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Judgment
S. Usha, J
This application is for rectification of the trade mark registered under No. 468987 in class 11 as per provisions of the Trade Marks Act, 1999
(hereinafter referred to as the Act).
2 . The applicant company was incorporated under the laws of Germany in the year 1977 and was founded by Mr. Bernd Zander, thus acquiring the
name ""ZANDER"". In the year 1997-98, the company was taken over by another British company named Domnick Hunter plc. The company started
its business of manufacturing and selling goods such as air and gas filters, filter elements, driers and components sometime in the year 1977 thereof
falling in Class 11 and apparatus for measuring pressure of liquid and gaseous media falling in Class 9 and thus had acquired world wide reputation.
The company started using the trade mark ""ZANDER"" and ""ZANDER"" (with logo) which forms a part of the Company's name.
3 . The Company gradually extended its operation outside Germany and started selling its products in the international market including India where
the Company started selling its products in the year 1985-86. This trade mark ""ZANDER"" was first registered in Germany on 28.02.1981. The
applicant had also obtained registration for the trade mark ""ZANDER"" in several other countries. These goods are being sold in several countries all
over the world through local agents/local offices under the trade mark ""ZANDER"" and ZANDER logo. The applicant as part of their world wide
expansion programme started selling the goods in India in 1986. The Company therefore entered into an agreement dated 23.10.1986 with an Indian
company, namely, Nucon Industries Private Limited to form a joint venture company known as Nucon Zander India Private Limited (hereinafter
referred to as the Joint Venture Company). On 23.11.1989, a technical information agreement was executed between the applicant company and
Nucon Zander India Private Limited for a period of five years. This agreement was extended for a further period of five years, i.e., upto 27.11.2001.
The products of the applicant company was sold through a joint venture company. The sales were made by the joint venture company as an agent of
the applicant company to buyers who placed orders directly on the applicant company.
The commission for such sales were paid by the applicant company to Nucon Zander. The joint venture company also sold the products of the
applicant company by importing product into India and selling them in the market as distributors of the applicant company. Some products were
manufactured locally by the joint venture company by using the technology acquired from the applicant company and these products were sold in India
under the brand name ""Nucon Zander"". The joint venture company continued to sell the goods of the applicant under the trade mark ""Zander"" and the
locally manufactured goods under the trademark ""Nucon Zander"" in India as its agent/distributor/licensee. The applicant company was simultaneously
selling its said products under the trade mark ""ZANDER"" all over the world.
4 . On account of the said sales made on behalf of the applicant company, the joint venture company owed a large sum of money to the applicant
company and to recover the same the applicant company had issued legal notice dated 5.8.2003. The joint venture company being managed by Nucon
failed to pay up its dues and sent a response dated 20.9.2003. As a counter to the said notice Nucon on its own behalf acted on behalf of the joint
venture company and sent a notice dated 8.12.2003 to the applicant company wherein it was stated that Nucon Industries Private Limited, respondent
herein and Nucon Zander India Private Limited were the registered proprietors of the trade mark ""Zander"" and ""Nucon Zander"" in India and that the
applicant company had been using the name under the oral licence from Nucon Industries Private Limited through Nucon Zander India Private
Limited. In the said notice it had also called upon the applicant company to desist from using the said mark ""ZANDER"" or any other similar trade
mark in respect of its goods.
5 . The association between Nucon and the applicant company as well as the joint venture company came to an end and the joint venture agreements
were not renewed or extended. Thereafter since the year 2004 the applicant company had continued the sale of its products in India under the trade
mark ""Zander"" through its agent M/s. Cirrus Engineering & Services Private Limited. The letter had been sent on behalf of Nucon Industries Private
Limited calling upon the applicant company and its agent to cease and desist from selling any goods under the brand name ""ZANDER"". The applicant
company was most surprised to receive the said notices as at no point of time was any agreement or document executed between the applicant
company and Nucon or the joint venture company conveyed or assigned or in any other manner transferred any right in the trade mark in favour of
Nucon or the joint venture company. Under the various agreements entered into the joint venture company was only entitled to sell the products of the
applicant company and products of the joint venture company manufactured locally under the technology transfer agreement act as agents of the
applicant company.
It was thus revealed to the applicant company that Nucon without the knowledge or permission from the applicant company proceeded to apply for
registration of the trade mark ""Zander"" on 30.3.1987 under application No. 468987 in Class 11 in respect of filters and driers of all types for purifying
air and gas. The registration was granted on 31.1.1990 and has been renewed from time to time and is valid and subsisting.
It is stated that Nucon proceeded to apply for and obtained registration of the said trade mark ""Zander"" in which they did not enjoy any right or title
and which they knew belonged to the applicant company as all the sales made by the joint venture company were in the capacity of the agent of the
applicant company and the benefit of such sales would incur to the applicant company and not to Nucon Industries.
8 . Nucon thereafter filed a separate injunction suit against the applicant company before the Hon'ble Delhi High Court Suit No.C.S.(OS) 678 of 2006.
The applicant company filed an application for dismissal of the suit on 1.5.2006. After consideration, the Hon'ble High Court has been pleased to pass
the order ""Having regard to the averments made in this application and after hearing the parties for some time, I am of the view that till the disposal of
this application, the Defendant No. 1 (Applicant Company herein) need not file the written statement"". It has thus become essential for the applicant
company to file the present rectification application. The applicant company has also taken appropriate steps for securing the registration of its
trademark ""ZANDER"" and ""ZANDER"" (with logo) in India in Classe 9 and 11. The present application has been filed on the following grounds:
(i) The applicant company enjoys tremendous goodwill and a world wide reputation in the trade mark ""Zander"" and the said mark is associated with
the applicant company alone and would cause irreparable damage to the applicant company if the said registration remains on the register;
(ii) The impugned registration has been obtained by making false and misleading statements before the Learned Registrar. The applicant company is
aggrieved as they are the true proprietors and owners of the trade mark ""ZANDER"";
(iii) The registration has been obtained by fraud and deception and is thus invalid;
(iv) The registration has also been obtained by claiming false use of the mark;
(v) The registration and use of the trade mark by the present registered proprietor would result in confusion and deception in the minds of the public.
(vi) In view of these reasons it is prayed that the trade mark ""ZANDER"" be suitably rectified/removed from the Registrar.
9 . The respondents herein filed the counter statement denying the various averments/allegations made in the applications for rectification. The
respondent company was initially started in the year 1972-73 as M/s. Pneumatic Control Equipment Private Limited and subsequently changed its
name to M/s. Nucon Industries Private Limited in the year 1978. The main objective of the company was to carry on business of manufacturing,
buying, selling, reselling, importing exporting, improving, assembling, distributing, hiring on hire purchase system or otherwise dealing in all types of
Pneumatic and hydraulic equipments, machine parts, tools, implements, accessories, spare parts and appliances. The respondent has attained an
impeccable reputation and is a leading producer of compressed air treatment and pneumatic solutions in India with a know how and reputation and
experience of three decades. They design and manufacture the highest quality products which meet the criteria of their customers and appropriate
regulatory authorities.
The respondent due to such high and efficient standards maintained by them has attained an impeccable reputation in the industry and market in
India and is now considered as one of the leaders in the compressed air solutions and treatments. The respondents also submitted that only on hearing
about the excellent high standards and quality maintained by the respondent, the applicant had approached the respondent for selling its products in
joint collaboration in the year 1986. The applicant, a German company engaged in the manufacture of pneumatic high efficiency micro filters entered
into an agreement on 23.10.1986 with the respondent therein. It was agreed that both the parties would incorporate the joint venture company to be
called as Nucon Zander Private Limited (hereinafter referred to as joint venture) and the applicant would subscribe to a minority share of 26% and the
Directors of the respondents would hold the remaining majority shares. The objective of the joint venture was to carry on the business of manufacture,
marketing and maintenance of dryers, filtration equipment and measuring equipment. Subsequent to the incorporation of the joint venture, the joint
venture entered into a Technical Information License Agreement dated 23.11.1989 for a period of five years. It was further extended for a further
period of five years.
1 1 . It is also pertinent to mention here that this agreement was restricted to a particular product and it was not a general license agreement. It is also
pertinent to mention that the respondent has a complete manufacturing unit even more than a decade earlier to the joint venture with the applicant.
The respondent states that on or about the year 1987 it was decided by the joint venture to manufacture and market the filters, dryers and other allied
products under the trade mark ""ZANDER"". It is also pertinent to reinstate the fact that the respondent company was the majority share holder in the
joint venture and therefore it was decided that the trade mark application for registration should be applied in the name of the respondent. The
respondent with the full knowledge and consent of the applicant applied and obtained the registration of the trade mark ""ZANDER"". The joint venture
was also using the impugned trade mark on an assignment from the respondent. In or about 2004, the joint venture merged with the respondent and
the certificate of registration or Order of Scheme of Amalgamation under Section 391/394 of the Companies Act 1956 was issued on the 24th
November, 2004. Thus the respondent became the sole and absolute proprietor of all the assets and establishments of the joint venture and is also the
sole exclusive proprietor of the impugned trade mark ""ZANDER"".
The respondent submitted that the applicant never sold its products in India in the year 1985 and 1986. In fact, it was the respondent and the joint
venture who were manufacturing and marketing the filters and dryers under the impugned trade mark ""ZANDER"" ever since the product was
introduced in the Indian market. The trade mark ""ZANDER"" was associated only with the respondent and not with the applicant. It is true that the
respondent company entered into an agreement dated 23. 10.1986 with the applicant to form a joint venture known as Nucon Zander Pvt. Ltd. The
principal objective of the joint venture as per the collaboration agreement is to manufacture and market dryers, filtration equipments etc. Agreement
dated 28. 11.1989 was executed between the applicant and the joint venture for a period of five years. It was extended by another five years. The
technical information agreement only relates to the know how and technical information, assistance for the manufacture of pneumatic high efficiency
micro filters (air-gas). This agreement does not relate to any trade mark as claimed by the applicant. It is also pertinent to mention that the applicant
claimed that the joint venture and the respondent acted only as an agent is utter false. The technical information agreement would clearly show that
the said agreement was restricted only to a particular product and this was not a general license agreement as claimed by the applicant. The
respondent also submitted that even before the collaboration agreement was entered into, the respondent had all the infrastructure and expertise to
manufacture and market the said filters and dryers.
The other averments made by the applicant were denied by the respondent. It is also stated that the applicant owes money to the respondent and
not the respondent. It was the respondent who has manufactured and marketed its products ever since the collaboration agreement and the
respondent spent considerable amount of money, time and effort in establishing the trade mark in the minds of the consuming public. At no point of
time the joint venture or the respondent were the selling agent or the licensee of the applicant company except for the technical information agreement
under which the license agreement is restricted to the contract product, i.e., pneumatic high efficiency micro filters.
The respondent applied for the registration of the impugned trade mark in the name Nucon Industries Pvt. Ltd. only with the full knowledge and
consent of applicant in the year 1987 and the applicant was never the proprietor of the trade mark ""ZANDER"" in India. The above fact was clear
from the letter signed and faxed by Mr. Kevin Murtagh, Managing Director, Industrial Division of M/s. Domnick Hunter Limited who are the current
owners of the applicant. In the said letter Mr. Kevin Murtagh acknowledges the proprietorship of the respondents over the impugned trade mark
ZANDER"". The above said facts are established by another letter dated 3. 09.2002 from the applicant addressed to Mr. Hemant Jalan of the
respondent and signed by Mr. Wlator Steudle. A copy of the deed of assignment of the registered trade mark was sent to the respondent for
signatures. The above said deed of assignment in 2002 was enclosed along with the letter dated 3.9.2002 which also establishes that the respondent
was and is the sole and exclusive proprietor of the trade mark ""ZANDER"". The respondent states that from the above two documents it is clear that
the applicant's averments are false. The applicant's statement that they became aware of the registration only in 2003 is also false. They were aware
of the respondent's proprietorship even as early as 1999, if not, at least in the year 2002. A copy of the deed of assignment was sent to the applicant
company. The applicant has acquiesced in the use of the impugned trade mark by the respondent of claiming any right much less a proprietary right.
The applications for rectification filed is nothing but an after thought and is counter blast to the Suit filed by the respondent.
The applicant is not an aggrieved person within the meaning of Section 57 of the Act. The applicant has failed to substantiate its claim of
proprietorship and therefore this application is liable to be dismissed on this account alone. By virtue of the fact that the respondent enjoys goodwill
and world wide reputation the goods manufactured under the impugned trade mark have attained great reputation in industry. By continuous, extensive
use of the trade mark with the full knowledge of the applicant, the consumer and the industry in India identify this trade mark ""ZANDER"" with that of
the respondent and its goods. The applicants were aware of the use of the trade mark by the respondents and cannot now say that the respondent's
adoption is dishonest. The issue of deception or confusion will also not arise as the applicants have not used or sold their goods bearing the trade mark
ZANDER"". The respondents have been using the trade mark for more than three decades and therefore the consumer associate the trade mark only
with the respondents.
The respondents submitted that the application is liable to be dismissed for the reason that the applicant was never the proprietor of the trade mark
and therefore not an aggrieved person. The applicants had full knowledge of the respondent's application for registration and having allowed the
respondent to grow cannot now claim for removal of the trade mark already registered. In view of the facts stated above, the applications for
rectification may be dismissed with exemplary costs and allow registration to remain on the register.
We have heard Ms. Ritu Singh Mann, the Learned Counsel for the applicant and Shri Rajesh Ramanathan, the Learned Counsel for the
respondent on 16.6.2011.
The Learned Counsel for the applicant submitted that the applicant company was incorporated in the year 1977. They were dealing in goods falling
under Classes 9 and 11. The applicants have obtained registration in various countries. They have obtained registration in Germany in the year 1981.
In India they started using the trade mark since the year 1986. The applicant then relied on the license agreement entered into between the applicant
and the respondent where there was no mention of the trade mark. The application had been filed in 1987 claiming user since
11.1986 and the registration was granted on 31.1.1990. The deed of assignment relied on by the respondent has not been produced.
The grounds of rectification are that the respondent has fraudulently obtained registration by giving wrong date of user. The respondent stated that
they are the majority share holders for which no evidence has been filed. The respondent has stated that they applied for and obtained registration
with the consent of the applicant in the counter statement to the application for rectification whereas it was not stated in the suit for injunction filed
before the Delhi High Court.
The Counsel further submitted that only in September 2004, when a legal notice was issued by the respondent's Counsel stating the fact that the
trade mark was registered, the applicant became aware of the registration. The applicant thereafter filed the application for rectification. The
applicants did not admit the deed of assignment. The Counsel did not admit the E-mail message as it was not admissible under the Evidence Act. The
Counsel relied on few judgments.
In reply, the Learned Counsel for the respondent submitted that the respondent company was incorporated in the year 1972 and there was a
change in the year 1977. The applicant company allowed the respondent to carry on the business under the trade mark ""ZANDER"". It is clear that
with the knowledge of the applicant the respondent applied for and obtained the registration. In the year 1999 itself the applicant was aware of the
respondent's registration. The applicant had allowed the respondent to carry on the business using the trade mark. The applicants have admitted that
they had been carrying on business in India in the year 1986 through the respondent who had used the trade mark. The respondents had sold the goods
manufactured by the applicants under the trade mark ""ZANDER"" and the goods manufactured by them under the trade mark ""NUCON ZANDER"".
The application is for rectification of the trade mark ""ZANDER"" under No. 468987 in Class 11. We have to test if the applicant is a person
aggrieved to file this application for rectification. The applicants were selling the goods in India since 1986 and thereafter a collaboration agreement
was entered into between the applicant and the respondents to form a joint venture company known as ""Nucon Zander India Private Limited"". On
perusal of this agreement - Annexure 'A5' does not mention the trade mark or its use. It is also the applicant's statement in para 5 of the application
...Moreover, some products were manufactured locally by the Joint Venture Company by using the technology acquired from the Applicant Company
and these products were sold in Indian market under the brand name ""Nucon Zander"". The Joint Venture Company continued to sell the goods of the
Applicant Company under the trade mark ""Zander"" and the locally manufactured goods under the trade mark ""Nucon Zander"" in India as its
agent/distributor/licencee under the various agreements referred to above. Specimen brochures as used by the Joint Venture Company for sale of
Zander"" products are annexed hereto...
2 3 . From the above statement it is clear that the respondent was carrying on business under the trade mark ""ZANDER"" with the applicant's
knowledge. In such case, we do not think the applicant is injured or damaged by the respondents trade mark. The present application for rectification
has been filed only as a counter blast to the suit filed by the respondent.
The grounds on which the rectification application is filed is that the registration has been allowed by misstatement, the registration would cause
irreparable damage to the applicant, registration has been obtained by fraud and the registration would cause confusion and deception in the minds of
the public.
The onus is always on the applicant to satisfy as to confusion and whatever has been pleaded as grounds for rectification. As regards the grounds
of fraud and misstatement the applicant has not placed any documentary proof in support thereof. As regards confusion and deception, the applicant
has not filed any evidence as it is an admitted fact that the respondents have been selling the goods under the trade mark ""ZANDER"". The applicant's
goods are not available in the market. So the possibility of confusion and deception does not arise.
26 . The mark has been applied for registration on 10.3.1987 claiming user since 1986 and the mark was registered on 31.01.1990. The mark has been
in the register for more than a decade. The applicants were aware of the respondent's registration in 1990, as seen from the letter dated 27.9.1997 or
at least from 1999. The mark has been put to use since 1986 and registration obtained in 1990. The application for rectification has been filed in 2006.
The applicant having allowed the respondent to grow in strength for 16 years cannot now restrain them. We think it not fit to remove the trade mark,
which had been in the register for more than a decade.
The rectification application ORA/106/2006/TM/CH is accordingly dismissed with costs of Rs.5,000/-.