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Judgment
Prabha Sridevan, J
The Appellant is aggrieved by the registration of the trademark "" Safari"" in respect to locks, seat belts, nuts, bolts and screws, all being articles of metals included in class 6 vide application No. 500653. The Appellant opposed it on the grounds of non-user and fraud. The Registrar ordered registration of the said trademark in favour the Respondents, but with a modification regarding user.
2 . Learned Counsel Shri Shailen Bhatia appeared for the Appellant and Learned Counsel Shri Neeraj Grover appeared for the Respondent No. 1.
In the evidence in support of the opposition the Appellant who was the opponent submitted that they had adopted the distinctive trade mark SAFARI from the year 1994-95 and had also applied for the registration of the trade mark. They had extensively and regularly used it. It was also contended that the Respondents had neither manufactured nor marketed goods in class 6 and definitely not from 1. 06.1977. According to them, the use of the trade mark by the Respondent will cause confusion and it amounts to trafficking. It was also contended that Mr. Subash Gupta had not adopted the trade mark in 1974 under Shagun Udyog and the allegation regarding change of name was false. It was contended that the registration obtained under application No. 348290 was ordered to be removed vide order dated 1. 09.2000. It was reported that the Appellants had only adopted the trade mark SAFARI which is distinctive.
In the counter-statement filed by the Respondents herein, they claimed priority in adoption of the mark SAFARI and that they had been using it in respect of goods they manufacture from the year 1985; that they had traded in Safari Cycles from 1974; that the Appellant is the pirator and by virtue of priority they are entitled to the mark and that they had been using it since 1977.
The Learned Counsel appearing for the Appellant submitted that Respondent's case of user from 1977 was not proved, there was no evidence of user in the class of goods in question, so the application ought to have been rejected on the ground that a false statement was made. It was also submitted that since cycle is used for Safari it is a descriptive word and on that ground also the mark ought not to be registered.
The Learned Counsel submitted that the Registrar had erred in holding that the user may be altered to "proposed to be used" instead of rejecting the application on the ground that the period of user from 1977 was knowingly and falsely claimed by the applicant.
6 . The Learned Counsel submitted that the statement made on behalf of the Respondent that the mark SAFARI had been registered in favour of the Respondent in class 6 was made malafide. On this ground alone, the registration ought to have been refused.
7 . The relief is a discretionary relief, and the Respondent was not entitled to any discretion.
He relied on the following:
a) 2007 (34) PTC 731 (IPAB) Jain Doors Pvt. Ltd., v. Suresh Kumar Jain
b) W.P. (C)72/2007 date 05.03.2010 Suresh Kumar Jain v. s. Union of India and Anr
c) AIR 1972 Cal 261 Prem Nath Mayer v. Registrar of Trade Marks and Anr
d) AIR 1994 SC 853 S.P. Chengalvaraya Naidu (dead) by L. Rs., v. Jagannath(dead) by L. Rs. and Ors e)Court of Appeals, Second Circuit Abercrombie and Fitch Company v. HuntingWorld, Incorporated
f) 2002 (25) PTC 50(Del) Virendra Sethi v. Kundas Das and Ors.
g) 2000 PTC 161 Ashoka Dresses (Regd) v. Bonn's Shirts and Anr.
h) 2007 (34) PTC 346 (IPAB) Titan Industries Limited v. Registrar of Trade Marks and Anr.
9 . The Learned Counsel for the Respondent submitted that the Respondent had established a reputation in the name of SAFARI for cycles. The impugned order had dealt with the issue correctly and the exercise of discretion was correct. He relied on the following judgements:
a) 2006 (32) PTC 723 (IPAB) Subhash Gupta v. Registrar of Trade Marks and Anr
b) 2006(33) PTC 616(Del) Safari International and Anr. v. Subhash Gupta and Ors.
c) 2008(36) PTC 610(Del) Safari International and Anr. v. Subhash Gupta and Ors.
We have considered the materials on record and the submissions made by the counsel.
The trade mark ""Safari' has been used by the Respondent in connection with cycles.
In 2006 (33) PTC 616 (Del) Safari International and Anr., v. Subhash Gupta and Ors., the Hon'ble Delhi High Court confirmed the order of this Board in rectification proceedings between the same parties. That was relating to the same mark "Safari" in class 12 in application No. 348920. The Respondent claimed that the word "Safari" was an invention and used for cycles etc of the proprietorship concern Shagun Udyog since 1974. During the pendency of the registration it was incorporated into a private limited company, Safari Cycles Pvt. Ltd., originally the directors were Subash Gupta and his brother. In 1984 the brother sold his shares to the wife of Subash Gupta. The same applicant had pleaded fraud, that the Respondent had not come clean with regard to who was the owner of the mark.
This Board rejected the plea and dismissed the rectification. The challenge to it was also dismissed by the High Court, in the above decision and confirmed by the DB. In 2008 (36) PTC 610 (supra). So the adoption of the mark "Safari" in class 12 has been accepted by the Courts and the user from 1974.
In 2002 (25) PTC 50 (Del) Virendra Sethi v. Kundas Das and Ors., two trade marks were CHAAPAT and CHATPAT. An amendment of opposition was sought for on the ground that the advertisement was not proper. This prayer was rejected on the ground that the journal was duly published and no defects were pointed out. This order was set aside by the Hon'ble High Court of Delhi, holding that it is the duty and responsibility of the Trade Marks Registry to ensure that the advertisement is published properly. This was relied on to show that the Registry cannot on its own alter the claim of user.
In 2000 PTC 161 Ashoka Dresses (Regd) v. Bonn's Shirts and Anr., the Hon'ble High Court of Delhi held that an incorrect advertisement amounts to misrepresentation and requires to be cancelled and that if on cancellation the Registrar was satisfied that the status of the application should be published at the state of Rule 39, the said order cannot be said to be illegal.
In 2007 34 PTC 346 (IPAB) Titan Industries Limited v Registrar of Trade Marks and Anr., this Board held that an amendment of date of user filed on TM16 filed after advertisement before admission was held to be not bonafide. There was a delay of 11 years and it was held that it sought to gain advantage over others. It was held that any amendment which will materially change the nature of the application could not be allowed.
In 189 USPQ Abercrombie & Fitch Company v. Hunting World, Inc., P.759 the word "Safari" came up for consideration and it was held ""Safari as applied to ice chests, axes, tents and smocking tobacco does not describe these items . There is a detailed discussion in this judgement. It states that arraigning in an ascending order it reflects the degree of protection or class of trade marks (1) Generic (2) descriptive (3) suggestive (4) arbitrary or
(5) fanciful. In fact it is said therein that a Commissioner may accept that a mark has become distinctive on the basis of number of substantial, exclusive and continuous use.
18 . In 2007 (34) PTC 731 (IPAB) Jain Doors Pvt. Ltd., v Suresh Kumar Jain, it was held that the registration obtained by false statement and fraud deserves to be removed from the Register. In that case, the Board also held that the mark had not acquired distinctiveness. The appeal filed against this was dismissed by the Hon'ble Delhi High Court.
In AIR 1994 SC 853 S.P. Chengalvaraya Naidu (dead) by L. Rs., v. Jagannath (dead) by L. Rs., and Ors. where it was held that fraud voids all actions.
In AIR 1972 Cal 261 Prem Nath Mayer, v. Registrar of Trade Marks and Anr., it was held that the burden of proof that the trade mark is not likely to deceive or confuse was on the applicant.
Now we come to the decisions between the same parties of this Board which was confirmed by the Hon'ble Single Judge and Division Bench of the High Court. The Division Bench held that:
In the present case, except for stating in the statement of the case that the impugned registration was obtained by playing fraud on the Registrar of Trade Mark as well as the honest members of the trade and business, no material was placed on record to support the said claim. It is also pertinent to mention that the Respondent No. 1 did not derive any advantage on the assumption of the trade mark 'SAFARI' from the proprietorship concern to the private limited company as the private limited company was again a family concern of Respondent No. 1. For establishing the allegation of fraud the Appellant should have placed on record sufficient and cogent evidence. In the present case there are no details given as to how the fraud of the nature alleged was committed. In our considered opinion no fraud could be deduced on the part of Respondent No. 1 on the basis of the pleadings available on record. Pleadings that have been advanced to establish fraud are mere surmises and conjectures. Thus the findings recorded by the Registrar that there was fraud committed, therefore, was rightly not accepted by the Appellate Board as also by the learned Single Judge.
Insofar as the contention of non-user is concerned, there is no dispute to the fact that the Respondent No. 1 had applied for registration in the year 1979 and obtained the same in the year 1988. Though the private limited company did not do any business immediately after incorporation in 1981 but the Respondent No. 1 continued the business in his individual capacity. In 1985 the limited company took over the business under the said trade mark.
The mark was continuously in use either by the Respondent No. 1 in his individual capacity or later by the private limited company.
The Division Bench also rejected the allegation of fraud. The Division Bench found that the Respondent's predecessor herein had been using the trade mark SAFARI since 1974 for cycles manufactured by the sole proprietorship concern M/s Shagun Udyog.
This is a decision interpartes and between the two parties albeit in a different rectification proceeding. It has been held that with regard to cycles in class 12 had been upheld. The user from 1974, though with regard to different class of goods, had also been accepted from 1974. This mark had been used by the Respondent and as per the decisions cited it had acquired distinctiveness since it was associated with the Respondent's cycles.
The word SAFARI has been held not to be a descriptive term in connection with tents etc., in the same decision 189 USPQ 759 (supra) the Court had held that:
Although "safari" is a generic word, a genuine issue of fact exists as to whether the Plaintiff has created a secondary meaning in its use of the word identifying the source"" and showing that ""purchasers are moved to buy it because of its source.
2 4 . The Registrar's discretion to cancel publication and decide how it should be proceeded with has also been upheld. In this case, the Registrar clearly was of the opinion that the Respondent had not proved user from 1977. He rightly rejected the ground of fraud alleged since the claim was made only in a letter written by the counsel and that it was not his sworn statement. In any event, he found from the materials on record that user was not proved. Having held so, he rightly directed that the user should be altered to be 'proposed to be used'. This was on the basis of the adoption of the trade mark by the Respondent right from 1974 though for a different class of goods. We are of the opinion that this was proper exercise of discretion, taking into account the long association between the Respondent and the trade mark on the one hand and the lack of evidence of user on the other
hand. The same allegation of fraud on the ground that the Respondent had not proved proprietorship of the trade mark had been raised earlier in 2006
(33) PTC 616 (cited supra). It had met with failure. The Appellant had, however, raised the same ground again without justification. Even the submissions relating to lack of distinctiveness of the mark has been made without justification, in view of the earlier decision between the same parties in relation to different goods on the same mark. We see no reason for interference. The appeal is, therefore, dismissed with cost of Rs. 10,000/- to be paid to the Respondent No. 1.