M.H.S. Ansari, J
1. Instant application is filed under Sections 47, 57 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act). The case of the
applicant appears to be that the respondent herein is part of the Liberty Group. The respondent Liberty Footwear Company was established in 1954.
2. It is stated that the respondent forms part of the Liberty Group founded in 1954 when Liberty Footwear Company was established and the said
Group consist of Companies and Firms, namely, Liberty Shoes Limited, Liberty Retail Revolutions Limited, Liberty Footwear Company, Liberty Group
Marketing Division and Liberty Enterprises. The founder of Liberty Group, Shri D.P. Gupta, started the business selling of shoes and other footwear
items in Karnal sometimes before partition of the country. Later on, Shri P.D. Gupta and Shri R.K. Bansal joined the founder and they formed a
partnership firm in 1954. Due to increasing business pressure, another firm Liberty Enterprises was established by the partners along with their sons.
In 1986 Liberty Shoes Limited was formed for the purposes of exports and joint venture. The registration of the impugned trade mark, claiming user
since August, 1992, was obtained, in the names of Dharam Pal Gupta, Purshotam Dass Gupta, Rajkumar Bansal, Dinesh Kumar Gupta, Harish Kumar
Gupta, Adesh Gupta, Satish Gupta, Adarsh Gupta, Adish Gupta, Sunil Bansal, Shammi Bansal, Raman Bansal and Vivek Bansal, trading as, Liberty
Footwear Company, under registration No. 594578 in class 25. The founder, who died in 2001, is said to have executed a will on 2.12.1987 by which
his three sons and their mother were to get all his property and share equally in the partnership firms including the Liberty Footwear Company, Liberty
Enterprises and Liberty Group Marketing Division. Shri D.P. Gupta allegedly executed another last will on 10.11.1998 by which he wished and gave
1/4th of his share in partnership firm to his son Adish Kumar, 1/8th to Akshat Gupta, 1/4th to his wife (widow), 1/16th to the applicant, 1/16th to
Sachin Gupta and 1/16th to Akarsh Gupta. It is alleged that the aforesaid firms were fully aware of the abovementioned wills and kept the same under
wraps and the applicant and other beneficiaries of the will were not given their due share in the properties, assets, trade marks, copyrights, patents,
designs, etc. of the late founder of the Liberty Group but neither the applicant himself or the father of applicant nor his family was aware of these wills
till July, 2001 and April, 2002, respectively. The applicant alleges that he was not made partner in the three firms as per last will of the founder by the
continuing partners as Shri P.D. Gupta and his sons wanted to take control of the entire business by bringing all the assets, trade marks of the said
three firms to the Liberty Shoes Limited. With the sudden demise of Shri R.K. Bansal, Shri P.D. Gupta lost control over the business and the attempts
to transfer the entire partnership business to the Liberty Shoes Limited failed. It is further alleged that ultimately on 29.5.2002 a 'Memorandum of
Understanding' was signed with the help of an Advocate for complete transparency in business and accounts but some partners formed a group and
did not honour the same. S/Shri Harish Gupta and Satish Gupta, sons of late Shri D.P. Gupta (the founder) have challenged in the Civil Court the
alleged steps for transferring the whole business and properties of partnership business to the Liberty Shoes Limited.
3. It is averred that the applicant was not being given his due share in the business, assets, properties, trade marks, patents, designs and copyrights of
his grandfather, he insisted for the same or some other honourable business for himself within the family fold, it was suggested by late Shri P.D. Gupta
and other partners of the aforesaid three partnership firms and the directors of the Liberty Shoes Ltd. that let the applicant prove his competence and
caliber to carry on a business and accordingly the applicant was asked to start a business as part of the family business fold within the campus but by
himself alone, with his own funds and assets. The applicant was asked to prove his mettle by establishing a brand RICARDO, which the three firms
have in two previous attempts failed to establish and had admittedly stopped production in the year 1996 or at least 1998. The applicant has, then with
the consent, approval, blessing, complete and active knowledge of all the partners of the said three firms and the directors of the Liberty Shoes Ltd.,
established the Liberty Trends within the campus of the respondents and has launched the brand RICARDO from the Liberty campus in October,
2002 in the All India Liberty Distributors Meet where all partners of the three firms were present. It is alleged that the products of the applicant
bearing the trade mark RICARDO and the products of the respondent bearing trade mark other than RICARDO were simultaneously displayed in the
same hall/premises. The applicant states that he has honestly, bonafidely, continuously and uninterruptly used the trade mark RICARDO since
October, 2002 within the active knowledge of the respondents and has carried huge sales of goods under the said trade mark. Apart from extensive
use of the mark, the applicant claims that he has advertised and publicised the same openly and widely through various media during the past four
years. The respondents having not raised any objection to such use and publicity and having not even issued a cease and desist notice, admittedly
acquiesced in the applicant's use of the impugned trade mark. In December, 2004, the respondent filed infringement suit No. 1447/2004 before the
High Court of Delhi wherein the respondent has admitted that the mark RICARDO has not been used by it since 1996 or at least 1998.
4. The applicant has averred that it is engaged in the same trade as that of the respondent and in the goods for which the impugned mark is wrongly
remaining on the register and also that legal action has been initiated by the respondent on the basis of impugned registration and as such the applicant
is a ""person aggrieved"" to file this application. The applicant has, therefore, sought removal and cancellation of the entry relating to the impugned mark
from the register on various grounds, inter alia, that the mark was registered without any bonafide intention on the part of the respondent to use the
same in respect of goods for which it is registered and in fact, there has been no bonafide use up to the three months before the date of the
application; that the respondent has never used the impugned trade mark and that up to the date of three months before the date of this application a
continuous period of five years from the date on which the trade mark is registered or longer had elapsed during which there was no bonafide use
thereof in relation to those goods or services by any proprietor thereof for the time being; that the entry in relation to the impugned mark was wrongly
made and wrongly remaining on the register; that the impugned registration was made without sufficient cause and it exists on the register without
sufficient cause; that it is in the interest of purity of register that the impugned entry be removed from the register and that there is no special
circumstances or any other factor that is in favour of the respondent invoking which the impugned registration may be maintained on the register.
5. The respondent registered proprietor has filed the counter-statement on 24.1.2007 denying the material averments made in the application and
refuting the claim that the applicant is the ""person aggrieved"" to institute the present proceeding against the respondent.
6. We heard the arguments of learned Counsel for the applicant Shri M.K. Miglani and Shri M.S. Bharath learned Counsel for the respondent at our
sitting at New Delhi on 7.2.2008. Shri M.K. Miglani sought adjournment to submit reply arguments and as requested the matter was adjourned to the
next day. On the adjourned date, i.e., the next day, on behalf of Shri M.K. Miglani an adjournment was sought to submit reply arguments. That request
for adjournment was rejected and orders were reserved.
7. Shri Miglani, Ld. Counsel for the applicant submitted that the grounds for removal set out in the application of the applicant filed in form 1 are to the
effect that (a) there was no bonafide intention to use the mark by the respondent registered proprietor (b) that up to the date of 3 months before the
date of this application a continuous period of 5 years has elapsed and during the said period there was no bonafide use of the mark by the applicant.
Ground No. 5 is based upon the entry of the mark wrongly made in the Register and that it is wrongly continuing warranting its removal from the
Register. In support of the said contention based on Section 57 of the Act, Shri Miglani contended that the mark as applied for registration by the
respondent applicant is at page 71 bearing No. 594578 dated 13.04.1993. The advertisement in the trade mark journal is at page 72. Our attention was
drawn to the statement contained therein to the effect ""be associated with No. 323656"". It was contended that the trade mark Liberty Hosiery Works
(323656) has no connection whatsoever with the applicant respondent herein and the further contention is that the final certificate of registration
issued to the respondent with respect to the impugned trademark as depicted is very different from the mark applied for as also the spelling in the two
marks. The mark as registered appearing on the certificate was never ever advertised in the trade mark journal it was contended.
8. Shri M.S. Bharat, Ld. Counsel for the respondent applicant submitted in reply that there was no misrepresentation by the applicant as to the mark
applied for and as advertised and the certificate of registration as finally issued. There was no pleading to the effect nor any opportunity afforded to
respondent to traverse the same. The error, if at all is one committed by the office of Registrar in the advertisement and issue of final certificate. The
respondent had no opportunity to rebut the contention now advanced by the Ld. Counsel for the applicant, it was contended.
9. Relying upon the judgments in the Born Martin Trade Mark (1989) R.P.C. 537, it was submitted that the period of 5 years with regard to non-use is
to be reckoned from the date the mark is actually brought on the Register. Further reliance was placed on Flashpoint Trade Mark (1998) R.P.C. 561
in support of the contention that the challenge as to non-use under Section 47 of the Act is pre-mature. Reliance was also placed on the judgment in
American Home Products Corporation 1986 PTC 71 and Hardie trading v. Addison Pain.
10. Shri M.S. Bharat, Ld. Counsel further contended that the word RICARDO is an invented word in as much as it has no dictionary meaning or any
meaning whatsoever in any of the Indian languages. Respondents have also been granted Copyright registration for the form of depiction of the trade
mark RICARDO. The respondent have, in fact, made extensive use of the mark RICARDO. Reference was made to the documents filed on behalf
of the respondent. Reliance was placed upon evidence filed including compact disc, invitation, write-up, newspaper articles with respect of fashion
show conducted by the respondent by leading fashion designer Ashis Soni, original brand identity kit pertaining to the mark RICARDO, original
packaging material for various RICARDO products along with product packaging inserts, leaflets and also a original pair of RICARDO shoes as
manufactured by the respondents, copyright registration certificate obtained in 1999, design certification for the shoe, various promotional materials
and advertisements released by the respondent pertaining to RICARDO among other brands of the respondent. Reference was also made to the
interim order passed by the Delhi High Court and in the suit No. 1447/2004 granting interim injunction vide orders dated 21.07.2006 in favour of the
respondent being Plaintiff in the suit against the applicant herein being defendant No. 1 restraining exploitation of the trade mark/brands/logos of the
plaintiff including RICARDO.
11. After having heard the Ld. Counsel for respective parties and also after having perused the pleadings and evidence on record we are of the view
that though several contentions have been raised by the applicant in its pleadings with respect of the dispute between the family members, we shall
confine our order to the extent of the pleading and contentions raised and pertaining to the rectification application in terms of Act and Rules made
there under. We shall first examine the contention based on Section 47 of the Act, 1999.
12. Section 47 of the Act deals with the removal of a registered trade mark from the Register on the ground of non use. That section pre-supposes
that the registration was validly made and that the mark is liable to be taken off the Register by subsequent non-user. An applicant who seeks removal
of the mark from the Register should, therefore, establish that the trade mark in question was registered without any bonafide intention on the part of
the applicant for registration and that up to a date of three months before the date of the application for rectification, a continuous period of five years
from the date on which the trade mark is actually entered in the Register or longer had elapsed and during the said period there was no bonafide use
thereof. The applicant seeking to remove the trade mark has not only to prove the non-user for the requisite period, but has also to prove that the
registered, proprietor had no bonafide intention to use the trade mark when the application for registration was made. The onus is on the applicant for
rectification to establish the non use.
13. Under Section 47 as it presently stands before Clause (a) can become applicable, there are two conditions to be satisfied. They are; (a) that the
trade mark was registered without any bonafide intention on the part of the applicant for registration that it should be used in relation to those goods or
services by him and (b) that there was in fact, no bonafide use of that mark in relation to those goods or services by the proprietor up to a date of
three months before the date of application for removal.
14. The provisions in Clause (b) of Section 47(1) will apply where a continuous period of five years or longer from the date on which the Trade Mark
is actually entered in the register has elapsed and there has been no bonafide use thereof in relation to those goods or services in respect of which the
mark is registered. Instant application for rectification is filed on 4.8.2006. The relevant period for consideration of the question of non use is from
4.8.2001 to 4.8.2006. The trademark itself has been registered on 13.6.2003 (being the date in which the mark is actually entered in the Register) Thus
even the prescribed statutory period of 5 years has not elapsed reckoned from the date of registration upto the date of filing of the rectification
application.
15. The distinction between Clause (a) and Clause (b) of Section 47(1) appears to be that if the period of 5 years specified in Clause (b) has elapsed
and during that period there was no bonafide use of the trade mark, the fact that the registered proprietor has a bonafide intention to use the trade
mark at the date of application of registration becomes immaterial and the trademark is liable to be removed. On the other hand while under Clause
(a) where there has been a bonafide intention to use the trade mark in respect of which registration was obtained, merely because the trade mark had
not been used for a period shorter than five years from the date on which it was registered, the same will not entitle any person to have that trade
mark taken off the Register. Instant case is one where the alleged non-user is for a period of less than five years as that statutory period of five years
has not elapsed. Therefore, in the case on hand the applicant has to prove that the applicant for the registration of the Trade Mark, Respondent - 1 in
the instant case, had no bonafide intention to use the Trade Mark when the application for registration was made (see Americal Home Products v.
Mac Laboratories 1986 PTC 71 at page 95 and 96)
16. In the case on hand, registration of the mark was granted to the respondent on 13.06.2003. The application for rectification is filed on 4.8.2006.
The period of five years itself has not elapsed to establish non-user upto five years on the date of making the instant application for rectification.
Besides, the assertion is that the respondent-registered proprietor has not used the mark since 1996 or 1998, based on the averment in the plaint filed
in the suit.
17. On behalf of the respondent Registered proprietor our attention was drawn to the written statement of the defendant therein (applicant herein) in
suit No. 1447/2004 and more particularly to the statements in para 9 thereof to the effect that ""the trade mark RICARDO could not be established by
the plaintiff in the market. It was launched twice, but the plaintiff could not get reasonable response from the market."" It is thus evident that the
applicant on whom the onus lies to establish non-user, has accepted that the registered proprietor launched the products under the trade mark
RICARDO twice. In our view, therefore, the applicant has failed to discharge the onus cast on him to establish non-user for the requisite period or
that the registered proprietor had no bonafide intention to use the mark at the date of application for registration. The contentions founded on Section
47 must accordingly stand dismissed.
18. In contrast, Section 57 deals with situations where the initial registration should not have been or was incorrectly made. Before we examine
whether any case has been made out under Section 57, let us first examine whether the applicant is a ""person aggrieved"". This is for the reason that
an application for removal or a registered mark can be made only by a ""person aggrieved"".
19. As held by the Supreme Court in Hardie Trading Limited and Anr. v. Addison Paints and Chemicals Ltd. the phrase 'aggrieved person' for the
purpose of removal on the ground of non use under Section 47 has a different connotation from the phrase 'aggrieved person' in Section 57 for
cancelling or varying or expunging or varying an entry wrongly made or remaining in the Register.
20. The judgment of the House of Lords defining a ""person aggrieved"" in the matter of Powell's Trade Mark 1894 (11) RFC 4 as interpreted by the
Supreme Court would apply to an application under Section 57, where the locus standi would be required to be ascertained liberally since it was held
that it would not only be against the interest of other persons carrying on the same trade but also in the interest of public to have such wrongful entry
removed. It was further held that if the ground for rectification is merely based on non user, then the applicant must show that in some possible way
he may be damaged or injured if the trade mark is allowed to stand.
21. On the question as to whether the applicant can be said to be a person aggrieved within the meaning of the Section 47 of the Act or Section 57 of
the Act. We are of the view that keeping in view the observation of the Supreme Court in Hardie Trading Limited the applicant, in our view, is not a
person aggrieved to maintain an application either under Section 47 or Section 57 of the Act. This is for the reason that, in our view, the trade mark
RICARDO (word per se) is not a dictionary work and has no meaning. Therefore, it is an invented word. The applicant cannot be held to be a person
aggrieved in relation thereto as it cannot claim any rights in the said invented mark of the respondent. Even assuming that the locus standi of the
applicant is to be ascertained liberally, the applicant has failed to show how it is against the interest of the applicant or the public more so when the
applicant, a rival in trade, cannot claim any rights or any relief in respect thereof. Besides being a subsequent user of the mark.
22. Hardie Trading Limited (cited supra) being the judgment of the Supreme Court is also relied upon by the respondent for the proposition that the
use"" of the mark may be other than physical. The user is not to be limited to the use of the mark on the goods or to sale of goods bearing the trade
mark, it was held in that case.
23. The ground based on which removal is sought under Section 57 of the Act is ""That the entry pertaining to the impugned trademark RICARDO
was wrongly made and/or it wrongly remains on the register of Trade Marks and that the trade mark has been registered in contravention to
provisions of Sections 47, 57, 9, 11 and 18 of the Act.
24. In defence it is stated that the respondent - registered proprietor had been using the mark RICARDO and had decided to temporarily discontinue
production of the products under the said trade mark and had also decided to re-launch products under the said trademark and in furtherance to the
said decision the respondent had even sponsored and conducted a fashion show with the leading designer Ashish Soni. The respondent instituted the
suit against the applicant to restrain his misuse of the said trademark and have every intention to re-launch the products in the market.
25. It is further asserted that the trademark RICARDO has no meaning whatsoever in any of the Indian languages and thus has the trappings of an
invented word. It was adopted in August 1992 and has been put to use by the Respondent in relation to various footwear products. It is asserted that
the respondents have been distributing Brand Identity Kits to its authorized distributors and agents in order to educate them as regards and enable
them to display the respondent's mark. A copy of the identity kit has also been filed as evidence. More particularly the respondents have catalogued in
paragraphs 17 - 20 the alleged activities of the applicant which are said to be illegal amounting to infringement and passing of and paragraph 21 of the
respondent's statement of case, the steps taken by the respondent against the applicant upon gaining knowledge of the applicant's alleged illegal
activities relating to trade mark registered in favour of the respondents including RICARDO. It has also been alleged that Mr. D.P. Gupta's late
grandfather of the applicant was not a registered proprietor of the mark RICARDO and that at no point of time the respondents had either expressly
or impliedly consented to the business or activities of the applicant.
26. As already noticed the applicant has failed to make out a case for removal based on Section 47 of the Act. There are no particulars much less
evidence brought on record to establish contravention of any of the provisions of the Act based on which the registration of the trade mark was
granted to respondents to warrant its removal under Section 57 of the Act. The contention based on Section 57 of the Act must fail and is accordingly
rejected.
27. However, before parting with the case we must take note of one fact brought to our notice by Shri Miglani, Ld. Counsel for the applicant that is;
that in the Journal dated 16.07.2000, the trade mark RICARDO was advertised under No. 594578. The mark has been displayed therein as under:
(Editor: The text of the vernacular matter has not been reproduced. Please write to contact@manupatra.com if the vernacular matter is required.)
Shri Miglani, Ld. Counsel for the applicant further submitted that it has also been stated in the said advertisement that mark is associated with No.
323656. Shri Miglani has referred us to a Xerox copy of the journal dated August 16, 1978 wherein mark under No. 323656 was advertised in the
name of Lilaram Jamna Das Gurnani trading as Liberty Hosiery Works. Ld. Counsel has also placed before us the registration certificate of the mark
in question RICCARDO. The submission was that the mark as finally registered is different from the mark as advertised. The spelling is also different
- with a double 'C"" (CC) The further contention was that the trademark 323656 registered in the name of Liberty Hosiery Works has no connection
with the trademark in question and, therefore, it was wrongly advertised as an associate mark besides, the trade mark as appearing in the certificate of
registration was never advertised. The registration is contrary to the Act and warrants removal, it was contended. Ld. Counsel for the respondent Shri
M.S. Bharat in reply raised a technical objection stating that the submissions now made are not based on any pleadings and that there was no
opportunity afforded to the respondent to meet the said submissions.
28. We are inclined to over look the technicalities and the objection raised by Shri M.S. Bharat. This is for the reason that we are of the view that in
the exercise of our jurisdiction under Section 57 of the Act irregularity or illegality brought to our notice in the registration of the mark or any entry or
any error or defect in any entry in the register is liable to be rectified by expunging or varying the entry. It cannot be denied that an application for
registration made under Section 18 is to be advertised in terms of Section 20, either before or after acceptance, so as to afford the public an
opportunity to oppose the registration of the mark. Thereafter in terms of Section 23 of the Act, the mark is to be registered and a certificate of
registration in the prescribed form is to be issued. There can hardly be any doubt or scope to dispute that the mark as applied for registration and as
advertised is to be granted registration subject to the fulfillment of the provisions of the Act and rules made there under. In other words, final
certificate issued under Section 23 should conform to the advertisement of the application made under Section 20. We are, therefore, of the view that
a direction needs to be issued to the Ld. Registrar of Trade Marks to rectify the error (a) with respect to the association with the trade mark (323656)
registered in the name of Liberty Hosiery Works and (b) with respect to the display of the word RICARDO and as appearing in the certificate of
registration to conform to the application/advertisement. In our view the mistake or error as pointed out is of the office of Ld. Registrar. We
accordingly, direct that the respondent applicant shall submit the original certificate of Registration along with a copy of this order before the Ld.
Registrar within a period of 3 weeks from the date of receipt of a copy of this order, whereupon the Ld. Registrar shall duly rectify the error and issue
fresh certificate within a period of 3 weeks from the date of submission of the certificate by the respondent to the Office of the Registrar of Trade
Marks.
29. The rectification application accordingly stands disposed of, however, in the facts and circumstances of the case there shall be no order as to
costs.
