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Judgment
S. Usha, Technical Member
1 . The two rectification applications have been filed for removal/expunging the registered trade mark 'SPARTAN' under Nos. 1290050 in class 28
and 1290051 in class 25 under Section 47/ 57/ 125 of the Trade Marks Act, 1999 (in short the Act).
2 . The applicant herein being the son of later Shri Ved Prakash the founder of an established firm M/s P. Ramchand & Co. manufacturing and
trading all kinds of sports goods and sportswear including sports shoes since 10.09.1958. The founder had conceived and adopted the trade mark
'SPARTAN' in the year 1958. He had applied for registration of the said trade mark under No. 220317 alongwith one Mr. Madan Lal. Mr. Madan Lal
retired from the firm and Mr. Ved Prakash continued to run the firm in the same name and style. The said trade mark 'SPARTAN' was purely
associated with the said firm and the founder had incurred heavy expenses for popularising the goods bearing the said trade mark. The public
purchased the sports goods bearing the trade mark 'SPARTAN' relying on the good quality of the products. The trade mark 'SPARTAN' had
acquired distinctiveness and the public purely associated the goods with that of the applicant and with none else.
The founder Mr. Ved Prakash died on 26.10.2001 and the following persons who were the first class legal heirs in his estate acquired the rights of
the said firm.
Shri Vidya Sagar (deceased),
Smt. Nirmala Devi, wife,
Shri Jyoti Parkash, Son,
Shri Yash Pal Sharma, Son and
Shri Prem Sagar Sharma, Son (Petitioner)
The first legal heir Shri Vidya Sagar had predeceased the founder Mr. Ved Prakash.
After the death of the founder, all the first class legal heirs became the owners of the well known registered trade mark and thus are the co-sharers in
the intellectual property in the shape of well known registered trade mark 'SPARTAN'. The applicant herein was also in the business of the founder
and later on became the partner in the said firm. On 18.4.1999 a request on Form TM-24 was filed before the Registrar of Trade Marks to bring the
applicant as the subsequent proprietor and the said application is still pending. Subsequently the applicant continued to run the said business as a
partner of the firm. In the year 1997 the applicant started his own business of manufacturing and trading of sports goods and sports wears under the
trade mark 'SPARTAN' with a logo in a very distinctive manner. In the year 2003 when the applicant's goods bearing the trade mark 'SPARTAN'
with a peculiar logo had obtained good response from the public, the applicant established a new firm under the name and style of M/s Spartan Sports
& Wears.
5 . The applicants were shocked to know that the respondents herein without any right or authority had managed to get the trade mark 'SPARTAN'
with the logo registered in their names under registration Nos. 1290050 and 1290051 in class 28 and 25, respectively despite the fact that the applicant
had not authorised the respondents to get the registered trade mark 'SPARTAN' in their names. Taking advantage of the innocence of the applicant,
the respondents had obtained registration by playing fraud. The respondents being aware of the fact that the applicants had adopted and conceived the
trade mark 'SPARTAN' with the logo in the year 1997 had dishonestly obtained registration. The respondents had obtained registration knowing well
that the said trade mark does not exclusively belong to them as the applicant is the owner of the said trade mark. The marks are liable to be removed
from the register on this ground alone.
On the basis of the above registration obtained fraudulently, the respondents had moved the District Court for a permanent injunction and had thus
caused hardship and loss to the applicant. Aggrieved by the said order of injunction the applicant as an aggrieved person is before this Appellate Board
for removal of the said marks from the Register.
From the facts stated above, the applicant is an aggrieved person and, therefore, the rectification application is maintainable. The applicant being the
co-owner of the said trade mark by virtue of inherited rights of ownership is thus entitled to seek rectification. The applicant has filed the above
rectification application on the following grounds:
a) The registration obtained is tainted with dishonesty.
b) The impugned trade marks have wrongly been registered and are wrongly remaining on the Register without any sufficient cause.
c) The impugned registrations are illegal, capricious, null and void and cannot sustain and are liable to be removed/rectified to maintain the purity of the
Register.
d) The registrations have been obtained without any bonafide intention and right.
e) The impugned registrations have been obtained by fraud.
f) The impugned registrations have been obtained by suppressing the material facts.
g) The exclusive claim of ownership is false.
h) The respondents are not the exclusive owners and, therefore, the registrations is in contravention of the provisions of Section 18(1) of the Act.
8 . Therefore, it is prayed that the marks be removed from the Register of Trade Marks.
9 . The respondents filed their counter statement denying all the material averments made in the application for rectification. The preliminary
objections of the respondents were that the application has got to be dismissed as not maintainable on the ground of misjoinder of parties as respondent
No. 6 and 7 were neither registered proprietors nor partners of respondent No. 1. The respondents further stated that it was a matter relating to Law
of Succession which is to be decided in a civil suit and that this Tribunal was not the proper forum to decide the matter relating to Law of Succession.
The respondents also stated that the applicant herein had retired from the firm by a deed of dissolution dated 31.03.2001 and as such had relinquished
all his rights in favour of the continuing partners. The retiring partner under the Partnership Act had no right to interfere in the business of the firm
after retirement and so the applicant was not a person aggrieved and was not entitled to file this application for rectification.
The founder Shri Ved Prakash himself was a partner in the respondent's firm and he retired from the firm by a dissolution deed dated 31.03.1998
and had not raised any demand from the firm during his life time till his death on 26.10.2001. As such the applicant's claim in the estate of the firm is
baseless. The applicant has been restrained from using the registered trade mark by the District Court by orders dated 18. 11.2006. The impugned
registrations are purely in the business interest of the respondents and were well within their legal rights. The applicant has not taken out any legal
grounds for rectification. The respondents prayed that the rectification application be dismissed with costs.
The applicant filed their rejoinder to the counter statement and objected to the filing of the counter statement by all the respondents but signed by
one single person and prayed that the counter statement cannot be taken on record. The applicant further stated that the respondents being not the
proprietor of the trade mark cannot apply to the Registrar for registration of the trade mark. As per Section 18 of the Act, the respondents could not
have acquired registration during the pendency of the request on Form TM-24. The impugned registrations are wrong and illegal as registration for the
identical trade mark has already been granted as early as 1960 and is on the Register.
The respondents had no locus standi in respect of the trade mark as per the agreement entered into on 9.3.06. The agreement was a family
settlement and was a conditional one by which respondent was to pay Rs. 12,500/- to the applicant and to the other brother Shri Jyoti Prakash as the
respondent had not paid the amount were not entitled to the trade mark 'SPARTAN'. The other fact is that from the bank records it is clear that the
applicants continued to act as partners till 21.06.04 and the registration obtained with effect from 2001 is totally illegal.
We have heard the matters in the Circuit Bench at Delhi on 09.02.2009. Even though only the M.Ps were listed for hearing, both the counsel
argued the main matter and orders were reserved in the main rectification applications. Learned Counsel Shri Shailen Bhatia appeared for the
applicant and learned Counsel Shri S.S. Mahatta appeared for the respondents. As the parties and the facts are same in both the matters, therefore, a
common order is being passed.
Learned Counsel for the applicant submitted that there were two registrations in class 25 and 28 and in the application the dispute was between
brothers. The counsel further submitted that the applicant and the respondents were the first class legal heirs of the founder Shri Ved Prakash. The
trade mark was first registered in the name of the founder and the application on Form TM-24 was filed to bring on record the applicant as the
subsequent proprietor which is pending since 1999. The counsel further pointed out to the averments made in the counter statement and submitted that
the respondents had admitted that the mark under No. 220317 for the trade mark 'SPARTAN' was registered in the name of Shri Ved Prakash. The
respondents are not the proprietors of the trade marks as per Section 18 of the Act. The applicant contended that the agreement dated 9.3.2006 was
not valid. He further submitted that during the time he went abroad he had left some signed blank papers which were used by the respondents to
prepare the dissolution deed in the year 2001 and submitted that the same had been recorded in the cross examination in the suit.
The counsel referred to Sections 45 and 18(1) of the Act and also to Order 12 Rule 6 of the Code of Civil Procedure. He brought to our notice the
trade mark journal containing advertisement of application in the name of Shri Ved Prakash and Madan Lal. The counsel for applicant also submitted
that the invoices filed along with the Counter statement were also not valid. The counsel also relied on the judgment reported in 2008 (37) PTC 296
(IPAB) Vetsfarma Limited v. Vest Pharma Pvt. Ltd. and Ors. in support of his contention that he was not put on notice by the Registrar at the time
of registration.
Learned Counsel for the respondents vehemently opposed the arguments of the applicant's counsel and submitted that the applicant had pleaded
something different from what is argued now. The counsel submitted that the procedure laid down under Rule 11 of Intellectual Property Appellate
Board (Procedure) Rules, 2003 have not been complied with and there has been a long delay in filing the reply to the counter statement and he relied
on the judgment reported in MANU/DE/8867/2007. in support of the same and submitted costs must be imposed for the delay of 15 months.
The counsel's other argument was that once a dissolution deed has been entered into that amounts to assignment and relied on the judgment
reported in MANU/DE/2162/2007. The other contention was that no prior permission of the trial court has been obtained to file the application for
rectification and hence has got to be dismissed and relied on the judgment reported in 2008 (36) PTC (IPAB) Reckitt Benckiser (India) Ltd. v. Godrej
Sara Lee Ltd.
Learned Counsel for the applicant in rejoinder submitted that the respondents had not objected to the reply being taken on record before the
hearing could start and now cannot oppose the same.
19 . We have heard both the counsel and have gone through the pleadings and documents.
The first question to be decided is whether the applicant is an aggrieved person. The expression 'person aggrieved' has been liberally construed by
various courts. Any trader who is in any manner injured or restrained in his business by the registration of a mark will be a person aggrieved. In
Powell's trade mark, Lord Herschel stated as follows:
Whenever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade mark, and whenever the trade
mark if remaining on the Register would or might limit the legal rights of the applicant, so that the reason of the existence of the entry on the Register
he could not lawfully do that which, but for the existence of the mark upon the register, he could lawfully do, it appears to me he has a locus standi to
be heard as a person aggrieved.
2 1 . A person who had not suffered or was not likely to suffer damage to the reputation or any other damage by reason of the registration sought to
be removed is not a person aggrieved. The locus standi of an applicant is an essential preliminary qualification which has to be tested prima facie upon
the assumption that the facts alleged as the basis of the locus are true, although these facts are challengeable during the course of the proceedings.
In the instant case, the applicant has not proved his reputation by sales or that his business will be injured or is being damaged if the mark is/or
remains on the Register. The only submission is that an infringement suit has been filed and he is an aggrieved person. On this account, and on
account of that an order of injunction is granted restraining the applicant from carrying on the business by which the applicant is affected, we are of
the view that the applicant is a person aggrieved and has a locus standi to file and maintain the present application for rectification.
The application is based on the ground that the registration has been obtained by playing fraud and concealment of material facts. The defence to
this ground is that, the matter is to be dealt according to the law of succession and that this is not the forum to decide that issue. The other defence
was also that procedures envisaged as per Section 124 of the Act has not been followed, though not pleaded, were argued.
On a plain reading of the application for rectification, it clearly states that the applicant along with the founder Shri Ved Prakash was carrying on
business and the trade mark is said to have been assigned to him by the founder in whose name the mark was registered. The applicant had produced
the application on Form TM-24 to bring on record the applicant as subsequent proprietor, in the year 1999 which is still pending. Here it is worth
mentioning the observations made in 2001 (2) CTMR 195 Soundarapandian Match Works v. M. Jayarama Chetty - the court did not accept the
contention that the registration is only a formal clerical requirement and that transfer having taken effect on the execution of the deed of assignment,
all the rights of the registered proprietor are transferred to the assignee. The court held with reference to the 1958 Act, that ""while Section 44(1)
entitles registration of an assignment and a mandatory duty is cast upon the Registrar to register the assignment subject only to his satisfaction of proof
of title, the proviso to Section 44(1) of the Act entitles the Registrar to refuse to register the assignment if there was any dispute between the
parties.... The consequence of non registration appear to be rigorous on a reading of Sub-section (2) of Section 44 of the Act (corresponding to
Section 45(2) of the 1999 Act).... Therefore, on a reading of Sub-section (2) of Section 44 of the Act, it is clear that unless there is a direction by the
Registrar or the competent court the document or assignment which has not been registered as provided under Sub-section (1) shall not be admitted in
evidence in proof of the title to the trade mark by assignment. The document of assignment thus becomes inadmissible to prove the title to the trade
mark by assignment.
It is thus obvious that the deed will be admissible in cases of recordal before the Registrar or in a civil suit. So here, unless the recordal is
complete, the applicant cannot claim to be the registered proprietor of the trade mark.
In this case before us, we find there is a dissolution deed entered into in the year 2001, which is subsequent to the so called assignment. Looking
into the two dissolution deeds namely (1) Shri Ved Prakash the founder of M/s P. Ram Chand & Co. retired in the year 1998 and (2) Shri Prem
Sagar, the applicant herein, retired in the year 2001. We also find a family arrangement dated 9.3.2006 placed before us. The applicant has also stated
that the dissolution deed though bears the applicant's signature was taken in blank papers to be used during his absence and so he was not aware of
the dissolution deed. The applicant herein has contended that the terms of the said family arrangement were not acted upon. The clauses mentioned in
the arrangements is not clear as to whether the parties have acted upon or not as nothing is pleaded before us. However, the trial court - district
Judge, Jalandhar has granted injunction order restraining the defendant (the applicant herein) from infringing the registered trade mark 'SPARTAN'
with the view that the defendant is left with no right or title, or interest as per the dissolution deed as well as the agreement deed. The Hon'ble High
Court of Punjab & Haryana while staying the suit until disposal of the rectification application has observed that the order of injunction granted by the
trial court shall continue. In such case, it would be necessary to look into the validity of the agreement and the dissolution deed. When that be so, we
are of the opinion that this Appellate Board has no jurisdiction to interpret and determine whether the terms were acted upon or not as such jurisdiction
lies only with the civil court.
In view of the above, even though we have observed that the applicant is an aggrieved person, we do not think it necessary to go into the merits of
the cases as we cannot go into the validity of the dissolution deed or the family arrangement. We, therefore, dismiss both the rectification applications
namely ORA166 and 185/2007/TM/DEL. As the main rectification applications are dismissed, MPs do not survive. However, there shall be no order
as to costs.