Mohammad Iqbal vs Kale Khan Mohammed Hanif And Ors.

S. Jagadeesan, J

The appeal is against the order of the Assistant Registrar of Trade Marks dated 25-10-1999, rejecting the opposition filed by the appellants for the

registration of the first respondent's trade mark. The first respondent filed an application No. 469805 before the Registrar seeking registration of trade

mark with the word 'FOHARA CHHAP' and with a device of Fountain and bearing the signature of the senior most partner Mr. Mohammed Hanif, in

respect of Beedis in class 34 claiming proprietorship of the trade mark as user since 17-1-1986. The said application was advertised for registration in

the trade mark journal No. 1013, dated 16-8-1991. The appellant herein filed the opposition stating that originally the trade mark belonged to one Kale

Khan Mohammed Hanif. Subsequently, Mr. Kale Khan converted his proprietorship business into a partnership firm by taking his sons as partners in

his firm and this was taken on record by order dated 8-12-1959 of the Registrar of trade mark. In 1966, Mr. Kale Khan died and his sons Mohammed

Hanif, Mohammed Aziz, Mohammed Islam and Mohammed Iqbal (the appellant) continued to carry on the business. The sons of Kale Khan made a

request in Form TM 24 and the orders were passed thereon on 27-9-1967, whereby the said sons of Kale Khan were brought on record as subsequent

proprietors of the original trade mark. There were some subsequent changes in the constitution of the firm and as per the partnership deed dated 3-8-

1979, the appellant alongwith his brothers and their sons carried on the said business in partnership in the firm name and style of Kale Khan

Mohammed Hanif. The said partnership firm had taken over the properties outstanding and all other assets and liabilities of the said firm including the

trade mark and goodwill of the firm. Consequently, the partners of the said firm were the owners of the original trade mark. It was also agreed

between the partners of the said firm that whenever any question of sharing the profits arises from the goodwill and the right in the trade mark and

labels, such benefit will be shared only by the sons of late Kale Khan. In January, 1996, the said partnership also was dissolved and the appellant was

expelled from the partnership firm on 16.1.1986. The appellant filed civil suit for rendition of accounts in RCS No. 156-A/86 in the Court of District

Judge, Bhopal. At the time of disposal of the opposition by the Assistant Registrar, the said suit was pending. A firm by name M/s. Kale Khan

Mohammed Hanif claiming to be registered owner of the old trade mark filed the suit for injunction and other reliefs against the appellants on the file

of the District Court, Bhopal, in Suit No. 35-A/86 which was also pending at the time of disposal of the opposition by the Assistant Registrar. Since the

Respondents are not the exclusive proprietors of the original trade mark, it is not open to them to seek for the registration of an identical trade mark

and as such the registration of the impugned trade mark is prohibited under section 18(1) of the Trade and Merchandise Marks Act, 1958. Moreover,

the impugned trade mark is identical with the earlier registered original trade mark Nos. 109029, 199399 which stands in the name of different

proprietors and also deceptively similar. Hence, the registration of the trade mark is prohibited under section 12(1) of the said Act. The registration is

also prohibited under section 11(e) of the Act, since it is not entitled for protection in the Court of law being an infringing trade mark. The impugned

trade mark is neither distinctive of the respondents nor is capable of distinguishing the respondent's goods or adopted to distinguish the same.

Consequently, the registration of the impugned trade mark is prohibited under section 9 of the said Act. The respondents having suppressed the

pendency of litigation in the Civil Court between the parties, the application is liable to be dismissed for fraud and as such there cannot be any exercise

of discretion in favour of the respondents under section 18(1) of the Act.

The respondents filed their counter statement stating that the original trade mark consisting of the word 'FOHARA CHHAP' with the device of a

Fountain with the signature of Mohammed Hanif, commanded high reputation and goodwill. The respondents also admitted about their carrying on the

old business of the firm under the reconstituted partnership with effect from 17-1-1986 and having taken over all the assets and liabilities of the old

firm under clause 7 of the deed of partnership registered under No. 96/86-87. The respondents are entitled to the use of the old trade mark and

consequently the impugned trade mark need not make any difference. The appellant cannot claim any right in the impugned trade mark when he

cannot claim any right for the use of the old trade mark.

Both the parties filed evidence about which no details is necessary at this stage. The opposition by the appellant was mainly based on sections

11(a), 11(e), 12(3) and 18(4) of the Act. The Assistant Registrar considered the matter in detail and rejected the opposition. The Assistant Registrar

overruled the objection under section 9 on the ground that the trade mark with the word ""FOHARA"" alongwith the device of a Fountain and the

signature of Shri Mohammed Hanif is a distinctive trade mark having no obvious meaning or no direct reference to the character or quality of goods.

Similarly, when considering the objection under section 11(a), the Assistant Registrar has rejected the opposition of the appellant on the ground that the

appellant failed to discharge the initial onus of proof cast on him that the opponent's mark has acquired reputation. While considering the objection of

the appellant under section 12(3), the Assistant Registrar held that the respondents have been continuously using the trade mark after the

reconstitution of the firm in 1986. The impugned trade mark has been adopted by adding an additional distinctive feature, the signature of the senior

partner Mohammed Hanif and as such, the respondents are entitled for the registration. Consequently, the Assistant Registrar exercised his discretion

in favour of the respondents and directed the registration of the trade mark under the impugned order before us.

The learned counsel for the respondents took a preliminary objection with regard to the maintainability of the appeal on the ground of limitation. He

also referred to the averments made in the affidavit of the appellant in paragraph No. 12 about the knowledge of the impugned order. He also pointed

out the averments made in the plaint and contended that in view of the contradictory statements with regard to the date of the knowledge, there is

absolutely no bona fide in the conduct of the appellant for entertaining the appeal. At any rate, the appeal was not presented within 90 days from the

date of the order or from the date of communication. Equally, the statement of the appellant that the respondent forwarded the copy of the impugned

order sometime in July, 2000 is also false. The cover sent to the appellant was returned unserved and as such it is not clear as to the source of the

knowledge of the appellant about the impugned order. Further, the petition is vague and the appellant has no right to oppose the registration of the

respondent's mark in view of the civil suit ending in favour of the respondents.

The learned counsel for the appellant, while replying to the preliminary issue, advanced the arguments on merits also. He contended that the

impugned copy of the order of the Assistant Registrar was not communicated to the appellant. Consequently, the limitation starts from the date of the

knowledge of the appellant. Even though three dates 19.5.2000, middle of June, 2000 and middle of July, 2000 have been given in various proceedings,

as per any one of the dates, the appeal is within time. Even if we take the earliest date, still the appeal is within time and as such, the discrepancy of

the dates with regard to the knowledge of the appeal does not have any bearing.

On merits, the learned counsel for the appellant contended that when the civil suits are pending between the parties, the respondents cannot be

considered to be the registered proprietors of the trade mark. Even though the respondents have obtained a decree in their favour, still they are liable

to render accounts in respect of the old trade mark. If the respondents are permitted to register the impugned trade mark which is identical to that of

the old trade mark, then there is every possibility that the respondents may evade rendering of the accounts in respect of the turnover after the

registration of the impugned trade mark. On this ground also, the respondents are not entitled for the registration.

We have carefully considered the above contentions of both the counsel.

At the outset, we are not inclined to go into the preliminary objection raised by the learned counsel for the respondents for the simple reason that the

original records are not available with the Trade Marks Registry. In the absence of the original records, we have to presume that the statement made

by the appellant that he was not served with the impugned copy of the order of the Assistant Registrar is true, in the interest of justice. Hence, we

have to take it especially in the absence of any evidence to the contrary, that the appellant was not served with the copy of the order. The High Court

of Bombay accepted the plea of the appellant and has numbered the main appeal and as such, we do not want to re-open this issue. So far as the

merits are concerned, here again, there is no need for us for any elaborate discussion. It is an admitted fact that the original owner of the trade mark is

one Shri Kale Khan Mohammed Hanif. The respondent firm is having the partners who are the sons of the said Kale Khan. The appellant is also one

of the sons of the said Kale Khan. Even during the life-time of the said Kale Khan Mohammed Hanif, he took his sons as the partners and the

partnership was constituted. Consequently, after his death, the partnership was reconstituted in 1986. Thereafter, some dispute arose. The parties

went to the court to get their redressals. Now, the appellant has got a decree for rendition of accounts by the respondents as admittedly the

partnership is now dissolved due to the dispute between the partners. The appellant is entitled to use the original trade mark and this was not objected

to by the respondents at the hearing. The only objection raised by the appellant is that the impugned trade mark only consists of the signature of the

senior most partner and that the two marks are more or less similar and the respondents may evade rendition of account in respect of the impugned

mark and so the mark should not be registered. At the hearing the counsel for the respondent referred to the judgment of the VII Additional District

Judge, Bhopal, dated 4th November, 1996, in Civil Suit No. 69-A/90 filed by the appellant, wherein it has been ordered that the appellant is entitled to

rendition of accounts. Further, the counsel for the respondents claimed that their trade mark is distinctive as it consists of the signature of the senior

most partner and the same has been ordered to be associated with registered trade mark 409447. It is admitted that the partnership was reconstituted

and the first respondent is to use the original trade mark by taking over the assets and liabilities of the firm. We hold that as per the terms of the

reconstitution of the partnership, the first respondent is entitled for the use of the original trade mark. In such circumstances, the respondent is now

seeking the registration of the impugned trade mark similar to that of the original trade mark by adding an additional distinctive feature, the signature of

the senior most partner. The Registrar has also rightly allowed the same and has ordered at the admission stage that it should be associated with trade

mark No. 109029, 199399 and 409447 in view of similarity between the marks under section 16 of the Act. Application No. 469805 has not been

allowed by the Registrar to proceed as an independent application and as the trade mark application No. 469805 is associated with registered trade

mark No. 109029 and others, because of its similarity with them. The appellant can take up the question of rendition of accounts in respect of trade

mark application No. 469805 in the different suits pending at present. Consequently, the impugned order of the Assistant Registrar need not be

interfered with. Appeal is dismissed with no order as to costs.