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Judgment
Prabha Sridevan, J
1 . The appellant is aggrieved by the 2nd respondent's refusal to register the appellant's trademark ""NOVATECH"" in Application No. 852304 in Class
9 and allowing the opposition of the 1st respondent.
2 . The appellant applied on 21.4.1999 for registration of the word mark ""NOVATECH"", claiming user in respect of Cable TV accessories from 1st
April 1998. The Registry raised objections that it was descriptive and enclosed the examination search report dated 21.4.1999 containing similar words
and also that it has direct reference to the goods. Afterwards it was advertised in the Trade Journal dated 25th November 2003.
3 . The respondent raised its opposition on the ground that they had used the mark since 4.11.1992 for the same goods. They had applied in application
No 841168 in class 9 for the same mark. According to the respondent the appellant's mark was prohibited under Sections 11(1) and 11(3) of the Trade
Marks Act, 1999. They alleged that one of the partners of the appellant Shri. B.K. Suresh Babu was previously their employee. He was aware of the
user and reputation of the respondent's mark. The appellant's adoption is therefore dishonest and must not proceed to registration.
4 . The appellant filed its counter statement and claimed that they had adopted the mark NOVATECH in 1998 and were continuously using it since
then. They had built a reputation for high quality. All the allegations were denied.
5 . In evidence in support of the opposition, the respondents filed Exhibit-A, a specimen of their mark. They claimed that they were trading in goods
under the marks ""NOVATRON' and ""NOVATECH"", and furnished figures of their trade turnove from 1992-1993 to 1998-1999. According to
them,.the sales of NOVATECH mark accounted for 70% of the sales. They produced some invoices, the earliest of which is of the year 1995.
The appellant filed his evidence and they are :
Exhibit A -the auditor's certificate which shows the sales figures from the year 1998.
Exhibit B -the invoices in respect of the goods.
Exhibit C -the advertisement and promotional materials for Novatech
Exhibit D -Letters of customers in recognition of their satisfaction of the quality of appellant's goods.
They claimed that they had honestly adopted the mark, and denied that Shri. B.K.
Suresh Babu ever worked for the respondent.
7 . In reply the respondent claimed that all the partners of the appellant's firm had worked in the deponent's partner's firm NOVATRON. Then they
had formed this NOVATECH Communications. It was also alleged that the father of Shri. B.K. Suresh Babu was their Accounts Consultant.
Therefore the adoption was fraudulent.
8 . The impugned order was passed accepting the case of user from 1992 by the respondent and the allegation that the father of one of the partner
was the consultant in the opponent's firm and that a few of the partner of appellant had worked in the respondent's firm. So it was held that the
adoption was not honest.
The learned counsel for the appellant submitted that apart from the allegation that the partners had worked in the respondent's from there was no
proof. So the order was passed on the basis of no evidence. He submitted that the mere statement that the 70% of the sales figure represented sales
of NOVATECH will not be enough to prove the case of user. He submitted that the entire evidence of the appellant was ignored. He relied on AIR
1994 Sc 853,1998 PTC 18 (del), 2004 (28) PTC 550 (IPAB) and 2005 (30) PTC 113 (Del)
10 . The learned counsel for the respondent submitted that the deponent of the appellant's affidavit did not disclose his father's name only because that
would have revealed the truth. He submitted that the invoices produced by the appellant did not bear the name of the mark so they cannot be relied
on. The certificate of the detective agency engaged by the appellant only proved the case of the respondent and also the letter of Shri. M.V. Rao who
was a partner in the respondent and also the partner in the sister concern NOVOTRON. When there are three identities, of goods, of name and place
of trade, the dishonest, later user must not obtain registration.
To prove dishonesty the respondent has pleaded two facts
a) Shri. K. Subash, a partner in the appellant firm was in their employment. In reply the appellant has denied it. The deed of retirement dated
29.09.2005 shows that the said person was a partner in the appellant firm. But there is no evidence to show that Shri. B.K. Subash Babu was an
employee of the respondent. The respondent could have produced some salary certificate or some document. Mere pleading is not enough there must
be evidence.
b) The respondent claims in his statement in reply that Shri. J. Kuppuswamy father of Shri. Suresh was the Accounts Consultant has not been
rebutted and the fact that in the affidavit Suresh babu has not said son of Shri. J. Kuppuswamy is enough to draw adverse inference.
12 . If the respondent had produced some evidence then alone the appellant can rebut it. When there is no evidence to prove the allegations the
appellant can rightly ignore it. But the Registrar curiously finds that ""few of the partners were opponent's employees."" There is not a scrap of
evidence to prove these facts. This finding is based on no evidence and is set-aside.
13 . If this finding is set aside then the case of dishonesty is weakened. The respondent must show prior user.
The registrar holds that the respondent had proved user from 1992. Even their claim that the sales figures include sales of NOVATECH is not
supported by a chartered accountant's certificate. On the other hand though the respondent has alleged that the appellant's Exhibit-A is not signed. We
find that the certificate of Areef & Co. the auditor of appellant has been signed. It refers to the sale of NOVATECH. The respondent has given the
alleged sales statistics for NOVATECH and NOVATRON from 1992-1993 and has merely pleaded that 70% of the sales is through sales of
NOVATECH. But there is no proof of user from 1992 by respondent, not even an auditor's certificate has been filed. The Registrar's finding in this
regard is set-aside.
There is however an invoice of the year 1995 on the side of the respondent. On the side of the appellant there are invoices from 1998. It is true
that these invoices do not bear the name of NOVATECH, but there are the corroborating evidence in the form of letters from the same customers
testifying to purchase of NOVATECH products from 1998. So we can accept the case of user from 1998. These customers are M/s. Kasturi &
Sons, M/s. Brakes India, M/s. Tuticorin Allied Chemicals & Fertilisers Limited. It is difficult to reject this evidence as procured. The Registrar has
totally ignored this evidence. There are only two invoices produced by the respondent prior to 1998. These two invoices are not enough to prove
knowledge of the respondent's user.
The case of the respondent is fraught with confusion. The sales figures are given from both NOVATRON and NOVATECH. But the letter from
M.V. Rao is signed as proprietor of NOVATRON. If NOVATRON is a separate entity, the respondent must explain why the combined sales figures
is given for NOVATRON and NOVATECH. It is not clear if NOVATRON is a partnership or proprietorship. We do not know who are the partners
of CD Tronics. We do not know what is the link between CD Tronics and NOVATRON. We do not know who are the employees of NOVATRON
and CD Tronics The Detective Agency's certificate which is proved by the affidavit of K.R. Premkumar engaged by the Detective Agency shows
that CD Tronics has never marketed nor manufactured NOVATECH, ""Our inquiries revealed that Mr. Danumjaya Rao is the proprietor of the said
concern. Mr. Danumjaya Rao is in the business of manufacturing and selling the electronic parts for cable TV operators. Our discrete inquiries
revealed that Mr. Dhanumjaya Rao is manufacturing and selling ""NOVATRON"" Branded parts. Further our team confirmed that, M/s. C.D. Tronics
is neither manufacturing nor selling ""NOVATECH"" branded electronic parts.
M.V. Rao the Proprietor of NOVATRON had addressed a letter as follows. On 12th March, 1998 M/s. Novatech Communications, Flat No. 8,
First Floor, Door No. 13 and 14, Rangarajapuram IV Saidapet, Chennai-15.
But in the evidence in support of opposition of the respondent states that his firm uses both the trade marks ""NOVATRON"" and ""NOVATECH"" and
that his firm does no maintain separate accounts for sales of goods of the aforesaid mark. So, it is not clear who manufactures NOVATRON, the
respondent or NOVATRON. Para 4 of the Notice of Opposition reads ""The opponent further submits that one of the partners of the applicant firm
Mr. B.K. Suresh Babu was previously his employee."" Thereafore, the opponent submits that the applicants were well aware of the user and
reputation of his aforesaid well reputed trade mark ""NOVATECH"" when they adopted their impugned trade mark ""NOVATECH"". In reply he states
that NOVATRON is his partner's firm. Mr. Dhanumjaya Rao has signed as proprietor of CD Tronics on the date of evidence in support of opposition
(10.11.2005) and as partner of Cee De Tron on the date of reply (20.03.2006). It is his case that for numerological reasons he changed the name to
Cee De Tron. But if a proprietorship had become a partnership, the respondent should produce documents to show the change and the constitution of
partnership. As we said earlier the evidence of the respondent is unclear and unsatisfactory.
Both the counsel relied on the following judgments:
1998 PTC (18) HC (DEL) - Gupta Enterprises vs. Gupta Enterprises - held that ""Once the opponent admits that he acquired the registered
proprietary right of the trade mark ""GUPTA"" and that right passed on to him after the firm was dissolved them the burden was on him to prove that
other partner transmitted his right in favour of the opponent. He relied on an agreement through which he got the exclusive right on the registered
trade mark ""GUPTA"". But he failed to produce the same on record. Therefore, the Registrar ought to have drawn adverse presumption against the
opponent. It is well settled principle of law that in an opposition proceedings the onus is ultimately upon the applicant to establish that he is entitled to
the registration of the trade mark applied for. Where the opposition is based on the alleged registration of the trade mark or the use and reputation of
the opponent's trade mark or on any other fact, the onus of establishing those facts lies upon the opponent. It is only when the opponent initially
discharges his onus that the burden shifts to the applicant. In this case opponent miserably failed to discharge his initial burden. Hence, Registrar was
not justified in allowing the opposition."" Here the opposition has not discharged the onus as per the above decision.
2 . 2004 (28) PTC 550 (IPAB) - Narendra Kumar Tank Vs. Classic Electricals Limited & Anr. -""The applicant has been using the mark since 14th
January, 1983 where as the opponents have not filed any evidence of the use of their mark. However, the opponents have registered their mark with
effect from 16th September, 1983 under No. 410712B. The earliest of the date between the use by opponents and registration of the opponent's mark
is 16th September, 1983. As the applicants have been using their mark from 14th January, 1983 which is a date earlier than the date of registration of
the mark by the opponents the applicant can claim the benefit of section 12(3) read with section 33 of the Act. Hence, the applicants are entitled for
registration under section 12(3)."" In the case on hand too, the evidence of the opposition is not sufficient.
3 . 2005 (30) PTC 14 Bom - Sun Pharamecutical Industries Vs. Wyeth Holdings Corporation and Anr. -""Then we turn to the question of delay and
acquiescence. Mr. Tulzapurkar, learned counsel appearing for the respondent cites the judgment of the Supreme Court in Power Control Appliances
and Ors. Vs. Sumeet Machines Pvt. Ltd., wherein the Supreme Court approvingly referred to the judgment of the Appeal Court in England in
Electrolux LD v. Electric and quoted a passage therefrom in paragraph 34 of it judgment. Our attention was also drawn to the judgment in Electrolux
itself. Reference to the judgment in Electrolux shows that there is no hard and fast rule that delay per se would defeat an application for interlocutory
injection: The judgment indicates that in a situation where the defendant to an action has been using the mark, even it concurrently, without making
himself aware of the fact as to whether the same mark is the subject matter of the registration and belongs to another person, the first person cannot
be heard to complain for he has been using it negligently in as much as he has not taken the elementary precaution of making himself aware by looking
at the public record of Registrar as to whether the mark in question is the property of another. If, however, he had taken search and knowing full well
that the mark was the property of another person, continuous to use the mark, then he runs the risk of a registered proprietor challenging his action for
infringement and merely because it is done at a subsequent stage, he cannot be heard to complain on the ground of delay. Further discussion in the
judgment shows that in order to deny an interlocutory injunction, the delay must be such as to have induced the defendant or at least to have lulled him
into a false sense of security to continue to use the trade mark in the belief that he was the monarch of all he surveyed. In our judgment, such are not
the circumstances here. We are not satisfied from the record that a search was taken of the registry by the Appellant to assure itself that there was
no other person who owned the mark ""MICRODINE"". Assuming that the search was taken, and the appellant has done it consciously, then the
appellant has to thank itself for having gambled by investing large amounts in a risky venture. Either way, we do not think that the defence can
succeed at this stage at least."" In this case, even the official search report did not reveal the respondents mark, so this case does not apply.
4 . (2007) 140 Comp Cas 129 (IPAB) - Obsurge Biotech Ltd. Vs. East West Pharma - ""It is priority in adoption and using the trade mark that is
regarded as superior to priority in registration. In order to establish the priority in adoption and use of a trade mark it would suffice if the goods with
the mark upon it have actually become a vendible article in the market with the intent on the part of the proprietor to continue their production and
sale."" In the present case priority has not been proved satisfactorily.
TA/185/2003/TM/DEL - M/s.Kirloskar Proprietary Limited Vs. M/s. Bhutani Cable Industries & Anr. -""In the case on hand,t he marks are
identical, the only issue as to confusion or deception among the rival marks is in considering the goods. The goods are alled and cognate was the main
contention of the appellant whereas the first respondent contended that the goods are totally different. The appellant's contention was also that they
were registered proprietors of the trade mark under various classes and their last registration was of the year 1970 whereas the first respondent's use
was only in the year 1975 which was subsequent to that of the appellant. The said fact was not denied by the first respondent and only contended that
the appellant's registration will not prove user. It is also seen that the first respondent had applied for electric wires and cables and the said product is
used by the appellants in their products and it is clear in the rival goods are allied and cognate. The objection under section 12(1) of the Act of the
appellant is therefore upheld and the order is rejected."" In the present case the respondent's user is not proved and further there is evidence to show
that as on date they are not using it.
The respondent has opposed the registration of the trade mark of the appellant on the basis of virtually no evidence and the Registrar had accepted
it totally. When the case of the opposition is unsatisfactory except for three invoices, we do not think we should reject the application for registration.
Accordingly, the appeal is allowed in the above terms. No order as to costs.