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Judgment
S. Jagadeesan, J
This is an application filed by the applicant in O.P. No. 72/2003 before the High Court of Judicature at Madras, under Sections 46 and 56 read with
Sections 9, 11 and 32 of the Trade and Merchandise Marks Act, 1958, for rectification of the Register of Trade Marks by expunging the trade mark
Trident device"" under No. 615694-B, dated 4.1.1994 in class 29 of the first respondent. After the constitution of this Board under the Trade Marks
Act, 1999, the said O.P. No. 72/2003 filed in the High Court of Madras was transferred to this Board for disposal.
The case of the applicant is that they are the leading manufacturers and marketers of Ghee and other related products since 1972. They adopted a
distinctive trade mark device in respect of their Ghee products. The said trade mark label adopted by applicant consists of the device of ""Trident
within a circle of flames and the word ""SAKTHF printed in an artistic background. They also obtained the authorization to use the certified mark
'Agmark' in 1976 and the same is valid till today. The said distinctive trade mark label of the applicant consisting of the Trident device has become
highly distinctive of the products of the applicant and the applicant has become absolute owner of the said trade mark and is also entitled for the
exclusive right to use the said trade mark label to the exclusion of all others. The applicant, in order to safeguard their rights against the infringers has
filed a suit C.S. No. 181/2002 against M/s. ABT Industries and C.S. No. 182/2002 against M/s. Sakthi Trading Company and the same are pending on
the file of the High Court of Madras.
From the counter filed in an application for injunction in C.S. No. 181/2002 by M/s. ABT Industries, the applicant came to know that the first
respondent has obtained the registration of the impugned trade mark device in respect of Ghee and other products in class 29 of the Trade and
Merchandise Marks Act, 1958. The applicant's trade mark having become distinctive, no one else is entitled to use or adopt any trade mark device
which is identically or deceptively similar to that of the applicant's trade mark device. The use of the impugned trade mark by the first respondent
would create great confusion in the minds of traders as well as the public. The applicant has also applied for the registration of its Trident device with
the trade mark label ""SAKTHI"". The first respondent is not the proprietor or the owner of the impugned trade mark within the meaning of Section
18(1) of the Act and as such, the same ought not to have been registered in their name. Consequently, the first respondent's trade mark is liable to be
removed from the Register of the Registrar of Trade Marks.
The first respondent has filed their counter stating that the first respondent is a company incorporated under the Companies Act, 1956 and they are
engaged in carrying on their business such as, manufacturing and marketing of Sugar, Soya products etc. The Sakthi Finance Pvt. Ltd., is a member of
Sakthi Group, a leading industrial group in South India and is well known all over India and abroad. Sakthi Finance Ltd. was established in the year
1956 with a business of finance having its branch offices in various states such as Tamil Nadu, Kerala, Karnataka, Andhra Pradesh, Maharashtra,
Pondicherry and Delhi. They are carrying on the business for the past more than 42 years. The Soya division of the first respondent is manufacturing
and selling Soya bean flour, Prawn teed, Mulberry feed, etc. under the trade mark ""Sakthi"". Sakthi Automobiles was established in the year 1958
which is a dealer of Telco. Sakthi Textile Ltd. was established in the year 1957 at Pollachi. Sakthi Estates belongs to the first respondent group having
Coffee and Cardamom estates at Valparai in Tamil Nadu. Sakthi Auto Components Ltd. manufactures top quality castings. Sakthi Foundation is a
charitable trust set up in the year 1981 and is financed by the first respondent. Sakthi Institute of Technology offers various engineering courses.
Sakthi is a multi faceted group having commercial industrial and financial facets. It plays significant role in major industries such as Sugar, Textile,
Estates, Transport, Foundry, Finance, Softwares, synthetic gems, milk, food products, in addition to educational and charitable institutions. The Sakthi
Group's turn over in the year 1982 was Rs. 86.48 crores which has leaped into Rs. 400 crores in the year 1990. The Chairman of Sakthi Group of
Companies is also popularly known and referred to in the press as ""Sakthi"" Mahalingam. Sakthi forms predominant feature of the corporate
name/trading style/institution name of various companies, charitable, educational and financial institutions belonging to Sakthi group of companies. The
trade mark of Sakthi and the device of Trident are the house marks of the first respondent. The trade mark Trident device is also prominently
displayed in all the premises of the first respondent business, its correspondence, letter heads, vehicles etc. The said trade mark has been used by the
group of companies of the first respondent since 1956. The first respondent has also denied the use of similar Trident device by the applicant. Further,
it is stated in the counter that the Trident device used by the first respondent is not identical with that of the trade mark of the applicant. Both are
having their own distinctiveness and there is no confusion either in the minds of the traders or the public.
The learned counsel for the applicant took us through the trade mark devices. The trade mark device of the applicant is available at pages 61 and
63 of the evidence filed by the applicant. The first respondent's mark is available at page 1 of the type set of documents filed by the first respondent
The learned counsel for the applicant contended that the applicant has produced the partnership deed dated 6.9.1974, the certificate of authorization to
use Agmark dated 20.9.1982 as well as the sales tax assessment orders from 1990-91 and for the later period and these documents would establish
the claim of the applicant for the use of their trade mark Trident device with the word ""SAKTHI"". When the applicant is the earlier user, the first
respondent is not entitled to use the impugned trade mark, especially, in respect of the same goods, Ghee. He further contended that the first
respondent's use of the impugned trade mark is only from the year 1984 and their own plea at different times in various proceedings in respect of their
use is self contradictory and inconsistent and as such, they are not entitled to register the impugned trade mark. He further contended that the sales
tax assessment orders relied upon by the first respondent which are available from pages 98 to 108 of the type set of papers filed by the first
respondent are in the name of M/s. ABT Industries Ltd. Hence, the asses-see is only the ABT Industries Ltd. and the first respondent cannot take
advantage of the same to establish the use of the impugned trade mark in their name. Since the first respondent failed to establish their ownership as
well as the use of the impugned trade mark, on this ground, the registration is liable to be set aside.
On the contrary, the learned counsel for the first respondent contended that there is no similarity between the trade marks of the applicant and the
first respondent. Further, he contended that the impugned trade mark is the house mark of the ABT Industries Ltd. and the first respondent being one
of the sister concerns of the said ABT Industries Ltd. is entitled to have the registration of the impugned trade mark in their name. The sales tax
assessment orders of ABT Industries Ltd. clearly establish their dealing of the milk products including Ghee by the first respondent, if not at least by
the main house ABT Industries Ltd. The first respondent having got the trade mark registered in their name, the Board must be slow in interfering
with the same, especially, when the applicant is an unregistered trade mark claimant. Consequently, the application has no merit and is liable to be
dismissed.
We have carefully considered the rival contentions of both the counsel. The applicant has filed the application for rectification of the register of
Trade Marks seeking removal of the Registered Trade Mark No. 615694-B, dated 4.1.1994, of the first respondent. If we look into the averments in
the application, the applicant has claimed that their trade mark consisting of ""Trident"" device within a circle of flames has become highly distinctive of
the products of the applicant and as such, has become the distinctive trade mark. Consequently, the same excludes all others from using any label
which is similarly or deceptively similar or colourable reproduction of the applicant's artistic work in the applicant's trade mark. The other ground is
that the trade mark of the first respondent ought not to have been registered since the first respondent is not the proprietor of the same as
contemplated under Sec. 18(1) of the said Act.
The learned counsel for the applicant also tried to impress upon as very much on these two aspects and also further pleaded that the first
respondent's plea with regard to the use of their impugned trade mark is self contradictory and as such they cannot be considered to be the earlier
user.
The applicant having come forward with the plea of rectification, that too in respect of the registered trade mark of the first respondent,
undisputedly, the burden is on them to establish their case that they are the earlier users of their trade mark which has also been contravened by the
first respondent.
As already stated, while narrating the arguments of the counsel, the applicant has produced the partnership deed dated 6.9.1974. A perusal of the
said partnership deed reveals the respective shares of the partners therein and nothing more. There is absolutely no reference to the trade mark word
or device by the applicant. Similarly, the certificate of authorization to use Agmark dated 20.9.1982 also has no relevance in respect of the trade mark
word or device of the applicant. It is only a certificate to the applicant authorizing the use of Agmark. The sales tax assessment orders which are from
the year 1990 also refers to the applicant as a dealer in Ghee and there is no reference with regard to the trade mark word or device of the applicant.
When there is absolutely no material placed before us for use of the trade mark Trident device with circle of flames and the word ""SAKTHI
BRAND"" by the applicant, we hold that the applicant has not established the use of the said trade mark device with the words, much less earlier than
the first respondent. Hence, the first contention of the learned counsel for the applicant has to be rejected.
Insofar as the question of similarity of the trade marks of the applicant as well as the first respondent is concerned, we had a look at both the
marks. The applicant's trade mark is a device of Trident in a circle of flames with the word ""SAKTHI BRAND"" as seen at page 61 of the applicant's
type set of documents. The first respondent's device is totally a different form of Tident with the words ""SARVAKARYOGITVAM
KRIYASAKTHI"" as seen at page No. 1 of the typed set of documents produced by the first respondent. The first respondent, as pointed by their
counsel, has been using the trade mark as their house mark as seen at pages 22 to 88 of their type set of documents. The first respondent is also using
the trade mark of Goddess Sakthi holding the Tident in the hand with the lion standing behind the goddess. These documents clearly establish that the
first respondent is using the device of Trident as their house mark. A perusal of the trade marks of the applicant and the first respondent clearly
makes out the differences between them. In no sense, the applicant's trade mark can be said to be identical or similar to that of the first respondent. In
fact, the counsel for the first respondent contended that the trade marks of the applicant and the respondent are not similar. The counsel for the
applicant did not refute the same by advancing any reply arguments which lends support to our decision. Consequently, we hold that the first
respondent's impugned trade mark is not similar or identical to that of the applicant's mark and as such, the deceptive similarity does not arise.
Coming to the last question regarding to the proprietorship of the first respondent, the same is almost covered in the discussion of the second
question. If the ABT Industries Ltd. is having several sister concerns in the names of Sakthi, such as, Sakthi Sugars, Sakthi Finance, Sakthi Textiles,
Sakthi Estates, Sakthi Auto Components, Sakthi Foundation, Sakthi Institute of Technology, Sakthi Automobiles, etc., it has to be considered as a
composite device and the trade device cannot be split up to find out the similarity or dissimilarity. If we take into consideration of this, definitely the
applicant has no case even on this count.
It may be worthwhile to mention the judgment of the Delhi High Court in the case of George V. Records, SARL v. Kiran Jogani, 2004 (28) PTC
347 (Del), where the learned Judge held that the Plaintiff in that case and its sister concern constitute one economic entities and it is a well known
international practice for companies trading in multiple jurisdiction to work with affiliate organization which has been treated as one economic entity
for purposes of proprietary rights by Courts. For this proposition, the learned Judge also drew support from the decision in the case of Revlon v.
Cripps & Lee, 1980 FSR 85 and Food Distributors v. London Borough of Tower Hamlets, (1976) All ER 462 where the Courts have held as follows:
there is evidence of general tendency to ignore the separate legal entities of the various companies within a group, and to look instead at the
economic entity of the whole group"".
If we look at the case of the first respondent with the assistance of the above proposition, then there is no doubt that ABT Industries Ltd. and its
sister concern, the first respondent constitute one economic entity and in that view, the first respondent is the proprietor of the impugned trade mark.
The learned counsel for the appellant finally contended that the first respondent obtained the registration in generic terms in respect of the goods
specified in class 29 as seen at page 136 of the typed set of documents filed by the first respondent. By getting the registration of the trade mark in
respect of all the items of goods specified in class 29, there is every possibility that the appellant is likely to face a threat from the first respondent in
respect of Ghee or other milk products. Pointing out this, the learned counsel for the applicant made a request that the registration of the first
respondent's trade mark can at least be confined to Milk Products and Ghee. We gave our anxious consideration in respect of this plea of the learned
counsel for the applicant. Virtually, there is no opposition from the first respondent for the applicant to use their trade mark of Trident device in a
circle of flame with the word SAKTHI BRAND. In fact, the applicant rushed to the Court and filed the suits against ABT Industries Ltd., the main
concern of which the first respondent is a sister concern. When that be so, merely on the apprehension in the mind of the applicant, we are not
inclined to restrict the items of goods already registered in favour of the first respondent. Hence, we do not find any merit in the said contention of the
learned counsel for the applicant also.
Consequently, we are of the view that the application is liable to be dismissed and accordingly the same is dismissed. However, there will be no
order as to costs.