Epsilon Publishing House Pvt. Ltd. vs Grantham And Ors.

S. Usha, Technical Member

The above application for removal/rectification of the Trade Mark EASY NOTES under Section 47/57/125 of the Trade Marks Act, 1999

(hereinafter referred to as the Act). The applicant is engaged in the business of publication and trade of books and printed matters under the trading

style M/s. EPSILON PUBLISHING HOUSE PVT. LTD. The applicant in the course of trade had adopted the celebrated trade mark EASY

NOTES label in relation to the said goods and as such is the proprietor of the trade mark EASY NOTES since 1999.

It is claimed that the applicant has honestly adopted and used the trade mark continuously and exclusively in course of trade till date and as such it

has built up a valuable trade and goodwill among the public.

The applicant has also filed an application for registration of the trade mark EASY NOTES under Application No. 933410 in class 16 on 21st June,

2000 in respect of all kinds of books and printed matters. The applicant is thus the proprietor of the trade mark EASY NOTES on account of its prior

adoption and continuous use. The applicant's predecessor had adopted the trade mark and the same was acquired by the present applicant in or about

May 2000. The applicant is also the proprietor of the artistic features of the said label.

The applicants business under the impugned trade mark is extensive and it has practically distributed its goods in major parts of the country. The

said business is thus being identified as that of the applicant's only and with none else. The applicant's trade mark and the said business had acquired

tremendous goodwill and enviable reputation in the market and as thus had good sales. The applicant has also spent huge amounts towards promoting

the sales by publicity through various media. The applicant's trade mark has acquired distinctiveness by use and as such has gained recognition among

the public.

The applicant being the prior adopters has now filed rectification application under No. 1010203 in class 16 on the following grounds:

a) that the applicant is the proprietor of the trade mark;

b) that the impugned registration of the respondent is liable to be rectified as the applicant is prior user;

c) that the respondent has adopted the trade mark dishonestly as they were aware of the applicant's proprietary rights in the trade mark EASY

NOTES;

d) that the impugned registration offends the provision of Section 11 of the Act as the goods bearing the impugned trade mark would cause confusion

among the public;

e) that the registered proprietors have no bonafide intention to use the impugned trade mark;

f) that the registered proprietors are not the proprietors of the trade mark as they have not used the impugned trademark as a trade mark. The

impugned registration is in contravention of Section 9 as it had not acquired any distinctiveness;

g) that the registration is obtained fraudulently and by material mis-statements of user;

h) that the impugned registration exists on the register without sufficient cause and is wrongly remaining in the register and

i) that the applicant is the person aggrieved as the suit has been instituted before the District Court Kanpur.

On the above grounds, the applicant prayed that the mark be removed from the register.

In the above rectification application, notice was sent to the respondent and the same was replied stating that the sole proprietor is deceased and

accordingly, the legal heirs were impleaded as necessary parties to the proceedings. Subsequently, notice was also issued to the legal heirs of the

deceased proprietor. There was no representation on behalf of the respondents and the matter was heard as ex-parte.

We have heard Shri Ambrish Kumar, counsel for the applicant at the Circuit Bench sitting at Delhi on 13th October, 2008 and there was no

representation on behalf of the respondents.

The learned Counsel for the applicant's main contention was that they had adopted the mark in the year 1999 and had been using the same

continuously without any interruption whatsoever. He also submitted that the respondent's mark was not distinctive. He further submitted that the

respondent's application was dated 2001 which itself proves that the respondent were subsequent in use. The applicant's therefore prayed that being a

prior user and adopter of the mark, their rights are to be protected and that in the interest of the purity of the Register, the impugned mark to be

removed from the Register.

We have heard the counsel for the applicant and have perused the pleadings and documents filed in support of the application.

An application for rectification can be filed only by a person aggrieved. The courts have given liberal construction to the expression aggrieved

person. A trader dealing in the same class of goods to which the registered trade mark relate, or persons who are in some way or the other

substantially interested in having the mark removed from the register are persons aggrieved and include persons who oppose the application for

registration of the applicant. The test for such determination is propounded in Powell's Trade Mark 1894 (11) RPC 4. A person aggrieved includes the

rivals in the same trade who are aggrieved by the entry of the rivals mark in the register or person whose legal rights would or might be limited if the

mark remains on the register, he could not lawfully do that which, but for the existence of the mark on the register, he could lawfully do. The applicant

in the present case is carrying on business of printing and publishing of books as that of the respondents. The respondents have filed a suit for

infringement and that the impugned mark on the register is causing embarrassment to the applicant's business and hence the applicant is interested in

having the mark removed from the register. We therefore are of the view that the applicant is an aggrieved person and has the locus standi to

maintain this application for rectification.

The other issues involved in this case on hand is whether registration has been fraudulently obtained and is wrongly remaining on the register;

whether the respondents goods bearing the impugned trade mark is in use or not, whether the impugned registration is in contravention of the

provisions of Section 9 & 11 of the Act and whether the mark on the register is remaining without sufficient cause?

The applicant's contention as to registration obtained by fraud, only merely alleging fraud will not suffice but it must be pleaded and particulars

given. Shri K.S. Shavaksha on the law of fraud in his book on Trade & Merchandise Marks Act, 1958 (III Edition) at pages 147-148 has stated as

under:

Fraud - If the original registration has been obtained by fraud, as for instance by wrong statements deliberately made in affidavits submitted to the

Registrar, the mark can be removed from the register. Simply alleging fraud is not sufficient for the absence of particulars, the application would be

incompetent. Re: Om Prakash -Zenith Colour Trading Co. v. Taherally (1956) Bom LR 912 P.916. It has to be noted that the fraud, referred to in this

section, is fraud committed before registration. Fraudulent use of a registered mark after registration is subject to a different principle of law. Contrary

to the facts of the application on hand, it might be a fraud for a person to procure the registration of a trade mark which he knows is in use by another

trader or by his principal who is a foreign manufacturer. Gynomin (1961) RPC 408 at 414.

An applicant for rectification must prove by adducing evidence that the registration has been obtained by fraud and is wrongly remaining on the

register without sufficient cause. The applicant has neither given any particulars of fraud in the pleadings too nor produced any evidence in support

thereof. We therefore reject the contention that the registration has been obtain by fraud and is wrongly remaining on the register without sufficient

cause.

The applicant has averred that the registration is in contravention of the provision of Section 9 & 11 of the Act. The counsel has submitted that the

impugned trade mark is not distinctive and that the marks being identical, confusion and deception is possible. The applicant has not produced any

evidence nor has the applicant substantially pleaded in its application. An applicant, who comes to court for rectification should prove his contention,

which burden is only on the applicant. The applicant has miserably failed to prove the same and so the same is also rejected.

The issue of non user though has been generally pleader was also not been substantiated with documentary proof and hence rejected.

The other main contention was that the applicant is prior in use and adoption of the impugned trade mark EASY NOTES. The applicant had

produced certain cash bills, advertisements along with the application for rectification. We have perused the same. It is the case of the applicant that

they had used the trade mark since April, 1999 which is so pleaded in the application as well mentioned in the application for registration as seen from

the trade mark journal. On perusal of the Cash/Credit Bill the date is 18.1.1999 at page 26, 20.1.1998 at page 28 of the typed set of papers, it only

raises a doubt in the mind of the Appellate Board. When the date of user is since April 1999 then how come cash bills dated 18/1/1999 and 20/1/1998

will come into existence. It is also seen that the cash bills up to 1999 are hand written and subsequently are in printed forms. The applicant has not

come to court with clean hands and the documents create doubt as to its validity. Even though, we did not have the benefit of hearing the other side,

going by the records placed before us, we are not inclined to accept the applicant to be the prior user as the documents are not clear. Hence, we

reject the contention of the applicant as to prior user and adopter of the trade mark.

Having rejected all the contentions of the applicant, we have no hesitation in dismissing the application for rectification. ORA/4/2006/TM/DEL is

dismissed. There shall be no order as to costs.