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Judgment
S. Usha, J
Original Rectification Application is filed for removal of the Trade Mark (label mark) registered under No. 908627 in class 34, from the Register of
Trade Marks. The applicant is carrying on business of manufacturing and marketing beedies under the name and style of ""M/s. Tanmay Biri Factory"".
They are marketing the said beedies under the trade mark ""TANMAY BIRI"". The applicants adopted and used the trade mark since 1993, have
Central Excise Registration No. 6/HMB/KLY/93. The package contains a distinctive design and contains the word ""Tanmay Biri
The beedies are wrapped in a polythene enclosure which has a distinctive design, colour scheme and get up along with the photograph of the
applicant's son Tanmay Roy, which is copyrighted under No. A-70475/2005. They have applied for registration of the Trade Mark under No. 908620
in class 34 in respect of beedies on 09.03.2000.
The sales of beedies under the trade mark Tanmay Biri runs to several lakhs of Rupees. The applicants' trade mark has been advertised through
various medias and a large amount of money has been spent for the advertisement of the said goods.
By virtue of continuous and extensive use, the applicants trade mark Tanmay Biri has acquired tremendous goodwill and popularity and has become
associated with the applicants.
The applicants recently came to know that the respondents are manufacturing and making beedies under the identical Trade mark ""Tanmay Biri"" in
and around Calcutta. The wrappers used by the respondent are deceptively similar to the get up and colour scheme of the applicants.
The respondent being lured by the tremendous popularity and demand of the applicants' beedies under the trade mark Tanmay Biri started using an
identical trade mark and deceptively similar wrappers in order to pass off their inferior products as and for the goods of the applicants. The adoption
by the respondents is not bona fide and is dishonest. The respondents' adoption is with an intent to trade upon the applicants' reputation and to create
confusion in the minds of the public.
The applicants' are the lawful proprietor of the trade mark and bona fide adopter. The unauthorized use by the respondents is in contravention of
the provisions of the Act and constitutes passing off.
The adoption and use of the deceptively similar trade mark constitutes infringement and passing off. The use of a deceptively similar trade mark is
calculated to deceive and mislead the trade and public.
The applicant therefore filed a suit for injunction before the Hon'ble Calcutta High Court. Along with the suit, an interlocutory application was filed
for interim orders. An order of interim injunction was passed.
Meanwhile, in the first week of May, 2007 the applicants came to know that the respondents are selling the beedies under the trade name
Tanmay Biri"" and the mark is identical to the applicants mark. On 09.05.2007, the applicants published a Caution Notice. The respondents replied
stating that the suit has been dismissed for default on 31st January, 2007. Thereafter the applicants have taken necessary steps for restoration.
The goods are used by the same class of purchasers. The trade channels are same. The respondents are aware of the applicant's use and are
aware of the resultant confusion and deception. The impugned trade mark is not capable of distinguishing or adopted to distinguish the respondent's
goods.
The applicants are the prior and original adopters and user of the trade mark. The user claimed since 1999 by the respondents is absolutely
dishonest and mala fide. The adoption is in bad faith. The registration if allowed to remain in the register would be detrimental to the rights of the
applicants as well as the public.
The registration of the impugned trade mark was made without any sufficient cause and is remaining in the register without sufficient cause. The
existence of the impugned trade mark affects the purity of the register.
The respondents filed their counter statement stating that the applicant is not a person aggrieved and has no locus standi to file the present
application for rectification. The respondents deny the various allegations made in the application.
The respondents are carrying on trade in manufacturing, trading, marketing in Handmade Biris under the trade mark ""Deluxe Tanmay Biri""; it is a
composite mark consisting of an artistic design, the photograph of the respondent's daughter and the name and address of the respondent. The word
Tanmay"" is a fanciful expression used in relation to beedies. The said mark is capable of being adopted and used in relation to the goods.
The respondents conceived and adopted the trade mark on 01.10.1999. The respondents had used the trade mark openly, voluminously on a large
scale since adoption. Before adoption, the respondents conducted a search in the Trade Marks Registry to ascertain whether the same mark was
registered or pending and also carried out a market survey. Only after ascertaining so, the respondents adopted and applied for registration of the
trade mark. The respondent also holds copyright registration under No. A. 59916/2001.
The respondents have spent large amount towards popularizing the trade mark. Due to long and extensive sale, the respondent's trade mark has
become associated in the course of trade and public with the respondents and none else. The respondent's trade mark has acquired substantial amount
of goodwill and reputation on account of large sale and massive publicity. The respondents claim to be the proprietor of the trade mark by virtue of
prior adoption, use and registration both under the Trade Marks Act and Copyright Act.
The applicants have not used the trade mark since the year 1993 under the Central Excise Registration No. 6/NHB/KLY/93. This certificate is
valid for hand made branded biris is not mentioned. The document purported to be the approval of Brand as alleged by the application is dated
30.05.1997. Therefore, the claim of user since 1993 is false as well as the approval by the authorities is also false. The copy of the Central Excise
Registration certificate filed by the applicants is incomplete. The applicant is not using the trade mark as well as the artistic design since the year 2003.
Hence the applicant is not a person aggrieved. The applicants' application for registration under No. 1216429 is class 34 is dated 22.07.2003 whereas
the respondents' application is dated 09.03.2000 in class 34 under No. 908627 (impugned herein).
The statement that the sales figure runs to several lakhs of rupees is not supported by any evidence or any certificate from the Chartered
Accountant. The alleged user since 1993 is not substantiated. It is claimed that the applicants became aware of the respondents use only recently in
2007. In fact, the applicants were aware of the respondents' adoption and use in the year 2007 itself as they had filed a Civil Suit in C.S. No. 288 of
2002 before the Hon'ble Calcutta High Court.
The respondents have been using the trade mark since the year 1999 and there is no evidence of confusion or deception. The present application
has been filed mala fidely on false and frivolous grounds in order to encash upon hard earned reputation and goodwill enjoyed by the respondents in
respect of the said trade mark.
We heard Mr. Ranjan Bachawad, the learned counsel appearing for the applicants and Mr. K.K. Sharma, the learned counsel appearing for the
respondents.
The learned counsel for the applicants submitted that the applicants had been using the trade mark since the year 1993 and with a change in the
photo since the year 1999. The respondents have been using since the year 1999 only. The respondents had filed the application for registration on
09.03.2000 claiming user since 01.11.1999 under No. 908627. The counsel then relied on the order passed by the Hon'ble High Court of Calcutta
where an order of interim injunction was granted.
The counsel further submitted that the respondents' adoption was dishonest. As per Rule 93 of the Central Excise Rules, 1944, specimens of all
such wrappers, outer covering or labels shall be submitted for approval by the Collector before they are brought into use. The counsel therefore
submitted that the label was not approved by the Collector and therefore the Rules were not followed.
Registration certificate issued by the Central Excise Superintendent is dated 28.12.1999 and therefore the user claimed since 01.10.1999 is false.
The impugned trade mark was registered on 30.9.2006 whereas the applicants' registration was granted on 28.01.2006. The counsel submitted that
as per Rules 37(2), it is for the Registrar to have caused a search to ascertain whether there was already a similar or identical trade mark on the
register pending or registered.
The impugned registration is in contravention of the provisions of the Act. The registered trade mark is denied of any distinctive character and not
capable of being distinguished. The impugned trade mark is likely to cause confusion and deception. The trade mark shall not be registered, if the
identity with the earlier trade mark and similarity of the goods and services are likely to cause confusion in the minds of the public.
The impugned registration therefore ought to be cancelled.
The learned counsel for the respondents in reply submitted that the provisions of Section 11 are not attracted. The trade mark TANMOY is a
common dictionary word. The applicants have not proved user since 1997 though claimed so. The respondents had filed their application for
registration earlier to that of the application. The respondents had made a market survey and found no such mark in the market. The applicants have
not come with clean hands as the documents are not complete and are illegible. According to the copyright registration certificate, it is only in the year
2000 their artistic mark is first published and therefore they are subsequent to the respondents.
The learned counsel for the applicants in rejoinder stated that Copyright registration has nothing to do with the Trade Mark registration.
We have perused the pleadings and documents and have carefully considered the arguments of both the counsel.
The applicants have filed this application for rectification on the ground that they are aggrieved persons on account that the marks are identical and
that they are affected by the mark on the Register. The applicants have therefore, being, aggrieved, filed a civil suit before the Hon'ble High Court of
Calcutta. The applicants have locus standi to file and maintain this application for rectification.
Now we shall look into the date of events to decide the rectification application.
The applicants filed their application for registration on 22.07.2003 for the label mark under No. 1216429 in class 34 claiming user since
01.04.1993. The applicants had obtained registration on 20.01.2006. The applicants' copyright registration application was made on 15.01.2004 and the
registration was granted on 27.04.2005. The first publication is dated 2000. The certificate issued by the Trade Marks Registry under Section 45(1) of
the Copyright Act, 1957 is dated 24.06.2003. The certificate mentions the respondent's Trade Mark No. 908620. The copy of the label annexed is that
of the applicants though the respondents' number has been mentioned in the certificate. The annexure in fact does not have any signature or seal of
the Trade Marks Registry.
Exhibit-A filed along with the application for registration is dated 18.08.1993 which is the certificate of registration issued by the Central Excise
authorities. The certificate mentions the registered No. 6/HMB/KLY-11/93 but the trade mark is not mentioned. The label is found in the next page
which is signed by the Superintendent, Central Excise dated 30.05.1997, which is said to be annexure of the first page of Exhibit-A. In our considered
view, the said label annexed cannot be the annexure as it is of the year 1997, whereas the first page is of the year 1993 and is of doubtful veracity.
The next document is the Central Excise Registration Certificate dated 23.12.2003 which is valid for the premises and purpose i.e., for the
manufacturing excisable goods. The certificate is again incomplete. The applicants however have filed a certificate dated 21.11.2007 to set right the
incomplete document.
There is a suit filed by the applicants against the respondents. The suit was filed in the year 2002 and an ad-interim injunction was passed on
21.04.2004. The suit in C.S. No. 288 of 2002 came to be dismissed by an order dated 31.01.2007.
Subsequently, in July 2007, the applicants have filed a correction petition before the Copyright Office to correct the year of first publication of their
label from the year ""2000"" into ""1993"".
The impugned trade mark application has been filed on 09.03.2000 under No. 908627 in class 34 claiming user since 01.10.1999. The respondents
obtained registration on 30.09.2006. The Copyright application has been filed on 02.04.2001. The first publication is of the year 1999. The certificate
has been issued on 03.10.2001.
For the abovementioned discrepancies, we think it not necessary to go into the merits of the case. The applicants have not made out even a prima
facie case for removal of the impugned trade mark. The applicants have also not satisfied a case for removal on the ground of likelihood of confusion
and deception. For these reasons, we do not propose to cancel the Trade Mark. Accordingly, the rectification application is dismissed; there is no
order as to costs.