T. Varadaraj Pai vs Kiran Kumar And Registrar Of Trade Marks

S. Usha, J

Original Rectification Application is for removal of the trade mark ""Sri Raghavendra Malt"" (Label Mark) registered under No. 1266408 in Class 31.

The applicant and his father had been manufacturing malt and other products under the trade mark ""Shri Raghavendra Malt"". The applicant had

obtained permanent registration certificate from the District Industry Center, in the year 1989. Therefore for the past 18 years the applicants had been

using and selling their malt and other products under the trade mark Raghavendra Malt without any interruption.

The applicants have filed an application for registration of the trade mark ""Shri Raghavendra"" under No. 1645959 which is now pending registration.

On 12/03/2007, the respondents issued a legal notice to the applicants which was duly replied by the applicant. In the said notice, the respondent had

stated about the impugned registration and about their date of use since 1981.

The respondents filed a suit before the District Court, Udupi, Karnataka against the applicant for injunction. The court held that the respondent had

not substantiated with any evidence for the claim of use since 1981 and dismissed the interlocutory petition and the suit is pending.

The respondents have obtained registration on false statement. Though they claim user since 1981 they have failed to prove the same. The

registration is therefore fraudulent and has been obtained by suppressing material document.

The trade mark is Shri Raghavendra malt a label mark. The mark is not distinctive as substantial part of it is subjected to limitation as the name of

Shri Raghavendra is widely used and as the device of Shri Raghavendra carries a lot of religious significance. The other part of the mark is the

generic word Malt for the goods of malt. Therefore the mark is in contravention of Section 9(1)(a) of the Act. The mark is in contravention of Section

9(1)(b) & (c) of the Act. The impugned registration therefore deserves to be cancelled.

The respondents in reply stated they are carrying on business of manufacturing and marketing Malt since 1978. The permanent registration

certificate dated 29.12.1988 was issued by the Directorate of Industries, enumerating the date of commencement of production from June 1982. The

trade mark has thus acquired a great deal of reputation and goodwill.

In order to protect the statutory rights, the respondent applied for registration of the said trade mark on 9.11.2001 claiming user since 1981. The

sales turnover was Rs. 50,117 in the year 1994-95 which increased to Rs. 1,42,007 in the year 2003-04. The trade mark is a well known trade mark.

The respondents are the prior adopters and user of the trade mark.

In the suit filed before the District Court, it was held the two marks are deceptively similar, the respondents are the prior adopters and user of the

trade mark and also that they are the proprietors of the trade mark. The applicants herein cannot be said to be an aggrieved person to maintain this

application for rectification. In fact, the applicants who are the subsequent adopters of the trade mark have adopted an identical label of the

respondents only to trade upon the goodwill of the respondents.

The matter was listed on various dates. We thought it fit to call the parties and see if the matter could be settled amicably as both were small

traders. The parties were present but could not arrive at any settlement. Meanwhile the respondents counsel filed an application for taking on record

few documents. The applicants were granted time to file their counter to the application for taking on record the documents. The applicants wanted to

have the documents namely the affidavit of Mr. Devadas Pai, Proprietor of Bharath Press and certificate from the Padubidri Grama Panchayath

tested. The respondents counsel also stated that Mr. Devadas Pai and the Panchayat Development Officer may be examined to test the affidavit. We

therefore appointed a Commissioner for recording the evidence. Mr. Subash T. Gogi, District & Session Judge was appointed as Commissioner to

record the depositions of Mr. Devadas Pai and Mrs. Mamta Vaishi, Panchayat Development Officer and to submit his report to this Board. Mr.

Subash Tyagi fixed the place and time according to the convenience of both parties. The Advocate Commissioner recorded the evidence and filed the

report.

We have gone through the report filed by the Advocate Commissioner, Mr. Subash Tyagi Gopi.

The rival marks are deceptively similar. In such a case the issue that arises for consideration is who is the prior adopter and user of the trade

mark. The applicants own admission is that they are using the trade mark since the year 1989, whereas the respondent's use is since 1981.

The respondents had placed certain bills, invoices etc. and some bills issued by the press for printing the cartons. They had also filed the licence

issued by the Grama Panchayat for manufacturing it. In support of the same they had filed the affidavits of Mr. T. Devadas Pai, Proprietor of Bharath

Press and the certificate issued by Panchayat Development Officer.

We have gone through the depositions of Mr. Devadas Pai and Mrs. Mamta Vaishi, Panchayat Development Officer. Mr. Devadas Pai was the

proprietor of Bharath Press and had deposed that he had been carrying on the business since 1959. He has also stated that the respondent was

engaged in the business of manufacturing malt and badam milk since 1981 under the brand name Raghavendra Malt.

Mrs. Mamtha Vaishi, Panchayat Development Officer has deposed that on the basis of the Panchayat records, Kiran Kumar i.e. the respondent

was running the business under the name ""Raghavendra Malt"". The licence had been issued in the year 1981.

From the depositions it is clear that the respondents have been carrying on business under the trade mark Raghavendra Malt since the year 1981

as claimed in their application for registration. Therefore we do not find any fraudulent act by the respondents in obtaining the registration as averred

by the applicants.

Both the counsel had relied on judgments in support of their case. We have not gone into those judgments as we have dealt the matter on facts. In

view of the above observations, we do not find any reason to cancel the trade mark registered under No. 1266408 in class 31. The application is

therefore dismissed with no order as to costs.