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Judgment
Prabha Sridevan, J
1 . This rectification application is filed for removal of the mark No. 885050 ""MANIKCHAND"". in the name of Rasiklal Manikchand Dhariwal
(H.U.F.) in Class 14 The applicant is carrying on business in Guwahati. Their predecessor in interest was one Manikchand Soni, a goldsmith and
dealing in goods and services covered by Class 14 of the Fourth Schedule of the Trade Marks Rules, 2002 under the name and style of Manikchand
Nandkishore Soni and has been using ""Manikchand"" as the trade mark/name and/or trading style since 1947. In 1998 the applicant company was
formed and the trade mark was transmitted to the company. The respondents have registered the mark in Class 14 without any bonafide intention to
use the same in relation to the goods and services. The registration was effected from 3.11.1999 and there has been no bonafide use of the mark by
the respondents in relation to the said goods or services up to a date of three months before the date of the application and also for a continuous period
of five years from the date on which the trade mark was entered in the register. Along with the statement of case, the applicant filed Annexure 'A' to
'I'.
The respondents filed their counter statement denying the allegations of non use. According to them two user agreements were executed on
10.2.2006, one in favour of ""ZEE BANGLES"" and the other in favour of ""M/s. SANJAY JEWELLERS"". The sa user agreements were lodged for
registration in the Trade Marks Register. In addition, gold coins have been distributed by the respondent. The respondents also contended that none of
the documents marked by the applicant shows the use of ""Manikchand"" as trade mark name or trading style. According to the respondent, the mark
Manikchand"" was adopted by the respondent, since 1968 and it has attained the status of a well known trade mark. There are film fare awards
started in 1994 called ""Manikchand Filmfare Awards"". The business of goldsmith was carried on by the applicant under the name Manikchand
Nandkishore Soni but ""Manikchand"" was never used as a trade mark or a trade name. The respondents have filed an application No. 717438 under
Class 14 and the ""Manikchand"" logo is an extension of the said trade mark which is the impugned mark in 885050. This was done to protect their well
known mark. The documents would show the trade mark has been continuously used. The respondent filed an affidavit in which exhibits 1 to 137
were filed to show their user of the mark. The respondent prays that the mark cannot be rectified.
3 . To this a reply was filed by the applicant. There they have referred to suit No. 3420 of 2005 filed by the respondent against the applicant for
infringement of the trade mark which is impugned herein. Annexure 'A' to the reply is the order passed by the Hon'ble High Court, Bombay granting
ad interim order but making it clear that the applicant is at liberty to make necessary application for rectification of trade mark by virtue of non user of
the plaintiff mark and that the interim order will not come in the way. The learned Counsel for the applicant submitted that the respondent had filed a
suit against the applicant.
4 . The learned Counsel for the applicant submitted that the applicant was in the jewellery business for a very long time. The respondent was
associated with Gutkha and Paan Masala. There is no user of the mark in respect of precious metals and because of the suit filed against the applicant
in the Bombay High Court, the applicant is a ""person aggrieved"". The learned Counsel submitted that the respondent had obtained the impugned mark
and blocked the register. To show user they have produced Gold coins that have no inscription. There is no evidence that they have been used in the
course of trade. The Bombay High Court order was dated 24.1.2006, The alleged user agreement was dated 10.2.2006. It is clear that they have been
brought about only to put up the case of user. The concept of well known trade mark is not intended to protect trafficking in mark. The fact that the
mark has been registered in favour of the respondent will not make it immune to attack. Under Section 31 of the Trade Marks Act, 1999 (hereinafter
referred to as the 'Act') the registration is only prima facie evidence of its validity. The registration is always open to attack as seen from Section 124
of the Act. The learned Counsel referred to the following decisions:
(i) MANU/IC/0017/2012 - Shell Transource Limited Ground Floor, Shah Industrial Estate Saki Vihar Road, Andheri (East) Mumbai-400072,
Maharashtra, Appellants Vs. Shell International Petroleum Company Ltd. ""Shell Centre"" London Se1 7NA England, Respondent
(ii) 1998 (18) PTC (Bom) - Ciuett Peabody & Co. Inc., Petitioner Vs. Arrow Apparels, Respondents
(iii) (2002) F.S.R. 51 - Laboratoire De La Mer Trade Marks, High Court of Justice (Chancery Division)
(iv) (1992) R.P.C. 258 - Palm Trade Mark
(v) 1986 1 SCC 465 - American Home Products Corporation, Appellant Vs. Mac Laboratories Pvt. Ltd. and another, Respondents
(vi) (2004) 6 SCC 145 - Satyam Infoway Ltd. Appellant Vs. Sifynet Solutions (P) Ltd., Respondent
The learned Counsel for the respondent submitted that when the applicant applied for registration of the mark ""Manik Jewellers"" on 28.2.2002, it
was ""proposed to be used"" mark. This is not an error. That is when they started really using the mark. User cannot be changed. The learned Counsel
submitted that none of the documents filed along with the statement of case can be relied on since no affidavit has been filed. The documents shall
only be proved by affidavit. He referred to Rule 8 of IPAB (Procedure) Rules, 2003. There is no use pleading that applicant is aggrieved when there
is no proof. Even children know ""Manikchand Filmfare Awards"" and ""Manikchand"" is well known and it is entitled to protection as a well known trade
mark. The learned Counsel submitted that the adoption of the name by the applicant itself is not bonafide and the applicant had constructive notice of
the various documents filed by the respondent and the reputation of the trade mark. The user agreement was available on the date of application. The
mark shall not be removed.
The question why non user is important and why genuine use is also important is explained in the judgment of the Chancery Division in 2002 F.S.R.
51 - LABORATOIRE DE LA MER TRADE MARKS. We extract the following:
(i) ...It is common ground that the key question in the case of each mark is whether it has been ""put to genuine use"" within the relevant period ""in
connection with the goods in respect of which it is registered"". The relevant period is the five years expiring on March 27, 1998.
Our Act, sensibly, explicitly requires the trade mark owner to prove use of his mark when non-use is alleged. Probably that is implicitly under the
Regulation too, for who is to know most about the details of user other than the owner of the mark?
The words ""our act"" refers to the British Act. The learned judge held that the user of the mark which itself means only ""genuine use"" of the mark and
it is required; because there is definite public interest for any mark to be retained in the register.
We further extract from the same judgment:
(ii) ...They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or
similar marks. They are abandoned vessels in the shipping lanes of trade...
(iii) ...The Trillium point will undoubtedly come up again - for it seems bizarre to allow a man to register a mark when he has no intention whatever of
using it. Why should one have to wait until five years from the date of registration before anything can be done? Whatever the width of the ""umbra"" of
the specification, it should also be remembered that the holder's rights to stop infringement or prevent registration of later similar mark extend to the
penumbra"" of ""similar goods"" (section 10(2) of the U.K. Act. Article 5(1)(b) of the Directive and Article 9(1)(b) of the Regulation). A wide umbra
means there is an even wider penumbra. Other traders with a similar mark may not go into either the umbra or penumbra, whether by use or
registration.
Thus it is that the jurisdiction to remove for non-use is very important. It may be the only way of dealing with covetous specifications, albeit it can only
come into play after five years from the date of registration. It is important that the procedure can be made to work very fast (as, for instance, in this
jurisdiction, by a direct application to the court rather than the Registry). It is also necessary that it operates on clear principles...
(iv) ...Companies, particularly large ones, used to indulge in ""trade mark protection programmes"". Any mark which they wished to protect from a non-
use attack would be specially applied to a product normally sold under some other trade mark. Minor sales of these specially marked products were
made often to friendly retailers; no real advertising or marketing efforts would support the sales. The idea was that any sales would do. That idea was
exploded in a case called Imperial Group Ltd. v. Philip Morris & Co. Ltd. (NERIT Trade Mark) (1982) F.S.R. 72. Imperial wanted to stop Philip
Morris from introducing a brand of cigarettes called ""Merit"". They had a registration of the word ""Nerit"". If valid, Merit would probably infringe. But
Nerit had not been used. So Imperial arranged for packs of Nerit cigarettes to be prepared and sold on a limited lion Nerit cigarettes were sold, mainly
from independent outlets. But the whole point of the exercise was to establish "" bona fide"" use of the mark and not to establish a brand which had
profitable sales. The English Court of Appeal held that the use was not bona fide.
(v) ...One would compare the use actually made with the size of the organization, how it and similar entities normally went about marketing and so on.
A bid trader who had made only limited sales would particularly have to explain what was going on. If the main or a principal motive was trade mark
protection rather than simply making sales under the mark, then the use was not ""bonafide"".
(vi) ...Yes, marks must be used within the relevant period, but there seems no reason to make a trader who has actually made some small, but proper,
use of his mark, lose it. Only if his use is in essence a pretence at trade should he do so. And of course, if he has only made limited use of his mark it
is likely that the use will be only for a limited part of his specification of services. It he has a wider specification that can and should be cut back to just
those goods for which he has made use. That would leave him with just a small umbra and a correspondingly reduced penumbra.
(vii) ...You would not establish genuine use if all you had done was to put the mark on a few goods and exported them for a non-commercial purpose.
After laying down the principle, the learned Judge held in that case the sale was not mere tokenism.
We have extracted this judgment in detail, because we are of the opinion that no one, we repeat no one, shall block the register by obtaining
registration in all the Classes without any intention to use it. That is really detrimental to public interest.
In 1986 1 SCC 465 - American Home Products Corpn. Appellant Vs. Mac Laboratories (P) Ltd., Respondents the Supreme Court held that the
intention to use a trade mark to be registered must be genuine and real. The approach underlying all trade mark laws is to prevent trafficking in trade
and trafficking means getting the trade mark registered without any intention to use it in relation to any goods but merely to make money out of it.
7 . In the present case, the respondent has raised a valid objection regarding the documents filed along with the application. Rule 8 clearly provides
that evidence shall be in the form of an affidavit. In any event documents can only be proved by affidavit and even the Civil Procedure Code provides
for evidence to be proved by affidavit. The documents can be marked only through a witness and the affidavits filed are in lieu of the witness getting
into the box. The documents in connection with the statement of case cannot be marked in evidence since they have not been proved in accordance
with law.
However, the order passed by the Bombay High Court marked along with the reply may be looked into. On 24.1.2006, a notice of motion was taken
up and the Hon'ble Bombay High Court referred to the plea of non user made by the applicant and held that the applicant was at liberty to seek
rectification. On 10.2.2006 the interim order granted in favour of the respondent herein was vacated. The fact that the respondent has filed a suit
against the applicant herein for infringement of trade mark and other reliefs is sufficient for us to hold that the applicant is a ""person aggrieved"". The
respondent has marked the documents in the opposition proceedings wherein the respondent has opposed the registration of the mark ""Manikchand
Gold Coins"", ""Manikchand Diamond Jewellery"" and ""Manikchand"". These documents have been marked as Exhibit 134. In the notice of opposition it is
stated that the user claimed by the applicant is false and that it is likely to deceive and that they are entitled to exclusive proprietorship of the mark.
Therefore even according to the respondent, the applicant has claimed user of the above mark. Whether the applicant can prove it or not will be the
issue in the opposition proceedings. But for us here this evidence is enough to hold that the applicant is a ""person aggrieved"" and he has claimed user
of the mark. The applicant has alleged that the respondent has not used the mark at all. This rectification has been filed solely on the ground of non
use. If there is non use then the mark should be removed.
To show user the respondent has filed several documents. But before that we will have to look at the pleadings. Paragraph 4 of the counter
statement deals with the respondent being engaged in diverse range of goods. including class 14 which do not find a place here. Paragraph 5 of the
counter statement refers to the adoption of ""Manikchand"" in respect of bidis in 1958. Paragraph 6 deals with the adoption of the same mark in respect
of Zarda and that in 1966 the respondent applied for registration of the mark ""Manikchand Zarda"". Exhibit 1 is a copy of the Trade Marks Journal
advertisement. Exhibit 2 is a break up statement of sales tax paid for Pan Masala and Gutkha for the period 1988-89. The same paragraph refers to
Exhibit 3 to 14 which are sales invoices for the same goods for the period 1990 to 2001. Paragraph 8 deals with the Manikchand Filmfare awards and
the copies of the relevant page (exhibits 15 to 27) and copies of sponsorship invoices (exhibits 28 to 38). Paragraph 9 contains the averment that the
respondents mark has become a well known mark. Paragraph 10 deals with the sales figures and sales promotion material of electrical accessories
bearing the mark ""Manikchand"" (exhibit 39, exhibits 40 to 44 and exhibit 45). Paragraph 11 deals with the adoption of the mark in relation to tea
(exhibit 46, exhibits 47 to 52 and exhibit 53). Paragraph 12 deals with the adoption of the mark for packaging materials (exhibit 54, exhibits 55 to 60
and exhibit 61). Paragraph 13 deals with the adoption of the mark ""Manikchand"" a paper product (exhibits 62, 63 to 77 and exhibit 78). Paragraph 14
deals with adoption of the mark ""Manikchand"" along with ""Oxyrich"" drinking water (exhibit 79, exhibits 80 to 93 and exhibit 94). Paragraph 15 deals
with Gold Coins - That as a matter of gesture and encouragement to members of public associated with trade and business, the respondent periodically
distributed precious metals, such as, Gold Coins and/or Silver Coins engraved with his well-known trade mark ""Manikchand"" word/Group Logo.
Hereto annexed and marked Exhibit ""95"" is a photograph of Gold Coin engraved with well-known trade mark ""Manikchand"" of the respondent. Hereto
annexed and marked Exhibit ""96"" is a copy of the Invoice No. G/7390 dated 27.11.2004 of M/s. Ranka Jewellers, 1141, Raviwar Peth, Pune-2, issued
in favour of Dhariwal Industries Limited, Manikchand House, Pune-411001.
Paragraph 16 contains the details of the registration of the mark ""Manikchand"" in respect of various products (exhibits 97 to 111). Paragraph 17
deals with the registration of the mark ""Manikchand"" a group logo (exhibits 112 to 127). This contains the impugned mark 885050. Exhibit 128 is the
registration certificate of the impugned mark. Paragraph 19 deals with the mark being a well known mark. Paragraph 20 again refers to the impugned
mark and the rights of the respondent to be protected against infringement. According to paragraph 21 it is only when examination reports were issued
by the Registrar of Trade Marks that they came to know about both the applications for ""Manikchand"" in Class 14 under No. 1083981. This paragraph
has referred to the issuance of letter. Paragraph 22 refers to another letter (exhibit 130) and that if the application was not withdrawn they would file
a notice of opposition (exhibit 131). Paragraph 23 refers to the reply of the applicant (exhibit 132) to and the consequent notice of opposition (exhibit
133). Paragraph 24 refers to the respondent noticing the applicant's various registrations and the copies of the relevant notices (Exhibit 134 to 137).
Paragraph 26 deals with the conduct of the applicant in refusing to restrain from using the mark ""MANIKCHAND"" in respect of jewellery etc. and
with deliberate business intentions. Paragraph 27 deals with the extensive publicity by the respondent including ""Manikchand Filmfare Awards"".
Paragraph 28 reads as follows:
That the respondent is prior in point of time to originally conceive, honestly adopt, bonafide use, protect by registration under the Trade Marks Act in
respect of different goods and services. In addition to use of the trade mark ""Manikchand"" in relation to GOLD COINS distributed by the respondent,
he has issued User agreements dated 10.2.2006 in favour of i) ZEE BANGLES, and (ii) M/s. SANJAY JEWELLERS.
Paragraph 29 deals with the alleged dilution by the applicant of the respondent's well known trade mark.
11 . We have dealt with each of the paragraphs in detail to examine whether the respondent has even pleaded user. There is no plea of user in these
paragraphs. The various invoices regarding the diverse goods have been filed. In some we find the word ""Manikchand"" as in exhibit 47 but exhibit 42
does not contain the word ""Manikchand"". However, the document relating to Gutkha contains the word ""Manikchand Gutkha"". There are invoices of
Manikchand Oxyrich"" etc. but nothing in relation to Class 14 goods. No evidence is produced.
12 . In the judgment of the Chancery Division (cited above), the Court has with clarity dealt with genuine user and non user. The learned Judge
observed that those who have to prove ""use"" should ""...read their proposed evidence with a critical eye..."" and ""...All the t's should be crossed and i's
dotted..."" Exhibit 95 is a gold coin with a rose inscription. It does not bear the word ""Manikchand"". The Counsel submitted across the Bar that he
would produce it now. Since there would be no way of ascertaining when the coin was made, we are not inclined to look at it. Exhibit 96 is a gold sale
bill by one Ranka Jewellers to Dhariwal Industries Ltd., address Manikchand House. The sales show sale of coins 109. This hardly proves user. It
only shows that Ranka Jewellers sold gold coins to the applicant.
The user agreements that have been executed allegedly on 10.2.2006 have not been produced before the Court. In fact we are not inclined to give
any weight to these user agreements since they are dated 10.2.2006. The order of the Bombay High Court where the deponents (applicants) was held
to be at liberty to file rectification on the ground of non-user was passed in January, 2006. It is not surprising that user agreements have been entered
into thereafter to be produced in the event rectification proceedings are filed. These user agreements even if they are produced could not have helped
the cause of the applicant since any use by ""Zee Bangles"" or ""Sanjay Jewellers"" was only after 2000 whereas in the only application for this mark,
namely, 885050 the application is dated 3.11.1999 and the user claimed was from 1.4.1999. But there is no proof of user. The rectification application
has been filed on 18.12.2006 and there is no evidence in these 137 documents to show user in Class 14 goods. We have referred to paragraph 4 of the
Counter Statement. Even in their own pleadings they have not referred to Class 14 goods though they have referred to other goods. In paragraph 15
which was extracted above, the distribution of gold coins was as a matter of gesture and encouragement and not someone as dealing in Class 14
goods.
14 . These are the pleadings. The evidence is even less helpful. There is not one single sentence in which the respondent has claimed that on and from
this date they began their business in jewellery and allied materials and have been continuously using the mark. Paragraph 28 is delightfully vague with
regard to the particulars. The fact that ""Manikchand"" as a manufacturer of Gutkha has gained formidable reputation cannot help the respondent in this
case. In fact ""Manikchand"" and ""Gutkha"" may even go together symbiotically. Here we are concerned with Manikchand and Gold. In fact in the
Chancery Division case (cited supra), the mark was registered in Class 3 and in Class 5. Applications were made for rectification of the two marks on
the ground of non use. No use was shown in relation to Class 3 but with regard to Class 5, the proprietor had shown some use.
The object of the Trade Marks Act (old) as held in 1998 (18) PTC Bom (cited supra) is not only to protect the trade mark but to see that does not
lead to monopoly. We find increasingly the phenomenon of persons blocking the register and registering the mark in relation to all the goods in
Schedule IV. It does not help for a vibrant commerce, it in fact goes against the principle of public interest. The extracts from 2002 F.S.R. 51 (cited
supra) lay down principles regarding the ""genuineness"" and regarding ""non user"" and we are of the opinion that our trade mark laws are also broadly
based on the same principles and we are guided by them. The haste with which the user agreement has been brought about after the order of the
Hon'ble Bombay High Court shows the lack of bonafide in the respondent. We are unable to approve of the conduct of the litigant who, pending the
litigation before the Hon'ble High Court, has brought about such documents.
The applicant is a person aggrieved and has also demonstrated that the case of non user must be accepted. For the above reasons, we allow the
rectification application ORA/33/2007/TM/MUM and the mark No. 885050 in Class 14 should be removed from the register with costs of Rs. 10,000/.