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Judgment
S. Usha, Technical Member
1 . The above application is for rectification of the Trade Mark under No. 345295 in class 9 in respect of switches (Electrical) including switchgears
registered under the Trade and Merchandise Marks Act 1958 (hereinafter referred to as the Act).
The applicant is carrying on business of manufacturing and marketing a variety of electrical goods. The applicant company was founded in the year
1919 and since then had been exclusively using the trade mark ""MK"" in different forms and the company was incorporated under the name M.K.
Electric Ltd. on 17/04/1923. The trade mark was applied for registration under the name M.K. Electric Ltd. and subsequently changed to Caradon
M.K. Electric Ltd. and the same has been applied for is pending before the Trade Marks Registry.
3 . The trading style and the trade mark ""M.K"" were carried on by the applicants since 1919. The initials M.K. represents ""Multy-Kontact"" which
signifies ""many points of contact''. The applicants have been using the trade mark M.K. extensively throughout India and in other parts of the world
for the past several years. The applicants are marketing through their Indian collaborator - M/s M.K. Electric (India) Ltd. during the past number of
decades and the application to register the said company as registered user of the trade mark M.K. is pending before the Trade Marks Registry. The
trade mark M.K. has acquired a world wide reputation on account of high standard of quality maintained by the applicant. M.K. India has been
regularly conducting marketing events such as M.K. Power Meets, M.K. Contacts, Exhibitions and M.K. Intros to enhance their perception in India.
The applicant's trade mark M.K. was registered in Great Britain under No. 466422 as of 25/01/1926 in respect of electric contacts for terminals,
electric fusible contacts, electric switches, electrical fuse boxes and switch and plug and socket boxes and as a series mark under No. 547310 dated
28.12.1933 in respect of contacts, terminal connectors, plugs, sockets, adaptors, fusible contacts, switches, switch plugs, fuse, boxes, switch and plug
and socket boxes, fuse boards and switch boards.
The applicant's trade mark M.K. was registered in India under No. 133946 in class 9 as of 27/05/1948 in respect of Electric contacts, terminals,
connectors, plugs, sockets, adaptors, fusible cutouts, switches, switch plugs, fuse boxes, switch and plug and socket boxes, fuse boards and switch
boards, lamp holders, terminal blocks, junction boxes. The mark was also registered in India under No. 211835 in class 9 as of 16/10/1962 in respect of
electric connections, electric switches, fuse boxes and junction boxes and parts and fittings for all these goods included in class 9. The applicant's other
2 trade marks namely M.K. India and M.K. under number 525201 and 521510, respectively, in class 9 have been accepted and advertised in the
Trade Marks Journal and the same have been opposed by the 1st respondent and the said opposition is pending before the Registrar of Trade Marks,
Calcutta under Nos. CAL-55253 and CAL- 55249 respectively on the basis of their registered trade mark No. 345295 - the mark under rectification in
the instant application.
6 . The applicants thus have become the person aggrieved and have filed this rectification application on the following grounds:
(a) The impugned trade mark is liable to be rectified as the trade marks and the goods are identical and deceptively similar to the applicant's registered
trade mark under Nos. 211835 and 133946.
(b) The 1st respondent's registered trade mark is in contravention to the provisions of Section 18 of the Act as they are not the proprietor of the trade
mark on the date of adoption as well as on the date of filing of application for registration.
(c) The mark is liable to be rectified as the adoption of the trade mark by the 1st respondent is dishonest and malafide as the 1st respondent has
adopted in order to trade upon the goodwill and reputation of the applicant's trade mark and to earn profit.
(d) The registration also offends under Section 12(1) of the Act. The trade mark is wrongly registered and is wrongly remaining on the Register,
which is contrary to the provisions of the Act. The registration has been obtained by giving incorrect statements as to the proprietorship of the mark
and also that the 1st respondent was aware of the applicant's registration.
(e) The registration was in contravention to the provision of Sections 11 and 32 of the Act. The 1st respondent is attempting to pass off their goods as
that of the applicant by malafidely adopting a similar/identical trade mark for the same goods and/or goods of the same description only to trade upon
the goodwill of the applicant.
(f) The registration has been obtained by defrauding the Registrar of Trade Marks by the use of the trade mark by the 1st respondent, they have
attempted to dilute the distinctiveness of the applicant's trade mark and debase the reputation of the applicant. The use by the 1st respondent is likely
to cause confusion and deception which would in turn cause untold damage to the applicant.
(g) The impugned trade mark has been registered by making false statements and wrong averments.
(h) The impugned trade mark was not distinctive and had not become distinctive or acquired distinctiveness on the date of application for registration.
(i) The registration is in contravention of the provisions of Sections 9, 11, 12(1), 18(1) and 32 of the Act and is not entitled to protection in the court of
law.
(j) The 1st respondent had obtained registration of the impugned trade mark without any bonafide intention to use.
(k) The entry of the impugned registration affects the purity of the Register of Trade Marks.
(l) The registration of the impugned trade mark was made without any sufficient cause and was wrongly remaining on the Register.
7 . The applicant, therefore, prayed that the impugned trade mark No. 345295 be cancelled/expunged/removed from the Register of Trade Marks on
the above mentioned grounds.
8 . The 1st respondent filed their counter statement/reply to the application along with documents.
The 1st respondent is engaged in the business of manufacturing and marketing of various kinds of Electrical switches, switch-gears and such other
allied electrical goods since 1965. They had been using the trade mark M.K. continuously since the year 1965. They had adopted the trade mark from
the trading style ""Memory Electrical Company, Kapurthala"". The letter ""M"" is taken from the word Memory and the letter ""K"" is taken from
Kapurthala.
The trade mark has been associated in the minds of the public on account of extensive use of the mark since 1965. By continuous and long use,
the trade mark has acquired considerable goodwill and reputation. The 1st respondent is the first adopter and user of the trade mark M.K. and is also
the lawful proprietor. The 1st respondent has acquired proprietary rights to the trademark by such use. By this registration the 1st respondent has
acquired statutory rights.
1 1 . The impugned trade mark was originally registered in the name of the partnership firm and subsequently the business was converted to a
proprietorship concern and the necessary changes have been brought on record before the Trade Marks Registry. During the past several years, the
1st respondent had been extensively selling/exporting the goods bearing the impugned trade mark.
The 1st respondent has been promoting its sales by way of advertisements in newspapers, magazines, etc. for which it has spent considerable
amount towards expenses. The 1st respondent is the ""approved sellers"" of switch boxes, etc. and is registered by the ""Delhi Electric Supply
Undertaking"", Electrical Circle P.W.D. Patiala"" and various other organizations.
1 3 . The applicant has failed to prove their case and is, therefore, liable to be dismissed for the following reasons:
(i) The application for rectification is not maintainable either in fact or law. The applicant is not the person aggrieved and has no locus standi to file this
application. This application is only a counter blast to the oppositions filed by the 1st respondent in CAL-55249 and CAL-55253. The application is
liable to be dismissed on the ground of delay alone. The mark ought not to be removed as it has been granted by the Registrar after satisfying himself
about the registrability.
(ii) The applicant's registered trade mark is not relevant to the instant case. Mere registration will not prove actual use of the mark. The goods bearing
the trade mark M.K. of the applicant was not available in the market when the 1st respondent had filed the application for registration. The
registration obtained by the applicant both in India as well as abroad are subsequent to the 1st respondent's registration.
(iii) The applicants were importing goods during the year 1947 to 1950.
Liberalisation policy was adopted in the year 1988. The 1st respondent adopted the trade mark M.K. in 1965 during which period the applicant's goods
were not in the market.
(iv) The 1st respondent's trade mark has become valid under Section 32 of the Act. The 1st respondent is the bonafide and prior adopter and user of
the trade mark since 1965. The 1st respondent further denied the various grounds of rectification as not valid and prayed that the application for
rectification be dismissed in the interest of justice with costs.
Instant rectification application was filed before the Hon'ble High Court of Delhi in C.O. No. 5 of 2001 and was transferred to this Appellate
Board in pursuance of Section 100 of the Trade Marks Act, 1999 and renumbered as TRA/112/04/TM/DEL.
We have heard Shri N. Mahabir, on behalf of the applicant and Shri D.K. Sabak on behalf of 1st respondent No. 1 during the Circuit Bench sitting
at New Delhi on 22.01.2009.
The learned Counsel for the applicant brought to our notice Trade Mark Journal where the impugned trade mark was advertised and submitted
that the application was made in the year 1979 claiming user since 1965 which is subsequent to that of the applicant. He also pointed out that both the
applicant's as well as the 1st respondent's goods were identical/similar. The applicant further stated that it had been using the trade mark in Great
Britain since 1919 and also brought to our notice that the same had been pleaded in its application for rectification at para 5. He further submitted that
it had pleaded in its application that the applicant had an Indian collaborator and was marketing its goods bearing the impugned trade mark M.K. in
India for a number of decades. The applicant had also registered its trade mark in Great Britain and in India as early as 1948 itself. The counsel
brought to our notice the Certificate of Registration filed as Annexure A to the application.
The counsel for applicant further pointed out that the 1st respondent has been exporting its goods bearing the trade mark which was admitted in its
counter statement. He submitted that it had no sale in India. The applicant also submitted that the 1st respondent itself has admitted in its counter
statement that the applicant's goods were available in India during the year 1947 to 1950 which only mgoes to prove that the 1st respondent was
aware of the applicant's use of the mark and therefore, the 1st respondent's adoption was dishonest.
The learned Counsel further submitted that the applicant had adopted the trade mark as early as 1919 and thus is the prior adopter and user of the
trade mark and as such its rights were to be protected.
The applicant relied on these judgments in support of its claim. (1) 2006 (32) PTC 133 Austin Nichols & Co. and Anr. v. Arvind Behl and Anr.
(2)2008 (37) PTC Sushil Jindal Trading as Sushil Electricals v. Jindal Electricals and Anr. and( 3) 2004 (28) PTC 585 Milment Oftho Industries and
Ors. v. Allergan Inc.
The learned Counsel for the 1st respondent contended that the applicant though stated to have been using the trade mark since 1919 in Great
Britain and since 1928 in India have not filed any document to prove the same. The 1st respondent had filed the application for registration under
rectification only after a market survey, by which no goods bearing such trade mark was available in the market. The counsel further submitted the
registration relied on by the applicants were in respect of various other goods. The documents were only from the year 1989 and not prior to that. The
counsel, therefore, prayed that the application for rectification be dismissed.
2 1 . The learned Counsel for the applicant in reply to the counsel for the 1st respondent's arguments submitted that though the 1st respondent's claim
to have been using since 1965 the first invoice is only of the year 1988 and no explanation as to why no documents filed for the periods from 1965 to
1988. The counsel also pointed out that as admitted by the 1st respondent in its counter statement the goods were not available in India only during the
period when there was trade restrictions imposed.
We have carefully considered the arguments of both the counsel and have gone through the documents and pleadings.
We shall deal with the issue as to the locus standi of the applicant to file this application for rectification. Any person may file an opposition to
registration of a trade mark, but a person aggrieved may alone file an application for rectification. The courts have given a very liberal interpretation to
the words ""Persons aggrieved"". Any trader who is in any way injured or restrained in his business or embarrassed by the registration of the mark will
be a person aggrieved. In Powell's Trade Marks (1984) 11 RPC4, Lord Herschel stated as follows: whenever it can be shown, as here, that the
applicant is in the same trade as the person who has registered the Trade Marks, and whenever the Trade Mark if remaining on the register, would, or
might limit the legal rights of the Applicant, so that by reason of the existence of the entry on the register he could not lawfully do that 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.
In the same case, Lord Watson stated as follows:
In my opinion, any trader is, in the sense of statute, ""aggrieved"" whenever the registration of a particular trade mark operates in of what would
otherwise have been his legal rights. Whatever benefit is gained by registration must entail a corresponding disadvantage upon a trader who might
possibly have had occasion to use the mark in the course of his business
An aggrieved person is one who has used the trade mark in question, before registration as well who has been threatened on action initiated
against, of such trade mark. The applicant has been using the trade mark for past several decades and had also obtained registration as of 1948 itself
which has not been denied by the 1st respondent. The applicant has not been using the mark in India for a certain period of time due to import
restriction, which has also been admitted by the 1st respondent.
The applicant is the aggrieved person as the 1st respondent has initiated opposition proceedings against the applicant in the other 2 applications. Being
aggrieved by the said opposition the applicants have initiated the instant application for rectification and has thus the locus standi to file and maintain
the application for rectification.
The other issue is that the mark is wrongly remaining on the Register. If the mark, subsequent to the date of registration, has become such that it is
likely to deceive or cause confusion due to some act of the registered proprietor, the mark is to be expunged from the register. Marks which are
calculated to deceive, marks to which the registered proprietor is not entitled, marks which are not registerable, marks which have obtained
registration by fraud on mis-statement of facts are subject to rectification. The admitted fact by the 1st respondent as seen from the pleadings is that it
was aware that the impugned mark was in the market since 1947 to 1950 and thereafter was not available due to trade restrictions. This clearly shows
the malafide intentions as to the adoption when the adoption is dishonest and the mark in the Register cannot be said to be valid and the mark is,
therefore, wrongly remaining on the Register, which is got to be removed.
The applicant has based its application on the grounds that the registration has been obtained in contravention to the provisions of Sections 9, 11,
12(1), 18 and 32 of the Act. The 1st respondent has submitted its defence stating that its mark is valid as per Section 32 of the Act.
The applicant though has raised the various issues under the provisions of the Act, has not argued is our opinion. We are of the view that the
marks being identical/deceptively similar, the possibility of confusion and deception is not only likely but certain as the applicant is prior adopters and
user of the mark. Hence the registration is in contravention of the provisions of Section 11 of the Act.
That apart, the 1st respondent's adoption is not honest. The 1st respondent has made no search in the Trade Mark registry before filing of this
application for registration of the impugned trade mark. The 1st respondent's own admission is that it made a market survey and not a trade mark
search. The 1st respondent has also admitted in its counter statement that the applicant's goods bearing the trade mark was available in the market for
the period from 1947-1950 and was not available till 1988 due to ban on import of electrical goods. The 1st respondents whereas has adopted the trade
mark only in the year 1965. If a search had been made the 1st respondent would have had the knowledge of the applicant's registration as of the year
1948 itself. To be more specific, the 1st respondent has further admitted that it was exporting its goods bearing the trade mark M.K. It is not the case
of the 1st respondent that it was not aware of the applicant's goods bearing the trade mark M.K.. In such circumstances the adoption of the impugned
trade mark by the 1st respondent is not bonafide and honest, as such the person making such adoption cannot be said to be proprietor of the trade
mark.
We, therefore, are of the view that as per the provisions of Section 32 of the Act, the mark has to be rectified as the registration has been obtained
by fraud and also that the mark has been registered in contravention of the provisions of Section 11 of the Act Though the 1st respondent has raised a
defence as to the validity of the registration under Section 32 of the Act, it was not substantiated the same. When the mark has been registered with
malafide intention, the adoption being dishonest the 1st respondent cannot be said to be the proprietor of the trade mark. If that be so, the registration
is in contravention of the provisions of Section 18 of the Act.
The other defence of the 1st respondent was that the applicant was not selling its goods bearing the trade mark during certain period. In this
context, it is worthwhile quoting the observation made by the Supreme Court reported in MANU/SC/0512/2004 Milment Oftho Industries and Ors. v.
Allergan Inc. ""In the present case, the marks are same. They are in respect of pharmaceutical products. The mere fact that the respondents have not
been using the mark in India would be irrelevant if they were first in the world market. The Division Bench had relied upon material which prima facie
shows that the respondents products was advertised before the appellants entered the field. On the basis of that material the Division Bench has
concluded that the respondents were first to adopt the mark. If that be so, then no fault can be found with the conclusion drawn by the Division
Bench.
Applying the law laid down by the Supreme Court to the fact of the present case, it is held that it is an admitted fact by the 1st respondent that the
applicant had adopted the mark and the mark was in use since 1947 and so they were first in the market. The applicant's right as a prior adopter and
user has got to be protected.
Having answered all the issue in favour of the applicant, we have no hesitation in allowing the application for rectification. We, therefore, direct
the Registrar of Trade Marks to remove the trade mark M.K. registered under No. 345295 in class 9 from the register. No order as to costs.