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Judgment
V. Ravi, Technical Member
1 . Application is for cancellation of the registered trade mark ROSHAN under No. 1324435 in Class 42. The case of the applicant is briefly given below:
In 1960, the applicant bonafidely adopted "ROSHAN" as a service mark / trade name in relation to the professional photography services being rendered by them. It was part of their trading style. M/s ROSHAN STUDIOS. The common predecessor of th three applicants in this rectification petition is late Sh. Roshan Lal Sood purportedly a renowned professional photographer. The proof of this is the applicants firm was registered with the Punjab Photographers Association way back in 1969. In 1970, to celebrate and commemorate the tenth anniversary of the establishment of M/s ROSHAN STUDIOS, several messages of good wishes were received from various important dignitaries including the then Vice President of India, the Minister of Information and Broadcasting, the Chief Minister of Himachal Pradesh etc. A booklet containing the photographs of late Roshan Lal Sood with Mahatma Gandhi, Pandit Jawaharlal Nehru is also furnished to prove the reputation of the applicant firm in Simla, A branch office of ROSHAN STUDIOS was later opened at Chandigarh by th younger son of late Roshan Lal Sood. Over the years the business of both the branches at Shimla and Chandigarh grew to great heights. In 1992, another sister concern of the applicant firm, M/s. Roshan Portraits was established at Panchkula. The applicant has won innumerable awards nationally and internationally. The applicants are a recognised expert professional firm for providing quality services related to photography over the last 45 years. They are therefore the proprietor of the trade name/service mark ROSHAN"", "ROSHAN STUDIOS" and ""ROSHAN PORTRAIT The applicant have even obtained the domain name www.roshan studios.com a few years ago.
2 . Some time back, it came to the knowledge of the applicant that the respondent herein had malafidely and unlawfully adopted an identical trade name "ROSHAN" in respect of identical services to earn illegal profits from the goodwill established by the applicant on their trade name "ROSHAN PORTRAITS". To complicate the matter, the respondent instituted a frivolous suit against one of the applicant herein before the Additional District Judge, Panchkula in December, 2004. The applicant filed counter claim. During the pendency of the proceeding the applicant came to know in February, 2008 that the respondent had malafidely secured the registration of the trade mark "ROSHAN" under No. 1324435 in Class 42 in respect of photography services like microfilming, photography and videotaping. Upon realizing this the applicant herein have moved the present application for removal/rectification of the impugned trade mark. The grounds for removal is based on malafide, bad faith and fraud and no bonafide intention to adopt and use the trade mark. In consequence the impugned registration of the respondent ought to be expunged from the register being an entry made without sufficient cause and wrongly remaining on the register. The impugned mark has been registered contrary to the provisions of Section 9(2)(a) of the Trade Marks Act, 1999 (in short Act'). The adoption and use of the trade mark is subsequent to the adoption and use of the same trade mark by the applicant. The impugned trade mark has also been registered in contravention of Section 11(3)(a) and Section 18(1) of the Act. The applicants assert that they are also entitled to protection under Section 11(10)(i) of the Act. The impugned mark is also violative of the provisions of Section 11(10)(ii) of the Act. In the circumstances, the applicant prays that the impugned mark be removed from the register of trade marks forthwith.
In their counter statement, the respondent say that they are the proprietor of the trade name/service mark "ROSHAN" and providing all types of services relating to microfilming, photography, videotaping, photographic processing, services like photoengraving, photographic enlargements, photographic film development, photographic printing, processing and also processing of cinematographic films at Panchkula. The respondent claim use of the impugned trade name/service mark "ROSHAN" in Panchkula since 1991. The said trade name/service mark have been registered under
No. 1324434 and 1324435 in Class 40 and 42 respectively. The registration is valid and subsisting. The trade name/service mark "ROSHAN" has acquired tremendous reputation. They further state that merely printing and filing the photographs of public figures is no proof of the use of the trade name/service mark "ROSHAN" as from the photographs it cannot be proved who clicked the photographs. There is no shop in the name "ROSHAN STUDIO" in Chandigarh. They also state tha the applicants never started any business by the name "ROSHAN PORTRAITS" a Panchkula. In fact the respondent was the one who adopted the trade mark ROSHAN PORTRAITS/ROSHAN since 1991 and has been doing business. They assert that ther is only one market in Sector 7 of Panchkula and the applicant who is also living in Sector 7 of Panchkula had clearly been aware of the respondent's use of the trade mark "ROSHAN" since 1991. In fact the applicant started the Panchkula studio only in November/December, 2004 and the respondent has filed a passing off action against the applicant. The applicant has been giving wrong information to the Hon'ble Board by providing misleading information. The respondents have denied that ROSHAN/STUDIO/PORTRAITS have been used by the applicant since 1960. Th respondents have obtained registration of their trade mark in accordance with law under the Act and have made no misrepresentation or concealed any facts. No case has been made out to remove the impugned trade mark. The present rectification petition is merely a counter blast to the respondents court proceedings and passing off suit against the applicant. The respondents submit that they have openly, extensively and continuously used the trade mark "ROSHAN" to the knowledge of the applicant since 1991. The impugned mark has been rightly registered and it is denied that the same was registered in contravention of Sections 11(3)(a), 18(1), 11(10)(i) and 11(10)(ii) of the Act. It is also denied that the applicant is a "person aggrieved". They further submit that the applicant has given contradictory statement in application No. 1326111 under opposition No.DEL-207044 which record may be called for scrutiny, sealed and produced at the time of hearing. In view of the foregoing ORA/8/2009/TM/DEL, against registered mark No. 1324435 in Class 42 may be dismissed.
The applicant has filed rejoinder to the counter statement filed by the respondent. They pointed out that the respondent has concealed material facts from the Board. The Suit filed by the respondent in Suit No. 1 of 2004 before the Additional District Judge, Panchkula for grant of a decree of permanent injunction restraining the applicant from using the trade mark "ROSHAN" for the services and goods in the field of photography and related services have been dismissed by the Hon'ble Additional District Judge, Panchkula after holding complete trial in the matter vide judgment and order dated 3rd September, 2008. The respondent have also not disclosed about the counter claim preferred by the applicant in seeking a decree restraining passing off action against the respondent which has been decreed in favour of the applicant. The respondent has preferred an appeal against the judgment in the Hon'ble High Court of Punjab and Haryana. The applicant also submit that they are the prior adopter and proprietor of the trade mark ROSHAN"". They further state that the respondent has suppressed registration of application No. 1324434 and 1324435 by concealing material facts before the Registrar of Trade Mark in respect of which they have filed cancellation petition. The applicant's trade mark has obtained tremendous popularity, reputation and goodwill over the last four decades. In view of the foregoing, the impugned trade mark should be removed from the register.
The matter was listed for hearing on 26.3.2012. We have heard the submissions of both the Counsel, perused the case laws and various authorities relied on by the respective Counsel, gone through the pleadings and documents.
6 . Before we dwell on the merits of the case it needs to be remembered that protection for service mark under the statute came into effect only w.e.f. 15th September, 2003 when the Act came in to force. Since registration relates to the date of filing the use of the mark by both applicant and respondent prior to 15th September, 2003 will not be protected by statute. This legal position should be kept in mind while dealing with matter.
We will now review the various case laws and authorities relied on in the course of argument by the respective counsels. Applicant for
Rectification
i) Dori Lall Gupta Vs Dharam Pal Prem Chand (P) Ltd and others - PTC (Suppl.(2) 488 (Cal) Calcutta - A.F.O.O No. 369 of 1975.
Hon'ble Justice Sabyasachi Mukherji had ruled that concurrent user must be honest, concurrent and commercial use and not stray use to justify protection under section 12(3). The competing mark were ' Lall Baba Keshari Zarda' and Baba Brand' for chewing tobacco. The explanation why appellant chose 'Lall Baba' was found not satisfactory. The appellant had nowhere in his affidavit stated he was unaware of opponents trade mark.
Deputy Registrar refused registration. His Lordship ruled no material for interference.
ii) M.P.Jewellers Vs New M.P. Jewellers (IPAB) 2005 (30) PTC 517(IPAB) There was sufficient evidence that the applicant had been using the trade name 'M.P.Jewellers' for considerable period attaining goodwill and reputation. When considering customers and goods dealt with by both parties, the mark of the respondent would cause confusion and deception. Cancellation of respondents registered mark ordered.
iii) M/s Kanshiram Surinder Kumar Vs M/s Thakurdas Deeomal Rohire & Others - AIR 1982 Bom 505 - CJ V.S. Deshpande &Justice D.M. Rege.
Two important points decided. Purity of register is in public interest and is a prime consideration as against acquiescence or delay unless injury caused to party is so substantive as to outweigh public interest - Held also, protection under Section 12(3) or 33 cannot be extended to identical marks falling under Section 11(a) (old Act)
iv) M/s R.T. Engineering & Electronics Co., Vs (M.P. 58 of 1970) VIMADALAL. J (AIR 1972 Bom 157 (V 59 (32) The Registrar has adequate powers under section 18(4) of the Act in proper cases, to refuse to accept application for registration without advertisement or calling for evidence or likelihood of confusion or deception. If this is not the case, scrutiny of every case under Section 11(a) would be sheer waste of public time and so the legislature has advisedly not made it obligatory on the Registrar to do so except when dealing with it in an opposition proceeding. This point was relied to show the registry should never have published the impugned mark in the TM Journal in the first place and refused it straightaway.
v) E. Griffths Ltd. Vs Vick Chemical Co., AIR 1959 Cal 654 CJ K.C. Dasgupta & Justice H,K, Bose - Held, inter-alia, in the case of all applications for registration of trade marks, including opposed applications, the rights of the party or parties are to be determined as at the date of application for registration.
vi) Mohan Goldwater Breweries (P) Lt., Vs Kohday Distilleries (P) Ltd., & another (Justice Ramanujam Madras HC) Appeal against Order No. 456 & 457 of 1974 Held _ Once an application for registration of a mark is made by a person who has proposed to use a mark devised by him, all person who happens to use that mark thereafter bonafide or not, will only be taking a risk and therefore, their user cannot stand in the way of the applicant's prosecuting his application for registration.
Authorities relied on by Respondent registered proprietor :
i) WP 8681 of 2011 - Rhizome Distelleries (P) Ltd. Union of India wherein the Hon'ble Madras HC had held ""In our considered opinion, the grounds embodied under Section 9 and 11 are available to the person only at the time when they raise objection for registering the trade mark. The said principles cannot be applied for rectification of the registration...
ii) In Kusha Inc. Vs Sachdeva & Sons Industries (P) Ltd.2009 (41) PTC 558 (CB) the Copyright Board dismissed the application with liberty to file fresh rectification petition on the ground of mistakes in affidavit supporting the plaints. This was based on the finding in the judgement of Copyright Board in Bengal Lamps Ltd Vs Prestige Lights Ltd.2008 (37) PTC 167 (CB) where the notary public had put in his signature and date under the signature of the petitioner who had left the date of signing of the petition blank.
iii) Attention was drawn to IPAB Order No. 13/2012 (Circuit Bench Sitting at Ahmedabad) to the delay issue where the applicant had taken five years to file the rectification application and allowed the respondent to grow in strength and on grounds of public policy, the Board did not entertain the application.
9 . On the issue of 'person aggrieved' since both the applicant and respondent own identical mark for identical good, a clear cut case is self evident to rule that the applicant has the locus to move a petition for cancellation of the impugned trade mark.
The first of the objection to the impugned trade mark is based on section 9(2)(a) of the Act. This section provides that a mark shall not be registered as a trade mark if it is of such nature as to deceive the public or cause confusion. In effect what the applicants are pleading is because of their trade name ROSHAN has been in use many years prior to the respondent, the impugned mark is liable to confusion or deceive the public. In our view section 9(2) (a) should not be read in isolation and attribute meaning not intended by the Act. Both the trade name and services being rendered are identical, therefore, it would appear that the triple identity test would apply. But the name 'Roshan' is a common name which has been adopted as a trade mark. They claim that they have built up goodwill in their business bearing their trade mark as evidence. The question is whether the adoption of the mark is honest, and whether the applicant has proved deception. The impugned mark is a registered mark. It has gone through the rigmarole of intense scrutiny at various stages before it was put on the register. The primary onus rests on the applicant to make out a case to expunge the impugned mark. The applicant here needs to show a few more thing namely i) That the Respondent adoption was mala fide. ii) The respondent had knowledge of the applicant's trade mark and (iii) the respondent wanted to encash and profit from the purported goodwill attached to the applicant's trademark. None of these has been established by the applicant.
The next objection is based on section 11(3) (a) of the Act. That section provides that a trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented by virtue of any law in particular the law of passing off protecting an unregistered trade Mark used in the course of trade. In an opposition based on section 11(3)(a), the onus is on the opponents to establish that they have goodwill in an indicium and there will be an operative misrepresentation and there will be consequential damage. It is well settled that the law of passing off forms part of the broader law of unfair trading or unfair competition. In assessing passing off the cogency of evidence of reputation and its extent is material. The evidence will include evidence from the trade as to reputation; evidence as to the manner in which the goods are traded or services supplied and so on. In assessing deception or confusion, the Board will attach great importance to the question whether the respondent herein can be shown to have acted with fraudulent intent, although it is not necessary part of the cause of action. With respect to the case on hand, the evidence of use provided by the applicant is not sufficiently detailed or complete to mount a realistic challenge on this ground. To invoke section 11(3)(a), the applicant must show:-
(a) That his business consists of or includes, selling in India a class of service to which the particular trade name ROSHAN STUDIO applies;
(b) That class of services is clearly defined and that in the minds of the public, or a section of the public, in India, the trade name ROSHAN STUDIO distinguishes that class from other similar services.
(c) That because of the reputation of the services, there is goodwill attached to the name.
(d) That he, the applicant, as a member of the class of those who sell the service is the owner of the goodwill in India which is of substantial value.
(e) That the applicant has suffered or is really likely to suffer, substantial damage to his property in the goodwill by reason of the respondent selling his service which are falsely described by the trade name to which the goodwill is attached.
We are afraid the applicant have not developed their claim in their evidence to succeed under Section 11(3) (a) of the Act. The affidavit of Amit Sood in support of application under Section 47 & 57 for rectification/ removal of the registered trade mark 1324435 in Class 42 is accompanied by many Exhibit inter-alia Certificate issued by HP Government; HP Official Photographer of Lt. Governor; credential as messages and good wishes from Vice-President; Chief Minister; several noted International organization; sample photographs taken with visiting dignitaries; unsolicited press coverage; copies of import of latest photographic equipments; copies of letter of appreciation received from eminent dignitaries etc. A copy of the order of Additional District Judge, Panchkula dated 03.0.2008 has been filed in which the Suit for injunction filed by the respondent was dismissed and the counter claim of the applicant was decreed restraining respondent from using the trade mark. This order has been appealed against. The Court, however, made it clear that if the marks are registered then the legal recourse available under the TM Act could be resorted to. Sample copies of Studio Register detailing the name of parties; number of photos, bill number and amount from 1971 onwards as Exhibit have also been furnished.
1 3 . The trade mark 'ROSHAN' for the services of the applicant was regarding business at Simla & Chandigarh. According to the applicant, their fame grew far and wide and they established goodwill and further according to them, they had established a branch in Panchkula in 1992. While there is evidence to show that they had a Studio in Simla, the case regarding setting Studio in Punchkula in 1992 is not established. On the other hand, the respondent has filed documents to show that he has been in existence from 1995 as seen from the import documents filed for a consignment of NORITSU 1001 COMPLETE ONE HOUR MINI LAB. He has also filed Tax Return for ROSHAN PORTRAITS from the assessment year 1996-
There ar documents to show purchase of photographic machines and invoices from 1998 onwards. There is also a letter of the year 2004 addressed to the respondent from KODAK Company. There is an affidavit of one Balakrishan Sharma who claims to know the respondent and partners and that they started the business photography in the year 1991 - first as ROSHAN PORTRAITS and then as ROSHAN STUDIO and present they have been running the business of photography at the cited address at Panchkula from 1992. According to this affidavit, no one else is using the said trade mark in the city of Panchkula for a long time. There is a partnership deed dated 11.03.1994 showing the approval of ROSHAN PORTRAITS. There is a certificate o registration under Punjab Shops & Commercial Establishment Act of the year 1992 showing the existence of the establishment ROSHAN PORTRAITS. So the user of th mark by the respondent is proved.
1 4 . 'ROSHAN' is an ordinary proper noun. It denotes Light. Perhaps, that is the reason both the applicant and respondent who are in the business of photography had chosen the name. The applicant has not produced any evidence to show that his fame spread beyond the cities at Simla and Chandigarh so as to make a case for dishonest adoption. The respondent have been carrying on business at least from 1995. It appears that it is the applicant who had recently moved to Panchkula. If so, there is no justification for removal of respondent's mark who has been in existence for over 15
years. The third party affidavit mentioned shows that they are well known in the area. The power to remove trade mark on rectification application is purely discretionary. In this case, we do not think the circumstances warrant the removal of the mark.
The applicant also asserts that the respondent is not the proprietor of the trade mark 'Roshan' within the meaning of Section 18(1). It has been alleged that the respondent has applied for the impugned mark in bad faith. This has to be distinctly alleged and distinctly proved. It is not permissible to leave fraud to be inferred from the facts [see - Davy V. Garret) (1878) 7 Ch D 473 at 489]. Bad faith has to be fully and properly pleaded and cannot be upheld unless it is distinctly proved and it is not possible to conclude this through a process of inference. Where bad faith is alleged it should be upfront and the primary argument or it should not be alleged at all. There is nothing extraordinary or special in a trade name as 'Roshan Studio' and the applicant runs the risk of similar trade name being bonafidely adopted by another entity completely innocuously. We cannot throw out from the register after so many years, a trade name only on the strength of unproven allegations and suspicion. Having adopted so common a trade name that the man next door will think of easily the applicant must live with the consequence. The allegation that the respondent cannot be proprietor of the impugned mark under 18(1) is therefore baseless and unfounded.
Finally, the applicant have sought statutory recognition as a well-known mark under Section 11(10)(i). None of the parameters to make a determination to that effect including extent and geographical area of use, record of successful enforcement, evidence of consumer survey, opinion poll etc. has been furnished. So such a recognition cannot be granted. There is nothing to show that the mere mention of the words 'ROSHAN STUDIO' will indicate a trade mark connection with the applicant or his services. In the result, ORA/08/2009/TM/DEL is dismissed for the foregoing reasons. The applicant are directed to pay a sum of Rs. 5000/- as costs to the respondent.