Weikfield Mnemonix Infonetworks Pvt. Ltd. vs Weikfield Products Co. (India) Pvt. Ltd.

,,,,,

S. Usha, J",,,,,

An application for removal of the trade mark WEIKFIELD registered under No. 1376464 in class 42 in respect of scientific & technological,",,,,,

services and research & design relating thereto, industrial analysis & research services, design & development of computer hardware & software,",,,,,

creation, hosting & maintenance of websites, services for providing food & drinks, snacks and ice cream parlours, providing temporary",,,,,

accommodation, hygienic & beauty care for human beings, beauty salons, health care, hospitals, pharmacy advice, dress designing, agriculture &",,,,,

horticulture service under Section 47 & 57 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).",,,,,

The facts of the case are the applicant is a company incorporated under the Companies Act, 1956, is a well-reputed Information Technology (""IT"")",,,,,

/ Information Technology Enabled Services (""ITES"") and/or related services/products provider including services such as Internet, email, Web design,",,,,,

GIS, governance, etc. and providing and/or dealing in products such as printers, PC's etc., since its incorporation in February 1998. The applicant has",,,,,

been providing the above services extensively in India.,,,,,

The applicant company was formed sometime in 1998 because of strong initiative of its founder Mr. Puneet Malhotra. The applicant further states,,,,,

that Mr. Puneet malhotra was also a shareholder/member of the Respondent company at the relevant time forming the applicant company. Certain,,,,,

shareholders of the Respondent company were permitted to hold shares in accordance with the above stated shareholding pattern in the applicant,,,,,

company, suggested that the applicant company operates under the name and style of ""Weikfield Mnemonix Infonetworks Pvt. Ltd."" and it was also",,,,,

understood that all Intellectual Property including the trade marks, service marks, etc. including the service mark ""Weikfield mnemonix Infonetworks",,,,,

Pvt. Ltd."" used in respect of IT/ITES and/or related services/products by the applicant was and would be thus owned by the applicant company. For",,,,,

the said reason, no permission, authorization, license, etc. was ever required and/or entered into by the Respondent and the applicant for the use of any",,,,,

kind of Intellectual Property including trade marks, service marks, etc.",,,,,

. The applicant further states that in or about January 2006, as there arose some disputing between the shareholders of the Respondent company,",,,,,

the company petition bearing No. 2/2006 came to be filed at the Company Law Board, Delhi. By order dated 15.12.2006, the other share in the",,,,,

applicant company were directed to be transferred in the name of Mr. Puneet Malhotra by the Company Law Board. Thus, since January 2007, the",,,,,

shareholding of the applicant was revised.,,,,,

The applicant further submits that they are the present proprietor of several forms of Intellectual Property, including copyright and trade marks/",,,,,

service marks, in respect of various creations such as trade marks, service marks, catalogs, charts, diagrams, graphs, graphical representations,",,,,,

pictures, artistic works, etc. used in respect of IT Products, services, and/or related services/products. The applicant and its promoters, then created,",,,,,

adopted various Intellectual Property rights in various creations including the service mark / servicename / tradename/ trade mark used in relation with,,,,,

the IT related services.,,,,,

The applicant states that they are the proprietors of the service mark Weikfield Mnemonix Infonetworks, as they have been used and have been",,,,,

using the service mark. The applicant states that its use of such a unique and distinctive service mark in relation to the service has become distinctive,,,,,

to the applicant and has accrued tremendous goodwill to the applicant's service.,,,,,

The applicant further submits that it has been using the said distinctive service mark continuously and uninterruptedly for a very long time. The,,,,,

applicant has sold and offered to sell the products under the said distinctive service mark for the past 9 years. The annual sales turn over runs to,,,,,

several lakhs of rupees. The applicant submitted that the reason of the marketing advertisement efforts taken by the applicant and due to the inherent,,,,,

distinctiveness of its service marks, a substantial amount of goodwill and reputation has accrued to the applicant in its unique and distinctive trade",,,,,

mark.,,,,,

The applicant submitted that it has recently, come to their knowledge that the Respondent without the applicant's consent and at the applicant's",,,,,

back, have applied for registration of trade mark/service mark Weikfield under No. 1376464 in respect of goods falling under class 42, and have",,,,,

successfully obtained registration. The mark when applied for was proposed to be used as on the date of the application ie. on 10th August, 2005.",,,,,

The applicant further submits that the act on the part of the Respondent seriously affects, causes prejudice, losses and violates the rights of the",,,,,

applicant by the use of the service mark Weikfield Mnemonix Infonetworks. The Respondent has applied for the said registration during August 2005,,,,,

despite being well aware of the applicant's use of the service mark and only after the shareholder resigned from the applicant's company without the,,,,,

knowledge of Mr. Puneet Malhotra, Joint Managing Director of the Respondent company. The registration has been obtained by the Respondent with",,,,,

malafide intention and only with the intention to raise and cause prejudice to the applicant. Hence, the applicant is a person aggrieved by such",,,,,

impugned registration and is entitled to file this proceeding for removal/expunging of the Respondent's impugned service mark Weikfield from the,,,,,

register of trade marks.,,,,,

The application for rectification has been made on the following grounds:,,,,,

a) the impugned registration is unjust, improper, contrary to provisions of the Trademarks Law and principles of law;.",,,,,

b) the impugned registration is contrary to the provisions of Trademarks Act, particularly under Section 57 of the Act;",,,,,

c) the impugned registration is made without sufficient cause;,,,,,

d) The impugned registration is wrongly remaining on the register;,,,,,

e) the Respondent is not the proprietor and the registration granted is contrary to theprovisions of Section 18 of the Act;,,,,,

f) the Respondent has obtained registration by applying fraud on the register of the trade marks;,,,,,

g) the impugned registration has been obtained with malafide intentions only to cause serious damage and prejudice to the interest of the applicant;,,,,,

h) the impugned registration is contrary to the provisions of Section 9 of the Act;,,,,,

i) the impugned registration is likely to cause deception and confusion among the public;,,,,,

j) the impugned registration is contrary to the provisions of Section 47 of the Act as it has not been used in respect of the goods for which the,,,,,

S. No.,Mark,Label/Word,Class,Application No.,Status

1.,W Minet,Label,9,848284,Advertised

2.,WM,Label,9,848285,Advertised

3.,W Minet,Label,16,848286,Registered

4.,WM,Label,16,848287,Advertised

On completion of the pleadings, the matter was posted for hearing on 8th June 2010 where Shri Anirudha Velsangkar learned Counsel for the",,,,,

applicant and Shri Nair M. Ramakrishnan, learned Counsel for the Respondent appeared.",,,,,

Learned Counsel for the applicant submitted that he started the business in the year 1998 and placed before us the certificate of incorporation,,,,,

dated 16.2.1998. The counsel submitted that their mark was . The counsel also stated that their sales turnover was wide range was running in lakhs.,,,,,

The counsel submitted that the Respondent made an application for registration on 10.8.2005 when the dispute arose between the parties. In fact,",,,,,

there were proceedings before the Company Law. Board in the year 2006 and by a consent order dated 15.12.2006, the parties had settled their",,,,,

dispute but there was no mention of the Intellectual Property rights. The Respondents in fact were only dealing with Custard Powder, Jelly Crystals,",,,,,

Baking Powder, Drinking Chocolate, Cream Caramel, Chutneys, Sauces, natural Ayurvedic health foods, etc. They were nowhere in the service mark",,,,,

connected with IT services. The counsel placed before us, the purchase order dated 2006 to say that they were in the business from 2006 atleast.",,,,,

Whereas, the application for impugned registration was made on 10.8.2005 as a proposed to be used mark. The counsel relied on Section 46 of the",,,,,

Act. The counsel also brought to our notice that the Respondents wherein Real Estate business and not IT business as the same was contented by the,,,,,

Respondent in their counter statement. The counsel referred to Exhibit J of the counter statement and stated that they were only in the business,,,,,

relating to food even as on 6.1.2007.,,,,,

The counsel also relied on a passage from the book Trade Marks Act, by P. Narayanan at para 21.61 and stated that ""when the intention of the",,,,,

party was not to use for the goods for which it was registered the mark was to be removed from the register of Trade Marks"" The counsel finally",,,,,

stated that though the mark was registered for goods falling under class 42, the Respondent were not using the same and prayed that the impugned",,,,,

trade mark ought to be removed from the register of trade marks.,,,,,

The counsel for the Respondent in reply submitted that the application for rectification was not supported by any affidavit of evidence in support of,,,,,

their case and hence the documents filed ought not to be considered. The counsel for Respondent also pointed out to document at page 23 filed along,,,,,

with the counter statement and submitted that there is no mention of the trade mark Weikfield. Whereas, the applicant had been using which itself",,,,,

clearly proves that the applicant is not the proprietor or has not been using the trade mark Weikfield to be a person aggrieved.,,,,,

Counsel for the Respondent also denied the statement that the application for registration was made without the knowledge of Mr. Puneet,,,,,

Malhotra. The counsel further submitted that the Section 46 of the Act does not apply. Section 47 (1)(b) also does not apply as the registration itself,,,,,

was granted only in the year 2006 and the application for rectification has been filed within the period of 1 year ie. 2007. The counsel also further,,,,,

stated that the Respondents were not only in the business of food preparation but were expanding their business activities which has been clearly,,,,,

stated in their counter statement. Counsel further stated that an application for rectification, the onus is on the applicant to prove the grounds on which",,,,,

the rectification application was made. The applicant being not an aggrieved person cannot file and maintain the certificate for rectification. The,,,,,

counsel therefore prayed that the application for rectification be dismissed with costs.,,,,,

We have carefully considered the arguments of both the counsel and have perused the pleadings and documents.,,,,,

The instant application being an application for rectification the main issue will be to see if the applicant has the locus standi to file an application,,,,,

for rectification. As per the provisions of Section 21 any person may file an application for rectification whereas an aggrieved person may alone file an,,,,,

application for rectification. The term ""Person Aggrieved"" though not defined in the Act, has been literally construed in several cases. In Powell's",,,,,

Trade Mark, it was held that ""person who are aggrieved and person who are in some way or the other substantially interested in having the mark",,,,,

removed from the register or persons who would be substantially damaged if the mark remained"". In the case on hand, it is seen that the Respondents",,,,,

had been using the trade mark ""Weikfield"" since the 1972 who are also the registered proprietors of the trade mark. The applicants own admission at",,,,,

page 23 of the application is that they had been using as the trade mark. The applicants have only pleaded that there is some injury and loss caused to,,,,,

their business which has not been substantiated. The applicants though in the same field of business have not used identical trade mark. The applicants,,,,,

and the Respondents were carrying on business together and after a dispute arose between the parties, by a settlement arrived at the two companies",,,,,

arose with a revised shareholding. The applicants therefore are not person aggrieved and have no locus standi to file and maintain an application for,,,,,

rectification.,,,,,

The main ground on which the rectification has been filed is that the registration is contrary to the provisions of the Act, the registration is likely to",,,,,

cause confusion and deception and that the Respondent had not been using the registered trade mark.,,,,,

The ground that the registration is in contravention of the provisions of the Act is that the registration is causing heavy loss and injury because of,,,,,

the confusion. The trade mark which is registered is not descriptive. The mark as seen as acquired distinctiveness by use. The mark has been put to,,,,,

use for a certain period. The Respondents though not for the goods under dispute, have claimed proprietary rights since the year 1972 which facts has",,,,,

not been disputed by the applicant whereas it is the admitted case of the applicant that their company was formed some time in the year 1998, be that",,,,,

the case, the Respondents are prior in use and their rights are to be protected.",,,,,

The other plea was that the Respondents were only dealing in goods falling in class 30 and not others services. The Respondents contended that,,,,,

they had expanded their business activities and also drew our attention to the Memorandum of association. The Respondents have produced some,,,,,

documents to say that they were carrying on business under class 42. We therefore are of the view that the plea of non user is baseless which has not,,,,,

been substantiated by proper evidence.,,,,,

The issue as to confusion or deception is for the applicant to prove. In an application for rectification, the onus is on the applicant to prove that",,,,,

there has been confusion in the minds of the public as to the origin of the goods. The applicants though pleaded have not substantiated by documentary,,,,,

evidence. The same has not been proved and therefore the plea of confusion or deception falls.,,,,,

The applicants have adopted a different trade mark which is an abbreviation of their trading style namely Weikfield Memonix Infonetworks Pvt.,,,,,

Ltd. The applicants have also applied for registration of their trade mark WM. The applicants have not used the trade mark Weikfield. The,,,,,

Respondents have stated that they have take necessary steps to delete the word Weikfield from the applicants corporate name. The applicants have,,,,,

not denied the same. In such circumstances, we are of the opinion that the impugned registration is not in contravention of the provisions of the Act",,,,,

and ought not to be removed from the register. The applicants are no way prejudiced or injured by the impugned registration.,,,,,

The claim of proprietorship is with the Respondent as per the provisions of the Section 18 of the Act. The use of the impugned trade mark by the,,,,,

Respondent is not denied by the applicant.,,,,,

In view of the above mentioned reasons, the application for rectification is dismissed with no order as to costs.",,,,,