Gopal Kishan vs Union Of Inida & Anr
2013 Latest Caselaw 251 Del

$~30
*    IN THE HIGH COURT OF DELHI AT NEW DELHI
+    LPA 45/2013
       GOPAL KISHAN                                ..... Appellant
                          Through:     Mr. Chetan Sharma, Sr. Adv. with
                                       Mr. Mohan Vidhani, Mr. Rahul
                                       Vidhani, Ms. Sudipa Das Gupta, Mr.
                                       A.K. Goel and Mr. Arun Jain,
                                       Advocates
                versus
       UNION OF INIDA & ANR                      ..... Respondent
                       Through:        Mr. Ruchir Mishra and Mr. Anuj
                                       Aggarwal, Adv. for R-1
       CORAM:
       HON'BLE THE CHIEF JUSTICE
       HON'BLE MR. JUSTICE V.K. JAIN

               ORDER

% 16.01.2013

On 6.9.1961, the respondent no.2 before this Court sought registration

of a trademark consisting of the word „STANDARD‟ and a device. At the

time of seeking registration, the respondent no.2 did not claim any prior use

of the aforesaid mark. The case of the appellant is that the said application

was not pursued and on 2.12.1975, respondent no.2 submitted another

application for registration of the mark consisting of the letter „S‟ inside a

triangle and the word „STANDARD‟ above the triangle and the word „India‟

below the triangle. This time, respondent no.2 claimed use since prior 1967

and the mark came to be registered vide registration number 310536. Three

other registrations were thereafter obtained by the respondent no.2 in respect

of the marks which includes the word „STANDARD‟. On 31.3.2003, the

appellant filed a petition seeking cancellation of the aforesaid marks

registered in favour of the respondent no.2. Vide order dated 16.12.2010, the

petition filed by the appellant was dismissed by the Intellectual Properties

Appellate Board (IPAB). W.P(C) No.2589/2011 was then filed by the

petitioner impugning the order passed by IPAB. The said writ petition

having been dismissed vide order dated 8.10.2012, the appellant is before us

by way of this appeal.

2. Three contentions have primarily raised by the learned counsel for the

appellant before us. The first contention is that the marks registered in

favour of respondent no.2 is liable to be removed in view of the provisions

contained in Section 46(1)(b) of the Trademarks Act, 1958 which provides

for taking a mark off the Register if up to a date one month before the date

of application, a continuous period of five years from the date on which the

trademark is actually entered in the Registry or longer had lapsed, during

which the trademark was registered and during which there was no bonafide

use of the trademark in relation to those goods or services by its proprietor.

The second contention was that no evidence was led by respondent no.2 to

prove the use of the marks in question since 1958. The third contention,

based upon Section 9(2) of the Trade Marks Act, 1958 was that the mark

„STANDARD‟ not being distinctive, was not capable of being registered.

3. As regards his contention with respect to the period of the user of the

mark „STANDARD‟ by respondent No.2, the learned counsel for the

appellant drew our attention to the application submitted by respondent No.2

on 6th September, 1961 seeking registration of the mark constituting the

word „STANDARD‟ and a device, where respondent No.2 stated that it

proposed to use the mark in respect of which registration was being sought.

As noted by the learned Single Judge in para 8 of his order, the case of

respondent No.2 was that the mark „STANDARD‟ was being used by it

since the year 1958 and it had been supplying equipment to a number of

Government undertakings and industrial units. The mark which was

sought to be got registered vide application dated 6th September, 1961

was not the word mark „ STANDARD‟ alone but was a composite

mark comprising the word „STANDARD‟ and a device.

Therefore, this application by itself does not disprove the case of the

respondent No.2 with respect to the period of user of the word mark

„STANDARD‟. Moreover, it would be immaterial whether respondent No.2

started using the marks in question in the year 1958 or in the year 1967, or

even later, since the user of the respondent in any case was much prior to

registration of the mark „MAX STANDARD‟ in favour of the appellant.

Moreover, the question as to from which date the mark „STANDARD‟ was

being used by respondent No.2 is a pure question of fact which cannot be

gone into in these proceedings and the finding recorded by the IPAB in this

regard is to be taken as final.

4. The contention of the appellant that the mark „STANDARD‟ being

generis was not capable of being registered has been rejected by IPAB as

well as by the learned Single Judge and we see no reason to take a contrary

view. Both of them held that the said mark had become distinctive to

respondent No.2. Moreover, as noted by the learned Single Judge, the

appellant himself is the registered proprietor of the mark "MAX

STANDARD", therefore, it is not open to the appellant to claim that the

word „STANDARD‟ was not capable of being registered. It would be

immaterial that the appellant is using the word „STANDARD‟ in

conjunction with the word „MAX, as the word „STANDARD‟

constitute an integral and rather main component of the mark "Max

STANDARD" being used by the appellant.

5. As regards the contention that the mark in question respondent No.2

for the period stipulated in Section 46(1)(b) of the Trade Marks Act, 1958

and, therefore, was liable to be taken off the register, we find that no such

contention was advanced before the learned Single Judge. We, therefore

cannot allow this contention to be urged before us. In any case, the question

as to whether the trade mark in question was continuously used by

respondent No.2 for five years from the date on which it was registered or

not is purely a question of fact which cannot be gone into in an appeal

against the order passed in a writ petition.

For the reasons stated hereinabove, we find no reasons to interfere

with the order of the learned Single Judge. The appeal is, therefore

dismissed. There shall be no order as to costs.

CHIEF JUSTICE

V.K. JAIN, J JANUARY 16, 2013 'rd'/'sn'