R. Veeraswamy And Ors vs R. Kanagaraj And Ors

S. Usha, J

Both the rectification applications are cross applications for removal of the trade mark TOY (Label Mark) under No. 976591 in class 34 and trade

mark NEW TOP (Label Mark) with device of Top under No. 1066937 in class 34 respectively in ORA/79/2009/TM/CH and ORA/116/2008/TM/CH.

For the sake of convenience the applicant in ORA/116/2008/TM/CH and Respondent in ORA/79/2009/TM/CH will hereinafter be called as the

applicant and applicant in ORA/79/2009/TM/CH and Respondent in ORA/116/2008/TM/CH will hereinafter be called as the Respondent.

The brief facts of the case are:

The applicant is a manufacturer of safety matches under the name and style of ""Sri Andalammal Match Works"". They coined and adopted a label

mark TOP along with one distinctive device of 'TOP' in vertical position with green color background on 18.12.1991. The applicants obtained the

approval of the Central Excise authorities. The applicants have been using the trade mark continuously till date and have permitted the sister concerns

to use whenever demand arises. The applicants have applied for registration of the trade mark Top (label mark) under No. 1066937 in class 34 (the

subject matter of ORA/116/2008/TM/CH).

The Respondents are carrying on the same business using a deceptively similar label in the name of Toy with a deceptively similar device. The

applicant had filed a criminal complaint before the police station. The Respondent had during the investigation given a written undertaking to the

applicant not to use the green color combination and also agreed to use the device of TOP in horizontal position only. But on the contrary the applicant

had gone ahead with the application for registration and obtained registration. The applicant is therefore a person aggrieved. The user claimed as 1967

is totally false.

Being aggrieved by the registration the applicant has filed this rectification on the following grounds:

a) The registration wrongly remains on the register because of the suppression of the undertaking given not to use the green color combination and the

device of the TOP in vertical position;

b) that the applicant is a person aggrieved as after the Respondent had undertaken to change the color and position had applied for registration of the

trade mark;

c) that the applicant is using the trade mark for more than 16 years without any interruption;

d) that the registration has been obtained fraudulently suppressing the undertaking given by the Respondent not to use the green color;

e) that the applicant has suffered loss due to the unfair competition made by the 1st Respondent;

f) that the 1st Respondent has obtained registration with unclean hands;

g) that in the interest of the purity of the register the impugned trade mark ought to be removed;

h) that there are no special circumstances or any other reason in favour of the 1st Respondent for the impugned trade mark;

i) that in the interest of justice and equity the present application is allowed.

The Respondent filed the counter statement with the preliminary objection that the provision of Section 124(1)(ii) of the Act have not been complied

with by the applicant as a civil suit is pending before the District Court. The MoU relied on by the applicant to state that the registration has been

obtained by fraud is invalid as the Respondents signature was obtained by coercion, duress and threat. This MoU cannot be relied upon as this is the

subject matter before the civil court.

The Respondent had been carrying on the business of manufacturing safety matches since the year 1967. Their business had acquired tremendous

goodwill and reputation among the public. The 1st Respondent's father Mr. S. Ramamoorthy started the business in safety matches in the year 1962

under the name and style of ""The Venus Match Industries"" at Regaappanaickenpatti. The Respondent's father adopted honestly the mark color Toy

label with the device of Top in the year 1967 for safety matches with the artistic label after obtaining approval from the Central Excise Authorities.

The device of Top is in red color with various color hoops around the device of Top. In the yellow color background, the letters ""Color and Toy"" are

on the right and left of the device of Top. Since 1967 the Respondents had been using the label continuously and extensively.

After the demise of Mr. S. Ramamoorthy, the 1st Respondent as legal-heir of the deceased Ramamoorthy with the consent of other legal-heirs

obtained license in his name and continued to carry on the said business.

In February, 2008, the 1st Respondent received a legal notice stating that the applicant's label and the 1st Respondent's labels are similar. The

applicant had also referred to the MoU dated 05.11.2002. The 1st Respondent has been using the said label since 1967 i.e. for more than 40 years and

the mark therefore cannot be removed or cancelled in view of the delay in taking action. The other allegation and averments made in the grounds of

rectification were denied by the 1st Respondent.

The 1st Respondent (applicant in ORA/79/2009/TM/CH) filed an application for removal of the trade marks ""NEW TOP"" under No. 1066937 in

class 34 on the ground that they are the prior adopters and users of the trade mark Color Toy label with the device of Top since 1967 and are also the

registered proprietors of the trade mark. The applicant's trade mark is confusingly and deceptively similar to the 1st Respondents trade mark and

therefore hit by Section 9(2)(a) of the Act. The mark is neither distinctive nor capable of distinguishing and therefore prohibited under Section 9(1)(a)

of the Act. The registration is contrary to the provisions of Section 11(1) and 11(2) of the Act. The applicant has not used the trade mark for a period

of 3 months prior to filing of this application for rectification and therefore contrary to Section 47(1)(a) of the Act. The registration has been obtained

by suppression of material facts and by fraud. The mark is wrongly remaining on the register without sufficient cause.

The applicant (1st Respondent in ORA/79/2009/TM/CH) filed the counter stating the pleadings and documents filed along with

ORA/116/2008/TM/CH may be read part and parcel of this counter statement. The applicant further narrated the facts stated in the

ORA/116/2008/TM/CH.

The matter was heard on completion of the pleadings. Both the parties advanced common arguments and common orders are passed with their

consent.

Learned Counsel for the applicant Mr. P.C.N. Raghupathy submitted that they had obtained the Central Excise approval for affixing the labels on

the match boxes. The applicants had adopted the trade mark and used since 18.12.1991 and had applied for registration under No. 1066937 in class 34

and obtained registration, which is the subject of the 1st Respondents rectification application in ORA/79/2009/TM/CH. The counsel referred to the

set of documents and submitted that on the gate passes for removal of excisable goods from a factory or warehouse on payment of duty dated

22.04.1992 - the trade mark ""NEW TOP"" was mentioned which goes to prove their user since then.

The counsel then submitted that the user mentioned by the 1st Respondent since 1967 is false and cannot be accepted. The label seen in the 1st

page of 1st Respondent's typed set of documents have been discontinued by them. A criminal complaint was lodged and subsequently an agreement

was entered into, in which the 1st Respondent had agreed not to use the green color and that he would change the position of the device, but contrarily

had filed this impugned application for registration. The 1st Respondent had admitted that they had permitted others to use, but had not filed the

permitted user agreement.

Learned Counsel for the Respondent submitted that there is no color restriction in the trade mark. In the sales figures certified by the Chartered

Accountant filed by the applicants, there were two trade marks mentioned and so that cannot be said to be a valid document to be relied on. The

counsel further submitted that they have filed three affidavits stating that they are the permitted users of the trade marks Toy brand and New Color

brand and this is to prove their user since the date of adoption i.e. 1967. The applicants have not filed any other document other than central excise

registration certificate to prove their user.

The counsel then relied on the compromise deed and stated that there is nothing mentioned above the color combination. The applicants cannot

claim any monopoly over the color combination. The applicants have filed this rectification application after a long delay. Therefore, this rectification

application is not maintainable. The Respondents registered trade mark is valid as per the provisions of Section 12 of the Act. Finally, the counsel

submitted that the compromise deed dated 21.5.2002 cannot be relied on as the same has been obtained by coercion in the police station. The witness

Mr. S. Jaganathan has sworn in the affidavit to that extent to say that the applicant had collided with the police and obtained the Respondent's

signature.

In rejoinder to the Respondents arguments, the counsel for the applicant submitted that the Respondent defense under Section 12 of the Act as to

honest and concurrent use is not applicable.

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

The applicant herein is a person aggrieved as the Respondents have filed a civil suit before the District Judge at Srivilliputtur against the applicants.

That apart, the applicants and the Respondents are both dealing with identical goods. The rival marks are similar and the goods being identical, the

applicant's case that they are not, likely but certain to suffer injury if the mark is allowed to continue on the register must be decided. Therefore the

applicant has the locus stand to file and maintain any application for rectification.

The Respondent's adoption of the trade mark as a whole along with the device is not honest. On a plain reading of the deed of undertaking dated

29.09.2000 filed along with the C.S. in ORA/79/2009 by the applicant one Mr. S. Jaganathan (who has sworn in an affidavit before this Board stating

that the compromise between Mr. Veerasamy and Mr. R. Kanagaraj is in collusion with the police authorities) had signed the same admitting the

applicants adoption and use since 24.11.1991 and had also admitted that the applicants had applied for registration of the trade mark. Subsequently in

the year 2002 had signed as witness to the Compromise deed. After 7 years i.e. in the 2009, the same person who had filed an affidavit stating that

the compromise deed was signed by the Respondent by coercions and threat is a false statement in our opinion In fact, the same Mr. Jaganathan had

undertaken that

(Editor: The text of the vernacular matter has not been reproduced. Please write to [email protected] if the vernacular matter is

required.)

Mr. Jaganathan who is said to be the permitted user of the Respondent's trade mark had agreed not to manufacture or manufacture through a

third person under the brand New Top.

The affidavit of Mr. G. Adhimoolam the second witness to the compromise deed was also produced and perused by us. The signatures vary and

therefore this only gives rise to doubt as regards the veracity of the affidavit.

Now coming to terms of the compromise deed dated 21.05.2002 the Respondents has agreed not to use the green color label and has now gone

ahead in getting the registration for the green color which totally amounts to misrepresentation and false statement made before the Registrar for

obtaining registration. In the memo of compromise it is agreed.

(Editor: The text of the vernacular matter has not been reproduced. Please write to [email protected] if the vernacular matter is

required.)

English Version

1) Kanagaraj being the 2nd party amongst us could do business with the Trade Mark in words as ""Color Toy"" along with the Trade mark figure of

Toy"" granted by the Superintendent of Excise Tax Department under T.L. No149/S/67 dated 16.12.67 and that the 1st party amongst us namely

Veerasamy should not raise any objections in this regard.

2) In respect of the 2nd party Kanagaraj amongst us having obtained from the Inspector Excise Tax Department. Sathur under T.L. No. 149/S/67

dated 16.12.67 being the ""color TOY"" in words along with the Trade Mark figure symbol being TOP and pertaining to the same the Superintendent of

Sathur Excise Tax department under T.L. No. 58 dated 14.9.2000 having changed the color of the Trade Mark Symbol and that the symbol of TOP in

a Horizontal position could continue to be utilized and that the 1st Party Veerasamy should not raise any objections in this regard.

3) The 2nd party amongst us having obtained the Trade Mark Symbol with change of color from the Superintendent of Sathur Excise Tax Department

under T.L. No. 58 dated 14.9.2000 and accordingly the trade mark symbol of ""TOP"" in a vertical position on both sides should not be used in future by

the 2nd party amongst us.

4) The 2nd party amongst us being Kanagaraj having obtained from the Sathur inspector of Excise Tax department under T.L. No. 529/92 dated

20.11.92 and accordingly along with the words (""New Top"" the trade mark symbol of ""TOP"" could be utilized without any change and that the 1st

party amongst us namely Veerasamy should not raise any objection in this regard.

Having undertaken to use the earlier color that was used since 1967, and also having undertaken to use the top in a vertical position, the applicants

ought to have brought it to the notice of the Registrar. Failing to do so clearly amounts to misrepresentation and false statements made before the

Registrar of Trade Marks.

Considering all these facts, we think it fit to allow the original rectification application No. 116/2008 directing the Registrar of Trade Marks to

remove/cancel the trade mark ""Toy"" along with the device of Top with green background registered under No. 976591 in class 34 in respect of safety

matches from the Register of Trade Marks.

In ORA/79/2009/TM/CH, the applicants have proved their user as claimed in the application for registration since the year 1991 which fact has

not been disputed by the Respondent. In view of the other observations made above, the application for rectification is dismissed with no order as to

costs.