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Judgment
Z.S. Negi, J
The applicant has filed two similar applications for removal of two identical Trade Marks 'JUMBO GOLD' registered in the name of the respondent
under Nos. 1241924 in class 5 and 1241927 in class 9, respectively, from the register or rectification of the register under Section 47/ 57/ 125 of the
Trade Marks Act, 1999 (hereinafter referred to as the Act).
Before enumerating facts leading to the filing of the present applications, it would be appropriate to clarify at the outset that since the contentions in
both the applications are broadly on the same lines and both the parties are also same, both the applications were, with the concurrence of both the
learned Counsel, heard together; for the sake of convenience we shall deal with the dispute arising out of ORA/74 /2006/TM/MUM and apply the
findings therein on ORA/75/2006/TM/MUM.
It is stated that the respondent herein filed an application No. 693150B on 12.1.1996 for registration of trade mark 'JUMBO', which was opposed
by the applicant herein on the grounds, inter alia, that the applicant manufactures and markets a range of household insecticides/mosquito repellents in
various forms including coils, mats and liquid vapourisers apparatus and liquid vapourise refills under its well known trade mark 'ALL OUT'; that it is
one of the largest companies in mosquito repellents in market in India with an overall market share of more than 22%; that it uses the word JUMBO
to signify bigger size or coil lasting for a longer duration for its ALL OUT coil which lasts for longer hours than the regular coil; that the word JUMBO
is an ordinary word which means big and used by almost all the manufacturers of fast moving consumer goods to distinguish between small, medium
and big size and as such no body can have monopoly over the word JUMBO and that the word is generic, incapable of becoming a trade mark and the
registration of JUMBO as the trade mark would be contrary to the provisions of the Act.
It is further stated that the respondent has instituted a suit being CS (OS) No. 1230 of 2002 for infringement and passing off against the applicant
and also in the suit the respondent has filed an application for an interim injunction before the High Court of Delhi. The suit is pending and the interim
injunction sought for has not been granted till today. Thereafter, the respondent issued a caution notice in the newspaper dated 3.9.2003 claiming that
the respondent is the proprietor of the trade mark JUMBO and only the respondent was entitled to use the trade marks including GOODNIGHT
JUMBO, JET JUMBO and JUMBO and thereupon, the applicant obtained an injunction on 1.10.2003 from the High Court of Delhi against issuing
such caution notices by the respondent claiming ownership of trade mark JUMBO. The respondent, despite its earlier application for trade mark
JUMBO pending, filed two applications, on proposed to be used basis, on 8.10.2003 for registration of JUMBO GOLD trade marks and obtained
registration of trade marks under Nos. 1241924 and 1241927 both as of 8.10.2003. Averment has been made that the applicant is the person aggrieved
under Section 57 of the Act and this application, without prejudice to the rights and contentions of the applicant in the suit pending before the High
Court of Delhi, is filed for the purpose of maintaining the purity of the register.
The applicant, claiming to be the person aggrieved, has sought removal of the respondent's trade mark from the register or rectification of the
register on various grounds, inter alia, that the impugned mark JUMBO GOLD cannot be registered under Section 9(1) of the Act; that the impugned
mark is covered by proviso (a) to Sub-section (1) of Section 36 of the Act; that the impugned registration has been made without sufficient cause and
that for maintaining the purity of register and, having regard to the malafide conduct of the respondent before the Registrar of Trade Marks in not
disclosing the fact of suit pending in the High Court of Delhi and registration of trade mark JUMBO on its earlier application has not been granted, the
impugned marks should be expunged from the register. The respondent has filed its counter-statement on 5th January, 2007 denying the material
averments made in the application and claiming that the trade mark JUMBO was originally conceived and honestly adopted by the respondent in the
year 1996 and applied for registration on 2.1.1996 but the registration certificate has not been received and also no notice of opposition has been
received by it or its attorneys till date. It is further claimed that the respondent on or about 9.9.1999 began using the trade mark JUMBO in
conjunction with its well-established and reputed trade marks JET and GOOD KNIGHT and in October, 2003 the respondent conceived and adopted
the trade mark JUMBO GOLD, applied for registration and obtained registration without any oppositions to the applications for registration.
The applications came up before us for hearing on 2.4.2008 at the Circuit Bench sitting at Mumbai, when Shri Shyam Sunder Iyer, Advocate
appeared on behalf of the applicant and Shri T.N. Daruwalla, Advocate appeared on behalf of the respondent.
Shri Shyam Sunder Iyer, learned Counsel for the applicant, contended that the applicant is the person aggrieved within the meaning of Section 57 of
the Act as the respondent has filed a suit for infringement and passing off against the applicant; it is a bonafide user of the mark JUMBO in respect its
products; it has been using the trade mark JUMBO to indicate the applicant's larger sized coils and the registration of the respondent's mark would
adversely affect the rights of the applicant.
Shri Iyer contended that the impugned mark cannot be registered as a trade mark, in view of application of provisions of absolute grounds of refusal
under Clauses (a) and (b) of Sub-section (1) of Section 9 of the Act. The word JUMBO is a generic term with respect to coils to indicate the larger
size or big which can never acquire a secondary meaning. The word or term is not only used for coils and mosquito repellants but also used to signify
larger size by various manufactures in relation to pens, envelopes, kitchen appliances, household items, toiletries and various other products. He
pointed out that the respondent has itself stated in the counter-statement that there are many others whose registered mark contain the word JUMBO
as detailed in under para 9(d) thereof, therefore it is completely established that the impugned mark JUMBO GOLD is devoid of any distinctive
character, that is to say, not capable of distinguishing the goods of one person from those of another person. The word is an ordinary dictionary word
which means big. In the Roshan Lal Oil Mills Ltd. v. Assam Company Ltd. 1996 PTC 699 Del, the Court held that the idea of using the word
JUMBO by the plaintiff and defendant is to convey superpower or strength in edible oils and tea respectively. The word JUMBO is indicative of the
characteristic of a product i.e. the size of a particular product and as such is also hit by Section 9(1)(b) of the Act. In the case of Competition Review
Ltd. v. N.N. Ohja 1996 PTC 124, the High Court of Delhi refused injunction to plaintiff holding that the plaintiff cannot claim exclusive right of the
word COMPETITION which was a descriptive word. The learned Counsel relied upon the decisions in J.R. Kapoor v. Micronix India 1994 PTC 260
(SC) and Gillete v. A.K. Stationary 2001 PTC 513 (Delhi) wherein the Supreme Court in relation to Microtel and Micronix held that the word MICRO
is a common or general name descriptive of the micro technology used for the electronic goods which come daily to the market and no one can claim
monopoly over the use of the said word and in relation to LUXOR PAPERMATE FLEXGRIP and EKCO FLEXGRIP the High Court of Delhi held
that the words FLEXGRIP are descriptive because the use of the word GRIP that too used in relation to pens and other writing instruments. He relied
on a US judgment in The Bada Co. v. Montgomery Ward and Co. 165 USPQ 483 to say that JUMBO appears in dictionaries and in common usage in
a combining form or singly meaning large or big and the respondent's mark, therefore, is exactly analogous to other marks relating to the size of goods
which have been held merely descriptive. It was further contended that the word JUMBO is not only descriptive or indicative of size but also has
become customary in the customary language and bonafide practice of the trade. As such its registration is prohibited under Clause (c) of Sub-section
(1) of Section 9 of the Act and also such a word falls within the exception carved out by proviso (a) to Sub-section (1) of Section 36 of the Act. The
assertion of the learned Counsel was that the word JUMBO is not only purely descriptive, describing the size of the respondent's product, but is used
for various other goods and registration of such word would give monopoly of use to the registered proprietor in violation of the provisions of Section
36 of the Act.
Shri Iyer next contended that as the impugned registration has been made in violation of the provisions of Sections 9 and 36 of he Act, such entry in
the register is made without sufficient cause within the meaning of Sub-section (2) of Section 57 of the Act and, therefore, the impugned entry is liable
to be expunged from the register.
Shri Iyer submitted that the conduct of respondent has not been bonafide as it did not disclose the fact of the pending Suit No. 1230 of 2002
against it before the High Court of Delhi which relates to the mark JUMBO and the fact that the trade mark JUMBO applied by it earlier on 2.1.1996
for registration has not till then been allowed by the Registrar. Since non disclosure of these material facts amount to concealment of material facts
and the impugned registration has been obtained on concealment of material facts, hence the impugned registration deserves to be removed from the
register on this ground alone.
Shri T.N. Daruwala, learned Counsel for the respondent, submitted that the applicant is not the person aggrieved within the meaning of Section 57
of the Act as the suit filed by the respondent is a passing off suit based on its trade mark JUMBO which was and still is unregistered trade mark. The
trade mark JUMBO GOLD was not at all mentioned in the said suit and the application of the respondent seeking amendment of plaint to add trade
mark JUMBO GOLD was refused by the High Court of Delhi mainly on the ground that JUMBO GOLD is altogether a new trade mark and the
plaintiff has not sought amendment in the body of the plaint to the effect that JUMBO and JUMBO GOLD are one and the same. The application for
registration of trade mark JUMBO GOLD was made after filing of the suit and the dispute here is only about the word JUMBO. The applicant in
paragraphs 14 and 15 of the application has alleged to be person aggrieved due to registration of trade mark JUMBO and not the trade mark JUMBO
GOLD which is the subject matter of registered trade mark No. 1241924 in class 5. There is nothing brought out in the application to show as to why
the registered trade mark JUMBO GOLD should be expunged. He further submitted that the entire Form I has been drafted in a vague manner and
nothing is shown as to how the applicant is the person aggrieved within the meaning of Section 57 of the Act.
Shri Daruwalla submitted that the grounds taken by applicant for rectification under Sections 9(1) and 36(1) is misconceived. The registered trade
mark must be considered as a whole and the registered trade mark is JUMBO GOLD and not JUMBO per se. It is false and absurd for the applicant
to contend without any basis that JUMBO GOLD is indicative of the size of the mark or it is customary. The allegation of the applicant that the
impugned mark is descriptive of the size of the mark and as such covered by Section 9(1)(b) of the Act does not on the face of it make sense and no
evidence has been led to show that JUMBO GOLD has become customary in the current language or in the bonafide established practices of the
trade. Relying on the decision in Teofani v. Teofani (1913) 30 RPC 446 (CA), the learned Counsel submitted that it is important to note that the
burden of proof is always on the applicant who seeks to rectify or vary the register. Placing reliance upon the decision in Corn Products Refining Co.
v. Shangrila Food Products Ltd. learned Counsel argued that in the matters for rectification and in the present mark and/or part of the mark being
common element to trade, the onus to prove the common element to trade lies on the party so pleading. He asserted that it has been consistently held
that the mark comprising the common element shall be in fairly and extensive use and the use should be use in the market in which the marks under
consideration are being or will be used. The objection raised under Section 36 of the Act does not apply to the facts of the present case without
establishing that the trade mark JUMBO GOLD is the name or descriptive of the article or substance. The applicant has deliberately omitted to refer
to Sub-section (2) of Section 36 of the Act. In the case on hand the trade mark does not consist solely of JUMBO but consist of JUMBO GOLD. The
applicant has utterly failed to prove that there is a well-known and established use of the word JUMBO or JUMBO GOLD. The learned Counsel
relied upon the decision of the Bombay High Court in the Central Camera Company Pvt. Ltd. v. The Registrar of Trade Marks reported as IPLR
Volume 5 1980 page 1 and in J.L. Mehta v. The Registrar of Trade Marks in support of his submissions that JUMBO GOLD has no direct reference
to the character or quality of the of goods of the respondent and that JUMBO GOLD is not descriptive of goods manufactured by the respondent.
After carefully hearing the arguments of both the parties, the first question that need to be considered is whether the applicant is the 'person
aggrieved' to file the present rectification application. The expression 'aggrieved person' has received liberal construction from the courts and includes
rivals in the same trade who are aggrieved by the entry of rival's mark in the register of trade marks or persons who are in some way or the other
substantially interested in having the mark removed from the register or persons who would be substantially damaged if the mark remained on the
register. In re Powell's Tm. (1894) 11 R.P.C. 4, HL at p. 4 Lord Herschell said: ""The first question raised is whether the Respondents were 'Persons
aggrieved'.... My Lords, I should be very unwilling unduly to limit the construction to be placed upon these words; because, although they were no
doubt interested to prevent officious interference by those who had no interest at all in the Register being correct, and to exclude a mere common
informer, it is undoubtedly of common interest that they should not be unduly limited, in as much as it is a public mischief that there should remain upon
the Register a mark which ought not to be there; and by which many persons may be affected, who, nevertheless, would not be willing to enter upon
the risk and expense of litigation. Wherever it can be shown, as here, that the Applicant is in the same trade as the person who has registered the
Trade Mark, and wherever the Trade Mark, if remaining on the Register, would, limit the legal rights of the Applicant, so that by reason of the
existence of the entry on the Register he could which, but for the existence of the mark upon the Register, he could lawfully do, it appears to me he
has a locus standi to be heard as a person aggrieved."" In the present case, though not pleaded, it appears from the facts and records that the applicant
and the respondent are in the same trade and as such are trade rivals. The applicant has made specific averment in the application that the registration
of the mark JUMBO would adversely affect the rights of the applicant. A suit for infringement and passing off has been instituted by the respondent
against the applicant. Having regard to the fact that the applicant for rectification being from the same trade as from that of the registered proprietor
and as the existence of registered trade mark would limit its legal rights to carry on business under the trade mark JUMBO, the applicant prime facie
appears to be the person aggrieved and as such is entitled to file the present rectification application under Section 57 of the Act.
The next issue is JUMBO is an ordinary word to signify large size, generic, common to trade and incapable of being a trade mark or attaining
trade mark signification and as such prohibited to be registered as a trade mark under Section 9 of the Act. Section 9 of the Act which provide for
absolute grounds for refusal of registration reads as under:
(1) The trade marks-
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another
person;
(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values,
geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;
(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established
practices of the trade,
shall not be registered:
Provided that....
After extracting the relevant provision of law we would see on whom the onus to prove lies that the impugned registration is in contravention of
the above extracted provision. Having regard to the provision in Section 31 of the Act which provide that in all legal proceedings the registration is
prima facie evidence of validity thereof, the burden of proof in rectification proceedings for cancellation or variation of the registration, is on the
applicant seeking rectification to show that the mark is wrongly registered or wrongly remaining on the register. The onus of proof is on the applicant
to show that the trade mark was registered in contravention of the provisions of Section 9 or Section 11 or both. We would refer to Formica case
(1971) 75 CWN 663 wherein Justice B. Mukherjee of Calcutta High Court observed thus: ""Mark on the register you want to take off the Register?
The onus is then upon you to prove that the mark deserves to be taken of so. This is plain common sense too. I am on the register. Sure enough, it is
not for me to prove that I should be where I am and that the entry in my favour is valid. Were I to prove so, why register? Registration becomes
valueless.
There is no dispute that the word jumbo is an ordinary dictionary word. According to The Chambers Dictionary (New Edition) the word 'Jumbo' in
means anything very big of its kind; an elephant (after a famous large one so named); a jumbo jet;- adj huge; colossal; extra-large. The application on
hand is in relation to removal of trade mark JUMBO GOLD from the register or rectification of register, therefore the issue to be considered is in
relation to the words JUMBO GOLD and not JUMBO per se. The above mentioned meaning of jumbo cannot apply to the words jumbo gold. The
words JUMBO GOLD has been registered as a trade mark we have to take into consideration of the trade mark as a whole. The mark JUMBO
GOLD taken as a whole is not directly descriptive of the character or quality of the concerned goods as the concerned goods is mosquito mat or coil
and not gold and as such we do not see any ground of absolute refusal enumerated in any of the clauses of Sub-section (1) of Section 9 of the Act.
There is no evidence available on record to show that the mark jumbo gold consist exclusively of indications which have become customary in the
current language or in the bonafide and established practices of the trade. Regarding the contention of the applicant that the registration of JUMBO
GOLD is also covered under the proviso (a) to Sub-section (1) of Section 36 of the Act, such contention is sustainable where it is proved that there is
a well known and established use of the word jumbo gold as the name or description of the article or by the other traders then the provisions of Sub-
section (2) of Section 36 of the Act will apply. In the present case the same has not been proved and the list of goods where the word used is
JUMBO not the JUMBO GOLD and the extent of such use is not indicated. Similarly the respondent has under para 7 (d) has given a list of more
than seventy registered trade marks consisting of word JUMBO singly or in combination with word JUMBO to show that such word is in wide use by
others and the applicant cannot claim monopoly over that word. However, in the absence of any evidence of user the same cannot be given credence
as mere registration of trade mark is no proof of its use in trade. The case law cited by the applicant in support of its contention will be not much
helpful as they are distinguishable to the facts of the case on hand. Having regard to the above discussion, it is difficult to sustain the grounds given
under Section 9(1) and proviso (a) to Sub-section (1) of Section 36 of the Act.
We have already stated that it is difficult to sustain the grounds given under Section 9(1) and proviso (a) to Sub-section (1) of Section 36 of the
Act, the objection that the mark is registered without sufficient cause also fails.
The last contention of the applicant that the respondent has concealed material facts, that it's earlier application for registration of trade mark
JUMBO is pending and that a suit for infringement and passing off is also pending before the Delhi High Court, before the Registrar of Trade Marks
for obtaining registration of trade mark JUMBO GOLD. Concealment in law means the intentional suppression of truth or fact known, to injure or
prejudice another. The applicant has not explained in the application or at the time of arguments as to how the applicant is injured or prejudiced by not
disclosing the alleged facts to the Registrar of Trade Marks and also not adduced any evidence to prove that these facts were not factually disclosed
and that the impugned registration was obtained by virtue of concealment of the alleged facts.
In view of the above, we can unhesitatingly hold that the applicant has miserably failed to discharge its onus and as such the application must fail.
Accordingly, the application ORA/74/2006/TM/MUM is dismissed. By applying the findings in the application mentioned here before, the
ORA/75/2006/TM/MUM is also dismissed. There shall be no order as to costs.