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Judgment
Prabha Sridevan, J
This application No. 1012263 is for removal of the trade Mark MARC. The Trade Mark in class 9 is in the name of the respondent. The application
was dated 28.5.2001 and the date of user claim was from 1.4.2001. The applicant is 'Marc Enterprises' and according to them they have marks
already on the register under No. 420735 class 9, 420736 class 2 and 420737 class 7, all of them from 16.4.1984. The applicant claims similarity in lieu
of the necessity marks in favour of the applicant. The applicants are engaged in the business of manufacturing of electrical accessories and fittings
and electrical equipments, electrical appliances, electronic products and instruments of domestic wires etc. In 1981 they adopted the Marc with it is
distinct letter, style, font and placement of the alphabets used continuously and openly and have been renewed from time to time. The sales and
advertisements figures are huge and as on date the sales are about Rs. 250 crores The applicant was not aware of the advertisement of the
respondent's mark otherwise notice of opposition would have been filed. It was only when the applicant served with the written statement, which was
filed by the respondent in C.S. (OS). No. 1059 of 2005 that they became aware of the registration. This suit was filed by the applicant against the
respondent, for infringement and passing off. The applicant claims that he would be grievously prejudiced by the continuance of the impugned mark
and prayed that it would be removed. The following documents were filed by the applicant. Ex. P-R1 which is the registration certificate of the
respondent; Exhibit P-1 which is the copy of examination report in which one of the objections is that the mark is personal name; Ex. P-R 2 is the
impugned trade mark of the respondent. Ex. P1 (collty.) Is the trade mark/labels of the applicant. Ex. P2 (collty.) copy of the legal proceedings,
certificates and renewals by the applicant;. Ex. P-3 (collty.) of the different trade mark application of the applicant; Ex. P-4 is the copy of the excise
registration in favour of the applicant; Ex. P-5 is the petitioner's registration from the Bureau of Indian Standards and Ex. P-6 (collty.) are
advertisements made by the applicant.
In the counter statement the respondent claimed that they had conceived and adopted a distinctive trade mark in or about April, 2001 and
specifically claimed that the applicant was never using the mark in respect of the goods mentioned in class 9. The applicant is only manufacturing
water heater and marketing of fans under the trade mark 'REMI' 'CROMPTON' 'USHA' and 'INOVA'. The registered trade mark 'MARC' which is
impugned herein is entirely different in structure, writing style, device and font etc. There are several manufacturers using the word ""Marc"", which is a
mere misspelling of the word 'MARC'. In the examination report, the applicant's mark was not shown and after filing of the evidence of user, the
respondent/applicant was advertised. It was not opposed. It is prayed that the mark shall not be removed.
One Shri Gaurav Arya, the sole proprietor of the respondent had filed the counter affidavit. The documents filed by the respondents are Ex. R.-1
which is a copy of the letter issued by the Bureau of Indian Standards dated 18.8.2011; Ex. R-2 is the registration certificate; EX. R-3 is the copy of
the examination report; EX. R4 is the letter, which is from the Trade Mark Register; Ex. R-5 is the print out from the MCA website showing several
entries having the word 'Marc'; Exhibit R-6 is the print out from the Just dial website also showing the names of companies with the word 'Marc' and
Ex. R-7 are promotional materials and invoices and the earliest is November, 2004. Then there are invoices from the page 62 to 78 of the paper book
which are all handwritten and the earliest invoice is of the year 2004. Ex. P-8 is Form B. Then we have computerized print out invoice from page 99,
which are all from the year 2011 onwards, This is the evidence filed by the respondent.
The applicant's evidence has been marked through Shri Promod Jain. We have shown the receipt from the Bureau of Indian Standards and report
from the same to show that the brand Marc has been in existence prior to the respondent adoption. Page No. 101 of the Paper book, which is for
application of declaration of the brand names to be covered under certificate Marc is shown to have been registered in January, 1981 and Nima in
January, 1990.
The following decisions were cited by the applicant.
a) In Mahenra & Mahendra Paper Mills Ltd., Vs. Mahindra & Mahindra Ltd., 2002 (2) PTC 121 (SC)), where it was held that people have come to
associate the name ""Mahindra"" with a certain standard of goods and services. Any attempt by another person to use the name will prejudice
Mahindra"".
b) In Century Traders Vs. Roshan Lal Duggar & Co. PTC (suppl.) (1) 720 Delhi (DB)), the Division Bench of the Delhi High Court held that there is
a distinction between mark and registration of the common trade name.
c) In Bajaj Electricals Limited, Bombay Vs. Metals & Allied Products Bombay & Another: AIR 1988 Bom. 167) the Hon'ble Bombay High Court
held that injunction was granted restraining the defendants to use the mark identical to the plaintiff whose mark had name reputation for a number of
years.
d) In L.D. Malhotra Industries Vs. Ropi Industries PTC (Suppl.) 564 (Del.)), wherein the Delhi High Court held as follows:
In order to succeed under Section 12(3) the proprietor has to establish that his adoption was honest, it was bona fide and that he was using it
concurrently. The discretion under Section 12(3) 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 learned counsel submitted that as soon as the applicant herein knew of the respondent's existence, they had filed a suit, the applicant had been
in existence since 1984 and till today the registration has not been challenged. The applicant has widely advertised his goods and if the respondent's
mark is allowed to remain there would be confusion. There is not any evidence to prove the user from 2001, no sales figure has been given and no
advertisement has also been given. If they had been sales, they are clandestine sales. The application had been made to Bureau of Indian Standards
only in 2011.
The learned counsel for the respondent submitted that all the advertisements filed by the applicant are in respect of 'geyser'. There is not any proof
of sales of other goods and therefore the respondent's mark may not be removed. It is also stated that there is a letter from the Trade Mark Registrar,
which shows that the mark does not appear to be on record. So the respondent's adoption is honest. The respondent has filed documents to show that
the registration mark 420735 in clause 9 does not appear to be on record. This is dated 30.11.2005. The applicant has filed the renewal certificates to
show that 420735 has been renewed from time to time for a period of 7 year from 16th April, 1998. There are communication between the applicant
and Bureau of Indian Standards to show that the applicant has been using the brand name 'MARC' at least from the year 1999. It is relevant to
remember that here we are not dealing with the applicant's mark, but the respondent's mark. The evidence shows that the applicant has been in
existence prior to the respondent claim of user. None of the documents show that the respondent has been using the mark from 2001 as claimed. The
fact that whether Marc is common to the trade or whether the applicant has been using the Mark for goods other than geyser are not relevant here,
we may have considered those issues if otherwise the impugned mark was entitled to remain. At the risk of repetition, it is the respondent's mark
which is now attacked on the ground of confusion and wrong claim of user. The respondent has to show how this mark is entitled to remain in the
register and if the respondent claim of user is incorrect or not proved, then the respondent mark must go. The respondent's evidence shows user only
from 2004, though the user claimed is 1.4.2001. The applicant's registration is clearly earlier. So the mark must be removed.
Before us, evidence is filed through proof affidavits and as a rule only photo copies of the original documents are filed. Rule 12 of the Intellectual
Property Appellate Board rules require that the originals shall be left in the Appellate Board for inspection of the other party. This rule is observed
only in the breach. The parties must at least be ready to produce the originals at the time of hearing. More importantly, the photo copies that are filed
before the Appellate Board must be legible. We are unable to understand how anyone would certify these illegible copies are true copies. In trade
mark matters priority of user and the date of user very often clinch the issue. In future, if the dates of the invoices are not legible, then we may reject
the entire evidence and rule against the party, who files such unacceptable evidence. Very often one party alleges that the mark that is found in the
photo copies of invoices are extraneous and introduced subsequently. Sometimes even in these extremely imperfect copies, we find that the
introduction of the brand name is suspicious. Therefore hereafter the parties shall file only legible copies of the exhibits. We direct the Registry to
return the entire paper books containing affidavit even if one document is illegible. We insist that the counsel must be ready with the originals of the
documents when the matter comes up for hearing or at least they must ascertain from the Registry which documents must be produced for the
hearing. Evidence proves the case, without the evidence the pleadings are of no use. The necessity of filing clearly legible documents acceptable and
genuine copies of documents cannot be diluted. We earnestly hope that the legal practitioners will bear this in mind. The respondent is not able to
prove his user as claimed from 1.4.2001, the Original Rectification Application allowed with costs of Rs. 5000/-. Consequently, the connected M.Ps
are closed.