Raish Chander Shukla Trading As M/S. Mohammad Sattar & Co. vs Abdul Ghaffer Trading As M/S. Abdul Ghaffer & Co. And The Registrar Of Trade Marks

S. Usha, J

The instant rectification application was filed for removal of the trade mark TUFAN MALE BIDI (label mark) registered under No. 678922 in class 34 before the Hon'ble High Court of Delhi in CO. 14/2003. The application was transferred to this Board as per the provisions of section 100 of the Trade Marks Act, 1999 and re-numbered as TRA/120/2004/TM/DEL. The brief facts of the case is as under:--

The applicant is carrying on business of manufacturing and marketing of bidis under the name and style of Mohammed Sattar & Co. Mohammed Sattar was carrying on business of manufacturing and marketing of bidis under the trade mark TOOFAN MAIL and the said trade mark was registered in his name under No. 120075 as of 15/03/1946 and No. 159778 as of 27/07/1953 in class 34 in respect of bidis. The said trade mark was used openly and extensively.

On 02/09/1963, a Will was executed by Mohammad Sattar in favour of his wife Smt. Shakooran Bibi and after her lifetime in favour of his nephew Mr. Mushtaq Ahmed. The said Will was registered. The entire properties were therefore, enjoyed by Smt. Shakooran Bibi and after her lifetime it would devolve on Mr. Mushtaq Ahmed. Mr. Mohammad Sattar had no issues.

On 26/03/1964, Mr. Mohammed Sattar passed away and later Smt. Shakooran Bibi also passed away. By virtue of the Will, Mr. Mushtaq Ahmed became the absolute owner of the business and properties.

On 25/04/2000, a Sale Deed was executed between Mr. Mushtaq Ahmed and the applicant herein Mr. Raish Chander Shukla. Mr. Mushtaq Ahmed has transferred the running business of bidis under the name and style of Mohammad Sattar & Co. alongwith the trade mark TOOFAN MAIL registered under Nos. 120075 and 159778 in favour of the applicant and alongwith the goodwill of the business for a sum of Rs. 1 Lakh.

By virtue of the sale, the applicant became the sole owner of the trade mark TOOFAN MAIL. Prior to this sale, Mr. Mushtaq Ahmed had paid all the excise duty and after the sale, Mr. Raish Chander Shukla has been paying the duties.

The registration granted under No. 120075 has been renewed and is subsisting as on date.

The 1st respondent Mr. Abdul Ghaffar has obtained registration of the trade mark TOOFAN MAIL in respect of bidi in class 34 under No. 678922 on 04/09/1995 claiming user since 15/08/1995 by playing fraud upon the Registrar of Trade Marks.

Mr. Abdul Ghaffar, the 1st respondent herein is the son of sister of Smt. Shakooran Bibi and was therefore, aware of the appellants' predecessor's use namely Mr. Mohammad Sattar and Mr. Mushtaq Ahmed's use. On 04/09/1995, the 1st respondent falsely claimed to be the proprietor of the trade mark. The impugned trade mark is an identical copy of the applicants trade mark. The 1st respondent never used the registered trade mark nor do they have any intention to use the trade mark. The user claimed since 15/08/1995 is wrong.

The impugned trade mark is liable to be removed on the following grounds:--

(a) that the 1st respondent is not the proprietor of the trade mark under section 18 of the Act. The registration has been obtained by making false statements and by concealment of material facts;

(b) that the user claimed is false;

(c) that the adoption is dishonest;

(d) that if the 1st respondent had disclosed the appellants registration to the 2nd respondent, the 2nd respondent would not have registered the impugned trade mark;

(e) that the 1st respondent has never used and has no intention to use the trade mark for bidis;

(f) that the registration was obtained deliberately with the malafide motive and with bad intentions;

(g) that the registration is in contravention of the provisions of section 11 of the Act, which would cause confusion and deception in the minds of the public and trade;

(h) that the registration is illegal, void and is disentitled for protection in a court of law;

(i) that the registration has been obtained by playing fraud;

(j) that the registration is wrongly made and is wrongly remaining on the register; and

(k) that the registration is in contravention of section 11, 12, and 18 of the Act.

We heard the learned counsel Mr. Rajesh Sharma for the applicant. The notice sent to the respondent in the year 2009 was returned with an endorsement "not known". There was a direction to issue notice to the respondent again by the Board. The notice was issued but the fate of the service is not known. The notice for the hearing on 21/08/2013 was sent and the same has been received by the respondent on 01/08/2013. Despite service no representation by either the counsel or the party and therefore we proceed to hear the matter setting the respondents ex-parte.

The learned counsel for the applicants reiterated whatever was stated in the application for rectification.

We have considered the arguments of the applicants and have gone through the documents and pleadings.

The marks are identical for identical goods. The applicants have therefore filed this rectification application as a person aggrieved. We are of the opinion that for this reason of identity of marks for identical goods, the applicant is a person aggrieved. The applicants can therefore, file and maintain an application for rectification.

It is settled principle of law, that when the marks are identical for identical goods, the prior user gets a better right than the later user. In the instant case on hand, the applicants predecessor has been using the trade mark since 1946, whereas it is the respondent's case that they have been using since 1995. The Will executed in the year 1963 will go to show that the applicants predecessor had been using the trade mark at least since then.

The main ground of the rectification application is that the respondents are not interested in using the mark nor do they have any intention to use the trade mark. The respondents have neither filed their counter statement nor have they appeared before us to counter the statement of non use. The respondents have not rebutted the said ground. It is because that they are not using the impugned trade mark. The ground of non use is therefore allowed.

The other ground is about adoption. There is no reason for adoption of an identical mark. That apart, both the applicant and the respondent are carrying on business in the same place and to say that the respondent was not aware of the applicant's business cannot be accepted. Further more, the applicant and the respondent are related. In such circumstances, the adoption cannot be said to be honest. The adoption being dishonest with malafide intention, the mark cannot be allowed to continue on the register.

This Board has time and again held that the officers in the trade mark registry will have to make a proper search even before they pass an order of acceptance. If such examination/search was conducted by the Registrar, it would not have given rise to this litigation. Being a label mark, the respondents have just copied the total mark only to earn profits at the reputation and goodwill earned by the applicants hard work. In view of the above reasons, we think it a fit case to direct the Registrar to cancel the trade mark registered under No. 678922 in class 34. Accordingly, the application is allowed with no order as to costs.