M/S. Ambika Exports (P) Ltd., D-145, Phase--Iv, A, Focal Point, Ludhiana (Punjab) vs M/S. Ambika Industrial Corporation, B-Xxxi-630, Janta Nagar, Ludhiana Also At E-260, Phase Iv, A-Focal Point, Ludhiana (Punjab)

V. Ravi, Technical Member

By this common order, we are disposing of ORA/231-237/2010/TM/DEL along with the Miscellaneous Petition No. 53-59/2011-AND M.P. No. 236/2012 filed by the

applicant seeking direction of the Board on the issues raised therein. Both the main matter and the MP were heard together. The applicant has sought removal of the

following registered trade mark in the name of the respondent.

The case of the applicant is summarized below:

a. It was incorporated on 8th November 1994. The word AMBIKA is an integral and essential part of the trading style of the applicant's company. The applicant also

adopted a label AMBI and on 1st September, 2003 filed an application for its registration under No. 1229876 in Class 12 in respect of ""Bicycles, parts & fittings and

accessories thereof including tyres and tubes and autoparts"". This trade mark was duly accepted and granted registration, valid and subsisting.

b. The respondent herein consist of four partners i) Shri Ashwini Kumar ii) Shri Chandra Mohan iii) Smt. Alka Rani and iv) Smt. Monika Gupta. In fact Shri Ashwini Kumar

& Shri Chandra Mohan are brothers of Shri Rakesh Kumar Gupta the Managing Director of the applicant company. The brothers of Shri Rakesh Gupta have filed false &

fabricated case against the applicant in Suit No. C.S. (O.S.) 2175 of 2007. The Hon'ble Delhi High Court has restrained the applicant from using their registered trade mark

AMBI.

c. It is the case of the applicant that the said suit filed by the respondent does not disclose that the partners of the respondent company herein Shri Ashwini Kumar &

Chandra Mohan are real brothers of the applicant herein. The suit is filed only to harass the applicant's company Directors Shri Rakesh Kumar Gupta and Smt. Radha

Gupta. The respondents are well aware of the incorporation of the applicant company in 1994 and are barred by principle of estoppel and acquiescence to challenge their

corporate name.

d. Being aggrieved with the impugned registration the applicants have preferred the present petition to remove the above mentioned registered trade marks on the following

ground.:

i) the above registration has been obtained by concealment, untruth and so the impugned registration are disentitled to protection under court of law.

ii) the applicants have been using the trade name AMBIKA since 1994 and are, therefore, prior user being the first adopt of the same since 1994.

iii) the respondents are never the proprietor of all the above mentioned registered trade mark.

iv) the registration of the above marks is contrary to Sections 9, 11, 18, 47 & 57 of the Act.

v) the respondent/registered proprietor has no intention to use the above mentioned impugned trade marks and has never used the mark on the goods and so it was not

distinctive of the goods of the respondent.

vi) the registration of the impugned trade marks has been obtained by fraud and the respondent do not have any locus standi to seek statutory protection for the above

mentioned trade marks.

vii) the entry relating to the above trade marks is made without sufficient cause and is wrongly remaining on the register and therefore liable to be removed.

viii) the applicant state that the respondent have not used any of the registered trade marks for any of the goods in respect of which it has been applied for a continuous

period of 5 years and three months from the date of filing of the rectification petition. Alternatively, the applicant state that registered proprietors do not have exclusive right

to the impugned mark. Further, the registered proprietors have till the date of this petition never manufactured or sold the goods which are included in the impugned

registrations.

ix) most importantly, the applicants Director Shri Rakesh Kumar has never filed the joint affidavit on the basis of which the entry in respect of request in Form TM-24 for

bringing on record the subsequent proprietors under No. 318350 in Class 12 was allowed. The applicants state that the said joint affidavit purportedly signed by the retiring

partners Shri Om Prakash Gupta, Shri Rakesh Kumar and Shri Ashok Kumar dated 24.10.2006 is completely forged and is a false document as detailed in the

Miscellaneous Petition. It is the stand of the applicant that the earliest registration under No. 318350 is the mother registration and all subsequent registrations of the

respondents of the above mentioned applications are associated trade marks and therefore, all the above seven registration of the respondent registered proprietors are liable

to be removed from the register.

The case of the answering respondent is summarised below:-

a. The respondent is a partnership concern consisting of four partners mainly Shri Ashiwini Kumar, Shri Chandra Mohan, Smt. Alka Rani & Smt. Monika Gupta. They are

old established firm engaged in the business of manufacture and sale of cycle parts and accessories thereof, tyres and tubes, gymnastic equipment under the trade mark

label AMBIKA and the trade name Ambika Industrial Corporation since 1970. The respondent had acquired assets of its predecessors including the trade mark goodwill &

reputation thereof.

b. Shri Rakesh Kumar, the Managing Director of the applicant company is the brother of the two of the partners of the respondent and the brother-in-law of another.

Further, Shri Rakesh Kupta Gupta in fact was a partner of the predecessor of the respondent firm between 2nd April, 1977 to 1st April, 1987. By virtue of the retirement

deed dated 1.04.1987 Shri Rakesh Gupta retired from the respondent firm and he relinquished all his rights, title, assets, liabilities together with stock, fitting, furniture's,

premises, firm name and style etc. and his interest in the partnership firm in favour of the continuing partners. The assets of the partnership firm including the trade mark

and copyrights is owned by the respondents which is the subject matter of the present petition.

c. Respondent state that Clause 9 of the said Dissolution Deed dated 01.04.1987 also stipulated that Mr. Rakesh Kumar would not be entitled to any goodwill of the

partnership firm, name and business. The relevant portions of the above mentioned Dissolution Deed are mentioned as under:

...

Whereas Shri Rakesh Kumar offered to retire from the partnership business and which offer was accepted by the continuing partners and accordingly Shri Rakesh Kumar

retired from the partnership business on 31.03.87, leaving the business along with all assets and liabilities in favour of the continuing partners.

The terms and conditions on which dissolution took place was on 31.03.87 and which were agreed to by them orally then, are now reduced into writing, hereunder the terms

of the dissolution deed.

NOW THIS DEED OF DISSOLUTION WITNESSES AS UNDER:

...

In consideration of his capital share as on 31.03.1987, the retiring partner has relinquished all his rights, titles and interest in the partnership firm in favour of the continuing

partners. The consideration of capital share shall be paid by the continuing partners in due course of time.

That all assets and liabilities of the firm together with stock, fitting and furniture, premises, firm name and style etc. has been made over to and taken over by the

continuing partners.

...

The retiring shall not be entitled to any sort of goodwill of the partnership firm, name and business.

(emphasis supplied)

Shri Rakesh, therefore relinquished all his claims, if any, with respect to the trademarks/labels AMBIKA, AMBIKA LABEL, ANAMIKA LABEL etc. and thereafter he

had no concern, claims, disputes, rights etc. with respect to the said trademarks/labels as well as the copyrights therein. The present petition is, therefore, malicious and

malafides with a view to take undue advantage of the goodwill and reputation of the respondent firm.

d) the respondent state that they have been using each trade mark/label continuously since the time of adoption of the various mark till date. They also originated and are

owners of the artistic work/features in respect of various AMBIKA labels under the Copyright Act, 1957.

e) the respondent state that they are manufacturing high quality cycle products which is in great demand within & outside India. They have well equipped plants with latest

machineries and all facilities for manufacturing under one roof. The raw materials are procured from very reputed sources to ensure quality control. They have qualified

technicians and professionals to inspect the goods at every stage of production in their testing lab and are the leaders in this field. They have registered themselves with

various Government authorities like Sales tax, Income tax departments, SSI etc. Exhibits are furnished to show year-wise sales of the goods under the various trade marks.

On the date of cancellation petition, the respondents had a turn over of over Rs. 84 lakhs under its various brand.

f) It is only in June, 2007, the respondent became aware that the petitioners impugned adoption and claim of user of the trade mark AMBI when he noticed advertisement,

bill boards and sign boards of the applicant being conspicuously displayed. On further enquiry, the respondent learned that the applicants have clandestinely and

surreptitiously obtained registration of the trade mark AMBI label. The applicant is not and cannot be the proprietor of AMBI label as he has substantially copied the well

known mark of the respondent with all its features and artistic work, lay out, design, lettering style, get up, make up, colour combinations and ideas thereof. The imitation is

so exact that even big retailers, dealers and distributors are bound to be confused/deceived.

g) the applicant has blatantly made false and misleading statement to his own knowledge and approached the Hon'ble Board suppressing and concealing most important

material facts to over reach and obtain undue advantage. The petitioner is guilty of obtaining an illegal company incorporation under the trade name AMBIKA EXPORT

PVT. LTD and a fraudulent trade mark registration obtained surreptitiously under No. 1229876.

h) the respondent state due to inadvertence and lack of communication with their counsel, the fact that Shri Rakesh kumar being brother of the two partners of the

respondent firm was not mentioned in the suit which has, however caused no prejudice to the applicant. They are nevertheless taking steps to correct the said omission in

the pending suit before the Hon'ble Delhi Court.

i) the respondent deny any knowledge of incorporation of applicants firm M/s. AMBIKA EXPORTS(P) Ltd. which resulted in acquiescence by them and are estopped now

from questioning the same.

j) In view of the foregoing all the above registration are valid and the objection raised under Sections 9, 11, 18, 47 and 57 are not sustainable.

k) the prayer of applicant is completely misconceived, devoid of legality, guilty of misrepresentation, suppression of material and crucial facts and the instant application be

dismissed with heavy compensatory and exemplary costs.

In February, 2011, the applicant filed miscellaneous petitions seeking the directions of the Board with the prayer to stay the operation of all the impugned registrations

during the pendency of the petition. In turn, the respondent who have also filed Miscellaneous Petition are seeking prior disposal of the rectification applications. The brief

facts giving rise to these Miscellaneous Petitions are :

(i) the first and what the applicants call ""the mother registration"" of the respondents various marks is AMBIKA under No. 381350 in Class 12 in the name of the following

persons:

(a) Om Prakash Gupta

(b) Rakesh Kumar

(c) Ashok Kumar

(d) Ashwini Kumar

(ii) The internet site of trade marks Registry provide following information in respect of registered TM 381350.

Persuant to a request on from 24 dated 30th April, 1998 and order thereon dated 30th November, 2006, ""Ashwini Kumar, Chander Mohan, Smt. Alka Rani & Smt. Monika

Gupta trading as M/s. Ambica Industrial Corporation, B-XXXI-630, Janta Nagar, Industrial Area-B, Ludhiana-3, (PB.) is/are registered as subsequent proprietor(s) of this

trade mark as from 01.04.1996, by virtue of Dissolution Deed dated 01.04.1987, Partnership Deed dated 01.04.1996 and Partnership Deed dated 01.04.1996 and an affidavit

of Shri Aswani Kumar dated 24.10.2006 and Joint Affidavit of retiring partners Shri Om Prakash Gupta, Shri Rakesh Kumar & Shri Ashok Kumar dated 24.10.2006.

Registration renewed for a period of 10 years from 25.09.2009 advertised in Journal No. 1425.

(iii) ""that the applicant's director Shri Rakesh Kumar has never filed any such affidavit as mentioned hereinabove. The applicant calls upon the Respondent to produce the

said affidavit. It is alleged that Respondent have committed forgery and filed such an affidavit of Shri Rakesh Kumar which is ex facie fabricated and a false document.

The said registration is the mother registration and is basis of all other registrations of the respondent which have also been associated with each other. The applicant has

assailed the registrations of the Respondent. The respondent has no locus standi to seek deletion of the name of the Respondent's director Shri Rakesh Kumar and then

seek a restraint order against the use of the trade mark AMBIKA. The Respondent/Registered Proprietor has approached the Board with unclean hands.

(iv) It is the case of the applicant that Shri Rakesh Kumar never signed the Joint affidavit dated 24th October, 2006 with Shri Ashok Kumar. In fact another purported

deponent Shri Om Prakash Gupta (father of both respondent and applicant) had in fact died on 31st January, 2001. The joint affidavit is palpably a false and fabricated

document. The subsequent entries on the register have been obtained by fraud. As the Joint Affidavit is clearly forged, the respondent cannot be allowed to enjoy the fruit

of this mischief and all the seven registered trade mark which are associated with each other should be expunged from the register. Hence the prayer to stay the effect of

these registration.

(v) In reply, the respondent state that it never filed any affidavits on behalf of Shri Ashwani Kumar dated 24.10.2006 and the joint affidavit of retiring partners Shri Om

Prakash Gupta, Shri Rakesh Kumar and Shri Ashok Kumar dated 24th October, 2006. The respondent firm had filed a request on from TM-24 dated 30th April, 1998 for

change in the name of the proprietors of the trade marks since the respondent firm had undergone a change in its composition and it was necessary to incorporate changes

in Registration Certificate. But the respondent deny having filed the above mentioned affidavit dated 24th October, 2006 and state it was not responsible for the filing of the

said affidavits nor the respondent authorized or instructed anyone to file the said affidavits.

Authorities relied on by the Applicant:

(a) ""Civil Appeal No. 99 of 1972-S.P. Chengalvarya Naidu (dead) by legal Rep; Vs Jagannath (dead) by legal Rep & Others ""-AIR 1994 SL 853

The courts of law are meant for imparting justice between parties. One who comes to the Court, must come with clean hands.

(b) ""SATISH KHOSLA Vs M/s ELI LILLY RANBAXY Ltd. & ANOTHER""-2002 (25) PTC-243-Del

No interim injunction given in earlier Suit--same application for interim injunction in subsequent Suit-no disclosure of what transpired in earlier Suit--Amounts to fraud upon

the Court.

(c) ""Ram Chandra Singh Vs Savitri Devi & Others"" (Civil Appeals No. 8216 of 2003 with 8217 of 2003 (2003) 8 SCC 319.

Application filed by an affected third party challenging the preliminary decree on the ground of having been obtained by practicing fraud--maintainability--Inherent Power of

Court to grant relief.

Authorities relied on by Respondent:

a) ""Harmohan Singh Vs Gurbax Singh""-(Delhi HC) 2001 PTC 629 (Del)

Assignment of trade mark--Where an dissolution of a firm, the defendant had surrendered all his rights and interest in the firm in favour of the plaintiff, such relinquishment

and surrender includes trade mark of partnership also disentitling the defendant to use the mark after dissolution and the plaintiff is entitled to grant of injunction against the

defendant from using the trade mark--CPC, 1908, Order 39 Rules 1 & 2.

(b) ""Shree Ganesh Enterprises Vs Sandeep Gullah"" (I.A. NO. 17646/2011 in CS(OS) No. 2683/2011)-- 2012(49) PTC 440 (Del)

Right of retired partner--scope of re-constituted firm--Partnership deed dated 03.08.2009 between the plaintiff and defendant--it was running catering and food outlets and

banquets hall under the trade mark CITY BANQUET--Retirement of defendant from the said firm by virtue of re-constitution of firm--At the time of retirement, the

defendant assigned all rights, title and goodwill and assets of the business in favour of the plaintiff--Plaintiff has been able to make out a strong case for the grant of interim

injunction and balance of convenience also lies in favour of the plaintiff (Para 17 & 20)

Partnership Act, 1932

Section 46--Right of retired partner--share of profit--It becomes clear that the assets/properties belonging to the partnership vests in the firm as the section uses the

expression "" property of the firm"" and not in the individuals and upon dissolution--Defendant is not entitled to take the benefit of his earlier prior user right in the previous

business, he carried out being a partner under the Partnership Act--Defendant was only entitled to his share of profits from time to time and after the dissolution of the

partnership or his retirement from the partnership of the value of his share (Para 20 & 26).

(c) ""Harsh Vardhan Rastogi Vs Champion Publications"" 2007 (35) PTC 365 (Del) Delhi HC]

Application seeking interim injunction in respect of trade mark 'Champion' in respect of hooks--parties real brothers--Reliance by plaintiff on dissolution deed of 1994--Suit

filed in 1997--No document on record showing that the defendant was using the trade mark 'Champion' between 1994 to 1997--Dissolution deed itself become assignment

of trade mark-Interim injunction granted.

(a) the Miscellaneous Petition was filed on 28th February, 2011 by the applicant before the Board. The applicant had also filed a complaint at the Trade Marks Registry,

New Delhi on how the subsequent entry in respect of Registered TM 381350 in Class 12 was allowed? This was taken up and a hearing on the objection on 28th

November, 2011 was held before the Assistant Registrar. By the order dated 23rd December, 2011, the Assistant Registrar ruled that ""In the interest of justice the entry

made in pursuance to the order dated 31.06.2006 is ordered to be removed from the Register of Trade Mark till the right are determined by the competent Courts and the

parties files fresh request in pursuance thereof in prescribed manner

(b) the Assistant Registrar recorded in the order that Shri Rakesh Kumar (the applicant herein) has filed a criminal complaint at the Dwaraka Police Station (North) and

notice has been served under Section 91 and 160 Cr. P.C. for supplying affidavit as submitted by the parties. The original affidavit has been seized by S.I. PS, Dwaraka.

She has also recorded that Shri Rakesh Kumar disputed only his signature and that of his late father on the joint affidavit and not on the dissolution deed.

What is the legal effect of the order of Assistant Registrar? In our view, it only restores the status quo ante. Shri Rakesh Kumar, the applicant herein had retired from the

partnership firm way back in 1987 (vide dissolution deed dated 01.04.1987). This has neither been denied nor disputed by the applicant. There has been several changes in

the constitution of the firm since then and at present the Partnership Deed of 01.04.1996 is the latest one subsisting. In that firm (a) Shri Ashwani Kumar (b) Shri Chandra

Mohan (c) Smt Alka Ravi and (d) Smt. Monica Gupta are the partners trading as M/s AMBIKA INDUSTRIAL CORPORATION who are the respondent herein. In our

view, the applicants are trying to divert the issue from crux of the matter who owns AMBIKA trade mark? Police investigation on the Joint Affidavit are ongoing and at this

stage to conclude it was planted or fabricated cannot be commented on. But even independent of it, there are voluminous documents on record which prove that the

respondents claim to be the owners of the trade mark AMBIKA as detailed below:

(a) Partnership Deed dated 24.06.1970 [Exhibit R-I]

(b) Dissolution Deed dated 24.05.1971 (Exhibit R-II

(c) Partnership Deed dated 25.05.1971 (EXHIBIT R-III)

(d) Deed of Dissolution dated 31.04.1973 (EXHIBIT R-IV)

(e) Partnership Deed dated 01.06.1973 (EXHIBIT R-V)

(f) Deed of Dissolution dated 1.04.1973 (EXHIBIT R-VI)

(g) Partnership Deed dated 02.04.1997 (EXHIBIT R-VII)

(h) Deed of Dissolution dated 02.04.1981 (EXHIBIT R-VIII)

(i) Partnership Deed dated 03.04.1981 (EXHIBIT R-IX)

(j) Deed of Dissolution dated 01.04.1987 (EXHIBIT R-X)

(k) Partnership Deed dated 02.04.1987 (EXHIBIT R-XI)

(l) Deed of Retirement dated 01.04.1987 (EXHIBIT R-XII)

(m) Partnership Deed dated 01.04.1996 the latest and subsisting deed) (EXHIBIT-XIII)

The applicant have not made a whisper of comment on any of these document. In fact Shri Rakesh Kumar, M.D. of applicant company has nothing to do with the

respondent since April 1987. In these circumstance in our view a cooked up controversy has been raked up by the applicants to interfere in the trade marks rights of the

respondent.

(a) We now look into the merits of the main rectification petition agitated by the applicant. The main ground of attack to seek cancellation of the impugned trade marks is

based on Section 47(1) (a) and (b) that the trade mark has been registered without bona fide intention to use and in fact no bona fide use was made of the trade mark in

relation to the goods in respect of which it is registered or upto a date three months before date of rectification application, a continuous period of fiver years or longer has

elapsed during which the mark was registered and there was no bona fide use thereof in relation to the good by the registered proprietor. To get a grip on the issue, the

factual position on each of the seven rectification application is compiled in a tabular form below:-

*Footnote

Exhibit PW-1 in ORA/231/2010/TM/DEL

(b) On the question of 'person aggrieved' this nomenclature has received liberal construction by judicial authorities. Both the applicant and respondent are in the same trade

that is, cycle business. There is no officious interference by the applicant. The impugned trade marks might limit the legal rights of the applicant, if it is continues to be on the

register. The applicant, therefore, have the necessary locus to be heard as 'person aggrieved' herein under section 57(2) of the Act.

(c) The rectification petition for cancellation of the various trade marks of the respondent above mentioned was filed on 8th July, 2010. Straightaway five out of seven

applications are premature to invoke Section 47(1) (a) and (b) of the Act. The remaining two trade marks are AMBIKA under No. 381350 and 645771. There is copious

evidence of use of these two impugned mark by the respondent. The particulars in the footnote clearly establishes that the trade mark AMBIKA has been extensively used

by the respondent. The footnote is just a representative sample culled from voluminous records and are just indicative but proof of use is conclusive. The objection raised

under Section 47(1) (a) and (b) is accordingly not tenable.

(d) The other objections raised are based on Section 9 and 11. The word AMBIKA is a common feminine name essential by derived from a HINDU Goddess by that

name. Adoption and use of such a name as a trade mark is quite legitimate and qualifies for registration subject to it being distinctive. In the instant case, the trade mark

AMBIKA has in fact been used in the market for 'cycles' for over a decade and in fact the respondent have proved user several years before filing of its application and

have therefore proved and established use that has not been traversed. We have no reason to disbelieve the respondent's claim of proprietorship of the impugned mark and

are the legitimate owners of the trade mark AMBIKA for the goods sold under the said brand. Both the trade marks under attack have acquired factual distinctiveness. In

our view the objection raised under section 9 is not well founded.

(e) Finally, objection has also been raised under Section 11 of the Act to attack the respondent's trade mark. We do not understand the basis of this objection. The applicant

have secured registration for AMBI many years after the respondent have registered AMBIKA and the rationale for invoking Section 11 is not understood. Law protects

an earlier trade mark unconditionally against later applications to register identical marks for identical good and the only exception is provided in Section 12 of the Act. In

these proceedings, all the marks of the respondent except AMBI under No. 131751 was prior to the applicant. Further, the respondent's mark under the trade mark

AMBIKA have proved user since 1974, whereas the applicant adopted AMBI only 01.04.2000. Of course the applicant can agitate removal of AMBI of the respondent.

AMBI was applied for by applicant under No. 1229876 on 1st September 2003 claiming user from 01.04.2000. AMBI was also applied for by respondent under No.

1317151 much later only on 25th October, 2004. Curiously also claiming user from 01.04.2000. Both are registered trade mark. But the fact remains that the cancellation

petition in respect of trade mark AMBI is premature (amongst other) as it has not yet crossed the 5 years 3 months window for expunging it under Section 47(1)(b).

Therefore, no interference is called for at this stage for even the removal of the trade mark AMBI of the respondent.

In the result, all the seven rectification applications have failed. Therefore, ORA/231/2010/TM/DEL, ORA/232/2010/TM/DEL, ORA/233/2010/TM/DEL,

ORA/234/2010/TM/DEL, ORA/235/2010/TM/DEL, ORA/236/2010/TM/DEL and ORA/237/2010/TM/DEL are dismissed for reasons mentioned in the body of the

decision. All the Miscellaneous Petitions are closed. There is no order as to costs.