M/s. Haldiram (India) Pvt. Ltd. And Ors. vs Registrar of Trade Marks And Ors.

S. Usha, J

This original rectification application is to expunge and remove the trademark registered under No. 330375 in Class 30 under the provisions of the

Trade Marks Act, 1999 (hereinafter referred to as 'the Act'). The brief facts of the case are -

The trademark 'Haldiram Bhujiawala' was invented in the year 1941 which was adopted by Mr. Ganga Bishan, in respect of his business for the

manufacture and sale of sweets, papads and saltish articles. On account of the quality of the products, the trademark 'Haldiram Bhujiawala' acquired

popularity in a short span of time. Mr. Ganga Bishan expanded his business to other cities including Kolkata.

In 1956, Mr. Ganga Bishan took his sons, Moolchand, Rameshwar Lal and Sati Das as partners in the firm, Haldiram Bhujiawala, also trading as

M/s. Chandmal Ganga Bishan. The trademark, 'Haldiram Bhujiawala' in the course of trade became an asset of the partnership firm. With effect from

10.11.1958, Mr. Rameswar Lal retired from the firm leaving all assets and liabilities of the firm including goodwill in the hands of the continuing

partners. Mr. Shiv Kishan, grandson of Mr. Ganga Bishan was admitted to the partnership firm by a deed of partnership dated 02.01.1959. After

retirement, Mr. Rameshwar Lal shifted to Kolkata and was permitted to use the trademark 'Haldiram Bhujiawala' in Kolkata only by Mr. Ganga

Bishan.

Mr. Sati Das retired from the partnership firm leaving all assets and liabilities of the firm including the goodwill in the hands of the continuing

partners and the partnership was reconstituted vide partnership deed dated 31.10.1969 whereby Mrs. Kamala Devi wife of Mr. Rameshwar Lal was

included as a partner in the said firm. Mr. Ganga Bishan, Mr. Moolchand, Mr. Shiv Kishan and Mrs. Kamala Devi thus became partners in the firm

known as Haldiram Bhujiawala also trading as 'Chandmal Ganga Bishan' with effect from 31.10.1969.

In 1965, a trademark 'Haldiram Bhujiawala HRB (logo)' as represented in 'V' Shape was conceived by Mr. Ganga Bishan. On 29.12.1972 an

application for registration of the said trademark was filed by the said firm under No. 285062 for the whole of India.

In 1973, Mr. Rameshwar Lal claiming to be the partner of Haldiram Bhujiawala filed a Civil Suit in S. No. 1540 of 1973 before the City Civil Court,

Kolkata against M/s. Haldiram Madanlal. In the said suit, Rameshwar Lal admitted that Haldiram was his father's nick name. In the said suit, Mr.

Ganga Bishan (father of Rameshwar Lal) the proprietor of the trademark, 'Haldiram Bhujiawala' had stated that he permitted Mr. Rameshwar Lal to

use his nick name Haldiram for his firm in Kolkata.

The trademark Haldiram Bhujiawala as well as the 'V' shape HRB logo was continuously used by Mr. Ganga Bishan and then by the partnership

firm Haldiram Bhujiawala also trading as M/s. Chandmal Ganga Bishan since 1941. Therefore, the firm is the prior adopter and user of the trademark

Haldiram Bhujiawala/ Haldiram Bhujiawala - HRD logo in V-shape device.

In November, 1974, the partnership firm between Mr. Ganga Bishan, Mr. Moolchand, Mr. Shiv Kishan and Mrs. Kamala Devi was dissolved. On

dissolution, Mr. Moolchand acquired the exclusive right to use the trademark, Haldiram Bhujiawala in any manner for the entire country except the

State of West Bengal. Mrs. Kamala Devi was given the right to use the trademark, Haldiram Bhujiawala in respect of the territory of West Bengal

since Mr. Rameshwar Lal expressed his desire to settle down in Kolkata and to look after his business of Haldiram Bhujiawala.

In view of the family understanding/arrangement, Mr. Rameshwar Lal was to take over the business at Kolkata leaving the entire country to the

exclusive use of Mr. Moolchand. On dissolution of the firm, Mr. Ganga Bishan and Mr. Shiv Kishan retired, Mrs. Kamala Devi was left with no right,

title or interest in the business of the firm as per the family arrangement.

In 1964, Mr. Rameshwar Lal entered into a partnership with Mr. Ram Kishan Aggarwal and Mr. Pragdas Aggarwal under the name and style of

M/s. Rameshwar Lal Ram Kishan. The terms were recorded in the deed of partnership dated 30.03.1965. The said firm was subsequently changed

and Mr. Shiv Rattan Aggarwal was included as a partner in the firm Rameshwar Lal Ram Kishan by deed dated 03.04.1968. On retirement of Mr.

Ram Kishan, the firm name was changed to M/s. Rameshwar Lal Shiv Rattan. This firm continued till 05.11.1995.

On dissolution of the firm M/s. Haldiram Bhujiawala a family arrangement was entered into where Mrs. Kamala Devi wife of Mr. Rameswar Lal

was to carry on business under the trademark Haldiram Bhujiawala only in West Bengal. Therefore, Mr. Shiv Ratan retired from M/s. Rameswar Lal

Shiv Ratan where it was decided that Mr. Shiv Ratan shall not carry on any business under the trademark ""Haldiram Bhujiawala"" at Kolkata. This

arrangement of Mr. Moolchand carrying on business in all the territories except West Bengal and Mrs. Kamala Devi in West Bengal continued from

1974 to 1999.

In June/July, 1999, Mrs. Kamala Devi for the first time dishonestly and mala fidely raised a dispute about her cessation of partner, in the civil suit

No. 635 of 1992 before the Hon'ble High Court of Delhi. In fact, the registered proprietors of the impugned trademark i.e., Mrs. Prabhu Shankar, Mr.

Ashok Kumar, Mr. Mahesh Kumar, Mr. Sharad Kumar (Minor) represented through his mother and natural guardian Mrs. Sobha Aggarwal have

admitted the retirement of Mrs. Kamala Devi and the consequential dissolution of the firm Haldiram Bhujiawala also trading as M/s. Chandmal Ganga

Bishan in various proceedings.

Subsequent to the dissolution of the firm and the declaration made by Mr. Rameswar Lal in November, 1974, an application for registration of the

trademark ""Haldiram Bhujiawala"" represented in an identical V-shape logo device as was used by the firm, was fraudulently made by Mr.

Rameshwar Lal and Mr. Prabhu Shankar trading as Haldiram Bhujiawala under No. 330375 in Class 30. The material fact that Mr. Rameshwar Lal

was permitted to use the trademark Haldiram Bhujiawala only in the State of West Bengal was concealed, suppressed and not disclosed before the

Registrar of Trade Marks at the time of registration.

The impugned application for registration was filed by Mr. R.N. Prabhakar, advocate who is also the advocate-on-record for the applicant who

filed the application under No. 285062. At the time of filing the instant application for registration, Mr. Rameshwar Lal and Mr. Prabhu Shankar were

aware of the applicants registration and their use since 1941. The advocate Mr. R.N. Prabhakar was also aware of the use and registration and also

about the territorial restriction. Therefore, there was fraud played by the respondents to obtain registration. The registration has been obtained by

stating wrong date of user as 1958 whereas the mark Haldiram Bhujiawala with the device of HRB logo as represented in V-shape device was

conceived and designed only in the year 1965 by Haldiram Bhujiawala trading as Chandmal Ganga Bishan. The said mark was neither distinctive, nor

capable of being distinguished and therefore, was not registerable. The respondents were not the proprietors of the trademark.

During examination of the application, the conflicting mark under No. 285062 was cited by the Registrar. Mr. R.N. Prabhakar, advocate replied to

the Registrar that no application was pending except for this present application. In order to overcome the objection, a false representation was made

to the Registrar that the applicant was the only firm trading under the name of Haldiram Bhujiawala at Calcutta. All material facts were suppressed

before the Registrar. As a matter of fact, on the date of filing of the application, the mark was not used by Mr. Rameshwar Lal and Mr. Prabhu

Shankar and therefore, the date of user claimed in the application as 1958 is a false statement.

The evidence filed by M/s. Haldiram Bhujiawala also trading as M/s. Chandmal Ganga Bishan in support of application No. 285062 was produced

before the Registrar in support of application No. 330375. It is a matter of record that the application under No. 285062 was filed in the year 1972 for

the whole of India, but later amended excluding the State of West Bengal as per the family arrangement.

The impugned application was filed on 02.11.1977 claiming false date of user as since 1958. The registration is likely to cause confusion and

deception and is thus violative of Section 11(1)(a) of the Act.

Ms. Ganga Bishan died in the year 1980. In the year 1983, the applicants Mr. Manoharlal Aggarwal, Mr. Shiv Ratan Aggarwal and Mr. Madu

Sudhan Aggarwal trading as Haldiram Bhujiawala expanded their business by opening a retail showroom at Chandini Chowk, Delhi under the said

trademark. The family members namely, Mr. Rameshwar Lal, Mrs. Kamala Devi and Mr. Prabhu Shankar were present in the inaugural function.

In the year 1985, Mr. Moolchand who acquired the exclusive right to use the trademark died leaving behind the applicants 2 to 5, the legal heirs

who acquired the exclusive right to use the trademark. The legal heirs applied to the Registrar of Trade Marks to record their names as subsequent

proprietors of trademark No. 285062. The request for change was filed by Mr. R.N. Prabhakar, advocate who was acting for Mr. Rameshwar Lal

and Mr. Prabhu Shankar in connection with the impugned trademark No. 330375. The said recordal was allowed in the year 1987.

Subsequently, the four sons of Mr. Moolchand, the applicants 2 to 5 herein incorporated a company viz., M/s. Haldiram India Pvt. Ltd. They filed

a further request for recordal of the name of the 1st applicant as subsequent proprietor of the trademark No. 285062.

It is pertinent to mention that Mr. Prabhu Shankar ceased to be a partner in the firm, Haldiram Bhujiawala at Kolkata, post registration of the mark

No. 330375. As per the terms of the deed of retirement dated 11.11.1980, Mr. Prabhu Shankar was permitted to use the mark ""Haldiram Bhujiawala

only in respect of the two shops in Kolkata, even under the terms of his own separation from his father, Mr. Rameshwar Lal. The mark was used

since 1980 with HRB logo and not the present logo under challenge under No. 330375. On dissolution of the firm dated 11.11.1980, no changes were

made in the Register as regards registration No. 330375. It continued to remain in the name of Rameshwar Lal and Prabhu Shankar. The entry thus

illegally remained in the Register in the name of the dissolved firm.

The use of the trademark, subject matter of registration No. 330375 on the part of Mr. Rameshwar Lal and Mr. Prabhu Shankar simultaneously in

Kolkata for the same goods was thus contrary to law and was in contravention of the provisions of Section 11(1)(b) of the Act. The mark was

therefore wrongly remaining on the Register.

Mr. Rameshwar Lal died on 04.03.1991. During his life-time, Mr. Rameshwar Lal executed a will dated 10.12.1990. On the date of death of Mr.

Rameshwar Lal, the trademark under No. 330375 stood in the name of the dissolved firm. After the death of Mr. Rameshwar Lal, his legal heirs

consisting of his wife Mr. Kamala Devi, his sons Mr. Prabhu Shankar, Mr. Ashok Kumar, Mr. Mahesh Kumar and Mr. Ravi Shankar and his

daughters inherited the business and constituted a Joint Hindu Family business under the name Haldiram Bhujiawala at Kolkata. During the lifetime of

Mr. Rameshwar Lal, his sons were in fact carrying on the business using the identical trademark in respect of different articles in and around Kolkata.

The applicants had by this time expanded their business and have established vast reputation of the mark in question and has spent substantial

money in advertisement.

After the death of Rameshwar Lal, his sons threatened to open a retail outlet under the name and style of Haldiram Bhujiawala in Karol Bagh,

New Delhi on 12.12.1991. Being aggrieved by the entry of the trademark 330375 wrongly remaining on the Register, the applicants 2 to 5 filed the

cancellation petition on 07.12.1991.

On 10.12.1991, the applicants filed a suit for permanent injunction before the District Judge, Delhi against the respondents. The learned Judge

passed an ex parte order of interim injunction restraining the respondents from using the trademark, Haldiram Bhujiawala. The said order was served

on the respondents on 10.12.1991 itself.

In the said proceedings, the respondents had stated that the 2nd defendant in the suit was an old established firm of Mr. Rameshwar Lal Aggarwal

since 1958. In the written statement, the defendants/respondents claimed themselves to be the registered proprietors of the trademark No. 330375. On

the date of filing of the written statement, the defendants/respondents claimed themselves to be the registered proprietors of the trade mark No.

330375. On the date of filing of the written statement, the entry was in the name of Mr. Rameshwar Lal and Mr. Prabhu Shankar. Mr. Rameshwar

Lal died on 04.03.1991 and Mr. Prabhu Shankar retired in 1980. The trademark No. 330375 was in the name of Mr. Rameshwar Lal and Mr. Prabhu

Shankar trading as M/s. Haldiram Bhujiawala which firm was dissolved on 11.11.1980. The said entry which remained in the name of the dissolved

firm was therefore liable to be removed for this reason alone.

On 10.12.1991, a joint venture agreement was entered into between the legal heirs of Mr. Rameshwar Lal. Mrs. Kamala Devi and the daughters

of Mr. Rameshwar Lal relinquished their rights in the trade mark No. 330375 which was acquired by their joint family business on the death of Mr.

Rameshwar Lal.

On 30.12.1991, the Registrar of Trade Marks without notice to the applicants made changes in the Register, recording the names of respondents 3

to 6 as subsequent proprietors of the trademark No. 330375, despite there being pendency of rectification proceedings CAL 629 filed on 07.12.1991.

The Joint Venture Agreement dated 10.12.1991 was executed after the institution of the suit and was ante dated as 10.12.1991 so as to set up a

defence under Section 30(1)(d) of the Act and to set up a defence that no injunction could be granted against the so-called registered proprietors. The

purported Joint Venture Agreement as well as the recordal of the name change of the respondents in No. 330375 were all drafted, filed and processed

by Mr. R.N. Prabhakar, advocate. In the Joint Venture Agreement, it was stated that Mrs. Kamala Devi and others had made a declaration

relinquishing their rights in the trade mark No. 330375. The declaration referred to in the Joint Venture Agreement was made on the stamp paper

purchased on 18.12.1991 and attested on 23.12.1991. This clearly shows that the so called Joint Venture Agreement was ante-dated. The so called

family settlement as well as the Joint Venture Agreement purported to be dated 10.12.1991 is contrary to the provisions of Section 24 of the Act.

The parties who have been recorded as joint proprietors have admitted in various judicial proceedings that none of them have used the mark No.

330375 on behalf of each other in relation to the entries with which all of them are connected in the course of trade. The entry is therefore contrary to

the provisions of Section 24 of the Act.

The Registrar had taken on record the rectification application filed by the applicant and had also allowed the request in Form TM-24 for recordal

of the names of the legal heirs of Mr. Rameshwar Lal which is in utter breach of the principles of natural justice and provisions of law.

The entry relating to the mark No. 330375 wrongly remained on the Register in the name of the dissolved firm with effect from 11.11.1980 and no

proprietorship claim was made in respect of the said mark with effect from 04.03.1991 to 10.12.1991. The registration was thus deemed to have been

abandoned and the entry made on 30.12.1991 was made without application of mind and is thus wrongly remaining on the Register.

On 06.01.1992, the applicants filed an interlocutory petition for recalling the order dated 30.12.1991 recording the names of the legal heirs of Mr.

Rameshwar Lal as subsequent proprietors of the trademark No. 330375. As a counterblast, an interlocutory petition was filed by the subsequent

proprietors on 04.03.1992 seeking an order of dismissal of the rectification application in view of the provisions of Section 107(1) of the Act.

On 23.04.1992, the Registrar allowed the respondents' interlocutory petition and dismissed the applicants' rectification application on the ground

that the Registrar had no jurisdiction to entertain the application under Section 107 of the Act (1958 Act) in view of the pendency of the suit before the

District Judge, Delhi against the subsequent proprietors and it is only the High Court which had jurisdiction to entertain the application under Section 56

of the Act. Therefore, the applicants' interlocutory petition to recall the order pertaining to change of name was dismissed. Being aggrieved by the said

order, the applicants preferred an appeal before the Hon'ble High Court of Calcutta. Subsequently, the appeal was withdrawn. The present

rectification application was thereafter filed before this Board.

As a counterblast to the suit and the rectification application, the respondents filed a suit before the Hon'ble High Court of Calcutta against the

applicants and others seeking perpetual injunction from using the trademark 'Haldiram Bhujiawala'. In the suit, the respondents had admitted about the

applicants' proprietorship in the trademark No. 285062 at least in 1987. In order to harass the applicants, Sharad Aggarwal filed another suit before the

City Civil Court, Calcutta on identical pleadings as in the suit before the Calcutta High Court.

The applicants' suit filed before the District Court, Delhi was transferred to the Hon'ble High Court in view of the amendments made in the plaint.

The respondents filed their amended written statement. On 12.05.1991, after hearing both the parties, the ex parte injunction order granted on

10.12.1991 was confirmed. Against this order of confirmation, the respondents preferred an appeal and the same is pending. The respondents filed an

interlocutory petition for stay of the order dated 12.05.1999 but the same was dismissed. Against the order of dismissal of the stay petition, the

respondents filed an application for review which was also dismissed by the Division Bench of the Hon'ble Delhi High Court.

After these orders were passed, Mrs. Kamala Devi at the behest of the respondents mala fidely and dishonestly raised dispute as to the validity of

the dissolution of the firm Haldiram Bhujiawala also trading as Chandmal Ganga Bishan in which she was a partner till 1974. There were various

proceedings between the applicants and the respondents since 1991 but till 1999 this plea was not raised in any proceedings.

After the order dated 12.05.1999, the applicants published a Caution Notice dated 10.04.2000 which was challenged before the Hon'ble High

Court of Calcutta by the respondents and the same was dismissed by order dated 09.05.2000.

The applicants trade marks 'Haldiram Bhujiawala / Haldiram Bhujiawala - HRB logo and Haldiram' are well known trademarks and are registered

in various countries in the world.

The applicants further state that the respondents trademark which is the subject matter of application No. 330375 is not distinctive of the

respondents goods. The respondents have claimed that the mark is being used by various companies. The respondents had no bona fide intention to

use the trademark as joint proprietors at the time of recordal of the names. That a continuous period of five years and one month or larger has lapsed

during which the trademark was registered and during which period there has been no bona fide use by the respondents and is therefore wrongly

remaining on the Register.

The rectification application is based on the following grounds;

(1) that the registration was wrongly made and is wrongly remaining on the Register and as such, is liable to be cancelled and in the alternative, the

entry is liable to be varied so as to restrict the effect thereof to the State of West Bengal only;

(2) that the registration is obtained by fraud;

(3) that the registration has been obtained by false claim of proprietorship;

(4) that Mr. Rameshwar Lal retired from the firm Haldiram Bhujiawala also trading as Chandmal Ganga Bishan in the year 1958 and was therefore,

aware of the use of the trademark 'Haldiram Bhujiawala' but in spite of it, obtained registration for an identical mark which is nothing but mere non-

disclosure of material facts;

(5) the advocate who was also aware of the entire facts had suppressed and concealed the material facts before the Registrar;

(6) the very adoption of the impugned trademark by the respondents is dishonest, mala fide and tainted at its very inception;

(7) the respondents had made false claim of use as 1958. The trademark in question was conceived by the applicants' predecessors for the first time

in 1965 only;

(8) the respondents as well as the advocate Mr. R.N. Prabhakar was aware of the applicants' predecessors adoption of the trademark, Haldiram

Bhujiawala since 1941 and the V-shape logo since 1965 which was not disclosed to the Registrar amounting to fraud;

(9) that in reply to the examination report that a conflicting mark was on the Register, the respondents concealing the fact that the applicants were the

proprietors, had stated that they were the only firm using the trademark which is a false statement;

(10) that the registration was in contravention of the provisions of the Act;

(11) that in any event, Mr. Rameshwar Lal and his family had no right or interest to use the trademark outside the State of West Bengal and the use

outside West Bengal would lead to confusion and deception;

(12) that the Hon'ble High Court of Delhi has restricted the respondents from using the impugned trademark thereby holding that the use would

amount to an act of passing off;

(13) that the respondents had no bona fide intention to use the trademark; and

(14) the existence of the entry on the Register is against public interest and purity of the Register of Trade Marks.

The respondents 3 to 6 herein filed their counter statement in reply to the application for rectification. The respondents 3 to 6 and their

predecessors have been doing business as manufacturers and merchants of Bhujia, Sweets, Papads and other saltish articles and confectionary items

under the name and style of Haldiram Bhujiawala since a very long time in Kolkata.

Mr. Rameshwar Lal, father of respondents 3 to 6 adopted the trademark, Haldiram Bhujiawala with HRB V-shape logo in the year 1958 and had

been using the same in the course of trade. In the year 1977, Mr. Rameshwar Lal took his son Mr. Prabhu Shankar Aggarwal into his business and

after his death, the other sons were taken to the business as joint proprietors.

On 02.11.1977, to get statutory right in the trademark Haldiram Bhujiawala, Mr. Rameshwar Lal and Mr. Prabhu Shankar applied for the

registration of the trademark under No. 330375 in Class 30 claiming use since 1958. The said trademark has been in continuous use since 1958 all

over India.

Due to extensive, continuous and uninterrupted use all over India and advertisement through various medias and other promotional means, the said

trademark has become very popular all over India. The sales turnover runs to several lakhs of rupees. The respondents have spent a huge amount

towards promotional activities.

The goods bearing the trademark are sold through their firm and through (a) Haldiram Bhujiawala Ltd. Kolkata where the sales turnover in the

year 1999-2000 was Rs. 14,14,78,276/- which increased to Rs. 23,04,93,186/- in the year 2003-2004; (b) Pratik Food Products, Kolkata, the sales

turnover was Rs. 23,69,696/- in the year 1991-1992 which increased to Rs. 9,46,61,491/- in the year 2003-2004.

The respondents are selling the goods bearing the impugned trademark outside India also. As the mark has been in use since 1958 continuously,

the provisions of Sections 57, 9, 11, 12 will not apply. The applicants have used the mark Haldiram Bhujiawala only since 1965 subsequent to that of

the respondents. It is evident from the application No. 285062 filed by the applicants claiming user since 1965. It was in the opposition proceedings in

application No. 285062 that it was agreed that they would restrict their business to the whole of India except the State of West Bengal and it was not

on account of any family arrangement.

The trademark No. 285062 was registered in the name of Chandmal Ganga Bishan which consisted of four partners and Mrs. Kamala Devi was

also one of the partners. Mrs. Kamala Devi still is a partner. The dissolution deed dated 16.11.1974 was prepared by the applicant and on the strength

of this deed got Mrs. Kamala Devi removed from the partnership. She has in fact filed a civil suit and a criminal case which are pending.

The applicants have no right to use the mark in the State of West Bengal; then, how can they allow Mrs. Kamala Devi to use the trademark in the

State of West Bengal. The applicants have filed another application No. 559875 in Class 30 which has been opposed by the respondents. The matter

is stayed by the Register. The respondents had denied all the averments and allegations made in the application for rectification.

On completion of the pleadings, the matter was heard. Mr. Amarjit Singh, learned counsel argued for the applicants and Mr. Satish Parasaran,

learned counsel argued for the respondents.

The learned counsel for the applicants submitted that the trademark was Haldiram Bhujiawala. The firm was started in the year 1941. Mr. Ganga

Bishan adopted the trademark Haldiram which is his nick name. The firm was a sole proprietorship firm initially. In the year 1956, Mr. Rameshwar

Lal joined the partnership firm. In the year 1958, Mr. Rameshwar Lal retired from the partnership firm.

Mr. Rameshwar Lal came to Kolkata in the year 1958 and he was permitted to use the trademark only in Kolkata. In 1969, Mrs. Kamala Devi

joined the partnership firm Haldiram Bhujiawala also trading as M/s. Chandmal Ganga Bishan. They filed an application for registration of the

trademark consisting of the letters HRB in a circle and the trading style Haldiram Bhujiawala in Devanagiri characters appearing down below in the

form of a letter ""V"" in respect of goods falling in class 30. They claimed user since 1965. The said mark was opposed by a third party and

subsequently the application proceeded to registration with a territorial restriction to read as 'for sale in India except for the State of West Bengal'.

The mark was therefore in the name of the four partners viz., Mr. Ganga Bishan, Mr. Moolchand, Mrs. Kamala Devi and Mr. Shiv Kishan.

On 16.11.1974, the firm M/s. Chandmal Ganga Bishan was dissolved. All the assets and liabilities were taken over by Mr. Moolchand. Mrs.

Kamala Devi was given permission to carry on the business at Kolkata alone. In 1980, Ganga Bishan died. In the year 1985 Mr. Moolchand died. In

the year 1985, Haldiram Bhujiawala was converted to a private limited company.

Mr. Shiv Kishan and Mr. Rameshwar Lal were carrying on business under the trademark Haldiram Bhujiawala at Kolkata. In 1975, Mr. Shiv

Kishan retired and was not to use the trademark in West Bengal.

On 02.11.1977, Mr. Rameshwar Lal and Mr. Prabhu Shankar Aggarwal filed an application (impugned herein) for registration claiming user since

1958. This impugned trademark No. 330375 is identical to the applicants trademark No. 285062. The mark was registered in 1980. On 04.03.1991 Mr.

Rameshwar Lal died.

On the death of Mr. Moolchand in 1985 the applicants herein filed a request in TM-23 for bringing on record the legal heirs and the same was

allowed and the entry made in the year 1987.

The applicants filed a civil suit against the respondents as they were threatening the applicants. The suit was filed before the District Court and an

order of injunction was granted. The injunction continued till 1999. The injunction order was not in operation for few months. The injunction continued

from May 1999 to 2010.

Mrs. Kamala Devi is not a party to the impugned application. The claim of proprietorship is false. Mr. Rameshwar Lal was only a permitted user

as of 1958. The impugned trademark is wrongly remaining on the Register without sufficient cause. The advocate Mr. R.N. Prabhakar who filed the

application for registration of the impugned trademark on behalf of the respondents has made false representation. The Registration Certificate issued

by the Registrar of Firms at page 27 (Annexure-C) of the application is placed to show that Mr. Rameshwar Lal retired from the partnership firm and

Mr. Shiv Kishan was inducted as the partner on 10.11.1958. The legal user certificate issued by the Registrar of Trade Marks at page 29(Annexure-

D) was relied on to state that the various changes were recorded and the present applicants' names were brought on record.

Annexure-E at page 32 is the copy of the plaint in Title Suit No. 1540 of 1973 filed by Mr. Rameswar Lal against a third party before the City

Civil Court at Calcutta. Mr. Rameshwar Lal had admitted that the Haldiram is the nick name of Mr. Ganga Bishan, father of Mr. Rameshwar Lal.

Annexure-G at page 56 is the Form TM-1 of the application No. 330375 in Class 30 where the user is claimed since 1958 when the application

was filed in the year 1977. Annexure-I at page 60 is the examination report where the conflicting mark No. 285062 (applicants' registration) was

cited. The respondents through their counsel Mr. R.N. Prabhakar had misrepresented in the reply at page 62 that the applicants (respondents herein)

are the only firm trading under the name Haldiram Bhujiawala at Kolkata and no application is pending and also that the Journal No. 648 quoted in the

examination report is not correct.

Annexure-J is the affidavit of Mr. Rameshwar Lal filed as evidence in support of opposition before the Registrar of Trade Marks where he had

admitted that Haldiram is the nick name of his father and that he was trading under the name, Haldiram Bhujiawala since his young age. In fact, the

same admission was made in the affidavit of evidence of distinctiveness filed before the Registrar of Trade Marks in application No. 330375

(impugned herein).

The learned counsel then reiterated the facts given in the application for rectification.

As per the family arrangement, it was agreed that no permission would be given to any third party other than the male heirs of the late Mr.

Rameshwar Lal, then how could they permit the other firm viz., Pratik Food Products to carry on business under the said trademark?

The counsel then relied on the order passed by the Single Judge in S. No. 635 of 1992. The counsel further pointed out that the respondents had

not specifically met in their counter statement any of the averments made in the application for rectification except for a mere denial.

The invoices are only for the period 1994-1996 though claimed to have been using since 1958. There has been no use after 1996. The application

for rectification has been filed under Section 47(1)(b) of the Act. There has been no use for a continuous period of 5 years. The rectification

application has been filed on 19.03.2004. From 1996-2004, it is Haldiram Bhujiawala Private Limited using the trademark and not Haldiram

Bhujiawala, the respondents herein. There is no document since 1958 to 1996.

The user of 1956 claimed is false. In fact, Mr. Ganga Bishan adopted the trademark Haldiram Bhujiawala as early as 1941. This trademark with

the logo was adopted in the year 1965. Mr. Rameshwar Lal was a partner from 1956 to 1958. Rameswar Lal has no separate independent right.

Therefore, the claim of proprietorship is false. Mr. Rameshwar Lal has admitted that his father Mr. Ganga Bishan is the inventor, then how can Mr.

Rameshwar Lal claimed proprietorship? Mr. Rameshwar Lal was permitted by his father Mr. Ganga Bishan out of love and affection to use the

trademark in Calcutta. Mr. Rameshwar Lal as permitted user cannot claim to be the proprietor of the trademark.

Mr. Rameshwar Lal was a partner of the firm Haldiram Bhujiawala also trading as Chandmal Ganga Bishan during the period 1956-58 and

therefore, was aware of the use of the trademark Haldiram Bhujiawala by the firm and he cannot say that he was not aware of the use of the

trademark by the firm. The date on which the application for registration of the impugned trademark was filed (1977), Mr. Rameshwar Lal had

knowledge of the firm's use (applicants' predecessor's use). The agent who filed this impugned application was also aware of the firm's use. If the

respondent (Mr. Rameshwar Lal) had been using the trademark since 1958, why the application has been filed only in 1977?

The subsequent recordal of the legal heirs is illegal as Mr. Rameshwar Lal himself had no right to claim proprietorship. The family settlement was

not produced before the Registrar and therefore, he suppressed the material facts. The request in Form TM-24 was allowed without any reason based

on joint venture agreement.

There is no document/evidence produced to show the linkage between Haldiram Bhujiawala and Haldiram Bhujiawala Private Limited. The mark

was not distinctive on the date of application, nor was the mark distinctive on the date of registration as well as on the date of application for

rectification.

The following judgments were relied on by the applicants:

(a) R.C. Thakkar v. Gujarat Housing Board [AIR 1973 Gujarat 24] - Fraud means and includes any of the following acts committed by a party to a

contract or with his connivance or by his agent with intent to deceive another party thereto or his agent or to induce him to enter into a contract.

(b) Mithoolal v. Life Insurance Corpn. Of India AIR 1962 SC 814] - Active concealment of a fact by one having knowledge or belief of the fact is

clearly guilty of a fraudulent suppression of material facts.

(c) V. Srinivasa Pillai v. L.I.C. of India AIR 1977 Madras 381] - An intentional or wilful concealment or suppression of a material fact constitutes a

fraud which will void the policy.

(d) Balkrishna v. New Indian assurance Co. AIR 1959 Patna 102] -If any statement in the proposal form or the declaration form accompanying the

proposal form made by the assured and which have been made the basis of the contract are found to be untrue, the contract would be void and

unenforceable in law.

(e) J.W. Thomas v. Hanuman Prasad AIR 1929 Allahabad 837] - The seller although a lease-holder professing to be the owner of the property - there

is misrepresentation.

(f) Guddappa v. Balaji AIR 1941 Bombay 274(FB)] - No court will allow it to be used as an instrument of fraud and no court by the application of the

rules of evidence or procedure be used as an instrument of fraud.

(g) A.V. Papayya Sastry v. Govt. Of A.P. (2007) 4 SCC 221] - Fraud-vitiates all judicial acts whether in rem or in personam.

(h) Indian Bank v. M/s. Satyam Fibres (India) Pvt. Ltd. AIR 1996 SC 2592] - The courts have inherent powers to set aside any orders obtained by

fraud.

(i) Consolidated Foods Corpn. v. Brandon & Co. [AIR 1965 Bombay 35] - A trader acquires a right of property in a distinctive mark by merely using

it upon or in connection with his goods irrespective of the length of such user and the extent of his trade.

(j) Century Traders v. Roshan Lal Duggar & Co. AIR 1978 Delhi 250] - The law is well settled that in order to succeed the appellant has to establish

user prior in point of time than the impugned user.

(k) Narayanappa v. Krishtappa [(1966) 3 SCR 400] - Right of a partner in a partnership continues till the date of dissolution. On dissolution, whatever

right the partner will have will be as on the date of dissolution and not afterwards.

(l) Narayan Bhagwantrao Gosavi Balajiwale v. Gopal Vinayak Gosavi & others AIR 1960 SC 100] - An admission is the best evidence that an

opposing party can rely upon and though not conclusive, is decisive of the matter, unless successfully withdrawn or proved erroneous.

(m) Basant Singh v. Janki Singh [(1967) 1 SCR 1] - An admission made in a plaint signed and verified by a party may be used as evidence against him

in other suits.

(n) Synthes AG Chur v. Rob Mathys India (P) Ltd. 1996 PTC (16) 401] - Once the licence is revoked, the party will have no right to use the mark.

(o) J.K. Jain v. Ziff-Davies Inc. 2000 PTC 244 (DB)] -do- -do-

(p) K.R. Beri & Co. v. Metal Goods Mfg. Co. Pvt. Ltd. AIR 1980 Delhi 299] - Use of a trademark by an unregistered user is of no use to the

proprietor for the purpose of Section 46.

(q) Power Control Appliances & Others v. Sumeet Machines Pvt. Ltd. & others [1995 PTC 165] -- Well settled principle of law relating to

trademarks is that there can be only one mark, one source and one proprietor.

(r) Cipla Ltd. v. Rajiv Sukhija 2012 (52) PTC 615 (IPAB)] -- The examination report when clearly cites the conflicting mark already on the Register,

the infringed trademark ought not to have been registered.

The counsel finally argued that the impugned trademark has been wrongly made based on false representation of proprietorship and use. The applicant

for registration was a permitted user and therefore, cannot claim to be the proprietor. The mark was not in use for over five years and three months.

The mark was not distinctive. The mark therefore deserves to be removed.

The learned counsel for the respondents 3 to 6 submitted his arguments in the Miscellaneous Petition. The Miscellaneous Petition was that the

matter has to be argued and heard in Kolkata and not in Chennai as the jurisdiction vests in Kolkata High Court and not Madras High Court. The other

M.P. was to allow the amendment of the counter statement. The Additional District Judge has admitted the respondents' use since 1958 in the

impugned order. The respondents' source of right was derived from the will dated 03.04.1979 of Mr. Ganga Bishan. As per the will, the respondents

acquired the right and so cannot be said to be the permitted users.

The counsel further submitted that so far as the dispute between the applicants and Mrs. Kamala Devi are concerned, that is not relevant to the

present proceedings. The counsel also submitted that if Mr. Shiv Ratan will not use in Kolkata does not mean all the legal heirs of Mr. Rameshwar Lal

will also not use. The Additional District Judge in his order has categorically stated that it is nobody's case that Mr. Rameshwar Lal was not doing

business at Calcutta.

There is nothing stated about the agent Mr. R.N. Prabhakar earlier. The agent was not aware of the dissolution. If the applicants were aggrieved

by the agent's act, why is it that they have not impleaded him as a party to the application? The agent came to know of the dissolution (i.e. 1974) only

in the year 1985 i.e., after 11 years.

The respondents claim of use since 1958 is correct. Section 24 was relied on. The goods were being sold through Haldiram Bhujiawala Ltd. and

Pratik Food Products. Annexure-S of the application, the family settlement clearly states at clause 3 that the entire family had the right to use the

trademark Haldiram Bhujiawala.

The additional document, the licence has to be considered. The counsel in this context relied on the judgment reported in George V. Records,

SARL v. Kiran Jogani 2004 (28) PTC 347 (Delhi)]. Permission is not a licence. Permission was given by the father. The counsel then relied on the

finding by the Division Bench of the Hon'ble High Court of Delhi in FAO (OS) No. 155 of 1999 that the dissolution deed was executed under

coercion.

The counsel then submitted that the applicants cannot be said to be a person aggrieved as they were not in any way affected or injured by the

mark on the Register. The counsel relied on the judgment reported in Shalimar Agarbatti Company v. N. Ranga Rao & sons 2004 (29) PTC

247(IPAB)].

In rejoinder, the counsel for the applicants submitted that the source is not disputed. The will dated 03.04.1979 was not pleaded by the respondents

and therefore, cannot rely on the will. Even if admitted that the respondents had acquired their right by the will dated 03.04.1979, then, the respondents

could not have acquired proprietorship on the date of filing of the impugned application in 1977. That apart, in the suit the respondents have denied the

execution of the will.

We have heard and considered the arguments of both the counsel and have carefully gone through the pleadings and documents.

Before going into the merits of the main matter, we shall deal with the miscellaneous petitions. This matter has a long story. In fact, this matter

was finally heard by this Board on 11.11.2009 and orders were reserved. On 23.11.2009, the respondents filed a miscellaneous petition to take on

record some additional documents. On 08.12.2009, the Deputy Registrar of this Board had declined to take on record the miscellaneous petition on the

ground that the matter was heard and orders were reserved in the matter.

The respondents preferred a writ petition challenging the letter issued by the Deputy Registrar. On 21.04.2010, the Hon'ble High Court of Calcutta

directed the Deputy Registrar to place the matter before the Board for consideration and disposed of the writ petition.

The miscellaneous petition was heard by this Board and an order came to be passed on 29.07.2011 partially allowing and partially disallowing the

miscellaneous petition for taking on record the miscellaneous petition. The so-called licence agreement was not taken on record on the finding that it

was not supported by pleadings in the counter statement to the application for rectification.

On 29.09.2011, the respondents preferred a writ petition against the Board's order of not taking on record the so-called licence. On 08.11.2011, the

Hon'ble High Court passed the order and directed that pending disposal of the writ petition, the Board may proceed with the hearing of the

rectification application. Therefore, a hearing was fixed on 27.02.2012.

On 06.02.2012, the respondents filed another miscellaneous petition in MP. No. 147 of 2012 seeking permission to amend the counter statement in

view of the order passed by this Board declining to take on record the so-called licence agreement. On 14.02.2012, the respondents filed another

miscellaneous petition in M.P. No. 148 of 2012 praying that the hearing of the rectification application be kept in abeyance till the final disposal of the

writ petition.

On 06.12.2012, when the miscellaneous petition and main matter were posted for hearing, the counsel for the respondents sought adjournment, but

the applicants objected to the grant. Both the counsel agreed to argue the matter on the next available date at Chennai. Therefore, the matter was

listed on 17.01.2013 and 18.01.2013.

The respondents challenged the order dated 06.12.2012 posting the matter at Chennai. The Hon'ble High Court dismissed the writ petition and

directed the respondents to raise their objection as regards the issue of jurisdiction before the Board.

On 17.01.2013, when the matter was taken up for hearing, the learned counsel for the respondents submitted that they had filed an application for

amendment of the counter statement and that MP has to be taken up for hearing first. The counsel also raised an objection as to jurisdiction of this

Board to hear the matter in Chennai for which a review petition in R.P. No. 1 of 2013 was filed. The counsel for the respondents argued that the

matter has to be heard at Kolkata and this Board at Chennai will have no jurisdiction.

We shall first deal with the Review Petition. The matter was fixed for hearing at Chennai in the presence of both the counsel on record for which

both had given their consent and agreed to argue the matter at Chennai. If that be the case, the objection now being raised is nothing but wilful effort

to delay the hearing, in our view. The jurisdiction issue has already been decided by the Division Bench of Hon'ble Madras High Court in B.

Mohammed Yousuff v. Prabha Singh Jaswant Singh & Ors [2008 (38) PTC 576 (Mad.)(DB)] wherein it was held as under:-

CHALLENGE AS TO THE JURISDICTION OF THE APPELLATE BOARD:

One of the main grounds of attack by the Delhi party against the orders of the Appellate Board is that their trade mark was registered in the Office of

the Trade Mark Registry at Delhi and that therefore the Appellate Board committed a serious error of territorial jurisdiction in entertaining the

application for rectification filed by the Tindivanam party at Chennai. To substantiate the said contention, Mr. S.J. Jagadev, learned Counsel appearing

for the Delhi party invited our attention to Sections 83 and 84 of the Trade Marks Act, 1999 and Rules 4, 6 and 7 of the Trade Marks Rules, 2002.

While Section 83 of the Act empowers the Central Government to establish an Appellate Board, Section 84 deals with the composition of the Board.

It is pertinent to see that Sections 83 and 84 deal with establishment as well as composition of a single Appellate Board, which could have more than

one Bench. Every Bench shall consist of a judicial member and a technical member and shall sit at such place as the Central Government may by

notification specify. Under Section 84(4), the Central Government may, by notification, make provisions as to the distribution of business of the

Appellate Board amongst the Benches.

Rule 4 of the Trade Marks Rules, 2002, gives an indication of what is an 'appropriate office of the Trade Mark Registry'. In relation to a trade

mark already registered, Rule 4 defines the appropriate office to be the office of the Registry within whose territorial limits the principal place of

business in India of the registered proprietor of the Trade Mark is situate. In relation to a trade mark for which an application for registration is

pending on the date of the notification of the said rules or is made after the date of the notification, the appropriate office shall be the office of the

Registry within whose territorial limits, the principal place business of the applicant as disclosed in the application is located. The jurisdiction of the

appropriate office, once determined on the basis of the original principal place of business, shall not get affected by any change in the principal place

of business, in view of Rule 4. Rule 6 provides for an entry to be made by the Registrar in respect of every mark, of the appropriate office of the

Trade Mark Registry, in relation to the said mark. Rule 7 provides for transfer of pending applications and proceedings to appropriate offices of the

Trade Mark Registry. Therefore, on a conjoint reading of the above provisions of the Act and the Rules, the learned Counsel for the Delhi party

contended that in as much as the Principal place of business of the Delhi party was at Delhi and the appropriate office of the Registry in relation to

their mark, as entered in the Register, is Delhi, the application for rectification filed by the Tindivanam party before the Appellate Board at Chennai,

ought to have been dismissed for want of territorial jurisdiction.

(The same was the argument of the counsel for the respondents herein and according to him, the matter cannot be heard in Chennai and has to be

heard only in Kolkata.)

But we are unable to countenance the said contention of the learned Counsel for the following reasons:

(a) Section 83 contemplates establishment only one Board for the entire country, though there could be several Benches of the same Board at

different places under Section 84.

(b) Section 84(2) empowers the Central Government to issue notifications prescribing the places at which a Bench shall sit and Section 84(4) enables

the Central Government to make provisions as to the distribution of business amongst the various Benches. However, under Section 84(5), the

Chairman of the Appellate Board is vested with the absolute discretion to decide whether any matter falls within the purview of the business allocated

to a Bench. In the present case, all the orders passed by the Appellate Board which are impugned in these proceedings, were rendered by a Bench

consisting of the Chairman of the Appellate Board and a member. Therefore, irrespective of where the applications had been presented and taken on

file, the Chairman and the member who passed the orders impugned in these proceedings, had the jurisdiction and powers to decide the same. In other

words, if the Tindivanam party had filed an application for rectification at Delhi, it would have been heard by the same Appellate Board at Delhi and

the same could not have made any difference.

(c) The rules relied upon by the learned Counsel deal only with the question of appropriate office of the Registry and they do not deal with the

question of jurisdiction of the Appellate Board or its Benches. The Appellate Board, in exercise of the powers conferred by Section 92 of the Act, has

also issued the rules known as 'Intellectual Property Appellate Board (Procedure) Rules, 2003, Rule 16 of which, reads as follows:

Date of hearing to be notified.-

The Appellate Board shall notify the parties the date and place of hearing of the application or appeal in such manner as the Chairman may by general

or special order direct.

Thus, the issue of jurisdiction raised by the learned Counsel for the Delhi party gets obliterated by the fact that the objection is not with respect to the

power of the Board which heard and decided the matters, but only with respect to the place in which the same Board heard and decided the matter.

Under such circumstances, we hold that the orders of the Appellate Board challenged in these impugned proceedings cannot be said to suffer from

want of territorial jurisdiction.

In view of the above, we did not think it necessary for us to refrain ourselves from hearing the matter and we therefore heard the main matter. The

Review Petition is therefore dismissed.

Miscellaneous Petition No. 147 of 2012 was for amending the counter statement. It is relevant to mention that the reason for filing this application.

The matter was heard at length and the Board had raised an issue as to how and what relationship was there between the respondents and the other

firms, the so-called licensee through which they were selling the products under the impugned trademark. The respondents therefore after the orders

were reserved, filed a miscellaneous petition for taking on record the additional documents which was partly allowed and partly dismissed. The so-

called licence agreement was filed to prove the relationship between the respondents and the other firms. That licence agreement was not allowed to

be taken on record as it was not pleaded. The respondents therefore have now filed this amendment petition.

Amendments are allowed at any stage of the proceedings. The Supreme Court has filed in various matters that the amendments ought not to be

refused. Amendments shall be allowed which will not cause any loss or injury to the other party. Amendments shall be allowed at any stage. But in

this case, the application for amendment is not only a belated application, but as a result of the outcome of the orders. Additional document was

brought in as a result of the query raised during arguments. The application was partly allowed. Only because of non-pleadings of the documents, they

were not allowed. The respondents now to place themselves in a better position are trying to bring in certain changes which cannot be allowed. The

documents sought to be brought is an answer to the ground of non-user. Any document to improve one's case cannot be allowed and that was the

order in the M.P. Only to overcome that objection, this M.P. has been filed. Such amendments will only lead to a situation where a matter will not see

the light of the day for no valid reason. The miscellaneous petition in M.P. No. 147 of 2012 is therefore dismissed.

We shall now deal with the merits of the main case. The original adopter, inventor and user of the trademark 'Haldiram Bhujiawala' was Mr.

Ganga Bishan. He had been using the said trademark since 1941 and there is no dispute as regards this, either by the applicants or by the respondents.

In fact, this fact has been admitted by Mr. Rameshwar Lal that Mr. Ganga Bishan is the inventor of the trademark Haldiram and Haldiram is his

nickname in various judicial proceedings.

Mr. Rameshwar Lal was a partner of M/s. Haldiram Bhujiawala also trading as Chandmal Ganga Bishan for the period between 1956 and 1958.

Thus, Mr. Rameshwar Lal had knowledge of the use of the trademark Haldiram Bhujiawala by the firm Chandmal Ganga Bishan. In the year 1958,

Mr. Rameshwar Lal retired and shifted to Kolkata. Mr. Rameshwar Lal when retired from the firm was permitted to use the trademark by his father

Ganga Bishan. Mr. Kamala Devi wife of Mr. Rameshwar Lal was a partner in the firm M/s. Chandmal Ganga Bishan. Mrs. Kamala Devi was also

the applicant for the registration of the trademark under No. 285062 as a partner of the firm. The respondents as legal heirs of Mr. Rameshwar Lal

have claimed to be the proprietors of the impugned trademark. When the proprietorship of Mr. Rameshwar Lal is in doubt, the legal heirs cannot claim

to be the proprietors.

The next argument of the respondents was that the source of the right/title was through the will dated 03.04.1979 executed by Mr. Ganga Bishan.

This plea of will has not been raised nor is there any evidence for the same. It is pertinent to mention here that the will is dated 03.04.1979 whereas

the application for registration of the impugned trademark is dated 02.11.1977. If the will is dated 03.04.1979, then the source of right if at all would be

only in the year 1979 i.e., after the execution of the will and not earlier. Mr. Rameshwar Lal could not have anticipated the will. The source of right

therefore cannot be accepted as the will is subsequent to the date of application for registration. The claim of proprietorship is therefore wrong.

As regards the issue of permitted use, the respondents have neither denied nor disputed the same. On retiring from the firm in 1958, Mr.

Rameshwar Lal shifted to Kolkata and he was permitted to use the trademark Haldiram Bhujiawala in Kolkata. This averment has been made by Mr.

Ganga Bishan in his affidavit in the civil suit stating that he had no money to give his son and therefore, out of love and affection, permitted him to use

the trademark Haldiram Bhujiawala in kolkata. As a permissive user, Mr. Rameshwar Lal had no right to use the trademark in other places except

kolkata. Even in kolkata, he could not claim any right as the proprietor of the trademark.

We shall now deal with the date of user as claimed by the respondents in the application for registration. The impugned application for registration

has been filed on 02.11.1977 claiming user since 1958. The applicants' case is that the present V-shape logo Haldiram Bhujiawala was invented and

adopted by Mr. Ganga Bishan in the year 1965 and that user claimed since 1958 by the respondents cannot be said to be correct. The respondents

have stated that Mr. Rameshwar Lal invented the trademark Haldiram Bhujiawala in their counter statement to this application whereas in the suit

they claimed that his father Mr. Ganga Bishan is the adopter of the trademark Haldiram Bhujiawala. The respondents have not disputed as to the

adoption of the V-shape logo in the year 1965. The date of user claimed in the year 1958 is not substantiated by cogent evidence. The first invoice is

dated 02.05.1994 and the last invoice is dated 31.07.1996 which is of M/s. Haldiram Bhujiawala, the respondents herein. This Board has held in

several matters [M/s. Times Publishing House Ltd. v. M/s. The Financial Times Limited 2012 (50) PTC 283 (IPAB)] and M/s. Khushi Ram Behari

Lal v. M/s. New Bharat Rice Mills Faizpura Road Batala MIPR 2012 (1) 184] that the trademark shall not remain on the Register for wrong

statement of use. It is also pertinent to mention here that Mr. Ganga Bishan adopted the V-shape logo and applied for registration of the said

trademark (logo - label mark) under No. 285062 as early as 29.12.1972 claiming user since 1965. Mrs. Kamala Devi wife of Mr. Rameshwar Lal was

an applicant to the said registration as a partner of the firm M/s. Chandmal Ganga Bishan. This fact is also a relevant factor to decide the date of user

as false statement. For this reason of wrong statement, the impugned trademark deserves to be cancelled.

On perusal of the records, it is clear that Mr. Rameshwar Lal had not produced any evidence to prove that the trademark had acquired

distinctiveness. In the affidavit of evidence of distinctiveness filed by Mr. Rameshwar Lal, it is categorically stated that he was not in possession of

any invoice or cash bill to establish the user or distinctiveness. The invoices filed are only of the year 1994-1996. The trademark is neither distinctive,

nor capable of being distinguished as on the date of registration and therefore, the registration is in violation of the provisions of the Act.

The other argument/ground raised by the applicants was non-user under Section 47(1)(b) of the Act. The documents/evidence filed by the

respondents were for the period from the year 1994-2002. The documents/invoices are in the name of the respondents from 1994 - 1996 and later

from 1997 - 2002 in the name of Haldiram Bhujiawala Pvt. Ltd. carrying on business in a different place. There is no mention or explanation as to the

linkage between the two companies. Mr. Prabhu Shankar in the civil suit before the City Civil Court has stated that Haldiram Bhujiawala is a

partnership firm. Therefore, the invoices cannot be said to relate to the use of the registered joint proprietors. During the course of the arguments, the

respondents have stated that Haldiram Bhujiawala Pvt. Ltd. is the licensee of the registered proprietor. There is nothing on record to prove the same.

That apart, there has been no pleading as regards licensed user. The respondents therefore filed the additional documents to bring on record the

licence agreement which was rejected by this Board. In order to set right the pleadings the respondents tried to have their pleadings amended.

That apart, the application filed by Haldiram Bhujiawala Pvt. Ltd., the so-called licensee is under opposition by the applicants. The respondents

have individually opposed claiming that the trademark Haldiram Bhujiawala is distinctive of the goods of their individual firms. The principle of user by

the licensee is that the purchasing public and the methods of the trade must connect the trademark with the proprietors. There is nothing on record to

show that the goods as are being manufactured and marketed by Haldiram Bhujiawala Pvt. Ltd. and M/s. Pratik Foods are having any connection in

the course of trade with the respondents.

We therefore are of the view that the trademark has not been used by the registered proprietors and therefore has to be removed from the

Register under Section 47(1)(b) of the Act.

Under Section 24 of the Act, if more than one person is registered as a joint proprietor, they can use such mark jointly for the benefit of all and

cannot be used in rivalry and in competition with each other. Therefore, the respondents herein can use the trademark jointly and not in competition to

each other which would be in violation of the provisions of Section 24 of the Act.

Now, we shall deal with the registration of the impugned trademark. On the date of filing this application under No. 330375 on 02.11.1977

claiming user since the year 1958, the earlier application for registration of an identical trademark was pending. The earlier application was filed on

29.12.1972 under No. 285062 claiming user since 1965. The Registrar had raised an objection to the registration of the impugned trademark on the

ground that an earlier application under No. 285062 i.e., a conflicting mark was already pending. The respondents though were aware of the

applicants' predecessors' use and (and the application), had suppressed the fact and had stated that they were the only firm using the trademark

Haldiram Bhujiawala at kolkata and that no other application is pending.

The other statement was that Mr. Rameshwar Lal invented and adopted the trademark in the year 1958. The application was therefore accepted

on false representation and concealment of facts. The Registrar had the discretion to defer the acceptance of the subsequent application when the

earlier application was pending registration. But the respondents suppressed the fact of the earlier adoption and use by the applicants' predecessors.

We would also like to observe that the Registrar is duty bound to look into the Register before granting a registration. In fact, if the Registrar had

verified and looked into the earlier application, this mistake would not have occurred. The marks under Nos. 285062 and 330375 are identical for

identical goods. Mr. Rameshwar Lal who had admitted that Haldiram is the nickname of Mr. Ganga Bishan and that Mr. Ganga Bishan is the inventor

and adopter of the trademark cannot claim to be the inventor and adopter himself. Therefore, he cannot claim to be the proprietor of the trademark.

The impugned trademark registration is therefore in contravention of the provisions of Section 18 of the Act.

The subsequent entries made in the Register in the name of respondents are also not valid. On perusal of the Joint Venture Agreement dated

10.12.1991, the partnership between Mr. Rameshwar Lal and Mr. Prabhu Shankar stood dissolved on 11.11.1980. Therefore, the rights vested in the

new constitution of firm by Mr. Rameshwar Lal and Mr. Ravi Shankar. Request in TM-24 dated 06.10.1984 was pending when Mr. Rameshwar Lal

died in the year 1991. On the demise of Mr. Rameshwar Lal, the constitution of the firm again changed. In the light of the above, no right vested in

Mr. Rameshwar Lal capable of being transmitted by virtue of Joint Venture Agreement dated 10.12.1991. The registration No. 330375 does not

reflect any such transfer on dissolution.

In the Joint Venture Agreement dated 10.12.1991, there is a mention of the family settlement. The terms of the deed of the family settlement are

not disputed by the respondents. On perusal of the family settlement, it is seen that each of the joint proprietors have been conferred with an absolute

right to use the trademark at different shops in the city of Kolkata. It reflects that multiple rights have been created in different persons for the use of

the registered trademark No. 330375 independently of each other. The claim thus made by the respondents for using the impugned mark joint and for

the benefit of all stands defeated by their own documents.

It is also pertinent to observe that the respondents in the family settlement deed have referred to the will dated 10.12.1990 executed by Mr.

Rameshwar Lal on the one hand and on the other, in the affidavit while seeking the recordal of the changes have stated in TM-24 dated 23.12.1991

that Mr. Rameshwar Lal died intestate. The respondents are not clear as to the proprietorship rights in the trademark as there are contra statements.

Therefore, the changes recorded before the Registrar also cannot be said to be valid.

We have dealt with and decided the matter on the facts of the case alone and therefore, we have not gone into the judgments. As has been held

by the Apex Court each case has to be decided on the facts of that case. Our findings have been on the facts of this case.

The claim of proprietorship has not been proved by the respondents. The date of user as claimed in the application for registration has not been

satisfied by cogent evidence. When the conflicting mark was pending within the knowledge of the respondents, the (respondents' predecessors) had

not brought it to the notice of the Registrar. The respondents had gone ahead stating that there was no application pending and that the respondents

application was the only application pending for registration. The respondents source of right is based on the will of the year 1979 which is also not

correct as the application has been filed as early as 1977 itself. The user of the trademark by Haldiram Bhujiawala Pvt. Ltd. and M/s. Pratik Food

Products is not clear as there is no linkage between these companies and the respondents firm. For these reasons, we are of the view that the

impugned registration is in contravention of the provisions of the Act. When we have considered that the registration is not in accordance with law,

then the recordal of the new change also fails. For the above mentioned reasons, we do not think it fit to allow the impugned trademark to continue on

the Register. We therefore direct the Registrar of Trade Marks to cancel the trademark No. 330375 in Class 30. The application for rectification is

consequently allowed. No costs.