AI Structured Summary
Not yet generated for this judgment
Judgment
V. Ravi, Technical Member
The applicant herein is seeking the removal of the registered trade mark FOCUS VISION CARE which was applied for registration on 10th
January 1987 under No. 479297 in Class 9 claiming user since April, 1986. This trade mark was published in the TM - Journal with disclaimer
condition ""Registration of this trade mark shall give no right to the exclusive use of the device of optical lenses and expression ""Vision Care"". In effect
this means the registered proprietors were granted exclusive rights to the trade mark ""FOCUS."" Further the effective period of use prior to filing of
the impugned mark was just 18 months in respect of a highly descriptive and laudatory word which is contrary to law and against the basic tenets of
trade marks jurisprudence. The registration has been granted for all types of optical goods including lenses for a generic word and it cannot be
sustained in law. There are hundreds of items under the category optical goods and therefore the specification of goods on the basis of which
registration was granted is vague and not valid in law. The impugned mark has been also used by the respondent herein as a slogan in their
advertisement mentioned in pages 29 and 30 of the Counter Statement which reads ""9 years of Focus Vision and we have 2,30,240 eyes to thank"". To
compound the folly not a single piece of documentary evidence is on record to establish even the minimal use of allegedly 18 months prior to filing date
has been furnished. The assessment order by the Sales Tax Department, New Delhi in support of use mentioned in the counter statement pertains to
the period 1993-94 which is after the date of filing of the impugned mark. Secondly, the sales tax assessment order does not show any use of the trade
mark FOCUS VISION CARE. Thirdly, the assessment order is not in respect of manufacturing of all types of optical goods but is in relation to
Resale of optical goods"" as testified in Exhibit 12 of the counter statement.
The applicants have applied for registration of the trade mark FOCUS OPTIC under No. 1354775 which has been opposed by the respondent
herein.
The applicant submits that the respondents have not used the impugned mark since April, 1986. The impugned marks is therefore liable to be
removed from the register on the ground of non user for a continuous period of more than 5 years and not a single piece of document has been
furnished to establish that they are selling optical goods under the trade mark FOCUS VISION CARE.
The respondents have merely furnished advertisement for ""situation vacant"" column to prove user. Curiously it includes documents relating to
cellular phones invoices"" and purchase invoices without the impugned trade mark. The respondents have filed documents to show that they have
purchased goods under the brand ""Ray-Ban"" as resellers and not manufacturers.(Document No. 32). Similarly, they have purchased a Ophthalmic
Unit for Eyes Testing Machine for clients in Eye Clinic Centre from Kakubhai Purshotam Thakker (an importer) (Document No. 33). They have also
purchased from other wholesale optical company various other brands like LUXOTI, SUNLIT, CUCCI, but nowhere FOCUS VISION CARE brand
was sold.
The respondents have played a fraud on the Registrar by claiming to be the manufacturer of all types of optical goods which they have openly
admitted before the District Court, Delhi in C.S. No. 151/2005 that they are running an eye clinic centre under the trade mark FOCUS VISION
CARE and they are not manufacturers but service providers and operating an eye clinic.
The applicant relies on the observation made by P. Narayanan in the Law Trade Marks and Passing Off (6th Edition) in para 27.09 at page 904 and
905 reproduced below:--
Misrepresentation of facts. Where registration was obtained on the basis of untrue statement regarding user of the mark where such user was
material, the court is bound to remove the mark from the register. The mark may also be expunged if its registration was obtained by an untrue
statement to the registrar regarding any other material fact. (Eastman v. John Griffiths (1898) 15 RPC 105 at 110)
A mark registered on the basis of a false claim to proprietorship may be removed from the register. (Brown Shoe's Appln. (1959) RPC 29; Gynomin
Tm. (1961) RPC 408)
On 23rd April, 2005 the respondent/registered proprietor herein served a Legal Notice on the applicant calling upon them to Cease and Desist from
using the trade mark/trading style FOCUS OPTICS. The applicants are therefore person aggrieved by the presence of the impugned mark on the
register and also by the opposition filed to their application before the Registrar.
The respondent herein Shri Vikas Gulati, the sole proprietor of FOCUS VISION CARE has no locus standi to contest the impugned rectification
petition. In fact, the impugned registration was granted in favour Shri Vikas Gulati and Smt. Sharada Gulati a partnership concern trading as M/s.
Focus Vision Care. No deed of assignment or dissolution has been pleaded by the respondent in their counter statement. Further the alleged copy of
deed of dissolution dated 28th April, 1992 annexed to the counter statement is a doctored and fabricated document and cannot be read in the present
proceedings as it has been executed by one Smt. Sharada Rani and not Smt. Sharada Gulati. Even if it is assumed both are the same person, the
signature in the dissolution deed of Smt Sharada Rani is not the same in the Delhi Sales tax registration certificate, wherein Smt. Sharada Gulati has
signed. If this is a typographical error it is not supported by any amended deed. In the absence of proper transfer of proprietary right in the impugned
mark, the respondent cannot lead any evidence as per well settled proposition of law laid down by the Apex Court.
The applicant further submits that the impugned registered trade mark FOCUS VISION CARE is a common dictionary word used in every day
language by numerous traders and business entities and the respondent cannot claim any exclusive right on the word ""FOCUS"" even though VISION
CARE is disclaimed. It is therefore prayed to remove the impugned trade mark 'FOCUS VISION CARE' as it is contrary to the provisions of
Sections 9, 18, 47 and 57 of the Act.
The case of the respondents registered proprietor is briefly summarized as follows:--
a. The respondent deny that the applicant is competent to file the rectification of the impugned application and the same is liable to be dismissed as no
valid ground has been made out. The respondent submits that the applicant is dishonest and has adopted the name 'FOCUS' with mala fide intentions
and has given no explanation for the adoption and use of 'FOCUS' as a part of their trade mark. The applicant has deliberately filed a trade mark
application under No. 1354775 in Class 9 knowing full well that it is unlikely to be accepted in view of the prior registered trade mark of the
respondent. The subsequent adoption and use of the trade mark 'FOCUS OPTIC of the applicant cannot be distinctive and associated with their goods
in view of the prior registered trade mark of the respondent 'FOCUS VISION CARE' which as a whole is distinctive and is capable of distinguishing
the goods of the respondent. The present rectification proceeding is a counter-blast to the suit in C.S. No. 151 of 2005 which was filed by the
respondent. The respondents are carrying on an old established business since April, 1986 and have honestly conceived and adopted the impugned
trade mark FOCUS VISION CARE for marketing of optical goods in the market. The respondent sent a Legal Notice to the applicant on 23rd April,
2005 calling upon them to Cease and Desist forthwith the use of the trade mark 'FOCUS OPTIC as it is an infringement of the respondent's
registered trade mark. The present petition is highly misconceived, false, and frivolous and no cause of action has been made out by the applicant. The
respondents are providing services for eye sight testing and lenses are prepared and fitted in the optical frame which amounts to manufacturing and
marketing of optical goods. The respondents have been using the impugned trade mark for more than 25 years and its business has expanded and
prospered and any interference at this stage would cause serious prejudice to the respondent. [2000 PTC 561 (DB-Delhi High Court)]. The
respondents suit in C.S. No. 151 of 2005 (renumbered Suit No. 36 of 2008) was dismissed on 25th May, 2010 but in paragraph 20 of the judgment it
was held that the impugned mark is a composite trade mark consisting of Focus Vision Care registered under No. 479297 in Class 9.
b. The respondent further submits that on 5th October, 2007 the applicant was still continuing his business under the name FOCUS even though he
was restrained by an order dated 17th September, 2007. Therefore the respondent moved a contempt petition which was disposed off by the
aforementioned order dated 25th May, 2010 and in that the contention of the applicant herein was a lenient view may be taken as the
applicant/defendant was a female and not actively looking after the business and the plaintiff/respondent herein argued that warning may be given for
not committing breach in future. Thereafter, the applicant Smt. Santhosh Sharma approached the respondent Shri Vikas Gulati to settle the dispute
amicably and Smt. Santhosh Sharma the applicant herein has given in writing on 30th September, 2007 for withdrawal of the petition
ORA/81/05/TM/DEL. As a concession, the respondent gave in writing for the use the trade mark 'FOCUS OPTIC in any manner by the applicant.
The applicants have filed two miscellaneous petitions under M.P. 92/2013 (withdrawing settlement proposal) and M.P. No. 209/2013 {to take
evidence affidavit of Smt. Santhosh Kumari Sharma dated 28.01.2013 on record.} The matter was listed for hearing on 22nd August, 2013. We have
heard detailed arguments of the counsel on records, gone through the pleadings and are disposing of both the MPs along with the main matter.
The following authorities were relied on by the applicants:
i) ""SOFLENS"" T.M. (1976) R.P.C. 694
An application was made to register the mark ""Soflens"" in respect of contact lens, carrying cases for contact lenses and cinematographic films for
training purposes. It was opposed on the grounds; (1) that the mark was not capable of distinguishing the goods, the mark being phonetically equivalent
to ""Soft lens"" which are descriptive of soft contact lens; and (2) that the mark would be misleading under Section 11 if used in relation to contact
lenses not made of soft material. Applicants adduced evidence of use of the mark in the U.K. subsequent to the date of application and registration of
the mark in English speaking countries."" Application was refused.
ii) ""MUST"" T.M. (1976) R.P.C 712 B.O.T.
Applications to register the word ""MUST"" in various classes in Part A or Part B of the register was refused on the ground that the word has a direct
reference to the character or quality of the goods and so did not qualify under section 9 or 10 of the Act. There was no evidence of user of the mark.
An appeal to the Board of Trade was dismissed.
iii) 1999 PTC (19) 307 SANT KUMAR MEHRA v. RAM LAKHAN
The word 'MATKEWALA' used by the plaintiff for the items like roasted gram and roasted groundnut appears to be used as a descriptive word and
is distinguished from other varieties of grams and groundnut. The word 'MATKEWALA' is being used to indicate and describe the thing intended to
be sold and by using the said word information is sought to be afforded as to the nature and/or character of the article. Accordingly, the word
'MATKEWALA' as is used in the present case is a descriptive word and thus merely because the same word is being used by the defendant it cannot
be held that a case of passing off has been made out by the plaintiff.
iv) 1996 PTC (16) 561 M/s. PANACEA BIOTEC LTD. v. M/s. RECON LTD.
When a name is derived or coined from the name of the principal ingredient utilized in the manufacture of a medicine no distinctiveness or
exclusiveness can be claimed by a manufacturer or trade in respect of the part of the name taken by him for his trade mark.
v) 2007 (34) PTC 731 (IPAB) JAIN DOORS PVT. LTD. v. SURESH KUMAR JAIN
We are of the view that the mark has not acquired distinctiveness and hence does not qualify for registration as per provisions of section 9 of the Act.
Moreover, we are also of the view that the impugned mark is very descriptive of the goods and has not acquired a secondary meaning.
vi) AIR 1930 PC 57 (1) SIDDIK MOHAMMED SHAH v. Mt. SARAN & OTHERS -
Where a claim has been never made in the defence presented no amount of evidence can be looked into upon a plea which was never put forward.
vii) AIR 1979 GAU 52 R.K. Angousana Sing & Others v. Lainembi Devi & Others
A party is entitled to lead evidence only to prove a case set out in his pleading, and cannot be allowed to lead evidence to make out a new case not
pleaded
Gist of Appellant's Argument:
The learned counsel began his arguments by stating that the respondents have no locus standi as the impugned mark is registered in the name of
different proprietor. There is a complete misrepresentation of facts and the registration is a complete fraud. The impugned mark is not distinctive.
There is judicial admission in Civil Suit. The cancellation of the impugned mark is sought under Sections 47, 57 and 125. The applicants' application
which has been opposed by the respondent herein is pending at the trade marks registry. The impugned mark has been registered for a wide
specification of goods that has no legal sanction. The impugned mark is extremely descriptive. 'FOCUS' is an ordinary dictionary word. The impugned
mark is not used as a trade mark. It is a generic expression. There is mis-statement of use. The respondent has misrepresented before the Registrar
that he is a manufacturer. Further, in para 10 of the counter statement the respondent claims to be the sole proprietor which is false statement as the
impugned mark is registered in the name of Vikas Gulathi and Smt. Sharda Gulathi. The respondent has not pleaded any assignment of the mark. He
has also falsely claimed 'FOCUS' is an invented word. The impugned mark is hit by Section 9 of the Act. The respondent is a wholesaler and not
entitled to registration. The respondent has filed forged and doctored documents. The impugned mark is creating havoc in the market by using it as a
descriptive expression. The respondent is only in the business of re-sale of optical goods. They are not manufacturers as they call themselves 'FOCUS
HEALTH RETREAT'. There is a judicial admission that they are not manufacturers but just running an eye care centre. Thus the respondents are
guilty of making untrue averments on oath. Hence the impugned mark should go.
Gist of respondent's argument:
The respondent argument is that on the one hand the applicant are stating the impugned mark is generic but on the other, he himself seeking
registration for 'FOCUS OPTICS' which is indulging in doublespeak by claiming 'FOCUS OPTICS' is distinctive. The respondents are using the
impugned mark since 1986 and now have over 25 years user. He submits that the respondent is a partnership firm that was dissolved in 1992 but the
registration certificate that was issued in 1999 wrongly shows the mark in the name of the original applicant. The respondent is now the sole proprietor
of the mark by operation of law. It would be an irreparable loss to the respondent if it is removed after 25 years use in the market.
Re-joinder argument:
The effective use is only 18 months prior to filing. 'FOCUS VISION CARE' is not used as a trade mark. There is not a single piece of sale proved
through invoice. There are signature discrepancies. The TM-24 request for assignment was filed in 2012 and not pleaded in the counter-statement.
Further, the respondent have not pleaded that trading style is used as a trade mark and so no evidence can be led. They have also not filed any M.P.
to establish proof of user.
On the question of 'person aggrieved', the applicant are in the same trade - manufacture and sale of optical frames, lens etc. It is alleged that the
word 'FOCUS' is descriptive of the goods. The respondent have filed a suit against the applicant. Therefore, the applicant has the required locus standi
to challenge the registration of the impugned mark.
The impugned rectification application was filed on 2nd November, 2005. The impugned mark was registered on 15th May, 1997. To attract the
provisions of section 47(1)(a) and (b), the relevant period for consideration was whether the impugned mark has been used any time between 15th
May 1997 and 14th April, 2002. The random scrutiny of some bills show invoice under No. 485 dated 3.8.1998 of sale to ZIPPERS INDIA, M/s.
FOCUS VISION CARE of various products. There are several other similar invoices during the relevant period. But the facts remains the 'FOCUS
VISION CARE' is only used as a trading style although to be fair to the respondent there are countless items and articles all sold by the respondent.
In any event, we are not convinced by the applicant's argument that the respondents have not used the impugned mark at all and therefore the
objections under Section 47(1)(a) and 47(1)(b) fails.
The applicant have also agitated that the word 'Focus"" comprised in the respondent trade mark 'FOCUS VISION CARE' is descriptive and hit by
Section 9. We partly agree with this but the applicant have seriously undermined their own line of argument by themselves seeking protection for
'FOCUS OPTICS' opposed by the respondent herein. We think the ends of justice would be met by imposing a disclaimer condition on the word
'FOCUS' also so that the respondent can continue to use the composite mark with no exclusive right on the word 'FOCUS' also. In the result,
ORA81/2005/TM/DEL is partially allowed in terms of aforementioned paragraph XIX and the Registrar of Trade Marks is directed to impose a
disclaimer condition on the word 'FOCUS' and make the requisite entry accordingly in the register. Both the M.P. Nos. 92 and 209 of 2013 having no
material bearing on the final outcome of the case are rejected There is no order as to costs.