Sant Ram And Co. vs Satnam Overseas And Anr.
2003 Latest Caselaw 991 Del

JUDGMENT

Pradeep Nandrajog, J.

1. The present judgment disposes of CM(M) No. 303/1993, CM(M) No. 327/1993 and CM(M) No. 313/1996, since they arise out of a common set of facts between the parties and relate to 3 different orders passed by the Registrar of Trade Marks.

2. Sant Ram and Co., the petitioner in all the petitions obtained registration of the Trade Mark "KOH-I-NOOR" vide Trade Mark Registration No. 274996 in respect of rice in Class 30. This registration was granted to the petitioner on an application filed before the Registrar of Trade Marks claiming user of the trade mark in respect of their goods since the year, 1961. Registration was accorded on 15.9.1971.

3. The second respondent in all the petitions, M/s. Satnam Overseas filed an application for rectification of the trade mark obtained by the petitioner on the allegation that the impugned mark was got registered without any bona fide intention to use it and as a matter of fact there has been no bona fide use of the trade mark by the petitioner up to a date of one month and five years preceding the date of filing of the application of rectification by respondent No. 2. Alternatively, it was pleaded that the mark has been used by the petitioner only in a few cities and therefore, in any case the same is liable to be rectified in terms of Sub-section (2) of Section 46 of the Trade and Merchandise Marks Act, 1958 by putting limitation of use restriction qua the area where the mark was actually used by the petitioner.

4. Respondent No. 2 also applied for registration of the trade mark KOHINOOR vide application No. 372700 in respect of rice included in Class 30. It was claimed in the application that respondent No. 2 was using the aforesaid mark since 1.1.1975. On being advertised in the Trade Mark Journal, petitioner vide notice of opposition dated 31.7.1985 opposed the registration of the trade mark on the ground that the grant of the same would be in violation of Sections 9, 11(a), (e), 12(1), 18(1) and 18(4) of the Trade and Merchandise Marks Act, 1958. Respondent No. 2 contested the said opposition.

5. On 3.7.1985 the respondent No. 2 filed an application registered as No. 439765 in respect of rice for export included in Class 30 and sought registration of the trade mark "KOHINOOR". On being advertised in the Trade Mark Journal on 11.10.1989 petitioner filed the notice of opposition to oppose the registration of the mark.

6. Three orders came to be passed on the 3 proceedings aforesaid before the Registrar of Trade Marks. By order dated 18.6.1992, application filed by respondent No. 2 for rectification of the trade mark of the petitioner was disposed of. On a perusal of the evidence before him, the Registrar of Trade Marks came to the conclusion that the evidence showed that the petitioner had not been selling its product in cities other than the cities of Faizabad, Maunath Bhanjan, Jaunpur, Shahganj and Agra in the State of Uttar Pradesh. Respondent No. 2 therefore carried out the necessary rectification, in that, the entry in respect of the registered trade mark 274996 in Class 30 of the petitioner was modified by amending specification of the goods to read as: "rice for sale in the cities of Faizabad, Maunath Bhanjan, Jaunpur, Shahganj and Agra in the State of Uttar Pradesh."

7. Since, a technical objection was raised by the petitioner that the respondent No. 2 had not disclosed the names of the partners in terms of Rule 16 of the Rules and therefore the application was invalid, the Registrar of Trade Marks dealt with the same and overruled it.

8. An application was filed seeking review of the order dated 18.6.1992. In the said application, petitioner brought to the notice of the Registrar of Trade Marks that the principal place of business of the petitioner was Saharanpur and this fact was completely ignored when the order dated 18.6.1992 was passed. Certain other points in review were raised. By order dated 15.2.1993, the application for review was allowed to the extent that the amendment directed by order dated 18.6.1992 was amended to the effect that the entry in respect of registered trade mark No. 274996 in Class 30 was modified by amending the specification of goods to read as: "rice for sale in the cities of Faizabad, Maunath Bhanjan, Jaunpur, Shahganj Agra and Saharanpur in the State of Uttar Pradesh."

9. Application filed by respondent No. 2 for registration of the trade mark "KOHINOOR" in respect of rice included in Class 30 was disposed of vide order dated 29.3.1993. Opposition filed by the petitioner was overruled. Though, as noted above petitioner had filed its opposition under various provisions of the Trade and Merchandise Marks Act, (SIC) however, at the hearing before the Registrar of Trade Marks, the objections were confined only in respect of Sections 12(1) and 18(1) of the Act.

10. Taking note of the fact that the petitioners were the registered proprietors of identical trade mark "KOHINOOR" in respect of the same goods and taking note of the fact that the said mark stood rectified for sale of rice in the cities of Faizabad, Maunath Bhanjan, Jaunpur, Shahganj, Agra and Saharanpur in the State of Uttar Pradesh, the Registrar of Trade Marks held that the objection of the petitioner was therefore maintainable. However, he proceeded to consider the case of respondent No. 1 that it was an honest concurrent user of the said trade mark and therefore was entitled to registration in terms of Sub-section (3) of Section 12 of the Trade and Merchandise Marks Act. On the evidence before him, the Registrar of Trade Marks held that respondent No. 2 had effected sales of rice worth Rs. 1.12 crores in the year 1979-80 and in the subsequent year evidence showed that huge quantities of sale were effected. He came to the conclusion that there was no evidence that the respondent No. 2 had any prior knowledge of use of the trade mark " KOHINOOR" by the petitioner and in that view of the matter held that respondent No. 2 was entitled for the concurrent registration of the mark under Sub-section (3) of Section 12 of the Act. As a corollary of the aforesaid finding, the Registrar of Trade Marks overruled the objection under Sub-section (1) of Section 18 of the Act to the effect that respondent No. 2 had no claim to the proprietorship of the mark. This finding was the necessary corollary of the finding that respondent No. 2 had been honestly using the trade mark "KOHINOOR" since the year 1979-80.

11. Holding so, the opposition filed by the petitioner was disallowed and the application filed by respondent No. 2 for registration was allowed.

12. In the third proceedings pertaining to the registration of trade mark "KOHINOOR" in respect of rice for export, by order dated 3.5.1995, the same was allowed. The reason was simple, Registrar of Trade Marks in view of the earlier two orders passed in the proceedings relating to rectification of the trade mark of the petitioner and the registration of the trade mark in favor of respondent No. 2 held that the respondent No. 2 was entitled to have the trade mark registered for export.

13. Mr. Manmohan Singh, learned Counsel appearing for the petitioner rightly used that the decision in CM(M) No. 303/1993 wherein the order dated 18.6.1992 and the order passed in review dated 15.2.1993 was challenged would be to determine the fate of other two petitions as well. Counsel conceded that if the order dated 18.6.1992 was maintained hardly anything would survive for consideration in the other two petitions.

14. Learned Counsel, in support of the challenge to the order dated 18.6.1992 and the order passed in review dated 15.2.1993 contended that the petitioner had admittedly been using the trade mark "KOHINOOR" since the year 1961 and had obtained registration thereof in the year 1971. Rectification was filed by respondent No. 2 after 14 years of the registration and 24 years of user. It is contended that in this view of the matter the application for rectification filed by respondent No. 2 ought to have been rejected. Counsel also contended that once review was being allowed to it, petitioner should have been entitled to lead evidence afresh, inasmuch as Counsel contended that the petitioner had evidence of sales outside the cities of Uttar Pradesh, which the petitioner could not present when the original order was passed.

15. I am afraid, contention of learned Counsel for the petitioner that if the review was being allowed, the Registrar of Trade Marks should have given an opportunity to the petitioner to lead further evidence cannot be acceded to. Review was sought on many grounds, one of them being that while passing the order, Registrar of Trade Marks had ignored that the petitioner was having its principal place of business at Saharanpur. It is settled law that a review lies to rectify an error apparent on the face of record and on merits, matter can be reagitated in review on the basis of fresh material only when it is averred and proved that the material sought to be relied upon was not within the knowledge of the person seeking review or was such that it could not be placed at the time of the original proceedings: Sales effected by the petitioner were a matter of its record and therefore it could not be said that any case for review was made out on the basis of the petitioner having a right to rely upon fresh material pertaining to the sales effected by the petitioner in India.

16. The word KOHINOOR was admittedly not claimed as a coined Word by the petitioner. Everybody in India knows that it is the name of a priceless diamond now finding safety in the vaults of the Queen in United Kingdom. Any person could, therefore, pick up the word KOHINOOR and use the same as its mark for product manufactured by it under a bona fide belief that he is entitled to use the same. In the facts as they emerged between the petitioner and respondent No. 2, the Registrar of Trade Marks has come to a finding of fact which is based on evidence that the respondent No. 2 bona fide started using the mark KOHINOOR and there was no material on record to show that when the respondent No. 2 started using the mark KOHINOOR, it was aware that petitioner was using the same.

17. In this view of the matter the finding of the Registrar of Trade Marks that respondent No. 2 was entitled to the benefit of Sub-section (3) of Section 12 of the Trade and Merchandise Act cannot be faulted with. There is ample evidence on record that respondent No. 2 bona fide and honestly adopted the word KOHINOOR as its trade mark. The said finding can by no stretch of modification be labelled as a perverse, irrational or a finding beyond the jurisdiction of respondent No. 2.

18. However, as rightly contended by the learned Counsel for the petitioner, respondent No. 2 has indeed committed one jurisdictional error which requires a modification of the order passed him.

19. Counsel contended that the invoices proved in evidence by the petitioner showed sale of rice by the petitioner to its distributors and dealers in various cities in the State of Uttar Pradesh and they in turn were making deliveries to the retailers in smaller towns. Counsel therefore contended that the restriction put by the Registrar of Trade Marks as a result of rectification should have stated that the amendment incorporated was that the registered trade mark No. 274996 in Class 30 of the petitioner be modified by amending the specification of the goods to read as: "rice for sale in the State of Uttar Pradesh."

20. I find merit in the said contention raised by Counsel for the petitioner. The geographic limitation incorporated by way of amendment has to be based on a practical consideration of the facts and trade practices. Manufacturers of products, normally do not market the product by effecting direct deliveries to retailers. Sales at the first instance are effect to wholesalers or distributors who in turn make deliveries to retailers and that is the way the network operates. This aspect of the matter has been overlooked by the Registrar of Trade Marks.

21. CM(M) No. 303/93 is, therefore, allowed to the limited extent that the impugned order dated 18.6.1992 and 15.2.1993 passed by respondent No. 2 is modified to the extent that the directions contained in the said two orders would stand substituted with the following directions:

"Upshot of the aforesaid, discussion is that the entry in respect of registered trade mark No. 274996 in Class 30 be modified by amending the specification of goods to read as 'rice for sale in the State of Uttar Pradesh'.

The consequence would be that the application for rectification filed by respondent No. 2 would be allowed to that extent only.

As a result of my finding aforesaid CM(M) No. 327/1993 stands dismissed. As far as CM(M) No. 313/1996 is concerned, in view of the discussion above, the order dated 3.5.1995 passed by the Registrar of Trade Marks would require to be modified, in that application No. 439765 filed by respondent No. 2, which was allowed for registration of the mark KOHINOOR in respect of kinds of rice for export included in Class 30 shall have to be modified to make it in conformity with the directions passed by me today in respect of the proceedings arising out of the rectification proceedings, in that it is directed that while registering the said trade mark in respect of rice for export in Class 30 in favor of the respondent No. 2, the registration of trade mark shall incorporate "except the State of Uttar Pradesh".

22. CM(M) No. 303/1993 and CM(M) No. 313/1996 are, therefore, partially allowed to the extent indicated above. CM(M) No. 327/1993 is dismissed.