Z.S. Negi, J
1. These applications which were filed by the petitioner/applicant in the High Court of Delhi under Sections 46, 56 and 107 of the Trade and
Merchandise Marks Act, 1958 (hereinafter referred to as the Act) being C. O. Nos. 25-29 of 1997, for removal/expunge of registered trade mark
(PANCHHI CHAAP) under Nos. 297415 as of 6.7.1974, 452559 as of 15.4.1986, 411126 as of 24.9.1983, 494300 as of 13.7.1988 and 411127 as of
24.9.1983, respectively, in the name of respondent No. 1, all in class 34 in respect of chewing tobacco, from the register, have been transferred to the
Intellectual Property Appellate Board pursuant to the provisions of Section 100 of the Trade Marks Act, 1999 and numbered by the Board as
TRA/150-154/ 2004/ TM/DEL.
2. According to the averments, the petitioner/applicant M/s Bansal Tobacco Stores, represented by Shri Anand Bansal, proprietor of the firm, have
under the then proprietorship of Shri Krishan Bansal adopted and started using the trade mark UDTA PANCHHI Label in respect of chewing
tobacco since 12.3.1982. On the death of Shri Krishan Bansal on 28.3.1992, his son Shri Anand Bansal became the sole proprietor of M/s Bansal
Tobacco Stores along with all its assets and goodwill including the trade mark in view of the Will dated 29.11.1991 of the deceased. Subsequently, in
about 1994, Shri Anand Bansal changed the name of the firm from M/s Bansal Tobacco Stores to M/s Ansul Industries (Ansul being his son). Shri
Krishan Bansal had filed an application No. 432032 dated 9.1.1985 for registration of UDTA PANCHHI Label which was advertised by the Registrar
of Trade Marks in the Trade Marks Journal No. 995, dated 16.11.1990 and the respondent No. 1 filed a notice of opposition No. DEL-7008. The said
notice of opposition was dismissed on 17.11.1993 by the Deputy Registrar of Trade Marks whereupon respondent No. 1 preferred an appeal being
CM.(Main) No. 474 of 1993 before the High Court of Delhi which was disposed of by the High Court on 5.9.2003 as having been rendered
infructuous pursuant to submission of the counsel for the applicant (respondent in the aforesaid appeal) that he is no longer interested in pursuing his
application No. 432032 for registration of trade mark against which opposition No. DEL-7008 has been filed and that he has made changes in the
design of the trade mark UDTA PANCHHI Label for adoption and accordingly appropriate applications have been filed. The respondent No. 1 has
also instituted a suit in the court of District Judge, Delhi for permanent injunction against the applicant and the learned ADJ, Delhi has on 30.7.2005
passed an order of ad-interim injunction.
3. The applicant is stated to have been continuously using the UDTA PANCHHI Label in a distinctive get up, make up, colour scheme and in a
distinctive artistic way from the year 1982 till the restraint order of the Court and also claims to be proprietor in the copyright of the said label. The
applicant claims to be the proprietor of the trade mark in respect of the said goods on account of its prior, bona fide adoption and continuous user
thereafter (till injunction order). On account of its extensive use, the said products of the applicant have acquired a vast reputation as a high quality
product originating exclusively from the applicant. The applicant has widely advertised the said trade mark through different media, such as,
advertisement in newspapers, trade magazines, wall paintings, distribution of trade literature, trade novelties, etc. and has thus already spent a
substantial sum of money on the publicity of the said trade mark and consequently the said trade mark enjoys solid and enduring reputation in the
markets.
4. The petitioner/applicant claims to be a person aggrieved because the respondent No. 1 has filed a frivolous suit against him alleging infringement of
registered trade mark, passing off and for the rendition of accounts in the Court of the District Judge, Delhi. The applicant's cases are that the
respondent No. 1 is not the proprietor of the impugned registered trade marks as well as not the proprietor thereof under the common law, the
impugned registration under trade mark Nos. 297415, 452559, 411126, 494300 and 411127 are liable to be expunged and removed from the register on
the grounds, inter-alia, that the respondent No. 1 had filed applications for registration in utter disregard of the applicant's right over it on account of
prior adoption and continuous use thereafter and the registrations were obtained by the respondent No. 1 by committing fraud upon the Registrar of
Trade Marks. The respondent No. 1 made several material misstatements in connection with the use of the trade marks which were not due to
genuine mistakes but were made with the intention to get improper advantage or for other improper purposes. That the trade marks, at the
commencement of the proceedings, were not distinctive of the goods of the respondent No. 1 and the applicant's trade marks are registered without
any bona fide intention to use in relation to those goods by him. It is stated that the respondent No. 1 is not the proprietor of the trade marks; the
registration thereof are in fraud of the applicant's rights in the said trade marks and are registered without sufficient cause and the impugned
registrations are wrongfully remaining on the register. The applicant has also stated that the trade marks of the respondent No. 1 were registered in
contravention of the provisions of Section 11 or offend that section on the date of commencement of the proceedings and such registrations in favour
of the respondent No. 1 are made in contravention of the provisions contained in Sections 9, 11(a) & (e), 12(1) and 18 of the Act. On the foregoing
grounds the applicant has prayed for expunging/removing the impugned registrations from the register.
5. Respondent No. 1 filed the reply in February, 1999, denying emphatically all the averments made by the applicant and opposing the applications on
several grounds but no documents were filed despite repeated opportunities given by the High Court. The applicant on 26.5.2000 filed only certain
documents, namely, invoices, gate passes of Central Excise, sales bills, advertising bills and materials, TR6 Forms and credit bills by way of list of
original documents. In February, 2006, the applicant filed Miscellaneous Petitions Nos. 22-26/2006 in TRA/150-154/ 2004/ TM/DEL under Rule 17 of
Order VI of the Code of Civil Procedure seeking amendment of the rectification applications and Miscellaneous Petition No. 27/2006 in
TRA/150/2004/TM/DEL under Section 98 of the Trade Marks Act, 1999 for calling the records of the Registrar pertaining to the recordal of
transmission/assignment of the respondent No. 1's trade mark. The said Miscellaneous Petitions were dismissed by this Board. Those orders of the
Board have been challenged on 26th July, 2006 by the applicant under Article 227 of the Constitution of India before the Hon'ble High Court of Delhi
wherein notice has been ordered to the respondents without any orders or directions.
6. The applications came up for hearing on 8th August, 2006 when it was decided with the concurrence of both the learned Counsel that since the
parties in all the applications are same and the material facts and legal issues involved therein are also same, the arguments made and conclusions
arrived at in TRA/150/2004/TM/DEL shall be adopted in relation to TRA/151-154/ 2004/ TM/ DEL. Both the learned Counsel, therefore, confined
their arguments on TRA/150/ 2004/ TM/ DEL basing that as a test case.
7. The learned Counsel for the applicant argued mainly that orders of Registrar permitting the transmission and/or assignment of the impugned trade
mark are wrong and illegal and placing reliance upon decision of the Apex Court in Gopal Krishnaji Ketkar v. Mohamed Haji Latif and Ors.AIR 1968
SC 1413 urged for drawing adverse inference against respondent No. 1 for withholding documents/evidence in relation to the said
transmission/assignment. He queried as to what happened to partnership after dissolution thereof on the death of partners of the firm and drew our
attention to photocopy of the entry in Register of Trade Marks relating to Registered Trade Mark No. 297415/34. The learned Counsel further
contended that the respondent No. 1 has in utter disregard of the applicant's right over the mark on account of its prior adoption and continuous use
thereafter and as such obtained the registration by committing a fraud upon the Registrar. The respondent No. 1 has made several misstatements in
connection with the use of the trade marks and the respondent No. 1 is not the proprietor of the trade marks. He drew our attention to paragraphs (i),
(ii) and (vii) of the grounds of application.
8. Contrary to this, the learned Counsel for the respondent No. 1 relying the case decided by this Board in Jindal Rolling Mills Ltd. v. Shree Ganesh
Rolling Mills and Ors. 2005 (31) PTC 113 (IPAB) contended that the applicant's adoption of the mark in respect of chewing tobacco is not only
dishonest, tainted but mala fide and he is not a person aggrieved within the meaning of Section 56 of the Act and, therefore, the application is liable to
be dismissed. He contended that the respondent No. 1 is the proprietor of the trade mark PANCHHI CHAAP on account of priority in adoption, user
since 1973 and obtained registration of trade mark under the provisions of the Act. The question of disregard to applicant's right over the mark does
not arise as there was no mark adopted or no mark being used by the applicant at the time respondent No. 1 made application for registration. The
applicant adopted its mark in the year 1982 whereas the respondent No. 1 adopted and is using the mark since the year 1973 and as such there could
be no possibility of committing fraud on the Registrar. Since the applicant is a subsequent adopter of his mark (at a much later stage, say about 9 years
later), no question of filing of application for registration by the respondent No. 1 in utter disregard to the applicant's right over the mark arise. The
registration which has been obtained by respondent No. 1 is perfect and legal and no fraud has been committed by him while obtaining registration as
merely alleged or otherwise. He submitted that it is the applicant who has committed a fraud on the public by using a deceptively similar mark in
respect of same goods for which respondent No. 1 is the registered proprietor. He placed reliance on the decision of Division Bench of Allahabad
High Court in Pt. Ram Avtar Sharma and Ors. v. Pt. Chakkradhar Saran Sharma AIR 1971 Allahabad 157 (V 58 C 33) wherein it was held that
Courts do not take any notice of general allegations of fraud unless the particulars are also given in the pleadings. A charge of fraud is a very serious
charge and when one kind of charge is pleaded another kind of fraud can not be permitted to be proved."" He contended that four applications of
respondent No. 1 for registration were not opposed by the applicant which means the applicant was not in business even in 1982 also. The learned
Counsel strongly objected to the argument made by the counsel for the applicant in relation to legality of recordal of transmission/assignment of
respondent No. 1's trade mark on the ground that such an argument is not relevant at this stage in view of dismissal of Misc. Petitions by the Board.
Relying on the Orders passed by this Board in United Brothers v. Aziz Ulchani and Anr. 2005 (31) PTC 709 (IPAB) and Khushi Ram Behari Lal v.
New Bharat Rice Mills 2005 (31) PTC 704 (IPAB), he contended that the applicant has not cited any specific instance to substantiate his allegation
that the respondent No. 1 made several misstatements, in connection with the use of the trade mark, at the time of application for registration, thereby
obtaining registration by playing fraud on the Registrar nor there is any particulars of fraud contained in his averment. The learned Counsel for
respondent No. 1 contended that instead of arguing mostly on recordal of assignment / transmission of respondent No. 1's trade mark, the learned
Counsel for the applicant should have argued on the application of the provisions of Section 32 of the Act. He submitted that the application attracts
the provisions of Section 32 of the Act and for the success of the application it is necessary that it should fall under any of the clauses of Section 32 of
the Act. He further submitted that the applicant has not satisfied any of the conditions specified under Section 32 for enabling him to seek removal of
registration under that section. The learned Counsel for the applicant has not contradicted that the period of more than seven years have expired up to
the date of filing of the applications.
9. The learned Counsel for the applicant contended that the respondent's mark was registered in contravention of the provisions of Section 11 or
offends against the provisions of that section on the date of commencement of the proceedings and the impugned trade marks were not, at the time of
commencement of the proceedings distinctive of the goods of the respondent No. 1. The learned Counsel for the respondent No. 1 vehemently denied
that the registration of his mark contravenes the provisions of Section 11 or any other provisions of the Act on the date of commencement of the
proceedings and submitted that the trade mark was distinctive at the time of registration as well as at the time of commencement of the proceedings
and continues to be distinctive till now.
10. The learned Counsel for the respondent No. 1 contended that the application is hit by Article 137 of the Limitation Act, 1963. He pointed out that
applicant came to know of the respondent No. 1's registered trade mark in 1990 when the respondent No. 1 gave notice of opposition to applicant's
application for registration of trade mark but he choose to file rectification applications only at the end of 1997. In support of this contention he relied
on the decision in Rakesh Kumar Gupta v. Goresh Domestic Appliances and Ors. 2003 (26) PTC 517 (Bom )and order in Gurdeep Kaur and Ors. v.
Navrattan Singh and Ors. 2005 (31) PTC 306 (IPAB).
11. The statutory requirement for the purpose of making an application under Sections 46 and 56 of the Act is that the applicant should be a person
aggrieved. The applicant has to give reasons as to how he is a person aggrieved. The expression 'aggrieved person' has received liberal construction
from the courts and includes rivals in the same trade who are aggrieved by the entry of rival's mark in the register of trade marks. The applicant and
the respondent No. 1 are in the same trade and as such are trade rivals. In re Powell's Tm. (1894) 11 R.P.C. 4, HL at p. 4 Lord Herschell said: ""The
first question raised is whether the Respondents were 'Persons aggrieved'.... My Lords, I should be very unwilling unduly to limit the construction to
be placed upon these words; because, although they were no doubt interested to prevent officious interference by those who had no interest at all in
the Register being correct, and to exclude a mere be unduly limited, in as much 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, limit the legal rights of the Applicant, so that by reason of the existence of the entry on
the Register he could 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."" As also, the respondent No. 1 has filed suit against the applicant in the court of District Judge, Delhi for infringement of
registered trade mark, passing off and rendition of accounts. By applying this principle, we hold that the applicant is a 'person aggrieved'.
12. There is no doubt that all the impugned trade marks were registered in Part A of the register and the registrations were made during the period
spread over from 6.7.1974 to 13.7.1988, that is to say that all the impugned original registrations were made seven years or more prior to the
commencement of the present legal proceedings (all applications for the rectification were filed in the High Court on 3.12.1997) and as such the
applications attract the provisions of Sections 31 and 32 of the Act. Though the applicant has not replied to the arguments of the respondent about the
applicability of provisions of Section 32 of the Act but we ought not to overlook a specific provision for this purpose made by the Legislature.
Advantages accrue to proprietor of the trade mark on its registration after lapse of seven year. Registration of trade mark is to be pima facie evidence
of its validity under Section 31. Section 32 confers validity on the original registration of the trade mark after the expiration of seven years from such
registration with the exception that it can be attacked only on any of the grounds specified in Clauses (a) to (c) of that section. Section 32 of the Act
reads as under:
32. Registration to be conclusive as to validity after seven years. Subject to the provisions of Section 35 and 46, in all legal proceedings relating to a
trade mark registered in Part A of the register (including applications under Section 56) the original registration of the trade mark shall, after expiration
of seven years from the date of such registration, be taken to be valid in all respects unless it is proved-
(a) that the original registration was obtained by fraud; or
(b) that the trade mark was registered in contravention of provisions of Section 11 or offends against the of provisions of that section on the date of
commencement of the proceedings; or
(c) that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor.
We would take up the ground under Clause (a) of Section 32 to see whether the impugned trade mark be expunged from the register on the ground
that the original registration was obtained by fraud. The expression ""fraud"", in the context of Section 32 of the Act, seems to involve some element of
actual deception by the applicant for registration as observed under by Mr. Justice Roxburgh, in the High Court of Justice-Chancery Division, while
delivering interlocutory judgment in Bentley Motors, (1931) Ltd. v. Lagonda Ltd. (1947) 64 RPC 33 at page 35:
I am most anxious to avoid defining ""fraud"" in the context in which it appears here, because apparently it has not yet been done, and I am not anxious
to be the first to do it if it is not necessary for me to do it; but when I see in conjunction the words ""obtained by fraud"", I feel bound to hold that it
involves some element of actual deception by the applicant for registration. I want to make it plain that in using the phrase ""actual deception"" I do not
necessarily exclude all omissions, because it is quite possible, and I think it is a trite saying, that a statement may be in such a form that having regard
to what is omitted it is deceptive, though on the face of it and taken quite alone it is not deceptive.
But in my judgment a claimant who sets out to say that registration was obtained by fraud must allege some actual deception by word or deed, or
some omission by word or deed, of the character which I have just indicated; and accordingly I am not prepared to hear evidence directed to the issue
that the registration was obtained by fraud.
It is not sufficient merely to allege fraud but it must be pleaded and particulars given. Shri K.S. Shavaksha in his book on the Trade and Merchandise
Marks Act 1958 (Third Edition) at pages 147-48 stated the law as under:
Fraud: If the original registration has been obtained by fraud, as for instance, by wrong statements deliberately made in affidavits submitted to the
Registrar, the mark can be removed from the register. Simply alleging fraud is not sufficient, for the absence of particulars, the application would be
incompetent. Re Om parkash Zenith Colour Trading Co. v. Taherally(1956) 58 Bom. LR 912. It has to be noted that the fraud, referred to in this
section, is fraud committed before registration. Fraudulent use of a registered mark after registration is subject to a different principle of law. Contrary
to the facts of the application on hand, it might be a fraud for a person to procure the registration of a trade mark which he knows is in use by another
trader or by his principal who is a foreign manufacturer. Gynomin (1961) RPC 408 at 414.
The applicant has neither given any particulars of fraud in the pleadings or any evidence adduced therefore nor the counsel during the course of
argument revealed any incidence of fraud. We are inclined to agree with the submission of the learned Counsel that there was no need of committing
any fraud or making any misstatement as he was the prior adopter and user of mark and the applicant was not in the field at that time. The learned
Counsel for the opposite side has not disputed the respondent's claim of prior adopter and user. We can, therefore, unhesitatingly say that the applicant
has miserably failed to discharge the applicant's onus and as such we reject the application under Clause (a) of Section 32 of the Act.
13. An applicant who seeks relief under Clause (b) or Clause (c) of Section 32 of the Act, the onus of proof is on him to show that the trade mark
attracts either of those provisions. In support of this proposition, we may quote the observations of Justice B. Mukherjee made in Formica case (1971)
75 CWN 663: ""Mark on the register you want to take off the Register? The onus is then upon you to prove that the mark deserves to be taken of so.
This is plain common sense too. I am on the register. Sure enough, it is not for me to prove that I should be where I am and that the entry in my
favour is valid. Were I to prove so, why register? Registration becomes valueless."" The applicant, as mentioned earlier, has not stated anything about
this in his pleadings. Further, the burden of proof is on the applicant who comes to the Board for rectification of the mark on the ground that the trade
mark was not distinctive of the goods of the registered proprietor on the date of filing of the petition. A trade mark must be removed from the register
on an objection under Section 11 if on the date of registration the use of mark was likely to cause deception or confusion or registration was otherwise
obtained in contravention of that section. In this case the applicant has not chosen to file any documentary evidence in support of his averment
regarding contravention of provisions of Section 11 or offends against the provisions of that section, or the trade mark was not, at the time of
commencement of proceedings, distinctive of the goods of the respondent No. 1. It is needless to hold that the applicant has miserably failed to
discharge the onus and accordingly, we reject the application on these counts also.
14. Since Section 32 of the Act is subject to the provisions of Sections 35 and 46 and the application is, amongst others, under Section 46 of the Act,
now we will come to the applicant's objection under that section on the grounds that the trade mark was registered without any bona fide intention on
the part of respondent No. 1 to use in relation to those goods by him. In order to bring this objection within the ambit of Section 46(1)(a) of the Act it
must be shown that the trade mark was registered without any bona fide intention on the part of applicant for registration to use it by himself. Want of
intention to use may be inferred from non-use. The applicant has simply stated in para (vi) of the grounds of application: ""That the respondent got the
said trade mark registered without any bonafide intention on his part that it should be used in relation to those goods by him."" The respondent No. 1 in
his reply has stated as: ""(vi) The contents of paragraph (vi) of the grounds are wrong and denied for the reasons stated herein above. The respondent
has continuously, openly and extensively used its registered mark since the year 1973 and this fact is well within the knowledge of the petitioner. The
petitioner has merely reproduced the statutory provisions from the Act without furnishing any material particulars in support of his averments."" This
reply of the respondent No. 1 has not been rebutted during the hearing of the application. Besides this, non-use of mark has not been averred meaning
thereby that the mark has been in use even at the time of making application on hand. It is needless to say that the applicant has not substantiated his
averment or produced any evidence to prove the same. In these circumstances, we see no reason to disbelieve the reply of the respondent No. 1.
15. Now, we will come to Section 56 of the Act which provides for power to cancel or vary registration and to rectify the register. The applicant has
averred in paras (viii) to (x) of the grounds of application that the entry pertaining to registration of the impugned mark has been made in the register
without sufficient cause, impugned trade mark in the name of respondent is wrongly remaining on the register and the registration of trade mark No.
297415 in favour of respondent is in contravention of the provisions of Sections 9, 11(a) & (e), 12(1) and 18 of the Act. The respondent denying all the
averments has replied that the registration has rightly been made; the entry relating thereto is rightly remaining on the register and the registration of
the trade mark in the name of the respondent No. 1 has been made in terms of the provisions of the Act and no provisions of the Trade Mark Act
have been contravened. He drew our attention to the suit filed by the respondent and to interim orders granted against the applicant. The respondent is
prior adopter, prior user of the mark and got the registration as of 1974 whereas the applicant is subsequent adopter and user of the mark. In fact the
applicant has dishonestly adopted the mark in respect of chewing tobacco its process, manufacture and sale and the mark adopted by the applicant is
identical and deceptively similar to respondent No. 1's mark. There was no question of registration against the provisions of all or either Section 9 or
Section 11(a) & (e) or Section 12(1) or Section 18 of the Act. It is material to remember that this being a rectification application the onus is upon the
applicant. The Apex Court has in National Bell Co. and Anr. v. Metal Goods Mfg. Co. (P) Ltd. and Anr. PTC (Suppl) (1) 586 (SC h)as held: 'Section
56 deals with the power to cancel or vary registration and to rectify the register. Sub-section (2) thereof confers a right to any person ""aggrieved"" by
any.... The words ""without sufficient cause"" in the section have clearly relation to the time of original registration. Therefore, a person can apply for
cancellation on the ground that the trade mark in question was not at the date of the commencement of the proceedings distinctive in the sense of
Section 9(3). The burden of proof, however, in such a case as aforesaid, on the applicant applying under Section 56.... The question is whether the
trade mark ""50"" or ""fifty"" is which would otherwise be disentitled to protection in a court as laid down in Clause (e) of Section 11 so as to attract
Clause (b) of Section 32. While construing Clause (e) of Section 11, it is necessary to repeat that it deals with prohibition and not with requisites of
registration. Therefore, although a mark can not be registered for instance, because it is not distinctive as provided by Section 9, such a mark is not for
that reason only one the registration of which is prohibited by Section 11. The section lays down positive objective to registration and not to mere lack
of qualification. This is clear from Clause (e) of Section 11, which uses the expression ""disentitled to protection"" and not the expression ""not entitled to
protection"". The former contemplates some illegal or other disentitlement inherent in the mark itself.' By applying these principles and after considering
the pleadings, we are of the opinion that the application fails to satisfy these principles, and fails to substantiate the averments therefore the grounds of
application do not sustain.
16. Lastly, we do not find necessary to consider the contention of counsel for the applicant that the order of Registrar permitting
transmission/assignment of respondent No. 1's trade mark is wrong and illegal and the contention of limitation raised by the counsel for the respondent
No. 1, as the they do not form part of the pleadings of the applicant and respondent No. 1, respectively and as such the contentions ought not to be
entertained.
17. We conclude that the applicant has miserably failed to establish his case and accordingly, the application TRA/150/2004/TM/DEL is dismissed. By
applying the conclusion arrived at in TRA/150/2004/TM/DEL, the application Nos. TRA/151-154/2004/TM/DEL are also dismissed.
18. There shall be no order as to costs.
