Agsar Match Industries vs Geege Paints And Registrar Of Trade Marks

S. Usha, J

1 . The original rectification application has been filed for expunging/cancelling the trade mark "STAG BRAND" under No. 721189 in class 2 in respect of paints and varnishes under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

2 . The applicants are engaged in the business of manufacturing and sale of Red Oxide and paints and varnishes etc. In the year 1985, the applicants adopted the trade mark SUPER STAG BRAND and had been using the same extensively and continuously without any interruption. The applicants have spent huge amounts towards its promotion by advertisements. On account of long and continuous use, the applicant's trade mark has acquired a valid and enviable reputation among the public. The consumers and traders associate the goods bearing the trade mark STAG BRAND only with the applicants and none else.

3 . The applicants have obtained registration of the trade marks STAG and SUPER STAG in class 2 under Nos. 704926 and 704924 respectively.

They have an exclusive right to use the trade mark as registered proprietors. Their trade mark is well known in India and the use by any other person would definitely cause confusion among the public. An average unwary purchaser is likely to think that the goods of the Respondent No. 1 bearing the trade mark STAG emanate from that of the applicant's.

The Respondent No. 1 being aware of the applicants use of the trade mark STAG had applied for the impugned trade mark registration on 12.11.1996 claiming user since 01.10.1994 in class 2 in respect of paints and varnishes. The registration has been obtained dishonestly, in bad faith and malafidely. The Respondent No. 1 knowing that the applicants are using the trade mark STAG brand for red oxide have adopted a similar mark for paints and varnishes falling in the same class.

The impugned registration is in blatant violation and utter disrespect and disregard to the principles of law, equity and good conscience. The trade mark has been wrongly registered and remaining on the register without sufficient cause. The Respondent No. 1 had no bonafide intention to use the trade mark for a period of three months prior to the date of filing of the application for rectification. The registration is in contravention of the provisions of Sections 9, 11 and 18 of the Act.

6 . The Respondent No. 1 filed their counter-statement stating that they are the registered proprietors of the trade mark "STAG BRAND". The registration is valid and subsisting and is entitled to be protected under Section 31 of the Act. By virtue of Section 55 of the Act, the Respondent No. 1 has proved use of the impugned trade mark by use of the registered associated trade mark. The applicant is aware of the Respondent No. 1's use since the year 1995 and therefore has acquiesced the use of the trade mark as registered proprietors and is therefore estopped under Section 33 of the Act from seeking an order to declare the registration as invalid.

The Respondent No. 1 is entitled to the benefit of honest and concurrent user on special circumstances as per Section 12 of the Act. The Respondent No. 1 was started in the year 1995 by NG. Grigadurai Nadar which belonged to ARPN Ganesa Nadar group. They adopted the trade mark STAG label and device of Stag in the year 1994 in respect of red oxide. The applicants have admitted before the Central Excise Authorities that the Respondent No. 1's use since 1995. In the year 2000 the applicants issued a letter dated 20.07.2000 which was replied by the Respondent No. 1 refusing to comply with the demands. In the suit filed by the applicant against the Respondent No. 1 before the District Judge, Tuticorin, it is admitted that the Respondent No. 1's use by the applicant. Agsar Paints Pvt. Limited had no right to assign the trade mark to the applicant. In the suit the applicant has admitted that it has no exclusive right over the trade mark STAG.

The sale consideration of the trade mark by Agsar Paints as per Board Resolution dated 15.06.1996 for Rs. 20,000/-is contrary to the proceedings of the Board of Directors of Agsar Paints on 28.06.1996 and is concocted and fabricated. The Respondent further denied the averments made in the application for rectification. The Respondent also denied the applicants use since the year 1985. It is further submitted that the mark STAG was generic in nature and used by many parties for many products or services and hence cannot claim monopoly or exclusive right over the trade marks.

9 . On completion of the pleadings the matter was set down for hearing on 27.06.2011 where learned Counsel Shri S.V. Radhakrishnan appeared for the applicant and learned Counsel Shri A.A. Mohan appeared for the Respondent No. 1.

1 0 . The learned Counsel Shri S.V. Radhakrishnan appearing on behalf of the applicant submitted that by way of the assignment deed dated 15.06.1996 the rights of the trade mark was assigned to the applicant herein. The assignment was with the goodwill and the trade mark was assigned to the applicant. The applicants have applied for and obtained registration as of the year 1996. The counsel also pointed out that the Respondents averments in the counter-statement is that they started the business in the year 1995 and to claim user from the year 1994 is totally a false statement.

The counsel then submitted that the suit filed before the Principal District Judge, Thoothukudi in TM OS No. 62 of 2004 was partly allowed against the Respondent No. 1 on 22.02.2011. The counsel, therefore, prayed that the impugned trade mark ought to be expunged from the register as it was wrongfully remaining on the register without sufficient cause.

The learned Counsel Shri A.A. Mohan appearing on behalf of the Respondent No. 1 submitted that the applicant had no locus standi to file this application for rectification. The counsel also pointed out that in the affidavit filed by the applicant, it is stated that Mr. Alagappan Ramadas is the partner whereas in the statement of case, it is stated that it is a proprietorship concern, in which case, it is not clear as to the constitution of the firm.

The counsel thereafter submitted that the deed of assignment relied on by the applicant is not a valid document as the assignment is without goodwill. The assignment is of the year 1996 and the old Act i.e. 1958 Act is applicable. As per the Trade and Merchandise Marks Act, 1958, an assignment of the unregistered trade mark can be made only with the goodwill and not otherwise. The minutes of the proceedings dated 28.06.1996 were not passed with the consent of the parties. The applicant, Mr. Paramaguru Nellaiappan had admitted before the Excise authorities of the use of the trade mark by the Respondent No. 1 as 1995 in the year 1999 itself and therefore acquiesced the first Respondent's use of the trade mark and now cannot take any action for removal.

1 3 . The counsel then submitted that the deed of assignment is fabricated and therefore the use of the mark since 1985 cannot be considered as the deed is not a valid document. The word ""STAG' is generic and the applicants cannot claim monopoly over the trade mark "STAG". The counsel then referred to the computer generated search report at page 69 of the typed set of paper filed by the Respondent No. 1 and stated that there were several persons using the trade mark. The rival marks herein were word mark and label mark and so no possibility of confusion or deception and was therefore not hit by the provisions of Section 11 of the Act. The impugned trade mark was associated with one another mark and therefore protected under Section 55 of the Act.

(2008) 4 Mh LJ 942 (SC) Khoday Distilleries Limited (Now known as Khoday India Limited) v. Scotch Whisky Association and Ors. was relied on to say that the reason for delay and what injury was caused to the Respondent by such delay ought to be explained which the applicants herein failed and therefore the application is not maintainable.

We have heard and carefully considered the arguments of both the counsel.

The issue as to whether the applicant is a person aggrieved to file and maintain an application for rectification is to be decided at the first instance.

The applicants have filed a Civil Suit against the Respondent No. 1 before the District Court, Tuticorin. There cannot be any denial by the Respondent

No. 1 as the suit has been partially allowed by the District Judge after contest. Being aggrieved by the use of the mark by the Respondent No. 1, the suit has been initiated. A person who is a Plaintiff or a Defendant in a suit is a person said to be an aggrieved person. Therefore we have no doubt in deciding the applicant to be a person aggrieved who has the locus standi to file and maintain the application for rectification.

17 . The first Respondent's contention that the assignment deed is fabricated and there is no transfer of the goodwill is an issue which is to be decided by the other forum. That apart, the Respondent No. 1 not being a party to that assignment has no right to challenge the deed, in our considered opinion.

On perusal of the records, it is seen that the Respondent No. 1 has given up all rights in the Agsar Paints Private Limited as on 30.03.1996 whereas an application for registration of the impugned trade mark has been made on 12.11.1996 which is a subsequent date, claiming user since the year 1994. As contended by the applicant, it is seen that the Respondent No. 1 has averred in the counter-statement that they were established in the year 1995 and to say they adopted and used the trade mark since 1994, only raises a doubt as to the intention of the Respondent's use. Even if it is to be taken that the date of user is from the year 1994, the first invoice produced by the Respondent No. 1 is only of the year 1998. It is seen from the document at page 78 of the typed set of papers filed by the Respondent No. 1 (which was relied on by the Respondent No. 1 to say that this applicants have admitted the first Respondent's user since 1995) the applicants assignor M/s Agsar Paints (P) Limited originally owned the trade mark since 1985 and subsequently the present applicants have started using after the deed of assignment. The other statements made by the applicant before the excise authorities were not denied or rebutted by the Respondent No. 1 except for the user date as of the year 1995.

The other argument of the Respondent was that there has been a long delay in the applicant's action for rectification. On perusal of the trade mark registration certificate has been issued in the month of March 2007 and the application for rectification has been filed in the month of June 2008 within a period of one year and three months and so there cannot be said to be a delay. The applicants were aware of the use of the trade mark as such and had initiated necessary action. Even if three years period is to be taken to be period for reckoning the limitation period, it is well within time. In the case (Khoday's case supra) relied on by the Respondent No. 1, it is not clear as to when the trade mark was registered. It states that the company was started in the year 1968 and an application was filed for registration. It also further states that that the mark was advertised in the Trade Marks Journal. The Respondent came to know of the same on or about 20.09.1974 and the application for rectification was filed on 21.04.1986. Here it is not clear as to when the certificate of registration was granted. Even if it is taken that the certificate was issued on 20. 09.1974 then there has been a long delay, whereas in the case on hand there has not been a delay in our view.

In view of the above findings, we are of the opinion that the impugned trade mark be removed/cancelled. The Registrar of Trade Marks is directed to remove the registered trade mark STAG under No. 721189 in class 2 from the Register of Trade Marks. The original rectification application is, therefore, allowed. No order as to costs.