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Judgment
S. Usha, Technical Member
The above rectification petition has been filed for removal of the Trade Mark ""Albaik"" under No. 1029413 under Section 47/57/125 of the Trade
Marks Act, 1999 (hereafter referred to as the Act). The applicant had also taken out a Miscellaneous Petition No. 76 of 2007 to stay/injunct the effect
and operation of the trade mark registration certificate.
The brief facts of the case are as under:
a) The applicant was created in the year 1975. In the year 1987, the trade marks ""Albaik"" and ""Albaik Chick logo"" were introduced as service marks
to the public. The said marks were registered in the Saudi Arabia in 1992. The applicant has 34 restaurants in various countries like Kingdom of Saudi
Arabia, Egypt and UAE. The applicant had the trade mark registered in India in the year 2003 under No. 1237718 in class 42 in respect of restaurant.
The applicant is also the proprietor of the trade mark ""Elbaik"" with the device of that bearing Application No. 778166 as of 13th November, 1997 in
respect of meat, fish, poultry and game, preserved dry and cooked food, edible oils and fats and the application is pending registration.
b) The applicant came to know about the adoption of the impugned trade mark by the respondent and filed this instant application for rectification. The
respondent had adopted the trade mark with the knowledge of the applicant's mark and obtained registration by fraud. The respondent was running the
business under the name and style of 'Palace Hotel' until 2004 and thereafter adopted the trade mark to trade upon the reputation of the applicant's
well established and reputed trade mark. Moreover, the applicant being the exclusive and real owner of the trade mark, the respondent cannot be the
proprietor under Section 18 of the Act. The respondent has not been using the trade mark ""Albaik"" anywhere in India except in a district in Kerala and
hence registration is contrary to the provisions of Section 47 of the Act. The respondent's mark neither was not distinctive nor was capable of being
distinguishing and hence prohibited registration under Section 9 of the Act. The applicant's mark is a well known mark within the meaning of Section
2(z) (b) of the Act.
(c) The people from the area of Kerala where the respondent's restaurant is located are working in the Middle East countries, where the applicant's
trade mark ""Albaik"" is a well known mark and so are being confused and that is how the respondent is trying to pass off its goods taking undue
advantage of the applicant's reputed trade mark. Though there have been several calls from various places to start the applicant's restaurant bearing
the impugned trade mark, the applicant's is not able to expand its business on account of confusion and deception occurring in the minds of the public
that the respondent's restaurants are the outlets of the applicant. Hence the registration of the trade mark is contrary to the provision of Section 11 of
the Act.
(d) The respondent though has obtained registration for the whole of India has been using the mark only in a District in Kerala. The mark is thus
wrongly registered and wrongly remaining on the Register and without sufficient cause.
(e) The applicant is a registered proprietor of the trade mark and has thus issued a legal notice to the respondent. The applicant is therefore a person
aggrieved and can maintain the application for rectification.
(f) The registration of the impugned trade mark ""Albaik"" under No. 1029413 in class 29 is contrary to the provisions of Sections 9, 11, 18, 31, 32, 47
and 56 of the Act. The mark may be removed/rectified from the Register of Trade Marks.
(a) The respondent filed its counter statement denying the various material allegations made in the application. The respondent stated it is
maintaining a chain of restaurant in various places in Kerala with emphasis on roasted chicken and other meal and poultry dishes. The respondent
adopted the trade mark ""Albaik"" in the year 1997 and had been using the same continuously and extensively without any interruption. Due to long and
continuous use, the public associate the trade mark with the goods of the respondent and with none else. The applicant's has no case that it has a prior
use within the territorial jurisdiction of Kerala. The respondent is the honest concurrent user of the trade mark under Section 12 of the Act.
(b) The respondent also stated that the applicant has not used the trade mark continuously whereas the respondent has been using the said trade mark
Albaik"" since 1997. The applicant filed a civil suit, OS No. 1/05 along with an application for interim injunction, but however no order of injunction
was granted. The respondent further stated that the applicant having failed in the attempt in the suit has filed this application for rectification as an
after thought to harass the respondent.
(c) The respondent has been vigilant in taking action against various infringers as a registered proprietor of the trade mark ""Albaik"". The registration
obtained for the trade marks ""Albaik"" and ""Elbaik"" by the applicant is too distinct and there is no possibility of confusion as the applicant has no
business in India.
(d) The applicant has no business in India and to say that its trade mark is well known trade mark is false. The applicant also has not produced any
documentary evidence to substantiate its averments in the application. The respondent is the registered proprietor of the trade mark as per the
provision of the Section 18 of the Act.
(e) The respondent further stated that the registration has been granted for the whole country and it was sole discretion of the respondent to use
anywhere in India. The respondent stated that the other contentions of the applicant was not sustainable in law and prayed that the application for
rectification be dismissed with costs.
After completion of the pleadings, we heard the matter at Chennai on 30 June, 2008. Shri K. Rajasekaran appeared on behalf of the applicant and
Shri Sunil Paul appeared on behalf of the respondent.
Learned Counsel for the applicant contended that the trade mark ""Albaik"" had no dictionary meaning. The respondent had no answer for the
adoption of the trade mark ""Albaik"" as it was a mere copy of the applicant's mark to gain undue advantage by trading on the reputation of the
applicant.
He drew our attention to the reply to the legal notice issued by the applicant to the respondent at Page 86 and stated that the respondent has
admitted that it was aware of the applicant's use of the trade marks ""Albaik"" outside India. The applicant also admitted that it had no business in India.
The applicant pointed out to the various registration certificates obtained by it in various countries. It also took us to the registration certificate
obtained in India. The trade mark ""Albaik"" was used since 1987 for the chain of restaurants. The applicant drew our attention to the respondent's
advertisement at Pages 206 and 207 to say that the respondent has mentioned that it was the Arabian Restaurant by which trying to confuse the minds
of the public.
The applicant further submitted that the trade mark ""Albaik"" and ""Elbaik"" are well known mark and has got to be protected. The trade mark has
also acquired transborder reputation by the pilgrims who go for Haj.
The applicant relied on the judgments in support of its case namely:
(1) 2001 (21) PTC 353 Delhi Rainforest Cafe, Inc. v. Rainforest Cafe and Ors. - was relied on to say that not only by actual goods available in a
country the trade mark acquires reputation but also by advertisement.
(2) Milment Oftho Industries and Ors. v. Allergan Inc. - goods even though were not available in India will not be relevant if they were in the world
market first.
The learned Counsel for respondent vehemently opposed the contention of the applicant. The counsel mainly submitted that the respondent was
using the trade mark since 1997 and got the mark registered as there was no opposition from any end. The respondent further submitted that the
applicant though had the trade mark registered in India and other countries did not use or have business under the said trade mark in India.
The respondent further submitted that the respondent's mark had been in use and had acquired distinctiveness. At the same time, as the applicant
had no business in India, the issue as to confusion or deception did not arise. Therefore the provision of sections 9 and 11 of the Act were not
attracted.
The respondent relied on two judgments with reference to its contentions namely:
(1) Venkata Rama Rao Awas and Ors. v. American Cyanamid Company and Ors. and
(2) PTC (suppl)(1) 586 (SC) National Bell Co. and Anr. v. Metal Goods Mfg. Co. (P) Ltd. and Anr. - to say who is a person really aggrieved
With this submissions, the learned Counsel for the respondent prayed that the application be dismissed with costs.
We have heard and considered the submissions of both the counsel.
In deciding an application for rectification, the main issue would be to see if the applicant is an aggrieved person. In other words an apposition to
register a trade mark can be filed by any person as per the provisions of Section 21 of the Act, whereas an application for rectifying or removing a
mark from the Register of Trade Marks shall be filed only by a person really affected or aggrieved by the presence of the mark on the Register.
Aggrieved person has not been defined in the Act. But the expression, aggrieved person has been literally construed by various courts. ""An
aggrieved person is one who is in some way or the other substantially interested in having the mark removed from the Register. Whenever, it can be
shown that the applicant is in the same trade, as the person whose mark is registered and whereas 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 mark upon the register, he could not lawfully do that which, but
for the existence of the mark upon the register, he could lawfully do, he has a locus standi to be heard as a person aggrieved"" - Powell's Trade Mark.
Based on the above principle, it is clear that the applicant being in the same trade is a person aggrieved.
The next issue to be decided in the instant case is that whether the applicants mark is a well known mark or whether it has acquired transborder
reputation. The applicant though has argued that the mark has acquired transborder reputation there is no pleadings in the application to that effect. To
acquire a status of a well known mark there should be some spill over which is also absent in this case. The claim is therefore rejected.
We have perused the entire documents filed by the applicant along with the application for rectification. We do not find any sales figures or sales
invoices or bills either in India or abroad. We have seen some press clipping sheets published outside India which are not in circulation in India and in
our opinion no possibility of those sheets being available in India. No advertisement is also seen to prove the user of the mark either in India or abroad
except for some packing cartons. The well settled principle of law as observed by the Supreme Court in Corn Products case is that the mark
remaining on the Register will not prove its use, the same is applicable here in this case as the registration certificates will not help the applicant to
either say that it is being used in India or abroad or it is a well known mark.
We also would like to quote an observation made by the Supreme Court in Milment Oftho Industries and Ors. v. Allergan Inc. (relied on by the
applicants) - ""However, one note of caution must be expressed, Multinational Corporations, who have no intention of coming to India or introducing
their products in India should not be allowed to throttle an Indian Company by not permitting it to sell a product in India, if the Indian Company has
genuinely adopted the mark and developed the product and is first in the market. Thus, the ultimate test should be who is first in the market.
Applying the above principles, we are of the view that the respondent is in the market first in India. Moreover, the respondent's contention is that
they adopted the trade mark in the year 1997 which has not been disputed by the applicant. When that be so as has been observed by the Supreme
Court in Milment Oftho case why should an Indian Company who has expanded his business be unnecessarily stopped. Here again we also find no
document filed by the respondent, but the civil suit filed by the applicant against the respondent goes to prove that the respondent has been using the
trade mark which has given rise a cause of action to the applicant to file the civil suit. That apart, there is no specific averment as to whether the
applicant has any use of the trade mark in India before or after the filing of application for registration.
With the above findings we are of the opinion that the registration has been in accordance with the provisions of sections 9, 11 and 18 of the Act and
there is no contravention as such. In view of the above, we find no merits in the application and therefore dismiss the application for rectification. The
Miscellaneous Petition is also dismissed as nothing survives in the miscellaneous application. No costs.