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Judgment
Prabha Sridevan, J
1 . The application is for the removal of the mark AMBER No:584031 in Class 30. It was advertised in Trade marks Journal 1231 (Ex P-3). The
applicant is the proprietor of the mark AMBER of words per se and label as well. In 2000, the mark was adopted and the label (Ex. P-1). The
Copyright in the mark also belongs to her (Ex. P-5). From 1977 (word per se) and 2000 (label) the proprietor has been honestly using the mark in the
course of trade. The sales have been impressive (Ex.P-2), because of the quality and tremendous good will generated by the goods the mark
commands an enviable reputation. The mark has been widely advertised, and it has come to be associated with the proprietor alone. The applicant
applied for registration of the mark on 10-7-2001. Though the mark has been used since 1977, the applicant's predecessor in interest Shri Narrain Das
Tulsani thought that he should give the date of user of the label which was 2000. In 1975, he started Janta Sweet Bhandar. In 1977 Janta Sweet
Bhandar applied for registration of the mark. This firm continued business till 1982.
2 . In 1980 he started another firm Prakash Biscuits and sweets. He used the mark AMBER in the course of his trade. He made an application No
632904 in class 30 claiming user from 1985. The applicant's trademark applications are Ex.P-4 (colly). By the assignment deed dated 27-7-2001 he
assigned the mark to the applicant and TM-16 (Ex.P-6) has also been filed. The respondent has obtained registration of the impugned mark for
confectionary and non-medicated goods in class 30. A notice was given on 6-8-2002. There was a reply (Ex.P-7 colly) and the applicant could not find
any trace of user of the impugned mark. The mark must be removed.
The applicant also filed
(i) Exhibit-A -Notarized copy of the receipt dated 09.02.1979, issued by Registrar of Trade Marks, on account of filing of Trade Mark Application
AMBER by M/s Janta Sweet Bhandar.
(ii) Exhibit-B (Colly) - Notarized copy of the documents in support of user of said trade mark by M/s. Janta Sweets Bhandar
(iii) Exhibit-C(Colly) - Notarised copy of the documents in support of user of said trade mark by M/s. Parkash Biscuits and Sweet Company
(iv) Exhibit-D(Colly) - Notarised copy of the documents in support of user of said trade mark by M/s. D.M. Food Products
(v) Exhibit-E - Copy of the advertisement published by M/s Janta Sweet Bhandar in magazine YUGPAKSHA dated 19.12.1979
(vi) Exhibit-F -Copy of the No Objection Certificate issued by the Registrar of Trade Marks dated 11.03.2002 in relation to said copyright of the
petitioner.
(vii) Exhibit-G - Copy of the sales figure of the petitioner
The counter statement denied the averments made above. The main stand is that their trade name is AMBER FOOD PRODUCTS which has
been in existence since 1992 They have widely advertised their mark. They have an impressive sales statistics. The mark was registered in 2001.
They are the prior user and honest adopter.
The respondent has filed the following evidence:
(i) Counter Statement of Respondent
(ii) Annexure A - Copy of registration certificate of trade mark AMBER under No. 584031 in class 30.
(iii) Annexure B - Copy of extracts of the Register of copyright under No. A-78478/2007
(iv) Annexure C - Copy of extracts of the Register of copyright under No. A-78480/2007
(v) Annexure D - Copy of extracts of the Register of copyright under No. A-78481/2007
(vi) Annexure E - Copies of advertisements of trade mark AMBER
(vii) Copies of documents pertaining to Trade Mark AMBER in Governments departments
(viii) Annexure G - Copies of invoices of the Respondent
We have considered the materials before us and the submissions made. There was no appearance on behalf of the respondent and therefore we
have examined the evidence and the pleadings carefully keeping in mind the individual interests as well as the public interest.
The impugned mark was applied for in 1992 as a proposed to be used mark. The applicant has produced invoices as early as 1985, which show
sales of Amber sweets. On the other hand the respondent's invoices show sales of sweets alone, only in 2 invoices is the word AMBER found though
of course their name is AMBER FOOD PRODUCTS. This was pointed out by the learned Counsel for the applicant. But there is a caution notice by
the respondent warning the public regarding their name Amber. This is in 1998. The respondent's case is that they had adopted the mark in 1992.
Their trade name is AMBER FOOD PRODUCTS. The caution notice was published in Delhi newspaper. This was long before any dispute started.
This lends strength to the case of bonafide adoption on the part of the respondent. The devolution of interest in the trademark of the applicant is not
very clear, however they have produced some evidence of user, but we are not able to hold that the impugned mark must be removed. This is a case
where discretion must be exercised in favour of the respondent. They are operating in Gwalior, their trade name is AMBER FOOD PRODUCTS.
There was no reaction on the part of the applicant to the Caution Notice. The applicant's place of business is Bikaner, Rajasthan. The respondent has
been trading under the name ""AMBER FOOD PRODUCTS"" from 1993. The bill date 28.6.1997 shows the word ""Amber Brand"" and therefore
clientele was also fairly extensive. In fact in 1993 Roto Print carrying on business in Indore had despatched 10,000 bags described as ""AMBER
SWEETS"" and the payment was for ""Printing Labour only"". In 1996 Vaishnavi Offset Printers at Sivakasi had printed 15,000 copies of Amber Sweet
Labels. In 1995 the popular magazine Dainik Bhaskar had carried a news item regarding Amber Food Products. It is a kind of interview of Shri
Rajesh Dhingra. He has spoken of the wide reputation of Amber Food Products and that until this time they had been selling sweets in loose form but
now taking into consideration the change in times they had now totally mechanised packing etc. So even in 1995 the respondent's user was known.
These are special circumstances to warrant the continuance of the mark though both the marks are the same and the goods are of the same class.
The following cases were cited:
(i) AIR 1978 Del 250 -Century Traders, Appellant vs. Roshan Lal Duggar & Co. and others -In this case the Court held that ""a mere casual
intermittent or experimental use"" may be insufficient to protect the mark. But in this case the caution notice, the advertisements and the trade name
considered together can not be termed as casual use. It is definitely bonafide use.
(ii) AIR 1960 SC 142 - Corn Products Refining Co. vs. Shangrila Food Products Ltd. - In this case it was held that the public would be confused by
the marks Glucovita and Gluvita. In the present case we have given our reasons for exercising our discretion in favour of the respondent though the
marks are identical.
(iii) 2004 (28) PTC 347 (Del) -George V. Records, SARL, Plaintiff vs. Kiran Jogani. & Anr., Defendants -In this case the court held that the
defendant's adoption was not honest. We have given our reasons why we find the respondent's adoption to be bonafide.
(iv) (2) PTC Suppl 564 (Del) L.D. Malhotra Industries, Appellants vs. Ropi Industries, Respondents -In this case the Court held that the prior adopter
shall succeed, and the other though prior in registration had not proved honest user. In the same case the Court held ""... The discretion under Section
12(3) can only be exercised when two or more parties unknown to each other and unaware of the mark used by each other innocently adopt and use
the same trade mark in respect of their respective goods of the same nature....
This applies to the present case.
9 . There is no justification for removing the mark only on the ground that the applicant's user is from 1985. Of course they have stated in their
affidavit that they had wrongly claimed 2000 as the date of user but actually their use was from 1985. We are not deciding which is the correct date
of use. Even if 1985 is the applicant's commencement of user we are convinced that the respondent has not imitated the applicant's mark nor is there
any dishonesty of adoption. The fact that their trade name had always been ""AMBER FOOD PRODUCTS"" is a special circumstance.
For all the above reasons we are convinced that we must exercise our discretion in favour of the respondent. ORA/98/2007/TM/MUM is
dismissed. M.P. No. 232/2010 is allowed.