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Judgment
Prabha Sridevan, J
This Rectification Application was originally filed before the Hon'ble High Court of Delhi in 2003 and later transferred to the Board. The pleadings
of the applicant are set out in brief. The mark which is sought to be removed is ""ELFY"" registered as No. 605340 in class 1. The applicant is
established in Karachi, Pakistan. Since 1981, this mark has been used as a trade mark. The word ELFY has been used for industrial adhesives by the
predecessors in interest of the petitioner and then by the petitioner. The petitioner claim to have built a reputation for superior quality adhesives and
they have acquired transborder reputation and particularly in India. Along with the trade mark ELFY, the logo of a baby elephant hanging from an
inverted arrow was also adopted. The word ELFY is a coined word from the word 'elephant'. The petitioner is the registered proprietor of the mark in
Pakistan with Registration No. 74814 in class 1 and No. 74815 in class 16. It was originally adopted by Hardman Corporation and then it was assigned
along with goodwill on 27-12-1987 to Mohammed Arif Sheikh trading as Hardman Enterprises. There was a subsequent assignment to Haji Nazir
Hussain as Swat Adhesive Company vide a Deed of Assignment dated 19-8-1990. This company obtained registration of two additional trade marks
namely No. 110354 and 110355. All the four marks were assigned on 23-12-1997 to Al-Nazeer Nippon Chemicals, ANC, the petitioner herein. The
petitioner has extensively advertised its products and has given the sales and advertisement figures from 1981. From 20 million Pak. Rs. in 1981, the
sales figures as on 2000 are said to be 145,380,000 Pak. Rs. According to the petitioner, the mark is a coined word and therefore entitled to the
greatest degree of protection. There is trans-border reputation and continuous use over 22 years. It has been advertised in various magazines and the
products are known for their efficacy. The similarity in packaging, the colour scheme, the idea of elephant logo etc show the dishonesty of adoption.
Therefore, the mark should be removed. In support of their case, they have filed several documents like the Power of Attorney given by Mohammed
Arif Sheikh to Sheikh Mohammed, a resident of New Delhi; the product packing of plaintiff as well as the defendant (Colour Scan two pages); the
certificate of registration that was given to the petitioner on 13th August 1981 and this registration is for the word as well as the logo. The documents
also show that TM 24 has been filed for recording the name of Mohammed Arif Sheikh as proprietor in the place of Hardman Enterprises on the basis
of the Assignment Deed dated 27-12-1987. There is a TM 24, whereby Haji Nazir Hussain has been registered as the proprietor from 19-8-1990.
Copy of the Assignment Deed dated 23-12-1997 by which Haji Nazir Hussain has assigned the mark along with the goodwill to the petitioner herein
has also been filed. The schedule to this Deed contains all the four marks. Copy of the representation sheets for trade mark application before the
Registrar of Trade Marks, India has also been filed, which shows that the application has been made for the applicant's mark at 9-8-1996 as proposed
to be used. There are documents to show that the applicant has been exporting ELFY Super Blue to Greece, South Africa, Thailand, Bangkok, Japan,
Sweden, U.S.A. etc. There are copies of advertisements in magazines like Khaleej Times from 1996 in the name of the applicant. There are
advertisements in September 1998 Readers Digest showing the mark as an elephant in a broken rectangle. There is also evidence to show that ELFY
Super Blue advertisement was telecast in the year 2000 in SONY Television. The mark 605340 applied for in 27-8-1993 was granted registration on
15-11-2000. This is the mark which is sought to be removed.
In the reply filed to this application, it is said that the respondent is the owner of not only of the impugned trade mark but other trade marks as well.
According to him, he has obtained copyright of the mark ELFY along with the baby elephant. It is stated that the respondent adopted the mark ELFY
in the year 1988 and it has been used since 1989 continuously. According to the respondent, the logo was created by a commercial artist by name
Moulana Masood. According to the respondent their sales have reached Rs. 57,00,000/-. They have been given awards in the year 2000 and again in
the year 2008 for the adhesive manufactured and marketed under the trade mark ELFY and purchasers recognised their goods by the mark.
According to the respondent, the applicant is a Pakistani national and he is not a registered trade mark owner of ELFY in India for adhesives. In
October 2004, the respondent came to know that the applicant was selling the adhesives in India under the trade mark ELFY. A suit has been filed for
infringement in the District Court of Delhi. According to the respondent, it is the applicant who has started manufacturing the adhesives and that too
infringing the labels and packages. According to the respondent, their adoption is honest and that the applicant was aware about the respondent's
registration of the mark 605340 and therefore the application is time barred. The applicant is not the proprietor of the trade mark ""ELFY"" and they are
merely distributors. The evidence given by the applicant in cross examination in the Court will be relevant to show the falsity of the applicant's claim.
Documents have been filed by the respondent. They are the Trade Mark Registration Certificates for 605340 and other marks; the Newspaper
advertisements for the marks; the first of such advertisement is in the year 1994. There are bills and invoices of the respondent from page 201 to 234,
the earliest of which is of 1998. The Registration of Design was effected in 2000. In 1997, a letter has been written by the applicant stating that they
are not users in India officially although through other means their product reaches Indian market and that their applications for registration are
pending in the Trade Mark Registry and that in view of this, copyright obtained by the respondent can be rectified. A copy of the Assignment Deed
filed by the applicant has been enclosed to show that the consideration for the assignment in favour of the applicant is left blank and therefore no
reliance can be placed on this. There are copies of the Newspapers to show Hardman Corporation to be a distributor of the company under the mark
ELFY. The transcript of the cross examination of the petitioner has also been filed. The status reports of several applications have also been filed.
Here we find that ALFY is opposed both by the petitioner and the respondent; ELLE is opposed by the respondent; ALFA opposed by respondent;
ELFY opposed by petitioner as well as respondent. There is a Memorandum of Compromise between M/s. Pidilite Industries and M/s. Prime
Products, the respondent herein, which shows that the matter has been amicably settled. There are documents to show that the respondent has won
award for their mark which are identical to the petitioners mark. Finally, Legal Proceeding Certificates for the impugned trade mark are enclosed.
3 . Both the counsel made their submissions. The Learned Counsel for the applicant submitted that the registration has been granted on 15.11.2000.
This Transferred Rectification Application was filed in August 2003, so there is no delay. According to the applicant, his case is one of trans-border
reputation. During the years 1994 to 1996, magazines like Fortune and Readers Digest carried their advertisements. According to the Learned
Counsel the rights, which aid a petitioner in passing off action, a fortiori, aid him in Trade mark action. The Learned Counsel submitted that though the
respondent's claim of user is from 1988, there is no evidence. The Learned Counsel submitted that there is no explanation why the Urdu language was
used in the package and this show fraud and dishonesty in adoption. There is no plea of honest and concurrent user.
The Learned Counsel for the respondent submitted that rectification petition must be dismissed because it is time barred and the application lacks
bonafide. There is no evidence of use by the applicant even in Pakistan. The Learned Counsel also submitted that even the advertisement show ELFY
in the broken rectangle and not with the elephant. The respondent's package has been registered under the Copyright Act, there is no confusion since
the petitioner's products are not available in India. The Learned Counsel submitted that onus of proof has not been discharged by the applicant. Both
the applications filed in 1996 and 1998 have been abandoned. Fraud has to be proved and mere allegation is not enough.
The Learned Counsel also submitted that there are many number of Urdu speaking people in India and on the ground of adoption of the Urdu logo,
the mark cannot be removed.
6 . Many decisions were relied on by both the counsel. The applicant relied on the following judgements:-
(1) 1996 PTC (16) - FAO(OS) 262/94 - N.R. Dongre Vs. Whirlpool Corp. - Where the Hon'ble Delhi High Court held that goodwill is not limited to a
particular country because in the present days trade is spread all over the world and goodwill or reputation of goods or trade marks, design etc
depends on the availability of goods.
(2) 2004 (28) PTC 585 (SC) - Milment Oftho Industries & Ors. Vs. Allergan Inc. - Where the Hon'ble Supreme Court held that if a mark is
associated with the respondents worldwide it would lead to an anomalous situation if an identical mark is allowed to be used in India. At the same time
the Hon'ble Supreme Court observed that multi-national companies who have no intention of coming to India should not be allowed to throttle an
Indian mark, if the Indian Company has genuinely adopted the mark and is first in the market.
(3) AIR 1959 CALCUTTA 636 (V 46 C 174 ) - Bengal Immunity Co. Ltd. Vs. Denver Chemical Manufacturing Co. and others - In this case, the
Hon'ble High Court of Calcutta observed that even if any hardship is caused to the applicant, if the use has been proved to be dishonest then the
Registrar cannot permit registration on the basis of ""other special circumstances"".
( 4 ) ILR (1976) I Delhi - C.M. (Main) 67 of 1974 - M/s. L.D. Malhotra Industries Vs. M/s. Ropi Industries - In this case, again the Hon'ble Delhi
High Court held that discretion can only be exercised when two or more parties unknown to each other and unaware of the mark used by each other
innocently adopt and use the same trade mark in respect of their respective goods of the same nature. The adoption ought to be honest, bona fide and
without knowledge of the other mark.
(5) 1982 PTC 239 - Prem Nath Mayer Vs. The Registrar of Trade Marks and another - In this case, the Hon'ble High Court of Calcutta held that
honest and concurrent user must be proved.
The respondent relied on the following judgements:-
(1) 2010(7) R.A.J. 634(Del) - Roca Sanitario S.A. Vs. Naresh Kumar Gupta & Anr. - Where it was held that the transborder reputation cannot be
accepted in India as a sole criteria for protection of a registered or an unregistered trade mark. For registered trade mark there has to be user of the
trade mark also.
(2) 2009 (39) PTC 457(Mad.) (DB) - World Wide Brand Inc. Vs. Dayavanti Jhamnadas Hinduja & Anr. - In this case it is held that ""It is for the firm
to establish an adequate goodwill in the business which could be said to suffer damage by reason of the activity of the other firm. The firm must also
establish that it has a business reputation in this Country which they are entitled to protect. It would not be sufficient even a mere knowledge of the
make of the petitioner in the Country without any business activity. The petitioner cannot also take advantage of simple advertisement in India in order
to prove that it is the user of a trade mark in this Country.
(3) 2005 (30) PTC 632 (IPAB) - Nabisco Inc, A New Jersey Corporation Vs. Royal Snacks Food Products & Anr. - In this case the Appellate Board
arrived at its decision that the applicant never used their trade mark in India and as such the first respondent is the prior user of the impugned mark in
India.
(4) 2007 (34) PTC 136 (IPAB) - Bal Krishan Jindal Vs. Mohinder Singh & Anr. - Where this Board rejected the plea for rectification on the ground
that there is no evidence on record to show the confusion and deception in the mind of public.
We have considered the submissions made on both sides. In the present case the user is from the year 1989. There is no proof of user. This Board
in Khushi Ram Behari Lal Vs. New Bharat Rice Mills & Anr. [2011 (46) PTC (Del.)] case and also in M/s. Times Publishing House Ltd. Vs. M/s.
The Financial Times Ltd. [Order No. 91 o 2012 dated 4-4-2012 of IPAB in TRA/6/2005/TM/, ORA/64/2007/TM/DEL etc] cas has taken the view
that if the registered proprietor is unable to prove user from the date as claimed then the mark is liable to be rectified. Here the submission made by
the Learned Counsel for the appellant that there is no proof of user stands un-rebutted. The earliest evidence of user is only in 1995 and not from 1988
as claimed. Therefore, if a person is unable to prove user, the mark is not entitled to remain in the Register. We reproduce below the two marks:-
Applicant's Mark
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-
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Respondent's Mark
It is apparent that there is a clear imitation. The mark ELFY is a coined word and therefore it is entitled to the greatest protection. It is difficult for
us to accept that the respondent has innocently and without knowledge of the applicant's mark, adopted the same coined mark and had also chosen the
same words. The compromise entered into between M/s. Pidilite Industries and M/s. Prime Products, the respondent herein, does not show the
respondent in a favourable light. In the compromise memo the respondent herein agreed that they will not use packaging label identical or deceptively
similar or having same colour scheme as in the plaintiff's Fevi Quick label and design. Therefore evidently the respondent has copied Pidilite's design.
The averment that an artist had drawn the design of elephant logo is not proved. The question is who copied who. In the absence of evidence to show
the respondent had used the mark from 1988, on that ground alone the mark deserves to be removed. In addition, the exact imitation of applicant's
label is not only the proof of dishonesty but also proof of the transborder reputation of the applicant. The explanation given that the Urdu language was
chosen because there are many Urdu speakers in India does not inspire confidence. A person cannot seek registration on the basis of reputation
without proving user as claimed. In this case, the rectification applicant claims that the respondent is riding on his reputation. As regards the alleged
blank found regarding quantum of consideration, we found that in the document filed in court, there is no blank. Rs. 500/- paid as consideration. In the
Milliment case (cited supra) the Hon'ble Supreme Court held that the test is who is first in the market. In the cross examination of the applicant, the
answers do not really affect the applicant's case. The witness has said that they have advertised through international magazines circulated in India
like Readers Digest, Fortune etc. According to them they started marketing ELFY in the year 1981. They have also stated that they are selling their
products by crossborder trading which means people are buying their products throughout the country. On the ground of failure to prove user as
claimed and, on the ground of dishonest adoption, the following impugned mark is removed.