities of the respondent. The respondent not being the proprietor of the

trade mark FORCE 10 is liable to be removed from the register on the following grounds:

(i) that the respondent filed the application for registration in utter disregard to the applicant's right over it on account of its prior adoption and

continuous use;

(ii) that the respondent has obtained registration by playing fraud on the Registrar of Trade Marks;

(iii) that the respondent has been engaged in trading deceptively;

(iv) that the trade mark was registered in contravention of the provisions of section 11;

(v) that the trade mark was not distinctive of the goods of the respondents;

(vi) that the respondent obtained the registration without any intention of using the same in relation to the case;

(vii) that the respondent is not the proprietor of the trade mark and the registration is in fraud of the applicant's rights;

(viii) that the entry made in the register is without sufficient cause;

(ix) that the entry in the name of the respondent is wrongly remaining on the register;

(x) that the registration is in contravention of the provisions of sections 9, 11(a), 11(e), 12 (1) and 18 of the Act;

(xi) that in the interest of justice, equity and good conscience and for purity of the register, the impugned trade mark may be removed form the records

of the Register.

The respondent filed their counter statement. The preliminary ground of the respondent is that the respondent forms part of the collaseum of '300

crore Liberty Group of companies including Liberty Foot Wear Company, Liberty Shoes Limited, Liberty Enterprises and Liberty Group Marketing

Division. Their group began their operations way back in the year 1954 from a retail outlet under the house mark Liberty. From there, the group grew

leaps and bounds and currently is one among the best manufacturing group in the relative field in India.

The respondent's mark was not only confined to India but of the world at large with its products under various well known trade mark inter alia,

including, FORCE 10, LIBERTY, BUDGET, GLIDERS, SENORITA marketed across the globe through channel partners that include other 600

multi-brand stores. The respondents entered the export business in 1964 catering to numerous countries including most of the developed nations.

The respondent's products under the trade mark FORCE 10 is extensively manufactured marketed and sold by themselves and their world wide

distributors with the sales running into several crores of rupees annually. The respondents are the bona fide and rightful proprietors of the trade mark

FORCE 10 having adopted the same in relation to various products falling under class 25 at least since the year 1990. The respondents have also been

spending large sum of money to promote and advertise the mark FORCE 10 and the products under it. The respondent's use is corroborated by

documents such as hand-outs and advertisements that prima facie prove the existence of the goods under the mark FORCE 10.

The respondents are the registered proprietors of the trade mark FORCE 10 under No. 553998. The said registration certificate is prima facie

evidence of the ownership and exclusivity of the rights of the said trade mark FORCE 10. It is also pertinent to mention that this registration being

more than 10 years old and duly renewed is conclusively valid under section 32 of the Act which confers upon the respondent exclusive right to use

the said trade mark in relation to their goods to the exclusion of all others.

The preliminary objection was that the respondents have been openly and continuously using the trade mark FORCE 10 ever since its adoption in

the year 1990. The respondents have gained knowledge as regards the alleged registration of the applicants on 24.11.1995 when the respondent had

received the examination report for the present registered trade mark. The respondents having ascertained the unknown use of the said registration

filed a rectification application being case No. TRA/11/05/TM/DEL which is pending disposal. The applicant had filed the civil suit as a counter blast

against the respondents on their alleged registration No. 214282. The respondent had denied the other averments made in the grounds of application

for rectification.

The counsel for the applicant filed their rejoinder to the counter statement denying the averments made in the counter statement.

The matter came up at the Circuit Bench Sitting at Delhi on 07.07.2010. Learned Counsel Shri M.S. Bharat appeared on behalf of the applicants

in TRA/11/2005/TM/DEL, who are the respondent in TRA/156/2004/TM/DEL. Shri S.K. Bansal, learned counsel assisted by Shri Sourab Kapoor

appeared on behalf of the respondent No. 1 in TRA/11/2005/TM/DEL who are the applicants in TRA/156/2004/TM/DEL.

As the issues involved in both the matters were one and the same, both the counsel advanced a common argument and therefore a common order

is being pronounced. The applicant in TRA/11/2005/TM/DEL who is the respondent in TRA/156/2004/TM/DEL shall be termed as the applicant and

the respondent in TRA/11/2005/TM/DEL who is the applicant in TRA/156/2004/TM/DEL shall be termed as the respondent for easy reference. Both

the rectification applications were filed before the Hon'ble High Court under C.O.No. 10/1998 and C.O.No. 31/2000 and the same were transferred to

this Appellate Board pursuant to the provisions of section 100 of the Trade Marks Act, 1999 and re-numbered as TRA/11/2005/TM/DEL and

TRA/156/2004/TM/DEL respectively.

The learned counsel for the applicant submitted that the TRA/11/2005/TM/ DEL was filed on 13.05.1998 and TRA/156/2004/TM/DEL was filed

on 14.11.2000. Both the rectifications were heard and disposed off by the Board in the year 2007 with a direction to file affidavit of evidence by both

parties within a period of four weeks on either side. As there was a delay, the parties had taken a miscellaneous petition for condoning the same. The

Appellate Board has refused to take on record the affidavit of evidence as there was inordinate delay and no valid reason was assigned for the delay.

The parties thereafter moved the High Court against the order of refusal to take on record the delayed affidavit of evidence. The Hon'ble High Court

by order dated 18.09.2009 directed that the documents be taken on record by granting one more opportunity and to hear the matter.

The counsel for the applicant submitted that they launched their business in the year 1990 and had adopted and used the trade mark FORCE 10

since then. The respondent adopted and used the trade mark in the year 1947 but had not used the trade mark for more than five years and one

month. On the ground of non-user, the mark ought to be removed. The counsel further submitted that the marks both FORCE and FORCE 10 the

impugned registered trade marks are subsisting and are in force as on date. The counsel further brought to our notice the list of documents filed by the

respondent in TRA/11/2005 dated 13.10.2006 and submitted that the label of the respondent filed at page No. 1 does not bear any date and so it is not

a valid document. At Page No. 5 the registration certificate - FORCE trade mark - as of 13.03.1963 was pointed out. At page 9, the sales figures

given are not dated nor is it attested by a chartered accountant. The deed of assignment though executed in the year 1984 and the FORM TM-24 filed

for recordal of subsequent proprietor is still pending. The counsel further submitted that the trade mark ""FORCE"" was not to be seen in the bills filed

at pages 25 to 57 of the typed set. The trading style is also seen only at pages 58 and 59 dated 16.01.1984. The other documents are only income tax

returns and the orders placed by the others where there is no mention of the trade mark.

The counsel further submitted that the respondents were aware of the applicant's trade mark as early as 1987. In the bills produced by the

respondent, there is no mention of the trade mark except for the shop name. The respondents have not used FORCE as their trade mark. The

respondents had restricted their business only to the state of Agra and not to any other place. The respondents had no distribution outside Agra.

The counsel relied on the documents filed by the applicant and submitted that they obtained registration for the trade mark ""FORCE 10"" as early

as on 08.07.1991 and the said registration is validly subsisting as on date. The advertisement which is of the year 1991 was brought to our notice

which was filed at pages 125 and 140-145 of the typed set of documents. The counsel drew our attention to passage 21.104 from the book on Law of

Trade Marks and Passing Off by P. Narayanan Sixth Edition and submitted that the onus of proving non-user will be on the person raising it, if it is not

proved by that person then the burden shifts on to the other person. Here that the applicants have proved non-user by the respondents as no bills or

any documents has been filed by the respondent and now the burden is on the respondent to prove that there has been use of the trade mark. The

counsel also relied on the affidavit of Neeraj Sharma, the investigator of M/s Intellectual Detective Pvt. Ltd., Delhi and submitted that the respondent's

business was restricted to Agra only and they were selling only in whole sale on specific orders without any brand name. When the respondent had no

brand name ""FORCE' then they had no locus standi to question the applicant's use. The counsel, therefore, prayed that the rectification application

TRA/11/2005/TM/DEL be allowed and the other application TRA/156/2004/TM/DEL be dismissed with costs.

The learned counsel for the respondent submitted that their trade mark ""FORCE"" was registered as early as 1963. The respondents had been

using the trade mark since 1947. The applicants trade mark ""FORCE 10"" was used since 1990 and registered as of 1998. The respondents were using

FORCE both as trade mark and trading style.

The counsel for the respondent stated that the applicant though has stated that a search was conducted to find out if any conflicting mark was on

the register had not filed any proof of the same before this Board. The affidavit of the investigator filed for the period for 1998 is false and fabricated

as the investigation has been made in the year 2006. The sales figures being very limited will not help the applicant. Goodwill includes assets and trade

mark. In the invoices, the name of the firm is not mentioned as it is a second copy. In all the invoices the trade mark ""FORCE"" has been mentioned.

The counsel also placed reliance on the affidavit received from various places in proof of use.

The second registration by the applicant is not a special circumstance and will in no way help the applicant. The trading style and the trade mark

will be a special circumstance and will help the respondent. Finally, the counsel submitted that the respondents are prior adaptor and user of the trade

mark and their rights are to be protected.

The counsel relied on some judgements in support of his case - 1998 PTC (18) 101 (Del) Borosil Glass Works v. O.P. Batra; 2002 (24) PTC 1

(SO Laxmikant V. Patel v. Chetanbhat Shah & Anr.; 1981 (1) PTC 46 (Del) Ellora Industries, Delhi v. Banarsi Dass and Ors., Delhi; 2002 (24) PTC

65 (Cal) Hybo Hindusthan and Anr v. Sethia Hosiery Mills; 2010 (42) PTC 108 (Del) Foodworld v. Foodworld Hospitality Pvt. Ltd.; 2003 (27) PTC

241 (SO Hardie Trading Ltd., and Anr. v. Addisons Paint and Chemicals Ltd.; 2009 (41) PTC 362 (Del) (DB) Pioneer Nuts and Bolts Pvt. Ltd. v.

Goodwill Enterprises; 1996 (16) PTC 262 (Del)(DB) M/s Hitachi Ltd. v. Ajay Kr. Agarwal & Ors.; 2002 (24) PTC 226 (Bom) (DB) Bal Pharma

Ltd. v. Centaur Laboratories Pvt. Ltd., and Anr.; 1991 (1) Delhi Lawyer 125 :1991 (11) PTC 178 (Del) M/s Hidesign v. M/s Hi-Design Creations;

AIR 1978 Delhi 250: PTC (Suppl)(1) 720(Del)(DB) Century Traders v. Roshan Lal Duggar & Co. and others.

We have heard and considered the arguments of both the counsel and have gone through the pleadings and documents. The instant matters being

applications for removal of the trade mark the main issue for consideration would be to decide whether the applicant is a person aggrieved to file a

petition for rectification. As per the provisions of section 21 of the Act, any person may oppose an application for registration, whereas an application

for rectification can be filed only by a person aggrieved.

Any trader who is in any way injured or restrained in his business or embarrassed by the registration of the mark will be a person aggrieved. In

Powell's Trade Mark (1894) 11 RPC 4 at 7 Lord Herschel stated as follows:

Wherever it can be shown, as here, that the applicant is in the same trade as the person who has registered the Trade Mark and wherever the trade

mark, if remaining on the Register, would or might limit the legal rights of the applicant so that by reason of the existence of the entry on the Register

he would not lawfully do that which, but for the existence of the mark upon the Register, he could lawfully do, it appears to me, he has a locus standi

to be heard as a person aggrieved.

In the same case Lord Watson stated as follows:

In my opinion, any trader is, in the sense of the statute 'aggrieved' whenever the registration of a particular trade mark operates in restraint of what

would otherwise have been his legal rights. Whatever benefit is gained by registration must entail a corresponding disadvantage upon a trader who

might possibly have had occasion to use the mark in the course of his business.

A defendant in a suit for infringement or passing off is a person aggrieved. A person who has used a mark from a period before the

commencement of use of the mark by the registered proprietor or a person who is threatened with an infringement action is a person aggrieved.

In the instant case, the applicant is a person aggrieved on account of the suit filed by the respondent for infringement and passing off. The

respondent could also be said to be a person aggrieved as they had been using the trade mark prior to that of the applicants and that apart they are in

the same field of business. Therefore, the applicant in TRA/11/2005/TM/DEL and the respondent in TRA/156/2004/TM/DEL are aggrieved persons

and are entitled to file and maintain the application for rectifications.

In both the rectification applications, the ground of fraud was raised. Though fraud has not been defined under the Act, the term ""Fraud"" has been

explained at page 146 in the book The Trade and Merchandise Marks Act, 1958 -Third Edition by K.S.Shavaksha, ""If the original registration has been

obtained by fraud, as for instance, by wrong statements deliberately made in affidavits submitted to the Registrar, the mark can be removed from the

Register. Simply alleging fraud is not sufficient, for in the absence of particulars, the application would be incompetent"". If a person procures

registration of a trade mark on knowing that the trade mark is already registered in the name of another person that amounts to fraud. In the instant

case, the applicant has contended that a search was conducted in the Registry of trade Marks and the application was made as no conflicting mark

was available and hence, the registration was obtained and there was no fraud played. In our opinion the applicant has not substantiated the same by

documents to rove that a search was made. The trade mark ""FORCE"" has been registered as early as 1963 and is renewed upto date and is still in

force whereas the applicant's adoption and use of the trade mark ""FORCE 10"" is of the year 1990. Even assuming that the respondents mark was

restricted to the area of Agra as contended by the applicant, the mark would definitely have been on the register which is registered for the whole of

India. Therefore, the adoption and registration of the trade mark ""FORCE 10"" by the applicant is not honest but with mala fide intentions.

The next ground raised by the respondent was that the trade mark was not used by the applicant. The respondent has admitted that in the year

1999 on coming to know of the illegal activities of the applicant filed a civil suit for infringement and passing off bearing Suit No. 1783 of 1999

whereas the application for rectification has been filed in the year 2000. The ground of non-user, therefore, does not sustain.

When the two rival trade marks ""FORCE"" and ""FORCE 10"" are identical/similar and the goods of both the applicant and the respondent are the

same, the question of possibility of confusion and deception is definitely seen. In such circumstances, the prior user is to be considered and their rights

are to be protected. In the instant case, it is very clearly seen that the respondents had adopted the trade mark ""FORCE"" as early as 1963 and had

also obtained registration which still continues, whereas the respondents had adopted and used the impugned trade mark ""FORCE 10"" since the year

1990. It is the general principle that when the marks are similar and the possibility of confusion is likely then the mark subsequent ought to be

removed. In the instant case, in considering the probability of confusion and deception, all surrounding circumstances ought to be considered. The

likelihood of confusion or deception must be considered with reference to purchasers of average intelligence and of average imperfect recollection

who are likely to purchase the goods using average caution.

In the instant case, the marks are similar/identical and the goods are identical, while considering the class of customers, no doubt it is being

purchased by any class of customers where the confusion is certain as to the origin of the mark as to whether it is from the applicants or from the

respondents. The onus is on the applicant for rectification to satisfy the court that the impugned trade mark on the Register is causing confusion

among the public. The applicant in TRA/11/2005/TM/DEL i.e. the respondent herein, on coming to know of the use of the trade mark by the

applicants herein has initiated action for infringement and passing off to restrain the applicant from using the trade mark ""FORCE 10"" as it was

causing confusion among the public as to the trade origin.

The next issue would be regarding the respondent's trade mark adopted from the trading style. An individual can trade under his own name as he

is doing business in which he has a legitimate interest. While adopting a name as the trade mark of his business he is required to act honestly and bona

fidely and not with a view to earn profit upon the goodwill and reputation of another. In the instant case, the respondent had adopted the trade mark

FORCE"" from the trading style Force Footwear Company, the use of the trade mark ""FORCE 10"" for similar goods would be undesirable in view of

the confusion which it may cause or is likely to cause in the minds of the public. The applicant in this case has adopted the trade mark ""FORCE"" in the

year 1990 along with the numeral 10 only to earn profit upon the goodwill and reputation earned by the respondent in our considered opinion. The

adoption by the applicant, therefore, cannot be said to be honest or innocent. Likelihood of deception of an unwary and ordinary person is the real test

and the matter has to be considered from the point of view of that person. The applicant's adoption of the trade mark ""FORCE 10"" which only

amounts to false deception as it is the respondent's case that they adopted the trade mark FORCE from their trading style.

The respondent's case is that their predecessors had adopted the trade mark Force in the year 1947 and had been using the same till the year

1984. By a deed of assignment, the present respondent claim to be a proprietor. The applicant's only contention was that the recordal of the

subsequent proprietor was pending till date and cannot be a valid one. In our opinion, the recordal is to be done by the concerned office for which the

parties cannot be made to suffer. This opinion has been the view of the various High Courts. In such circumstances, we are of the view that the

present respondents have taken necessary steps to protect their rights. The respondents claim to be the proprietor of the trade mark is therefore valid.

The applicants being the subsequent adopters of the trade mark have not given reason for their adoption of the trade mark ""FORCE 10"". Their

adoption in our opinion seems to be based on the use and reputation earned by the respondents which is a dishonest one. When the adoption is

considered to be dishonest, the applicants claim to be the proprietor of the trade mark cannot be accepted nor can the mark be allowed to continue on

the Register.

In view of the foregoing facts and circumstances, we are of the view that the respondents claim of proprietorship is valid and qualify as per the

provisions of section 18 (1) of the Act.

In view of the above observations we are of the opinion that the applicant's trade mark ""FORCE 10"" deserves to be expunged from the register.

The respondent's trade mark ""FORCE"" which has been on the Register for more than four decades shall continue on the Register. The original

rectification application No. TRA/11/2005/TM/DEL is dismissed and the rectification application No. TRA/156/2004/TM/DEL is allowed. There shall

be no order as to costs.

Since the rectifications have been ordered, the Miscellaneous Petition No. 54/2007 filed by the respondent in TRA/156/2004/TM/DEL has become

infructuous and the same is disposed of accordingly.