Harry's Holdings Ltd. vs Subhash Goel And Ors.

Manmohan Singh, J

The Applicant has filed the above mentioned application for the removal of trade mark Harry's bearing No. 1355610 in class 42 in the name of Mr.

Subhash Goel from the register or rectification of register under section 57/125 of the Trade Marks Act, 1999.

Facts of the case as per Applicant pleadings:-

The Applicant is accompany duly incorporated under the laws of Singapore on July 20th, 1991 and is an internationally renowned corporation, engaged

in providing restaurant services, including but not limited to managing and operating pubs, restaurants and coffee shops, providing expertise relating to

provision of food and drink.

2.1 The said trade mark was adopted by the Applicant in the year 1991 when the Applicant Company was incorporated. Thereafter, in the year 1992,

the first HARRY'S outlet was opened in Singapore. The said trade mark has since then been used consistently without any break, as the trading name

and style of pubs, restaurants/coffee shops set up, organized, managed or controlled by the Applicant in various parts of the Singapore. Presently, the

Applicant operates twenty six premium pubs, gastrobars, clubs, cafes and restaurants throughout Singapore. The Applicant today is one of the leading

hospitality service providers.

Additionally; one of the Applicant's HARRY'S outlets, is also located at the Changi Airport Singapore since the year 2004. Millions of travelers from

all Over the world transit through the Changi Airport and hence, would be aware of the Applicant's chain of bars and pubs. Further, Singapore is a

very popular international tourist destination, particularly for the people on the Asian Subcontinent and is visited by millions of people every year. Also,

since our client's HARRY'S chain of pubs and bars is an iconic destination in Singapore, majority of the tourists would have dined and/or visited the

Applicant's outlets in Singapore.

2.2 Further, the Applicant has extensively advertised and has also done extensive media coverage through the international press and media of the

trade mark 'HARRY'S' for its pubs and bars. With the growing popularity of the trade mark 'HARRY'S', the Applicant launched a website being

www.harrys.com.sg; As the name suggests, the said website is solely and exclusively dedicated to the HARRY'S brand only and provides extensive

information on the same and is accessible worldwide including India. Select printouts from the Applicant's website being www.harrys.com.sg are

annexed herewith as Annexure E. Select advertisements featuring the Applicant's trade mark in the international press are annexed herewith as

Annexure F.

2.3 Due to such extensive advertising the turnover of the Applicant from the establishments operated and managed by the Applicant using the trade

mark HARRY'S has been on the rise every year. The turnover and the promotional expenses of the Applicant worldwide for its trade mark

HARRY'S for the years 1997 till 2011 is mentioned herein below:

By virtue of such extensive sales and sales promotion activities, the establishments being operated under the trade mark HARRY'S have become

synonymous with the Applicant herein and has acquired distinctiveness. Members of the public and those of the trade are aware of the said trade

mark and associate the same with the Applicant and none else. The said brand is beyond doubt well-known in India and internationally.

2.4 On account of such extensive use, the Applicant's trade mark has acquired such distinctiveness, goodwill, reputation and fame that the use of any

identical or deceptively similar mark/or name by another trader not connected to the Applicant, in respect of any goods whatsoever, is bound to cause

confusion and deception in the minds of the consuming public and members of trade leading them to falsely believe that such third party goods and/or

services originate from the Applicant or have some nexus or affiliation or connection with them, where one exists.

2.5 Further, the Applicant's HARRY'S trade mark has won various awards for its excellence in provision of hospitality services such as the ""Tourism

Award for Night-Spot of the Year"" in 1994, ""Newsweek International's World's Best Bar Award"" in 1995, ""The Great Heineken Bar of the World

Award"" in 1999, ""The Heineken Starbar Award"" in 2002, ""The Singapore Promising Brand Award"" in 2005, and the ""Arts Supporter Award"" from

2004 to 2009, ""The Singapore Service Star Award"" in 2009 and ""Asian Gastronomic Awards of Excellence"" in 2011. The Applicant is also engaged in

the provision of hospitality services through its other restaurants being Marrakesh, Mirchi (Taste of India) The Rupee Room, Le-Chocolat Café.

The Club Hotel and Yin-Yang. These restaurants are also located in Singapore and enjoy immense reputation and goodwill among the general public.

2.6 The Applicant also has registrations for the subject mark in various countries across the world including Singapore, USA, Thailand, New Zealand,

Malaysia & the International Registration designating South : Korea & Vietnam. Copies of the registration certificates in these countries are annexed

herewith as Annexure J.

2.7 The Applicant's trade mark HARRY'S label is also registered in India hearing number 1544998 in class 42 dated March 30, 2007. A copy of the

registration certificate of the said mark is annexed herewith, as Annexure K. The Applicant is also in the process of entering the Indian market with

its trade mark HARRY'S for hospitality services.

2.8 It is submitted that the Applicant recently came to know about the impugned mark HARRYS bearing No. 1355610 in Class 42 in the name of the

Respondent while conducting a search of the Trade Marks Register for the trademarks HARRY'S .

2.9 The impugned mark has been wrongly registered. It is further submitted that the registration of the impugned mark by the Respondent No. 1 is

erroneous and is against established principles of law.

Grounds raised by the Applicant for removal of Trademark:-

The mark HARRYS was wrongly registered. The Respondent has adopted the impugned mark HARRYS which is identical to the Applicant's earlier

trade mark HARRY'S. Both the trademarks are identical and this will lead to a likelihood of association of the Respondent No. 1's trade mark with the

Applicant's trade mark when in fact there is no such association exists.

3.1 The Respondent No. 1 has wrongfully conceived and adopted the impugned trade mark HARRYS with an intention to ride upon the goodwill and

reputation of the Applicant's famous trade mark. Further, the Respondent No. 1 has obtained the registration of the impugned mark for goods and

services which are identical and/or deceptively similar to the goods and services of the Applicant's earlier trade mark and would lead to confusion and

deception in the minds of the purchasing public as to the origin of the Respondent No. 1's trade mark. The Applicant submits that by adopting identical

trade mark with respect to similar goods and services clearly displays the Respondent No. 1's unlawful intent to trade upon the goodwill and reputation

associated with the Applicant's famous trade mark.

3.2 The registration of the impugned mark is contrary to Section 9(2)(a) of the Act in as much as the Respondent No. 1's impugned mark has been

adopted with an intention to deceive and cause confusion in the minds of the purchasing public into making them believe that the goods and services of

the Respondent No. 1 are in some manner connected or otherwise associated with the Applicant and its services.

3.3 The registration of the impugned mark is contrary to the provisions of Section 11(1) of the Act in as much as the impugned mark is identical to the

Applicant's earlier trade mark HARRY'S.

3.4 The impugned mark is identical to the earlier trade mark of the Applicant and that the adoption and use, if any, of the impugned mark by the

Respondent No. 1 would take unfair advantage of, and be detrimental to, the distinctive character and reputation of the earlier mark of the Applicant.

Therefore the registration of the impugned mark is contrary to Section 11(2) of the Act.

3.5 The registration of the impugned mark is contrary to the provisions of Section 11(3) of the Act in as much as any use of the impugned mark by the

Respondent No. 1 amounts to passing off its goods as and for the goods of the Applicant.

3.6 The Respondent No. 1 has adopted the impugned mark with mala fide intention of riding upon the fame, goodwill and reputation of the Applicant.

The bad faith of the Respondent is evident from by adopting the impugned mark which is identical to the earlier trade mark of the Applicant and

additionally with respect to similar goods and services. Therefore, the registration of the impugned trade mark is contrary to the provisions of Section

11(10) of the Act.

3.7 The adoption of the impugned mark by the Respondent No. 1 is not honest and the registration for the impugned mark is therefore contrary to

Section 18(1) of the Act.

The respondent No. 1 has filed the counter-statement inter-alia raising the issue of limitation and has derived the averment made in the rectification

petition.

The evidence of continuous user has been produced. It is also not denied that the Applicant is a reputed trademark. In fact it appears that the entire

counter statement is vague and his concocted statements are made.

It appears from record that there is no concrete evidence has been produced by the respondent No. 1 about the continuous user of trademark in

question. Thus, it is clear that the Respondent No. 1 has made no bona fide, use of the impugned mark whatsoever in relation to the goods for which

the registration has been obtained. It is also submitted that according to the provisions of Section 47 of the Trade marks act, 1999 a period of five

years and three months has elapsed since the time when the impugned marks proceeded to registration, but till date no use whatsoever has been made

by the Respondents, thus making the impugned mark liable to removal on the grounds of non-use.

The relevant portions of Section 47 of the 1999 Act are set out below:-

Removal from register and imposition of limitations on ground of non-use:-

(1) A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in

the prescribed manner to the Registrar or the Appellate Board by any person aggrieved on the ground either--

(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to

those goods or services by him or, in a case to which the provisions of section 46 apply, by the company concerned or the registered user, as the case

may be, arid that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time

being up to a date three months before the date of the application; or

(b) that up to a date three months before the date of the application, a continuous period of, five years from the date on which the trade mark, is

actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof

in relation to those goods or services by any proprietor thereof for the time being:

(c) An applicant shall not be entitled to rely for the purpose of clause (b) of sub-section (1) or for the purposes of sub-section (2) on any non-use of a

trade mark which is shown to have been due to special circumstances in the trade, which includes restrictions on the use of the trade mark in India

imposed by any law or regulation and not to any intention to abandon or not to use the trade mark in relation to the goods or services to which the

application relates.

In the matter of Hardie Trading Ltd. and Anr. v. Addisons Paint and Chemicals Ltd. - 2003 (27) PTC 241 (SC), the Supreme Court had explained

that three essential conditions are required to be satisfied before removal of a registered trademark is directed. First, that the application has been

made by a person aggrieved; second, that the trademark in question has not been used by the proprietor for a continuous period of at least five years

and three months prior to the date of application; and third, that there are no special circumstances which would justify the non-use of the trademark in

question. The Supreme Court had also explained that the aforesaid conditions must be established seriatim. The relevant extract of the said judgment

is set out below:-

Thus, before the High Court or the Registrar directs the removal of the registered trademarks they must be satisfied in respect of the following:

(1) that the application is by a ""person aggrieved"";

(2) that the trade mark has not been used by the proprietor for a continuous period of at least five years and one month prior to the date of the

application;

(3) there were no special circumstances which affected the use of the trade mark during this period by the proprietor.

The onus to establish the first two conditions obviously lies with the applicant, whereas the burden of proving the existence of special

circumstances is on the proprietor of the trademarks. These conditions are not to be cumulatively proved but established seriatim. There is no question

of the third condition being established unless the second one has already been proved and there is no question of the second one even being

considered unless the High Court or the Registrar is satisfied as to the locus standi of the applicant.

There have been no special circumstances in trade as enshrined in Section 47(3) restricting the use of the impugned mark in India in relation to the

goods for which the impugned mark stands registered nor have there been any restrictions imposed by any law or any other statutory regulation to the

knowledge of the Applicant. In Hardie Trading Ltd. (supra) the apex Court, in its discussion has held that on 'special circumstances' stated that the

proprietor could show as Hardie had done in this case, that there was no intention to abandon the trademarks. If that is established, it is a complete

defense to the action. Keeping in this in mind, here in the present case, the Respondent has failed to establish such defence. It is further submitted that

the Respondent has made no attempts to use the trademark.

The Courts, have defined special circumstances, as ""some external forces as distinct from voluntary acts of an individual"". But in the present case the

Respondents herein have not taken any plea of any economic impracticality or any other plea whatsoever, to prove 'special circumstances' in his

favour.

The Applicant has done extensive Internet search was carried out however, no mentioned of the impugned mark was found. It is further submitted

that the search also was confirmed that the impugned mark has not been used for a continuous period of more than five year. In the case of American

Home Products v. Mac Laboratories Private Limited on 30 September, 1985 : 1986 AIR 137, 1985 SCR Supl. (3) 264 : 1986 (6) PTC 71 (SC), the

Supreme Court held, that--

Under both these clauses the burden of proving that the facts which bring into play clause (a) or clause (b), as the case may be, exists is on the

person who seeks to have the trade mark removed from the Register. Thus, where there has been a non-user of the trade mark for a continuous

period of five years and the application for taking off the trade mark from the Register has been filed one month after the expire of such period. The

person seeking to have the trademark removed from the Register has only to prove such continuous non-user and has not to prove the lack of a bona

fide intention on the part of the registered proprietor to use the trademark at the date of the application for registration. Where, however, the non-user

is for a period of less than five years, the person seeking to remove the trade mark from the Register has not only to prove non-user for the requisite

period but has also to prove that the applicant for registration of the trade mark had no bona fide intention to use the trade mark when the application

for registration was made. (para 34)

If we adopt the analogy propounded by the apex court than in the present case, the Applicant has to only show that there was no bona fide

intention to use the impugned mark by the Respondents herein. The fact of the matter is that there is no evidence of use of the impugned mark relied

on or filed by the respondents, clearly establishes the continuous non-use by the Respondents.

The Respondents has wrongfully conceived and adopted the impugned mark HARRYS only to ride upon the goodwill and reputation of the

Applicant. The impugned mark is identical to the earlier trademark of the Applicant and that the adoption and use (if any) of the impugned mark by the

Respondents would be detrimental to the distinctive character of the earlier trademark of the Applicant. The Applicant has invested large amounts on

extensive advertising and promotional activities, which has led to high volumes of sales and turn over.

The Applicant Company was duly incorporated under the laws of Singapore on July 20, 1991. It is the Applicant herein who was the first user of

the trademark HARRYS. The trademark was adopted prior to the Respondents in the year 1991. It is submitted that the Respondents have not

disputed this fact.

In the year 1992, the first HARRY'S outlet was opened in Singapore and the trademark has been in continuous use since then. The Applicants

company is an internationally renowned corporation engaged in the providing restaurant service including not limited to manage and operating pubs,

restaurants and coffee shops, providing expertise relating to the provision of food and drink. A copy of the memorandum and articles of the association

is annexed as Annexure A with the petition. It is in fact, the Applicant herein who has acquired substantial goodwill and reputation in and to the

trademark HARRY'S.

In the case of Neon Laboratories Ltd. v. Medical Technologies Ltd., (2016) 2 SCC 672, in this case, the defendants sought registration for

'ROFOL' in 1992, and were granted registration for the trademark in 2001. However, the Plaintiff initiated use of the trademark TROFOL' in 1998.

Although the defendant filed for registration and was grant the same in 1992 (as against 1998), the use by the defendant remained dormant for twelve

years. The plaintiff in the meantime built up substantial goodwill in the market for 'PROFOL'. The Supreme Court held that ""At present stage, the

argument in favour of the Defendant-Appellant that we find holds more water is that in both Milmet and Whirlpool, as distinct from the case before us,

the prior user of the successful party predated the date of application for registration of the competing party.

It further held that, ""All that we would say in the present Appeal is that since the Plaintiff-Respondents have alleged, and have prima facie supported

with proof that they had already been using their trademark well before the attempted user of an identical or closely similar trademark by the

Defendant-Appellant, the former would be entitled to a temporary injunction, in light of the above mentioned first in the market' test. We find that the

Plaintiff: Respondents have made out a prima facie case. The two other factors in an interim injunction, namely the balance of convenience and an

irreparable loss, are both in favour of the Plaintiffs Respondents, given the potential loss of goodwill and business they could suffer should an injunction

be denied. Hence, it light of the prevalent law, Section 47 strings from the same strain and postulates the possibility of a registered mark being taken

off the register by an aggrieved person on the ground that for a continuous period of 5 year and three months from registration, there is no bona fide

use.

In Corn Product v. Shangrila Food Products Ltd. AIR 1960 SC 142 : 1950-2000 (22) PTC (Suppl) (1) 13 (SC), wherein the Supreme Court held

that the presence of a mark on the register does not prove the user at all. It is possible for the mark been registered but not used. The Hon'ble Court

held that in order to succeed that appellant must establish user of the mark prior in point to the respondent -- ""Thus, the law is pretty well-settled that

in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the

respondents.

The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action passing off and the mere

presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was

registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user

of the registered trademarks.

It is on record that at the time of filing the present cancellation petition, the Applicant was operating twenty-six premium pubs, gastro bars, clubs,

cafes and restaurants throughout Singapore. Additionally, the Applicant also opened HARRY'S outlet in the Changi Airport Singapore since the year

2004. It is submitted that millions of traveller from across the world including India transit through the Changi Airport and therefore would be aware of

the Applicant's chain of bars and pubs. Singapore being a very popular destination for Indian travellers, the probability of trans-border reputation and

spill over is clearly apparent.

In the case of Milmet Oftho Industries v. Allergen Inc. (Supreme Court 2004), the Supreme Court based its decision on the Cadila and Whirlpool

judgment and was of the opinion that the ultimate test for passing off is who is first in the market. Here the applicants were an Indian company, which

had applied for registration for their mark (1993). The respondents had filed a suit for passing off on the basis of their prior use (1992) of the mark

OCUFLOX. They had attained registration in other countries.

In the present case, the marks were the same, and the mere fact that the respondents have not been using the mark in India would be irrelevant if

they were first in the world market. On the basis of the material showing prima facie the respondents advertised before the appellants entered the

flied, was enough. The Hon'ble Court held that ""It must also be remembered that nowadays goods are widely advertised in newspapers, periodicals,

magazines and other media which is available in the country. This results in a product acquiring a worldwide reputation. Thus, if a mark in respect of a

drug is associated with the Respondents worldwide it would lead to an anomalous situation if an identical mark in respect of a similar drug is allowed

to be sold in India.

Further the Hon'ble Court held, that ""Thus the ultimate test should be who is first in the market. In the present case, the marks are the same. They are

in respect of pharmaceutical products. The mere fact that the Respondents have not been using the mark in India would be irrelevant if they were first

in the world market. The Division Bench had relied upon material which prima-facie shows that the Respondents product was advertised before the

Appellants entered the field. On the basis of that material the Division Bench has concluded that the Respondents were first to adopt the mark. If that

be so then no fault can be found with the conclusion drawn by the Division Bench.

The Applicant in the present case has extensively advertised and done extensive media coverage through the international press and medial for

their earlier trademark HARRYS. This can be further evidenced by their website being www.harrys.com.sg. This website is dedicated to the

HARRYS brand and provides information on its services which is can be accessed from anywhere in the world including India.

The impugned mark was applied on a 'proposed to be used basis on May 6, 2005 and the Respondents has till date not taken any steps whatsoever

to use the impugned mark, but simply registered the same with mala fide intentions to block the Register. The Respondents have obtained the

registration of the impugned mark for the goods and service which are identical and/or deceptively similar to the goods and service of the Applicant's

earlier trademark, which would lead to confusion and deception in the minds of the purchasing public.

With regard to the respondents allegations towards the Applicant's contrary statement in the year 2008. It a settled principle in law, should not and

ought not to suffer for the mistake of his counsel. An opportunity may be granted to the Applicant to present his matter clearly before the tribunal

today, and that it is that any statement made with regard to the label mark and the impugned mark was by the erstwhile attorneys, and not the

Applicant themselves. The statements made were at no time the intent of the Applicant. The Applicants herein cannot be held to suffer for the

mistakes made by their erstwhile attorneys. In the case of Rafiq and Ors. v. Munshilal and Ors., AIR 1981 SC 1400] the Supreme Court held that no

fault of the party who having done everything in his power and expected of him should suffer because of default of his advocate. It was held that"" The

problem that agitates us, is whether it is proper that the party should suffer for the inaction, deliberate omission or misdemeanors of the agent. The

answer obviously is in the negative.....However, we cannot be a party to an innocent party suffering injunctive merely because his chosen advocate

defaulted.

Even Madras High Court, in the case of Edelweiss Asset Reconstruction v. The Presiding Officer (C.R.P. (PD) No. 2240 of 2016 the Court held

based on the Supreme Court's decision in Rafiq and Ors. v. Munshilal and Ors., that ""it is trite law that doe the mistake committed, party should not

suffer"". The Court, keeping in view the nature of the order, consequences and conduct of party, held that ""but for the mistake or inaction on the part of

the counsel, the respondent should not be made to suffer for the fault of others.

In light of the settled, law as enumerated above, if the Applicant did not take a plea at an earlier point in time (examination stage in a different

application), it would not disentitle him from taking the plea in the present proceedings.

Thus we are of the view that the impugned mark. HARRYS of the respondent No. 1 is wrongly remaining on the Register of Trade Marks. The

impugned mark HARRYS bearing registration number 1355610 is liable to be expunged from the Register of Trade Marks under the provisions of

Section 57(2) of the Trade Marks Act, 1999 so as to maintain the purity of the Register of Trade Mark. The impugned entry made in the Register as

the entry has been wrongly made and wrongly remains on the Register. Therefore, the Applicant is a ""person aggrieved"" by the registration of the

impugned mark under Section 57. Impugned mark has been entered in the Trade Marks Register without a sufficient cause and is thus wrongly

remaining on the Register.

In view of the above, we hereby expunge the registered trade mark bearing number 1355610 from the register.

Copy of order sent to respondent No. 2 for taking necessary steps for removal.

No Costs.