Suresh Chand Jain Trading As Shree Lighting Group India, Formerly Known As Vineet Lamp Traders vs Satish Kumar Arora

Z.S. Negi, J

1 . This application is filed by the applicant for the removal of trade mark 'Kshree', registered in the name of the respondent under No. 1279488 as of

20.4.2004 in class 11 in respect of Electric Bulbs & Lamps, Tubes, CFL Tubes, Heater & Element, Immersion Rod, Press and Exhaust Fan, from the

Register of Trade Marks or rectification of the Register under Section 47/ 57/ 125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

2 . Averment is made that the applicant who being the sole proprietor of M/s Shree Lighting Group India, previously known as M/s. Vineet Lamp

Traders (which was changed to M/s Shree Lighting Group India with effect from 1.4.2001), is carrying on business of manufacturing and marketing

all types of bulbs, tubes and other electrical goods. The applicant is the registered proprietor of the trade mark SHREE written along with the term

WORLDS No. 1"" as well as roundish logo under No. 941939 as of 24.7.2000 in class 11 in respect of GLS Lamps, Holders & Installations Lighting

and the said mark is renewed from time to time and subsisting till now and another trade mark under No. 575821 as of 23.6.1992 in class 9 in respect

of Bulbs, Tubes & Electrical Goods. The applicant claimed to have been packing the products under the trade mark SHREE in a unique distinctive and

particular style of packing in three colours which have a distinctive colour scheme, get-up, layout and arrangement of features and the packing

material is original artistic work within the meaning of Section 2(c) of the Copyright Act and the same was adopted by the applicant since 1.4.1992.

The applicant further claimed that due to the high quality of products bearing the trade mark SHREE and by virtue of its continuous and regular user

since 1992, the said mark has acquired secondary meaning in the trade and has become distinctive with the goods of the applicant alone. It is the claim

of the applicant that the trade mark SHREE as well as the packing material has acquired a unique reputation and valuable goodwill in the eyes of the

general public at large and the said goods particularly the bulbs are exclusively associated with the applicant and as such the applicant has got the right

to use the said mark in respect of goods of its manufacture. It is also claimed that the applicant has sold its goods worth lacs of rupees and also

incurred considerable expenditure in advertisement and promotion of the trade mark SHREE.

3 . It is further averred that in August 1999, the applicant came to know that Shri Manoj Jain, in connivance with M/s. Arora Trading Co., the

manufacturer and seller/distributor of Manoj Jain, had started using the bulbs under the trade mark SHREE in similar packaging and on the complaint

of applicant, the police raided the premises of Manoj Jain and recovered huge stock bearing trade mark SHREE from the premises. Thereupon, Shri

Manoj Jain gave an undertaking to the applicant not to use in future the said trade mark as well as the packaging material. Despite the undertaking

given to the applicant Shri Manoj Jain in connivance with M/s. Arora Trading Co., the manufacturer and seller of the said products, continued with the

same and the applicant was compelled to file suit No. 176/2002 wherein the High Court of Delhi granted an ex parte ad-interim injunction on

28.1.2002 which is still in force. The applicant also issued a notice dated 27.7.2002 to Shri Satish Kumar Arora informing that he is involved with the

firm M/s. Arora Trading Co. and violated the interim order passed by the High Court and even filed a contempt petition. Subsequent to the filing of the

aforesaid suit, M/s. Vineet Lamp Traders was granted registration certificate of copyright SHREE on 11.4.2002 on the basis of the application filed on

5.5.2001. The applicant filed applications under Order 6 Rule 17 to enhance the relief for infringement of trade mark on the basis of registration of

trade mark No. 941939 as of 24.7.2000 and under Order 1 Rule 10 of the C.P.C. stating that M/s. Arora Trading Co. is changing its unit from one

place to another in order to violate the orders and they have started using/infringing the said trade mark and copyright from one another firm M/s.

Shree Jai Mata Industries (also known as Shree Vaishno Trading Co.) which is the clear violation of the legal rights of the applicant.

The applicant, on the basis of complaint being No. 2/2006 dated 7.10.2006 before the Civil Judge, Court No. 30 at Meerut, filed another FIR against

the parties who are violating the orders of the Hon'ble Court and the police raided premises of some of the respondents including M/s. Arora Trading

Co. which is also owned by Shri Satish Kumar Arora and during the course of these proceedings the applicant also came to know that Shri Satish

Kumar Arora namely, M/s. Shree Jai Mata Industries/Shree Vaishno Trading Co. filed an application No. 1279488 on 28.4.2004 for registration of

trade mark 'Kshree'. The mark advertised in the Trade Marks Journal No. 1328 Supplementary escaped notice of the applicant, hence no opposition

could be filed and the respondent obtained registration certificate dated 28.10.2005 in the name of Satish Kumar Arora. The said application for

registration was filed during the continuance of the interim injunction against Shri Satish Kumar Arora and his firm M/s. Arora Trading Co. The trade

mark looks like SHREE and not Kshree and Shri Satish Kumar Arora in that played a fraud in order to confuse the applicant as well as the Trade

Marks Registry and the respondent has deliberately and intentionally given the incorrect user to the Registry as the trade mark was not used prior to

making the application. Even the firm was not in existence and no sale tax registration was obtained by it. The entire registration granted by the trade

mark office is contrary to the orders passed by the Hon'ble High Court of Delhi, as well as the various provisions under the Act. It is pertinent to

mention that the application was advertised in the Trade Mark Journal in the name of Shri Satish Kumar Arora trading as M/s. Satish Kumar Arora

whereas the certificate shows that the registration was done only in the name of Satish Kumar Arora. The entire exercise done by the registered

proprietor as well as the trade mark office is contrary to the various provisions of the Act.

5 . The applicant has sought the removal of the impugned trade mark on various grounds, inter alia, that the impugned registration obtained by the

registered proprietor is SHREE and not Kshree as the essential feature of the mark appears as SHREE; that the registered proprietor is not the

proprietor of the trade mark SHREE / Kshree at the time of making application for registration as the application was filed during the existence of the

ex parte ad interim injunction against the respondent; that on the date of filing of the application Shri Satish Kumar Arora was fully aware that he is

under injunction by the Hon'ble High Court of Delhi, New Delhi and even the contempt petition is also pending against him for violating the Hon'ble

Court's order and it was fraudulent move on the part of the registered proprietor to make such application, concealing the ad interim injunction granted

by the Court from the Trade Marks Registry and claiming incorrect user; that the impugned trade mark has not acquired any distinctiveness qua

registered proprietor or the goods for which it is registered; that the goods for which registration is obtained is identical or deceptively similar with the

goods for which registration have been obtained by the applicant under trade mark Nos. 575821 as of 23.6.1992 and 941939 as of 24.7.2000; that the

impugned trade mark was registered without any bona fide intention to use on the part of the registered proprietor; that the registered proprietor is not

having any bona fide use of the mark applied for a period of more than 5 years and 3 months prior to the application nor has any bona fide intention to

use the same; that the impugned registration was made without any sufficient cause and the entry pertaining to the impugned trade mark was wrongly

made and wrongly remaining on the register of trade marks and that in the interest of the purity of the Register that the impugned entry be removed

therefrom. The applicant by claiming to be the person aggrieved has sought the removal of the impugned mark on the grounds that the same is

registered in contravention of the provisions of Sections 9, 11, 18, 31, 32, 47 and 57 of the Act.

6 . The registered proprietor has filed the counter-statement denying the material averments made by the applicant in the rectification application. It is

stated that he respondent is in the business of manufacturing and trading in electric Bulbs and Lamps, etc. since more than two decades. The

respondent claimed to have adopted the trade mark Kshree in the year 1986 and commenced its commercial use on the goods manufactured by him

as the proprietor of M/s. Jai Durga Lamps Manufacturing Co. since 31st December, 1986 and continued his business of manufacturing and trading in

electric bulbs and lamps under the said trade mark as the sole proprietor of M/s Jai Mata Industry from 1st April, 1999 to January, 2000; from 2000 to

June, 2006 continued the aforesaid business and used the trade mark as the sole proprietor of M/s Satish Electric Stores and thereafter continuing with

the same since July, 2006 till date under the name and style of M/s. Shree Laxmi Sales. It is claimed that the trade mark Kshree was independently

and honestly coined, which has no meaning, and as such is the invented word having no reference to the character or quality of the goods on which it

is used; hence, it is capable of distinguishing the goods of the respondent from that of the other traders. It is further claimed that the mark is

phonetically and structurally different than that of applicant's trade mark SHREE and hence there is no question of any likelihood of confusion in terms

of Section 11 of the Act. Contention has been raised that the applicant has no locus standi to initiate the present proceeding as the present proceeding

is barred by Section 34 of the Act.

7 . The rectification application came up for hearing before us on 20.1.2009 when Shri Manav Kumar, Advocate appeared for the applicant and Shri

U.S. Sharma, Advocate appeared for the respondent.

Learned Counsel for the applicant, Shri Manav Kumar, submitted that the applicant is in the same trade as that of the respondent and the applicant

has filed Suit No. 176 of 2002 for permanent injunction, infringement of copyright, delivery ups, etc. in the Delhi Courts against the respondent,

wherein the respondent has been restrained from using the trade mark SHREE. In view of this the applicant is in some way or the other substantially

interested in having the mark removed form the register and therefore is the person aggrieved and has locus standi to be heard.

Learned Counsel for the applicant submitted that Shri Satish Kumar Arora despite having full knowledge that the Hon'ble High Court of Delhi has

granted injunction by order dated 28.1.2002 against him and even a contempt petition for violating the said order is pending against him on the date of

making application, has applied for the impugned registration. It is a fraudulent move on the part of Shri Satish Kumar Arora to file the application

during the continuation of the aforesaid injunction by claiming the incorrect user in the trade mark office and he is, therefore, guilty of abusing of law

of the land. Shri Satish Kumar Arora is not the proprietor of the trade mark Shree/Kshree under Section 18 of the Act as the said trade mark

exclusively belongs to the applicant. Learned Counsel further submitted that the respondent has not only applied for registration but obtained the

impugned registration in connivance, fraudulently and by making material misstatement as to its use and proprietorship and such misstatements were

made in the Trade Marks office with a view to get improper advantage and with intention for improper purposes by suppressing material and relevant

information as well as true and correct use of the trade mark.

1 0 . Learned Counsel submitted that at the time of registration, the impugned trademark has not acquired any distinctiveness qua registered proprietor

or the goods for which it is registered. The impugned mark applied for registration could not have distinctive character on the face of applicant's mark

in use as well as the applicant's applications pending for registration thereof. In other words the impugned mark was or is not distinctive of the goods

at the time of the grant of the impugned registration including at the commencement of the present proceedings. In fact the impugned trade mark fails

to identify the goods of the registered proprietor and as such the impugned registration is in contravention of Section 9 of the Act.

11 . It was submitted that the goods in respect of which registration of mark is obtained by the respondent in class 11 is identical or deceptively similar

with the goods in respect of which registrations have been obtained by the applicant under Nos. 575821 as of 23.6.1992 in class 9 and 941939 as of

24.7.2000 in class 11. The impugned registration granted in favour of respondent is contrary to the provisions of Section 11 of the Act due to identity

with the earlier mark as of 23.6.1992 of the applicant and the identity or similarity of goods covered by the trade mark.

Learned Counsel submitted that the trade mark was registered without any bona fide intention on the part of the respondent that it should be used

in relation to the those goods by him. In fact the respondent is not having any bonafide use of the mark in respect of the goods covered by it for a

period of five years and three months prior to the application nor has any bona fide intention to use the same and therefore the impugned registration is

liable to be removed from the register.

1 3 . On the other hand Shri U.S. Sharma, learned Counsel for the respondent, vehemently denied that the application for registration was filed during

the continuance of the injunction granted by the Hon'ble High Court of Delhi against Shri Satish Kumar Arora and his firm M/s. Arora Trading Co.

and that the respondent had played fraud to confuse the Trade Marks office. He further denied that the respondent has intentionally made

misstatement or deliberately given incorrect user. The user claimed by the respondent is proved by the copies of invoices filed by the respondent. The

registration granted to the respondent by the Trade Marks Registry is neither contrary to the order passed by the High Court of Delhi nor contrary to

any provision of the Act. The respondent has the definite claim of proprietary right of the impugned trade mark by virtue of its honest adoption and

continuous use since more than 20 years, that is to say much prior to the applicant's use of the mark.

Learned Counsel submitted that the respondent has coined the trade mark Kshree independently and honestly more than twenty years ago and the

word so coined has no meaning and as such is the invented one having no reference to the character or quality of the goods on or upon which the

same is used by the respondent. By virtue of long and continuous use the said trade mark of the respondent has become distinctive of the goods of the

respondent. The mark of the respondent is capable of distinguishing the goods of the respondent from the goods of the other traders. The registration

of the impugned mark is, therefore, in conformity with the provisions of Section 9 of the Act.

Respondent's trade mark Kshree is structurally and phonetically different from the applicant's trade mark SHREE and the respondent is prior user

who is using the trade mark for the last more than two decades in respect of electrical bulbs and lamps, etc., the learned Counsel for the respondent

submitted. Having regard to these facts, no question of any likelihood of confusion as contemplated under Section 11 of the Act arise. In view of the

provisions of Section 34 of the Act, the respondent has all the right of its registration and hence the registration is not contrary to or violative of the

provisions of Section 11 of the Act.

Shri Sharma submitted that it is wrongfully pleaded that the respondent's trade mark was registered without any bona fide intention to use the mark

in respect of electric bulbs and lamps, etc. as the mark has been used before applying for registration and after registration also. The respondent has

filed copies of sufficient invoices to show that the respondent is using the mark continuously from the year 1986 till now. The objection of registration

without bona fide intention is without any basis at all and the same is not sustainable.

After hearing the arguments of both the parties and after perusal of records, the first question to be considered is whether the applicant is the

person aggrieved under Sections 47 and 57 of the Act to file the present application. A trader dealing in the same class of goods to which the

registered trade mark relate, or persons who are in some way or the other substantially interested in having the mark removed from the register, are

persons aggrieved and include persons who opposed the application for registration of the applicant. The test for such determination is propounded in

Powell's Trade Mark 1894 (11) RPC 4. A person aggrieved includes the rivals in the same trade who are aggrieved by the entry of the rival's mark in

the register or person whose legal rights would or might be limited if the mark remains on the register, he could not lawfully do that which, but for the

existence of the mark on the register he could lawfully do. The Hon'ble Supreme Court in National Bell Co. (P) Ltd. and Anr. v. Metal Goods Mfg.

Co. Ltd. and Anr.PTC (Supp) (1) 586 (SC) at p.593 has observed that the expression ""aggrieved person"" has received liberal construction from the

courts and includes a person who has, before registration, used the trade mark in question as also a person against whom an infringement action is

taken or threatened by the registered proprietor of such a trade mark. Person aggrieved includes rivals in the same trade who are aggrieved by the

entry of rival's mark in the register of trade marks or 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 on the register.

Averment is made in the application that the applicant has filed a suit against the respondent for permanent injunction, infringement of copyright,

wherein the Court has restrained the respondent from using the trade mark SHREE. Apart from this, though the application does not contain any

specific averment that both parties are in the same trade, but it could be inferred from the pleadings that both the parties are in the same trade and

rivals and are aggrieved by the entry of the rival's mark on the register of trade mark. The applicant is in one way or the other substantially interested

in having the mark of respondent removed from the register. The applicant, in our prima facie opinion, is the person aggrieved. As has been held that

where a person shows himself to be a person aggrieved by making necessary statements in the application for rectification in that behalf, such person

would obviously have the locus or purpose of making an application for rectification see Ciba Ltd. v. M. Ramlingam MANU/MH/0021/1958, so is the

applicant herein haslocus standi to file and maintain the present application.

18 . Now coming to the ground for rectification taken by the applicant that the respondent has obtained impugned registration during the continuance

of interim injunction by claiming the incorrect user of the trademark and obtained the impugned registration in connivance with and, fraudulently by

making material misstatement as to its use and proprietorship before, the Trade Marks office. Apart from this the applicant has not given any

particulars of fraud, misstatement and connivance of copies of the trade mark with the respondent. A trade mark could be removed from the register

if registration was obtained by fraud and where registration was obtained by suppression of material fact or by making misstatement such registration

was made without sufficient cause and could be said to have been obtained by fraud. It is for the applicant to give particulars of the fraud. It is not

sufficient merely to allege fraud but it must be pleaded and particulars given. Shri K.S. Shavaksha in his book on the Trade and Merchandise Marks

Act, 1958 (Third Edition) at pages 147-48 stated the law as under:

Fraud: If the original registration has been obtained by fraud, as for instance, by wrong statements deliberately made in affidavits submitted to the

Registrar, the mark can be removed from the register. Simply alleging fraud is not sufficient, for the absence of particulars, the application would be

incompetent. Re Om prakash MANU/PH/0002/1956; Zenith Colour Trading Co. v. Taherally MANU/MH/0229/1955. It has to be noted that the

fraud, referred to in this section, is fraud committed before registration. Fraudulent use of a registered mark after registration is subject to a different

principle of law. Contrary to the facts of the application on hand, it might be a fraud for a person to procure the registration of a trade mark which he

knows is in use by another trader or by his principal who is a foreign manufacturer. Gynomin (1961) RPC 408 at 414.

The applicant has neither given any particulars of fraud and material misstatement or connivance in the pleadings nor any evidence is adduced

therefore or the counsel revealed any incidence of fraud during the course of argument. In the case of Western India Match v. Manohara Match AIR

1965 Mad 49 it was held that in any proceeding where a party wants to rey on fraud committed by any person it must be specifically pleaded, and

particulars of misrepresentation or fraud must be stated. From the perusal of the interim injunction, it is noticed that the injunction order reads as,

Accordingly, injunction is granted in terms of para 20 of the application."" Para 20 of the application, does not contain any prayer but it pertains to

territorial jurisdiction of the court to try the suit. Even assuming that injunction is to restrain respondent from the use of the word 'SHREE', the

application was made by the respondent for registration of the mark 'Kshree'. It is not the case of the applicant in order to circumvent the injunction

order the respondent has deliberately mis-spelt the conventionally popular word shree. In the absence of particulars, fraud cannot be established and

when the fraud, misstatement and connivance is not established by the applicant, the onus remains undischarged. The respondent has denied that the

impugned registration has neither been obtained by playing fraud nor making misstatement. This averment of respondent has not been rebutted during

the course of hearing. When the onus is not discharged by the applicant, it cannot shift to the respondent to prove that no fraud has been played or

misstatement made. In view of this, the ground regarding fraud for removal of mark from the register is not sustainable.

Now coming to Section 9 of the Act, we have no material on record to suggest that the impugned mark is not distinctive or not adapted to

distinguish so as to attract contravention of that section. It is not the case of applicant that the impugned mark is identical with its mark or the

respondent at the time of registration failed to adduce evidence to establish the user or distinctiveness before the Trade Mark Registry. On the other

hand the respondent claims to have adopted the coined mark in 1986; it has no dictionary meaning and as such it is an invented word having no

reference to the character or the quality of the goods on which the mark is used by the respondent. The respondent has filed copies of certain invoices

from 10.1.1997 to 8. 8.2007 showing sale of Kshree bulbs, in some invoices the mark 'Kshree' is written in Hindi and in some in English, sales figures

from 1986-87 to 1994-95 (not certified by the Chartered Accountant) and Sales tax Assessment orders for the years 1998-99 and 1999-2000. It is

found that the respondent has also been using trade marks/words (written in Hindi) such as Citizen, Shree and Tata till the middle of 2006. Taking into

account, the over all view emerges is that the respondent has used the mark (at least since the year 1987) before filing application dated 20.4.2004 for

registration. It is the settled law that longer the uninterrupted and continuous use, the mark acquires distinctiveness and becomes capable of

distinguishing the goods of the user from the goods of other traders. Again the onus to prove that the mark is devoid of any distinctive character or the

mark has not acquired the distinctiveness at the time of application or the mark is incapable of distinguishing the goods of the applicant from those of

the other traders is on the applicant and the applicant has miserably failed to discharge that onus. In view of the above, the objection of the applicant

that the impugned registration is contrary to the provisions of Section 9 of the Act is unacceptable.

In so far, the allegation that the registration of mark is obtained in contravention of provisions of Section 11 of the Action the ground that due to

identity or similarity of goods covered by the applicant's trade mark is correct to the extent that the goods covered by the registration of trade marks

obtained by the applicant under classes 9 and 11 are similar. It is not the allegation of the applicant that the impugned trade mark of the respondent is

identical or deceptively similar with the marks of the applicant. If the two competing marks are not similar then the likelihood of causing confusion or

deception cannot be there because source of goods is identified by the trade mark. There cannot be any likelihood of confusion, because of different

trade marks, people may not associate the goods of respondent coming or originating from the applicant. The respondent has averred that its mark is

phonetically and structurally different from the applicant's trade mark and this averment of respondent has not been controverted or rebutted during

the course of hearing. Even assuming that the marks of the parties are identical or deceptively similar, the respondent is prior user of the mark. We

have already stated that the view emerges is that the respondent has used the mark at least since the year 1987. There can be no dispute that the

applicant has used the mark since 1992 as per copies of statement of sale figures and certificate of registered trade mark No. 575821. The respondent

has also claimed the benefit of Section 34 of the Act.

We have already stated that the respondent has used the impugned mark at least since the year 1987 till the date of filing application for

registration. After the date of filing application till the date of filing the present rectification application, the respondent is found to be using the

impugned mark. The respondent has filed the statement of sales (uncertified by the Chartered Accountant), copies of invoices till 8. 8.2007 and some

Sales Tax Assessment orders to prove that the impugned mark was in use during the material period for the purpose of Section 47 of the Act.

Therefore, the allegation of the applicant that the impugned mark was registered without any bona fide intention to use is without any basis. Also, the

contention of the applicant that the goods covered by the impugned mark has no bona fide use for the period of five years and three months before the

filing of the present application is untenable as the mark was taken on register on 28.10.2005 and five years three months thereafter will be some

times in the year 2011.

In view of the above, we see no merit in the application and accordingly, we dismiss the rectification application. There shall be no order as to

costs.