AI Structured Summary
Not yet generated for this judgment
Judgment
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.