S. Usha, Technical Member
1. The applicant has filed this application for rectification of registered trade mark Laminated Veneer Lumber with its abbreviation LVL in respect of
doors, windows and their frames. The applicant had taken out an interim application in M.P. 51/2005 for stay / injunct the effect and operation of
registered trade mark No. 775203B in class 19 during the pendency of the application for rectification. The case of the applicant is that they are
engaged in the well known and well established business of manufacturing and marketing, inter-alia, of panel door shutters, chemically treated and
laminated veneer lumber doors for the past several years. They have honestly and bonafidely intended to use and used the true, generic and common
description Laminated Veneer Lumber (LVL) in respect of its goods, i.e., the goods of such description.
2. The description Laminated Veneer Lumber has not only been adopted and used by the applicant but has also been used by many others in the trade
and in fact the registered proprietor also used the same as description of goods and not as trade mark. Laminated Veneer Lumber is common to the
trade of doors and windows within the knowledge of the registered proprietor as well as the applicant.
3. The applicants have legal and vested rights to the use of the said expression Laminated Veneer Lumber for the said goods. The registered
proprietor had lodged a complaint and had taken legal action against the applicant in Delhi on the basis of the impugned registered trade mark. The
applicant is in the same trade as the registered proprietor and as such the applicant is an aggrieved person by the impugned illegal registration of the
trade mark by the registered proprietor.
4. The impugned trade mark in relation to impugned goods would deceive and would cause confusion among the public. The impugned trade mark was
registered without any bonafide use in relation to the goods. The registered proprietor has not used the impugned trade mark for a period of more than
five years and three months prior to the date of filing his application and as such has not acquired distinctiveness in respect of the goods for which it is
registered. The impugned trade mark has been registered in contravention of Section 11 of the Trade Marks Act, 1999 (hereinafter referred to as the
Act) and as such offends the provisions thereof on the date of commencement of this action. The registration of the trade mark is contrary to
provisions of Sections 9, 11, 18, 31, 32, 47 and 57 of the Act.
5. The respondent filed his counter stating that the application was not maintainable either in law or on the facts of the case. It was stated that the
application has been a delayed one and that on account of delay the application was barred by limitation. It was further stated in the counter that the
respondent was engaged in the business of manufacturing and trading of doors and windows under the trade mark Laminated Veneer Lumber (LVL)
and that they are the registered proprietors of the trade mark and that they have been supplying their goods to various government departments.
6. The respondent further stated in their counter statement that the trade mark was registered as of 27.10.1997 and was valid as on date. They have
also stated that as per Section 28 of the Act as the registered proprietor they had exclusive right to use the trade mark. It was further stated in their
counter statement that the applicant herein had been using their registered trade mark and had been causing undue loss to them. Hence they had
lodged a criminal complaint against the applicant. The respondent further mentioned about the technical details of Laminated Veneer Lumber.
7. The case was taken up for hearing in the Circuit Bench at New Delhi on 11.7.2006. Learned Counsel Shri M.K. Miglani assisted by Shri Gaurav
Miglani and Shri Kapil Kumar Giri appeared for the applicant and learned Counsel Shri R.K. Jain appeared for the respondent.
8. Learned Counsel for the applicant argued that the mark was generic and descriptive and not a trade mark. He also drew our attention to the trade
mark registration certificate and submitted that the certificate was issued in the year 2004, for the application which was filed on 27.10.1997, claiming
user from 1.4.1995. Learned Counsel for applicant further argued that the mark is not capable of distinguishing the goods for which it is registered. He
also pointed out that as per Section 9 of the Act it does not qualify for registration. The mark also lacks any distinctiveness so as to qualify for
registration. He further contended that the registration was obtained by fraud, misrepresentation and concealment of material facts.
9. Learned Counsel for the applicant further argued that the mark stands for and is in the name of a technology which has been developed at various
levels all over the world, especially the CPWD, TADC, New Delhi and drew our attention to the document filed by the applicant (copy of standard
specification bearing number TADC 151994). He mainly drew our attention to the specification for Laminated Veneer Lumber given by the Central
Design Organisation which says that Laminated Veneer Lumber is made of rubber wood veneers glued together having grains of all the veneers in
one direction under high temperature and pressure to develop high modulus of rupture and modulus of elasticity.
10. Learned Counsel for the applicant based his argument on the specifications and stated that the trade mark Laminated Veneer Lumber is highly
descriptive and it was the name of the product. He also stated that in a search report of IPIRTI, Bangalore (an autonomous body of Ministry of
Environment and Forests, Government of India) Laminated Veneer Lumber has been stated to be a layered composite of wood veneer and adhesive.
He pointed out the literature review and stated that it was only the respondent who had used the Laminated Veneer Lumber as trade mark but it was
used by various other people all over the world as a description of the product.
11. Learned Counsel for the applicant pointed out that the respondent has stated in his counter statement that the trade mark Laminated Veneer
Lumber has acquired a secondary meaning. He also argued that the respondent herein was authorised by another company to create stockists and
dealers as on 25.5.1997 for LVL products in some parts of India. The vouchers produced also reveal the same that the respondent had been using the
LVL product as a trade mark only from 1997 and not earlier to that date as claimed in the application for registration. Learned Counsel for the
applicant further submitted that he is an aggrieved person and engaged in the same trade as that of the respondent and that the application for
rectification was maintainable. The registered proprietor, that is, the respondent herein initiated criminal action against the applicant who in turn had to
seek bail which was later granted. Learned Counsel also stated that the trade mark Laminated Veneer Lumber (LVL) is the name of a material or
technology which is being used by several people, who have not been using the Laminated Veneer Lumber (LVL) as a trade mark other than the
respondent.
12. Learned Counsel for the applicant summed up his arguments by stating that the mark is too descriptive. It is the name of a material and technology
and the mark as such was being used by various people even before 1995 and that it is an ISI product as seen from the specifications issued by the
CPWD. Learned Counsel also relied upon a few judgments. He referred to the caseH industan Development Corporation Ltd. v. The Deputy
Registrar of Trade Marks and Anr. AIR 1995 Calcutta 519 in support of his argument that when a mark is too descriptive it cannot be registered. He
relied upon the judgment Anand Kumar Deepak Kumar and Anr. v. Haldiram Bhujia Wala and Anr. 1999 PTC (19) 466 to say that the finality of
registration cannot be pleaded by a person who had obtained registration by fraud.
13. Learned Counsel for the respondent mainly contended that a person who has not signed the application has no authorisation and so he is not a
competent person to file the application and as such the application ought to be dismissed. He also argued that the application is barred by limitation as
per the provisions of Section 21 of the Act. He further submitted that the petition should have been filed within three months from the date of
advertisement of the mark in the Trade Mark Journal as per Section 21 of the Act and hence the same has not been filed within time and it was
barred by limitation. Learned Counsel for the respondent further contended that the petition has also to be dismissed for misjoinder of parties. He
submitted that as per Section 98 of the Act the Registrar of Trade Marks has not been made a party to the proceedings. He also argued that the
applicant should have gone by way of appeal against the order of the Registrar and not by way of a rectification application.
14. Learned Counsel for the respondent argued that Section 9 of the Act is not attracted and no fraud had been played by him. He further contended
that the applicant has not proved the fraud committed by the respondent as alleged by him. He also submitted that the mark is neither generic nor
descriptive and has no direct reference to the quality of the goods.
15. He also denied the applicant's contention that the mark was used by some other company and that the respondent acquired power in 1997 only and
to say that the respondent has been using the mark since 1995 is not correct. He also stated that the third party company was in joint venture with the
respondent.
16. Learned Counsel for the respondent relied on various judgments in support of his contentions. He relied on AIR 1991 DEL 25 in support of his
argument that authorisation is a must for a person to file a petition. He also cited other judgments reported in 1966 DLT Volume-Pg.13 and AIR 1965
Cat 417 in support of his arguments.
17. In rejoinder to the arguments made by the learned Counsel for the respondent, counsel for the applicant submitted that the authorization was not
necessary as it was a private limited company and submitted that the judgment relied on by the respondent had no relevance to this case. In reply to
the question of limitation, learned Counsel for the applicant submitted that the question of limitation does not arise and to the submission that the
Registrar was not made a party to the proceedings, the applicant's counsel replied that the Registrar need not be made a party to the rectification
proceedings.
18. We have carefully considered the arguments of both the counsel. The main issue which arises for consideration is whether the applicant is an
aggrieved person? The applicant in this case is an aggrieved person for the reason that the respondent had taken criminal action against the applicant.
As per Section 56 of the Act for expunging or varying the entry wrongly made or remaining in the Register the locus standi would be ascertained
liberally since it would not be against the interest of the person carrying on the same trade, but also in the interest of the public to have such wrongful
entry removed. In the matter of Powell's Trade Mark 1894 (11) RPC 4, the House of Lords has defined aggrieved person as ""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, in as much as it is 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 expenses 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 person aggrieved.
Thus when the rights of the applicant is being interfered by the respondent as the registered proprietor under the impugned mark, the applicant is
construed to be aggrieved person. From the above we are of the opinion that the applicant is a person aggrieved.
19. The next point that arises for consideration is whether the registration has been obtained by fraud and false statement as to user. We have looked
into the evidence like invoices, letters, etc., produced by the respondent to prove their user and found that the respondent has only been a dealer of the
product Laminated Veneer Lumber since the year 1997 and no documents to show that they are the owners of the trade mark since 1.4.1995 as
claimed in their application for registration. We, therefore, observe that the registration has been obtained by false statement and fraud.
20. We are of the view that the mark has not acquired distinctiveness and hence does not qualify for registration as per provisions of Section 9 of the
Act. Moreover, we are also of the view that the impugned mark is very descriptive of the goods and has not acquired a secondary meaning.
21. Section 11(a) of the Act prohibits registration of a mark, the use of which is likely to cause confusion or deception. Taking the guidelines of the
principles laid down by various courts, we are of the opinion that when the impugned mark of the respondent is identical to that of the applicant's mark,
especially considering the fact that both are in respect of the goods of same description and as such the registration of the respondent's mark is in
violation of Section 11(a) of the Act.
22. Consequently we are of the opinion that the impugned mark has been wrongly registered and the same cannot be allowed to continue in the
Register of Trade Marks.
23. Accordingly the ORA 34/2005/TM/DEL is allowed and the Registrar is directed to remove the mark from the Register of Trade Marks. However,
there will be no order as to costs. As the main rectification application itself has been allowed, M.P. No. 51/2005 becomes infructuous.
