M.H.S. Ansari, J
1. An application was filed for registration of a composite label trade mark in the names of Satyanarayan Agarwal and Prayagdas Agarwal said to be
carrying on partnership business of M/s Haldiram & Sons at 9, Jagmohan Mullick Lane, Calcutta (referred to as the applicant in the order under
appeal). Shri Mahendra Kumar Agarwal is said to have been inducted as a third partner subsequently. The said Shri Satyanarayan Agarwal died on
27.11.1993 leaving his two sons Prayagdas Agarwal and Mahendra Kumar Agarwal and five daughters. The five daughters of late Satyanarayan
Agarwal allegedly relinquished all their rights, titles and interests in the business of M/s Haldiram & Sons Bhujiawala. On an application made in Form
TM-16 Prayagdas Agarwal and Mahendra Kumar Agarwal trading as Haldiram & Sons Bhujiawala were recorded as subsequent applicants of the
trade mark applied for. The said application No. 424732 of the applicants of 9, Jagmohan Mullick Lane, Kolkata for registration of a composite label
trade mark and on being advertised was opposed by Prabhu Shankar Agarwal, Mahesh Kumar Agarwal, Ashok Kumar Agarwal and Master Sharad
Agarwal trading as Haldiram Bhujiawala at 7, Jagmohan Mullick Lane, Kolkata, being the appellants herein and referred to as the opponents in the
order under appeal.
2. It was the applicant's case that they are the descendants of the late Sri Ganga Bishan Agarwal, commonly known as Haldiram. Shri Satyanarayan
Agarwal one of the partner of the applicant firm is the son of late Shri Haldiram and therefore, they are entitled to use the name 'Haldiram'.
3. Learned Deputy Registrar of Trade Marks in the order under appeal observed that the opponents themselves in their evidence filed in support of
opposition, namely in the affidavit of Mr. Ashok Kumar Agarwal have admitted that the opponent's mark and the applicants' mark are different and
have no objection to the registration of the applicants' mark consisting of a monogram. It has further been recorded that opponents have also admitted
that Shri Satyanarayan Agarwal is the son of Shri Ganga Bishan Agarwal alias Haldiram. It was also observed that the applicants and opponents are
carrying on business at shop No. 9 and No. 7 of the same Jagmohan Mullick Lane. Therefore, the opponents have full knowledge of the trade name
under which the applicants are trading, being direct descendants of late Haldiram and relying upon Section 34 of the Trade and Merchandise Marks
Act, (hereinafter referred to as the Act) it was held that they are entitled to use the name Haldiram. It was further held that the applicants are seeking
registration of a monogram which is totally different from the registered trade mark of the opponents. It was held that the applicants' trade mark is
undoubtedly a visual device and applying the principles for comparison, it was observed that the main and essential feature of the opponent's mark is
three letters 'HRB' whereas the applicants' mark is a monogram. It was, therefore, concluded that visually the two marks are neither identical nor
deceptively similar. It was further held that in the absence of evidence it is not possible to draw any inference that the opponents' registered trade
mark is known in the market or to the public by the name 'Haldiram Bhujiawala' or 'Haldiram'. In short, the learned Deputy Registrar in the order
under appeal rejected the opposition and the objections taken under Sections 9, 11(a) and 12(1) of the Act. Finally, on the question of exercise of
discretion, learned Deputy Registrar being of the view that the applicants and opponents are closely related to each other, inference can be drawn that
the opponents were fully aware of the use of the mark by the applicants but they never objected to the same. No instance of actual confusion or
deception has been placed on record. What has not happened in the last 18 years, it was held, is not likely to have been in the near future. In that view
the opposition was dismissed and the application was allowed to proceed for registration. Aggrieved by the said findings and conclusions, instant
appeal has been filed.
4. Shri H.P. Shukla learned Counsel for the appellant submitted that the M.P. filed on behalf of the appellants would show that the case set up by the
respondent/applicant is false to their knowledge and the documents sought to be filed as additional documents would establish the same and, therefore,
it was prayed that the additional documents be taken on record so that the real truth may come out. Shri H.P. Shukla contended that the order under
appeal is one passed ex parte after refusing the application for adjournment applied on behalf of the appellants- opponents on the ground that the
counsel is not well.
5. Shri H.P. Shukla learned Counsel submitted that the appellants have been denied the opportunity of being heard or placing their case. They should
be afforded an opportunity of being heard and therefore, the matter should be remanded for fresh hearing after adequate opportunity of hearing being
afforded to the opponents.
6. On the merits of the matter, Shri H.P. Shukla learned Counsel for the appellant submitted that the opponents and their predecessor in title adopted
the trade mark 'Haldiram Bhujiawala' in the year 1958 and the said trade mark was registered under No. 330375, after having been advertised in the
Trade Mark Journal dated 1.1.80. Respondent No. 3 Shri Prayag Das Agarwal, the present partner of the applicants had joined the firm of M/s
Rameshwarlal Ram Kishan trading under the name 'Haldiram Bhujiawala and retired on 1.4.68 relinquishing his title rights in the trade name 'Haldiram
Bhujiawala'. Having relinquished his right in the trade mark in question, applicant is not entitled to use the same. It was further contended by Shri
Shukla that admittedly the opponents are the registered proprietors of the trade mark Haldiram Bhujiawala or Haldiram per se and are prior adopters
and users of the mark in question.
7. Shri Ranjan Bachawat learned Counsel on behalf of the respondent/applicant submitted that the application for receiving additional evidence is
misconceived and deserves to be dismissed in limine. The documents now sought to be brought on record are not supported by pleadings on record. In
fact, it was submitted that the prayer is to receive supplementary affidavit along with annexures filed therewith. It was, therefore, contended by Shri
Ranjan Bachawat learned Counsel that the evidence now sought to be introduced is more in the nature of evidence in support of supplementary
affidavit rather than the pleadings already on record.
8. As regards the contention with respect to rejection of the request for adjournment, it was submitted by Shri Ranjan Bachawat that after completion
of evidence and upon notice of hearing, the appellants did not file their request in form TM-7 notifying their intention to appear at the hearing. No
formal request for adjournment was made on behalf of the opponents.
9. On the merits of the matter Shri Bachawat submitted that order under appeal does not warrant any interference as there exist no grounds for
interference.
10. Having heard the learned Counsel for respective parties, and having perused the order under appeal as also the material on record, it would appear
to us that the main grounds on which the learned Deputy Registrar has proceeded ex parte appears to be that the opponents did not file their request
on Form TM-7 notifying their intention to appear at the hearing. It is not disputed that Shri C.K. Sharma, claiming to be from the opponents' firm
appeared before the learned Registrar at the appointed date and time and requested that as Shri Prabhakar, their counsel is not well, hence the hearing
may be adjourned. It has further been noticed in the order under appeal that the said Shri Sharma neither gave any letter in writing nor filed any
request for adjournment. The request for adjournment was opposed by learned Counsel for applicants on the ground that there is no request for
adjournment of the hearing before the Tribunal and also because the opponents did not notify their intention to appear at the hearing. Agreeing with
the said submissions, learned Deputy Registrar rejected the oral request and proceeded ex parte.
11. Before we proceed further, it would be appropriate to have a look at the conflicting marks.
(Editor: The text of the vernacular matter has not been reproduced. Please write to contact@manupatra.com if the vernacular matter is required.)
As noticed by the learned Deputy Registrar in the order under appeal, visually the two marks are neither identical nor deceptively similar. There is,
however, no dispute that the goods for which the rival marks have been granted registration are identical, namely, snacks items, bhujia and
sweetmeats. We are, however, not entirely satisfied with the observations of the learned Deputy Registrar that the essential feature of the opponent's
mark is ""HRB"". Prima facie, we are of the view that the essential feature of the two marks is ""Haldiram"" or ""Haldiram Bhujiawala"". This is for the
reason that the two rival trade marks, extracted supra, as registered are device or monogram marks. It is well known that a customer would refer to
the product by some name and not by reference to the device or the monogram. The only way a customer may refer to the product would be by
reference to the product which he wishes to purchase either as Haldiram or Haldiram Bhujiawala. It is most unlikely that anybody would refer to the
goods covered by the marks with reference to the three letters ""HRB"" or ""HR"". We are also of the view that even if the mark of the
respondent/applicant, as has been referred to by the learned Deputy Registrar in his order under appeal is a monogram, reference to the product
covered by the said monogram would still be referred to as 'Haldiram' or 'Haldiram Bhujiawala'. In other words the products covered by the two
marks would be referred to either as Haldiram or Haldiram Bhujiawala.
12. It is not unusual for a trader to use a name to indicate his business or goods. A trade name can also serve the purpose of a trade mark. The law on
the point is very clear. It is well established that no man is entitled to carry on his business in such a way as to represent that it is the business of
another or is in any way connected with the business of another. Whenever the name of a trader has gained popularity and acquired reputation in
relation to some goods, if another person subsequently adopts a deceptively similar name for identical or similar goods or business, the latter can be
restrained from carrying on its business under such a name. True, as noticed by the learned Deputy Registrar in the order under appeal, a person is
entitled to carry on his business either in his own name or in the name of his ancestor. This is of course subject to an important condition that such a
person does not do anything to cause confusion with the business of another and so long as such adoption of name is done honestly. It will be useful to
remember at this stage that the general proposition of law is that no man is entitled to carry on his business in such a way as to represent that it is the
business of another or is in any way connected with the business of another.
13. The business of the opponent and the applicants, as already noticed is common. What is, therefore, to be considered is whether the use of the
word in the trade name or the trade mark 'Haldiram' would cause confusion, deception or atleast wonderment in the mind of the purchasing public as
to the source of the products covered by the mark applied for. We are of the view, as already noticed that the essential feature of the two marks is
the word 'Haldiram"".
14. The opponents/appellants have not and do not dispute that the trade mark with letters HR is totally different and therefore its use as trade mark
was not objected to in the past. The objection of the appellants/opponents is to use of the word Haldiram and Haldiram Bhujiawala under the trade
mark applied for. It is the opponent's case that the trade mark applied for with the word Haldiram, which in the view of the opponent is the main and
essential feature of the trade mark, had never been used by the applicants. The opponents/appellants objection is to the registration of the applicant's
trade mark (monogram) with the word 'Haldiram' forming the essential feature of the mark.
15. It is the emphatic case of the opponents/appellants that the trade mark Haldiram Bhujiawala with letters HRB registered as No. 330375 in class 30
as of 2.11.1977 was adopted by the opponent's firm since 1958. It is the further case of the appellants that the respondent/applicant were using a
totally different mark which was a monogram of letters HR forming an essential feature of their mark. In other words, it is the case of the
appellant/opponent that the trade mark sought to be registered is not the trade mark which was used by the applicants and that the trade mark sought
to be registered thus will not belong to the applicants. The challenge is to the proprietorship of the mark applied for. What is required to be considered
is whether by virtue of registration of the trade mark in the name of opponent/appellant, the claim to proprietorship or exclusive right to use the trade
name or trade mark Haldiram Bhujiawala or Haldiram per se has accrued to the appellant. It is the prior adopter and user of the mark that is entitled
to claim proprietorship of the mark. We find that the learned Deputy Registrar has completely overlooked the consideration of the controversy, as
noticed above and arrived at the conclusion, as he did, erroneously. We are, therefore, inclined to set aside the order under appeal and send the matter
back for consideration afresh in accordance with law and after affording an opportunity of hearing to the respective parties and thereafter disposing
off the matter by a reasoned speaking order.
16. This brings us to the question whether the documents filed as additional evidence should be taken on record. Our attention has been drawn by Shri
H.P. Shukla to the order of the Joint Registrar of Trade Marks dated 9.1.2007 in the matter of an application for rectification No. Cal-718 filed by the
respondent herein against the registered trade mark 330375 being the registered mark of the appellants herein. By that order an interlocutory petition
filed by the rectification petitioner (respondent herein) was allowed and a delay of about 132 days in filing evidence under Rule 93 read with Rule 51
of the Trade Mark Rules, 2002 was condoned. Those proceedings are between the same parties as are involved herein. The nature of evidence taken
on record in that case appears to be, as noticed by the learned Joint Registrar in his order dated 9.1.2007 which is to the following effect:
On a cursory glance at the evidence sought to be introduced, it is seen that evidence sought to be admitted mainly consists some of partnership and
retirement deeds and copies of orders passed in connection with the bringing the names of Registered proprietors on record as the subsequent
proprietors. Therefore, the only question for consideration is whether the evidence which is sought to be admitted at this stage be taken on record as
further evidence in support of registration or not.
The evidence sought to be filed as additional evidence in the case on hand is very similar to the one referred to above. The documents sought to be
filed as additional evidence are deeds of partnership, deeds of retirement and orders with respect o bringing on record subsequent proprietors of the
registered trade mark No. 330375. Apart from that certain proceedings initiated under Income Tax Act like notices issued to the proprietor of
Haldiram Bhujiawala 7, Jagmohan Mullick Lane, Kolkata and notices of demand etc. These are documents filed primarily with a view to show that
appellant firm existed prior to respondent No. 1, applicant firm and therefore the opponent/appellant are the prior adopters of the trade name and trade
mark. Whether the documents so establish is a matter which we are not inclined to adjudicate at this stage. We have remanded the matter to the
registrar, it would be appropriate for the Registrar to consider the said documents and any other documents that may be filed in rebuttal, so that the
real controversy between the parties and the facts based on which appropriate relief is required to be given, can be ascertained and appropriate orders
passed.
17. Shri Ranjan Bachawat learned Counsel for the respondent has referred us to an order of this Bench dated 22.6.2007 in M.P. No.
124/04/TM/KOL and more particularly to the observations in para 8 at page 6 of the order and para 14 at page 8 of that order. In that case, we
declined to take on record certain additional documents on the ground that it would involve affording opportunity to rebut the same and thereby
remanding the matter for de novo hearing.
18. Shri Bachawat also referred us to a judgment of the Supreme Court in Basheer Ahmed v. Mehmood Hussain Shah, which, however, is of no
assistance to the respondents.
19. As a general rule, evidence upon which a party relies is not to be shut out. Courts have leaned in favour of affording opportunity to a party to give
evidence whenever justice of the case requires it. However negligent or careless may have been the first omission and however late the proposed
evidence, Courts have allowed it to be taken on record, if it can be done without injustice to the other side. There can be no injustice, it was held by
the Calcutta High Court in Rupendra Deb Raikut v. Ashrumati Debi and Ors. ""if the other side can be compensated by costs"". The reason for the
same being that a procedure of the Court is to aid administration of justice and not to hamper it. We are of the view that no prejudice would be caused
to the respondents if they too are afforded an opportunity to file documents in rebuttal. Also, we are of the view that the documents now sought to be
brought on record are relevant for the purpose of deciding material controversy between the parties, more particularly with respect to the
proprietorship and priority in adoption and user of the mark in question.
20. We, therefore, while remanding the matter to the Registrar direct that the additional evidence sought to be introduced by the opponents be taken
on record. The appellants herein shall file such documents in accordance with law before the learned Registrar within a period of one month from date
hereof along with affidavit duly sworn to by one of the registered proprietors of the mark No. 330375. Opportunity should thereafter be afforded to the
applicants to rebut such evidence by filing an affidavit in rebuttal along with such documents as the applicants may desire to rely upon. M.P.No. 58/07
is accordingly allowed in terms as above.
21. The appeal is allowed in part remanding the matter for consideration de novo by the learned Registrar after taking on record the additional
documents that may be filed by the opponents and affording an opportunity to the applicant/respondents to rebut the same and thereafter dispose of
the main matter in accordance with law.
22. In the facts and circumstances of the case there shall be no order as to costs.
