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Judgment
Prabha Sridevan, J
This is an application for removal of the trade mark ANIL APPALAM under No. 687449 in class 30. According to the applicant, he is the honest adopter of the mark ANIL APPALAM from the year 1993 and has been using it continuously and the use is prior to the 2nd and 3rd respondents
mark. Therefore, the impugned mark must be removed.
The case of the applicant:
In the year 1993, one Mr. K.S. Raja, Mr. Pichai and Mr. Kali Muthu started the business of marketing Appalam in the name and style of Anil Appalam and Chips. Mr. Kali Muthu relinquished his partnership rights in 1994. In 1997, the other two executed a partnership deed. Afterwards, Mr. Kali Muthu and Mr. Pichai executed a partnership release deed in favour of Mr. K.S. Raja on 26/11/1997. The applicant approached an advocate for the registration of Anil Appalam trade mark. Application Nos. 687449 and 687489 were allotted by the Trade Marks Registry. One Mr. Perumal and
Ms. Nagalekshmi started a similar business under the same name in Tamil Nadu and Pondicherry. In 2006, the applicant filed an Original Suit No. 134/2006 before the Principal District Court, Madurai against them. Injunction was granted. Mr. Perumal and Ms. Nagalekshmi released themselves from the partnership leaving Mr. Muthukani as the sole proprietor. Mr. Muthukani obtained the registration under the application No. 687449 filed by the applicant. The 2nd and 3rd respondents obtained a registration by using the documents which originally belonged to the applicant. Therefore, there are no bonafides in their adoption and it has to be removed.
The respondents in their counter statement submitted that the original application was filed on 20/11/1995 and 14/07/2000. The applicant had retired from the partnership and the goodwill and business were sold to the respondents' predecessor in interest. The new partner, i.e. the respondents took initiative to get the mark registered. The applicant sold his rights as a going concern. He has filed a fresh application for registration of the same trade
mark. Once the goodwill was sold, the applicant has no right in the trade mark. The rectification application must be dismissed.
Both the learned counsel made their submissions and the question is who was the real owner of the trade mark.
There are several documents which are crucial. They are the partnership deed dated 14/07/2000 and deed of declaration of the same date. The partnership release deed dated 14/07/2000 is executed by Mr. R. Subbiah and Mr. Saravanadas. It states that there was a firm under the name Anil Appalam and Chips from 10/06/1993 consisting of Mr. Pichai and Mr. Kalimuthu and Mr. Raja. From 05/04/1999, Mr. K.S. Raja, Mr. R. Subbiah and
Mr. Saravanadas were doing business and that since they no longer wanted to do business together, a release deed was executed. The recitals show that Mr. R. Subbiah and Mr. Saravanadas had agreed that they will not use R.C. 6230575 (the Sales Tax Registration Certificate) for doing business in the name Anil Appalam & Chips in any part of Tamil Nadu and Pondicherry and that they had given an application for amendment in the Sales Tax office striking off Tamil Nadu and Pondicherry from the column 'Place of Business'. This document shows that it was agreed by the above two that neither they nor their heirs and other partners will cancel the above amendment. On this understanding, Mr. K.S. Raja had agreed to retire from the partnership and business would be done by the other two under R.C. 6230575 except for Tamil Nadu and Pondicherry. With regard to the business or goodwill Mr. K.S. Raja agreed to give the goodwill. On the same date, an affirmation deed was signed by all the parties. In this, Mr. Subbaih and Mr. Saravanadas were the first part and the applicant was the second party. It is seen from this document that the applicant had formed another firm in the name Anil Appalam & Chips with his wife Ms. Saraswathi and Son Mr. Jyothibasu. This document shows that the second party will not do business in the name of Anil Appalam and Chips in Karnataka and Mysore saving Tamil Nadu and Pondicherry and the first party will not carry on business in Tamil Nadu and Pondicherry specifically in Virudhachalam, Villupuram, Pondicherry, Cuddallore, Madurai, Thiruvallur and Chennai. There are other documents which reinforce this understanding and in clause 6 of this deed, it specifically that in the Sales Tax registration for R.C. 6230575 there will be an amendment striking Tamil Nadu and Pondicherry. The register of Registrar of Firms shows that the present respondents were incoming partners after 19/04/2007. It is relevant to note that these documents have been filed by the respondent on 23rd February 2011.
OA/44/2012/TM/CH
This appeal filed by the appellant is against the order passed by the Registrar of Trade Marks abandoning the application filed the appellant. The appellant filed Anil Appalam in trade mark application No. 1496379 in class 30. The appellant's application was advertised as an associated mark with
No. 687449 in Trade Mark Journal on 01/06/2008. One Krishna Traders filed an opposition which was served on 30/06/2008. The appellant filed its counter on 27/08/2008. The evidence was filed on 10/06/2009. Subsequently, in the above opposition proceedings, the 2nd and 3rd respondents filed an interlocutory application which was heard by the 1st respondent on 14/04/2010. The appellant filed his written arguments. The interlocutory application was allowed and the association condition imposed was cancelled and it was ordered to be re-advertised. According to the appellant the notice of opposition filed by the 2nd and 3rd respondent was not served on the appellant. Subsequently, Krishna Traders filed an opposition No. 765484. To that a counter was filed on 22/11/2010. All of a sudden, the order of abandonment was passed. The impugned order of abandonment was passed on 13/01/2012 by the Examiner of Trade Marks.
The learned counsel submitted that in the first place, the abandonment order passed by the Examiner was without jurisdiction. Next, they submitted that the notice of opposition was not served on them. Therefore, they had no occasion to file the counter statement.
The learned counsel appearing for the respondents submitted that all other communications from the Registry had been received by the appellant and it is difficult to believe that this communication alone was not received by them. The order passed by the Registrar removing the condition of association is also produced. The same release deed referred to above has been relied upon for passing the said order.
It is clear from the reading of the release deed that the parties had agreed to divide the territorial operation of the trade mark. The applicant had agreed to restrict himself to Tamil Nadu and Pondicherry and the respondents agreed to restricting themselves not to use the mark in Tamil Nadu and Pondicherry. This was the agreement which the predecessors had agreed to and it binds the respondents. The respondents cannot have a larger right than their predecessors in interest. We find from the documents that the applicant has been vigilantly protecting his mark in various fora. The learned counsel appearing for the respondent submitted that when the goodwill is transferred, then it is impossible for the applicant to carry on the business, since the goodwill has been transferred with the mark. The goodwill has been obviously transferred only so that the respondents can use the mark Anil Appalam & Chips in the area of Karnataka and Hosur and if the applicant had not given that right, the respondents could not have used Anil Appalam & Chips. The entire document has to be read as a whole and harmoniously. We cannot read one recital in a manner that nullifies other recitals. If the respondent's construction is accepted, then the recitals relating to territorial operation of the mark will be meaningless. What is meant is that the respondents can benefit from the goodwill of the mark in Karnataka and Hosur. There can be only one source for Tamil Nadu. It is clear that the respondents have wrongfully obtained registration of the mark applied in the name of the applicant and the amendment has been done without understanding fully the meaning of the documents and the understanding between the parties. It was submitted before us that the advocate who had applied on behalf of the appellant, had turned sides. If so that is unfortunate. It is clear dishonesty on the part of the respondent to assert a right contrary to the documents dated 14/07/2000.
As regards the appeal, it is clear from the narration of events that the appellant had been vigorously defending his case. He had filed the notice of opposition to Krishna Traders. The circumstances of the case convince us that the appellant would not have received the notice to file the counter statement. In the earlier opposition filed by Krishna Traders, the appellant had filed their counter statement and had agitated that the respondents herein ought not have been allowed to file an interlocutory petition. The remedy available was only to file an opposition. The Deputy Registrar had ridden roughshod over the objections of the appellant herein and allowed the interlocutory petition and has removed the association with the registered trade mark No. 687449 and had ordered re-advertisement. The respondents herein filed opposition No. 763112. The above said Krishna Traders filed opposition No. 765484. The appellant herein filed his counter TM-6 to Krishna Traders on 22/11/2010. It is very unlikely that such a litigant would have deliberately failed to file the counter statement against the respondents herein especially when he has been fighting tooth and nail against others and in other proceedings. The reason could only be that he has not received the notice. There is no evidence that the notice was in fact sent by the Registry.
The impugned order has been passed by the Examiner of Trade Marks has no jurisdiction to do so. This is only an additional ground. The order of abandonment cannot be sustained. It is set aside. The appellant will have four weeks time from the date of receipt of this order to file the counter statement. The appeal No. OA/44/2012/TM/CH is allowed. Consequently, Miscellaneous Petition No. 115/2013 is closed. In these circumstances, ORA/247/2010/TM/CH is allowed removing the mark. Consequently, Miscellaneous Petition Nos. 30/2011 and 9/2013 are closed. It is open to the respondents to apply afresh restricting the territory of operation excluding Tamil Nadu and Pondicherry.