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Judgment
Prabha Sridevan, J
These two appeals were heard together and will be disposed by a common order. The mark involved is Kundan and is used for electrical goods.
OA/83/2004/TM/DEL is filed against the order dated 24.03.2004 in the appellant's opposition to the marks No. 597389 in Class 09, No. 597390 in
Class 11 and No. 597391 in Class 07, the user claimed was 1980 to be associated with No. 507445 with regard to 1st mentioned above, 1975, with
regard to 2nd mentioned above, and with regard to the 3rd it was ""proposed to be used"". All the oppositions were dismissed and the marks proceeded
to registration.
OA/27/2005/TM/CH is against the order dated 01.03.2005 in the opposition filed by the appellant herein against the mark Kundan CAB in Class 9.
The user claimed originally was 01.01.1981 and amended to 01.01.1980. This opposition was also dismissed.
The appellant claims to be a sole proprietor of Kundan Cables India engaged in the business of manufacturing all types of high class of electric
PVC wires and cables. It was established on 17.01.1981. The appellant has been using the trade mark Kundan and Kundan Cable since January
1981. He adopted the trade mark derived from the name of his son Kundan. It is a mark well known in this trade. The application for registration of
the above mark is pending. The appellant had obtained license from the Central Excise on 06.01.1981. The respondent's predecessor in interest Aipiai
had been purchasing wire and cables from the appellant and there are 'C' Forms. Originally this Aipiai Electrical Trading Company was the applicant
seeking registration of the marks. On the basis of the Assignment Deed dated 17.02.1993, the respondent obtained transfer of the trade mark rights
and had continued the proceedings. It is the case of the appellant that the mark was really theirs and the respondent's mark must not be registered.
The respondent contended in their counter statement that their predecessor Aipiai had adopted the mark in the year 1980 and after the assignment, the
respondent had continued to use. It was Alleged that one Smt. Promila Sehgal proprietor of M/s. Atul Cable Company claimed to be the owner and
proprietor of the mark in 1975. She filed a suit against the respondent alleging misuse of trade mark. By an assignment deed dated 01.05.1998, Smt.
Promila Sehgal assigned her mark to the respondent. The parties arrived at a compromise and the suit was disposed in terms thereof. According to the
respondent, they had all along been using the mark and the mark No. 507445 is valid and subsisting.
The respondent has also given a list of other marks which have been registered and pending registration and all other averments of appellant in the
notice of opposition were denied.
Learned counsel for the appellant submitted that the respondent's predecessor in interest was purchasing cables from 1980 and therefore they knew
that the appellant was selling these goods to various parties under the name Kundan Cables India. The adoption is clearly dishonest. He submitted that
through out the case an attempt had been made by the respondent to ""improve"" his case and some of the 'improvements' have been contrary to their
admission. These issues have been glossed over by the Registrar.
Importantly, the two improvements relate to the date of user. The learned counsel submitted that when this point was urged before the Registrar,
the Registrar had dismissed them as a matter of record. He submitted that otherwise than in these opposition proceedings, the appellant had no other
opportunity to challenge the amendment of the date of user from 1981-82 and improvement of the change of user to 1975 based on the settlement with
Smt. Promila Sehgal.
The learned counsel submitted that the partners of AIPIAI and the Directors of the respondent were more or less the same person. The learned
counsel submitted that the original proprietor namely AIPIAI had claimed date of user from 1981. It must be explained how the respondent who
stepped into shoes of Aipiai can file a TM-16 to change the date of user.
The learned counsel referred to Annexure - 1 of the evidence which are 'C' Form Declaration (CST) which shows sales by Kundan Cable India to
Aipiai. The learned counsel referred to the assessments order in favour of Aipiai, where there is no evidence of any factory, which would show that
all the sales of Kundan CABLES were those which were sold by the appellant to Aipiai. He also referred to the details of sundry creditors in the
respondent's statements which mention Kundan Cable India.
The learned counsel for the appellant also referred to various documents to show that Aipiai was purchasing and selling electrical goods from
various parties. It appears that the respondent herein had filed a complaint under Section 78 and 79 of the Trade and Merchandise Act, 1958 against
unknown person for using their trade mark Kundan and Kundan Cab. A general search warrant was allowed by the Metropolitan Magistrate pursuant
to this complaint. One Smt. Promila Sehgal had filed two suits, one suit No. 51/1996 against the respondent and the respondent's predecessor alleging
infringement. In that the respondent had stated that Smt. Promila Sehgal had not used Kundan as a mark and the sales bills furnished by Smt. Promila
Sehgal have been prepared in one day. As stated earlier, this suit was resolved by understanding between the parties.
The denial of purchase of the goods from the opponents is proved untrue by the many 'C' Forms that have been filed as evidence which were filed
under rule 54 of the Trade Mark Rules, 2002. The respondent had not explained why they are retracting from their allegations made against Smt.
Promila Sehgal nor have they explained how their user starts from 1980.
The learned counsel referred to the extract from the copyright register which showed that the respondent in its copyright application regarding the
label Kundan Cable claimed that it was first published in 1983. The user shifted to 1980 from 1983 is mala fide and has been made only to circumvent,
the priority of user by the appellant who is Kundan Cable India which had came into existence in January 1981. He submitted that this user has been
amended only in 1993 after the litigation had started. Till December 1993, the appellant had maintained the 1982 user and only when the appellant
came into the picture by applying for the mark the respondent had changed the date of user with oblique motive.
In the written statement and counter claim filed on behalf of the respondent Smt. Promila Sehgal was alleged to be a pirator of the impugned mark
Kundan and is trading deceptively and the plaintiff namely Smt. Promila Sehgal is guilty of misrepresentation and that suit itself was based on false
and fabricated.
It is submitted by the learned counsel for the appellant that having made such allegations, the respondent cannot settle the matter and improve the
date of user from 1975. All those allegations cannot now be 'erased', because of the compromise and now the respondent has claimed priority on the
basis of those very documents which were alleged to be false and fabricated.
The learned counsel for the appellant submitted that the Registrar ought to have decided the correctness of user from 1975. Because of the
compromise, the court had no occasion to adjudicate on Smt. Promila Sehgal's user from 1975. The Registrar had abdicated his duty. He then, pointed
out to several alleged infirmities in the invoices. All those invoices by which the respondent by the compromise with Smt. Promila Sehgal has now
claimed user from 1975 were alleged to have been written in one pen and one hand writing by none other than the respondent. The position of the
number on the invoices varies from invoice to invoice and they are loose bills not taken from a bill book.
The learned counsel referred to various invoices in favour of Aipiai which are all duplicate and submitted that the originals are with Aipiai. These
would show that various length of wires bearing the name Kundan were sold to Aipiai electronics over the years. The allegations of the respondent
that Aipiai got plain wires from the appellant and then printed Kundan on it is proved false by these documents.
The learned counsel submitted that the case of the respondent is inconsistent. On the one hand their case is that they manufactured wires then on
the other hand they also claimed that they bought the plain wires and printed their labels. This is a Volte-face.
He submitted that Aipiai was only a shop which purchased goods perhaps under different trade marks and sold them. He submitted a comparison
of Aipiai invoices. He prayed that the appeal be allowed.
The learned counsel for the respondent submitted that the appellant had not filed Rule 52 evidence. He submitted that there is no evidence to show
that the appellant had ever sold branded cables. All the documents which are 'C' forms will not advance the case of appellant, since they do not speak
of sales of branded cables.
He referred to the Central Electrical Testing Laboratories certificate issued to Kundan Cab Industries and submitted that it was actually issued to
the respondent. He referred to the letter written by the Superintendent, Central Excise to Kundan Cable India i.e. the appellant, which refers to the
Central Excise exemption stating that ""please note that this code number is not meant for branded goods"". He submitted that this is proof of the fact
that the appellant did not sell branded goods. He referred to the opposition proceedings filed by the appellant in which it is stated that they had obtained
license on 06.01.1981 to manufacture cables under the name of the trading style Kundan Cable India. This would refer only to unbranded cables. He
submitted that the alleged agreement of the opponent with Madras Cable Agencies has not been produced. He referred to the huge sales figures of
the respondent and compared it with the sales figures of the appellant and submitted that if the appellant was supplying goods to the respondent, then
the volume of the respondent's sales would itself shows that their manufacture and marketing was far beyond what the appellant claims who have
supplied.
He referred to the various advertising invoices which is addressed to Kundan and Kundan CAB to show that the respondent itself was referred to
as Kundan and Kundan CAB. These invoices are of the year 1993. He also submitted that in the complaint filed by the respondent, they have clearly
stated that Kundan and Kundan CAB were adopted by them after the name of Sri Kundan Malji their grandfather. He also submitted that it was
proved that the case of the appellant adopting KUNDAN because it was his sons name was proved false since the son was born only in August 1981
and not 1980.
In reply the learned counsel for the appellant submitted that it is not necessary to file evidence in rule 52. The Rule only says ""may leave with the
Registrar evidence by affidavit in reply"" and no adverse inference can drawn if reply evidence is not filed. The Mark No. 507445 was attacked by
them and the matter is now pending in SLP. There is no explanation as to who is Kundan CAB in the pleadings without that explanation, a statement
across the bar cannot be accepted. The adoption of the name on account of the grandfather is mentioned only in the complaint and not in the pleadings
before the Registrar.
The learned counsel submitted that the adoption was clearly dishonest. The claimed user was suspect and the marks ought not to have proceeded
to registration. The learned counsel for the appellant produced legal user certificate in relation to the trade mark No. 507445 to show that when it was
applied for by Aipiai, the user claimed was 01.04.1982 and the objection was that the mark Kundan is a personal name. The documents filed in
response by the predecessor of the respondent on 12.09.1989 also shows sales only from 1982. According to the learned counsel, when the
respondent's letter dated 9.071982 by the counsel again refers to honest user from 1982 till date the altered date of user from 1980 cannot be true.
The Advertisement of Kundan CAB trade mark No. 389177 applied by Aipiai showed user from 01.01.1981. This was shown by the learned counsel
for the appellant to prove his case of mala fide change of user.
They cited the following documents:
IPAB Order No. 209/2012 in ORA/17/2008/TM/DEL and M.P. No. 16/2011 in ORA/17/2008/TM/DEL dated 24.08.2012 - M/s. Thirupati Form
Limited Vs. M/s. R.P. Foam Home Pvt. Limited-regarding honesty of adoption.
AIR 1997 SC 806 - Sitaramacharya vs. Gururajacharya-where the Supreme Court held that the admissions in the written statement in earlier
proceedings, though not conclusive is a telling evidence in the absence of reasonable and acceptable explanation.
K.S. Prakash (D) by L.Rs. and Ors. AIR 2009 SC (Supp) 1218 - Ranganayakamma & Anr. Vs. K.S. Prakash-In which it was held that the pleadings
of the appellant in the earlier suit, in which they were parties are binding in subsequent proceedings proprio vigore and unless fraud was proved, they
cannot get rid at the same.
AIR 1985 Delhi 210-B.K. Engineering Co. Vs. U.B.H.I. Enterprises (Regd.), Ludhiana and another. - The question in these proceedings is whether
the name or description given by the defendant to his goods is likely to mislead the people into believing they are the goods of the plaintiff. In that case,
the appellant were B.K. Engineering, they adopted B.K. has the house mark, the trade mark was Crown and Venus. The house mark B.K. was used
in conspicuous manner. The defendant started manufacturing under the trade mark B.K.-81. The Hon'ble Delhi High Court held inspite of the
defendants contention that the plaintiff trade mark is Crown and Venus and not B.K. there was likelihood of confusion and injunction must be granted.
Punjab-Haryana High Court - Sham Kumar Kohli Vs. Golden View Electrical - here the Court had commented on the invoices and held them to be
not authentic or unimpeachable.
The Central Excise Manuals of several years were filed to show the rule 52(a) instead of goods being delivered on invoice and that gate pass shall be
made out in triplicate and can contain no mutilations, over-writings, corrections or erasures using double sided carbon. These rules were also show to
indicate the exemption was given for manufacturer having clearance of less than 20 lakhs of the preceding year.
The extract of Central Excise Tariff was to show the rate of duties of wire and electrical cables and that electrical wires and cables were excisable.
These were shown to prove that respondent predecessor had not produced that invoice.
2012 (50) PTC 380 (Del.) Delhi High Court - Astrazeneca UK Ltd. & Ors. Vs. Orchid Chemicals & Pharmaceuticals Ltd. -the Hon'ble Delhi High
Court said that no party can approbate and reprobate so as to take one position, when the matter is going to this advantage and another when it is
operating to his detriment.
2002 (25) PTC 198 (Del)(DB) - High Court of Delhi - Osram Gesellschaft Mit beschrankter Haftung vs. Shyam Sunder & Ors. - In this case the
Hon'ble Delhi High Court had held that honest concurrence use.
Antox India P. Ltd. 1991 PTC Volume-XI - Wander Ltd. and Another vs. Antox India (P) Ltd. - In this case the Hon'ble Supreme Court held that the
Appellate Court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by
the court was reasonably possible on the material.
High Court of Delhi - Bharat Nidhi Ltd. Vs. Megh Raj Mahajan - in this case, the court accepted the evidence of the defendant for which there was
no rebuttal.
AIR 1960 SC 100 - Narayan Bhagwantrao Gosavi Balajiwale Vs. Gopal Vinayak Gosavi and others. - Where the Supreme Court ruled on the burden
of proof.
AIR 1981 Karnataka 40 - Smt. Parameshwari Bai Vs. Muthojirao Scindia-in which it was held that stray sentences elicited in the cross examination
could hardly be construed as admission.
AIR 1976 SC 376 - Shri Krishan vs. The Kurukshetra University - in which the Supreme Court held that any admission made in ignorance of legal
rights or under duress cannot bind the maker of the admission.
IPBA Order No. 28 of 2010 in TA/187/03/TM/DEL [CM(M) No. 70 of 2002] - Jawahar Lal Aggarwal Vs. Registrar of Trade Marks, New Delhi
and Another. - in this case, the mark belonging to one who register similar goods and the mark Capital of the trading style of the 2nd respondent.
Therefore the IPAB held that their existed special circumstances. In this case, we are concerned with two objections raised by the appellant. One
was regarding the change of the date of user.
In the impugned order the Assistant Registrar held that the opponent had failed to establish his claimed user from 1981 and the applicant had used
the mark since 1975 it had built up a enviable goodwill and reputation in business.
The learned Registrar referred to just two documents to satisfy himself regarding date of user, one is 9441 dated 29.1.1981 relating to an order
dated 25.12.1980 and a test report issued to KUNDAN CAB and the documents in the form of invoices of the applicants assignor Smt. Promila
Seghal from the year 1975. He held that the appellant had failed to establish his user from 1980. The Registrar in OA/83/2004/TM/DEL has lost sight
of the fact that in opposition proceedings it is the applicant's duty to prove his case. The fact that Kundan Cable India was in existence in 1980-81 is
shown by the various Central Sales Tax documents. It is clear from the evidence that the Kundan Cable India had applied for license and obtained it
on 12.06.1981 under the Central Sales Tax Rules. The schedule to this document show that is the name and address of the factory which is Kundan
Cable India and the purpose of manufacture is PVC insulation of copper and aluminum wires.
The C-Forms file show that Kundan Cable India was selling its goods to purchasers in various parts including Salem, Vijayawada and Thirunelveli.
There is a letter dated 22.11.1984 from one Pragathi PVC Thaar Udyog addressed to the appellant referring to Kundan wires.
Aipiai had also been purchasing goods from Kundan Cable India i.e. the appellant. Therefore it will be difficult for the respondent to plead
ignorance of the purchase by his predecessors of the goods from one Kundan Cable India. In the order passed by the Learned Magistrate, it is stated
that the predecessor of the complainant had adopted the trade mark on 1.4.1982 and used it continuously till it was assigned to the complainant. The
complainant had filed this on 29.12.1993 claiming that the predecessor had adopted the mark on 1.4.1982. It is true that by filing a TM-16 this user has
been changed to 1980.
In Trade mark proceedings very often the priority of user clinches the issue. When the appellant had claimed that this change of user is suspect,
the Registrar ought to test whether the claim of user is borne out by evidence, all the more so, when a judicial order has recorded that the respondent's
predecessor had adopted the mark on 01.04.1982.
The fact that the TM-16 has been ordered will not relieve the registrar of the duty of examining whether the amended date of user has been
proved by acceptable evidence.
Next comes the other date of user, which is said to improve the respondent case. Smt. Promila Seghal had claimed user from 1975. In the written
statement filed by respondent on 25.07.1997, the respondent had claims that the user is from 1980. According to respondents written statement in the
suit filed by Smt. Promila Seghal, it is stated ""Plaintiff herein started using impugned trade mark Kundan only in about last week of December 1994,
while the defendant has been using their mark to the knowledge of the plaintiff herein as has been stated herein above since the year 1980,"" and that
plaintiff is a pirator of the impugned trade mark Kundan and is trading deceptively. The plaintiff is not the proprietor of the impugned trade mark
Kundan. The plaintiff is a dishonest person and falsely claimed user of the mark Kundan since the year 1975 which is absolutely denied by the
defendant. The plaintiff had never used the trade mark Kundan in relation to wires and cables. The plaintiff started manufacturing, marketing,
electrical wires in a clandestine and suspicious manner"". The plaintiff referred to here is Promila Seghal.
In the written arguments filed by the respondent against Smt. Promila Seghal in suit No. 51/96 it is stated ""It is further pertinent to known that the
plaintiff has not used the word Kundan as a trade mark. The label being used as trade mark Kundan has also not been placed on record.
It is true that a petition under Order 23 was filed, in which petition, it is stated that ""by virtue of aforesaid assignment deed, the plaintiff now
acknowledges the defendant's user since the year 1975"". This petition is accepted by the court and orders were passed in view of the agreement
between the parties. The court was not asked to adjudicate the date of user. It would indeed be gross injustice, if a person after having attacked
certain documents as false, then gets into an agreement with the author of the documents and thereafter claims that since those documents have now
been whitewashed, no authority can look into the same. It is true that while defending a case all grounds of attack will be taken which may or may not
stand scrutiny of law, after the evidence is recorded and assessed. Therefore merely because the respondent had alleged in the suit that Smt. Promila
Seghal was a pirator of the mark and there is no user from 1975 it does not mean it is proved. But the user from 1975 must be proved before the
Registrar.
The Registrar cannot close his eyes stating that since the compromise has been arrived between the parties, it is open to the respondent to now
adopt impugned date of user. The Registrar owed a duty to the public to see if the user from 1975 was proved. In both these opposition proceedings,
the Registrar had not performed his duty as the authority vested with the purity of register in examining whether the claim made by the respondent is
indeed correct. It is necessary that the matter is now remanded. The impugned orders are set aside.
The Registrar must examine whether the change of user from 1982 to 1980 is proved by acceptable and admissible evidence. The Registrar must
also examine if the documents produced by Atul Cables are believable and the claim of user from 1975 is proved by acceptable and admissible
evidence. The Registrar must remember that there is evidence to show that the appellant came into existence in 1981 as kundan Cable India. It is
indeed an another matter whether the appellant sold cables from that date. It is the case of the appellant that the respondent predecessor having been
his purchaser, it could not have honestly adopted Kundan Cables for his goods. We repeat that in these proceedings it is the respondent/appellant who
should prove that his mark shall be registered.
For the above reasons, the impugned orders in OA/83/2004/TM/DEL and OA/27/2005/TM/CH are set aside and the matters are remanded to the
Registrar for deciding the opposition and passing orders preferably within six months from the date of receipt of this order. The Registrar shall
examine all these issues and thereafter decide the matter in accordance with law. Accordingly, appeals are allowed. No costs.