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Judgment
S. Usha, Technical Member
The instant application has been filed for rectification of the trade mark under No. 812628B under Section 47/ 57/ 125 of the Trade Marks Act,
1999 (hereinafter referred to as the Act).
2 . The applicant is engaged in the business of manufacturing and trading of medicinal and pharmaceutical preparation under the name and style of
M/s Bios Laboratory. The applicant, in the course of business has been using the trade mark 'HEIGHTEX LABEL' and as such is the proprietor of
the said trade mark. The applican bonafidely and honestly adopted the said trade mark in the year 1992 and has been using the same without any
interruption in relation to pharmaceutical products and has thus built up a valuable goodwill and reputation among the public.
3 . The applicant has applied for registration of their trade mark label 'HEIGHTEX' under No. 744887 in class 05 as of 22.10.1996 and the same is
pending registration. The applicant is the owner of the artistic features of the said label. The applicant is the proprietor, prior adopter and user of the
trade mark label HEIGHTEX. The applicant is carrying on an extensive business and the goods bearing the said trade mark is practically distributed in
major parts of the country. The applicant's trade mark has acquired distinctiveness by its long, continuous and extensive use. The applicant's goods
bearing the said trade mark are highly demanded because of the standard quality. The applicant's business has acquired tremendous goodwill and
enviable reputation and has thus obtained a high sales turnover.
4 . The applicant has been promoting its business by various means and has spent huge amounts towards publicity expenses. The said trade mark label
has acquired secondary significance denoting the said goods and business of the applicant and are recognised in the applicant's source alone.
5 . The trade mark of respondent No. 1 is identical and deceptively similar to the applicant's trade mark and as such the respondent No. 1 is not the
rightful proprietor and has secured registration by playing fraud upon the Registrar of Trade Marks and with malafide intentions. The impugned
registration is in contravention of the provisions of the Act.
The applicant became aware of the impugned registration when respondent No. 1 issued a legal notice dated 26.09.2003 calling upon the applicant
to desist the use of the trade mark HEIGHTEX. The respondent No. 1 had only stated that they had only applied for registration under No. 812628B
(impugned registration) in class 5 whereas no particulars as to trade mark journal advertisement or whether already registered were disclosed. The
applicant replied stating that they had adopted the trade mark and are using the same since 1992 continuously without any interruption. The applicant
immediately filed an application on Form TM 58 dated 05.11.2003 in the Trade Marks Office, Mumbai to ascertain the position of the trade mark
application under No. 812628B.
7 . In the month of June 2004, the applicant received examination report from the Trade Mark Registry pertaining to Copyright registration of
HEIGHTEX LABEL, wherein it was stated that the trade mark was advertised in the Trade Marks Journal No. 1298 (S-I) on 04.07.2003. As time for
opposition had expired, the applicant herein filed rectification petition in ORA/61/2004/TM/DEL before this Appellate Board which was dismissed on
05.11.2004 as the trade mark was not registered, though advertised. On 23.12.2004, the applicant had filed a representation to the Registrar of Trade
Marks praying the Registry not to issue the Certificate of Registration and also to give the applicant an opportunity of hearing. The Registrar did not
take any action.
The mark was notified in the Trade Marks Journal No. 1337(1) dated 15.12.2005 under the heading ""corrigenda"" without re-advertising and inviting
the opinion of the public. The registration is not valid under Section 18 of the Act. The trade mark registered under No. 812628B in class 5 ought to be
expunged/cancelled on the following grounds:
(a) The respondent No. 2 abused the discretionary power vested in him in violation of the Trade Mark Rules, 2002 by not re-advertising and inviting
any public objection and had granted registration.
(b) Being aware of the applicant's trade mark HEIGHTEX LABEL the respondent No. 1 had dishonestly adopted the trade mark.
(c) The impugned registration offends the provisions of Section 11 of the Act as the goods are same and the trade marks are also, similar which,
therefore, would definitely cause confusion and deception among the public.
(d) The respondent No. 1 has not used the impugned trade marks for a period of five years and three months prior to the filing of this application nor
had any bonafide intention to use the same.
(e) The registered proprietor is not the proprietor within the meaning of the provisions of the Act.
(f) The impugned trade mark has not acquired distinctiveness.
(g) The impugned registration has been obtained fraudulently by mis-statement of material facts.
(h) The impugned registration has been in contravention of the provisions of Sections 9, 11, 12 and 18 of the Act.
(i) The registration' is made without sufficient cause and is wrongly remaining on the Register.
(j) The mark in the Register ought to be removed in the interest of purity of the Register.
(k) The applicant is the person aggrieved as the respondent No. 1 is harassing and threatening the applicant for alleged infringement and misuse of the
impugned trade mark.
9 . The respondent No. 1 filed their counter-statement denying all the material allegations made in the application. The respondent No. 1 stated that
they are a private limited company incorporated under the Companies Act, 1956 and they carry on the business of manufacture and are dealer of all
types of drugs in allopathic, ayurvedic, homeopathic, biochemical and all types of Pharmaceuticals, medical, chemical preparations and compounds,
drugs and formulations. They are well known and reputed company carrying on business under various trade marks including HEIGHTEX having
sales in various parts of the country.
10 . The respondent No. 1 has bonafidely conceived and adopted the trade mark 'HEIGHTEX' in the year 1995 and had obtained registration of the
same. The drug under the trade mark HEIGHTEX is used for the treatment of height growth in humans and the respondent No. 1 has sold the drug in
a large scale which is evident from the sales figures given. They have spent huge amount towards publicity expenses. The applicant has claimed user
since 1996 in their application for registration before the Registrar of Trade Marks and now before this forum has claimed user since 1992 which is
only to malafidely get favourable orders from this Board. The respondent No. 1 further stated that their mark was registered in good faith and
therefore the validity of the registered trade mark cannot be challenged. The applicant has not produced any document to prove prior user and that the
respondent No. 1 reserves its right to initiate legal proceedings against the applicant. The applicant has conceded the fact that their trade mark
application is pending before the Registrar with the status as opposed. The respondent No. 1 therefore prayed that the application for rectification be
dismissed.
After completion of the pleadings, we have heard the matter at the Circuit Bench at Delhi on 12.02.2009. Shri Saurabh Kapoor, learned Counsel
appeared on behalf of the applicant and Shri Piyush Singhal, learned Counsel appeared on behalf of the respondent.
12 . The learned Counsel for the applicant contended that they are the aggrieved persons and can maintain an application for rectification, as the
respondent is threatening the applicant for misuse of the impugned trade mark by issuing legal notice. The applicant brought to our notice the identical
trade mark label filed as Annexure A & B along with the application for rectification. The applicant received a legal notice from respondent No. 1
calling upon them to desist the use of the trade mark HEIGHTEX which did not contain the particulars of the status of the application except the
application number. The counsel further submitted that when an application on Form TM 58 was sent to the Trade Marks Registry, no reply was
received. But to the request on Form TM 60, the examination report revealed the fact that the mark was adverised and on verification it was brought
to the notice of the applicant that as the trade mark was advertised as word mark - HEIGHTEX in the Trade Marks Journal. The counsel pointed out
that the application was made as a label mark whereas in the Trade Marks Journal only word per se was advertised. The counsel further submitted
that this was brought to the notice of the Registrar of Trade Marks by letter dated 23.10.2004 (Exh.P-10).
The applicant further submitted that in spite of the letter dated on 23.10.2004, the Trade Marks Registry had notified the same with the label mark
giving no opportunity to the applicant for opposing the same. Meanwhile the applicant had also received copyright registration certificate.
14 . The applicant's main contention was that after the complaint was sent to the Registrar about the advertisement which was wrongly made, the
Registrar had issued a notification/corrigenda without re-advertising the same and by which the public had no opportunity to oppose the same. On this
ground alone, the mark has got to be removed. The applicant's main contention was also that the Registrar ought to have granted an opportunity to be
heard and he relied on the judgment reported in 1997 PTC (17) DB K.L. Rajakrishnan v. Parthas Textiles, Kottayam in support of the contention. The
applicant therefore prayed that the application for rectification be allowed.
The counsel for respondent No. 1 submitted that they adopted the trade mark HEIGHTEX LABEL in class 5 in the year 1995 and are thus the
prior adopter of the trade mark. The mark has acquired distinctiveness due to long continuous and extensive user. The counsel also submitted that
their mark was advertised in the trade Mark Journal in the year 2003 and the applicants who claim to have been using the trade mark HEIGHTEX
since 1996 have not opposed the same. The counsel also submitted that no one can claim exclusive right for the caricature label. The counsel further
submitted though the applicants claim user since 1992 no document has been filed to prove user. The applicants have also not filed any proof to say
that the respondent No. 1 has not been using the trade mark.
The counsel further submitted that the applicant has copied the trade mark and being a pirator cannot be a aggrieved person to maintain the
application for rectification. The caricature on the label mark had to be disclaimed and so the respondent No. 1 could not claim exclusive right over the
use of the entire label mark. Corrigenda was issued at the discretion of the Registrar. The applicant failed to oppose the word mark only to delay the
matter.
Re-advertisement is the discretion of the Registrar which usually is not interfered by the appellate courts. The respondent No. 1 therefore prayed
that the application for rectification be dismissed.
1 8 . We have heard both the counsel and have gone through the pleadings and documents.
The issue as to whether the applicant has locus standi to file the application for rectification is to be decided first. An application for rectification
can only be made by a person aggrieved. The expression ""Person aggrieved has been liberally construed by various courts. Persons who are
aggrieved are persons who are in some way or the other substantially interested in having the mark removed from the Register or persons who would
be substantially damaged if the mark remained"" Powell's Trade mark.
whenever it can be shown that the applicant is in the same trade as the person who has registered the trade, and wherever the trade mark, if
remaining on the Register, would or might, hint the legal rights of the applicant, so that by 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, he has a locus standi to be heard as a person
aggrieved' - Lord Herschell in Powell's Trade Mark.
Based on the above view, the applicant herein is the person aggrieved. Moreover, the applicant has been threatened with a legal notice to desist
from using the said trade mark. The applicant's application for registration is opposed by the respondent No. 1. That apart, where the registration is, on
the face of it, clearly illegal or improper, any person whether aggrieved or not has the locus stand to file an application for rectification. Therefore, the
applicant is an aggrieved person and can maintain an application for rectification.
On perusal of the pleadings and documents, it is clear that no opportunity has been afforded to the applicants to be heard in the matter before the
certificate was issued. The mark was a label mark - ""HEIGHTEX with the carton which contains the caricature"" in the trade mark application for
registration in the year 1998. The mark was advertised as ""HEIGHTEX"" word per se without caricature in the year 2003. In the year 2004, the
applicant had filed a request for search and issue of certificate in Form TM-60 and in reply received a search report from the Registry stating that the
mark was advertised before acceptance in Trade Marks Journal 1298 (2). On 23. 12.2004, the applicant had sought for a clarification as to what was
the mark advertised as disclaimer was imposed for a word mark and requested for a personal hearing in the matter. The respondent No. 2 herein even
without replying had issued a corrigenda in the year 2005 instead of re-advertising. The corrigenda did not contain the necessary particulars namely
the name and address of the party for inviting the public to oppose the same. The certificate of registration was issued subsequently.
From the above facts, it is clear that the principle of audi alteram partem has not been followed. The respondent No. 2 ought to have given an
opportunity of hearing to the applicant. It is worth mentioning the observation of the Supreme Court in Swadeshi Cotton Mills v. Union of India 1981
(10) SCC 644 ""a quasi-judicial or administrative decision rendered in violation of the audi alteram partem rule, wherever it can be read as an implied
requirement of the law, is null and void. In the facts and circumstances of the instant case, there has been a non-compliance with such implied
requirement of the audi alteram partem rule of natural justice at the pre-decisional stage. The impugned order, therefore, could be struck down as
invalid on that score alone"".
Having not granted an opportunity to be heard, to the applicant, the respondent No. 2 should have re-advertised the application, on notice from the
applicant. The Registrar of Trade Marks has a discretionary power under Sub-section (2) of Section 20 of the Act either to notify on re-advertise the
correction or amendment in the application where an error in the application has been corrected or the application has been permitted to be amended
after advertisement. Any amendment which affects the representation of the trade mark, or the goods covered by the application would be re-
advertised, as it would affect the rights of third parties. But mere correction of small mistakes or errors will be notified after advertisement.
In the instant case, it is not a mere small mistake or error but there has been a substantial alteration that is the word mark has been replaced by a
label mark which has got to be re-advertised. The purpose of advertisement in the Trade Marks Journal is to provide complete information in respect
of the Trade Mark advertisement, so that the public will have full information about the Trade mark applied for. In case, no full information is given,
then the public are deprived of the opportunity to oppose. The corrigenda issued does not contain the full particulars about the parties name or address.
We are of the opinion that the corrigenda issued contain the label mark whereas the first advertisement was a word mark where there is a material
alteration. In such case, it is for the Trade Mark Registry to re-advertise the mark inviting public to oppose the same if interested. Therefore the
notification without necessary particulars amounts to misrepresentation and the registration is required to be cancelled.
In the light of the above, even without going into the merits of the case as to whether the mark is registerable or not, we are of the view that the
trade mark advertisement is defective and has got to be removed. We, therefore, allow the application for rectification and direct the Registrar of
Trade Mark to cancel/expunge the trade mark under No. 812628-B from the Register of Trade Marks. No order as to costs.