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Judgment
JUDGMENTTAG-JUDGMENT
Syed Obaidur Rahaman, Technical Member
The above two rectification applications were heard analogously at the request of both parties.
These two applications are filed by the rival parties under Section 47/57/125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) for
rectification of the trade mark VASUDEVA VILASAM registered under No. 835530 in class 5 being case No. ORA/92/2006/TM/CH and trade
mark VASUDEVA VILASAM AYURVEDIC PHARMACY registered No. 842390 in class 5 being case No. ORA/110/2007/TM/CH.
The brief facts of the case are that Vasudeva Vilasam Ayurveda Pharmacy was established 121 years back in the year 1885 by late Shri N.
Vasudevan Unni. The pharmacy was popularly known as Vasudeva Vilasam Vaidyasala, Vasudeva Vilasam A.M. Pharmacy, but always known as
Vasudeva Vilasam. The said Vasudevan Unni died and his brother N. Subramonia Unni inherited to the pharmacy. The trade mark Vasudeva
Vilasam Ayurvedic Medical pharmacy was registered under No. 193 dated 31.01.1947 in Class 5 in the name of Shri N. Subramonia Unni, trading as
Vasudeva Vilasam A.M. Pharmacy, Fort, Trivandrum. The said mark was registered under Travancore Trade Marks Act, 1117. The said mark was
renewed for a period of 15 years from 31st January 1954. In the year 1964 after the death of the said N. Subramonion Unni, (i) Dr. S. Vasudev, (ii)
Dr. S.S.Unni, (iii) Dr. S. Narayanan Unni and (iv) S. Balakrishnan Unni took combined possession of the business.
Due to unawamess the above said registration was not renewed. In the year 1971 a full fledged Ayurvedic Nursing Home was started by the
aforesaid four persons and it was Hindu Undivided Family business. Dr. S. Vasudev and Dr. S.S.Unni expired in the year 1987 and 1981 respectively.
A suit for partition was filed by one of the co-owner, Dr. S. Narayanan Unni another brother of S. Balakrishnan Unni, before the Sub-Court of
Thiruvananthapuram under O.S. No. 1615 of 1991. The said suit was subsequently compromised between the parties. As per the terms of
compromise the legal heirs of Dr. S. Vasudev got release of the rights of other partners over the business and all its assets including goodwill. In the
year 1996 the aforesaid family business was divided among the family members and an agreement was entered into between the parties on
19.06.1996 and the same was registered document No. 1979/96 at the office of the Sub-Registrar of Thiruvananthapuram. In the said agreement the
legal heirs of Dr. S. vasudev viz. his wife Dr. Ammini Kutty and her four daughters have agreed to retain the goodwill of the business of sale of
ayurvedic medicine in the name and style of Vasudeva Vilasam Ayurveda Pharmacy by S. Balakrishnan Unni, and they have further agreed that they
have no right to sell the ayurvedic medicines in the name of Vasudeva Vilasam Ayurveda Pharmacy vide clause 1 of the agreement dated 19.06.1996.
It has been clearly mentioned in clause 2 of the agreement that D. Ammini Kutty and her daughters have the right to manufacture the ayurveda
medicines in any other name other than Vasudeva Vilasam Ayurveda Pharmacy. It has been further mentioned that the said D. Ammini Kutty and
others have right to sell to other pharmacies in some other brand name not resembling Vasudeva Vilasam Ayurveda Pharmacy. They have further
agreed that they will not open any sales counter near the Institution or anywhere under the name and style of Vasudeva Vilasam Ayurveda
Pharmacy. The said Dr. Ammini Kutty and others have formed a private limited company in the year 1997 under the name Vasudeva Vilasam Herbal
Remedies (P) Ltd., the Registered Proprietor herein.
The registered proprietors herein was established in the year 1997 and in the trade mark application filed under No. 835530, which is the subject
matter of the present application they have claimed user since 1971. During the year 1971 the trade mark VASUDEVA VILASAM was the property
of the joint family, and in June 1996 partition was entered into between the parties and the ownership of the trade mark in question was allotted to the
applicant for rectification. On the date of the application i.e. 07.01.1999 the registered proprietors have no right over the trade mark VASUDEVA
VILASAM and they are not the proprietors of the trade mark in question on the date of application. While so, contrary to the above the registered
proprietor company had applied for registration of the trade mark VASUDEVA VILASAM under No. 835530 in Class 5 on 07.01.1999 and obtained
registration behind the back of the applicant for rectification. Hence, the applicant for rectification is an aggrieved person. The registered proprietors
are not the proprietors of the trade mark after having allotted the trade mark VASUDEVA VILASAM in favour of the applicant under registered
agreement dated 19.06.1996 and therefore not entitled to the Registration of the impugned mark in their favour. The impugned registration is the
outcome of fraud, misrepresentation, concealment of material facts and matters on the part of the registered proprietor. The registered proprietor
concealed and suppressed the material facts and knowingly made false statements as to the proprietorship of the impugned trade mark. The registered
proprietor falsely claimed to be proprietor of the mark after having allotted the same to the applicant for rectification under agreement dated
19.06.1996. The registered proprietor obtained the impugned trade mark registration fraudulently and by material misstatements as to its user,
proprietorship. Such misstatements were made with a view and intention to get improper advantage and for improper purposes. The registered
proprietor also suppressed material and relevant information as well as the true and correct use of the mark by others in the trade from the Registrar
of Trade Marks while obtaining registration. The applicant for rectification submits that the registered proprietor is not the proprietor of the mark after
having given up the impugned trade mark in favour of the applicant for rectification under the agreement dated 19.06.1996 and therefore not entitled to
the Registration of the said mark in their favour.
The applicant is a person aggrieved and can maintain and institute this action as he is engaged in the same trade as that of the registered proprietor
and in the goods for which the impugned mark is wrongly registered. The applicant is a person aggrieved since the registered proprietor after having
agreed and accepted that the impugned trade mark belongs to the applicant under the agreement dated 19.06.1996 behind the back applied for
registration of the same with an ulterior motive of gaining undue advantage. The registered proprietor is wrongly claiming proprietary rights in the
impugned trade mark and no such rights exist with it. The entry pertaining to the impugned trade mark was wrongly made and it wrongly remains on
the Register of Trade Marks. The impugned registration was made without any sufficient cause and it exists on the Register without sufficient cause
in the interest of purity of the Register, the impugned entry be removed. There is no special circumstances or any other factor that is in favour of the
registered proprietor invoking by which the impugned registration may be maintained on the Register. In the interest of justice and equity and good
conscience that the present application is allowed. The applicant for rectification has filed an application before the Registrar of Trade Marks for
registration of its trade mark VASUDEVA VILASMA AYURVEDIC MEDICAL PHARMACY on 23.02.1999 and obtained Registration of the
same under No. 842390 in Class 5 on 23.09.2005. The trade mark VASUDEVA VILASAM was wrongly registered in the name of the registered
proprietor.
The respondent has filed counter statement wherein it is stated that it is true that Vasudeva Vilasam Ayurveda Pharmacy was established in the
year 1885 by late Shri N. Vasudevan Unni. At the time the aforesaid pharmacy was started and for a long time thereafter, it was engaged in the
manufacture and marketing of ayurvedic medicines. It is submitted that Vasudevan Unni died and his brother's son N. Subramonian Unni took over
the management of pharmacy. It is admitted that on 31.01.1947 a trade mark as represented in the certificate of registration dated 31.01.1947
comprising a circle with two circular bands and two inverted triangles within containing the word ""Vasudeva Vilasam"" on the top in the place between
the two circular rings and the word ""Thiruvananthapuram"" in the lower half and with the word ""Ayurvedic Medical Pharmacy"" appearing within the
circle and the word ""Medical"" appearing in the space enclosed by the two triangles was registered in the name of N. Subramonian Unni trading as
Vasudeva Vilasam Ayurvedic Medical Pharmacy, having its registered office at Fort, Thiruvananthapuram. This registration was made under the
Travancore Trade Marks Act 1117 and the certificate of registration was issued on 24.11.1949. The said trademark was renewed on 27.01.1954 for a
period of 15 years from 31.01.1954. There was no renewal of the aforesaid certificate subsequent to the expiry of the 1.5 years period of validity of
the certificate issued on 27.01.1954. Shri N. Subramonian Unni died in the year 1964 and thereafter the aforesaid business was taken over by Dr. S.
Vasudev, Dr. S.S.Unni, Dr. S. Narayanan Unni, S. Balakrishnan Unni and S. Santhakumari. In the year 1971, the aforesaid four persons started a
nursing home as a family business. Dr. S. Vasudev died in 1987. Since the business was carried on as a joint family business, all the legal
representatives of the deceased had interest in the aforesaid business. Subsequent to and immediately after the demise of Dr. S. Vasudev in 1987, his
wife Dr. D. Ammini Kutty stepped into the shoes of her husband and the business of Vasudeva Vilasam Ayurveda Pharmacy and Nurshing Home
which consisted of two divisions viz. Vasudeva Vilasam Ayurveda Pharmacy and Vasudeva Vilasam Ayurveda Nursing Home, continued to be
carried (sic) by the above said persons. Dr. D. Ammini Kutty by virtue of her qualification and experience was totally in charge of the technical as
well as administrative management of Vasudeva Vilasam Ayurveda Pharmacy and Vasudeva Vilasam Nursing Home. In fact, the very licence issued
by the Drug Controller and other statutory documents and records relating to the aforesaid business stood in the name of Dr. D. Ammini Kutty. Thus,
Dr. D. Ammini Kutty was in over all charge, control and management of the said business of Vasudeva Vilasam Ayurveda Pharmacy and Vasudeva
Vilasam Nursing Home.
While this was so, Dr. S. Narayanan Unni, son of Late Shri N. Subromonian Unni raised a dispute in the sub-court of Trivunanthapuram. This suit
was compromised and not pursued by Dr. S. Narayanan Unni. Pursuant to the arrangement between the legal heirs of Late N. Subramonian Unni, the
entire operations relating to the manufacture and sale of medicines under the name and style of ""Vasudeva Vilasam Ayurveda Pharmacy and
Vasudeva Vilasam Nursing Home"" was takenover by the branch of late Dr. S. Vasudev, comprising Dr. D. Ammini Kutty and her four daughters. S.
Balakrishnan Unni only carried on the business of sale of Ayurvedic medicines manufactured by Dr. D. Ammini Kutty and her daughters in the
manufacturing unit under the name and style of Vasudeva Vilasam Ayurveda Pharmacy subsequently changed to Vasudeva Vilasam Herbal
Remedies. S. Balakrishnan Unni was only marketing the products supplied by the manufacturing unit carried on by Dr. D. Ammini Kutty and her
daughters under the name and style of Vasudeva Vilasam Pharmacy and later Vasudeva Vilasam Herbal Remedies. During these relevant period Dr.
D. Ammini Kutty and her daughters were carrying on the business of Vasudeva Vilasam Ayurveda Pharmacy, as well as the Nursing Home. With a
view to carry on the aforesaid activities, Dr. D. Ammini Kutty on her behalf and on behalf of her daughters applied to the Drug Controller for drug
licence. The Drug Controller and the Licensing Authority by order dated 27.02.1997 granted a drug licence in the favour of Dr. D. Ammini Kutty and
her four daughters. The said order clearly stated that Vasudeva Vilasam Ayurveda Pharmacy, Fort, Trivandrum was holding a drug licence No.
90/25D/87 dated 25.08.1987 of the premises situated at 37/295, Fort, Trivandrum and that there was a change in constitution whereby Dr. D. Ammini
Kutty and her daughters, Smt. V. Jayakumari, Dr. Padmakumari, v. Usha and V. Indra Devi became entitled to the said business and accordingly the
Drug licence aforesaid was being issued. The order clearly stated that the drug licence was issued pursuant to enquiries made by the Drugs Inspector
and satisfaction that the manufacturing operations were carried on by Dr. D. Ammini Kutty and her four daughters.
Simultaneous therewith, necessary registrations were also sought for from the Kerala Sales Tax authorities. The Sales Tax authorities after due
enquiry granted a certificate of registration under Rule 6 in Form No. 4 of the Kerala General Sales Tax Rules where the Registering authority
certified that Vasudeva Vilasam Ayurveda Pharmacy has been registered as the registered dealer and has two Divisions, (i) Vasudeva Vilasam
Nursing Home, (ii) Vasudev Herbal Concentrates. The above certificate was issued on 18.12.1996 and stated that the registration with effect from
17.08.1996 was in the name of Vasudeva Vilasam Herbal Remedies. The above certificate was valid from 31.05.1976. Thus the certificate clearly
evidenced that the business carried on by Dr. D. Ammini Kutty and her four daughters was the same business of manufacturing ayurvedic medicines
hitherto carried on under the name and style of Vasudeva Vilasam Ayurveda Pharmacy. This is clear from the fact that the sales tax certificate
clearly stated that the certificate was valid from 31.05.1976. A similar certificate was also given by the sales tax authorities under the Central Sales
Tax (Registration and Turnover) Rules. The respondent further states that Excise L2 licence which was originally issued in the name of Vasudeva
Vilasam Ayurveda Pharmacy was also continued subsequent to 1996 in favour of Dr. D. Ammini Kutty and her four daughters. There were certain
proceedings under the Employees' State Insurance Act in respect of the transactions carried on by Vasudeva Vilasam Ayurveda Pharmacy prior to
1996. Subsequent to the aforesaid arrangements between the family members whereby the said business was taken over by the legal heirs of Dr. S.
Vasudev, the various proceedings as well as the liability for the prior periods in the name of Vasudeva Vilasam Ayurveda Pharmacy was also taken
over by the respondents. These are evidenced by the various proceedings including those initiated by the Employees' State Insurance authorities. The
respondents were also required to make payment to the employees for the past periods based on the proceedings. While this was so, with regard to
the Sales Tax, Drugs Control, Employees' State Insurance and various other Government authorities, for the purpose of Income tax also, the
assessments were continued against the respondents on the basis that the respondents have succeeded to the business of Vasudeva Vilasam
Ayurveda Pharmacy even subsequent to 1996 and had taken over the entire business of manufacture and sale of Ayurveda medicines in the name
and style of Vasudeva Vilasam Ayurveda Pharmacy. The respondents changed the name as ""Vasudeva Vilasam Herbal Remedies"" and subsequently
registered accompany under the name and style of ""Vasudeva Vilasam Herbal Remedies Pvt. Ltd."" to take over the entire activities. At all times, the
name ""Vasudava Vilasam"" was used by the respondents as part of their business. The respondent states any submits that while the respondents were
using the name ""Vasudeva Vilasam"" either along with the words ""Ayurveda Pharmacy"" or along with the words ""Herbal Remedies"" for the past many
years, the petitioner is also aware of this position. No objection was raised by the petitioner to the use by the respondents of the name of
VASUDEVA VILASAM"" associated with Ayurveda Pharmacy or Herbal Remedies. In fact, the medicines manufactured by the respondents in the
above names were being supplied to the petitioner and the petitioner is also marketing these medicines and had also effected sales. Hence the
petitioner cannot pretend that he was not aware of the use by the respondents of the name ""VASUDEVA VILASAM"" either in conjunction with
Ayurveda Pharmacy or Herbal remedies ever since the arrangements between the family members. The petitioner never ever objected to the use of
the aforesaid name by Dr. D. Ammini Kutty and her daughters.
The respondents stated that the company, Vasudeva Vilasam Herbal Remedies Pvt. Ltd. comprises only Dr. D. Ammini Kutty and her family
members and took over the entire business hitherto carried on under the names and style of Vasudeva Vilasam Ayurveda Pharmacy or Vasudeva
Vilasam Herbal Remedies. The name ""Vasudeva Vilasam Herbal Remedies"" was merely corporatised only to secure better and efficient
management.
The respondent further submits that the agreement dated 19.06.1996 was entered into between the petitioner and Dr. D. Ammini Kutty and her
four daughters, when they, as the legal heirs of Dr. S. Vasudev, had only undivided interest as co-owners, along with the other legal heirs of Dr. S.
Narayanan Unni. In fact the release of the rights of some of the other legal heirs in favour of Dr. D. Ammini Kutty and her four daughters was
obtained only subsequently. The agreement of 1996 merely recognised the right of S. Balakrishnan Unni to sell the ayurvedic medicines manufactured
by Dr. D. amini Kutty and her four daughters under the name and style of Vasudeva Vilasam Ayurveda Pharmacy in the depot where he was already
trading. The premises where the said business was carried on, was also released in his favour. Thus under the aforesaid agreement, S. Balakrishnan
Unni merely secured the right to carry on the trading in ayurveda medicines manufactured by Dr. D. Ammini Kutty and her branch of the family and
supplied to him. His right of trade was restricted to the sale of medicines supplied to him. He was not entitled to carry on the business of Ayurveda
medicines manufactured elsewhere under the aforesaid name and style. While this was so, the entire manufacturing operations under the name and
style of Vasudeva Vilasam Ayurveda Pharmacy as well as Vasudeva Vilasam Nursing Home was allotted unconditionally to Dr. D. Ammini Kutty
and her family branch and they were permitted to carry on the manufacture and marketing of the medicines as well as the activity of the Nursing
Home.
The respondents submits that Vasudeva Vilasam Herbal Remedies Pvt. Ltd., a family company, took over the business carried on by the family of
Dr. D. Ammini Kutty under the name and style of Vasudeva Vilasam Ayurveda Pharmacy and subsequently under the name and style of Vasudeva
Vilasam Herbal Remedies for the manufacture and marketing of Ayurveda medicines and Vasudeva Vilasam Nursing Home. The family itself runs
the company. The respondent further stated that the family is entitled to use of the registration and use of the trade name ""VASUDEVA VILASAM
in so far as the business of Vasudeva Vilasam Ayurveda Pharmacy was carried on under the Drug Licence issued in the name of Dr. D. Ammini
Kutty, the head of the family and the Chairman of the company and this is evidenced by the drug licence issued by the Drugs Controller. The drug
licence was held in the name of Dr. D. Ammini Kutty as early as from 1987 and has been continuously maintained in her name, even while the legal
heirs of late N. Subramonian Unni were carrying on the business under the name and style of Vasudeva Vilasam Ayurveda Pharmacy. Hence the
dispute raised by the petitioner regarding the right of the respondent for the registration of the name ""Vasudeva Vilasam Ayurveda Pharmacy"" and
carrying on the business under the said name is totally unjustified and cannot be countenanced.
The respondent further submits that the family was using the trade name from 1971 and this is what has been disclosed in the application. Hence
the averment of the petitioner that since the company was registered in 1997 the respondent could not have used the trade name since 1971 is a
technical objection, which deserves to be rejected outright. The substantial facts have to be kept in mind and this would clearly show that the family of
Dr. D. Ammini Kutty has been regularly using the trademark since 1971. The drug licence in respect of the said business was in the name of Dr. D.
Ammini Kutty subsequent to the demise of her husband, even from 1987. The respondent stoutly denies the averment that the ownership of the
trademark was allotted to the applicant. In fact the applicant does not have any medical qualification nor expertise in the manufacture of Ayurveda
medicines, while Dr. D. Ammini Kutty, the Chairman of the respondent company and the head of the family is a qualified ayurveda doctor and has
held senior position in the institutions teaching ayurveda medicines. She is thus, an expert and it was in recognition of her expertise that even the legal
heirs of Dr. S. Vasudev had nominated her to run the business obtained a drug licence in her name. Thus, Dr. D. Ammini Kutty whose competence to
carry on the business of Vasudeva Vilasam Ayurveda Pharmacy was recognized and it is in these circumstances that all the legal heirs of late N.
Subramonian Unni had released their title, right and interest, in the business of Vasudeva Vilasam Ayurveda Pharmacy, in favour of Dr. D. Ammini
Kutty and her family members.
The respondent denied the allegation that on the date of application they had no right over the trade over the trademark ""VASUDEVA
VILASAM"" in question. This allegation ignores the fact that the respondent company is only an incorporation of the existing business belonging to the
family of late Dr. S. Vasudev who was fully entitled to the trade name ""VASUDEVA VILASAM"" and ""Vasudeva Vilasam Ayurveda Pharmacy"".
The allegation to the contrary is opposed to facts and is stoutly denied. It cannot be denied that the respondent is a proprietary company representing
the family of Dr. Ammini Kutty, it cannot also be denied that Dr. D. Ammini Kutty is the owner of the trademark ""Vasudeva Vilasam Ayurveda
Pharmacy"" and hence the application for registration made by the respondent company and the grant of registration to the respondent cannot be
denied or disputed. The respondent has not committed any fraud, misrepresentation, concealment of material facts and matters on the part of the
registered proprietor, which disentitle them for the registration of the aforesaid trademark and totally deny the allegation that the registration was
obtained by exercising fraud. The averment that the respondent falsely claimed to be proprietor of the mark after having allotted the same to the
applicant under agreement dated 19.06.1996 is false and is also denied. The applicant does not have right over the trade mark nor can the applicant
seek to restrain or question the right of the respondent herein to the use and ownership of the trade mark. The alleged statement that is a proprietary
trade mark and the same has been allotted to the respondent is totally false and is stoutly denied. It is also submitted that no misstatement has been
made in the application and the averment that misstatement has been made is with a view to gain unfair advantage particularly since no misstatement
has been made; equally untrue and false are the averments that the respondent has suppressed relevant material as well as the true and correct use of
the mark by others in the trade from the Registrar of Trade Marks while obtaining the registration. These averments are totally false and are denied.
The respondent denies the averments that the entry was wrongly made and/or that it shall not remain on the Register of Trade Marks and states that
the registration has been properly done in accordance with law and the same cannot be interfered with.
The present application is filed solely to gain an unfair advantage Dr. D. Ammini Kutty and her family members, representing the respondent have
been in this line of business for almost four decades and have considerable experience. The drug licence itself stood in her name for almost 20 years.
She has been carrying on the business and the name has been used by the family. The applicant is not a medical doctor and has no experience or
expertise in the manufacture of medicine. The applicant was only running a sales depot which itself was procuring the medicines from the respondent.
Hence the respondent would be put to great loss, hardship and prejudice if the application is allowed. The trade mark ""VASUDEVA VILASAM"" has
been property registered and the respondent is entitled to the said registration. Hence the respondent would be put to great loss, hardship and prejudice
if the application is allowed and the same is liable to be dismissed with costs in favour of the respondent.
The matter came up for final hearing on 24.10.2008. We have heard the arguments of the learned Counsel for the applicant Ms. P.V. Rajeswari
and learned Counsel for the respondent Shri V. Ramachandran.
Learned Counsel for the applicant submitted that she very much relied upon the agreement dated 19.06.1996 executed between Shri Balakrishnan
Unni and Dr. D. Ammini Kutty and her four daughters. By the said agreement Dr. Ammini Kutty and her daughters have agreed to retain the
goodwill of the business of sale of Ayurvedic medicine in the name and style Vasudeva Vilasam Ayurveda Pharmacy and they have further agreed
that they have no right to sell ayurvedic medicines in the name of Vasudeva Vilasam Ayurveda Pharmacy. By the agreement dated 19.06.1996, vide
clause 2 it has been clearly mentioned that Dr. Ammini Kutty and her daughters have the right to manufacture the ayurveda medicines in any other
names other than Vasudeva Vilasam Ayurveda Pharmacy. It has been further mentioned that the said Dr. Ammini Kutty and others have the right to
sell to other pharmacies in some other brand name not resembling Vasudeva Vilasam Ayurveda Pharmacy. They have further agreed that they will
not open the sales counter near the institution or anywhere under the name and style of Vasudeva Vilasam Ayurveda Pharmacy. The registered
proprietorship by the said Dr. Ammini Kutty and others have formed a private limited company in the year 1997 under the name and style of
Vasudeva Vilasam Herbal Remedies Private limited filed application under No. 835530, claiming user since the year 1971 which is the subject matter
of the present application. During the year 1971 the trade mark ""VASUDEVA VILASAM"" was the property of the joint family and in June 1996
partition agreement was entered into between the parties and the ownership of the trade mark in question was allotted to the applicant for
rectification. The learned Counsel further submitted that on the day of the application i.e. 07.01.1999, the registered proprietor had no right over the
trade mark ""VASUDEVA VILASAM"" and they were not the proprietor of the trade mark in question on the day of application. While so, contrary to
the above, the Registered Proprietor had applied for registration of the trade mark ""VASUDEVA VILASAM"" under No. 835530 in class 5 on
07.01.1999 and obtained registration behind the back of the applicant for rectification and thus submitted that the applicant for rectification is a person
aggrieved and is entitled to file the present application. He further argued that the registered proprietors are not the proprietors of the trade mark after
having allotted the trade mark ""VASUDEVA VILASAM"" in favour of the applicant for rectification under the registered agreement dated 19.06.1996
and therefore not entitled to registration of impugned mark in their favour. The impugned registration is outcome of fraud, misrepresentation,
concealment of material facts and matters on the part of the Registered Proprietor. The Registered Proprietor obtained the impugned registration by
exercising fraud. The counsel verily relying upon the agreement dated 19.06.1996, further argued that the Registered Proprietor is not the proprietor of
the trade mark after having given the impugned trade mark in favour of the applicant for rectification under agreement dated 19.06.1996 and therefore
not entitled to registration of the said mark in their favour. The applicant for rectification has filed an application before the Registrar of Trade Marks
for registration of the trade mark ""VASUDEVA VILASAM AYURVEDIC MEDICALPHARMACY"" on 23..02.1999 and obtained registration of
the same under No. 842390 in class 5 on 23.09.2005. The trade ""VASUDEVA VILASAM"" was wrongly registered in the name of the registered
proprietor. The Hon'ble Appellate Board has exclusive jurisdiction to entertain and try the present application under Section 57 of the Trade Marks
Act, 1999. In the interest of justice, equity and good conscience the present application may be allowed. There is no such special circumstances or any
other factor that is in favour of the registered proprietor invoking by which the impugned registration may be maintained on the Register.
The learned Counsel appearing for the respondent also heavily relying upon the agreement dated 19.06.1996 argued that the agreement dated
19.06.1996 was entered into between the applicant and Dr. Ammini Kutty and her four daughters, when they, as legal heirs of Dr. S. Vasudev had
only undivided interest as co-owners along with the other legal heirs of Dr. S. Narayanan Unni. In fact the release of the rights of some of the other
legal heirs in favour of Dr. D. Ammini Kutty and her four daughters was obtained only subsequently. The averments in paras 8 to 11 with regard to
the scope of the agreement are not correct and are stoutly denied. The agreement of 1996 merely recognized the right of S. Balakrishnan Unni to sell
the ayurvedic medicines manufactured by Dr. D. Ammini Kutty and her four daughters under the name and style of Vasudeva Vilasam Ayurveda
Pharmacy in the depot where he was already trading. The premises where the said business was carried on, was also released in his favour. Thus,
under the aforesaid agreement, S. Balakrishnan Unni merely secured the right to carry on the trading in Ayurveda medicines manufactured by Dr. D.
Ammini Kutty and her branch of the family and supply to him. His right to trade was restricted to the sale of medicines supplied to him. He was not
entitled to carry on the business of ayurveda medicines manufactured elsewhere under the aforesaid name and style. While this is so, the entire
manufacturing operation done under the name and style of Vasudeva Vilasam ayurveda Pharmacy as well as Vasudeva Vilasam Nursing Home was
allotted to Dr. D. Ammini Kutty and her family branch and they were permitted to carry on the manufacture and marketing of medicine as well the
activity of the nursing home. The applicant has deliberately suppressed the fact that even subsequent to 1996 when Dr. D. Ammini Kutty and her four
daughters were carrying on the business of manufacture and sale of ayurvedic 'medicines and running the nursing home under the name and style of
Vasudeva Vilasam Ayurveda Pharmacy and Vasudeva Vilasam Nursing Home and also under the name of Vasudeva Vilasam Herbal Remedies, no
objection was raised by the applicant to their carrying on the aforesaid business under the aforesaid names at any point of time. The petitioner has
merely objected to the registration of the trade mark ""VASUDEVA VILASAM"" and does not dispute the right of Dr. D. Ammini Kutty and her four
daughters who had registered the company ""Vasudeva Vilasam Herbal Remedies Pvt. Ltd.,"" to carry on the business in the said name. The counsel
for respondent further argued that Vasudeva Vilasam Herbal Remedies Pvt. Ltd., a family company took over the business carried on by the family of
Dr. D. Ammini Kutty under the name and style of Vasudeva Vilasam Ayurveda Pharmacy and subsequently under the name and style of Vasudeva
Vilasam Herbal Remedies for the manufacture and marketing of ayurveda medicines and Vasudeva Vilasam Nursing Home. The family itself runs
the company and the family is entitled to use the registration and use the trade name ""VASUDEVA VILASAM"" in so far as the business of
Vasudeva Vilasam Ayurveda Pharmacy was carried on under the drug licence issued in the name of Dr. D. Ammini Kutty, the head of the family and
the chairman of the company which is evidenced by the Drug licence issued by the Drugs Controller. The drug licence was held in the name of Dr. D.
Ammini Kutty as early as from 1987 and has been continuously maintained in her name, even while the legal heirs of late N. Subramonian Unni were
carrying on the business under the name and style of Vasudeva Vilasam Ayurveda Pharmacy. Hence the dispute raised by the applicant regarding the
right of the respondent for the registration of the name ""Vasudeva Vilasam Ayurveda Pharmacy"" and its carrying on the business under the said name
is totally unjustified and cannot be countenanced.
The learned Counsel for the respondent relied on the following judgements:
(i) Clba Ltd., Basle Switzerland v. M. Ramalingam wherein it was held ""(3) Now, in considering both Section 46 and Section 10 it has got to be
remembered that primary duty of the Court is towards the public and the maintenance of the purity of the register. When a case is sought to be made
out that a particular trade mark is likely to deceive or cause confusion, the contest is not so much a contest between the party defending his right to a
particular trade mark and the public, and the duty of the Court must always be to protect the public irrespective of what hardship or inconvenience it
may cause to a particular party whose trade mark is likely to deceive or cause confusion, The object of maintaining a trade mark register is that the
public should know whose goods they are buying and with whom particular goods are associated. It is therefore essential that the register should not
contain trade marks which are identical or which so closely resemble each other that an unwary purchaser may be likely to be deceived by thinking
that he is buying the goods of a particular person or 'a particular firm or a particular industry, whereas he is buying the goods of another person or firm
or industry.
(ii) Nekumar K. Porwal v. Mohal Lal Hargovindas wherein it was held '8. It was contended by Mr. Shavaksha, the learned Counsel for the petitioner
that the respondent, while they made their application for rectification of the Register of trade marks, were not actually persons aggrieved within the
meaning of Section 56 of the Trade and Merchandise Marks Act, 1958 so as to enable him to make any application for rectification of the petitioner's
mark under Section 56 of the Act. In support his contention, Mr. Shavaksha relied upon the fact that the respondents had admittedly withdrawn their
opposition to the petitioner's application for registration of his mark No. 131148 and that, therefore, they should be deemed to have had no grievance at
all by reason of the petitioner's mark having been registered in pursuance of his application for registration. He urged that by their conduct in
withdrawing their opposition to the petitioner's application for registration of his mark, the respondents clearly indicted that they were not likely to be at
all injured in their business and that they would have no grievance of any kind whatever if the petitioner's mark was registered as applied for by him.
In his submission, therefore, the respondents were no longer ""persons aggrieved"" by reason of the registration of the petitioners mark and, therefore,
they were not entitled to make any application for rectification of that mark under Section 56 of the Trade and Merchandise Marks Act, 1958. Mr.
Baptista, appearing for the Registrar of Trade Marks, on the other hand, contended that the respondents, despite their conduct in withdrawing their
opposition to the petitioner's application for registration of his mark, were nonetheless ""persons aggrieved"" within the meaning of Section 56 of the
Trade and Merchandise Marks Act, 1958 in as much as the question as to whether a person was a ""person aggrieved"" within the meaning of that
section was to be determined not by any such conduct on the part of the respondents, but by the allegation made in their application for rectification
showing that they were doing business in the same kind of goods and that they were likely to be injured in their trade if the petitioner's trade mark
continued to exist on the register of trade marks. In support of this contention, Mr. Baptista invited my attention to a passage in Kerly on Trade Marks
8th Edition, at page 180 which is follows:
The phrase ""any person aggrieved"" has been very liberally construed, and except, perhaps, in the case of a mark consisting of a name, it would be
difficult to find any person engaged in the trade concerned, or any allied or connected trade, who is prevented by the qualification which it requires
from moving to rectify the Register. The persons who are aggrieved are, it is held, all persons who are in some way or other substantially interested in
having the mark removed - where it is a question of removal -from the Register, or persons who would be substantially damaged if the mark
remained.
These observations of the learned author were adopted with approval by this Court in Ciba Ltd. v. M. Ramalingam. In that case it was contended on
behalf of the respondents that the appellants were not ""a person aggrieved"". It was a case in which the respondent had applied to the Registrar of
Trade Marks for registration of a label which contained the word ""Cibol"" already registered, made an application for rectification of the Register by
removal of the respondent's trade mark. The Registrar ordered the rectification prayed for, but the decision of the Registrar was reversed by Mr.
Justice Coyajee in appeal which decision in turn was reversed by the Court of Appeal. Dealing with the contention raised on behalf of the respondent
as aforesaid Chagla C.J. observed as follows (at p.563) (of Bom LR): (at p.60 of AIR):
It is difficult to conceive of a person more aggrieved than the appellants because the appellants' case is that the product of the respondents is likely to
be sold as the product of the appellants and Kerly on trade Marks at p. 256 states that the phrase ""any person aggrieved"" has been very liberally
construed and that the persons who are aggrieved are all person who are in some way or other substantially interested in having the mark removed -
where it is a question of removal - from the register, or persons who would be substantially damaged if the mark remained this definition clearly brings
within its ambit the appellants"". The best definition of the expression ""persons aggrieved"" appears to have been given by Lord Herschell in Powell v.
Birmingham Vinegar Brewery Co. (1894) AC 8 at p. 10. It is as follows:
Wherever it can be shown, as here, that the applicant is in the same trade as the person who has registered ""the trade mark, and wherever the trade
mark if remaining on the Register, would or might limit 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, it appears to me he has a locus standi to
be heard as a person aggrieved.
The grievance, however, of the applicant in such a case must be substantial and a fanciful suggestion of grievance is obviously insufficient. A merely
sentimental grievance does not make a person ""aggrieved"" within the meaning of this section. Where a person shows himself to be a ""person
aggrieved"" in the light of the observations quoted above, by making necessary statements in the application for rectification in that behalf, such person
would obviously have the locus for the purpose of making an application under Section 56 of the Trade and Merchandise Marks Act, 1958, although at
the hearing of the application he may not eventually be found to be such person, e.g. by his conduct, as in this case, in withdrawing his opposition to
the application for registration of a trade mark and thereby allowing the trade mark to be registered without any objection from him. Reference in this
connection may be made to in the matter of Actomin Products Ltd. (1952) 69 R.P.C. 166 and Monappa v. Ramappa AIR 1956 Mad. 184. In the first
case, which was decided by the Assistant Comptroller, a question was raised as to whether the applicants could be said to be ""persons aggrieved
within the meaning of Section 32 of the English Trade Marks Act, 1938, until the breach of the contract in question was established. In answering this
question to Assistant Comptroller observed as follows:
In my view, although the ""locus standi"" of an applicant for rectification under Section 32 is, offcourse, challengeable, it is an essential preliminary
qualification which is to be tested prima facie upon the assumption that the facts alleged as the basis of the ""locus"" are true. For example, if an
applicant for rectification of the Register under Section 32 alleges that a mark was wrongly entered upon the Register because it had an undue
resemblance to a mark which the applicant was already using in relation to identical goods, such an applicant would prima facie have established a
locus"" as an ""aggrieved"" person, although he might fail eventually to satisfy the Tribunal as to the alleged resemblance of the two marks.
These observations were followed with approval in the latter case by the Madras High Court. Ramaswami J., while dealing with the question of locus
stand of an applicant for rectification of the register of trade marks observed in paragraph 15 of the judgment at page 187 as follows:
in determining the ""locus standi"" of an applicant the allegations as to facts made by him should, ""prima facie"", be assumed to be true although they may
be challenged.
Thus, it is clear that the respondents in this case in view of the allegations made by them in their application for rectification were undoubtedly
persons aggrieved"" within the meaning of Section 56 of the Trade and Merchandise Marks Act, 1958, so as to enable them to make an application for
rectification of the petitioner's trade mark under that section. It must be observed, however, that the locus thus obtained by the respondents could be
challenged by the petitioner before the Registrar and it was in consequence of this challenge that the Deputy Registrar came to the conclusion that the
respondents were not really ""persons aggrieved"" in regard to the petitioner's trade mark in so far as they sought rectification of the register of trade
marks on the two grounds mentioned in their application.
(iii) Aktlebolaget Jonkoping Vulean v. V.S.V. Palanlchamy Nadar and Ors. wherein it was held
I shall briefly dispose of the first point, namely the contention that the Madras Match Company is not a ""person aggrieved"" within the meaning of
Section 46(1) of the statute. The facts relevant for this purpose are briefly as follows:- The Madras Match Company has been in the trade with this
trade mark of ""Three Stars"" on their matches identical with the registered trade mark since the year 1951-52. The second fact is that the Swedish
Match Company has served the Madras Match Company with a notice in 1963 threatening them with legal consequences, if they did not stop using
their trade mark. The third fact is that the application for registration of the trade mark filed by the Madras Match Company had actually been
opposed by the registered proprietor, viz, the Swedish Match Company.
(iv) Hiralal Prabhudas, v. Ganesh Trading Company and Ors. in which it was held as follows:
Coming to Mr. Kale's second limb of his submission, he urged that bidi smokers are confirmed in their choice of brands and would never confuse
the appellants' bidis for those of the respondents, because on the respondents' label is mentioned ""Himatlal Special Bidi"", whereas on the appellants'
label the words ""Hiralal Chhap Bidi"", appear. Mr. Kale laid emphasis on ""Himatlal"" and ""Hiralal"" as the distinction between which consumers would
ask for the bidis. Mr. Kale further urged that the respondents' bidis are sold only in Gujarat territory, where unlike in other parts of the countery,
purchasers would know the difference between ""Hiralal"" and ""Himatlal"". He relied on the following passage in Kerly's Law of Trade Marks and
Trade Names' 10th Edition at page 473:
Marks deceptive in particular markets:
Marks which are readily distinguishable by Englishmen, or persons who can read English, may so resemble each other as to be calculated to deceive
foreigners whose language is not only different from English, but written in different characters and in a different manner....
(v) AIR 1992 Mad 12 Fatima Tile Works and etc. v. Sudarsan Trading Company Ltd. and Anr. Wherein it was held as follows:
Thus, the above facts clearly go to show that the first respondent has retained its origin of power of supervision and direct control etc., over the
Eastern Clay Works Limited. Thus, unable to accept the argument of Mr. V.S. Subramaniam, learned Counsel for the petitioner against the first
respondent in regard to the first charge of non-user of the trade mark by the first respondent. In my opinion, the argument of the learned Counsel for
the petitioner is not tenable Under Section 46(1) (b) of the Act on the following grounds:
(i) ""Feroke Tile Works' is an alias for Sudarshan Trading Company Ltd., (STC);
(ii) 'Feroke Tile Works' appears on all the tiles (vide M.O.I);
(iii) According to hire agreement (Ex.D-5) and lease agreement of premises (Ex.D-6) the machinery and premises used for the manufacture of tiles is
that of Foreke Tile Works;
(iv) All invoices (ex.D-11) and all advertisements (Ex.D-13) involve and project the name of 'Feroke Tile Works'.
(v) Even in the bills of lading project, it is specifically stated that the tiles were manufactured by Feroke Tile Works.
Thus considering the submissions made by the learned Counsel appearing for both sides and the authorities cited by them and the evidence
tendered both oral and documentary, I am of the views that the petitioners in both the petitions have not made out any case for rectification and for
cancellation of the trade mark as prayed for by them. The case of non-user alleged by the petitioners has not been established. Further, it is made
clear from the documents viz., Exs. D-4 to D-6 that there is user of the trade mark by the registered proprietor, first' respondent herein. Consequently,
the petitioners in both the original petitions are not entitled to the reliefs prayed for.
(vi) Kanshriam Surinderkumar, a firm v. Thakurdas D. Rohire and Ors. in which the court observed as under:
That brings us to the last contention of the learned Counsel for the appellants viz., that the Joint Registrar should not have rectified the register on
the ground that the case fell within the provisions of Section 12(3) of the Act being that of honest concurrent user of the said mark by the appellants.
In this case since admittedly in 1958 itself the appellants have purchased goods from the respondents under the said mark ""Amar"" it would be difficult
to hold that the appellants' subsequent use of the said mark in relation to their goods could be considered as honest. What was contended by the
learned Counsel for the appellants was that although the appellants had in 1958 itself knowledge of the respondents' use of the said mark, the
appellants would have honestly believed that the respondents had not built up sufficient reputation for their said mark as to be the proprietors thereof
and therefore the appellants' use of the said mark could be considered to be an honest concurrent user. On the wording of Section 12(3) the said
contention of the learned Counsel for the appellants has got to be rejected. All that is required to be shown under Section 12(3) of the Act was that
the concurrent use of the mark by the appellants was honest and the question of honest belief as to the reputation of the respondents' mark was
irrelevant for consideration. In that view of the matter, the appellants' case cannot also come under Section 12(3) of the said Act.
(vii) 853 Pan Press Publications Ltd.'s Appln. For rectification (1948) 65 RPC 193 Ch.D in which case Mr. Justice Wynn-Parry observed:
Two trade marks consisting of the word ""Pan-Books"" and the device of a representation of a Greek God Pan were registered in Part B of the register
in class 16 for books, on 17th November 1943. The registered proprietors were Pan Books. Limited. Pan Press Publications Limited were
incorporated on 12.08.1943 to carry on the business of publishers. They started publishing in 1945046. On 3rd July 1946 they applied under Section 32
to expunge the registered marks on the ground that they were wrongly registered or that it wrongly remained on the register. There was some slight
evidence of confusion between the appellants' name and Respondents' registered trade mark since the date of registration. The application was
dismissed by the Assistant Registrar (Mr. Chisholm). An appeal by the applicants was dismissed.
It was held as follows: (1) At the date of registration since the applicants had no reputation in their name there was no likelihood of deception or
confusion, the test being the same under Section 12 or Section 11: (2) regarding the allegation that the marks wrongly remained on the Register the
position must be taken as at the date of the application for rectification.; (3) for a mark to remain wrongly on the Register contrary to Section 32, it
must offend against some provisions of the Act other than Section 32. For this purpose Section 11 might be relevant but the court would not in general
order a mark to be expunged which was not calculated to deceive at the date of registration, but which through no fault of its owner had later become
calculated to deceive. The question was left open whether the court might act where the public interest was concerned and the expunction of the
mark would cause only slight damage to its owner; (4) the Respondents' marks did not wrongly remain on the Register, since they were not calculated
to deceive when they were registered and, if they were not calculated to deceive, it was not due to their fault.
(viii) 1994 PTC 53 Kabushiki Kaisha Toshiba (Toshiba Corporation) v. Toshiba Appliances Co. and Ors. wherein it was held as follows:
Section 46(1) (a) is concerned with both registration and subsequent use. If the entire period is, so to speak, under the economic black-out, then
the obtaining of registration in the first place cannot but be without the requisite intention necessary to support a good registration. In that sense, there
was no legal benefit to be had on the part of the person obtaining such registration, for he knew throughout the black-out period the goods were not
useable in the course of bona fide trade, but such registration could only serve the purpose of not allowing others to use the name. Such a purely
negative motive in these circumstances is not permissible.
(ix) In Safari International and Anr. v. Subhash Gupta and Ors. it was held that
Trade & Merchandise Marks Act, 1958
Under Sections 46, 47 & 56, the Application for rectification of register of trade marks in respect of registration entry pertaining to trade mark
'SAFARI' on the ground of fraud, no details or particulars of fraud mentioned, the use of trademark by a private company in which registered owner
and his wife were share holders to the extent of 70% and 30%, it was held that such use must be considered by the owner himself or with his implied
permission, the dishonest conduct of application not proved, Application for rectification rightly rejected.
(x) Hardie Trading Ltd. and Anr. v. Addisons Paint and Chemicals Ltd. wherein it was held as follows:
Held: Phrase ""persons aggrieved"" for the purposes of removal on the ground of non-use under Section 46 has a different connotation from the phrase
used in Section 56 for cancelling or expunging or varying an entry wrongly made or remaining in the Register.
In the latter case the locus standi would be ascertained liberally, since it would not only be against the interest of other persons carrying on the same
trade out also in the interest of the public to have such wrongful entry removed.
But if the ground for rectification is merely based on non-user i.e. under Section 46 of the Act that is not really on account of any public mischief by
way of an incorrect entry. The non-user does not by itself render the entry incorrect but it gives a right to a person whose interest is affected to apply
for its removal. An applicant must therefore show that ""in some possible way he may be damaged or injured if the Trade Mark is allowed to stand;
and by ""possible"" it is meant possible in a practical sense, and not merely in a fantastic views.....All cases of this kind, where the original registration is
not illegal or improper, out to be considered as questions of common sense, to a certain extent, at any rate; and the Applicants ought to show
something approaching a sufficient or proper reason for applying to have the Trade mark expunged. It certainly is not sufficient reason that they are at
loggerheads with the Respondents or desire in some way to injure them.
Ms. Rajeswari relied upon the comments in Law of Trade Marks and Passing Off by Shri P. Narayanan wherein it was stated at page 9 para 1.11
that
Trade Mark and goodwill of business Under common law a trade mark is always considered as an inseparable part of the goodwill of the business in
which it is used. As a result the sale of a trade mark except when made along with the sale of the goodwill of business to the same party, is null and
void. This principle has been abolished by the Trade Marks Act 1999. Now both registered and unregistered trade marks can be assigned with or
without goodwill of business subject to certain conditions.
After hearing both parties and going through the pleadings and documents and the case laws referred before us, we are of the view that both the
parties heavily relied on the agreement dated 19.06.1996. Nobody can deny and dispute the existence of this agreement. In this agreement it is stated
in para 1 and 2 at page 3 as follows:
The second named parties have agreed to retain the good will of the business of sale of Ayurvedic medicine in the name and style of Vasudeva
Vilasam Ayurveda Pharmacy by the first party exclusively and the second party have no right to sell ayurvedic medicines in the name of Vasudeva
Vilasam Ayurveda Pharmacy.
The second named parties have the right to manufacture the Ayurveda medicines in any other name (other than Vasudeva Vilasam Ayurveda
Pharmacy) and undertake to supply the medicines so manufactured to the first party as ordered by the first party at the prevailing price and quality on
the label of ""Specially Manufactured for Vasudeva Vilasam Ayurveda Pharmacy."" If any excess quantity of medicines is manufactured and if it goes
beyond the requirement of the first party, the second named parties have the right to sell to other pharmacies in some other brand name not resembling
Vasudeva Vilasam Ayurveda Pharmacy.
From this aforesaid agreement it is very clearly stated that first party has right to sell the goods medicines and the second party have the right to
manufacture ayurveda medicines on behalf of the first party as ""Specially Manufactured for Vasudeva Vilasam Ayurveda Pharmacy"". They have
stated it is an undivided property between the same families. The fight is between two brothers one Mr. Balakrishnan Unni and Mr. Subramonian
Unni and his heirs. Clause 1 and 2 are both contradictory. The first party as per the agreement has the right to sell the goods which was manufactured
and supplied by the second party and the second party have no right to establish any sales counter with independently manufacturing capacity. He can
sell the product in the name of Vasudeva Vilasam Ayurdeva Pharmacy and the second party have right to supply ayruveda medicines to the first party
at the prevailing price and quality on the label of ""Specially Manufactured for Vasudeva Vilasam Ayurveda Pharmacy"". If any excess"" quality of
medicines is manufactured and if it goes beyond the requirement of the first party, the second named parties have the right to sell to other pharmacies
in some other brand name not resembling Vasudeva Vilasam Ayurveda Pharmacy.
It is clear from the agreement dated 19.06.1996 that both parties are disputing over the trade mark i.e. VASUDEVA VILASAM. In the back
drop of the agreement, it would be appropriate for the parties to approach a forum having jurisdiction to interpret the agreement dated 19.06.1996. In
the light of the case laws discussed in relation to the persons aggrieved, we find that both the parties are persons aggrieved to file rectification
application.
In view of the above, both parties are aggrieved person within the meaning of Section 57 of the Act. The mark is originally registered in 1947 and
user claimed is since 1885. This dispute is purely a family dispute. Both the parties very much relied on the memo of compromise and subsequent
agreement dated 19.06.1996. In the agreement there is no specific clause regarding absolute ownership of the trade mark by anybody. In our view,
though, both the parties are persons aggrieved within the meaning of Section 57, but no specific grounds have been made out for rectifications except
both parties heavily relying on the agreement dated 19.06.1996 and the compromise petition. It is general proposition of Trade Mark Law that if there
is any dispute regarding validity of ownership of trade mark that will be determined by the court of competent jurisdiction. This Appellate Board has no
jurisdiction to interpret the agreement dated 19.06.1996 and determine the validity of ownership of the trade mark.
Apart from this, as per Section 125 of the Act, in certain cases an application for rectification of Register should be made to the Appellate Board.
Wherein a suit for infringement of registered trade mark, the validity of the registered trade mark is questioned, the validity of the mark is determined
only on an application for rectification of the registered trade mark made to the Appellate Board. The provisions of Section 125 are as follows:
(1) Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff's trade mark is questioned by the
defendant or where in any such suit the defendant raises a defence under Clause (e) of Sub-section (2) of Section 30 and the plaintiff questions the
validity of the registration of the defendant's trade mark, the issue as to the validity of the registration of the trade mark concerned shall be determined
only on an application for the rectification of the register and notwithstanding anything contained in Section 47 or Section 57, such application shall be
made to the Appellate Board and not to the Registrar.
(2) Subject to the provisions of Sub-section (1) where an application for rectification of the register is made to the Registrar under Section 47 or
Section 57, the Registrar may, if he thinks fit, refer the application at any stage of the proceedings to the Appellate Board.
But in this case there is no such suit for infringement is pending before any court raising the questions about the validity of registration of trade
marks by the either party. If there was any suit instituted, that suit was disposed of long back in terms of compromise petition and subsequent
registered agreement dated 19.06.1996. So these are not cases falling under Section 125 of the Trade Marks Act, 1999. So Section 125 does not lie.
In view of the above observations in paragraphs No. 21 to 26, we are of the view that there are no proper cases and no proper grounds made out
by either party for rectifying the Register of Trade Marks. So both the rectification applications filed by one party against the other party are
dismissed. Parties to bear their own costs of proceedings.