Rana Steels, (A Unit Of K.K. Steels Limited) vs Rana Steels, (A Unit Of K.K. Steels Limited)

S. Usha, J

Application for removal of the trade mark RANATOR registered under No. 1005663 in class 19 from the register of trade marks under Sections

47, 57 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

The applicant M/s. K.K. Steels Limited is a company incorporated under the provisions of the Companies Act. M/s. Rana Steels is a unit of M/s.

K.K. Steels. The applicant is engaged in the business of manufacturing and marketing of steel bars, steel Rolled Products, C.T.D. Bars, Angles, Flats,

Round Channels and Garders and other allied/cognate goods. The said goods and business of the applicant has been expanding with the passage of

time. In the year 1993, the applicant honestly, bonafidely and in the course of trade and business adopted the trade mark RANA in relation to the said

goods. The word RANA is key material and vital part of the applicant corporate name/trade name ie. RANA STEELS.

The applicant is the owner and proprietor of the said trade mark in relation to the goods on account of honest, bonafide, prior adoption and

continuous commercial use thereof. The applicant has also filed an application of registration of the trade mark ""RANA"" under No. 6486967B in class

16 on 14.12.1994 for the goods Steel Rolled Products, C.T.D. Bars, Angles, Flats and Round Channels and Garders claiming user since 1.4.1993. The

said trade mark has been registered and subsisting as on date.

Since the day of adoption, the applicant has been honestly, bonafidely and in the course of trade using the said trade mark continuously,

commercially, openly and exclusively without any interruption or interference from any corner whatsoever in relation to the said goods. The applicant

has maintained high standard of manufacture and sale of its goods bearing the said trade mark. The applicant goods bearing the said trade mark are

highly demanded in the markets on account of high standard quality. The applicant has already commanded handsome sales under the said trade mark.

The applicant's goods are of superior quality. The applicant has been continuously advertising and promoting the said trade mark through various

means and modes. The applicant has spent substantial amount of money on the publicity of the said trade mark.

The applicant's said goods and business under the said trade mark has acquired tremendous goodwill and enviable reputation in the market. The said

goods bearing the said trade mark are identified as exclusively originating from the applicants source and are identified with the applicant. The said

trade mark has thus become distinctive and associated with the applicant. The said trade mark acquired secondary significance denoting the said

goods and business of the applicant and is recognized with the applicant's source alone. In fact the applicant's trade mark has become well known

within the meaning of the provisions of Section 2 (1)(zg) and Section 11 of the Act.

The impugned trade mark RANATOR of the Respondent is identical and deceptively similar to the applicant's said trade mark in each and every

respect including phonetically, visually, structurally, in its basic idea and in essential features. The Respondent is fully aware of the applicant's rights,

goodwill, reputations, benefits in the applicant's said trade mark at the time of adopting and using the trade mark. The Respondent's adoption and use is

tainted at inception and is pirate use of the applicant's trade mark. The Respondent has adopted and started using the impugned trade mark

dishonestly, fraudulently with a view to take advantage of the well established right of the applicant in the said trade mark. By the adoption of the

impugned trade mark by the Respondent has caused deception and confusion among the public and trade.

Due to the Respondents illegal adoption, the applicant is put to irreparable loss to their business. The applicant herein had also filed a civil suit

bearing C.S. (OS) No. 1459/07 in the Hon'ble Delhi High Court for infringement and passing off and the Hon'ble Court by order dated 14.08.2007

restrained the Respondents from using the said trade mark RANATOR or any other identical/deceptively similar trade mark in respect of impugned

goods. The Respondent herein filed their written statement in the suit and had mentioned that their trade mark RANATOR under No. 1005663 in

class 19 was already registered.

The Respondent had obtained the impugned registration illegally, dishonestly and fraudulently and impugned registration is bad in law and the same

is also in violation of the applicant's aforesaid rights in the said trade mark.

The applicant is not left with any other option but to file this instant rectification application on the following grounds:

a) the applicant is the owner and proprietor of the trade mark RANA in respect of the business of manufacturing and marketing of Steel Bars, Steel

Rolled Products and other allied cognate goods.

b) the applicant is the registered proprietor of RANA under No. 648697 B in class 06 in respect of the said goods and the said registration is legal and

valid in law.

c) the Respondent has obtained the impugned registration by playing fraud.

d) the registration has been obtained for the goods in class 19, whereas the Respondent goods falls in class 6 of the Fourth Schedule of the Act.

e) the registration has been wrongly made without sufficient cause and is wrongly remaining on the register. The Respondent's use since 26.4.2001 is

wrong.

f) the trade mark RANA of the applicant and the impugned trade mark RANATOR of the Respondent are identical/deceptively similar in respect of

identical/similar goods.

g) the adoption of the impugned trade mark by the Respondent is dishonest and fraudulent since inception as the same was adopted with malafide

intention to reap and encash the hard earned goodwill and reputation of the mark RANA of the applicant in respect of identical/similar goods.

i) the Respondent is wrongly claiming proprietary rights over the impugned trade mark.

j) the impugned trade mark was not distinctive of the impugned goods either at the time when the impugned application was made or at the time when

the impugned registration was obtained.

k) the Respondent's impugned trade mark is a false description within the meaning of Section 2(1)(i) read with Section 103 of the Act.

l) the impugned trade mark is likely to cause confusion and deception among the public.

m) the Respondent is guilty of passing off.

n) the Respondent has not used the impugned trade mark for a period of more than five years and three months.

o) there is no special circumstances or any other factor which exists in favour of the Respondent, on the basis of which the impugned registration may

be sustained.

p) the impugned registration is contrary to the provisions of Section 9, 11, 12 & 18 of the Act.

q) the impugned registration is void-ab-intio.

r) the impugned trade mark be removed in the interest of purity of the register.

s) the present application be allowed in the interest of the justice, equity and goods conscience.

in view of the above, the applicant is a person aggrieved and has a locus standi to file and maintain the application for rectification.

The Respondent herein filed their counter statement denying the various allegations and averments made in the grounds of rectification. The

Respondent's primary objection was that the applicant was not a person aggrieved and has no locus standi to file the present application and as such

the application was not maintainable in law or in facts of the case. The Respondent further submitted that the applicant is a non-juristic person and

therefore is not capable of owning

The Respondent is a company incorporated under the provisions of the Companies Act. The Respondent has been carrying on business in

manufacturing, trading and marketing inter alia in building materials (steels) including C.T.D. Bars. The Respondent is a big company and has

resources and intent to diversify its business activities. The trade mark RANATOR is inherently distinctive of the Respondent goods.

In or about 1995, the Respondent conceived and adopted the trade mark RANATOR conjoining the first two letters of the Managing Director, Mr.

R.R Adha and the first two letters of the name of the said Executive Director, Mr. R.N Agarajan and conjoining the word TOR denoting the strength

of a hill or rocky peak to be used in relation to the said goods. The said trade mark RANATOR was adopted after a search was made in the records

of the Trade Marks Registry as well a market survey was conducted to verify, if any one else is using the similar or same trade mark in relation to the

said goods.

The Respondent in order to extend and diversify its business and activities is carrying on business and manufacturing of building materials including

the C.T.D. Bars under the composite mark having RANATOR as main and prominent feature with the strong and sturdy building emanating from a

muscular arm.

The Respondent's said goods under the said trade mark are freely available since the date of adoption. The Respondent is also registered

manufacturer under the Tamil Nadu General Sales

The Respondent has spent substantial sum and taken efforts to popularize the said goods bearing the said trade mark. Due to long, open, regular

and extensive sale and wide publicity to the said goods of the Respondent and also due to superior quality and high efficacy, the said trade mark has

become inalienably associated in the course of trade and relevant section of the public, with the Respondent and with none else. The Respondent

submits that on account of large scale use coupled with massive publicity, the Respondent's goods bearing the said trade mark has acquired high

esteem and tremendous amount of goodwill and reputation.

The Respondent is thus, the prior adopter, prior user of the trade mark RANATOR in respect of Steel Bars and has acquired a proprietary right

therein under the common law.

The applicant M/s. RANA STEELS claiming itself to be merely a unit of K.K. STEELS LIMITED has obtained registration of the trade mark

RANA under No. 648697B by making false statements suppressing material facts and is an entry wrongly made and wrongly remaining in the register

which is liable to be cancelled. The Respondent further denies the other averments made in the application in revocations.

We have heard Shri S.K. Bansal, learned Counsel appearing on behalf of the applicant and Shri K. K. Sharma, learned Counsel appearing on

behalf of the Respondent on 19th August, 2010.

The learned Counsel for the applicant submitted that the application for registration of the impugned trade mark was filed on 26.04.2001 claiming

user since 01.01.2001 and the same was advertised in the Trade Mark Journal Mega 6 dated 25.11.2003. The applicants trade mark RANA was for

steel goods used since the year 1993. The said trade mark was registered as of 14.12.1994 which document is filed as exhibit A4. The marks and the

goods are similar/identical. The counsel drew our attention to the Exhibit A6 and submitted that they were the applicants publicity materials. The

counsel also brought to our notice the chartered accounts reports on profit & loss account to prove their user as well as their sales in the business. The

counsel further submitted that they had filed documents to prove their sales in various states. They had also produced various documents of

advertisements.

The counsel for the applicant submitted that they were prior in use to that of the Respondents. The Respondent had wrongly stated the goods of

the applicant and had obtained registration by playing fraud. The counsel stated that the date of user has been wrongly given in the counter statement.

The Respondents had added the word TOR to the word RANA subsequently, is proved from the Respondents own documents. The counsel further

submitted that the Respondent has not given any explanation for the adoption of the trade mark RANATOR in the suit filed before the High Court

whereas now come out with a new explanation in the counter statement before this Board.

The Respondent has wrongly given the classification in the application for registration only to escape any opposition from any third party. The

counsel finally relied on the Judgments property, enjoying authority or power and therefore the application for rectification filed by the applicant is not

maintainable. Tax Act and Central Excise Act. reported in 2000 PTC 326 - Om Prakash Gupta v. Parveen Kumar and Anr 2007 (34) PTC 731

(IPAB) - Jain Doors Pvt. Ltd. v. Suresh Kumar Jain, 2008 (9) SCC 54 - Raju Ramsing Vasave v. Mahesh Deorao Bhivapurkar and Ors. AIR 1956

Mad 184 - Monappa v. Ramappa and Anr. PTC (Suppl) (2) 564 (Del) - L.D. Malhotra Industries v. Ropi Industries 2008 (38) PTC 28 (Bom) - D.R.

Cosmetics Pvt. Ltd. and Anr. v. J.R. Industries, 2004 (28) PTC 566 (SC) -Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. and AIR 1951 Bom 147

-James Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd.

In reply to the applicants arguments, the counsel for Respondents submitted that the applicants were not person aggrieved and had no locus standi

to file the application for rectification. The counsel submitted that the applicants have not stated as to how RANA is related to M/s. K.K. Steels and

what was their constitution?

The counsel relied on the judgment of this Appellate Board in TRA/42/2003/TM/CH - Swastiks Masalas Pickles and Food Products Pvt. Ltd. and

Swastiks Instant Food Products v. Swastik Mirch Stores and Anrs. and submitted that mere advertisement will not prove user. The counsel further

relied on the judgment reported in 1994 PTC 53 Cal. The counsel further pointed out to the documents and submitted that though the applicants trade

mark was registered in the year 2006, in the documents pertaining to the year 1997 it was stated as registered which is a false allegation which

amounts to an offence. The counsel also pointed out that the applicants name were differently given another one Rana Steels, Ranator Steels or Rana

Sponge etc. which creates a doubt as to the relationship of the applicants.

The counsel further submitted that the trade mark was not descriptive and hence the trade mark cannot be said to be not registerable under

Section 9 of the Act. As regards, the question of registerability under Section 11 of the Act, the same cannot be raised as the rival marks are not

identical. The conditions under the provisions of Section 11 of the Act were not satisfied and hence the mark was registerable. In this regard, the

counsel relied on the passage at page 214 from the book Law of Trade Marks by Dr. Venkateshwaran. The counsel relied on the Judgments reported

in 2000 (20) PTC 161 - Ashoka Dresses (Regd.) v. Bonn's Shirts and Anr. 1994 PTC 53 Kabushiki Kaisha Toshiba v. Toshibha Appliances Co. and

Ors. 1973 R.P.C.10 : 1948 R.P.C.65 Page No. 193 and R.P.C Vol. XXX page 363.

In rejoinder, the counsel for the applicant distinguished all the judgments placed by the Respondent. The counsel relied on the order passed by the

High Court in the Civil Suit between the Appellant and the Respondent.

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

The main issue to be considered and decided in an application for rectification is to see if the applicant is a person aggrieved and has the locus

standi to file an application for rectification. As per the provisions of Section 21 of the Act, any person may file an opposition to the registration of the

trade marks, whereas an aggrieved person alone can file an application for rectification.

The term ""person aggrieved"" though not defined in the Act has been literally construed by the courts in several cases. The classic case in this

context is Powell's Trade Mark - (1893) 10 RPC 195 it was held , ""I should be very unwilling unduly to limit the construction to be placed upon these

words, because although they were no doubt inserted to prevent officious interference by those who had no interest at all in the Register being correct,

and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, in as much as it is a public mischief

that there should remain upon the register a mark which ought not to be there and by which many persons may be affected, who, nevertheless, would

not be willing to enter upon the risk and expense of litigation. Wherever it can be shown, as here, that the applicant in the same trade as the person

who has registered the trade mark, and wherever the trade mark, if remaining on the Register, would or might limit the legal rights of the applicant, so

that by reason of the existence of the entry on the Register he could not lawfully do that which, but for the existence of the mark upon the register he

could lawfully do, it appears to me he has a locus standi to be heard as a person aggrieved. Persons who are aggrieved are persons who are in some

way or other substantially interested in having the mark removed from the register, or persons who would be substantially damaged if the mark

remained. It is very difficult to frame a narrower definition than that (Bowen L.J.)"".

The applicant has stated that it is a unit of M/s. K.K. Steels. In that case, M/s. K.K. Steels will be the proprietor of the applicant. The applicant

being a unit of M/s. K.K. Steels cannot claim a separate entity unless it is established that the trade mark RANA is registered in their own name or

the applicant in the proprietor of the same. There is nothing on record, to show with whom the Trade Marks RANA is registered. Moreover, being not

a separate entity and a unit of K.K. Steels, M/s. K.K. Steels may be the registered owner which has not chosen to take any steps for rectification. On

this ground, the application cannot be entertained.

We also see that though the applicant claim user since 1995 nothing on record to prove the user except for some advertisement materials. So

advertisement alone cannot be considered to be use of the trade mark.

The other issue is as to registration under Section 9 of the Act. The trade mark RANATOR has no obvious meaning and has no direct reference

to the character or quality of goods in its

As regards objection under Section 11 of the Act, the registration is not prohibited as the rival marks are not identical. The objection under Section

11 of the Act can be sustained only if the marks are similar, there is identity of marks and goods and there is likelihood of confusion and deception.

Unless the three conditions are satisfied the objection under Section 11 does not sustain. The rival marks RANA & RANATOR are not similar and

the likelihood of confusion and deception does not arise.

The well settled principle of law is that the two marks are to be compared as a whole and not dissected and also that the claim of customers and

the goods covered should be considered. The rival trade marks are neither visually, nor phonetically nor structurally similar. In view of this fact, there

has been no confusion or deception in the minds of the public. This being an application for rectification the onus is on the applicant for rectification to

prove that the trade mark if on the register would cause confusion or deception which has not been proved by the applicant.

The other issue was that the Respondent has deliberately filed application in class 19 whereas the goods fall in class 6 of the Fourth Schedule of

the Act. The application was made on 26/04/2001 where the Trade and Merchandise Marks Act, 1958 was in force. During that period the

classification of goods ""Building Material"" was without any restriction whether it is metallic or non-metallic was specified in class 19 and in order to

precisely state the nature of Respondents good, it was stated as ""Building Material"" (Steel). The said application was examined by the Registrar of

Trade Marks who is the final authority to raise any objection regarding specification of ordinary significance and therefore the trade mark is distinctive

and qualifies for registration. The mark has acquired distinctiveness by use upto the date of initiation of the rectification application. goods which was

not raised and hence proceeded to advertisement and registered as not opposed by anyone. During the pendency of the registration proceedings the

Trade and Merchandise Marks Act, 1958 was repealed and the Trade Marks Act 1999 came into existence on 15.09.2003. On account of the

deeming provisions of Section 159(2) the application filed under the 1958 Act continued to be in force and have effect as if made, issued given or done

under the corresponding provisions of the Act, 1999. So the registration has been deemed to be in class 6 and accordingly registered.

The other ground of non user for a period of five years and three months also does not sustain. The applicant has filed a suit in the year 2007

whereas the registration has been granted in the year 2005. Therefore, if the mark was not in use, then how could the applicant have a cause of action

to file a suit for infringement and passing off. Therefore, the ground of non user is rejected.

The ground of wrongly remaining on the register is also rejected. The House of Lords by GE-Trade mark 1973 RPC 297 held as under:

""that the trade mark if entered is prima facie valid and of the right of the registered proprietor to the exclusive use of the mark subject however to

the rights of concurrent user by any registered proprietor of an identical mark or one resembling it. 2. if the mark was likely to cause confusion at the

time when it was registered it may be expunged from the Register as registered without sufficient cause"" unless the proprietor of the mark at that time

would have been entitled to have it entered on the register by reason of honest concurrent user as a trade mark before the original registration of the

mark. 3. If the likelihood of causing confusion did not exist at the time when the mark was first registered, but was the result of events occurring

between that date and the date of application to expunge it, the mark may not be expunged from the register, unless the likelihood of causing deception

resulted from some Act of the registered proprietor or of a predecessor in title. 4. where the mark is liable to be expunged under (2) or (3) the court

has a discretion whether or not to expunge it and as to any conditions or limitations to be imposed in the event of its being permitted to remain on the

register.

The other defence of the Respondent was that there has been acquiescence on the part of the applicant and therefore the mark ought not to be

removed. We find force in the argument of the Respondent in this regard relying on the provisions of Section 33(1) of the Act, which inter-alia

provides that where the proprietor of an earlier trade mark has acquiesced for the continuous period of five years in the use of a registered trade mark

being aware of that use shall no longer be entitled on the basis of the earlier trade mark, applying for the declaration that the later registered trade

mark is invalid. Even though the trade mark was registered on 06/04/2005, the date of application ie. 26.04.2001 is the date of registration as per the

provisions of Section 23(1) of the Act.

Regarding the reliance placed by the applicant on the Civil Suit and the observation regarding the documents placed before the High Court by the

Respondents, we are of the view that an appeal has been preferred against the order of injunction and the learned Judge has also left the main issue to

be tried at the trial and the rest of the observations were only prima facie.

We therefore are of the opinion that the applicant has not made out a case for the trade mark to be removed from the register of trade marks it is

only to throttle the business of the Respondent. The rectification application is accordingly dismissed with no order as to costs.