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Judgment
S. Usha, J
The applicant is carrying on business since 1993 under the trade mark ""Paaneri"" in English, Hindi & Gujarati script. They are dealing with the goods
Sarees and Dress Materials as Textile piece goods. They had been using the trade mark ""Paaneri"" openly, extensively, continuously, concurrently
since the year 1992. The respondent obtained registration of the trade mark ""Paaneri"" with the device of Sun and letter P in relation to goods-Sarees
and Textile Materials for preparing dresses included in class 24. The respondent was aware of the applicant's use of the trade marks Paaneri as early
as 1995. The respondent had issued a cease and desist notice in the year 1995. In the year 2006, the respondent issued another legal notice. The
applicant had sent suitable reply to the notice.
In the year 2008, the respondent had filed a criminal complaint and the information as to filing of the criminal complaint was received by the
applicant by a letter from the superintendent of police. But till date no copy of the complaint has been served on the applicant. The trade mark Paaneri
is used by various persons and the trade mark is not distinctive and is not capable of being distinguished.
The impugned trade mark is not used continuously in relation to the goods till date and therefore liable to be removed. The application has been
fined on 05.12.1989 claiming user since 01.10.1989. The trade mark could not have acquired distinctiveness within two months.
The respondents filed their counter statement stating that they are carrying on business in clothing, footwear, headgear, yarns and threads for textile
use, hand tools and implements, cutlery, side arms, razors, precious metals and their alloys and goods in precious metals etc. furniture, mirrors etc.
The respondents have no intention of discontinuing the above business. The present application has been filed only as a result of the criminal
complaint filed by the respondents against the applicants. In spite the legal notice issued the applicants continued to use the trade mark. It is denied
that the applicants are carrying on business under the trade mark Paaneri sine 1992. In fact, in the reply notice in the year 1985 and 2006, the
applicants have nowhere given the date of their use. The respondents have been using the trade mark since 1989. The legal notice issued in the year
1995 does not prove that the respondents had knowledge of the applicants early use, if at all had knowledge it would be only since 1995 and not
earlier.
The respondent's goods enjoy a good reputation and it is well known among the customers. The customers are made to believe that the applicant
shop is the branch of the respondents and thereby causing confusion and deception among the public. The rest of the contentions were denied by the
respondents.
The above rectification applications are for removal of the trade mark ""Paaneri"" registered under No. 1739791 in class 24 and 1739792 in class 42.
The trade marks Paaneri are a word mark.
The applicant is carrying on business of manufacturing, marketing and selling sarees, readymade garments, textile fabrics since the last more than
two decades. The applicants conceived and adopted the trade mark Paaneri since the year 1989. The applicant's goods bearing the trade mark
Paaneri was widely advertised throughout the country. Owing to the superior quality of the goods, the public associate and identify the goods bearing
the trade mark Paaneri with the applicants only and with none else.
The applicant's trade mark Paaneri is registered in class 24, 25 and 23 under Nos. 520762, 534302 and 535410 respectively. They are also the
registered properties of the copyright in the original artistic work of Paaneri (English label) and Paaneri with device (English label).
On 11.03.2011, the applicants when made a search came to know that the trade mark Paaneri was registered in classes 24 & 42. The applicants
later realised that it was the same party to whom a cease and desist notice was issued. The impugned application for registration has been filed after
the legal notice has been issued. The respondents have also filed a rectification application for removal of the applicants trade mark in
ORA/253/08/TM/MUM. The applicants are therefore aggrieved persons.
The respondents have obtained the registrations of the impugned trade mark fraudulently. The impugned trade mark is deceptively similar/identical
to the applicants trade mark. The respondents have wrongly claimed the user since 1992. The learned Registrar has erroneously registered the
impugned trade mark inspite of the applicants trade mark which was validly registered and subsisting on the register. The respondent's adoption is
dishonest and has been used in bad faith.
The said registration has been obtained by making material misrepresentation and by misleading the Registrar. The respondents have not used the
said trade mark as registered in relation to the said goods nor have they used since 01.01.1992 as claimed in the application for registration. The
respondent is not the rightful proprietor of the trade mark. The impugned registered trade mark is deceptively similar to that of the applicants and is
therefore likely to cause confusion and deception among the public.
The impugned trade marks are liable to be removed for the following reasons:-
a. that the registered proprietor had full knowledge of the applicants trade mark and copied the same;
b. that the respondents adoption is dishonest and in bad faith;
c. that the impugned trade mark is devoid of any distinctive character and the same is not capable of distinguishing the goods of the respondents.
d. The use of the impugned trade mark is likely to deceive the public and cause confusion and therefore is in contravention of the provisions of section
9(2)(a) of the Act.
e. The registered trade mark in respect of identical description of goods is likely to cause confusion and is in contravention of the provision of Section
11(1)(a) of the Act.
f. The registered trade mark would be detrimental to the distinctive character of the applicants earlier trade mark and consequently bar to registration
under Section 11(2) of the Act.
The registered proprietor cannot take shelter under Section 11(11) & 12 of the Act. The respondent had dishonestly adopted the trade mark with
the knowledge of the applicant's adoption and use and therefore the registration has been obtained in bad faith. The registration has been obtained in
contravention of the provisions of the Section 11 of the Act as the respondents have played fraud on the Registrar. The respondent is not the
proprietor of the trade mark and therefore the registration is a bar under Section 18 of the Act.
The mark is liable to be removed under Section 47(1)(a) of the Act as the respondent had no bonafide intention to use the said mark. The
impugned trade mark is wrongly remaining on the Register without sufficient cause and is to be removed. The respondents can not take the benefit of
Section 32 of the Act as the mark is deceptively similar to the applicants earlier registered trade mark and the impugned trade mark has not acquired
distinctiveness.
The respondents filed their counter statement with the preliminary objection that the application is not in the proper form and on this ground the
application ought to be dismissed.
The respondents are using the trade mark since 1992. They are not using the word Paaneri as trade mark and it is only the name of the shop. The
applicants registration is wrongly remaining on the register.
The applicant issued the legal notice in the year 1995 and subsequently in the year 2006. Thereafter filed a criminal complaint in the year 2008.
The respondent thereafter filed the rectification application and the same is pending before this Board. The applicants registered trade mark under No.
660693 in class 16 has been removed for non payment of renewal fee. The applicants have therefore filed a fresh application under No. 2033414 in
class 16. These facts have been suppressed before this Board.
The application for rectification is filed after a very long delay. There is no chance of any confusion or deception as the counter is different, quality
of purchaser is different and goods are different. There are various traders who are using the trade mark Paaneri. The respondent is the bonafide
adopter and user of the trade mark since 1992 prior to that of the applicant.
We heard Shri. R. Sathishkumar, learned counsel for the applicant in ORA/253/2008 and respondent in ORA/107 & 108/201 land Shri Vinod
Bhagat, learned counsel for the respondent in ORA/253/2008 and applicant in ORA/107 & 108/2011 during the hearing held at Chennai on 23.4.2013.
Common arguments were advanced as the issues involved in all the three matters were one and the same.
Learned counsel for the Parimal Shashikant Dasani (PSD) Mr. Sathishkumar submitted that the impugned trade mark under No. 520762 in class
24 was filed on 5.12.1989 claiming user since 01.01.1992. The trade mark was Paaneri in Gujarati script. They are using the trade mark Paaneri since
the year 1992. They had been using the mark only in Porbandar.
In the year 1995, the PSD received a cease and desist notice for which a suitable reply was given. Again in the year 2006, a legal notice was
issued by the Paaneri to the PSD but there was no mention of the 1st notice. Paaneri are using the trade marks only in Andheri, Mumbai and not
elsewhere.
In the year 2008, a criminal complaint was lodged by the Paaneri against the PSD.
The PSD thereafter in the year 2008 filed the rectification application No. 253/2008 against the Paaneri trade mark. The PSD have been using the
trade mark since 1995 and Paaneri have initiated rectification proceedings after a long delay. This clearly amounts to acquiescence and therefore
Section 33 applies.
In reply, learned counsel for Paaneri, Mr. Vinod Bhagat submitted that Section 33 does not apply as the impugned trade marks in ORA 107 &
108/2011 were registered only on 14.1.2011. The counsel further submitted that the trade mark in class 42 under No. 1739792 were not used by PSD.
Paaneri had been using the trade mark since 1989.
At page 54 of the application, Paaneri have submitted their advertisement paper cutting dated 30.09.1989 to prove their use. At pages 21-53 are
the sales invoices.
PSD in their letter dated 27.05.1995 at page 297 have admitted that there is vast differences between the rival marks and that they are doing
business with the name Paaneri only in Gujarati. The PSD's letter dated 23.09.2008 addressed to the Senior Police Inspector, they have stated that the
word Paaneri was used in respect of trade name only and is not being used as a trade mark.
PSD has filed no evidence of use and therefore no use. PSD have not pleaded concurrent user or special circumstances and are therefore cannot
raise it at this juncture. There is no acquiescence.
In rejoinder, the counsel for the PSD submitted that in their 1st notice the date of use as 1995 was never stated by Paaneri.
We have heard and considered the arguments of both the counsel and carefully considered the pleadings and documents.
We shall deal with ORA/253/208/TM/MUM first. The issue as to whether the applicant in all the matters is a person aggrieved is to be tested
first.
In all the three applications there can be no doubt as to the maintainability of the rectification application. Both the parties had been having
exchange of legal notice and therefore they have filed the applications for rectification on various grounds.
In ORA/253/2008, the impugned trade mark is label mark under No. 520762 in class 24. The application has been filed on 05.12.1989 claiming
user since 01.10.1989. The first advertisement is dated 30.09.1989 which is an announcement of their inauguration of their shop Paaneri. The invoices
are of the year 1989 and so on. This shows that their adoption has been on the 30.09.1989 atleast. PSD have no doubt admitted that their use is only
since 1992 which is definitely subsequent to that of the respondents.
On perusal of the invoices, it is seen that the sale of the Paaneri goods are only in the state of Maharashtra i.e. only in Dadar and Andheri and not
in any other place, other than these 2 places. Paaneri though orally submitted that they would expand their business to other places have not placed
any document in proof of the same nor have they pleaded. The trade mark registered under No. 570762 in class 24 may be allowed to continue on the
register with a condition that it will be restricted only to the State of Maharashtra. The respondent shall file necessary application for the changes.
The application for rectification is therefore dismissed with the above mentioned directions. There shall be no order as to costs.
We shall now deal with ORA/107 & 108/TM/AMD. We shall now look into the dates of events. PSD received a cease and desist notice from the
Paaneri in the year 1995 & 2006. In the year 2008 a criminal complaint was lodged by Paaneri against the PSD. It is seen that the PSD in their reply
to the 2006 notice have stated to have been using the mark since 1992 whereas in the letter to the Senior Police Inspector in response to the criminal
complaint lodged by the Paaneri, the PSD have stated to have been using the trade mark Paaneri prior to 1995. The PSD are not consistent in their
statements as to the date of user.
Even if we to take 1992 as the date of user there is nothing placed before us to prove their user. In all the 3 matters PSD have filed the impugned
trade mark registration certificates, Paaneri registered trade mark, status report, the notices issued by the Paaneri and the reply to the criminal
complaint. There is not an iota of evidence produced by PSD. In the impugned registrations PSD have claimed user since 01.01.1992 for which there
is no proof.
We also find that PSD have filed the impugned application for registration under No. 1739791 and 1739792 in classes 24 and 42 respectively on
03.10.2008, claiming user since 01.01.1992. The marks i.e. the rival marks are identical. Paaneri's registration in class 24 against which PSD have
filed a rectification application in ORA/253/2008 is identical. The rectification in ORA/253/2008 has been filed on 07.10.2008. When an identical mark
for identical goods are already on the register, the Registrar ought not to have granted registration. This also shows the intentions of PSD to trade
upon the profit of the Paaneri.
The impugned registrations have been obtained with a wrong date of user and therefore are liable to be rectified. There is no evidence of user and
also that the applicant's intentions are not justifiable. We therefore allow the rectification applications and direct the Registrar to cancel the trade
marks registered under Nos. 1739791 and 1739792 in classes 24 and 42 respectively. There shall be no order as to costs.
Accordingly, ORA/253/2008 is partially allowed with a direction that the registration shall be restricted for sale in the state of Maharashtra for
which necessary steps are to be taken by the respondents. ORA/107 & 108/2011 are allowed.