Modern Flour Mills Pvt. Ltd vs KRBL Limited And The Registrar Of Trade Marks

Prabha Sridevan, J

1 . This applicant herein seeks removal of the trade mark ""BABAL HIND"" under No. 1359845 in class-30 in the name of the Respondent No. 1.

Pending disposal of the main application, the applicant prays for stay.

2 . There is a background to this case which is necessary to be stated. One Vikram Roller Flour Mills had adopted the mark ""INDIA GATE"" in 1975.

The applicant claims to be the successor in interest under an alleged assignment deed dated 13.10.2009. The Respondent No. 1 filed suit No. 131/2011

under Section 134 and 135 read with Section 27 of the Trade Marks Act, 1999 for permanent injunction. against the applicant and Vikram Roller Flour

Mills (VRFM) and obtained ex parte, injunction restraining the applicant and VRFM from using the mark INDIA GATE. The Respondent has also

filed ORA/145/2011/TM/DEL against the mark INDIA GATE under No 611074. It is pending. When the miscellaneous petition No. 167/2011 in

ORA/145/2011/TM/DEL for stay was taken up, VRFM gave an undertaking that in the suit they would not raise in their defence, the fact that they

had the registration in their favour. This applicant has not given any undertaking and has argued the matter and orders have been reserved. VRFM

filed ORA/156/2011/TM/DEL on the same grounds as this. This was filed earlier. But the Intellectual Property Appellate Board Registry had not

brought to the notice of the Chairman that the Petitioner herein had sought urgent orders so the records of this Petitioner was not carried to Delhi

during the Circuit Bench Sitting between 5th - 9th September, 2011. The Learned Counsel for the Petitioner was aggrieved that while

ORA/156/2011/TM/DEL which was filed later was listed in Delhi this was not. IN ORA/156/2011/TM/DEL the counsel for the Respondent gave an

undertaking which was recorded as follows:

The Respondent will not seek any relief against the applicant on the basis of the registered mark ""BABAL HIND"" which is the subject matter of the

present rectification proceedings.

3 . So we permitted both the counsel for Petitioner and Respondent to make their submissions in Delhi and they consented to do so though the matter

was not listed, since the connected rectification application was in any case listed.

Sine this is connected with ORA 156/2011 we think it is necessary to extract some relevant portions of the order passed in that matter.

The Learned Counsel for the applicant submitted that it is admitted by the Respondent herein that ""BABAL HIND"" in Arabic language means India

Gate. This was not made known either to the Registrar or the public in general. The Learned Counsel submitted that while considering registration of

the mark ""INDIA GATE"" the Registrar has imposed disclaimer of the word 'INDIA'. It is certain that the word 'HIND' (which means India) was not

disclaimed only because the Respondent herein did not explain the meaning of BABAL HIND as it is known in Arabic. The Learned Counsel also

referred to Rule 33 of the Trade Marks Act, 1999. The Learned Counsel submitted that the Respondent's claim that his other applications for

registration of the trade mark ""INDIA GATE"" with or without device are at various stages of registration which includes opposition is not fully

correct. He has not disclosed that some of the applications have been refused. The Learned Counsel submitted that on the basis of registration of the

mark ""Babal Hind"", the meaning of which is known only to the Respondent the Respondent cannot restrain the applicant from using the trade mark

INDIA GATE"".

3 . The Learned Counsel for the Respondent submitted that Rule 33 will not apply here and that the interim order granted by the Civil Court, was not

on the basis of the registered mark ""BABAL HIND"" but since the Court was satisfied that the Respondent had used the mark ""INDIA GATE"" and

device from 1993. The Learned Counsel submitted that at this stage with out the counter-statement, the Respondent is unable to meet the allegations

made regarding the other trade mark applications and the alleged refusal.

4 . However, to avoid protracted litigation the Learned Counsel for

Respondent came forward to give this undertaking and the same is recorded:

The Respondent will not seek any relief against the applicant on the basis of the registered mark ""BABAL HIND"" which is the subject matter of the

present rectification proceedings.

It is made clear that this undertaking will not preclude the Respondent from asserting any common law rights that they may have on the basis of their

alleged user of the mark ""INDIA GATE"" with or without device from 1993. Recording this, the miscellaneous petition No. 167/2011 is disposed of. No

order as to costs.

5 . In this case the Respondent was not willing to give the undertaking. But considering the submissions made we are prima facie of the opinion that

had the Respondent disclosed BABAL HIND meant India Gate in Arabic, the Registrar may have seen all the cited marks India Gate and his decision

to grant registration may have been different.

Therefore we dispose of the miscellaneous petition as follows:

The effect of the registration of the mark BABAL HIND shall be stayed as regards the Petitioner herein, and the Respondent shall not seek any relief

against the applicant on the basis of the registered mark ""BABAL HIND"" which is the subject matter of the present rectification proceedings.

7 . It is needless to say that this stay will not operate upon any common law rights that the Respondent has.

M.P. No. 170/2011 is disposed of in the above terms. No order as to costs.