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Judgment
S. Usha, J
1 . The applicant No. 2 started the business of manufacturing and selling various types of bicycles, baby cycles and tricycles under the concern M/s.
Shagun Udyog in 1974. He adopted the trade mark ""SAFARI"" in respect of goods of his manufacture and sale. Within a short period of time, the trade
mark ""SAFARI"" had come to be identified and recognized by the public with the applicants manufacture and sale. The mark had therefore acquired
tremendous goodwill and reputation among the public and had thus acquired the status of a well known trade mark.
2 . In the year 1977, the applicant No. 2 changed its trade name from M/s. Shagun Udyog to M/s. Safari Cycles. On 18th April 1979, the applicant
No. 2 applied for registration of the trade mark ""SAFARI"". In the year 1981, the respondent No. 2 incorporated a private limited company, Safari
Cycles Private Limited. Since the year 1985, the applicant No. 2 continued the business. The applicant No. 2 is the majority share holder in Safari
Cycles Private Limited. The company continued to be family concern of the applicant No. 2 in which 70% of the share holding was held by the
applicant and the rest by Mrs. Kalpana Gupta.
On account of long, bonafide and honest use, the trade mark SAFARI had acquired enviable reputation in the minds of the public and trade. In
February 1999, the applicants filed a suit for infringement and passing off before the Hon'ble High Court of Delhi in Suit No. 394/1999. There were
several opposition proceedings between the parties. The respondent herein filed an application under Order VI Rule 17 Civil Procedure Code to
amend the written statement in Suit No. 394/1999 to add the fact that their trade mark was registered under No. 676740 the impugned registration
herein. The applicant therefore is a person aggrieved within the meaning of section 57 of the Trade Marks Act, 1999 (hereinafter referred to as Act).
The registration of the trade mark under No. 676740 in Class 12 is therefore to be removed on the grounds hereunder:
a) that the trade mark has been wrongly made without sufficient cause and is wrongly remaining on the register;
b) that the respondent had no bonafide intention to use the trade mark and is therefore liable to be removed under Section 47 of the Act;
c) that the registration was granted on the basis of false claim of proprietorship and use thereby playing fraud on the Registrar of Trade Marks;
d) that the Registrar had examined and raised objections only with regard to the substantial trade mark Hi-Bird and not with the trade mark Safari
International which was the impugned label mark;
e) that the registration has been obtained in bad faith for the words Safari International where the application was examined for the trade mark Hi-
Bird and therefore in contravention of the provisions of section 11(10) of the Act;
f) that the respondent is not the proprietor of the trade mark but a pirator;
g) that the respondent has adopted the trade mark subsequent to that of the applicant with malafide intentions to trade upon the applicants goodwill and
reputation;
h) that the respondents trade mark Safari International is identical to the applicants well known trade mark ""SAFARI"" which is bound to cause
confusion and deception and thus is contrary to the absolute grounds for refusal of registration under section 9 of the Act;
i) that the use of the trade mark would lead to passing off and therefore contrary to the provisions of the Act;
j) that the registration is contrary to public interest;
k) that the respondents adoption is tainted with dishonest intention and
l) that the impugned trade mark is liable to be expunged in order to maintain the purity of the Register.
The respondent filed their counter statement stating that they filed the application for registration claiming user since the year 1995. As per the
provisions of the Act, the trade mark has to be treated as valid and subsisting after a period of seven years. On this preliminary objection the
application for rectification has to be dismissed. The respondent then relied on the provisions of sections 28, 29, 30 and 31 of the Act. The respondent
further stated the various other proceedings and orders passed by the Registrar between the same parties. The counsel finally stated that the
registration granted ought to continue on the register and not be removed from the register.
When the matter was posted for hearing on 08th November 2010, Mr. Amit Jain on behalf of Mr. Shailen Bhatia represented and sought for an
adjournment by filing Form-5 on the ground that Mr. Shailen Bhatia the arguing counsel is held up in the High Court. The matter was therefore
adjourned. On 03.08.2011 Mr. M.K. Miglani appeared on a change of Vakalathnama and sought adjournment by filing Form-5 and also submitted that
he would get the consent from Mr. Bhatia and undertook to file the same by the end of the day or the next day ie.04.08.2011. The matter was then
adjourned to 08.09.2011. On 08.09.2011,
Shri Shailen Bhatia, Learned counsel withdrew from the case saying that Mr. M.K. Miglani, learned counsel will represent the respondent henceforth.
But today Shri Kapil Kumar, counsel representing Shri M.K. Miglani submits that they have no instructions and they would like to withdraw from the
matter. No representation for the respondent either. Heard the counsel for the applicant. Registry to call for the records in this matter from the Trade
Marks Registry, Delhi.
Orders Reserved.
After the orders were reserved on 08.09.2011, the Registry has received an application from the respondent on 27.09.2011. The filing of such
application after the orders are reserved will only delay and protract the matter which is against the object for which this Board was set up which is
for speedy disposal of Intellectual Property disputes. The Board had shown enough indulgence to give fair opportunity. We do not think it is necessary
to entertain such applications which are made after the matter is heard in full and orders have been reserved.
7 . The learned counsel for the applicant submitted that the impugned trade mark application was filed on 14th August, 1995 claiming user since 1995.
The mark was a label mark where the word Safari International was prominently featured. There was one another application under No. 656900
which was challenged by the applicant. In the Suit No. 394/1999, the respondent herein filed their written statement where the impugned registration
under No. 676740 was mentioned. The counsel then pointed out to the other averments in the written statement. The respondent had admitted that
Safari is a Hindi word meaning useful for journey. Safari not being an invented word denotes vehicles used in an expedition. It was also admitted that
95% of their sale was made in Africa.
The counsel for the applicant then stated that they had adopted and used the trade mark ""SAFARI"" since the year 1974 and had obtained
registration as of the year 1977. The counsel brought to our notice the first bill dated 02.08.1974. The respondent's affidavit filed in support of the
application for registration of the impugned trade mark before the Registrar of Trade Marks was for the trade mark Hi-Bird and not for the word
Safari but the label is for the mark Safari together with the mark Hi-Bird which is in small letters.
In the counter statement, the counsel has raised the defence under Section 32 of the Act. As the present opposition is under the new Act, the
provisions under the old Act does not apply. The registration of the word mark ""Safari International"" has been obtained by playing fraud, where the
evidence for the use of the word Hi-Bird was produced and not for the entire label mark and therefore contrary to the provisions of the Act.
The respondent has not proved that they are the proprietors of the trade mark ""SAFARI"" and had stated that they are the proprietors of the mark
Hi-Bird. On this ground alone the mark has to be removed from the register.
We have heard and considered the arguments of the counsel for the applicants and have gone through the pleadings of both the parties.
The main issue regarding the locus standi of the applicant is the one which is to be decided at the preliminary stage in the application for
rectification. There are various litigations pending and decided between the same parties. In a suit filed by the applicant against the respondent, the
fact of the impugned registration was made known to the applicant. The marks being identical and the goods being similar the applicant is being injured
by the impugned registration. The applicant is therefore a person aggrieved and has a locus standi to file and maintain an application for rectification.
Both the applicants and the respondents are carrying on business in the same area and therefore the adoption cannot be said to be honest. The
mark when seen is that the word Safari International and the letter S with the letter T over it is more prominent and not the word Hi-Bird.
The respondents have made false statements to obtain registration. The user affidavit filed in support of the application and the documents only speak
of the trade mark Hi-Bird. In that case, the registration granted for the entire label mark where the word Hi-Bird is not so prominent only raises a
doubt. On this ground alone we think that the trade mark ought to be removed from the register and therefore we are not going into other issues.
1 4 . Accordingly, the rectification application is allowed with a direction to the Registrar of Trade Marks to cancel the trade mark registered under
No. 676740 in class 12 from the register of Trade Marks. No order as to costs.