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Judgment
V. Ravi, Technical Member
Application is for cancellation of registered trade mark No. 1280913 in Class 10. The Trade mark in question is Bonne. The case of the applicant is
summarised below:
The trade mark BONNE as per terms of Family Settlement belongs to the specific family members only. However, the respondent in the present
application is a company formed by some members of the family with an outsider and have surreptitiously registered the trade mark 'Bonne' in their
company name without honouring and disclosing the terms of settlement to the Registrar of Trade Marks. The respondent have concealed important
facts and have fraudulently got the impugned mark registered in their name with malafide intention to exclude the applicant from using the trade mark
BONNE. In fact the applicant is entitled to use BONNE under the terms of the Family Settlement. For easy understanding a flow chart provides
details of the family business between the contesting parties.
From the above evidently M/S. Bonny Products was set up in 1963. The said firm was engaged in the manufacture and sale of baby nipples,
soothers, feeders and other allied products under the trade mark 'Bonne'. Further, this mark was registered under the repealed TMM Act, 1958 under
No. 220251 by the original partners of M/s. Bonny Products. The applicant state that the original registration is still valid, subsisting and has been
renewed from time to time. The applicant further say that M/S Paul Brothers which firm was established even prior to M/s. Bonne Products was a
marketing firm as aforementioned in the chart. They were also selling agents for four other agencies M/s. Lakme Limited, Ciba Giegy, Geoffrey
Manners and E.S. Pattenwala products. There was also another marketing firm M/s. BABY CARE Marketing Co.
On 11.06.1983, all the above three firms were dissolved and some partners opted to retire from the partnership deed in accordance with the
retirement deed in the following manner:
Shri Manoharlal Aneja and Smt. Krishna Aneja - both retired. The relevant clause of the Retirement Deed are reproduced below:-
Clause 8 That the Continuing Partners hereby agree that the Retiring Partners will be entitled to set up separate business under the name & style of
M/s. Paul Brothers (Manufacturers) or any other name;
Clause 9 That the parties to the deed agree that the retiring partners will be entitled to manufacture and market the goods with the trade mark
BONNE"" in the Union Territories of Delhi, Pondicherry & Goa, State of Haryana, Gujarat, Maharashtra, Andhra Pradesh, Tamil Nadu, Karnataka
and Kerala.
Clause 10 That the parties agree that the Continuing Partners will be entitled to manufacture and market the goods with the trade mark ""BONNE"" in
the States of Punjab, Union Territories of Chandigarh, Jammu & Kashmir, Himachal Pradesh, U.P., Rajasthan, Madhya Pradesh, Orissa, Bihar, West
Bengal, Assam, Nagaland, Mizoram, Meghalaya and Tripura.
Clause 11 Notwithstanding the territories mentioned in the proceeding paragraphs 9 & 10 above, the parties to this deed undertake that they shall not
market their goods and/or caused to be marketed their goods in any brand name in the territories other than those granted to them under the Deed
except that they shall be able to sell the goods to Baby Care Marketing Company in Delhi. The restriction imposed under clauses 9,10 & 11 would be
applicable to and govern the parties to the deed as well as any new concern/firm now existing or intended to be formed and / or incorporated and
would cover also any new partner(s) who may join these and/or with whose they or any of them may join in business.
Concerning M/s. Baby Care Marketing Company, Shri. Jagdish Paul and Shri Ashok Aneja retired on 11.07.1983 whereas the rest were continuing
partners. (Sudesh Aneja and Subash Chandra Aneja). The relevant clause there of are reproduced below:
Clause 7 That the Continuing Partners hereby agree that the Retiring Partners' will be entitled to set up separate business under the name & style of
M/s. Bonne Sales or any other name at E-27 M.A. Industrial Co-operative Estate, G.T. Karnal Road, Delhi - 110 033 and/or any other premises.
Clause 8 That the parties to the deed agree that the retiring partners will be entitled to market the goods with the trade mark ""BONNE"" in the Union
Territories of Delhi, Pondicherry & Goa, States of Haryana, Gujarat, Maharashtra, Andhra Pradesh, Tamil Nadu, Karnataka and Kerala.
Clause 10. That the parties agree that the Continuing Partners will be entitled to market the goods with the trade mark ""BONNE"" in the States of
Punjab, Union Territories of Chandigarh, Jammu & Kashmir, Himachal Pradesh, U.P., Rajasthan, Madhya Pradesh, Orissa, Bihar, West Bengal,
Assam, Nagaland.
Clause 11. Notwithstanding the territories mentioned in the proceeding paragraphs 9 & 10 above, the parties this deed undertake that they shall not
market their goods and/or caused to be marketed their goods in any brand name in the territories other than those granted to them under this Deed
except that they shall be able to sell the goods to Baby Care Marketing company in Delhi. The restriction imposed under clauses 9,10 & 11 would be
applicable to and govern the parties to the deed as well as any new concern/firm now existing or intended to be formed or formed and/ or incorporated
and would cover a also any new partner(s) who may join these and/or with whose they or any of them may join in business.
In the case of M/s. Paul Brothers, Smt. Sarala Aneja, Shri Deshraj Aneja and Shri Subash Chandra Aneja retired from the firm. Thereafter, Shri
Manohar Lal, Shri Jagdish Paul, Shri Ashok Aneja and Smt Krishna Aneja took over the business of this firm along with goodwill. However, the
retiring partners started another firm under the name M/s. Paul Brothers Agency. But, the continuing partners continued their business under the
name Paul Brothers.
The family members also executed a Family Settlement on 28.07.1985. It essentially incorporated the details of the partners, terms of mutual
settlement in consonance with the original retirement deed dated 11.06.1983.
The applicant herein M/s Paul Manufacturing Co. is carrying on business of manufacturing feeders, soothers, nipples etc. The applicant state that
Shri Manohar Lal Aneja who is the father of Shri Praveen Aneja retired from M/s. Bonny Products in accordance with retirement deed and was
given the right to use the TM Bonne for the Union Territory of Delhi, Pondicherry, Goa Haryana, Gujarat, Maharashtra, Andhra Prdesh, Tamil Nadu.
Karnataka, Kerala. Thereafter by an assignment deed dated 08.09.1997 the right in the trade mark BONNE along with the goodwill were assigned by
Shri Manoharlal Aneja (Co-owner of the TM Bonne (under No. 220521 in Class 10) to his son Shri Praveen Aneja. Thus Shri Praveen Aneja got all
the right, title and interest together with the goodwill of the business relating to feeding bottle & nipples thereof. The said assignment has been placed
before the Hon'ble Delhi High Court in the suit pending between various parties within the family.
Subsequently, Shri Praveen Aneja assigned the trade mark rights to M/s Paul Manufacturing Company vide another assignment deed dated 8th
April, 1998. By this deed the trade mark BONNE under No. 220521 was assigned in respect of feeding bottles & nipples. Thus from the sequence of
the assignment aforementioned, the applicants have secured the right, title and interest in the trade mark BONNE.
The applicant assert that Shri Jagdish Aneja (another son of Manoharlal Aneja) and one of the Director of the respondent company was not
assigned any right in the trade mark 'Bonne' in any manner whatsoever.
It is the case of the applicant that Shri Jagdish Aneja and Ashok Aneja (son of Ramji Dass) in collusion with one Shri Puran Singh have floated a
company in the name ""BONNE CARE PVT LIMITED"" the respondent herein and surreptitiously obtained registration of the trade mark 'BONNE' in
their own name as of 27.04.2004 under No. 1280913 in class 10 in a fraudulent manner concealing relevant facts from the Registrar. The application
of the respondent filed on 27.04.2004 had made a false claim of use of the impugned trade mark from 01.01.1964. This registration of the impugned
mark in the name of Bonne Care Pvt. Ltd. is contrary to the terms of retirement deed 11.06.1083 and the family settlement deed 28.07.1985. The
respondent cannot have proprietary right on the trade mark 'Bonne' to the exclusion of the other family members. Thus the registration of the
impugned mark has been obtained by fraud and is liable to be cancelled. The respondent have obtained registration of the impugned mark in respect of
the following territories namely ""State of Haryana, Gujarat, AP, Tamil Nadu, Karnataka, Kerala, Goa, Delhi and the ""Union Territory of Pondicherry"".
However, the applicants state that under the terms of Retirement Deed dated 11.06.1983, only Shri Manoharlal and Smt. Krishna Rani and not the
respondent company have been given the rights to the trade mark 'BONNE' for the above mentioned territories. Subsequently, as previously
mentioned Shri Manohar Lal assigned his rights to his son Praveen Aneja by assignment deed 08.09. 1997 who in turn assigned to his partnership firm
M/s Paul Manufacturing Co. This particular fact was concealed from the Registrar and the impugned registration was surreptitiously obtained.
The applicants are 'person aggrieved' as a dispute is pending in relation to the mark 'Bonne' before the Hon'ble Delhi High Court in Suit No.
1130/1998 instituted by the respondent company for infringement and passing off against the applicant alleging that the defendant (applicant herein) is
guilty of passing off. Subsequently after registration the plaint was amended to incorporate an infringement action. The suit has since been dismissed.
The applicant herein have applied for the registration of ""Jessica Bonne"" in Class 10 on 19.05.2004 under No. 1285026. This application has been
opposed by Shri Ashok Aneja as well as by Shri Jagdish Aneja separately under Del 187404 and Del 187412 respectively and the said oppositions are
pending before the Registrar of Trade Mark.
It is the case of the applicant that the respondent wants to monopolise the trade mark 'BONNE' contrary to the terms of the family settlement.
The respondent had applied for the impugned registration on 27.04.2004. However, from the trade mark Search Report dated 19.04.2004 it is evident
that a valid registration of the trade mark 'BONNE' under No. 220521 in class 10 was subsisting.
The applicant state that the Hon'ble High Court of Delhi in Kohinoor Paints Faridabad(P) Ltd. vs. Paramveer Singh & another - 1996 (PTC) (16)
had observed that any registration without notice to the person who is already on the register is illegal and in violation of the principles of the natural
justice and requires to be set aside.
In the instant case, the Directors of the respondent company were aware of the existing registration and had concealed the fact of the Settlement
Deed and fraudulently obtained the registration and no notice was given by the Registrar to the existing Registered Proprietor. The applicant state that
great injustice has been done to them by the registration of the impugned mark which needs to be expunged from the register to maintain the purity of
the Register. Therefore, the entry in the register of impugned mark is made without sufficient cause and is liable to be rectified under Section 57(2) of
the Act. The impugned mark will inevitably cause confusion and deception amongst the public and is wrongly registered in bad faith. The applicant are
unable to digest the injustice meted out to them and conveyed their extreme disappointment with the registry in granting registration of the respondent's
impugned application without notice to the owner of an identical trade mark for identical goods already on the register.
The case of the answering respondent is as follows:
The respondent state that the subject petition is not maintainable and liable to be dismissed in limini. The applicant has no locus standi to present the
petition or claim any right to use the registered trade mark 'Bonne' in respect of baby nipples, feeders soothers etc. The respondent has already filed a
Suit for permanent injunction against the applicant in the Delhi High Court to restrain the applicant from using the trade mark BONNE. The present
application is merely a counter blast to the objection raised by the respondent therein.
On the applicants own showing, Smt. Krishna Aneja was the partner of M/s. Bonny Products by virtue of the partnership deed dated 16.01.1979.
There is no dispute that Shri Ramji Doss Aneja (husband of Shri Krishna Aneja) was one of the founding partners of the said firm and continued to be
so from 1964 till his demise in 1979. It is also an admitted position of the applicant that the trade mark BONNE owned by M/s Bonny Products was
continuously and extensively used from 1964 in the course of trade. Consequent to demise of the Shir Ramji Doss Aneja in 1979, Smt.Krishna Aneja
(his widow) was inducted as a partner and in 1981 on the demise of Shri Nandlal Aneja, his widow (Smt Sarala Aneja) also became a partner. Thus
M/s. Bonny Products consisted of Shri Manohar Lal Aneja, Krishna Aneja, Smt. Sarala Aneja and Shri Desh Raj Aneja as on 16.05.1981. It is also an
admitted position that by virtue of the Retirement Deed dated 11.06.1983, the rights in the trade mark 'Bonne' were divided on territorial basis between
the partners.
In terms of the Retirement Deed, Shri Manohar Lal Aneja, Smt. Krishna Aneja acquired common law right to the exclusive use of the trade mark
'BONNE' for Union Territory of Delhi, Pondicherry, Goa, state of Haryana, Gujarat, Maharashtra, Andhra Pradesh, Tamilnadu, Karnataka and
Kerala. Similarly, Shri Desraj Aneja and Smt Sarala Aneja acquired right for the State of Punjab Union Territory of Chandigarh, Jammu & Kashmir,
Himachal Pradesh, Uttar Pradesh, Madhya Pradesh, Rajasthan, Orissa, Bihar, West Bengal, Assam, Nagaland, Mizoram. Meghalaya & Tripura.
Immediately after retirement from M/s Bonny Products in 1983 Smt. Krishna Aneja had set up a partnership firm under the name of M/s Paul
Brothers (Manufacturers). All rights, interests and title which vested with Smt. Krishna Aneja as a partner of M/s. Bonny Products and as were
acquired by her under the retirement deed of 11th June, 1983 were vested with her in her partnership firm started in 1983. Further, the respondent
M/s. Bonne Cares Pvt. Ltd. is a company incorporated under the Companies Act. 90% of the equity is held by the family of Smt. Krishna Aneja. In
1990, the respondent company acquired all rights, interests and title to the trade mark BONNE in respect of baby nipples, soothers and baby feeders
by virtue of an assignment deed with M/s. Paul Brothers(Manufacturers) dated 11.10.1990 in the specified territories falling under the share of Smt.
Krishna Aneja. Thus, the respondent M/s. Bonne Care Pvt. Limited is successor in interest of Smt. Krishna Aneja and her firm M/s. Paul Brothers
(Manufacturers).
The respondent submit that in the above circumstances, their rights to the TM 'Bonne' cannot be disputed or challenged by any third party
including erstwhile partners of M/s Bonny Products or any other person claiming through them. The respondent state that it is well settled that right to
a trade mark is acquired on account of use under the common law. The registration is a mere statutory recognition of such rights. By virtue of
continuous use by the respondent through its predecessors in interest of the title from 1964, the respondent filed an application for the registration for
the trade mark BONNE on 27.04.2004 under No. 1280913 in class 10. This mark was duly registered for sufficient cause and the applicant has no
locus standi to dispute or challenge, the registration of the trade mark BONNE. The entire petition is devoid of merit and based on imaginary ground
for reasons inter-alia indicated below:
a. It is true that Shri Manohar Lal Aneja did acquire equal rights and interest under the Retirement Deed to the use of the trade mark 'BONNE' for
the territory specified under the said deed. However, he completely abandoned the use of the said mark 'BONNE' and did not engage himself in the
manufacture of any goods. On the contrary M/s Bonny Sales in which Shri Manohar Lal Aneja became a partner used to purchase goods bearing the
trade mark BONNE as an agent of the respondent predecessor M/s Paul Brothers (Manufacturers) from 1983 till 1990 and thereafter from the
respondent company from 1990 till 1997. Thus for a continuous period of 14 years there was no use of the trade mark BONNE by Shri Manohar Lal
Aneja for any goods whatsoever anywhere in India. On the contrary, from 1983 till 1997, the respondent made exclusive use of the trade mark
BONNE in respect of baby feeders, baby nipples etc. for the allotted territories under the retirement deed to the full knowledge of Shri Manoharlal
Aneja and without any objection of any nature.
b. In 1997 there arose disputes between the parties. It is only thereafter that Shri Manoharlal Aneja and Shri Praveen Aneja entered into a sham and
anti dated transaction of assignment in respect of registered trade mark No. 220521 in favour of Shri Praveen Aneja.
c. In fact Shri Manohar Lal Aneja had no authority or power to assign the registered Trade Mark No. 220521 as the partnership firm in whose name
the registration has been made stood dissolved on 11.06.1983 and secondly having intentionally surrendered, given up and abandoned the registered
trade mark for 14 years, Shri Manoharlal Aneja had no right to make such an assignment.
d. Further, Shri Manoharlal Aneja by reasons of acquiescence, estoppel and non use for 14 continuous year could not pass any better title to his son
Shri Praveen Aneja than what he had on the date of the alleged assignment.
e. The respondent herein expanded his business to the full knowledge of the applicant from 1983 to 1997 and built up valuable reputation and goodwill
in the trade mark 'BONNE' for the territory specified as per the retirement deed.
f. The respondent, therefore, submit that Shri Praveen Aneja had dishonestly and malafidely procured the assignment of the registered trade mark
220521.
g. The respondent state further that an ex-partner of a dissolved firm is not competent to assign partial rights in the registered trade mark. Shri
Manoharlal Aneja was not the registered proprietor of trade mark No. 220521 and the so called deed of assignment is illegal and unenforceable in law.
h. The respondent state that Shri Manoharlal Aneja & Shri Praveen Aneja has set up false defence to legal proceedings initiated by the respondent in
the Hon'ble Delhi High Court.
i. The applicant is estopped from disputing the title of the respondent on account of having acquiesced to its right openly asserted by the respondent for
over 22 years before the institution of the rectification petition.
j. The respondent further state that M/s Bonny Products stood dissolved in 1983 and no steps whatsoever have been taken for recordal of any
subsequent proprietor (either the continuing or retiring partner) for the said registration in accordance with the procedure prescribed by law.
The respondent therefore, assert that this rectification petition is actuated with malafide and liable to be dismissed in limini. The respondents are
also protected under section 33 of the Act. The applicant has been buying goods from the respondent company and marketing the same as an agent
from 1990 till 1997. Prior to this the applicant has been buying and selling the respondents goods as an agent through the respondents predecessor in
title and interest M/s Paul Brothers (Manufacturers) from 1983 till 1990. The registration obtained by the respondent of the impugned mark is in
accordance with the terms of Retirement Deed as well as Family Settlement. In fact the respondent have obtained registration of the trade mark
'Bonne' only for specified territories allowed to Smt Krishna Aneja under the terms of the Retirement Deed and confirmed by the Family Settlement.
The respondent state there is no legal obligation to file the Retirement Deed or Family Settlement with the Registrar of Trade mark. The respondent
also deny that they are separate entity and in fact the respondent is a private limited company more in the nature of a glorified partnership firm
wherein 90% of the share holdings are held by the family members of Smt. Krishna Aneja. No material facts have been concealed from the Registrar
and the registration has not been obtained by fraud. In fact Shri Manoharlal Aneja was not the registered proprietor of the TM No. 220521 as on
08.09.1997 and therefore, is not competent to assign the right therein to Shri Praveen Aneja. As an alternative plea, the respondent say if Shri
Manohar Lal Aneja claim to have subsisting right in the trade mark No. 220521 equally Smt. Krishna Aneja has a subsisting interest in its registration.
In view of the foregoing, the above application is liable to be dismissed.
The evidence in support of registration is an affidavit of Shri Ashok Aneja, Director of the respondent company M/s. Bonne Care Pvt.Ltd.; copy
of the Retirement Deed dated 11.06.1983; copy of the partnership deed dated 13.06.1983 of M/s. Paul Brothers (Manufacturers); copy of Assignment
Deed dated 11.10.1990 executed by M/S Paul Brothers (Manufactures) in favour of the respondent; copy of commission agreement dated 13.07.1983
between Smt. Krishna Rani & Shri Manoharlal Aneja; copies of invoices raised by Paul Brothers (Manufacturers) on M/s Bonne Sales; copy of
partnership deed of M/s Bonny Sales; copy of the invoices raised by the respondent's company on M/s Bonny Sales; copy of written statement filed
by the respondent/petitioner before the Delhi High Court; Memorandum and Article of Association of respondent M/s Bonny Care Pvt. Limited and
certificate of CA showing shareholding of Bonny Care Pvt. Ltd. etc.
The following cases are relied on by the applicant:
""Kohinoor Paints Faridabad (P)Ltd., Vs Paramveer Singh & Another
- 1996 PTC (16) HIGH COURT OF DELHI CO 19/94
This case related to assignment of trade mark where a dispute arose between the parties with regard to alleged assignment. Order was passed by the
Registrar without giving an opportunity of hearing or even notice to the person in whose favour the registration of the trade mark was existing. Held,
the order of assignment passed by the Registrar is illegal and therefore, set aside.
V.D. Misra J. - AIR 1972 Delhi 153 (V 59 C 37)
When both the parties were joint owners of a particular trade mark and one party by suppressing material fact of the interest of the other party
obtained its registration only in its own name, the act of the former party in obtaining the said registration was by fraud. The other party was entitled to
necessary rectification.
"" Darshan Lal Dhooper Vs Motia Rani and Others "" - 2002 (25) PTC 587 (Del)-High Court of Delhi CO. No. 17/1993
The legal proposition laid down was where registration was obtained against natural justice (Partnership was dissolved) and not as per settlement
terms neither could claim exclusive right to trade mark PLAZA. There was concealment of this material fact before Registrar. Held, registration
illegal. Mark rectified.
The following cases were relied on by the Respondent:
1987-PTC -5- In the High Court of Delhi - I.A. No. 1934/86 in Suit No. 615/86
Keeping in view the facts that the agreement appointing the defendants as registered user of the trade mark by one of the partners of the Plaintiff firm
is sham (as the remaining two partners never subscribed to any such agreement) and in view of the violation of the provisions of Section 48 and Rules
82 and 83 and the facts that the plaintiff has been able to establish a prima facie case for grant of temporary injunction and the balance of
convenience being also in favour of the plaintiff, the defendant is restrained from manufacturing, selling or offering for sale or otherwise dealing in
voltage stabilisers under in the mark SONAX.
""Kalinga Kudaku Udyog Vs Konark Gudakku Factory"" 1990 PTC 216 In the HIGH Court of Delhi IA Nos. 3766 & 4517/88 in Suit No. 1540/88
Held, that the trade mark which was the property of one Shri Ram Niwas Aggarwal one of the partners of the firm constituted by four partners and
accordingly all the four partners became the owners of the trade mark 'STAR' and the copyright in question. The said firm having not been wound up,
the plaintiff has no right to the exclusive use of the trade mark and the label and accordingly the defendant who was one of the partners of the
erstwhile firm cannot be restrained by a temporary injunction from using the said trade mark and label.
The Indian Association of Thermometry and others Vs M/s Hicks Thermometers (India) Ltd. and another 1981 PTC 121- In the HC of Delhi Suit
No. 18 of 1981
The applicants were previously registered user of the trade mark 'Hicks'. After the registered user agreement came to an end, they applied for the
registration of the said trade mark. The appellant opposed the registration on the ground that the registration will cause confusion and deception; the
mark is not distinctive and the applicants are not the proprietors of the said mark - Held keeping in view the evidence on record and the facts that the
respondents having manufactured the 'Hicks"" thermometer in India with foreign collaboration and having acquired 'Hicks' standard precision and
reliability, no confusion and deception is likely to be caused. As regards distinctiveness, the mark 'Hicks' has acquired distinctiveness in India and even
otherwise, the said trade mark can be registered in Part 'B' of the Register. In connection with the claim of the proprietorship by the respondent, it is
held that the respondent were in fact using firstly as registered user and thereafter without registration and being the first person to pick up the said
trade mark after its abandonment by the Registered Proprietors, are the proprietors within the meaning of section 18(1) of the Act and thus the
Assistant Registrar of Trade Mark having exercised his discretion judiciously, there is no ground for interfering with his order.
I.A. No. 548/2011 in CS (OS No. 89/2011 & I.A. No. 550/2011 in CS(OS) No. 90/2011 - Double Coin Holdings Ltd & another Vs Trans Tyres
(India) Pvt. Ltd & Another - 2011 (46) PTC 194 (Del.) HC of Delhi
Order 39 Rules 1 & 2 _ Trademark 'Double Coin' in respect of tyres _ Products are being sold worldwide in as many as 90 countries - Plaintiff
supplying tyres to various dealers in India since the year 2005 - Defendants claimed that they had obtained registration with the consent of the plaintiff
and to its full knowledge - Customer likely to connect the products to the Chinese manufacturer and create confusion in the mind of the customer -
Defendant restrained during pendency of the suit.
The matter was listed for hearing on 28.08.2012 which was continued on 29.08.2012. We have heard the detailed arguments of the learned
Counsel for both the parties, gone through the pleadings, supporting documents and various authorities relied on by both the parties.
It was argued by the applicant's learned counsel that they are 'person aggrieved' and the respondent cannot be exclusive owner of the impugned
mark. How did M/s Bonne Care (P) Ltd., get right, title and interest from Smt. Krishna Aneja when she herself was only ""a permitted user"" of the
impugned trade mark?. The respondent had exercised the ownership rights to the applicant's detriment. There were four partnership firms. The
retirement deed of 1983 refers to continuing partners and that is critical.
The learned Counsel for the respondent argued that Shri Manoharlal Aneja never exercised his trade mark right since 1983 till 1997. During that
period the applicant was buying from the respondent under the impugned trade mark. This was a clear cut case of abandonment of the use of the
trade mark by Shri Manoharlal Aneja. The applicant were merely selling agents of the respondent's goods. The respondent's right to use the impugned
trade mark is not in dispute. It is urged if a person has no right what can he assign? The applicant have not come with a clean hand. The respondent
state that law provides for protection by more than one proprietor. Section 12 provides statutory protection to the respondent. He questioned how can
a co-owner (one partner) transfer the entire rights in the registered trade mark 220521?. Such rights were not given under the retirement deed.
Further, the dissolution deed does not talk of the bifurcation of trade mark.
The issues to be decided in this case may be formulated as follows:
a) What were the errors committed by the Trade Mark Registry leading this case to a fierce litigations?
b) Whether the alleged assignment in 1997 by Manohar Lal Aneja to his son Shri Praveen Aneja was a sham and anti-dated assignment?
c) Was the respondent entitled to use the trade mark BONNE only as per family settlement and only by the specified partner only in the particular
manner and by none else?
d) Whether alleged non-use for 14 years by Shri Manohar Lal entitled the successor in interest of the respondent to be joint co-owners of the
registered trade mark ?
e) Did non-disclosure of Family Settlement to the Registrar materially prejudice the applicant?
f) Whether the registration of the impugned trade mark was valid in law?
Registry Errors
a) Before pointing out the mistakes, we wish to commend the Registrar for many recent initiatives towards digitization and computerisation of trade
mark records. The errors are being brought out only to further improve the system and bring out the technical deficiencies observed by us. The first
lapse committed by the registry was advertising in the trade mark journal an identical trade mark for identical goods. Since search for Examination is
based on computer generated citations, can an identical trade mark for identical goods or services not be blocked at the Examination stage itself? Only
if the latter mark is based on prior user (thoroughly verified by an affidavit and supporting documents), such mark may be considered for publication in
the journal. This arrangement will check dubious marks slipping into the register. The second error was not alerting the already registered proprietor
on record of the impending registration of the respondent's impugned application. In all trade marks jurisdiction where relative grounds of refusal are
mandated, the interest of previously registered trade mark stakeholders weigh heavily on the mind of the competent authority. These cannot be
brushed aside lightly under the guise of ABA or any one has right to file an opposition under Section 21. That is why the instrument of cross-notice to
cited mark the Examination Report should be made revived. To the best of our information this practice has now been dispensed by the registry
perhaps due to mounting workload. This case is a direct fallout of that lapse. We suggest as a starting point that the registry send an auto e-mail alert
to all agents and advocates on record hyperlinked with the Examination Report where they are representing the objected mark. The Delhi High Court
in Kohinoor Paints case (1996) PTC 16 (Supra) has clearly laid down that unless notice is given to prior registrant applicant, any such registration is
illegal. An administrative instruction may be issued by the Registrar for quick action on this front by calling upon all agents, advocates on record to
mandatorily furnish e-mail id for e-correspondence. It is believed over 70% of the trade mark application are filed through agents. This will be a good
first step in the right direction. In due course, e-mail id of all registered proprietor (wherever available ) may also be stored in the database. This
arrangement will also facilitate transmission of various statutory notices leading to seamless trade mark processing. Since all Examiners and higher
officials have workstation at their table a leadership push from the top will work miracles in checking avoidable litigations.
b) Sham anti-dated Assignment:
It is alleged that the assignment deed transferring the trade mark 'BONNE' from Manoharlal Aneja to his son Praveen Aneja is illusory, deceptive and
exist only on paper as the assignor had abandoned the trade mark and the assignment has been executed with ulterior motive. Shri Manohar Lal Aneja
was incompetent to execute the assignment deed and the deed was motivated, illegal, illegitimate and impermissible as it lacks commercial substance.
To cull the truth of the matter whether indeed this was the case (unlike their cousins in the income tax area) we need to scrutinise the documents on
record of use of trade mark 'BONNE' between 1983 to 1997 by Manoharlal Aneja. The applicants defense is that they are ' permitted user' of the
impugned mark never mind they bought the goods from the respondent. On the contrary, the respondent are repeatedly asserting that the applicant
were merely sales agent of the respondent from 1983 to 1997 and the trade mark 'BONNE' was in fact never used by the applicant. In effect what is
alleged that the applicant have not used the registered trade mark over an extended period of time (14 years) and to resume use set up an anti dated
assignment to secure separate registration of the mark. We all know right in a trade mark can be lost through improper licensing or abandonment or
genercity. Non use can be inferred from circumstances. The basic idea is that trade mark law only protects marks that are being used and parties are
not entitled to warehouse potentially useful marks. The most damning allegation was selling respondent's goods under the disputed trade mark
'BONNE' between 1983 to 1997 by the applicant. This is not denied or rebutted. What, however, complicates the situation even though the respondent
say abandonment as the gospel truth, why on earth an assignment was not brought on record of the register? It may possibly be because of massive
backlog that a proper request would never see the light of the day and the cumbersome procedure followed by the registry in processing assignment
request. Under the Act, the Registrar is only a recordal authority for assignment and all such request could be easily auto processed by re-designing
the relevant forms thereto. Under the repealed TMM Act, 1958, the processing of assignment request involved excessive caution leading to
entrenched mindset with the assignee going around in endless circles of compliance requirements resulting in huge delay. We urge the re-examination
of 'the prescribed manner' mentioned under the assignment rules to make it simple and expeditious so that all request are effectively disposed off, in
say, within three months. We also suggest that the reported backlog of over 30,000 assignment request be acted upon immediately by putting it under a
'project mode'. The reason is the new Section 45(4) of Trade Mark (Amendment) Act, 2010 (not yet brought into force) makes it mandatory on the
assignee to apply to the registry with the caveat that such 'assignment or transmission shall be ineffective against a person acquiring a conflict interest
in or under the registered trade mark without the knowledge of assignment or transmission'. A quick resolution to this headache will send a positive
signal that brand protection is acted upon with utmost expedition.
c) Allegation that the respondent went beyond Family Settlement :
i) The essence of a Family Settlement is good faith. It must not be in the nature of extinguishing or limiting the rights of the family members who are
not a consenting party to the arrangement. Such arrangement should not incite dispute or disrupt harmony. Here the trade mark rights are re-aligned.
In the process, some of the pre-existing rights of one of the member may be extinguished by their consent, so long as it meets the other requirements
of a valid family arrangement. The respondent here say the applicant have abandoned the right in the registered trade mark due to non-use. The
applicant have set up a defense that they are 'permitted user' under Section 2(1) (r) even while buying respondent's product under the impugned mark
and there is no question of abandonment. The Hon'ble Supreme Court in Roshan Singh Vs Zile Singh AIR 1988 SC 881 had observed "" If the
arrangement of compromise is one under which a person having an absolute title to the property transfer his title in some of the items thereof to
others, the formalities prescribed by law have to be complied with, since the transferee derive their title through the transferor. If, on the other hand,
the parties set up competing titles and the differences are resolved by compromise, then, there is no question of one deriving title from the other and
therefore the arrangement does not fall within the mischief of Section 17(1)(b) read with Section 49 of the Registration Act as no interest in property
is created or declared by the document for the first time.
ii) The respondent have registered the impugned trade mark BONNE under No. 128091 for feeders, soothers and nipples for sale in ""the State of
Haryana, Gujarat, Maharashtra, Andhra Pradesh, Tamil Nadu, Karnataka, Kerala, Delhi and Union Territory of Pondicherry "" Clause 9 of the
Retirement Deed says that the retiring partners will be entitled to this. Both Shri Manoharlal Aneja and Smt. Krishna Aneja were retiring partners
under the retirement deed dated 11th June, 1983 but are now arrayed in the opposite camp. We have mentioned earlier how each party have sought to
establish claim of ownership of the trade mark for the specified territory. The applicant through Manoharlal Aneja claim co-joint right in the registered
trade mark 2220521 which was later assigned to his son Shri Praveen Aneja by an assignment deed dated 8th April, 1998. This deed conveniently
makes no reference to the territories to which Manoharlal Aneja's claim was limited. On the other hand, to the extent the respondent have confined
their registration to the allotted territory as per the family settlement for what it is worth they cannot be faulted. The only issue left for determination is
whether the new entity M/s BONNE Care (P) Ltd., the respondent herein securing a trade mark registration is beyond the scope of Family Settlement
more so as an outsider Shri Puran Chand has been inducted as a Director of the respondent company?. We find nothing improper in this as the
retirement deed itself say that both the retiring and continuing partners would include 'heirs, successors and legal representative'. It is apparently on
the strength of this that the assignment deed of Shri Manoharlal Aneja and the ultimate transfer of right, title and interest of Smt. Krishna Aneja to
M/s BONNE Care Pvt. Ltd was effected. If the claim of one is valid, that of the other equally tenable.
(iii) But the twist in tale does not end here. At this stage it would be appropriate to briefly look into what is going on in the registry in respect of the
applicants' and respondent's efforts concerning the disputed trade marks and how each is outwitting the other.
Trade Mark of BONNY PRODUCTS (P) Ltd.
E-13, Sector II, Phase -I, Noida, UP.
Clause 7 of the retirement deed dated 11th June, 1983 provides that the continuing partners (Smt. Sarla Aneja and Des Raj Aneja) would be entitled to
continue their business under the name and style of M/s BONNY PRODUCTS. Evidently on the strength these three registrations have been
secured. However, it is not clear from the record who owns M/s BONNY PRODUCTS(P) Ltd at present in whose name the three above mentioned
registration still subsists.
Applicant's pending Trade Mark BONNE CARE (P) LTD.
Respondent's impugned trade mark under rectification
ORIGINAL REGISTRATION
(iv) What is curious is how M/s BONNE Product (P) Ltd which is stated to have been dissolved in 1993, filed and secured the above three
registration and that too for the area allotted to the continuing partner now culminating in M/s Paul Manufacturing Co. 'Parde Ke Piche Kaun hai'?.
Thus, Shri Manoharlal Aneja (father of Shri Praveen Aneja) is now a partner of M/s Paul Manufacturing Co., the applicant herein. Having perhaps,
assured himself and to his son Shri Praveen Aneja the benefit of statutory protection under registered trade mark 612007, 774896 and 1284529, the
applicant are evidently aiming to oust the respondent's trade mark from his allotted territory. This is too much to swallow.
(v) From the foregoing it is apparent that the applicant were keen on expanding their business under the Trade Mark BONNE at least in respect of
export since November, 1993. But even this was opposed by the respondent herein at the registry but ultimately it proceeded to registration.
(vi) In the light of the above how do we proceed in the instant case, We had earlier mentioned each party is trying to outwit the other. How? The
continuing partners under the retirement deed sought protection of the trade mark BONNE for oversees market in 1993 itself. Does this mean the
retirement deed concerning the trade mark element was an eyewash? We don't know. Then in 1997 M/s BONNY PRODUCTS (P)Ltd., applied for
statutory protection for the area allotted to the applicant under the 'Family Settlement' as a 'proposed to be used trade mark'. We assume that this was
at the instant of then continuing partners. But details are not available as these trade marks are not at issue here. The dispute arose after the
respondent sought registration for trade mark BONNE in April, 2004 (claiming user since 01.01.1964) immediately followed by the applicant seeking
registration for the same mark in May, 2004 ( also claiming user since 01.01.1964.) Meantime, the respondent went to court but the suit was later
dismissed. The inference is, if the respondent had set up a false claim of user since 1964, the applicant are equally culpable of that mischief. That
leads us to nowhere.
d) Alleged Non-use of trade mark by Manohar Lal Aneja from 1983 till 1997 (14 years)- effect thereof.
i) The entire defence of the respondent revolves on the purported abandonment of trade mark by Manoharlal Aneja and thereby lost his claim on the
registered trade mark and the respondent can use it without permission from original trade mark owner. Shri Manohar Lal Aneja had discontinued and
abandoned his business under the impugned trademark and therefore has no right in the trademark or in the goodwill in respect of this trademark as it
does not survive due to such non-user. Shri Manoharlal Aneja had resumed, restarted his business under the impugned mark only in 1998. What is the
effect of this non-user for such long period? How property in a mark is lost has been explained in Law of Trade Mark by P. Narayanan (4th Edition) -
Mark ceases to be distinctive of the proprietor's goods as a result of non-use, abandonment, or when it becomes common to trade by widespread
piracy or when the proprietor does not take action against infringer of his rights. But the applicant plead that there was no intention to abandon the
trade mark as it is renewed and kept alive till today. The question of abandonment in one of intention to be inferred from the facts of the particular
case. Some examples of such non-abandonment include a) company going into liquidation b) temporary non-user due to war conditions (c) adverse
market condition affecting the trade mark. The actual use of a trade mark is a requisite to its ownership. Between 1983 to 1998 no product of the
applicant was in the market (branded with the impugned mark). As the applicants product was no longer on the shelves, how can the respondent be
accused of securing registration of the impugned trade mark in bad faith?. The case of the respondent is that the applicant have relinquished and
renounced their interest, claim, privilege or right in the registered trade mark 220251 and this amounts to a waiver of his rights.
(ii) What is the legal effect of all this complicated history between the parties? To summarise till 13.06.1983 Shri Manohar Lal Aneja, Shri Des Raj
Aneja, Smt Sarla Aneja and Smt. Krishna Aneja were carrying on business under M/s BONNY PRODUCTS. It appears Shri Manoharlal and Shri
Des Raj are brothers while Smt. Sarla Aneja and Smt. Krishna Aneja are widows of Late Shri Nand Lal Aneja and Shri Ramji Aneja respectively.
Difference arose between the parties and ultimately the family was divided into two groups viz:
(a) Shri Manohar Lal Aneja and Smt Krishna Aneja (say, Group A)
(b) Shri Des Raj Aneja and Smt. Sarla Aneja (Group B)
(iii) A deed of retirement was executed between the parties. Shri Manoharlal & Smt. Krishna Raj Aneja retired from M/s BONNY PRODUTS. The
Deed provided that the retiring partners would market the goods with the trade mark 'BONNE' in the territory mentioned in Clause 9 of the deed
namely ""Delhi, Pondicherry an Goa, Haryana, Gujarat, Maharashtra, Andhra Pradesh, Tamil Nadu, Karnataka and Kerala."" The second group (B)
who were the continuing partners in Bonny Products were allowed to market goods with the trade mark 'BONNE' for the territories mentioned in
Para 10 of retirement Deed namely 'Punjab, Union Territory of Chandigarh, Jammu & Kashmir, Himachal Pradesh, Uttar Pradesh, Rajasthan,
Madhya Pradesh, Orissa, Bihar, West Bengal, Assam, Nagaland, Mizoram, Meghalaya and Tripura.' Further, the parties were governed by Clause 11
of the dissolution deed dates 11th June, 1983 [reproduced in Para 5 (supra).]. In our view, the terms and conditions recorded in the retirement deed
are binding between the parties and no one can claim proprietary rights over the trade mark BONNE on an All India basis. Both the applicant and the
respondent are bound by the Family Settlement and Memorandum of Understanding. If either are violating the terms of family settlement, the same is
to that extent invalid and void.
(iv) From our perspective Clause 5 of the retirement deed is material and reproduced below:-
The retiring partners further agree that they shall not be entitled to any amount on account of the name and goodwill of the vesting in the continuing
partners. However, as far as the trade mark 'BONNE' is concerned the same shall vest in the partners to the Deed and both the Retiring Partners and
the continuing partners will be entitled to use the same only in the territories assigned to them and mentioned in the subsequent clauses of this Deed.
The conclusion that we reach is that both the applicant and the respondent are entitled to use the impugned trade mark in the respective territories
allotted to them as per the Retirement Deed.
e) Did non-disclosure of Family settlement to the Registrar materially prejudice the applicant?
On the totality of circumstance and given the massive infighting with passage of time between the applicants and respondents, the non-disclosure in
the instant case would have had no bearing in as much as the respondent had confined their registration only for the allotted territories under the
retirement deed. How about BONNY PRODUCTS (P) Ltd? Is it not a front company of the applicant and the three registration that still subsists in
its name. Is their conduct above board?
f) Whether the registration of the impugned trade mark valid in law?
Yes, for the foregoing reasons mentioned in great detail.
In the result ORA/03/2006/TM/DEL is dismissed. There is no order as to costs.