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Judgment
153 paragraphs · 2,709 words,,
V. Ravi, Technical Member",,
Application is for cancellation of registered Trade mark No. 1268601 in Class 20 of the respondent. The grounds for cancellation is as follows:-,,
i) The applicant have been using the trade mark ""SWEET DREAMS"" since 14th October, 1986 in respect of goods falling in Class 17 & 20. The trade",,
mark was applied under no. 1293030 in Class 20 as of 29th June, 2004 for 'Flexible Polyurethane'. Later, the application added the letter ""TF"" in a",,
special artistic form as a prefix to the said trade marks ""SWEET DREAMS"" and coined the distinctive mark ""TF"" ""SWEET DREAMS"" in 1995. The",,
applicant have also developed another trade mark ""TF"" ""SWEET DREAMS"" along with the expression ""Hindustani Mattresses"". The trade mark ""TF""",,
SWEET DREAMS"" is duly registered under No. 673503 as on 1995 in Class 20. However, at the time of filing of this rectification petition this trade",,
mark was pending. But it was subsequently registered and is now duly renewed.,,
ii) The applicant had also acquired two trade mark ""SWEET DREAMS"" from one M/s Arvind International Limited, Kolkatta under No. 702725 in",,
Class 17 under No. 702776 in Class 20 and have filed request in Form TM 24 for change of name as subsequent proprietor. Both the marks have,,
been validly renewed. Therefore, Section 11(1) (a) and (b) is a complete bar to the registration of the impugned trade mark. They have also obtained",,
copyright registration for ""TF"" ""SWEET DREAMS"" under No. A-57351/1999.",,
iii) The respondent had dishonestly applied for the impugned trade mark ""DREAMS"" under No. 1268601 in Class 20 as on 21.02.2004 and the",,
registration certificate was issued by the Registrar on 26th October, 2005. The applicants allege that as per the Memorandum of Association of the",,
respondent, the manufacture and sale of PU foam, casuals, mattresses, pillows etc. is not one of the objects. This implies that the respondent",,
registered proprietor had made a false statement on adoption/registration of the trade mark before the Registrar. The applicants assert that the,,
respondent while adopting the impugned trade mark had full & complete knowledge of the applicant's trade mark ""SWEET DREAMS"" and the",,
goodwill & reputation attached with it and therefore, adoption of the impugned mark is spurious and tainted. It is further alleged that the respondent",,
had made false statement, false affirmation, false claim of use committing fraud before the Registrar and wrongly secured the registration of the",,
impugned mark and as the respondent had full and complete knowledge of the applicants trade mark, the dishonest use of a spurious mark cannot be",,
treated as use in legal parlance and so the impugned mark needs to be removed from the register on the ground of 'non -use' and in the interest of the,,
purity of the Register.,,
The case of the answering respondent is summarized below:,,
(i) A preliminary objection has been raised to the effect that the rectification petition is not in proper form as prescribed by the Act and Rules. The,,
applicant has not given the Statement of Case and has nowhere mentioned that he is a ""person aggrieved"". The ground of rectification is also not",,
supported by proper affidavit and the affidavit has not been verified and it is not clear who is the deponent as the name of the petitioner does not,,
appear therein;,,
ii) It is also alleged that the applicant had malafidely and dishonestly adopted the trade mark and are, therefore, not the proprietor of the said mark.",,
iii) The respondent's company was incorporated in 1987 and the registered office is located at Gautam Budh Nagar, U.P. They are engaged in the",,
business of manufacturing and marketing PU foam sheets, Cushions, Mattresses and pillows and have been using the said mark 'DREAMS' since",,
19th March, 1987. They are, therefore the owner /proprietor of the said mark. The respondent have acquired statutory right on the said mark when",,
they had filed an application in the Registry on 25.02.2004 under application No. 1268601 in Class 20. They had been continuously carrying on,,
business and producing products of highest standard of manufacture; given wide publicity and advertisement for promoting the trade mark DREAMS,,
to print media and by way of distribution of the trade literature etc. Thus, their goods under the said trade mark DREAMS have attained tremendous",,
goodwill and enviable reputation in the market. The purchasing public, trade and public at large associate, identify and distinguish the trade mark",,
DREAMS with that of the respondent. In view of the foregoing, the impugned trade mark has become 'well known' to the respondent within the",,
meaning of/ and provisions mentioned in Section 2(1)(zg) read with Section 11 of the Act.,,
iv) In the long list of melange of counter allegation, the respondent state that they noticed only in August, 2006 that an application No. 1293030 in",,
Class 20 was filed by the applicant herein for registration of the trade mark ""DREAMS"" in relation to the same goods. The applicant had claimed use",,
of the said mark since 04.01.2003. This application was duly opposed by the respondent and the said opposition is still pending before the Registrar of,,
the Trade Marks.,,
v) It is alleged that the applicant had never made any bona fide use of the trade mark ""SWEET DREAMS' either with effect from 1995 or with effect",,
from 1986 as mentioned in their petition. The respondent submit that the applicants are continuously changing their stand on the first date of the,,
commercial use. At one place, they rely on the predecessor date of the application, namely M/s Arvind International Ltd., from whom the applicant",,
had acquired two registered mark Nos. 702775 and 702776 which trade mark had never been commercially used as it was only ""proposed to be used""",,
on the date of filing. Consequently, assignee's use has no legal effect. The applicants registration under No. 675303, 702775 & 702776 are illegal as",,
these registration has been adopted by making false statement of use by committing fraud before the Register. The respondents have already initiated,,
cancellation proceedings against all these marks.,,
vi) The respondent being aggrieved by his statutory and company law rights being violated, with respect to trade mark ""DREAMS"" had filed a Suit",,
before Hon'ble High Court of Delhi bearing C.S(O.S) no. 540 of 2008 invoking sections 134 & 135 of the Trade Marks Act for the relief of the,,
permanent injunction restraining passing off & rendition of accounts which is pending adjudication.,,
vii) The applicant had malafide, dishonestly and fraudulently adopted the trade mark ""SWEET DREAMS"" and /or DREAMS in relation to the",,
impugned goods and therefore, they cannot be held to be the proprietors.",,
viii) The respondent state that only in the first week of August, 2006 it noticed that the applicant had also filed an application under No. 12903030 in",,
Class 20 for the registration of trade mark ""DREAMS"" in relation to the same goods. Prior to this, the respondents were never aware of the",,
petitioners alleged petition/user or claims with respect to the impugned trademark. In the said application, the applicant has claimed user since of the",,
impugned trade mark only with effect from 04.01.2003. This application was duly opposed by the respondent and on perusal of the notice of the copy,,
of the counter statement filed before the Registrar of Trade Marks, the respondent learnt that the applicant had acquired two trade marks from their",,
predecessor M/s Arvind International Limited ""as proposed to be used"". Therefore, the petitioner claim in the said application that they have been",,
using the impugned mark w.e.f. 1995 or 1986 are both wrong and false.,,
ix) The respondent also state that a bare perusal of the Memorandum and Article of Association of their company would indicate that they are,,
engaged in the business of manufacturing of the impugned goods. The respondent further state that they have not made any false statement pertaining,,
to the registration of impugned mark. In view of the foregoing, the present rectification petitions liable to be dismissed.",,
2 . The evidence in support of the application is a copy of board resolution authorizing Mr. Deepak T. Mehta, Director of Tirupati Foam Ltd. to act on",,
behalf of the applicant; an affidavit of Deepak T. Mehta dated 15th February, 2008; Copy of registration certificate and renewal certificate in respect",,
of application No. 675303; copy of copyright registration for the artistic work ""SWEET DREAM"", copy of assignment agreement; details of sales",,
turnover etc.,,
3 . The evidence of the respondent in support of registration include inter-alia an affidavit of Shri Pankaj Gupta, a Director of the respondent company",,
dated 15th March, 2008; specimen of trade mark labels of both applicant and respondent; year wise sales figure, copy of Memorandum and Articles",,
of Association; copy of reports/documents regarding fire in respondents factory; copy of advertisement/sales promotional materials; copies of a few,,
purchase orders issued by the respondent's dealer/distributor; copies of some photographs showing the publicity materials/boards/banners of the,,
respondent; copy of some newspapers report; copies of sales invoices and packing lists, copies of Sales Tax Assessment orders; copy of affidavit filed",,
by the applicant in respect of their application No. 1268601 showing the material facts of their stand in this proceeding etc.,,
4 . The matter was listed before us for hearing on 28.03.2012. We have heard the Learned Counsel for both sides and gone through the pleadings,",,
documents and the case laws relied on before disposing off the matter.,,
5 . It would be appropriate at this stage to review the various case laws and authorities relied on by both parties.,,
Applicant for Rectification:,,
(a) In Kaviraj Pandit Durga Dutt Sharma V/s Navaratna Pharmaceutical Laboratories- the Hon'ble Supreme Court in SLP No. 522 & 523 of 1962,,
decided on 20th October 1964 had ruled - Through long user the party has become associated exclusively in the market with the products concerned;,,
his trade mark would be protected. This is in support of his contention that a rival using a deceptively similar mark should not be permitted to coexist in,,
the register.,,
(b) Our attention was invited to Ansul Industries Vs SHIVA TOBACCO Company - 2007 (34) PTC 392 (Del) the head note of which reads ""Thus it",,
is well settled that when the question whether the mark causes or is likely to cause deception or confusion arises before a Court, the standard applied",,
is not that of a vigilant consumer or a trader, but standard of an unwary normal customer of the said product. The Court has to consider and examine",,
whether a consumer of the product is likely to be deceived or confused after examining broad and dominant features of the two marks and whether,,
there is overall similarity that is likely to mislead a purchaser. Both the marks have to be considered as a whole [Para 11]. Chewing tobacco is used by,,
illiterate and semi literate consumers. We have to examine the question of deception or confusion or likelihood thereof, from the eyes of the said",,
consumers. The word ""Panchhi"" in the mark 'Udta Panchhi' and Panchhi Chaap' enjoys prominence and is the focal point of the two marks. Colour of",,
the packing may be different but likelihood of deception and confusion is likely due to phonetic similarity and the use of the word ""Panchhi"" in both the",,
marks. The shop keepers selling chewing tobacco in many cases will be illiterate or semi literate. Invariably customers ask for product of this kind by,,
its name ""Panchhi"". Some consumers are also likely to believe that the two products are from the same source. Picture of the flying bird is another",,
essential feature of the two marks, which is common to both. Thus, there cannot be any doubt that deception or confusion is likely to arise in view of",,
the similarity in the trade mark 'Udta Panchhi' and 'Panchhi Chaap'. [Para 14].,,
Honesty of adoption at the initial stage itself has to be established to take benefit of concurrent registration under Section 12(3) of the Act. If the user,,
at the inception is dishonest, subsequent concurrent user will not purify the dishonest intention. Commercial honesty at the initial stage of adoption is",,
required. What is protected is innocent use of a mark by two or more persons unknown to each other and unaware of the mark used by the other.,,
Adoption must be honest, bona fide and without any knowledge on the part of the adopter. The onus and burden is on the defendant to show that the",,
user and adoption at the initial stage was honest [Para 52]. """,,
(c) In Century Traders Vs Roshan Lal Duggar & Co. & others AIR 1978 Delhi 250 it was held ""the mere presence of the mark in the register",,
maintained by the trade mark registry does not prove its user by the persons in whose names the mark is registered and is irrelevant for the purpose of,,
deciding an application for interim injunction unless evidence has been led or is available of user of their registered trade mark.""",,
(d) In Rustan & Hornsby Ltd. Vs Zamindara Engineering Co., SC(PTC) (Suppl) (1) 175 (SC) - The Apex Court while allowing the appeal restraining",,
the respondents by permanent injunction had observed: ""If the respondent trade mark is deceptively similar to that of the appellant (competing marks",,
being Ruston and Rustom as was held by High Court), the fact the word 'INDIA' is added to respondents trade mark is of no consequence and the",,
appellant is entitled to succeed in its action for infringement of its trade mark.,,
(e) In Sanjeev Kumar Mittal Vs State (Hon'ble Delhi High Court)2001 STPL (DI) 177 Delhi, the Hon'ble Justice J.R. Midha came down heavily in a",,
case under Section 340 of Cr. P.C. read with section 191, 193 of CPC and Section 2(c) of Contempt of Court Act, 1971 for filing false averments in",,
the petition for grant of probate pursued for six long years and then suddenly vanished. Expressing his anguish his Lordship observed how litigation,,
with false claim is filed or false defences are put forward and then continues to remain pending consuming the Court's time and resources. The result,,
is that courts are overloaded and there is delay in disposal.,,
(f) In Iqbal Singh Marwah & another V/s Meenakshi Marwah & another (SC) 2005 ST PL (LE) 34263 SC IN CRIMINAL Appeals no. 402 of 2005,,
with No. 904 and 1069-70 of 1998 - decided on 11.3.2005 ( From Delhi HC) - Held, The bar created by Section 195(1) (b)(ii) Cr. P.C would not come",,
into play and there is no embargo on the power of the court to take cognisance of the offence on the basis of the complaint filed by the respondent.,,
(g) In Manohar Lal Vs Vinesh Anand & Others SC2001 STPL (LE) 29540 SC from Cri Appeal no. 466 of 2001 - The Apex Court had observed that,,
the doctrine of locus-standi is totally foreign to criminal jurisprudence to pursue an offence is to subserve a social need. Society cannot afford to have,,
a criminal escape his liability. The appeal failed and was consequently dismissed.,,
Authorities relied on by Respondent/ Registered Proprietor,,
a) In Ujagar Prints (Petitioner) Vs Union of India and Kwality Silk Mills and another Vs Union of India - (AIR 1989 SC 516) 1980 Tax LR 176,,
(Gujarat) and 1983 ELT 1736 (Bom) - The Apex Court had observed that the value of the marks was not to be taken into account in computing the,,
assessable value as the affixation of the trade marks of a particular brand was extraneous to manufacture. The charge for the same are not part of,,
the assessable value and cannot be entered into computation of the whole sale cash price on the basis of which excise duties are to be levied. This,,
was apparently cited in to nullify applicants allegation that many handwritten bills/invoices from 1995 to 1999 of the respondent were fabricated or,,
cooked up and not in conformity with Central Excise rules,,
Years,Sales (In Crores),"Advt. Expenses (In
lakhs)
2003- 04,10.05,9.73
2004- 05,7.04,12.15
2005- 06,9.39,15.02
2006 â€
07",1.79,19.59
,"Gross Sales (Rs. in
Crores)",
1987-88,0.21,
1988-89,1.04,
1989-90,1.43,
1990-91,2.39,
1991-92,3.06,
1992-93,3.41,
1993-94,4.41,
1994-95,5.52,
1995-96,10.51,
1996-97,9.80,
1997-98,12.82,
1998-99,19.23,
1999-2000,24.22,
2000- 2001,34.13,
2001-02,33.23,
2002-03,32.55,
2003-04,35.92,
2004-05,41.45,
2005-06,46.55,
2006-07,52.19,