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Judgment
S. Usha, J
An application for removal of the trade mark registered under No. 589297 in class 3 under the provisions of Trade Marks Act, 1999 (hereinafter
referred to as the act).
The applicants are engaged in the business of manufacturing and selling mehandi powder and cosmetics since the year 1962. The applicants goods
are sold under the trade mark MILAN. The applicants state that there is a great demand for mehandi and kumkum bearing the trade mark MILAN in
India. The applicants annual sales is valued at Rs. 1,14,47,682/-for the year 2004-06. The applicants have also registered the trade mark MILAN
under No. 410400 B in class 3. The said registration is valid and subsisting.
The applicant products are sold in cardboard boxes or plastic pouches. They have adopted a different get-up and color scheme for each of their
quality of goods. As a result of extensive sale and publicity, the get-up used in respect thereof has come to be associated exclusively with the
applicants and their goods.
The total annual expenditure incurred in respect of the mark MILAN for the years 2004-06 is Rs. 2,32,252/-towards publicity and advertisement.
As a result of such extensive sale of their product and publicity, the applicants have built up a large and valuable goodwill for their aforesaid registered
trade marks. The said trade mark MILAN has come to be exclusively associated with the goods of the applicant and with none else among the trade
and public.
5 . The Respondent with a view to harass the applicant has initiated multiple proceedings before various forums. The Respondent have also moved an
application for rectification of the applicants registered trade mark under No. 410400 in class 3 before the Hon'ble High Court of Bombay bearing No.
42/2001 and the same has been dismissed for default. The 1st Respondent filed a suit before the Delhi High Court based on the impugned registration
No. 589297.
6 . The applicant have thus become aggrieved to file this instant rectification application on the following grounds:
a. the impugned mark was never used by the Respondent.
b. the 1st Respondent is not the proprietor with the meaning of Section 18(1) of the trade marks Act.
c. the registration is in contravention of the provisions of Section 11 of the Act.
d. the impugned registration was obtained in contravention of the provisions of Section 9, 10 and 47 of the Act.
e. the impugned registration has been wrongly made and is remaining on the register without sufficient cause.
7 . The counsel for the 1st Respondent filed their counter statement denying the allegation made in the application for rectification. The 1st
Respondent is engaged in the business of manufacturing and marketing Mahendi and cosmetic items. The 1st Respondent adopted the trade mark in
the year 1965 and has been using the same continuously and uninterruptedly without any interruption.
The 1st Respondent is the registered proprietor of the trade mark MILAN registered under No. 589297 in class 3 as of 25.1.1993. The 1st
Respondent is the earlier adopter and user of the trade mark. The registration itself is prima facie evidence of the exclusive use of the mark by the
Respondent.
9 . The 1st Respondent is also the registered owner of the copyright. The 1st Respondent has spent huge amount to popularize the trade mark and
copyright. The rest of the averments made in the grounds of application for rectification had been denied by the 1st Respondent.
10 . We have heard Shri Y.J. Trivedi, learned Counsel for the applicant and Shri Akshay A. Vakil, counsel for the Respondent during the circuit bench
sitting at Ahemadabad on 25th November, 2010.
1 1 . The learned Counsel for the applicant submitted that they are registered proprietors of the trade mark MILAN under No. 410400 in class 3 as of
08.09.1983. They started the business of manufacturing and selling a Mehandi and cosmetics in the year 1962 and their sales turnover under the said
brand name alone for the year 2004-06 is Rs. 1,14,47,682/-.
The impugned trade mark registration under No. 589297 in class 3 is identical. The marks and the goods are identical so the applicant is a person
aggrieved. The impugned trade mark was applied for registration on 25.01.1993 claiming user since 1. 01.1965 and the registration was granted on
10.11.2005. The applicant drew our attention to the order passed by the Assistant Registrar filed along with the counter statement at page 16. That
order was passed in an opposition proceedings in application No. 410400 which application was allowed and the opposition filed by the present
Respondent was dismissed.
The registration has been obtained by suppression of facts and by playing fraud on the Registrar. The counsel also submitted that the certificate of
registration issued by the Registrar of firms under the Indian Partnership Act was of the year 1980 and the user if at all could be said to be only since
1980 and not as claimed in the application for registration on 01.01.1965. On perusal of all the documents filed along with the counter statement, the
earliest document is of the year 1971 and not earlier to that. The counsel relied on the judgment reported in AIR 1973 Mys 74 - K.R. Chinnakrishna
Setty v. Ambal and Co. in support of his contention that in the application under No. 410400 the Registrar has observed about the validity of the
applicants use and adoption and the issue being here the same, the principles of resjudicata would apply here in this case too. The counsel finally
submitted that their user is since 1962 and their rights are to be protected.
The counsel for the 1st Respondent submitted that the applicant are not sure of the date of user and have given different dates. In para 4 of the
application it is stated to have used since 1962 whereas in para 10 a. of the application it is given as 1975. The rival marks are not similar as the
applicants mark is a label mark whereas the Respondents mark is a word mark. The counsel relied on Section 17 of the Act. The applicants have not
produced any evidence to the use of the mark MILAN. The application is to be dismissed for contra statements as it is seen in the plaint before the
District Court - it is 1969 and 1973. The applicant has not satisfied the ground of non user under Section 47 of the Act. The counsel brought to our
notice the Declaration Certificate where the word MILAN was found. The Respondents are honest user of the trade mark and so no question of
estoppels.
In rejoinder the counsel for the applicant submitted that the registration is in contravention of the provisions of Section 11 of the Act. He pointed
out to the Respondents own admission at para 22 of the plaint filed by the Respondent against the applicant where it was stated that the use of the
mark by the applicant is bound to cause confusion and deception as the goods are being purchased by common, illiterate, simple public. If that be the
case, then the contention of the Respondent that the rival marks label mark and word mark cannot be accepted. The details of sales and
advertisement expenses filed as Annexure B does not mention the trade mark.
We have heard and considered the arguments of both the counsel and have gone through the pleadings and documents.
The application being one for removal of the trade mark under Section 47, 57, 125 of the Act, the first issue to be decided would be to see whether
the applicant has the locus stand to file and maintain an application for rectification. A person who is engaged in the same trade as the registered
proprietor and who is likely to be damaged or injured by the impugned registration is a person aggrieved. The applicant herein as a registered
proprietor of a similar/identical trade mark and its use either similarly or identically by the 1st Respondent is likely to cause confusion or deception
among the public and is therefore a person aggrieved. Moreover, it is seen that there has been cross suits between the parties. The Appellant has
been prior in use to that of the Respondent. In view of the above, we are of the opinion that the applicant is a person aggrieved and has the locus
stand to file and maintain the application for rectification.
While deciding the issue of likelihood of confusion and deception the marks have to compared as a whole. In the instant case no doubt the marks
are label mark and word mark but on the whole when seen it is an identical mark - word MILAN. The true test is whether the totality of the proposed
trade mark is such that it is likely to cause confusion or deception among the public. In Corn Products v. Shanghila Food Products Ltd. (AIR 1970 SC
142) it was held that ""it is well recognized that in deciding a question of similarly between two marks, the marks have to be considered as a whole....
We have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and
phonetic similarly and the similarly of the idea in the two marks is reasonably likely to cause a confusion between them.
The class of customers is also to be considered while deciding the question of confusion or deception. It is no doubt the products are Mehandi
powder which is being purchased by any class of people. The Respondent in fact had admitted in their suit against the applicant filed before the
District Court that the applicants trade mark is causing confusion among the public as it is being purchased by illiterate, semi illiterate people who go
by the name and at times by the artistic work. When there is a clear admission by the Respondent, the next test to be applied is to see is who is in the
market first. The applicants have obtained registration as of 1983 whereas the Respondents have though applied for in the year 1993 claiming user
since 1965 have not substantiated the same by any proper documentary evidence.
The onus to prove that the trade mark if allowed to continue on the register would cause confusion is on the applicant for rectification. Here in this
case, the same has been admitted by the Respondent and so the possibility of confusion is certain and not likely.
We therefore are of the view that the marks being identical for identical goods the confusion being certain, the mark cannot be allowed to remain
on the register.
22 . The other fact is also that the Respondent has not given any reason for the adoption of an identical trade mark. Even though it is only a word
mark, the same word used in the applicants label mark has been adopted by the Respondent. Being a subsequent user of the trade mark, the adoption
by the Respondent is dishonest.
For the foregoing reasons, the original rectification application is allowed and the trade mark registered under No. 589297 in class 3 is directed to
removed from the Register of Trade Marks. No order as to costs.