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Judgment
Raghbir Singh, J
Petition under sections 45, 56 and 107 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) was filed in the High
Court of Delhi as C.O.26/95 and the same has been transferred to this Board in terms of section 100 of the Trade Marks Act, 1999 and numbered as
TRA/146/04.
Petitioner is a partnership firm consisting of Shri Dwarka Nath Jain and his son Shri Kul Bhushan Jain. The said partnership agreement was entered
into on 8.8.1979. The present petition has been filed by Shri Kul Bhushan Jain on behalf of the partnership firm. According to the petitioner, in the year
1970 Shri Dwarka Nath Jain conceived and adopted the trade mark 'JAMCO' in respect of radios, transistors and tape recorders and the business at
that time was being carried out under the name of the firm Jain Music Corner. Shri Dwarka Nath Jain, Shri Kul Bhushan Jain and Shri Anil Bhushan
Jain (Respondent No. 1) used to work together in the said business in the same premises and the trade mark 'JAMCO' was used in the family
business. Shri Anil Bhushan Jain, Respondent No. 1 is another son of Shri Dwarka Nath Jain. As the business grew, another firm in the name of
JAMCO RADIOS was established with Shri Dwarka Nath Jain and Shri Kul Bhushan Jain as the partners in the same premises. According to the
petitioner till 1983 the trade mark 'JAMCO' was being used by both the petitioner and respondent No. 1 and the same family business was carried out
from the same premises. In the year 1983 it was considered to register the trade mark 'JAMCO'. Respondent No. 1 suggested to his father and
brother (Partners of petitioner) that as the firm 'JAMCO RADIOS' already possess the word / trade mark 'JAMCO' as its predominant and
memorable part and portion, it is advisable that the petitioner firm shall be registered as a firm and application for registration of the trade mark
'JAMCO' is filed in the name of the firm JAIN MUSIC CORNER. In view of the pleasant familial ties and business relations, the petitioner could not
understand the cunning move of Respondent No. 1. The petitioner firm was registered by way of declaration before the Sub Registrar's Office and
the petitioner firm had been using the trade mark 'JAMCO' and firm name JAMCO RADIOS ever since 1979 to the full knowledge of Respondent
No. 1 and from the same premises in which the Respondent No. 1 is situated. The same packaging was being used by both the firms, that is, M/s
JAMCO RADIOS and M/s JAIN MUSIC CORNER. But, according to the petitioner copyright in the packaging vested in both the parties in view of
the use by both the firms. Respondent No. 1 served a cease and desist notice dated 18.7.1995 on the petitioner to stop using the trade mark 'JAMCO'
as also the firm name JAMCO RADIOS. The petitioner made an inspection of record of Registrar of Trade Marks and found that the impugned mark
has been registered in the name of Respondent No. 1 only. The petitioner has submitted that the impugned mark was not distinctive of the goods of
the Respondent No. 1 at the commencement of the present proceedings. The mark was obtained by exercise of fraud. The mark was the joint
property of Respondent No. 1, his father and brother. Respondent No. 1 did not disclose to the Registrar that the petitioner firm was also carrying on
the same business under the same trade mark and firm name. The impugned mark was registered in contravention of provisions of Section 11 of the
Act on the date of application of impugned mark. More than a continuous period of five years and one month has elapsed during which the impugned
mark was registered, but there was no bonafide use of the same. There had not been any bonafide intention to use the mark in respect of goods for
which it was registered.
In reply by respondent No. 1 to the petition filed by the petitioner, all the relevant submissions made by the petitioner have been controverted.
Respondent No. 1 has submitted that his proprietorship firm was established in the year 1970. Respondent No. 1 was registered with the sales tax
authorities in 1970. The firm since the year 1970 continues to be a proprietorship concern with Shri Anil Bhushan Jain proprietor thereof. The trade
mark ' JAMCO' was coined, invented, adopted in 1970 by Respondent No. 1. Respondent No. 1 has not authorized any person to use the trade mark
'JAMCO' in a similar manner or deceptively similar manner whosoever, including the petitioner. The trade mark 'JAMCO' was registered under the
Act vide registration No. 400404 in class9 and the same was renewed and is still valid and subsisting. The petitioner and its associates started using
the mark as 'ORIGINAL JAMCO'. The petitioners have also put the logo 'R' in a circle over the trade mark 'JAMCO' for their products with the sole
and exclusive object of fraudulent intentions of trading upon the good will of Respondent No. 1.
The petitioner filed his rejoinder dated 11.3.1996 controverting the material submissions of Respondent No. 1
Shri Dwarka Nath Jain, partner of the petitioner firm filed an application dated 12.3.1996 before the High Court of Delhi requesting to implead him
as a party in the proceedings. Accordingly the High Court was pleased to order on 30.7.1997 impleading Shri Dwarka Nath Jain as Respondent No. 3.
The material averments of the written statement filed by Respondent No. 3 are that he had not authorized Shri Kul Bhushan Jain, the petitioner to act
on behalf of the petitioner firm to sign, verify and file the petition. He submitted that the firm of Respondent No. 1 M/s JAIN MUSIC CORNER was
started in the year 1970 and the trade mark 'JAMCO' coined in 1970 had been continuously, uninterruptedly, openly and extensively used by
Respondent No. 1 Shri Anil Bhushan Jain, proprietor of JAIN MUSIC CORNER. Respondent No. 1 Shri Anil Bhushan Jain used to issue bills for sale
of goods under the trade mark 'JAMCO' in relation to the firm of the petitioner also. It was also submitted that his son Shri Kul Bhushan Jain, the
petitioner herein started using the trade mark 'JAMCO' with the word ""THE ORIGINAL JAMCO"" and also started using the symbol of ""R"" in the
circle. Respondent No. 3 specifically denied that till 1983 the trade mark 'JAMCO' was being used both by the petitioner and respondent No. 1 and
respondent No. 1 played a trick and got the registration done in his favour. He has submitted that the petitioner firm had no right to use the trade mark
'JAMCO'. In spite of his best efforts, he has not been able to prevent his son Shri Kul Bhushan Jain the petitioner herein from infringing the copyright
and trade mark of Shri Anil Bhushan Jain, respondent No. 1 herein. He has submitted that though the premises of petitioner and respondent No. 1 are
the same , but there is a partition between the two firms and thus goods of both the firms are kept separate and there is no clash, control or confusion
with respect to the material in the impugned shop. Respondent No. 3 has not authorized Shri Kul Bhushan Jain, petitioner herein to contest and file any
cases against respondent No. 1. There is no illegality in the registration of trade mark 'JAMCO' in favour of respondent No. 1.
The petitioner filed his rejoinder on 9.11.2001 in reply to the written submissions of respondent No. 3. Petitioner controverted all the material
averments of respondent No. 3 . He submitted that respondent No. 3 being only a sleeping partner and is neither liable for any losses and being
entitled only to benefits, does not conduct, carry on or interfere in the business affairs of the petitioner. In view of that the petition filed by Shri Kul
Bhushan Jain is maintainable in law.
The petition was taken up for consideration by the Board in its sitting held at New Delhi on 16.2.2005. Learned counsel Shri M.K.Miglani appeared
on behalf of the petitioner and learned counsel Shri Vijay Pal Dalmia appeared on behalf of respondent No. 1.
Learned counsel for the petitioner at the outset took us to annexure B of the affidavit evidence filed by him in support of the petition wherein a
declaration dated 10.2.1986 filed by Shri B.L.Dalmia, advocate is placed, submitting that Shri Kul Bhushan Jain and Dwarka Nath Jain are the sole
and exclusive owners, inventors and adopters of the trade name 'JAMCO RADIOS' and that the said declaration of ownership is registered under the
Indian Registration Act, 1908. The said declaration by Shri Dalmia, advocate bears witnessing attestation by respondent No. 1. Shri Dalmia happens to
be the legal adviser of respondent No. 1. Learned counsel for the petitioner submitted that the petitioner firm used the trade mark 'JAMCO' and firm
name 'JAMCO RADIOS' ever since 1979 to the full knowledge of respondent No. 1 and in the same premises in which respondent No. 2 is situated.
He drew our attention to copies of certain documents placed at annexure 'C' of the affidavit in support of the petition filed by him. Copy of letter
issued by the Delhi Sales Tax placed at page 16 certifies that business known as 'JAMCO RADIOS' is situated at 458, Lajpat Rai Market, Delhi.
Similarly there is another document dated 29.8.1990 from the same department mentioning M/s 'JAMCO RADIOS' being at 458, Lajpat Rai Market,
Delhi. Certificate dated 24.2.1982 from Canara Bank certifies that Shri Kul Bhushan Jain is operating current account of 'JAMCO RADIOS' in 458,
Lajpat Rai Market wherein Shri Kul Bhushan Jain is a partner in the said firm. The registration certificate of the establishment issued by the
Government of Delhi placed at page 19 of the typeset certifies that Shri Dwarka Nath Jain and Kul Bhushan Jain as the occupier / employer of
'JAMCO RADIOS' at 458, Lajpat Rai Market. At pages 20-23 are documents relating to registration of the petitioner firm for sales tax purposes.
Document at page 22 is the surety bond executed by both the partners, the father and son Shri Dwarka Nath Jain and Shri Kul Bhushan Jain in favour
of the sales tax department, Delhi. Learned counsel for the petitioner took us to certain documents placed at page 26-32 which are in the nature of
municipal bills, registrations with the trade organizations which indicate that 'JAMCO RADIOS' as a firm was in existence at 458, Lajpat Rai Market,
Delhi. At page 44 is a letter dated 29.7.1985 in the name of 'JAMCO RADIOS' mentioning ""JAMCO RADIOS"" as being at 458, Lajpat Rai Market ,
Delhi to the agent, State Bank of Hyderabad, Vijayawada. The said letter bears signature of respondent No. 1. The contention of the learned counsel
for the petitioner is that the business activity in both the firms was being done interchangeably. Learned counsel for the petitioner took us to various
bills placed at page 45 onwards wherein the bills pertaining to 'JAIN MUSIC CORNER' have been signed by Shri Kul Bhushan Jain, the petitioner
herein. Then he took us to various bills placed from page 55 onwards in the name of 'JAMCO RADIOS' which have been signed by respondent No. 1
which goes right up to the year 1993. He then took us to documents placed at page 154 being an expert opinion testifying that the various documents
pertaining to 'JAIN MUSIC CORNER' and 'JAMCO RADIOS' examined by him bears the signatures of the same persons. Then the learned counsel
for the petitioner took us to partnership deed executed between the father and son of the petitioner which bears the signature of the respondent No. 1
as a witness. In conclusion the learned counsel for the petitioner submitted that the trade mark all along had been the joint property. The petitioner had
been signing bills in the name of respondent No. 1 and similarly respondent No. 1 had been signing the bills of the petitioner. He submitted that either
the mark be taken out of the Register under rectification or the petitioner and respondent No. 2 both be declared as co-owners of the mark.
Learned counsel for respondent No. 1 submitted that all along these have been two separate shops bearing the same number, the partition having
been done in between. There had never been common stocks as argued by the learned counsel for the petitioner. There had been distinct and
separate sales tax registrations. He drew our attention to the counter affidavit in evidence filed by respondent No. 1 and the documents attached
thereto. He took us to pages 5 and 6 in relation to the sales tax registration of the firm of respondent No. 1. It is a declaration made in form ST-11
dated 30.11.70 testifying that JAIN MUSIC CORNER is situated at 458, Lajpat Rai Market, Delhi with Shri Anil Bhushan Jain as the proprietor
thereof. Another document is in the nature of licence under the Central Excise Rules 1944 to manufacture goods and the same is dated 20.3.1972 and
has been further renewed successively to 2.11.1974. He pointed out that the marks being used are distinct. The mark of the respondent No. 1 is as
depicted in copy of bill placed at page 45 of the documents in evidence filed by the petitioner which is word per say 'JAMCO' and the mark of the
respondent No. 1 is as shown in logo at page 123 of the documents filed by the petitioner which deceitfully mentions the registration as 400404 and it
does not belong to the petitioner. Thus the petitioner's goods suffer from falsehood and deceit. Reverting to the arguments of learned counsel for the
petitioner that a declaration signed by a counsel who is the legal advisor of respondent No. 1 to the effect that the petitioner are the proprietors of the
trade mark 'JAMCO', the learned counsel for respondent No. 1 said that such a declaration is not a declaration creating any rights in favour of the
petitioner. Respondent No. 1 cannot be held responsible for it. In any case the trade mark application of respondent No. 1 was not filed by the said
counsel. Learned counsel for respondent No. 1 took us to documents placed at pages 1-3 which are in the nature of legal user certificate issued by the
Trade Marks Registry in favour of respondent No. 1
In reply, the learned counsel for the petitioner controverted the arguments of the learned counsel for respondent No. 1. He submitted that there is
a common market practice to have common stocks and there is nothing in the pleadings filed by respondent No. 1 that respondent No. 1 being the
younger brother was functioning as a trainee and used to sign the bills of the petitioner, wherein the petitioner, his father and elder brother were
partners.
We have carefully gone through the pleadings filed at different stages by the petitioner, respondent No. 1 and respondent No. 3 and heard the
arguments made at Bar. It is clear from the partnership deed dated 8.8.1979 filed by the petitioner that shop No. 4, Lajpat Rai Market was allotted to
Shri Dwarka Nath Jain, father of the petitioner and respondent No. 1 by the rehabilitation department of Government of India. Shri Dwarka Nath Jain
pursued his business of trunks, locks etc., in the capacity of sole proprietor therein. In the same premises some where in 1970, the younger son Shri
Anil Bhushan Jain and the respondent No. 1 herein started the business of radio and radio parts etc., as proprietor of the firm JAIN MUSIC
CORNER. This is clearly borne out of the sales tax and central excise documents filed by respondent No. 1. It is only on 8.8.1979 when Shri Dwarka
Nath Jain, the father and Shri Kul Bhushan Jain, the elder brother entered into a partnership with a view to start the business of resale and
manufacturing of radios and transistors etc., in the name and style of M/s JAMCO RADIOS with effect from 8.8.1979 in about half portion of shop
No. 458, Lajpat Rai Market. These facts are clearly borne out of the partnership deed filed by the petitioner. It is apparent on the basis of documents
filed from both the sides that the same business of radios and transistors and parts thereof had been pursued by the petitioners as a partnership firm
and respondent No. 1 as a proprietary concern under the respective names. Respondent No. 1 filed application No. 400404 dated 21.1.1983 for
registration of mark 'JAMCO' which was advertised in the Trade Marks Journal and the user claimed there in was since 4.8.1970 for radio receiving
sets, transistorized radio receiving sets and tape recorders included in class 9. Accordingly certificate of registration was issued to him on 28.2.1992
effective from 21.1.1983. The earliest of the various bills submitted by respondent No. 1 is No. 6922 dated 20.7.1982. It bears 'JAMCO' as a trade
mark. The relevant CST number has been mentioned and CST has been charged while selling the products. It is true that both the petitioner firm and
the respondent No. 1 had been operating from the same shop and whether the same had been partitioned or not. The petitioner claims that the stocks
were common and both elder brother and the younger brother, the petitioner and respondent No. 1 used to sign the bill books of either of the firms on
or behalf of the respective firms. However, respondent No. 3 who is a partner in the petitioner firm and is the father of the petitioner and respondent
No. 1 and has submitted that there is a partition in the shop and the stocks are separate. However, it is a different matter that amongst brothers the
bills are signed for each other as and when required to deal with the customers of the respective firms. It is not uncommon in small establishments that
rigours of norms in the nature of legally authorized person competent to only signing the bills etc., are not followed. We are tempted to believe the
version of the father in this regard.
It is clear from the above that respondent No. 1 is in the business of radio, transistor etc., since 1970 from the same premises and has his own
proprietary concern with which in matter of ownership the petitioner or either of the partners having had nothing to do. However, it is a different
matter that, in view of the familial ties among brothers and during the subsistence of cordial relations, one can attend to the customers of the other in
his absence and for that matter sign the bills. This in no way impinges upon the ownership of the tangible and intangible properties of the respective
firms. In his pleadings the petitioner has submitted that the mark is not being used for not more than five years. However, there is nothing in the
arguments and evidence adduced to indicate that there had been such a non user. However, the petition was filed in the High Court on 2.8.1995 and
any period anterior to that by five years and one month should be seen for the purpose of non user of the trade mark. There are sufficient number of
bills submitted by the respondent No. 1 relating to the years 1993 to 1995 to indicate the actual use of the mark for the purpose.
In view of the above, we conclude that the petitioner has utterly failed in making out a case for the removal of the mark from the Register. The
petitioner has made an alternative plea that since the mark had been used by both the firms belonging to the same family operating from the same
premises in relation to the same goods, the petitioner be declared as the co-owner of the mark. We find ourselves in a situation of helplessness on this
score. Respondent No. 1 has been consistently the proprietor of the mark and he had been using it all along. Any use in between by the petitioner is
without authority of law for which respondent No. 1 has taken appropriate action which has prompted the petitioner to file this petition, a counter blast
action.
Accordingly, the rectification application fails and the petition is dismissed with no order as to costs.