AI Structured Summary
Not yet generated for this judgment
Judgment
V. Ravi, Technical Member
1 . The application is for removal of registered trade mark MUNISH underNo. 1130112 in Class 21 of the respondent. Grounds are summarized
below:-
i) The applicant had acquired the trade mark MUNISH in respect of ""containers for filling/storing Milk, tubs, kulfa and kitchen tools"" from its
predecessors M.R.A. & Brothers, Delhi by an assignment deed dated 01.10.2004.
ii) The applicants are continuously using the trade mark MUNSHI in Dev nagiri (Hindi Script) in relation to the above goods since January, 2000 till
date.
iii) The applicant had also applied for its registration under No. 1129972 on 29.08.2002 in Class 7.
iv) It is alleged that the respondent have applied for the identical mark 'MUNISH' on 02.09.2002 and have never commercially used the impugned
trade mark.
v) The respondent are aware of the applicants prior adoption and use since January, 2000.
vi) The impugned trade mark of the respondent is not distinctive of the goods for which its registered. It is also pointed out that the impugned mark
offends section 9,11,12 and 18 of the Act at the date of commencement of this action.
vii) The applicants are ""person aggrieved"" as they are using the same trade using identical mark MUNISH in respect of identical goods continuously
and extensively much prior to the respondent.
viii) There is no special circumstances to give respondent the benefit of concurrent registration under section 12 of the Act.
ix) The application is supported by a Statement of Case accompanied by an affidavit filed by one Mehamood Riaz dated 6th September, 2005. It is
also accompanied by Invoices to support their contention that their trade mark has been used by them since 2000.
x) The applicant pray that in the interest of purity of the register, the impugned mark be expunged from the Register.
2 . A copy of the rectification application was served on the respondent/registered proprietor. They have filed their counter statement. The contention
of the respondent is mentioned below:-
i) They have been carrying on business of manufacturing and selling containers and tubs which are used for storing milk, kitchen tools and kulfa for
the last thirty years.
ii) On 01.04.1997, they have adopted the trade mark MUNISH for their goods and using the said trade mark extensively through out India.
iii) The respondent specifically alleged that the applicant cannot be claim to be the proprietor of the trade mark MUNISH as a subsequent proprietor
as there is no valid assignment.
iv) On perusal of twenty bills furnished by the applicant, the words ""Taj Brand"" is seen as printed against black & white background on top left hand
corner and not the trade mark MUNISH. It is alleged that the word MUNISH has been subsequently added to the said bills which can be inferred
from the use of the different pencils on different occasions clearly noticeable from the different stress of the pencil. Therefore, this is a clear cut case
of forgery and creation of evidence.
v) The answering respondent further stated that the impugned application bearing the trade mark was filed just three days after the filing of the
applicants trade mark on 02.09.2002 i.e. 3 days and not 8 months later as alleged.
vi) The respondent state that they have been using the trade mark MUNISH since, 01.04.1997. In support thereof, copies of bills have been enclosed
thereto. The Counter statement is supported by an affidavit filed by Mohammad Ashan dated 30th November, 2005. on the parties.
Thereafter notice for hearing was served on the parties. There was no appearance on behalf of the respondent for the hearing fixed on 21.05.2012.
We waited till the end of the day and fix the case as the last item for the date to ensure the respondent do not miss the bus due to extraneous reasons.
The counsel for the applicant then made their submissions. We have patiently heard the issues agitated by the applicants counsel gone through the
documents and pleadings before disposing off this matter ex-parte.
On the issue of 'person aggrieved' which is a pre-condition for filing a cancellation petition, the applicant have locus standi as their trade mark rights
are affected by the existence of the respondent's mark on the register. The applicant who are also the proprietor and prior applicant of identical trade
mark MUNISH have substantial grievance in seeking removal of the impugned trade mark. The applicant will be prejudiced by the continued presence
in the register of the impugned trade mark and business losses to the applicant are not merely speculative but are real and tangible. Going by the rule
book and past precedents they are to be treated as person aggrieved.
5 . The first of the objection is based on Section 9. That section aims to stop registration of any trade mark which does not perform its essential
function as a trade mark which is to distinguish the goods/services of one undertaking, without any possibility of confusion, from those of someone
else. The section is neutral and there is no presumption in favour for or against registration. There is nothing in the nature of a burden for the Registrar
to discharge in order to justify his decision to refuse an application [See EUROLAMB(1997) RPC 279]. In the instant case the applicant has invoked
section 9(2) (a) which say a mark shall not be registered as a trade mark if it is of such a nature as to deceive the public or cause confusion. The
respondent trade mark and the good are identical to the applicant. This is bound to cause confusion and deceive the public. Section 9(2)(a) is,
therefore, an absolute bar to the registration of the impugned trade mark.
6 . The second objection is raised under Section 11(1) of the Act. That section provides that an earlier mark can be a relative ground for refusal of a
trade mark, if there is either(i) identity of marks and similarity of goods or (2) similarity of mark and similarity of goods. Additionally, there exists 'a
likelihood of confusion' which includes the 'likelihood of association'. The latter cannot replace 'likelihood of confusion' but is included in its concept to
define the scope of the Section. Here, the applicants earlier identical trade mark for identical goods is a compete bar to the registration of the
impugned mark and is, therefore, hit by Section 11(1) of the Act.
7 . The applicant have next Invoked Section 12 objections on the grounds that the respondents trade mark cannot co-exist on the register. We agree
on this. Time and again, the Board have been ruling scruples and ethics is the basis of any legitimate commerce. This section cannot come to the
rescue of one who cuts corner and indulges in sharp practices. The law makers in their sagacity and wisdom have provided for co-existence in the
register in exceptional cases of identical or similar for identical or similar goods. Court rulings on this point has been well developed. The section is
subject to extremely restrictive interpretation and is a rare exception to the general rule prohibiting such registration and apply only if and when a cast
iron case has been built up. The applicants counsel at the hearing in his persuasive argument submitted that the invoices and bill of the respondent has
been cooked up and fabricated. A bare perusal of the same shows Xerox copies in blank paper rubber stamped with the address of the respondent at
the top. In the absence of rebuttal of the allegation made, we are in no position to accept the authenticity of these bills. From the address, it appears
that both applicant and respondent are business rivals hailing from same area. What made the respondent file their application just 3 days after the
applicant? In the absence of any explanation by respondent, we have to go by claims established by the applicant. This is not a fit case for 'me too'
benefit be conferred under section 12 in favour of the respondent. Accordingly, we uphold the objection raised under this section also.
8 . Lastly, it is alleged the respondent cannot be proprietor and true owner of the impugned mark under section 18(1) of the Act. Law protects the
vigilant. The respondent have not seriously contested the allegations made by the applicant. Instead of defending their registration the respondent in
the counter statement are finding holes in the applicants use of the mark in an attempt to plant doubts.
Although not pleaded grave suspicion of 'bad faith' crosses our mind in the adoption and use of the impugned mark by the respondent. In these
circumstance we have to rule that they cannot claim to be the proprietors. Section 18(1) objection is also sustained. In the result
ORA/69/2022/TM/DEL is allowed and registered trade mark No. 1130112 in class 21 is removed from the register. The respondent is directed to pay
a sum of Rs. 5,000/- as cost to the applicants.