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Judgment
S. Usha, J
The applicants for rectification carries on business of manufacturing various types of metal cutting tools and accessories. They are the world
leaders in the field of manufacture of metal cutting tools and associate products which are sold under the internationally well known trade marks
TAEGU TEC"" and ""TT"". These are being sold in numerous countries throughout the world. The applicants manufacture and sell various products
including metal cutting tools and related accessories falling in Classes 1 and 7.
The applicants carry on their business under the corporate name and trading style ""TAEGU TEC"" and market their goods bearing the trade marks
TAEGU TEC"" and ""TT"" The mark ""TT"" is also represented in a stylized and distinctive manner. The letters ""TT"" represent the first letters of each of
the two words TAEGU and TEC. The trade mark TAEGU TEC and TT are used in over 20 countries round the world since September 1998. Their
subsidiary company Taegu Tec India Pvt. Ltd. has been using the trade mark by way of license from the applicant since May 2000. The aforesaid
trade marks are registered in the name of the applicant in various classes including classes 1 and 7 in over 22 countries. The trade mark has been
registered under application No. 832337 in India and has been validly subsisting.
3 . The applicant has spent large amounts in research and development and as a consequence of which they are able to constantly innovate and bring
out machine tools and/or metal cutting tools. By reason of the efforts of the applicant the quality of the goods under the trade mark Taegu Tec and TT
has acquired enormous goodwill and reputation which is being substantiated by the sales of the products since 1998 throughout the world and in India
since 2000. The goods bearing the said trade mark has been extensively promoted and popularized by the applicant. The applicant has not only spent
huge sums of money but also expended considerable time and efforts for promoting their goods bearing the trade mark Taegu Tec and TT.
+4 . By reason of the aforesaid, the said trade marks have become well known throughout the world including India. Apart from the users and
purchasers, the public are also aware of the trade mark and the quality of the goods sold under the said trade mark. Therefore, there is full knowledge
and recognition of the trade mark amongst the members of the trade and public both in India and abroad. Apart from advertisement, publicity and
marketing efforts the applicant have also listed their goods under the said trade marks at all well known trade fairs and exhibitions throughout the
world. As a consequence of the continuous, extensive and uninterrupted use by the applicant, the members of the trade and public associates the said
trade mark exclusively with the applicant and with none other. In view of such tremendous goodwill and reputation the said trade mark has attained
the status of a well known trade mark in India and in several other countries. For the reasons stated above, the applicant are the proprietors to the
trade mark and are entitled to exclusive use thereto.
5 . The registered proprietor does not manufacture any product falling in the said class and has not sold any product in this class whether under the
said trade mark or otherwise despite obtaining registration thereof. While claiming to be selling goods in Class 25, the registered proprietor does not
manufacture and sell goods in other classes though it applied for and obtained registration of a logo with the letter ""TT"" as a part thereof in all the 42
classes.
6 . On the basis of such application in many classes, the registered proprietor claiming to be the Proprietor and exclusively entitled to use the said trade
mark by a notice dated 15.1.2002 called upon the applicant for rectification to desist from using the said trade mark. Even after the applicant for
rectification furnished full details of their right to use the said trade mark the registered proprietor filed a suit before the Hon'ble High Court of Delhi
and obtained an ex parte order of the Court which came to be vacated later.
7 . The registered proprietor claims to be carrying on business of manufacture and selling of goods in Class 25 has applied for all the classes namely, 1
to 42 though they do not manufacture market or sell any product falling in those classes other than Class 25.
8 . The registered proprietor has also obtained registration in other classes. The registered proprietor has however opposed the application made by
the applicant for rectification in Classes 1 to 7 by filing oppositions and are pending before the Trade Marks Registry. Being aggrieved by the said Act
of the registered proprietor the applicant has now preferred this rectification application.
9 . The applicant for rectification is therefore being compelled to file the instant application for rectification of the registered trade mark No. 666099 in
Class 30 on the following grounds that:
(a) the Registered Proprietor has obtained registration without any bona fide intention to use the mark in relation to the goods to which registration has
been obtained for a period of more than three months prior to the making of the instant application;
(b) there is no bonafide intention on the part of the Registered Proprietor to use the trade mark for the goods for which it is registered which is an
abuse of process of this Tribunal and contrary to public interest and the purity of the Registrar;
(c) the attempt of the registered proprietor to take unjust advantage of the provisions of the Act is indicated by the fact that they have admittedly filed
applications in all the Classes that were available in the Fourth Schedule of the Trade & Merchandise Marks Rules, 1959 and The Trade Marks Rules,
2002. Such an attempt is contrary to the intention of the Act and the law laid down by the Supreme Court;
(d) the impugned registration is devoid of distinctive character and not capable of distinguishing the goods or services of the registered proprietor;
(e) the trade mark had not acquired distinctive character at the time of registration and is of such nature as would deceive the public or cause
confusion; and
(f) the registration has been obtained in bad faith without disclosing the full particulars. The registration of the impugned trade mark is contrary to the
provisions of Section 11 of the Act. The applicant for rectification further states that the registered proprietor has no valid reason or justification to
register the said trade mark in Class 30.
1 0 . The Respondent herein filed their counter statement denying the various allegations made in the application for rectification. The respondent
submitted that the application for rectification is misconceived, misconstrued and devoid of any merit and they are liable to be dismissed in limine. The
application is barred by Limitation since the applicant had complete knowledge of the existence of the registration for nearly 10 years. The application
is barred by the principles of delay, laches and acquiescence. The applicant has no locus standi to file the instant application as it is not a ""person
aggrieved"" within the meaning of the Act. The application along with the verification and the affidavit in support of the verification are defective since
there is no co-lateral, linear or vertical relationship between TAEGU TEC LIMITED, Korea and TAEGU TEC INDIA LIMITED.
The registered proprietor states that the concern M/s. T.T. Industries was a sole proprietary concern and has been running ever since the year
1968. The registered proprietor adopted the trade mark ""TT"" and has been using the same since the year 1968. The trade mark ""TT"" is the house
mark of their concern and the entire business revolves around and is solely dependent on the said trade mark. They adopted the trade mark ""TT"" and
started using the said trade mark in relation to its products first in India for all class of goods. The trade mark ""TT"" has acquired a special distinctive
and secondary meaning by virtue of long standing and continuous use of the said trade mark. Initially they started the business in relation to various
clothing and under clothing garments and under garments but during the progress of time, they expanded their business to various goods.
The registered proprietor states that keeping with the modern trend of business they have been diversifying their area of business by marketing
various consumer durable and non durable goods, edible foods, sweets and confectionaries, and also rendering services in relation to financial and
monetary affairs, promoting and advertising etc. It is pertinent to mention here that all the business activities carried out by the concern and/or the
licensee/permitted user are under the umbrella of the established trade mark ""TT"". The respondent with an eye to create an industry with a diversified
field of activities have made all efforts to protect and promote the house mark ""TT"". The respondents have applied for and obtained nearly 60 trade
mark registrations in different classification of goods and services. They have also obtained corporate registration claiming user since the year 1971.
1 3 . They are advertising their mark through various medias like newspapers, journals, magazines, TV advertisements, radio advertisements by which
the trade mark has become subliminally stuck in the minds of the consumers as emanating from the respondent's business house and from no one else.
The respondents have sold their goods by which the sales turnover runs to several crores of rupees. By such voluminous and uninterrupted use for the
last 40 years coupled with extensive sales promotional activities the trade mark has reached every nook and corner of the country and has been
recognized as a leading brand of great repute by the consumers and the trading public. The trade mark ""TT"" has earned international reputation and
recognition apart from the fact that the different products have been exported to various countries like Pakistan, Bangladesh, Sri Lanka, Singapore,
Israel etc. and it has attained the status of one of the leading and famous brands in India. In order to safeguard the interests arising out of the trade
mark ""TT"", the respondents have filed various oppositions and rectifications in different branches of the Trade Marks Registry. The respondents have
also been very vigilant in safeguarding the proprietary interest and enforcement of the rights in the said trade mark. The respondent submitted that by
reason of user for considerable period of time the mark has come within the knowledge of a large section of public in India and abroad. Due to
longstanding and voluminous user the trade mark has also been able to create a special association. Due to successful enforcement of the rights in the
trade mark the respondent have been able to take up the proprietary right. The trade mark has become a well known mark within the meaning of
Section 2(1)(zg) of the Act and it is entitled to protection under Section 11 of the Act. The Registered Proprietor states that the applicant for
Rectification, knowing fully well about the prior adoption, prior user and prior registration of the trade mark dishonestly filed the applications for
registration with the sole motive to cause misrepresentation in the minds of the consumers. The applicants have no proper reason or no cogent
explanation to offer for the adoption of the trade mark particularly in the Indian context. The respondents have also filed opposition against the
applicants for registration and have successfully been able to get orders in their favour. It is also pertinent to mention here that the applicant for
rectification in the opposition proceedings have contended that their mark is substantially different from that of the respondent, having contended, they
have no locus standi to file the instant application for rectification.
The respondent has denied that the applicant has been carrying on business in India through its subsidiary Taegu Tec India Private Limited. On the
other hand, the applicant for rectification has not furnished any evidence in support of its claim as to its association and/or affiliation in the instant
proceedings or in any of the proceedings before the Registrar.
1 5 . The respondent therefore prays that the rectification application may be dismissed with costs and the registration to continue on the register.
16 . We have heard Shri A.A. Mohan and Shri Gautam Banerjee, Counsel for the applicant and Dr. Alok M. Saha, Counsel for the respondent on
25th July, 2011.
The learned Counsel for the applicant submitted that the impugned trade mark registered under No. 666099 is associated with No. 522749 which
has been abandoned. The registered proprietor is dealing only with goods falling in Class 25 in respect of clothing and not with goods falling in Class 30
for which registration has been obtained. The respondent has not used the trade mark for the goods for which registration has been obtained. The
respondent herein filed a Civil Suit for injunction against the applicant where an interim order of injunction was granted and was subsequently vacated.
The suit is pending.
The respondents are dealing only with Hosiery goods but have applied for and obtained registration in all the classes i.e. 42 classes. The
respondents having obtained registration have not used and therefore it amounts to trafficking in trade mark. The registration is in contravention of the
provisions of the Act.
1 9 . The applicants are dealing in the business of machine cutting, tools and accessories for which documents have been filed, whereas they are not in
the business of food products. The respondents claim to be dealing in various goods for more than 40 years are denied. As seen from the documents
filed by the applicants, they are dealing only with the garments and not other goods. The respondents document at page 57 of the evidence in support
of application, it is not clear as to whether it is an advertisement or a pamphlet and there is no date mentioned. The document at page 66 is only a
pamphlet which does not prove use of the trade mark.
2 0 . The applicants then relied on the judgment passed by this Board in ORA/39/10/TM/DEL - M/s Okasa Pharma Pvt. Ltd. Vs. Win-Medicare Ltd.
an submitted that if the mark is not used even after registration it ought to be removed. The application for registration was filed in 1995 and the mark
was registered in the year 2005 and not put to use till the date of application for rectification. He also relied on 1996 PTC (16) 512 -Vishnudas trading
as Vishnudas Kishendas Vs. Vazir Sultan Tobacco Co. Ltd.
In reply, the Counsel for the respondent submitted that the impugned trade mark was registered in the year 2005 the applicant was aware of the
pending application in the year 2003 has filed this rectification on 29.7.2008 after a long delay. The respondents had adopted and used the trade mark
since 1968 whereas the applicants use is only from 1998 in Korea and in India since 2000.
2 2 . The applicant has stated that the registered trade mark has not acquired distinctiveness and as such will cause confusion which fact has not been
proved. The impugned registration is for goods falling in Class 30 whereas the applicants are dealing only in metal cutting machines. Its the applicants
own admission in the Statement of Case that they are carrying on business of manufacturing of various types of metal cutting tools and accessories
and are world leaders in that field. The applicants have also admitted that they are using the trade mark since September 1998 in other countries and
in India since May 2000.
The applicant has not stated how Taegu Tec Ltd. and Taegu Tec India Pvt. Ltd. are related. Both are two different entities. No evidence
produced to support their claim of affiliation. The applicant even in their reply to the counter statement have not rebutted whereas have only denied
the same. There is no evidence to show that the applicants have made search about the respondents use. In an application for rectification the onus
lies on the applicant to prove that if the registered trade mark is allowed to continue on the register it would cause confusion, which has not been
satisfied by the applicant.
2 4 . The sales figures given at page 160 - Exhibit 'F' cannot be taken into consideration as the respondents were restrained by an order of injunction in
the year 2003 to 2006. The respondents sales turn over runs to several crores of rupees. The Counsel then brought to our notice the various invoices
of the year 2006 and 2007 to prove their use of the trade mark on the goods for which registration was obtained. The applicants evidence is of no help
to them was the other contention.
The applicants are not aggrieved persons as they are dealing only with Hosiery goods. The applicants though claim user since 2000 in their
application for registration of the trade mark in Class 7 have claimed user since 01/01/2002.
On the ground of delay the respondent relied on the judgment -
(i ) 2003 (26) PTC 517 Bom - Rakesh Kumar Gupta Vs. Goresh Domestic Appliances and...
(ii) 2005 (31) PTC 306 (IPAB) - Gurdeep Kaur & Ors. Vs. Navarattan Singh & Ors.
(iii) 1997 PTC (17) 737 - Fedders Lloyd Corporation Pvt. Ltd. Vs. Fedders Corporation
(iv) 2008 (37) PTC 413 (SC) - Khoday Distilleries Limited (now known as Khoday India Ltd.) Vs. Scotch Whisky Association & Ors.
27 . The respondent relied on these judgments to decide the issue of aggrieved person
(i) 2003 (27) PTC 241 (SC) - Hardie Trading Ltd. and Anr. Vs. Addisons Paint and Chemicals Ltd.
(i i ) 1949 66 RPC 84 - Lever Brothers, Port Sunlight, Ld. Vs. Sunniwite Products, Ld.
(iii) 2000 PTC 513 - Prestige Housewares (India) Ltd. & Anr. Vs. Messrs Prestige & Ors.
(iv) 2008 (37) PTC 394 (SC) - Kabushiki Kaisha Toshiba Vs. Tosiba Appliances Co. & Ors.
To the issue of trafficking raised by the applicant, the respondent relied on the judgment reported in AIR 1986 SC 137 - American Home Products
Corporation Vs. Mac Laboratories Private Limited and another.
The Counsel finally prayed that the application for rectification be dismissed and the trade mark to continue on the Register.
In rejoinder to the reply arguments, the Counsel for the applicant submitted that the applicant was not two entities. In the instant case, it is private
interest which is involved and not public interest. Having obtained registration and not used will only amount to trafficking. The documents relied on by
the respondent for use are not valid proof of the same. The Civil Suit filed before the Delhi High Court is for all the goods and therefore the applicant
is a person aggrieved. The applicant relied on the judgment AIR 1974 Cal 183 -Chandra Bhan Agarwal and another Vs. Arjundas Agarwal and others
to say that as a suit was filed against them, they were persons aggrieved. Finally the applicant relied on Section 47 of the Act.
We have heard and considered the argument of both the Counsel and have also considered the pleadings and documents placed before it.
Any person may file an opposition to the registration of the trade mark as per Section 21 of the Act, whereas a person aggrieved may alone file an
application for rectification. The term ""person aggrieved"" has not been defined under the Act, but has been liberally construed by various Courts. The
House of Lords defined ""person aggrieved"" in the matter of Powell's Trade Mark - 1894 (11) RPC 4 -
...although they were no doubt inserted to prevent officious interference by those who had no interest at all in the Register being correct, and to
exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public mischief that
there should remain upon the Register a Mark which ought not to be there, and by which many persons may be affected, who, nevertheless, would not
be willing to enter upon the risk and expense of litigation..
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.
(Emphasis added)
[2003 PTC (27) 241(cited supra)]
In the case on hand, the main ground for rectification was non-user. Therefore, it is not a public interest but a private interest. The person who
applies for rectification must show that in some possible way he may be damaged or injured if the mark is on the register. The applicant has been
dealing only with goods like metal cutting tools etc. whereas the respondents had been dealing with various goods falling under all the 42 classes. The
applicants own admission is that they used the trade mark only since May 2000 in India whereas the respondents are using the trade mark since the
year 1968 for which sufficient proof has been placed before us. We think except for the suit having been filed against the applicant, the applicants
have not proved that they are not able to carry on their business lawfully on account of the registration. We therefore do not think that the applicants
are aggrieved persons and therefore do not have the locus standi to file the rectification application.
The other issue was delay which was raised by the respondent. In our considered opinion, there has been no delay in filing the application for
rectification. The impugned registration application has been filed in the year 1995 and registration granted in the year 2005. The respondent's
contention was that the applicants were aware of the same in the year 2003 during the suit proceedings. We are unable to accept this argument. The
rectification application can be filed only after the registration is granted. The registration was granted in the year 2005 and the application for
rectification has been filed in 2008. We therefore are of the view that there has been no delay in filing this rectification application.
Next, we shall deal with the issue of non-user. As per the provisions of the Act, an application for removal of a trade mark will be allowed only if
a continuous period of five years or longer has elapsed up to the date of three months prior to the date of the application during which there was no
bonafide use by the proprietor of the trade mark sought to be removed. The impugned trade mark was registered on 03.08.2005 whereas the
rectification application has been filed on 29.07.2008. The application for rectification on the ground of non-user is therefore premature.
That apart, the respondents have placed before us certain invoices of the year 2006 and 2007 to prove the use of the trade mark. Therefore we
think the grounds of non-user does not sustain and has to be rejected.
As regards the adoption and use of the mark is concerned, the applicants have admittedly used it since 1998 outside India, whereas the
respondents have adopted and had been using since 1968. The applicants have not disputed this fact of use. By long and continuous use, the
respondent's mark has become known to the trade and public. The question of confusion and deception has to be proved by the applicant which the
applicants have failed to substantiate the same.
Having answered all the issues in favour of the respondents we think it proper not to cancel the trade mark and allow the same to continue on the
Register. Accordingly, the rectification application is dismissed with no order as to costs.