AI Structured Summary
Not yet generated for this judgment
Judgment
Z.S. Negi, J
These two applications are for the removal of the trademarks 'ULTRAFILTER' under Nos. 805999 and 803449, respectively, from the register or
rectification of the register under Section 57 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
It is stated in the applications that the applicant is a German Company of international repute, known world over for the high quality of its products
range which comprises of various kinds of filters, etc. It is further stated that Ultrafilter GmbH, the predecessor in title of the applicant (hereinafter
referred to as the predecessor), adopted 'ULTRAFILTER' as the trade mark and as part of its name; obtained registration of the said trade mark in
several countries and has built up a substantial name and reputation for its products. The trade mark has been widely used on the goods manufactured
by the applicant and the predecessor; the predecessor commenced supply of its products to several leading companies in India during 1981-82 and
adopted the direct marketing method and directly sold the goods to customers and owing to the high quality of the goods, the mark ULTRAFILTER
gained excellent reputation in India within a very short span. It is also stated that the predecessor merged into Ultrafilter AG which changed its name
to Donaldson Filtration Deutschland GmbH and by virtue of the said merger and name change the applicant is the proprietor of the trade mark as on
date.
Averment' is made that Mr. Krisnanand Kini approached the predecessor during 1985 seeking technical collaboration and know-how for a company
which was proposed to be setup in India for manufacture of filters. During the negotiations, Mr. Kini by writing a letter dated 1.10.1985 to the
Chairman and CEO of the predecessor acknowledged the presence of ULTRAFILTER in India. The negotiation culminated in the incorporation of
Ultrafilter (India) Pvt. Ltd. (the respondent herein) on 31.12.1985. The predecessor held 26% of the shares in the respondent with necessary approval
having been obtained from the Government of India for the foreign collaboration. After incorporation of the respondent, the Chairman of the
predecessor addressed a circular to all customers in India informing them that a technical collaboration agreement dated 17.2.1986 with substantial
equity participation had been approved by the Government of India and that the registered proprietor had been granted an exclusive tie-up of technical
know-how for the manufacture and distribution of its product in India and the Indian customers were also requested to continue their dealing with the
registered proprietor. The respondent immediately after its incorporation conducted a market survey and in the survey report signed by its director on
28.1.1986, the respondent acknowledged the fact that ULTRAFILTER goods were available in India for 4 years prior to its incorporation.
It is further averred that the arrangement between the parties warranted certain agreements with regard to the rights and liabilities of the parties
and accordingly a Shareholders Partnership Agreement was prepared annexing therewith, to form part thereof, three other agreements, namely,
Name Protection Agreement, Distributor Agreement and Trade Marks Registered User Agreement and the Shareholders Partnership Agreement
was executed on 16.10.1986. It was categorically provided that the name ULTRAFILTER could be used as part of the respondent's corporate name
and in connection with the products distributed by the respondent in terms of the Name Protection Agreement, the Distribution Agreement and the
Trade Marks Registered User Agreement. Another annexure to the said agreement was the text of amendments to be carried out to the respondent's
Articles of Association. Though the text of the aforesaid three agreements to the Shareholders Partnership Agreement were approved and agreed to
by all the parties and the parties initialed the same, the said agreements were not formally executed separately as the initialing by the parties was itself
sufficient to bind the parties. Further provision was made to the effect that after the termination of the said agreements, the predecessor can demand
deletion of the word ULTRAFILTER from the name of the respondent and also that pursuant to the termination, the trade mark ULTRAFILTER or
any other similar mark will not be used by the respondent.
It is stated that prior to the execution of the Shareholders Partnership Agreement, the respondent engaged a Trade Mark & Patent Agent and
instructed them to apply for registration of trade mark ULTRAFILTER in its name but subsequently on pointing out to it the provisions of Trade
Marks Registered User Agreement, the respondent instructed the said Agents to withdraw the applications and the respondents not only confirmed
the withdrawal of application but also confirmed to the predecessor that fresh applications for registration of trade marks were filed in the name of
predecessor. It is claimed that the fact that both the respondent and Mr. Kini acted upon pursuant to the agreement is apparent from several
circumstances such as the proposed amendments to the Articles of Association were placed before the General Body Meeting of the respondent held
on 7.11.1986, which was attended by Mr. Kini and with his concurrence the amendments were unanimously approved, amongst others, amendment to
Article 43 which reads as under: ""43. The company has entered into an agreement dated 16 October 1986 with Ultrafilter GmbH under which the
latter has granted to the company the right and license to continue the use of the word 'Ultrafilter' as a part of the company's corporate name upon the
company undertaking to cease to use the word 'Ultrafilter' as part of such corporate name on the happening the eventualities specified in that
agreement. The terms and conditions contained therein shall constitute an integral part of these articles. Subject to the Act, nothing contained in these
articles shall affect the aforesaid agreement.
It is further claimed by the applicant that at all times it was admitted by the respondent and Mr. Kini that (a) the trade mark/name ULTRAFILTER
belongs to the predecessor, (b) trade mark for its various products including the word ULTRAFILTER constitute the proprietary intellectual property
right of the predecessor and (c) the registered proprietor has a right to use the word ULTRAFILTER strictly in terms of the Shareholders Partnership
Agreement dated 16.10.1986 and the agreements annexed thereto including the Name Protection Agreement. Due to certain differences that arose
between the respondent and the predecessor, the predecessor by a notice dated 20.10.1997, sent by fax as well as by registered post to the
respondent and Mr. Kini, terminated the Name Protection Agreement with effect from 1.12.1998 and called upon them to delete the word
ULTRAFILTER from the name of the respondent. Though the respondent and Mr. Kini acknowledged the receipt of the fax but did not take any
exception to the termination of the said agreement and instead they suggested a dialogue for mutual beneficial deal. The predecessor reiterated that
the termination has taken effect and confirmed the same. It is also stated that the respondent with malafide intention filed applications for registration
of ULTRAFILTER trademark in different classes during May-June, 1998. The respondent, who was only using the trademark ULTRAFILTER
owing to agreement with the predecessor, cannot claim to be its proprietor and the impugned registration granted in the name of the respondent is
unlawful being contrary to the right of the original proprietor. The applicant is aggrieved by the registration of the impugned trade marks because the
rights in ULTRAFILTER trade marks have devolved on the applicant.
The respondent had opposed the applications for registration of trade marks filed by the applicant and the Assistant Registrar has allowed the
oppositions on technical grounds and appeal against them have been filed. A suit for passing off filed in 1999 by the predecessor against the
respondent is pending before the Additional Civil Judge, Bangalore. Aggrieved by the impugned registration in favour of respondent, the applicant has
filed these applications for removal of the trade marks from the register on the grounds, inter alia, that the respondent is not the lawful proprietor of the
trade mark ULTRAFILTER as it was only permitted to use the said trade mark by the predecessor as such the registration obtained by suppression of
this fact is invalid; that the impugned registration is contrary to the terms of the agreement entered into between the predecessor and the respondent;
that the predecessor had by notice called upon the respondent to stop the use of ULTRAFILTER as the trade mark and its corporate name but
instead of abiding by the notice, the respondent, with malafide intention to use the rights over the trade mark, applied for impugned registration on
25.5.1998; that the impugned registration being identical to applicant's trade mark ought not to have been registered as the same resulted in confusion
and deception among the trade and public; that the impugned registration is not entitled to protection under law as the same resulted in passing off and
loss to the applicant and has also arisen the assumption of trade connection between the applicant and respondent; that the entry of impugned mark in
the register is wrong and the registration of such mark being without sufficient cause and its continuance on the register is against the purity of the
register and that the impugned registration being contrary to sections 9, 11 and 18 of the Act is also against the spirit and purpose of the Act and,
therefore, these are fit cases for this Appellate Board to exercise its powers to rectify the register by totally expunging the impugned marks.
The respondent filed the counter-statement denying the material averments. The respondent stated that it has been using the mark continuously
since its incorporation in 1985 and it is the only lawful user of the name in India by marketing and also exporting the products through the agents to
foreign countries. It is stated that firstly, nobody need to give permission to use the name ULTRAFILTER being a generic word and secondly, the
permission was given by the Government of India in 1986 for collaboration, whereas respondent was registered as a company in 1985. It is further
stated that an agreement was made for collaboration in 1985 between Mr. K.K. Kini and Mr. D. Kronsbein on behalf of ULTRAFILTER GmbH
wherein permission was denied by the Government of India as the agreement was made between a company and a private party and when
ULTRAFILTER GmbH wanted 26% of financial participation, Mr. Kini during middle of 1986 got permission of Government of India. The said
agreement was dated 17.2.1986 while Government of India gave permission only during the middle of 1986 but ULTRAFILTER GmbH, without
signing and sending the collaboration agreement, coerced the respondent to get into the Shareholders Partnership Agreement and after signing the
same only the collaboration agreement was sent to the respondent on 30.10.1986. In November, 1986, the respondent started production with its own
technology. Article 7 of the Shareholders Partnership Agreement provide as ""This Agreement is valid after being signed by all the parties and shall
continue to be enforced as long as the Distributors Agreement and/or Name Protection Agreement and the Trade Marks Registered User Agreement
are valid. Thereafter, any of the parties may give notice of termination in which case ULTRAFILTER may request the shareholders to acquire their
shares at book value."" In this case, only the Distributors Agreement and the change of Articles were made and the Distributors Agreement and the
Collaboration Agreement expired on 16.2.1991. The ULTRAFILTER GmbH applied for registration in January, 1987 which was refused by the
Registrar of Trade Marks, Chennai for not showing user and again during 1997 applications for name and symbol were made without using the same
which were rejected by the Registrar. In the Name Protection Agreement, which was not signed, contain in para 2 ""Agree that it will not at any time
take advantage of any legal possibility to acquire right of its own in and to the word ULTRAFILTER and renounce any such rights."" which is quite
against the principles of law of contracts. The agreement made long before the Government of India sanctioned it is quite invalid arid also expired
during 16.2.1991.
It is stated that Donaldson Deutschland GmbH claiming to be the predecessor of respondent is invalid as during 2000 ULTRAFILTER GmbH
changed its name as ULTRAFILTER INTERNATIONAL AG and by suppressing this fact, they came to India by automatic route. Again during
2002 ULTRAFILTER INTERNATIONAL AG was sold to M/s. Donaldsons Minneapolis, U.S.A. for a consideration and it became an autonomous
business unit of Donaldson. During 2004 Donaldson Filtration Deutschland GmbH was formed by Donaldson of U.S.A. and now it claims that
ULTRAFILTER GmbH merged with ULTRAFILTER INTERNATIONAL AG in 2003 and changed its name as per affidavit of Mr. Ward J.
Lowell. Thus, when the status of predecessor is questionable, the applicant should establish the same before hand but there is no document produced
to prove that merger took place in 2003 between ULTRAFILTER GmbH and ULTRAFILTER INTERNATIONAL AG. The respondent has
claimed that the branch of Donaldson in India is selling Refrigerated Dryers in India even today under the brand name ULTRAFILTER since 2002
and has applied for registration of trade mark as DONALDSON ULTRAFILTER claiming user from February, 2004. The share holding of 26% is
even as on date stand in the name of UILTRAFILTER GmbH only and until today nobody asked the respondent to change the existing name. The
proprietorship of the mark claimed by the applicant is not valid and it is not using the trade mark in India even as on date and the statement by the
applicant that the respondents mark is causing confusion is wrong as it is not selling anything in India so far. The trade mark application made to Trade
Marks Registry, New Delhi by the applicant has claimed the usage from 2004 not 1986 and thus the claim that the trade mark belongs to the applicant
is untenable in law.
The applicant on 26th November, 2007 filed rejoinders to both the counter-statements and reiterated and relied upon averments made in the
applications. While replying, amongst others, para 4 of the counter-statement, the applicant has stated thus: ""...it is submitted that Petitioner's
predecessor had undergone change of name from Ultrafilter GmbH to Ultrafilter International AG on 12 January 1999. For looking after sales of
German Sales and Service a subsidiary was formed as Ultrafilter Gmbh on 13 January 1999. This Ultrafilter GmbH merged into Ultrafilter
International AG on 21 January 2004. Ultrafilter International AG then changed its form to Ultrafilter GmbH and underwent a change of name to
Donaldson Filteration Systems in 2004. Since the Petitioner Company is presently selling its products under the mark DONALDSON ULTRFILTER,
the user claim in the new application is of a subsequent date. It is submitted that there has been confusion regarding the change of names as many
persons have changed hands. The confusion in the change of names has been bonafide and genuine. No undue advantage has been gained by the
petitioner on account of the same. No. prejudice has been caused to the Respondent on account of the same.
Both the rectification applications and miscellaneous petition came up before us for hearing on 25.6.2008 when Shri P.S. Raman, Senior Advocate
and Shri Vijay Anand, Advocate appeared on behalf of the applicant and Shri Rajesh Vellakkad & Shri Rahul Verma, Advocates appeared on behalf
of the respondent. Since in both applications the facts, the parties and the issues involved therein are similar, both the applications were heard together
and hence the common order.
Shri P.S. Raman, senior Advocate, submitted that the impugned registration and use thereof by the respondent has, owing to its identity to the
applicant's trade mark ULTRAFILTER, resulted in violation of applicant's right and thereby causing loss to applicant. Apart from this, there are
several proceedings between the applicant and the respondent before various fora, the applicant is the person aggrieved within the meaning of the Act
and as such has locus to file the present applications.
Learned senior counsel contended that the respondent is not the proprietor of the impugned trade mark as it was permitted to use the name and
the mark 'ULTRAFILTER' by the predecessor under an agreement entered into between the parties; the respondent had under the Shareholders
Partnership Agreement recognised that the predecessor is the proprietor of the trade mark ULTRAFILTER and despite this the registration of the
impugned marks obtained by the respondent by suppression of this fact obtained the registration which is contrary to the terms of the agreement
entered into between the predecessor and the respondent and is not valid. Learned Senior Counsel submitted that where the limited and conditional
rights to use a trade mark and corporate name are granted in terms of Shareholders Partnership Agreement and various other agreements referred to
therein, such a right can be exercised only in the manner laid down in the agreement and so long the agreement subsist or the permission to use is not
terminated. The respondent may carry on its business in its own name and valid trade mark and not by using the name and trade mark of the
predecessor. The applicant has been using the mark in India prior to 1985 as admitted by the respondent and the respondent was estopped from
setting up a title or ownership on the mark. The respondent being a licensees all reputation and goodwill accrued to the trade mark ULTRAFILTER
by its use as well as the user thereof vests and enure, for all purposes, in favour of the applicant.
Learned Senior counsel contended that the impugned registration is contrary to the terms of the agreement entered into between the predecessor
and the respondent under the terms of which agreement the respondent was only permitted to use the trade mark ULTRAFILTER and the word as
part of corporate name and accordingly the respondent in its capacity as a licensee has undertaken to use the mark and the name as long as permitted
by the predecessor. The respondent knowing fully well that the applicant has prior and superior right over the mark proceeded to file application for
registration dishonestly and claimed user since 1987 falsely and fraudulently whereas such a use was in its capacity as a licensee only. He further
contended that despite the predecessor calling upon by notice dated 20.10.1997 to the respondent to stop use of ULTRAFILTER as a trade mark and
as part of its corporate name from 1.12.1998, the respondent instead of abiding by the notice applied for registration of ULTRAFILTER trade mark in
different classes and the application filed on 25.5.1998 for the impugned registration is malafide attempt of respondent to usurp the rights over the
trade mark ULTRAFILTER.
Learned senior counsel contended that the agreement was not made under duress or coercion as alleged by the respondent and this plea has been
taken for the first time that too after respondent acted upon the agreement, gained profits and never objected to the agreement and except this bald
plea the respondent has not shown or explained any reasonable ground that the agreement was entered under duress or coercion or the agreement
was invalid. Whereas the fact is that the agreements were discussed in detail, mutually agreed upon and then executed by the respective parties,
Articles of Association of the respondent were amended and significantly it was only owing to the agreement between the parties that the respondent
was using the trade mark, hence such a plea is barred/estopped.
Learned senior counsel also submitted that the impugned registrations have been entered in the register without sufficient cause; the impugned
registration wrongly stands in the name of person who is not a proprietor thereof and that its continuance on the register taints the purity of register
and prejudicial to the interest of the public in general. Further, the continuance of such registration in the register will be setting a bad precedent and
the licensee or person permitted to use a trade mark will seek registration in its name claiming right adverse to the proprietor.
Shri Rajesh Vellakkad, learned Counsel for the respondent, contended that the applicant is not a person aggrieved to file the present applications as
it has not produced any document to support that it is a validly formed company or a person having the capacity to sue or be sued. There is no
document to show that it is a registered company and has capacity to sue or be sued and hence it will not be appropriate to presume that the applicant
is a person aggrieved within the meaning of Section 57 of the Act. Learned Counsel further contended that even assuming that it is validly formed
corporation, it has not followed the procedure to be followed by a corporation to initiate a legal action as no copies of Memorandum of Association and
Articles of Association of company produced and there is no Resolution of the Board of directors to initiate the present legal proceedings. Apart from
this, the power of attorney and board resolution of the applicant in this regard is produced; the applicant is not a user of the trade mark
ULTRAFILTER; there is no document to show that the applicant is the successor of Ultrafilter GmbH and the flow of title narrated by the applicant
is inconsistent and not showing how the applicant has obtained the right in the mark ULTRAFILTER. He stressed that it is pertinent to note that the
applications for rectification have been filed by Donaldson Filtration Deutschland and not by Donaldson Filtration Systems with whom, as per rejoinder,
the alleged right vests. By referring to pages 81 and 83 of the documents filed along with the counter-statement, learned Counsel pointed out that the
webpage of Donaldson at 81 contain a news text which reds thus: ""June 13, 2002- Donaldson Company Inc. (NYSE: DCI) announced today that it
has signed a definitive agreement to acquire 100% of the shares of Ultrafilter International AG which shows that as stated by the applicant in the
rejoinder and this fact of acquisition is proved by a press statement released on 15th July 2002 by Donaldson Company at 83 which reads ""announced
today that it has completed the acquisition of Ultrafilter International AG.
Learned Counsel further contended that at each occasion the applicant made different averments, version; different sworn affidavits were filed
which itself are contradictory and amounts to misrepresentation. As has been observed by the Supreme Court in Bhaurao dagdu Paralkar v. State of
Maharashtra and Ors. LIS/SC/2005/511 that any misrepresentation itself amount to fraud The Court observed ""..it is also well settled that
misrepresentation itself amounts to fraud. Indeed, innocent misrepresentation may also give reason to claim relief against fraud. The fraudulent
misrepresentation is called deceit and consists in leading a man into damage by willfully or recklessly causing him to believe and act on falsehood.
Learned Counsel vehemently opposed the validity and enforceability of the agreements, referred to in the applicant's averment that it has permitted the
respondent to use the mark in India by way of agreement by the predecessor, on the ground that the respondent is not a party to the Shareholders
Partnership Agreement which was signed on 16.10.1986 by the principal shareholders of the respondent company and with this agreement, a draft of
Name Protection Agreement and Trademark Registered User Agreement were annexed which were not signed and they remained as draft till date,
hence these agreements are not enforceable as barred by limitation. It is evident that the predecessor has allowed the respondent to use the mark
ULTRAFILTER continuously for 6 years after termination on 16.2.1991 of the Shareholders Partnership Agreement and Name Protection
Agreement, as formal claim to cease and desist of use the name ULTRAFILTER was made by the predecessor only in October, 1997, whereas if the
predecessor had any objection to use the mark it could within 3 years from the alleged date of breach have filed any suit for specific performance.
The Appellate Board is not appropriate forum for enforcement of contract. Even if for argument sake it is assumed that the Shareholders Partnership
Agreement is a valid agreement and the respondent has been permitted to use the mark by way of an agreement, then in the case of respondent acted
in any manner contrary to the clauses of that agreement, the correct remedy available to the applicant is to file a civil suit against the respondent for
specific performance of the agreement before an appropriate forum within the prescribed limitation period. Thus, the intention of the applicant in filing
the present applications before this Appellate Board is to indirectly ensure the enforcement of the contract as any suit is now not permitted to be filed
as barred by limitation. The present applications are barred by limitation.
It was submitted that the applicant's case is that the respondent is not lawful owner of the mark and it is only a permitted user which was bound to
discontinue ULTRAFILTER as a trade mark and corporate name as and when so required by the applicant but the applicant missed the point that
respondent is not a party to the Shareholders Partnership Agreement which was entered between Ultrafilter GmbH and Mr. Manipur V. Kini, Mr.
Manipur P. Kini and Mr. Krishnanad Kini in their individual capacity. The respondent, a company registered under the Companies Act, 1956, is a
different entity altogether- a third party- and the applicant ought to have initiated proceedings against the parties who have allegedly signed and
executed the agreement. Learned Counsel submitted that it is admitted fact that the respondent is using the mark ULTRAFILTER for more than 23
years, it is a validly formed company with the name Ultrafilter and the applicant is objecting after 15 years of termination of the agreement, the validity
of which agreement is disputed, therefore, without a civil court finding on the validity of the agreement and the rights thereunder, this Appellate Board
cannot interfere the registration of the mark or disturb the long use of the mark. Moreover, the agreement provides for resolving all disputes by
arbitration by referring to Indo German Chamber of Commerce Bombay and if at all the applicant has a grievance as per the contract, it should have
invoked the arbitration proceedings.
Learned Counsel for respondent submitted that the applicant has acquiescence the use of trade mark and corporate name ULTRAFILTER or
waived off its right to object the use thereof and registration of mark in the name of the respondent as the applicant has not at any time objected to the
use of the same despite having full knowledge. By referring to copy of letter dated 20.10.1997 marked as Annexure-F to the application, learned
Counsel submitted that in the said letter the applicant had directed the respondent to remove only the term ""in collaboration with Ultrafilter Gmbh
from the respondent's letter head and this shows that the applicant was aware that the respondent was using the mark on their letter heads and also on
its products for sale. It was further submitted that the Shareholders Partnership Agreement is not valid in the eyes of law as the same has been made
under duress and coercion. It was also submitted that if the applicant is able to claim and prove any of the averments, namely, prior use, concurrent
use, international reputation and well known status, the respondent's impugned registration will not deprive the applicant from getting its mark
registered or using the same in India. The applicant which is claiming right over the mark by way of long and prior usage should have sought
protection of its alleged right by invoking Section 34 of the Act instead of filing the rectification applications. The respondent through its counsel filed
written arguments.
Rectification application may be filed by any person aggrieved. The expression 'person aggrieved' has received liberal construction from Courts.
FRY Lord Justice in Appollinaris Co. Ltd.'s Tm. (1891) 8 RPC 137 has held: 'we approach this question on the assumption, which is necessary of
course to answer this question, that the trade mark was wrongly in the register, and further, with these two observations: in the first place, that the
question is one of locus standi; and in the second, that the words ""persons aggrieved"" appear to us to have been introduced into the statute to prevent
the action of common informers or of persons interfering from merely sentimental notions, but that they must not be so as to make evidence of great
and serious damage a condition precedent to the right to apply. Further we are of the opinion that whenever one trader, by means of his wrongly
registered trade mark narrows the area of business open to his rivals, and there by either immediately excludes or, with reasonable probability will be
in future exclude a rival from a portion of that trade into which he desires to enter, that rival is an ""aggrieved person"". Again, if that effect is produced
or likely to be produced, by the wrongful trade mark, is not the exclusion, but the hampering of a rival trader, that rival trader, again, is in our opinion, a
person aggrieved. A man in the same trade as the one who has wrongly registered a trade mark and who desires to deal in the article in question is
prima facie an aggrieved person.'
In the same case, the Lord Justice went on to say that 'If the owner of the registered trade mark says to a defendant in a litigation, ""I am the owner of
this registered trade mark and therefore you are doing me a wrong"", the person attacked ought to be at liberty to reply two things: first, ""You ought not
to be on the register"", and secondly, ""even if you ought, I have done you no wrong."" The completeness of the second line of defence ought not to
preclude the attacked person from availing himself of the first. If I am assailed by the conclusion of a syllogism I am at liberty both in logic and in law,
to defend myself by denying both, or either of the two propositions which are alleged in support of the conclusion, and I am unjustly deprived of that
right.'
In Rivere's & Co., TM (1884) 26 Ch.D 48, it was held that it must be a legal grievance; it must not be a step pro ratione voluntas: the applicant must
not come merely saying ""I do not like this thing to be done"", it must be shown that it tends to his injury or to his damage in the legal sense of the word.
When an applicant is not facing any legal threat or persons similarly placed like that of the applicant in the same trade are facing no threat, there is no
cause of action for filing an application for rectification. The locus standi of an applicant is an essential preliminary qualification which has to be tested
prima facie upon the assumption that the facts alleged as the basis of the locus are true, although these facts are challengeable during the course of
the proceedings. In Earnest Marshall's Application, (1943) 60 RPC 147, it was held that the applicant of an opposed application for registration is an
aggrieved person.
In the present case, the predecessor who permitted the respondent to use the trade mark ULTRAFILTER and ULTRAFILTER as part of the
respondent's corporate name is the registered proprietor and the respondent by means of its wrongly registered trade mark in India narrowed the area
of business open to the applicant. Both the parties are in the same trade. The applicant is the prior user of the mark and in the same trade as the
respondent and the registration of trade marks ULTRAFILTER in the name operate in restraint of what would otherwise have been its legal rights;
the respondent opposed the applicant's applications for registration of trade marks. Thus by applying the principles laid down in the above decisions,
we have no hesitation to hold that the applicant is a person aggrieved and has locus to file the present applications.
A person acquires a right of property in a distinctive mark merely by using it upon or in connection with its goods irrespective of the length of such
user and the extent of its trade. Where the mark is not distinctive owing to already existing similar or identical mark of some other person in use, in
such case the trader/manufacturer has to prove it's honest and bonafide adoption and concurrent user. As between the two competitors, like in the
present case, it is entirely a question of who gets there first. This has been fortified in the order of this Appellate Board in Riverdale School Society v.
Riverdale High School and Ors. 2008 (36) PTC 131 (IPAB) wherein it is observed as under:
A proprietary right in a mark sought to be registered can be obtained in a number of ways. The mark can be originated by a-person or can be
acquired, but in all cases it is necessary that the person putting forward the application should be in possession of some proprietary right, which, if
questioned can be substantiated. In the instant case the respondent obtained the registration of the trade mark and it is, therefore, for him to establish
his proprietary right. It is not disputed by the respondent before us the prior user and the respondent claims rights by way of assignment from the
applicant.
If there is a specific agreement as to the proprietorship of the mark in question that agreement will govern as between the parties....
In J.K. Jain and Ors. v. Ziff-Davies Inc. 2000 PTC 244 (DB) relied upon by the learned senior counsel in support of submission that the respondent,
having admitted the presence of Ultrafilter goods in India in 4 years before its incorporation, was estopped from setting up any title or ownership on
the mark, wherein the Division Bench of Delhi High Court observed as under:
We heard learned Counsel for the parties at length and were also taken through the entire record. As noticed above by us, learned Single Judge, after
considering the fact that the Plaintiff/Respondent had granted a licence in favour of the appellants on 9.4.1994 and the term thereof expired on
31.3.1997, observed that the defendants/appellants had under the terms of the agreement recognized the respondent's proprietary right in the copy
rights under the agreement. Therefore, as an ex-licensee, the appellants were estopped from challenging the ownership of the Respondent in the
marks referred to in the agreement. Whether the words ""PC"", ""WEEK"", ""MAGAZINE"", ""COMPUTER"", ""SHOPPER"", ""USER"", ""INTERNET"", are
descriptive or general words, as an ex-licensee, appellants were estopped from claiming that the mark was descriptive since the appellants under the
terms of the agreement were unable to challenge the proprietary rights of the respondents trade mark or trade name on any ground. Learned Single
Judge quoted Clause 12(a) of the agreement and observed that as the Appellant itself had taken licence from the Respondent the same would indicate
high value of the trade mark of the Respondent. Learned Single Judge concluded that the Respondent had been able to establish prima facie case for
seeking injunction in its favour. Learned trial Court also noticed the offer of the appellants of furnishing an undertaking not to use logo of the
Respondent and to publish a declaration in its magazine to the effect that the four titles had no relationship whatsoever with PC MAGAZINE U.S.A.
or with Ziff Davies Publishing Company U.S.A., but considering the terms of the agreement, concluded that balance of convenience also lay in favour
of grant of injunction in favour of the Respondent. On the question of irreparable loss also, learned Single Judge observed that mere undertaking to
publish disclaimer continuously was not going to help and unless injunction was granted, the Plaintiff/Respondent was likely to suffer irreparable loss.
In so far as loss to appellants was concerned, in view of the prima facie nature of the case in favour of the Respondent, learned Single Judge
observed that injunction deserves to be granted on Respondent furnishing bank guarantee of Rs. 5 lakhs to compensate the appellants in the event of
suit being dismissed.
Similarly in Fedders North American v. Show Line and Ors. the High Court of Delhi at para 54 observed as under:
In so far as ""Fedders"" in the corporate name of Defendant No. 18 is concerned, it is more than obvious that the word ""Fedders"" is a name that is
completely foreign to it. Defendant No. 18 adopted this name only because it, and its predecessor in interest, that it, LEECO had a tie up with the
Plaintiff. Otherwise, there is no reason for Defendant No. 18 to have adopted a completely foreign name as a part of its corporate name. The
continued use of the word ""Fedders"" by Defendant No. 18 in its corporate name would give to the general public an impression that it continues to
have a tie up with a foreign company, even though both the Plaintiff and Defendant No. 18 are at logger heads and have been so far the last over 30
years. However, no relief is claimed by the Plaintiff in this regard, except against the sister or group companies of Defendant No. 18.
In the cases on hand, since the agreement stands terminated and has come to an end, the respondent cannot use the trade mark ""Ultrafilter"" in any of
its products and the word Ultrafilter as part of its corporate name. The respondent is the permitted user of trade mark and the word Ultrafilter as part
of its corporate' name which permission is not for perpetual use. It is evident that the predecessor is the registered proprietor of the mark
ULTRAFILTER. The predecessor permitted the respondent to use of trade mark ULTRAFILTER and the word ULTRAFILTER as part of the
respondent's corporate name under the agreement dated 16.10.1986. It is noticed that Article 11 of the copy of draft Annexure 4 (Trade Marks
Registered User Agreement), the opening page whereof is initialed by four persons, states that the Indian Company agrees that upon termination of
this agreement or of the right and permission granted herein to use the said trade mark, it will discontinue any use whatsoever of the said trade mark in
connection with any goods, etc. and Article 12 says that the Indian Company further agrees that upon termination of this agreement it will take all
proper steps to cancel its registration as a registered user of the said trade mark. It is further noticed that in the Shareholders Partnership Agreement,
Article 3:1 provides right to use ULTRAFILTER as part of respondent's corporate name and Article 3:2 provides right to use the trade mark by the
respondent and also provide that after termination of the agreement, Ultrafilter at any time may demand the denomination ULTRAFILTER in the
name of the company to be deleted and replaced by a word not similar to the word Ultrafilter; Ultrafilter furthermore may demand that the trade mark
Ultrafilter or any similar mark is not used by the company any longer. Similarly, Article 11.3 and 11.4, respectively, of the Technical Collaboration
Agreement dated 17.2.1986 provide that the licensee shall forthwith, whenever called upon by the licensor in that regard, cease using any reference to
the name of the licensor, and upon termination of this agreement, the licensee shall forthwith case using any name, marking or other term or
designation indicating that the contract products are made according to the licensor's design, unless otherwise agreed to by and between the parties
hereto in writing. More or less like provisions are contained in Clause 5 (a) (iii), (iv) and (v) of the Name Protection Agreement. As per Fax and
registered letter dated 20.10.1997, the Group Chairman of the Ultrafilter International sent notice terminating the Name Protection Agreement with
effect from 1.12.1998 and the respondent has not ceased to use the trade mark, by obtaining the impugned marks in its name, and continues to use the
word Ultrafilter as part of its corporate name. The respondent was permitted by the applicant to use its trade mark and word Ultrafilter as part of its
corporate name and after the termination of the agreement the respondent cannot claim any right to use the trade mark as the respondent has neither
adopted nor used to claim any proprietary right. The respondent has admitted the presence of ULTERAFILTER goods much prior to its incorporation
as a company. The respondent was therefore, estopped from setting up any title or ownership on the trade mark or user thereof. The respondent has
made applications for the impugned registration much during the currency of the agreement when it has no right to claim proprietorship as it was a
licensee of the predecessor. Learned senior counsel has rightly submitted that once the respondent has in its market survey report dated 28.1.1986
admitted the predecessors products have been sold in India for the last 4 years, the respondent was estopped from claiming that it has been using the
mark since 1985 and it is the only lawful user of the name in India by marketing and also exporting products. Even for the sake of argument if we
accept that the respondent is the registered proprietor of the marks and the effect of registration of a trade mark is to give it an exclusive right of user
to the proprietor of the registered trade mark, then that registration is subject to the condition that if there is user prior to the date of registration, then
that user may continue and the effect of a registered trade mark is that even if there is some delay in enforcing the statutory right, the exclusive right
of user cannot be lost. [see Swaran Singh Trading as Appliances Emporium v. Usha Industries (India) New Delhi and Anr. 1986 (6) PTC 287 (Del.)
(DB)]. By applying the ratio of this judgment we can safely say that the predecessor as the prior user and registered proprietor has not lost the
exclusive right of user.
In view of the above, we are of the considered opinion that the respondent's claim that it is the lawful proprietor of the trade mark and name
ULTRAFILTER is not sustainable.
Now we will come to the contention of the respondent that the agreement is not valid and enforceable against the respondent who was not a party
thereto and the predecessor without signing and sending the Technical Collaboration Agreement coerced the respondent to get into the Shareholders
Partnership Agreement. The applicant has objected to this contention as such plea is being raised for the first time by the respondent. The records
show that the Draft of a Technical Collaboration Agreement was entered into on 17th July 1985 between Kris Kini and the representative of the
predecessor and the respondent was incorporated with the Registrar of Companies, Bangalore on 31.12.1985. Obviously, Mr. Kris Kini was one of
the promoters of the company who holds 51.82 % shares in the company and who, was the moving force in the promotion and incorporation of the
respondent, approached the predecessor desiring to have technical collaboration some time before October, 1985 (Annexure-A to application) for a
proposed company. The fair or final Technical Collaboration Agreement was signed on 17.2.1986 by Mr. Kris Kini as Director on behalf of the
respondent and Mr. Dirk G. Kronshein on behalf of the predecessor. The Shareholders Partnership Agreement has been signed 16.10. 1986 by Mr.
M.V. Kini, Mr. M.P. Kini and Mr. Kris Kini, Managing Director, on the one part and Mr. Dirk G. Kronshein on the other part. Article 7 of the
Shareholders Partnership Agreement specifically provides that ""This Agreement is valid after being signed by all parties and shall continue to be
enforced as long as the Distributors Agreement and/or Name Protection Agreement and the Trade Marks Registered User Agreement are valid.
Thereafter, any of the parties may give notice of termination in which case ULTRAFILTER may request the shareholders to acquire their shares at
book value."" The contention of the respondent that without signing the Technical Collaboration Agreement, the predecessor coerced to get into the
Shareholders Partnership Agreement is without any basis as the former was signed on 17.2.86 and the later was signed on 16.10.86. The agreement
has been acted upon as the amendments carried out, notably Article 43, in the Articles of Association of the respondent is testimony to this fact. The
respondent has been using the trade mark and the word ULTRAFILTER as part of its corporate name, amended its Articles of Association If the
agreement is not valid in the eyes of law as contended by the respondent then which is the agreement under which it used the mark and word
Ultrafilter as part of its corporate name? We agree with the submission of the senior counsel that the contention of the respondent, to the effect that
the agreement is not valid is self defeating. The Supreme Court in the Baker Hughes and Anr. v. Hiroo Khushlan and Anr. has observed at para 6 as
under:
The execution of this Agreement is not denied by the Respondents. What has been claimed is that this Agreement was not to be acted upon and/or
that this Agreement was not put before the Government of India, the agreement was illegal and unenforceable. This argument has found favour with
the Division Bench. Prima facie, it appears to us that this is a self-defeating argument. If the Agreement was not to be acted upon, then there is no
right in the 2nd Respondent Company to use the name 'Baker'. In spite of questions from this Court no other permission or licence to use the name
'Baker' could be shown to us. If the Agreement is unenforceable then the entire Agreement is unenforceable. In that case the 2nd respondent has got
no right to use the name 'Baker'. On the reasoning that this agreement was illegal and unenforceable the interim injunction should have been
confirmed. The goods being identical there was likelihood of confusion and/or deception if the Respondents were permitted to carry on using this
name.
The respondent while questioning the validity of the 'Shareholders Partnership Agreement or Name Protection Agreement has overlooked the fact
that in case the said Agreement is not binding on the respondent then in that event the use of the word ULTRAFILTER by the respondent as part of
its corporate name and trade mark would have been without the permission of the predecessor. Merely because the Name Protection Agreement has
not bee signed, it cannot be construed that there has been no concluded contract as has been held in Kallipora Sriramulu v. Aishwatha Narayan. Also
the following observations of B.N. Kirpal, J., in Pioneer Hybrid International Inc., USA v. Pioneer Seed Company Ltd. AIR 1989 NOC 120 (Delhi)
support the view which we have taken:
... The injury which is complained of in the present case is to the improper use of the trade mark belonging to the plaintiff. The plaintiff is the owner of
the trade mark ""PIONEER"" and, if the Registered User Agreement is not valid, the defendant is using the said trade mark against the wishes and
without a valid permission of the owner. Trade mark is a valuable right which vests in its owner, and an injunction under Order 39, Rule 2, C.P.C. can
be issued to prevent injury to such a right.
Thus the aforesaid contentions of the respondent have no merits and the same are not tenable.
Now we will come to the issue as to whether the respondent has obtained the impugned registrations honestly and bonafidely. We have already
come to the conclusion that the respondent has no claim to proprietorship right over the mark. The respondent was permitted to use the trade mark
and the word Ultrafilter as part of its corporate name by the predecessor. The averment of the respondent that it has been using the mark
continuously since its incorporation and is the only lawful user in India is not tenable as the respondent was a permitted user of the trade mark and the
word ULTRAFILTER and whatever reputation and goodwill it might have acquired vests in and enures to the applicant. The averment of the
applicant, at para 7 of the statement of case that the respondent had earlier also applied for registration of ULTRAFILTER trade mark but upon
pointing out to them the Trade Marks User Agreement, it withdrew all the applications, was not contradicted in the counter-statement. The respondent
has in the counter-statement stated ""Our company's name is Ultrafilter (India) Pvt. Ltd. for which we have a registered trade mark stating
ULTRAFILTER INDIA and our logo is ULTRAFILTER INTERNATIONAL and due to exports, for which we have a copyright for the mark.
Hence statement made in the paragraph by applicant does not contain any point of law."" Though the respondent claims that it is manufacturing
products with its own technology and also exporting the products, no sale figure, voucher or advertisement is produced. In the case of Velcro
Industries B.V and Anr. v. Vetera India Ltd. in suit No. 614 of 1993 decided on 1.3.1993 by the Bombay High Court, the Supreme Court while
making the Notice of Motion absolute observed as under:
It is also not possible, at this prima facie stage, to accept Mr. Shah's argument that, Defendants are entitled to continue to use the name Velcro as
part of their Corporate name, because they have independently developed a reputation in India. As stated above, Defendants were merely acting as
Licensees from 1969 to 1986. In my view, the fact that, in Agreement Exh. 'E', it is not provided that on termination, Defendants will cease to use
Velcro"" as part of its trade name makes no difference. This is a registered Trade Mark. To allow Defendants to use it as part of its Corporate name
is to permit Defendants to given an impression to the public that they are still connected with or have a licence from the Plaintiffs. In this behalf it is
relevant to note that the reputation, if any, of the Defendants in the Indian Market is obviously from manufacture and sale of hook fastners of
synthetic materials which were only under licence. It is relevant that for this they have given sales figures but have given to particulars of details of
manufacture and sales of leather and stainless steel watch straps and novelty items which they now claim they manufacture. Significantly not stated
when they started manufacturing those items, in what quantities, when and where they are sold, to whom they are sold, how, where and when they
were advertised etc. To Court it does appear that these must be negligible and/or started only after termination of Agreement Exhibit 'E' and receipt of
Notice Exhibit 'J'. Also relevant to note that in Memorandum of Understanding (Exhibit II to the Affidavit-in-Rejoinder) which was signed as late as
17.3.1988, Defendants accept the position that a new Agreement must be arrived at order to enable Defendants, inter alia, to use ""Velcro"" as their
Trade Name in India.
At para 2 of the counter-statement the respondent has contended' mat Ultrafilter being a generic word no body need to give permission to use the
name. While making these averments the respondent overlooked that trade mark ULTRAFILTER and word ULTRAFILTER as part of its corporate
name was due to permission given to it by the predecessor. Clause 2 of the Name Protection Agreement clearly states thus: ""The Indian,, Company
acknowledges and agrees that, by carrying on business and/or using the corporate and/or trade or business name including the word ""Ultrafilter"", it has
not acquired and does not and will not acquire at any time hereafter any right or title of any nature whatsoever in the word ""Ultrafilter"" either as a
name or as a part of the name or otherwise and agrees that it will not at any time take advantage of any legal possibility to acquire rights of its own in
and to the word ""Ultrafilter"" and renounces any such rights."" The legality of which is questioned by the counsel for the respondent. In the case of J.K.
Jain and Ors. (supra) a provision more or less on these lines were in the agreement entered into between the plaintiff/respondent and
defendants/appellants stipulated that scope of licensee's permission will not be considered as expanded in any respect. All use of the trade marks and
any other trade mark owned by licensor or its affiliates including Ziff Communications Company, at any time during or after the terms of the
agreement will accrue solely to the beneficiary of the licensor. Under the said terms, the appellant agreed that it shall not use directly or indirectly,
challenge, contest or attack ownership of the licensor or any of its affiliates or division or trade marks or any Ziff marks or the validity of the trade
marks or seek to register a claim of ownership of the trade mark in itself. The Division Bench of High Court of Delhi dismissing the appeal observed
that ""Learned Single Judge considering the terms of the agreement opined that in view of the Appellants having agreed that it will not have or obtain
by exercising its rights under the agreement or otherwise any right or interest in the trademarks or the Ziff Marks beyond the rights specifically given
in the agreement, the Appellants were estopped to resist the application for grant of injunction, which fact alone was sufficient that
Plaintiff/Respondent had made out a prima facie case for grant of injunction."" The averment that the applicant is of international repute, known world
over for the high quality of its products remains uncontroverted in the pleadings of the respondent. When the applicant is of international repute its
trade mark cannot be copied and registered. In the circumstances of the case, it is evident that the application for registration made by the respondent
is dishonest and malafide. The Registrar of Trade Mark would not have allowed registration if true and factual statement or representation were made
at the time of proceedings for registration. The Trade Mark Registry would not have allowed such registration on the grounds of firstly, the mark was
not distinctive, owing to the mark of applicant in existence and use, or capable of distinguishing the products of respondent from the products of
applicant and the respondent has no lawful proprietary right in the mark and secondly such registration would be barred by sections 9, 11(1) and (2)
and 18(1) of the Act. The respondent is in unfair competition with the applicant which has to be avoided. The claim of world over reputation of
applicant's products has not been specifically denied by the respondent. A trade mark of a foreign trader, like the applicant, in respect of a product
need not be associated with the actual use of the product in order to establish reputation. The principle laid down by the Division Bench of Delhi High
Court in N.R. Dongre v. Whirlpool Corporation 1996 (16) PTC 476 is that the knowledge and awareness of a trade mark in respect of the goods of a
trader is not necessarily restricted only to the people of the country where such goods are freely available, but the knowledge and awareness of the
same can reach even the shores of those countries where the goods have not been marketed. The principle laid down in this case was upheld by the
Supreme Court in appeal against the above decision of the Division Bench of this Court [See N.R. Dongre v. Whirlpool Corporation Limited. While
upholding the decision of the Division Bench of this Court, the Supreme Court held thus: ""The mark/name 'WHIRLPOOL' is associated for long, much
prior to the defendants' application in 1986 with the Whirlpool Corporation plaintiff No. 1. In view of the prior user of the mark by plaintiff No. 1 and
its trans-border reputation extending to India, the trade mark 'WHIRLPOOL' gives an indication of the origin of the goods as emanating from or
relating to the Whirlpool Corporation plaintiff No. 1.
Again in Daimler Benz Aktiegesellschaft and Anr. v. Hybo Hindustan a learned Single Judge of Delhi High Court, while commenting upon the trans-
border reputation of trade name 'Benz', held that 'In my view, the Trade Mark law is not intended to protect a person who deliberately sets out to take
the benefit of somebody else's reputation with reference to goods, especially so when the reputation extends world wide. By no stretch of imagination
can it be said that use for any length of time of the name ""Benz"" should be not objected to.'
The mark/name ULTRAFILTER is associated for long, much prior to the permission given to the respondent in 1986. In view of the prior user of the
mark by the applicant and its trans-border reputation extending to India, the trade mark ULTRAFILTER gives an indication of the origin of the goods
as emanating from or relating to the Donaldson Filtration Deutschland GmbH. We are of the opinion that had the true facts stated to the Registar, the
Registrar would not have allowed the impugned registration. The user claimed in the applications for registration by the respondent since 1987 was
certainly not of by the respondent but user by the applicant in India through the licensee/permitted user. Therefore, inference can be drawn that the
registration were obtained by making untrue statement or misrepresentation before the Registrar of Trade Marks and the permitted use not disclosed
by the respondent.
If the registration is found to have been made in contravention of any provision of the Act, the entry could be challenged as one made without
sufficient cause. The respondent has obtained registration in its name when it was using the mark in a capacity of the licensee, that too contrary to its
to the acknowledgement not to obtain registration. Obviously, the respondent was not a proprietor of the mark on the date of filing applications for
registration, the word, as claimed by the respondent, is a generic word which is not registrable unless acquires a secondary meaning or a distinctive
character with constant user for a considerable period of time, impugned marks and goods covered by them being deceptively similar to the earlier
trade mark ULTRAFILTER and goods covered by that mark and there exist likelihood of confusion and deception causing in the mind of consumers
and it could not be registered to the extent the earlier mark is a well-known mark and the use of the impugned mark without due cause would take
unfair advantage of or detrimental to the distinctive character or repute of the earlier mark and the impugned registration causes passing off the goods
of the respondent as the goods of the applicant. The above mentioned disqualifications exist even at the time of filing the present applications. The
respondent has not even attempted to disprove the above mentioned disqualifications and has not shown that it has discharged the onus of proving that
it is the proprietor of the mark, the mark is distinctive and due to long use acquired distinctive character and the registration and use of mark will not
be contrary to the provisions of Section 11 of the Act. There is not an iota of invoice/bill or advertisement on record to show user of the mark by the
respondent till registration or even thereafter, till the date of filing of the present applications.
Coming to the contention that the applicant has not proved that it is the successor of the predecessor, it appears that the respondent is trying to
wriggle out of the present proceedings by raising too technical objections. The respondent has not refuted the reply of the applicant extracted at para 9
above during the course of argument, and the respondent has in the counter-statement under the heading 'A Statement of case in support of our
Defence' has stated that the company Donaldson Filtration Deutschland was formed by M/s. Donaldson of USA during 2004 and during 2004
Donaldson Filtration Deutschland has applied registration in India through Delhi Trade Mark Registry claiming usage since 2004. This shows that the
above named company exists. Apart from this, whether Donaldson Filtration Deutschland is the successor or not, the respondent who has obtained
registration malafidely on misstatement and misrepresentation during the currency of the agreement cannot be allowed to remain on the register which
will be against the object and spirit of the Act.
Application under Section 47 or Section 57 of the Act can be made before the Registrar or the Appellate Board but where in a suit for
infringement of a registered trade mark the validity of the registration of the plaintiff's trade mark is questioned by the defendant, etc., such application
shall be made to the Appellate Board and not to the Registrar. The Act has conferred jurisdiction to entertain such application only either to the
Registrar or to the Appellate Board, therefore the objection of the respondent that this Appellate Board has no jurisdiction to decide the applications is
misconceived. The contention of respondent that the applications are barred by limitation is also misconceived as this Appellate Board has in Prestige
Housewares India Limited and Anr. v. Gupta Light House and Anr. 2007 (35) PTC 876 (IPAB) held that the provisions of the Limitation Act does not
apply to rectification applications. We do not think it is necessary to go into the contention of respondent that the applicant should have sought
protection under Section 64 of the Act instead of filing rectification applications. The contention of the respondent that the applicant is not a person
capable to sue and be sued in its name and the applicant has not produced its Articles of Association, Board resolution, etc. is not part of the pleadings,
hence cannot permitted to be raised at this stage. The plea of acquiescence taken by the respondent is not acceptable as the record shows that both
parties are at loggerheads at different for-a. The applicant has in 1999 filed a civil suit in Bangalore and the respondent has filed a case before the
Company Law Board in 1998 and the appeal preferred against the order of the Company Law Board is pending before the High Court of Karnataka.
In view of the above, we are of the view that the respondent on technicalities has usurped the trade mark and name of the applicant to which the
respondent has no right.
We therefore, allow the applications and direct the Registrar to expunge the impugned registrations specified in the first paragraph of this order
from the Register of Trade Marks. Let a copy of this order be forwarded to the Registrar of Trade Marks for compliance. Consequent to this order
on the rectification applications, M.P. No. 30/2008 does not survive. There shall be no order as to costs.