AI Structured Summary
Not yet generated for this judgment
Judgment
Prabha Sridevan, J
Both these rectification applications are in respect of the Trade Mark ""ICECREAM"" registered under Application No. 1409154 in class 24. The
applicants are P Gnanasekaran (ORA/196/TM/CH) and P. Ravichandran (ORA/153/TM/CH). Former is the sole proprietor of Sri Kannan Mills and
the latter is the sole proprietor trading as GNM Fabrics. The facts are almost identical. The matters were heard together and, therefore, this order will
be common to both the applicants.
The case of the applicant is as follows:
The respondent applied for registration on 27.12.2005 claiming user from 01.04.1995. The goods for which the registration was sought for are long
cloths, cotton sarees, dhoties, lungies and other textile goods. It was advertised before acceptance in Trade Mark Journal No. 1371/01.07.2007.
According to the applicant, the mark ICECREAM had been used for mull clothes and long cloths for a long time. Originally, Ice Cream mull cloths
were manufactured and supplied by M/s Texcom Textiles in Nanded since 1974, subsidiary of National Textile Corporation. It began shutting down in
1990 and closed in 2003. More than 100 traders in Erode have been using the mark ""ICECREAM"" for two decades. It has become Public Juries. The
applicant in ORA/196/TM/CH was partner of Sri Samy Textiles before starting Sri Kannan Mills. Sri Samy textiles was using this mark for two
decades. The respondent was initially employed in BSNL Telecom. The alleged user claimed since 1995 for the trade mark ICE CREAM is false. His
adoption is dishonest and he has lodged false criminal complaint on 09.03.2009 against 11 of the fellow traders including the applicants for use of this
Trade Mark. All the traders including the respondent and the applicants do business nearby sometimes even in the same compound. And from 1995 to
2009, the respondent was quiet though knew of the usage of the Mark by others. Suddenly, after obtaining registration of the mark, he has resorted to
criminal complaints, harassment and extortion. He demanded Rs. 1 lakh from each trader to withdraw the complaint. The lawyers were on strike on
that day so the innocent traders could not apply for anticipatory bail and had no other option but to comply with his demands. The mark ""ICECREAM
is common to the trade. The registration is in contravention of section 11 sub sections 6,8, & 9 of the Trade Marks Act. It is not distinctive and,
therefore, it must be removed. There is evidence to show that the applicants have been selling goods under the Mark ICECREAM. Therefore, the
mark shall be removed.
3 . In the Counter Statement all the averments were denied. It was stated that the applicants were not aggrieved parties. There is no proof of usage,
the allegations of false complaints were denied. There is an Injunction order from the Civil Court against the applicants and the 10 infringers. The
applicants are pirators. There is no proof that Tex Com were textile manufacturers and supplied Ice Cream Mull Cloth. When the respondent filed the
application, the search report revealed no similar mark as pending or registered. In fact, the use of the mark is from 1991 and not 1995. The Invoice
copies submitted from the year 1995 would show user. The allegation of the mark being common to the trade and mark being public juries was denied.
There is no merit in the Rectification Applications and they must be dismissed.
4 . Learned counsel for the applicants submitted that the numerous documents filed by the applicants would show that ICE CREAM was common to
the trade and he referred to the documents. Annexure 'C' relate to the sales register of one Gnanam Textiles which was originally a partnership firm
in which the father of the applicant in ORA/196/2009/TM/CH was a partner. Page -7/-of the paper book from the ledger shows that "" ICE CREAM
fabrics was given for bleaching to Mr. Senthil Murugan on 31.01.1998. Page-51 of the Register also refers to the Mark ""ICE CREAM"" and these are
all entries of the year 1998. Documents marked Annexure 'C' (1) relate to invoice of Shri Sami Textiles which show the sale of ICE CREAM cambric
mull and bills of the year 20.03.1992. There are many invoices showing sales to dealers like Ujala Tex, Bombay Textiles, JB Fabrics etc. and of Samy
Textiles as well as Sri Kannan Mills all of which show sales of ICE CREAM mull or ICE CREAM from the year 1992. Th document marked as
Annexure 'D' are the letters given by Young Merchants' Association referring to use of the name ICE CREAM which is dated 27.03.2009. There is
one other similar document which is 26.05.2009 given by Thiruvengadam Veedi Vyaparigal Sangam. The Federation of Trade & Industries
Association of Erode District has also given a letter stating that registration of the word ICE CREAM will cause trouble to the traders. The learned
counsel relied on the judgment in Ford Vs. Foster (1872) 7 Cha 611. Pending the ORA, a Miscellaneous Petition was filed for reception of additional
evidence. He prayed that the mark should be removed.
The learned counsel for the respondent submitted that there is no evidence of sale of ICE CREAM by the Nanded company, so it cannot be
pleaded. The respondent has claimed user from 1995 and also the Chartered Accountants' certificate to show the turn-over. There are documents -
several invoices to show sales of ICE CREAM Mull. The learned counsel for the respondent submitted that when there is no proof regarding the
existence of the Association such letters could not be taken into account. The respondent should be protected since he has proved user from 1995 and
obtained registration.
6 . Learned counsel for the appellant pointed out that the documents filed by respondent to show user should be viewed with suspicion since there is a
bill dated 13.06.96 which shows the Phone No. 271233 and then the bill dated 22.02.1997 which shows the Phone No. 77211. By this time, Phone
numbers had clearly changed into six digits. Therefore, according to the appellant these invoices are really suspect.
The main ground raised by the appellants is that ICE CREAM mull was common to the trade and to prove this, the appellants had obtained the
certificates. We have already referred to Thiruvengadam Veedi Vyaparigal Sangam, Young Merchants Association which has certified that about 700
Textile Traders have been using the work ICE CREAM to denote cotton cloth and mull. Poovan Textiles who are whole sale dealers in Kerala have
also certified that they are getting bleached mull under the brand ICE CREAM from various parties in Erode for the past two decades. Fancy Textiles
at Thiruchur has also given certificate to the same effect. Novelty Textiles at Thiruvananthapuram has given a similar certificate. There is an affidavit
filed by N. Sivanesan who is the President of the Federation of Trade & Industry Association of Erode. (Regn. No. 86/99) swearing to the fact that
ICE CREAM is the mark used to denote the whiteness of the bleached long cloth & mull cloth and it is common to the trade. And again Mr. V.K.
Kumarasamy, president of Thiruvengadam Veedi Vyaparigal Sangam has also filed an affidavit to prove the letter issued on behalf of the Association.
One Mr. U.V Balamurugan has filed an affidavit to both the letter given by the Young Merchants Welfare Association. There are documents filed
which are invoices which prove the sale of ICE CREAM mull by the other textile traders as early as 1996.
8 . We cannot countenance the objection regarding the genuineness of the association. The letter heads of the Associations show Societies
Registration numbers. There is no reason to disbelieve them. Even if there are no such Associations, these three affidavits can at least be accepted as
evidence of three Textile dealers who speak of the fact that ICE CREAM mull was common to the trade. In addition, we have the criminal action
initiated by the respondent. They are against the Sri Kannan Mills, Samy Textiles, Thirumagal & Co., G.N.M. Fabrics, Raviselvam Textiles, K.M.
Paneer Selvam, Kandasamy Stores, Bakyalakshmi Stores, Sri Kandasamy Mills, Sri Bhagavathi Textiles, Nanjappa Mills Depot. There were 11
persons dealing in ICE CREAM mull allegedly, illegally agreeing to the respondent. These 11 persons are also the defendants in that Suit filed before
the District Court, Erode. This actually strengthens the case of the appellant that Textile dealers in Erode had been using the mark ICE CREAM along
with their long cloth & mull textiles. It is curious that though the respondent claims to have started using the mark from 1995 but has initiated vigorous
action only in 2009 i.e. after the date on which respondent got its certificate. The respondent applied for registration in 2005 claiming user from 1995.
The advertisement before acceptance was effected in 2007. The certificate was granted on 04.08.2008. The Chartered Accountants' certificate does
not refer to sales of ICE CREAM Mull. Had the respondent really been using the mark ICE CREAM in hi own right, right from 1995 he would not
have stood by watching other dealers in the same locality dealing with goods bearing the same mark. The bills produced by appellants are enough
evidence to show that from 1996 at least, the appellants and others like them had been selling ICE CREAM mull and ICE CREAM long cloth
Therefore, even the respondent's use of the mark ICE CREAM mull is only as a mark common to the trade and he was also using it like the other
persons in Erode. The only difference is he was clever enough to get his mark registered and proceeded to initiate action against all others.
In Ford Vs. Foster (1872) 7 Cha 611 a person had been trading under a particular mark for forty long years but without getting it registered but the
same mark was got registered by another person only four years before. It was held:-
Monstrous injustice would have been done if a man who has had a trade mark for perhaps forty years should lose it because another man who had it
for four years had happened to register it first.
We are in full agreement with this. The appellants have demonstrated to the best of their ability and to our satisfaction that the mark was common
to the trade. We cannot ignore the three affidavits given by the three witnesses mentioned above and the service given by the associations, the letters
given by Sri Kannan Mills and the sales effected by the appellants herein. In addition, we find from the records that numerous letters had been
addressed to the Board by hundreds of dealers who have signed that they have all been using ICE CREAM bleached cloth in their trade and the
registration in favour of the respondent would affect their business interest. These letters are dated 15.02.2010, they give the name of the dealer and
the year from which they have been doing business. There are some who have been doing from 1971 and even 1962. We would not have looked at
these letters addressed to the Board nor given any weight to them, but the evidence we have already referred to above are sufficient to convince us
that this word is common to the trade. These letters only add weightage to our conviction. The counsel for the appellant produced a print out to show
that there was a textile mill called Tex Com textiles in Nanded, but as rightly pointed out by the learned counsel for the respondent, this print out does
not tell us if this company had supplied ICE CREAM mull to the dealers in the south.
In any event, even without this, we are convinced that the mark ICE CREAM was common to the textile trade at least in Erode. And, therefore,
the respondent cannot be held to be the proprietor of the mark. The rectification applications are allowed and the mark is expunged from the Register.
Since the main Rectification application has been disposed off, the M.P. No. 139/2011/TM/CH becomes infructuous.