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Judgment
K.N. Basha, J
1 . The applicants herein preferred the application Nos. ORA/273/2009/TM/DEL and ORA/274/2009/TM/DEL for removal of the impugned Trade Marks numbers 778166 in class 29 and 1237718 in class 42 from the register of Trade Marks, Office of the Trade Marks Registry, New Delhi.
2 . The applicants preferred these two applications on the sole ground of non use of the impugned trade marks and on the ground of lack of bona fide intention to use the said trade marks by the respondent in both the matters, as per provision under section 47(1)(a) and 47(1)(b) of the Trade Marks Acts, 1999. The name of the impugned trade marks are "ELBAIK (HAT DEVICE) and ELBAIK (LABEL) in class 29 and class 4 respectively. The categorical case of the applicants is that the respondents herein are not using the impugned trade mark continuously right from the dates of its registration in the year 2006 and 2007. As far as the applicants are concerned it is claimed by them that they were using the trade mark "AL-BAKE" right from the year 2001 in Calicut district of Kerala as a partnership firm. It is stated that they have honestly adopted the said mark "AL-BAKE". They have also obtained license from the Corporation for opening the restaurant in the year 2001. The said document is also produced before us. It is their case that they were using continuously and extensively the mark "AL-BAKE" in respect of the restaurant till the year 2007. They have also produced the commercial tax receipts and bills, telephone bills, advertisement copies, EPF registration certificates etc. They have gained reputation and goodwill. The applicants have also applied for the registration of the trade mark in TM application No. 1087911 and the same is opposed by the respondents herein and pending as on date.
The applicants have also stated about the Civil Suit filed by the respondents herein in OS No. 5 of 2007 in the District Court, Kozhikode and passing of the decree and judgment in the suit against the applicants herein restraining them to use their Trade Mark "AL-BAKE". The said judgment and decree was already challenged by the applicants and the appeal is pending before the High Court of Kerala. It is stated that they have not obtained any interim relief in the said appeal in RFA No. 263 of 2011.
The applicants stated that they are the aggrieved persons as they have been restrained by the judgment and decree of the Civil Court from using the trade mark in running the restaurant and they have been constrained to prefer these two applications for the removal of the impugned trade marks from its register.
4 . The respondents in both the matters filed separate counters in these two applications. It is to be stated that the contents of both the counters are one and the same. In respect of their pleas, they mainly placed reliance on the judgment and decree passed by the Civil Court in suit No. 05/2007 by the District Court, Kozhikode and it is stated that the applicants though filed appeal, they have not obtained any interim relief and the applicants have been restrained by the decree of permanent injunction to use of trade mark "AL-BAKE". It is stated by the respondents that the applicants were running a restaurant under the name and style as "AL-BAKE" for a short period until 2007 and they have been restrained from using the trade mark by a decree of permanent injunction by the Civil Court on the ground of deceptive similarity of the trade mark as that of the respondent. It is claimed by the respondents that the trade mark "ALBAIK" is used right from the year 1975 in the Middle East particularly in Mecca and Medina. It is further stated that the impugned trade mark was in actual use prior to the registration and after the registration though there is no physical outlets for their product in India, substantial section of the people in India are aware of the name and fame of the products of the respondents. It is also stated by the respondents that they have bona fide intentions of using the impugned trade mark in India and they were taking steps to prevent the infringement of the trade mark by issuing warning letters and publishing notices in the newspapers and filing suits against the infringers. It is claimed by the respondents that the written form of "ALBAIK", "ELBAIK" or "AL BAKE" in Arabic language are one and the same. The respondent produced documents namely copy of the judgment and decree in OS No. 5 of 2007, judgment and decree in OS No. 9 of 2008 and OS No. 48 of 2009, pictures of respondent's restaurant at Mecca, Medina and Jeddah, copies of notices, copies of foreign trade mark registration certificates and page from Wikipedia. The respondents also filed some additional documents namely the applications filed before the Civil Forum, memorandum of understanding entered between the parties and the judgment and decree in OS No. 9/2008 between the respondent and other parties.
On the basis of the above said pleas in the applications and the counter, we heard Mr. B. Ramachandran, learned counsel for the applicants and Mr. John Mathew, learned counsel for the respondents.
Mr. B. Ramachandran, learned counsel for the applicants in both the matters would vehemently contend that the impugned trade mark in both the applications are liable to be cancelled on the sole ground of non use as per provision under section 47 of the Trade Marks Act, 1999. It is contended that the respondents themselves have categorically admitted in their counter that they are not using the impugned trade marks as on date but they are having only intention to use the same and even in respect of the said intention they have not produced any materials to substantiate their claims. The respondents placed strong reliance only on the trade mark "AL-BAKE" in Middle East countries and not in respect of "ELBAIK", the impugned trade mark herein. It is also submitted that the respondents have not produced any substantial documents about the so called well known mark "ELBAIK". It is contended that even in the Civil suit the respondents have not produced any materials to establish that they were using the impugned Trade Mark and the Civil Court judgment is mainly based on the ground of deceptive similarity and the said judgment is under challenge by preferring an appeal by the applicants herein. It is contended that the respondents are admittedly not using the impugned trade mark and the question of deceptive similarity does not at all arise and as such the applicants rightly preferred the appeal. Therefore, it is submitted that the applicants have established the ground of non use and accordingly the impugned trade marks are liable to be cancelled and removed from the register.
7 . Per contra Mr. John Mathew, learned counsel for the respondents would contend that the applications are pre-mature for raising the ground of non use as on the date of filing the ORAs in the year 2009 period of 5 years is not completed and as such the applicants cannot place reliance on the provisions under section 47(1)(a) and 47(1)(b) of the Trade Marks Act, 1999. The learned counsel would contend that even in the application for registration of the impugned trade mark it is stated by the respondents that they are proposing to use the impugned trade mark and they have bona fide intention to use the said trade mark. It is contended that in order to establish the bona fide intention to use the impugned trade mark, the respondents have taken steps to prevent the infringement by issuing notices and filing civil suit and also succeeded in getting decree and judgment in their favour. Therefore, it is contended that by taking such steps the respondents have established their bona fide intention to use the impugned trade mark. The learned counsel would further contend that the respondents are having chain of restaurants in the Middle East particularly in Mecca, Medina and Jeddah and their marks namely "ALBAIK" has become a well known mark in the said countries. It is further contended that the applicants are not the aggrieved persons and as such they have no locus-standi to file the applications.
We have given our careful and thoughtful consideration to the rival contentions put forward by either side and also perused the entire materials available on record including the Civil Court judgment and decree relied on by the learned counsel for the respondents.
The undisputed fact remains that the respondents in both the matters are not at all using the impugned trade mark namely "ELBAIK (HAT DEVICE)" and "ELBAIK (LABE WORD MARK)". The respondents in both the matters have made feeble attempt to claim that they are having bona fide intention to use the impugned trade mark but unfortunately the respondents have not produced any substantial materials to establish their claim of having bona fide intention to use the impugned trade mark. It is pertinent to note that in the counter statement apart from making a categorical admission to the effect that they have no physical existence of the establishment of any restaurant or supply of any goods under the name and style as "ELBAIK", the impugned trade mark, they have made some bald and vague statements that they have taken steps to prevent the infringers by issuing notices and initiating civil proceedings. We are constrained to state that apart from such bald and vague statements and producing the Civil Court judgment and decree, they have not produced any substantial documents to establish their bona fide intention to use the impugned trademarks. The respondents also filed certain additional documents in the month of March, 2015 and even the said so called additional documents are only in relation to the affidavit filed before the Civil Forum, the evidence before the Civil Forum, judgment and order in the civil case and the memorandum of understanding entered by the respondent with other parties and we are of the considered view that none of the said documents shall establish the bona fide intention of the respondents to use the impugned trade mark.
The respondents placed strong reliance on the judgment and decree obtained in the civil suit in OS No. 5 of 2007 on the file of District Court, Kozhikode dated 03/12/2010 and a perusal of the same reveals that the Civil Court passed an order of permanent injunction restraining the applicants herein to use the impugned trade mark mainly on the ground of deceptive similarity. At this juncture it is to be stated that the applicants are using the trade mark namely "AL-BAKE" and not the impugned trade mark "ELBAIK" and apart from the said fact the question of deceptive similarity would arise only in the event of using the impugned trade mark and consequently resulting in confusion among the consumers. Therefore, we are of the firm view that the said judgment and decree is not at all helpful to advance the case of the respondents as they are not using the impugned trade marks. Added to the said fact it is relevant to state that the said judgment and decree has not reached its finality and the same is under challenge. In the appeal preferred in RFA No. 263/2011 the Division Bench of Kerala High Court passed an order dated 01/03/2012 that in the event of success of the application in the rectification proceedings, they can take the advantage of the same in the said appeal.
As far as the question of aggrieved person is concerned it is needless to state that both the applicants and the respondents are conducting the same line of business namely, sale of food products by running the restaurant. It is well settled that an aggrieved person is one who is in some way or other substantially interested in having the mark removed from the register. It is relevant to refer the following decisions:-
In Infosys Technologies Limited Vs. Jupiter Infosys Limited and another - (2011) 1 SCC 125 - the Hon'ble Apex Court held "To be an aggrieved person under Section 46, the person making the application must be one whose interest is affected in some possible way; it must not be a fanciful suggestion of grievance. A likelihood of some injury or damage to the applicant by such trade mark remaining on the register may meet the test of locus standi."
"Therefore, a trade mark is a powerful business tool, providing strong and exclusive rights to brands, so potential customers will come to recognize the image that symbolizes the products and/or services. Only registration of trade mark is not enough, continuous use of the mark is mandatory."
In M/s. Osaka Pharma Pvt. Ltd. Vs. Win-Medicare Limited - IPAB Order No. 247/2010 dated 16/12/2010 - it is held "In an application for revocation/rectification, the main issue to be considered is to see if the applicant for rectification is a person aggrieved to file and maintain an application. Aggrieved person is a person who really is affected by the wrong entry on the register of trade marks. The term aggrieved person has been defined by the Supreme Court in Hardie Trading Ltd. & Anr. Vs. Addison Paint & Chemicals Ltd. - 2003 (27) PTC 241 (SC). But if the ground for rectification is merely based on non-user i.e. under section 46 of the Act, that is not really on account of any public mischief by way of an incorrect entry. The non-user does not by itself render the entry incorrect but it gives a right to a person whose interest is affect to apply for its removal. An applicant must therefore show that "in some possible way he may be damaged or injured if the trade mark is allowed to stand; and by possible" it is meant possible in a practical sense, and not merely in a fantastic view......... All cases of this kind, where the original registration is not illegal or improper, ought to be considered as questions of common sense, to a certain extent, at any rate; and the applicants ought to show something approaching a sufficient or proper reason for applying to have the trade mark expunged. It certainly is not sufficient reason that they are at loggerheads with the respondents or desire in some way to injure them."
In view of the principles laid down in the decision cited supra it is squarely applicable to the issue involved in the matter we have no hesitation to hold that the applicants are the aggrieved persons and they are having locus-standi to file the two applications.
It is pertinent to note that the very same respondents have preferred the earlier ORA/89/2007 against another party for the rectification of the trade mark "ALBAIK" under No. 1029413 under section 47/57 of the Trade Marks Act, 1999 and this Bench of IPAB rejected the said application by the order dated 01/08/2008 holding that the respondent herein have not at all produced any documents of the sales figures or sales invoices either in India or abroad. This Bench also placed reliance on Hon'ble Supreme Court judgment in Corn products case that the mark remaining on the register will not prove its use and the said judgment is applicable and as such mere registration of the certificate will not help to claim user in India or abroad as a well known mark. It is also relevant to refer the decision of Hon'ble Apex Court in Milment Oftho Industries and Others vs. Allergan Inc. 2004 (28) PTC 585 (SC) -- and the Hon'ble Apex Court held.
"However, one note of caution must be expressed, Multinational Corporations, who have no intention of coming to India or introducing their products in India should not be allowed to throttle an Indian Company by not permitting it to sell a product in India, if the Indian Company has genuinely adopted the mark and developed the product and is first in the market. Thus, the ultimate test should be who is first in the market."
It is also relevant to refer the decision of the Division Bench of the Delhi High Court in Veerumal Praveen Kumar Vs. Needle Industries (India Limited) reported in 2001 PTC 889 (DELDB) -- wherein it was held "If there is non user for long period of time then mere registration will not entitled that person to obtain injunction."
14 . In a case of Hardie Trading Ltd. vs. Addisons Paint & Chemicals Ltd.-AIR 2003 SC 337- the Hon'ble Supreme Court laid down tha "the word 'use' may encompass actions other than actual sale of goods or services. The intention to abandon the trade mark has to be established by the party who approaches the court for removal of the mark from register."
In some other case of Corn Products Refining Co. vs. Shangrila Food Products Ltd. and Consolidated Foods Corporation vs. Brandon and Company Private Ltd. [AIR 1965 Bom. 35] - the Apex Court has observed that "the mere presence of a mark in the register does not by itself prove its use at all. Also, the court has categorized promotional activity in India as a precursor of the market reputation without having effected sales of the products in this country. These endorsements were given the status of validity for proving the knowledge of reputation to the other party and the dishonest intention thereof."
In a Hon'ble Delhi High Court judgment of Pfizer Products Inc. vs. Rajesh Chopra -2007 (35) PTC 59 Del -- the plaintiffs filed a suit for infringement and passing off action on the defendants. In the instant case the proprietary rights of a drug sold under the name of "Geodon" were challenged. The plaintiff registered the same in India on 18th July, 1996. The defendant, on the other hand, claimed proprietorship of 'Geodon' and use of the mark since 1st of June, 2003. One of the major contentions of the defendants was that the plaintiff have failed to show use of the trade mark since the registration and hence the mark is liable to be struck off from the register so as to leave a room for the defendant to market his product under the trade mark. The balance of convenience favoured the plaintiff as it is a global player, selling the drugs by this name in more than 40 countries.
Though, sale of those drugs in India could not be established, the importance of copying the trade mark of such a global product in the field of medicine was established. Hence the trademark was not removed from the register.
In Vishnudas Trading as Vishnudas Kishendas Vs. Vazir Sultan Tobacco Co. Limited -- 1997 4 SCC 201 - the Hon'ble Supreme Court laid down that "a trader or manufacturer who is trading in or manufacturing only one or some of the articles or goods under a trade mark and has no bona fide intention to trade in or manufacture the other articles or goods falling under that class but has obtained registration of its trade mark under that class which covers several other articles or goods, held, registration liable to be rectified by confining it to the specific articles or goods which are actually intended to be traded in or manufactured." In the instant case, the application was filed to limit the use of trade mark "Charminar" to the manufactured class of cigarettes. The registration was obtained in zarda and qiwam too, in which the applicant wished to use the trade mark. The court applied the provisions of non-use and ordered rectification in the register.
In another case decided on 6th January 2012, TRA/159 of 2004/TM/DEL - M/s. Pops Foods Products (P) Ltd. vs. M/s. Kellogg Co. - a trade mark of a company "Kellogg Company" possessing global recognition was directed to be removed by IPAB for non-use for 22 years.
The principles laid down in the decision cited supra are squarely applicable to the issue involved in the matter. Admittedly the respondents are not at all using the impugned trade mark and they claimed that they have the intention to use the same but they have not produced substantial materials to establish such claim and added to that they cannot claim that they are the first in the market here in India and we are of the view that they have not produced substantial documents to show that they need the impugned mark in abroad most particularly in Middle East countries namely Mecca, Medina and Jeddah and they have not produced any substantial material to show that the impugned trade mark "ELBAIK is a well known mark much less, they have produced any material even to establish the trans-border reputation in India.
We are also unable to countenance the contention of the learned counsel for the respondents that the applications filed herein are pre-mature one as the period of 5 years is not completed at the time of preferring the applications in the year 2009 for the simple reason that the applicants very well invoked the ground of non use, even as per the provisions under section 47(1)(a) and 47(1)(b) of Trade Marks Act, 1999, we are of the considered view that it cannot be thrown out on the ground of filing pre-mature application as it is categorically admitted by the respondents themselves in their counter that they were not physically in existence in India by using the impugned trade mark. We are of the firm view that the applicants are entitled to invoke section 47(1)(a) of the Trade Marks Act 1999, at the time of preferring the applications and they are entitled to place reliance on 47(1)(b) of the Trade Marks Act, 1999 as the period of five years lapsed as on date and the respondents miserably failed to establish even their bona fide intention to use the impugned trade mark. It is also relevant to note that at the time of filing the said applications it was stated by them that they had proposed to use the impugned trade mark. It is seen that when one certificate of registration was issued on 03/01/2006 and another one was issued on 31/03/2007, even after the lapse of so many years the respondents neither established their use nor established their bona fide intention to use the impugned trade mark.
In view of the aforesaid reasons we are constrained to allow the application Nos.