Gujarat High Court
Mahle Gmbh vs Parag Kirnkumar Tatariya on 9 November, 2023
Bench: Vaibhavi D. Nanavati
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IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/SPECIAL CIVIL APPLICATION NO. 11855 of 2021
FOR APPROVAL AND SIGNATURE:
HONOURABLE MS. JUSTICE VAIBHAVI D. NANAVATI
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1 Whether Reporters of Local Papers may be allowed
to see the judgment ?
2 To be referred to the Reporter or not ?
3 Whether their Lordships wish to see the fair copy
of the judgment ?
4 Whether this case involves a substantial question
of law as to the interpretation of the Constitution
of India or any order made thereunder ?
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MAHLE GMBH
Versus
PARAG KIRNKUMAR TATARIYA & 1 other(s)
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Appearance:
MR ANMOL DIKSHIT with MR ABHISST K THAKER(7010) for the
Petitioner(s) No.
MR HARNISH V DARJI(3705) for the Respondent(s) No. 1
MR KEDAR G DAVE(3475) for the Respondent(s) No. 1
NOTICE SERVED for the Respondent(s) No. 2
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CORAM:HONOURABLE MS. JUSTICE VAIBHAVI D. NANAVATI
Date : 09/11/2023
ORAL JUDGMENT
1. By way of present writ-application invoking Article 226
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of the Constitution of India the writ-applicant herein seeks to
challenge the registration of mark bearing Registration
No.2897507 (hereinafter referred to as 'the impugned Mark' for
short) in respect of 'Lubricants Oil and Grease included in
Class-04' on the Register of Trademark.
2. Brief facts germane for adjudication of the dispute in
question read thus :-
2.1 The writ-applicant herein was founded over a century
ago, when Hermann Mahle joined Versuchsbau Hellmuth Hirth
as Commercial Manager, marking the start of the current
'MAHLE Group'.
2.2 In the year 1922, Hermann Mahle's brother Ernst Mahle
joined Leichmetall-Werke, G.m.b.H., Stuttgart-Cannstatt, the
successor-in-interest company to Versuchsbau Hellmuth Hirth as
a developer and head of production. The company was
renamed as Elektronmetall Gmbh, Stuttgart Cannstatt (EC) in
the year 1924 and the brothers Hermann Mahle and Ernst
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Mahle were appointed as Commercial Director and Technical
Directors in the year 1926 and 1927, respectively. In few
years, the company became one of the major German piston
manufacturers and both the brothers became Managing
Directors and eventually sole owners. The company
Elektronmetall GmbH was renamed as MAHLE KG in the year
1938 and the writ-applicant herein has grown into an
international development partner and supplier to the
automotive industry.
2.3 The writ-applicant herein has been using the mark/name
MAHLE upon and in relation to its products/services/business
at least since the year 1938. The trade/service mark name
MAHLE derives its origin from surname of the Hermann Mahle
and Ernst Mahle brothers. The trade/service mark MAHLE also
forms an essential part of the writ-applicant's corporate name
and is its house mark.
2.4 The writ-applicant's products under the mark/name
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MAHLE made available in India since 1950-1960. The writ-
applicant's registration for the mark MAHLE under No.201696
in Class-7 is secured in India on 7.4.1961.
2.5 The writ-applicant's business expansion in India continued
and it entered into joint ventures with MWP Migma Ltd. (now
MAHLE Engine Components India Private Limited) and
Kirloskar Knecht Filters Private Ltd in the year 1997.
2.6 The writ-applicant's dominance and growth in India
continued and Mahle Filtersysteme Gmbh acquired majority
stakes in Purolator India Limited. Subsequently, in the year
2008, Purolator India Limited was renamed as Mahle Filter
Systems (India) Limited (now Mahle Anand Filter Systems
Private Limited) in the year 2005-2006.
2.7 In the year 2013, the writ-applicant herein acquired all
shares in the Indian piston joint venture MAHLE IPL Limited
(now MAHLE Engine Components India Private Limited).
2.8 On 1.2.2015, the Respondent filed trade mark application
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in Class-4 under No.2897507 for registration of the impugned
mark. On 18.4.2016, the impugned mark was advertised in the
Trade Marks Journal No.1741 at page 335.
2.9 Though the respondent has obtained registration for the
impugned mark, the writ-applicant's enquiries revealed that the
respondent is not using the impugned mark but has in fact,
employed use of the writ-applicant's significantly prior,
registered and well-known trade mark 'MAHLE' in respect of its
products. The fact that the respondent obtained registration of
the impugned mark is, in fact, using the writ-applicant's
significantly prior, registered and well-known trade mark
'MAHLE', resultantly the said action according to the writ-
applicant herein is mala fide.
2.10 The registration obtained by the respondent is fraudulent
and contrary to the principles of business ethics and honest
trade practices. The application having been made in bad faith,
the subsequent registration thereof is void ab initio. The
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aforesaid has resulted in filing of the present writ-application
by the writ-applicant herein seeking the following reliefs :-
"(a) To remove the entry in Register of Trade Marks bearing
registration No. 2897507 in Class 4 in the name of the
Respondent herein;
(b) To award the cost of the proceedings the Petitioner;
and
(c) To pass any other order in favor of the petitioner as this
Hon'ble Court deem fit in the facts and circumstances of the
case to further the ends of Justice;"
3. Heard Mr. Anmol Dikshit, the learned advocate
appearing for Mr. Abhisst K. Thaker, the learned advocate
appearing for the writ-applicant and Mr. Kedar G. Dave, the
learned advocate appearing for the respondent No.1.
Submissions on behalf of the writ-applicant :-
4. Mr. Anmol Dikshit the learned advocate appearing for
the writ-applicant herein submitted that the writ-applicant's
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trade mark/service mark/name MAHLE has been put to
extensive and uninterrupted use for more than 80 years and
the same has resulted in having acquired a secondary unit. The
writ-applicant's trade/service mark/ named MAHLE are
exclusively associated by Members of Trade and Public with
the writ-applicant alone and none-else.
4.1 It was submitted that the registered owner i.e. respondent
of impugned trade mark being in same line of business is
deemed to be aware of the writ-applicant herein and its prior
rights and goodwill/reputation vesting in the trade mark
'MAHLE'.
4.2 It was submitted that the writ-applicant herein was not
aware of the Registered Proprietor's application for registration
of the impugned mark, hence no opposition could be filed
against the registration thereof. Consequently it proceeded to
registration and it is a wrong entry remaining on the Register
of Trade Marks.
4.3 The writ-applicant herein is aggrieved by the registration
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of the impugned mark in the name of the Registered Proprietor
in view of the fact that the writ-applicant herein is
significantly prior in its bona fide adoption and use of the
trade mark 'MAHLE' the world over including in India. The
writ-applicant herein has prior registrations of the trade mark
'MAHLE' in several jurisdictions of the world including in India
and has extensively used and promoted the said mark since the
year 1938. Thus, the writ-applicant herein is a person
aggrieved within the meaning of The Trade Marks Act, 1999
and the Rules made thereunder.
4.4 The impugned mark by the Registered Proprietor is
bound to cause confusion and deception in the course of trade
as regards the source and origin of the goods. The consumers
and members of the trade are likely to be confused or
deceived into believing that the Registered Proprietor is a
licensee of the writ-applicant herein or has some other
commercial relationship with the writ-applicant herein, when
this is not the case. The writ-applicant herein is further
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aggrieved by the fact that the registration and/or use, if any,
by the Registered Proprietor of the impugned mark will result
in dilution of the distinctiveness of the prior, registered and
well-known trade mark 'MAHLE' of the writ-applicant herein.
4.5 Mr. Dikshit, the learned advocate appearing for the
writ-applicant herein further submitted that the impugned
registration is liable to be prevented under the laws of passing
off and is wrongly remaining on the Register in contravention
with Section 11(3)(a) of the Act.
4.6 It was submitted that the impugned mark ought not to
have proceeded to registration under the provisions of Section
11(10) of the Act as the writ-applicant's mark is a well-known
mark within the provisions of Article 6bis of Paris Convention.
4.7 It was submitted that the Registered Proprietor cannot lay
any claim of proprietorship over the impugned mark under
Section 18(1) of the Act in view of the writ-applicant's
significantly prior adoption and extensive use of the trade
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mark 'MAHLE' and its consequent goodwill and reputation
subsisting thereof.
4.8 It was submitted that the impugned Registration
No.2897507 is liable to expunged from the Register under
Section 47(1)(a) of the Act.
4.9 Placing reliance on the aforesaid submissions, Mr.
Dikshit, the learned advocate submitted that no bonafide use
of the impugned mark has been made by the Registered
Proprietor nor does the Registered Proprietor have any bona
fide intention to use the said mark in any manner whatsoever.
The Registered Proprietor has surreptitiously secured
registration of the impugned mark 'MAHLE' i.e. by applying
for the mark containing the writ-applicant's significantly prior
registered and well-known trade mark 'MAHLE' in entirety
but, in fact making use of the writ-applicant's trade made
'MAHLE' upon and in relation to identical products. The writ-
applicant's inquiries have revealed that registered proprietor
has not been using the mark in any manner whatsoever.
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4.10 It was submitted that the impugned registration No.
2897507 is liable to be removed from the Register of Trade
Marks as it is settled law that a registration obtained by
suppression of a material fact or by making false
representation, is made without sufficient cause and can be
said to have been obtained by fraud.
4.11 It was submitted that the impugned registration No.
2897507 is diluting the distinctiveness of the significantly prior,
registered and well-known trade mark of the writ-applicant and
violates the purity of the Register. The registration is opposed
to public policy and hostile to public interest inasmuch as the
public has a vested right not to be put to perils of confusion
or deception and that too, if such confusion and deception
emanates from a statutory Register. Therefore, the impugned
registration No.2897507 is liable to be expunged.
4.12 Reliance was placed by Mr. Dikshit, the learned
advocate appearing for the writ-applicant on the invoices
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placed on record to substantiate the submission that the said
mark remained unused by the registered proprietor. The bills
are placed on record to substantiate the aforesaid submission
wherein placing reliance on the same invoices it was submitted
that the said registration mark is never used by the registered
proprietor after having been granted the said registration.
4.13 Placing reliance on the aforesaid, it was submitted that
the invoices produced from pages 425 to 508 are self-
explanatory. That the said mark has remained unused and in
view thereof the prayers as prayed for be allowed for non-use
of the mark under Section 47(1)(a) of the Trade Marks Act.
Submissions on behalf of the respondent No.1 :-
5. Mr. Kedar G. Dave, the learned advocate appearing for
the respondent No.1 placed reliance on the affidavit-in-reply
filed by the respondent herein and submitted that there are
litigation pending between the parties before the Hon'ble Civil
Court and this Court may not entertain present writ-
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application.
5.1 It was submitted that as per the averments made in the
rectification application the writ-applicant herein is carrying on
the alleged business for goods i.e. piston, piston rings, and
various kinds of filters which fall under Class-07 of the NICE
classifications of the Trade Marks Rules.
5.2 It was submitted that the trade mark registration
certificates produced at Annexure-P3 and Annexure-P4 allegedly
registered in the name of writ-applicant herein are also for the
goods falling under class-07 only.
5.3 That, the respondent No.1 is using the trade mark/label
MAHLE for the goods, Lubricant Oil and Grease included in
class-04, which is different and distinct then the goods of the
writ-applicant herein.
5.4 That, the respondent No.1 is also the registered owner of
the trade mark/label MAHLE vide no. 2897507 in class-04.
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5.5 That, the respondent No.1 is using the trade mark/label
MAHLE since 01.02.2015 for the goods falling in class-04.
5.6 It was submitted that admittedly, the writ-applicant has
even not commenced its use, atleast in India, till February,
2021, for the goods falling in class 04. Hence, there will be
even no remote chance of confusion and deception amongst
the general public, purchasing public and trade channel.
5.7 It was submitted that the rival marks are phonetically,
visually and structurally different and distinct from each other
and there would be no chance of creation of likelyhood of
confusion and/or deception in the minds of general public,
purchasing public and trade channel. It was submitted that as
per the provisions as contained under Section 23(1) and (2) of
The Trade Marks Act, 1999; the registration of the mark of the
Respondent No.1 confers to the same and thereby the Trade
Marks Registry has been pleased to allocate the trademark
registration certificate to the respondent No.1 as there had
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been no objections filed by either the present Plaintiff or any
third party or that there were no oppositions received in the
matter of the respondent No.1 and in view thereof the Trade
Mark of the writ-applicant herein was published in Trade Mark
Journal.
5.8 Reliance was placed by Mr. Dave, the learned advocate
on the proceedings before the WIPO by filing their application
and upon receiving preliminary refusal from the Trade Marks
Registry, Delhi in which the mark of the present respondent
No.1 was cited for raising an objection. In lieu therewith, the
writ-applicant herein has again, for the second time, inspite of
being well aware about the existence of the respondent No.1 in
India, filed their trademark application which goes to show
and establish that, the writ-applicant herein although of being
well aware about the presence of the respondent No.1 in
Indian market, for his goods, with his brand name, has again
applied for the registration of their mark with a malafide
intention.
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5.9 Placing reliance on the aforesaid, it was submitted that
the writ-applicant herein was well aware about the
respondent's Registered Trade Mark in India for their goods
under two counts :-
(a) At the time of receiving the provisional refusal from the
WIPO.
(b) At the time of conducting a 'Search' with the data of the
Registry on their official website.
5.10 It was submitted that there is a clear admission on the
part of the writ-applicant herein in their trademark application
that they were not in the business for the goods falling under
class-04 till the time of filing their trademark application
which was as on 15.02.2021 and that too mentions the user
date as proposed to be used. Thus, the actual use of goods
falling under class-04 is still not brought to the notice of either
the Trade Marks Registry, Delhi or before the Hon'ble
Commercial Court, Ahmedabad [Suit filed by the writ-
applicant] or even before this Court under the present
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rectification application. Harping upon their global presence,
sales and advertisement figures, etc. by the writ-applicant
herein upon their mark, is with respect to the goods covered
under class-07 and not under class-04.
5.11 It was submitted that the writ-applicant herein to claim
for the removal of the trademark of the respondent No.1 under
the present rectification proceedings; a duty is cast upon the
writ-applicant herein to prove that they are an aggrieved party
and substantial loss is caused to them coupled with the aspect
of harm and injury so as to be able to make an averment that,
based on such substantial loss, harm and injury, the writ-
applicant have suffered and that based on the same have filed
the rectification application.
5.12 It was submitted that in the facts of the present case,
the writ-applicant herein silent qua the same and in view
thereof the present writ-application be dismissed and no
interference be called for.
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5.13 Placing reliance on Section 34 of the Act it was
submitted that the respondent No.1 herein are using their trade
mark openly, continuously and extensively since the year 2015
whereas admittedly the writ-applicant herein has filed their
trademark application for goods under class 04 as on
15.02.2021; claiming their user date as 'Proposed to be used'.
Therefore, the respondent No.1 is a prior user as well as the
prior registered trademark holder qua their date of application
as well as their date of use and thus as per the provision of
Section 34 of The Trade Marks Act, 1999; the writ-applicant
herein cannot interfere with or restrain the use of respondent
No.1.
5.14 It was submitted that as per provisions of Section 12 of
the Trade Marks Act, 1999, the respondent No.1 has adopted
the trade mark MAHLE for goods included in class-04 honestly
and bonafidely in the year 2015 and since then the respondent
No.1 is using the same for the goods included in class-04
continuously, extensively and uninterruptedly. Further, the
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respondent No.1 has already narrated the purpose of its
adoption of the said trade mark MAHLE for the goods included
in class-04 in the reply, that as and when the respondent No.1
had applied in the year 2015, there was no other conflicting
mark in existence in class-04, either of the writ-applicant
herein or any other third party as per the records of the
Register maintained at the Trade Mark Registry. Hence, the
respondent No.1 is thus a honest user and bonafide adopter of
his registered trade mark MAHLE for goods included in class-
04.
5.15 Placing reliance on the aforesaid submissions, Mr. Dave,
the learned advocate appearing for the respondent submitted
that the writ-applicant herein has established that because of
adoption and use of the Trade Mark MAHLE by the respondent
No.1 the writ-applicant herein has suffered loss or damage and
hence all the ingredients have not been dealt with and,
therefore, the rectification application filed by the writ-
applicant herein under Special Civil Application is not
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maintainable and the same is liable to be dismissed.
Analysis :-
6. Having heard the learned advocates appearing for the
respective parties the following emerges for the consideration
of this Court :-
6.1 The writ-applicant herein has preferred the present
rectification application invoking Article 226 of the Constitution
of India in view of the fact that the Intellectual Property
Appellate Board dealing with the application for
revocation/cancellation of registration of trade mark patent
etc., on Promulgation of Tribunal Reforms (Rationalization of
Service) Ordinance, 2021 and Notification on 4.4.2021 the
Board which existed under the Trade Mark Act, 1999 having
been abolished. At the time when the writ-application was
filed in absence of Appellate Authority the writ-applicant
herein approached this Court for the reliefs as prayed above.
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6.2 The writ-applicant's registration of mark MAHLE under
No.201696 in Class (7) is secured in India. The writ-applicant
herein has been using the same over a century. The writ-
applicant herein has been using the mark named MAHLE upon
and in relation to products/services/business at least since the
year 1938 and derives the trade mark/service mark in the
MAHLE, derives its original from the surname of the Hermann
Mahle and Ernst Mahle. The trade mark/service mark also
forms an essential part of the writ-applicant's corporate name
and is a house hold name in many countries including India.
The present writ-applicant has presence in various countries as
illustrated in paragraph-2.6 to the writ-application. The writ-
applicant has expended significant time, effort and resources in
obtaining registrations for its trade/service mark MAHLE
worldwide and continues to expend the same to to maintain
registrations and prosecute new applications in several classes
in various countries/jurisdiction of the world. The aforesaid is
substantiated in para-2.7 of the writ-application. The writ-
applicant enjoys extensive registrations for its trade/service
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mark MAHLE in India whereof the details are duly produced in
para-2.8 in the writ-application. The writ-applicant herein
applied for the said mark MAHLE under in Class-4 on
15.2.2021 vide trade mark application No.4863366 under Class-
4 for Registration of Trade Mark MAHLE and trade mark was
objected. The mark 'MAHLE' used by the writ-applicant and
the respondent are deceptively similar.
6.3 At the said point of time, it came to the notice of the
writ-applicant herein that the respondent herein is the
registered proprietor of the trade mark MAHLE under Class-4
with respect to "lubricant oils and grease included in Class-4"
having been issued Certificate No.1356878 on 26.9.2016 with a
validity until 10.2.2025. The writ-applicant herein inquired
with respect to the registered user and on inquiry it came to
the notice of the writ-applicant herein that the respondent
herein is not a bonafide user of the registered mark and in
view thereof the same is liable to be expunged under the
provisions of Section 47(1)(a) of the Act.
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7. It is apposite to refer to 47 of the Trade Marks Act, 1999
which read thus :-
"Section 47 in The Trade Marks Act, 1999
47. Removal from register and imposition of limitations on
ground of non-use.--
(1) A registered trade mark may be taken off the register in
respect of the goods or services in respect of which it is
registered on application made in the prescribed manner to
the Registrar or the Appellate Board by any person aggrieved
on the ground either--
(a) that the trade mark was registered without any bona fide
intention on the part of the applicant for registration that it
should be used in relation to those goods or services by him
or, in a case to which the provisions of section 46 apply, by
the company concerned or the registered user, as the case
may be, and that there has, in fact, been no bona fide use of
the trade mark in relation to those goods or services by any
proprietor thereof for the time being up to a date three
months before the date of the application; or
(b) that up to a date three months before the date of the
application, a continuous period of five years from the date
on which the trade mark is actually entered in the register or
longer had elapsed during which the trade mark was
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registered and during which there was no bona fide use
thereof in relation to those goods or services by any
proprietor thereof for the time being: Provided that except
where the applicant has been permitted under section 12 to
register an identical or nearly resembling trade mark in
respect of the goods or services in question, or where the
tribunal is of opinion that he might properly be permitted so
to register such a trade mark, the tribunal may refuse an
application under clause (a) or clause (b) in relation to any
goods or services, if it is shown that there has been, before
the relevant date or during the relevant period, as the case
may be, bona fide use of the trade mark by any proprietor
thereof for the time being in relation to--
(i) goods or services of the same description; or
(ii) goods or services associated with those goods or services
of that description being goods or services, as the case may
be, in respect of which the trade mark is registered.
(2) Where in relation to any goods or services in respect of
which a trade mark is registered--
(a) the circumstances referred to in clause (b) of sub-section
(1) are shown to exist so far as regards non-use of the trade
mark in relation to goods to be sold, or otherwise traded in a
particular place in India (otherwise than for export from
India), or in relation to goods to be exported to a particular
market outside India; or in relation to services for use or
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available for acceptance in a particular place in India or for
use in a particular market outside India; and
(b) a person has been permitted under section 12 to register
an identical or nearly resembling trade mark in respect of
those goods, under a registration extending to use in relation
to goods to be so sold, or otherwise traded in, or in relation
to goods to be so exported, or in relation to services for use
or available for acceptance in that place or for use in that
country, or the tribunal is of opinion that he might properly
be permitted so to register such a trade mark, on application
by that person in the prescribed manner to the Appellate
Board or to the Registrar, the tribunal may impose on the
registration of the first-mentioned trade mark such limitations
as it thinks proper for securing that registration shall cease to
extend to such use.
(3) An applicant shall not be entitled to rely for the purpose
of clause (b) of sub-section (1) or for the purposes of sub-
section (2) on any non-use of a trade mark which is shown to
have been due to special circumstances in the trade, which
includes restrictions on the use of the trade mark in India
imposed by any law or regulation and not to any intention to
abandon or not to use the trade mark in relation to the goods
or services to which the application relates."
8. Considering Section 47 of the Act as referred above,
non-use of a registered trademark occurs when it is not used
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for more than a period of 05 years and 03 months, resultantly
loses the trademark in rectification proceedings. 'Use' of a
trademark means that when there is a bona fide intention for
the use of the mark in the ordinary course of trade and not
only to reserve the right to use the mark. Generally, the onus
of proof of non-use of the trademark lies on the person who
files the rectification application, but thereafter the burden
shifts to the proprietor of the trademark, where the proprietor
of the said trademark is required to prove that the proprietor
has actually used the mark, failing which the mark is liable
to be removed from the register. The proof of use and non-use
of a mark must be clear and convincing. "Bonafide use"
means use that is honest and genuine and "not pretended".
The primary purpose of law is to protect the bona fide users of
trademark from those who are using it with malafide intention.
Section 47 of the Act lays down that mere registration and no
use of a trademark can land a registered proprietor in trouble.
The mechanism under Section 47 of the Act provides proper
defence system against the malicious use of an important asset
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of a business.
In light of the aforesaid considering the invoices/delivery
challans which are produced on record from pages No. 415 to
508 by the respondent in the affidavit-in-reply from pages No.
198 to 527. From the perusal of the invoices, the said mark
i.e. MAHLE has not been used by the respondent for a
continues period of 05 years from the date on which the trade
mark is actually entered into register i.e. from 20.8.2016, the
date on which the respondent is the registered proprietor of
the trade mark MAHLE and in view thereof considering the
undisputed facts which emerge read thus :-
8.1 The respondent is a registered proprietor of trade mark
MAHLE since 20.8.2016. Considering the documents on record,
the said mark which is not used by the respondent between
2016-2021, in view thereof, the same is liable to be taken off.
The mark having been not used for the period of 05 years
under Section 47(1)(b) of the Act.
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8.2 The contention of the respondent that the writ-
applicant's application before the WIPO came to be rejected
taking into consideration the respondent's registered trade
mark.
In the opinion of this Court, in the said proceedings the
aforesaid was not in question considering the fact that the
respondent is a registered proprietor of the mark.
8.3 The contention raised by the learned advocate appearing
for the writ-applicant herein stands uncontroverted that the
said mark has not been used by the writ-applicant herein after
having been granted the same by the competent authority.
Position of law :-
9. In case of Shell Transource Ltd., vs. Shell International
Petroleum, Company Ltd., reported in 2012 SCC OnLine IPAB
29, it was observed by the IPAD that the onus of proving
non-user is on the person who pleads the same.
In the facts of the present case, the writ-applicant herein
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has pleaded that the respondent is not using the impugned
mark. The same is required to be specifically denied. The
respondent not specifically denied the allegation of non-use by
stating the facts on which the denial is made. In absence of
specific denial and also furnishing of the investigator affidavit
by the writ-applicant herein also confirming non-use of the
respondent. The only conclusion emerges is acceptance of
allegation of non-use.
Paragraphs 14 to 18 of the decision read thus :-
"14. We have considered the rival submissions and the materials
before us. There is no disagreement with the position that he who
pleads non-user must prove it. But when the applicant has pleaded
non-user, the respondent must specifically deny it stating the facts
on which he denies non-user. In the absence of specific denial we
can only hold that the allegations stands admitted. This is the
spirit of Order 8 Rule 3 and Rule 5 (CPC). There must be pleading
of a fact and then there must be acceptable evidence to prove the
same. The respondent should have pleaded that they have in fact
used the mark after registration and set out the details regarding
that. If the respondent does not plead that they had in fact used
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the mark it would be difficult for the applicant to prove non user.
In fact it is unnecessary. Not having pleaded that they had used
the mark the respondent cannot let in evidence to show how they
have used the mark. Let us take the example of a suit on a
promissory note. The plaintiff sues because of non-payment. The
defendant can plead non-execution of course. But if he accepts
execution then he should plead the facts to show when he returned
the loan. Then the plaintiff can prove that the repayment is false.
But if the defendant merely denies non-payment, the plaintiff
would find it very difficult to prove non-payment. The task is
many times more difficult in a case of non-user.
15. The applicant has shown that they have been trading in the
name of SHELL TRANSOURCE with regard to financial services.
They are aggrieved because of the Suit filed by the respondent.
The main defence of the respondent regarding the pleading of non-
user is that the applicant has not proved that the respondent has
not used the mark.
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16. The Revlon case (cited supra) is used to defeat rectification
applications on the ground that there is no evidence let in by the
applicant seeking rectification that the registered proprietor has not
used the mark. In the present case, apart from stating that "The
applicant has miserably failed to show how the respondent has
registered the mark SHELL AUTOSERV without a bonafide intention
to use the mark in relation to the services in respect of which it is
registered" the respondent has not pleaded that they have used it.
We have gone through the counter statement and we found that in
the primary objections, para 3 (iii) the above averment is found
and in the para-wise reply, in para 7, it is stated that viz-a-viz the
applicant's submission in para 22 the respondent submitted that
they had registered the mark with a bonafide intention to use the
said mark in India in relation to the services for which it is
registered. There is absolutely no pleading that they are using the
mark after registration. Unless the respondent had pleaded that
they are in fact using the mark, there is no duty cast on the
applicant to prove that they are not using. Without pleading to
that effect, the applicant's case is as good as admitted and the
respondent cannot in fact let any evidence of user and has not in
fact let in any evidence. The mark remains as a "proposed to be
used mark". As regards bonafide intention too, the respondent
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must state the facts to show such intention, otherwise it would be
difficult for the applicant to let in any evidence or file affidavits to
show bonafide intention i.e. what transpires in the minds of the
persons that who run the respondent company. For that, there
must be intrinsic evidence on the side of the respondent like
internal correspondence or advertisements etc., to show that there
was some intention to use. There is no pleading regarding the user.
If so, the applicant need not prove non-user. It is for the
respondent to first plead bonafide intention; which they have not
done. Therefore, in the absence of pleading regarding use or
bonafide intention to use, we have to accept the applicant's case.
In this case, we may look at the order of the Trademark Trial and
Appeal Board in Research. In Motion Limited v. NBOR
Corporation of 12.2.2009, where it is held that
"In sum, applicant has no documentation to demonstrate that it
had the requisite bona fide intent to use the mark BLACK MAIL
in commerce when it filed the present application. As evidenced
by its responses to discovery requests, applicant has no plans
relating to use of the mark, no plans relating to trade channels
or target customers, and no plans for expansion and growth of
its product line to be sold under the mark. So as to be clear,
the record it completely devoid or any evidence such as product
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design efforts, test marketing, correspondence with prospective
licenses, preparation or marketing plans or business plans,
creation of labels, marketing or promotional materials, and the
like.
Applicant has not rebutted opposer's showing that applicant
lacked the requisite bona fide intent. The fact that applicant
filed multiple applications for the mark, or that there is
correspondence between applicant and counsel regarding
applicant's applications, hardly establishes a bona fide intent to
use the mark. If the filing and prosecution of a trademark
application constituted a bona fide intent to use a mark, then in
effect, lack of a bona fide intent to use would never be a
ground for opposition or cancellation, since an inter partes
proceeding can only be brought if the defendant has filed an
application. The absence of documentation coupled with
applicant's failure to take testimony or offer any evidence
supporting its bona fide intent to use convince us that applicant
did not have a bona fide intent to use the mark.
Further, that Denny Jaeger, applicant's chief executive officer,
believed BLACK MAIL to be a good mark for future use does
not establish a bona fide intent to use. Likewise, applicant's
mere statement that it intends to use the mark, and its denial
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that it lacked a bona fide intent, do not establish, in fact, that
it had a bona fide intent to use the mark in commerce when it
filed the involved application. Evidence bearing on bona fide
intent is "objective" in the sense that it is evidence in the form
of real life facts and by the actions of the applicant, not by the
applicant's testimony as to its subjective state of mind. That is,
Congress did not intend the issue to be resolved simply by an
officer or applicant later testifying, "Yes, indeed, at the time we
filed that application, I did truly intend to use the mark at
some time in the future."
17. This is correct. In this case, there is no pleading rebutting the
allegation of non-user. The above passage indicates how bonafide
intention is pleaded and if necessary proved. The mere fact that a
mark is registered cannot be evidence of use or bonafide intention
to use, for then all s. 47 applications must fail.
18. In J.T. McCarthy, McCarthy on Trademarks and Unfair
Competition, §19 : 14 (4th ed. 2009) it is observed "here the
complete lack of documentation or testimony clearly outweighs any
subjective or sworn intent to use the mark."
In the context of non-use, it is well settled position of
law as referred above that the use has to be genuine in the
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relevant class of goods and services. Unless the non-use is
explained by way of special circumstances, the mark would be
liable to be removed from non-use.
9.1 The aforesaid was considered by the Hon'ble Apex Court
in the case of Neon Laboratories Ltd. v. Medical Technologies
Ltd., reported in (2016) 2 SCC 672, para-10 read thus :-
"10. Section 47 of the Act is in the same vein and statutory
strain inasmuch as it postulates the possibility of a registered
mark being taken off the register on an application being
made by any aggrieved person, inter alia, on the ground that
for a continuous period of five years and three months from
the date on which the trade mark was registered, there was
no bona fide use thereof. In the case in hand, prima facie, it
appears that for over five years after a registration
application was made by the appellant-defendant, the mark
was not used. Facially, the Act does not permit the hoarding
of or appropriation without utilisation of a trade mark; nay
the appellant-defendant has allowed or acquiesced in the user
of the respondent-plaintiffs for several years. The legislative
intent behind this section was to ordain that an applicant of
a trade mark does not have a permanent right by virtue of
its application alone. Such a right is lost if it is not exercised
within a reasonable time."
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In the facts of the present case no explanation comes
forth with respect to non-use by the respondent herein and the
same in view thereof is liable to be removed on the ground of
non-use of the registered mark itself. Pending the writ-
application and during the course of hearing also in absence of
any document with respect to use of mark 'MAHLE' by the
respondent, the writ-applicant herein requires consideration
under the provisions of Section 47 of the Act.
10. Mr. Dave, the learned advocate appearing for the
respondent submitted that the remedy lies by preferring an
application under Section 57 of the Act for removal or
cancellation of the trade mark on the ground of any
contravention or failure to observe a condition entered in the
register in relation thereto.
In the opinion of this Court, considering the ratio as
laid down in Blue Heaven Cosmetic Pvt. Ltd., as also on
perusal of Section 57 of the Act, upon an application being
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filed by any person aggrieved the High Court may pass order
cancelling or varying the registration if (1) there is any
contravention or failure to observe a condition entered in the
register in relation thereto (2) any entry made in the register
without sufficient cause (3) any entry is wrongly remaining in
the register (4) there is any error or defect in any entry in the
register. The aforesaid contention does not appeal to this Court
considering undisputed non-use of mark 'MAHLE' continuously
for a period of 05 years as provided under Section 47 of the
Act.
11. In view of the aforesaid, this Court is inclined to pass
the following order :-
In the facts of the present case, the mark MAHLE which
is registered by the respondent is clearly a mark which is
identical in all respect to the writ-applicant herein. The writ-
applicant herein not only has adopted the mark since the year
1938 but has also used the mark in India by sourcing its
products from India. The trade/service mark name MAHLE
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derives its origin from surname of the Hermann Mahle and
Ernst Mahle brothers and the writ-applicant herein has been
using the mark/name MAHLE upon and in relation to its
products/services/business at least since the year 1938. The
trade/service mark MAHLE also forms an essential part of the
writ-applicant's corporate name and is its house mark. Having
applied for the registration of the said mark 'MAHLE' in class-
04 and the same having been objected, the mark 'MAHLE'
having been used by the respondent the writ-applicant falls
under the definition 'person aggrieved'.
11.1 The aforesaid clearly shows that the applicant is not true
proprietor of the impugned mark under section 18(1) of the
Act.
11.2 The writ-applicant is using the mark since decades and
with long and continuous use the writ-applicant's mark has
acquired well knownness under section 11(6) of the Act.
11.3 Though the respondent is a registered proprietor having
not used the mark for more than 05 years, the same is
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required to be removed from the register.
12. This Court is inclined to exercise extraordinary
jurisdiction under Article 226 of the Constitution of India. The
present writ-application stands allowed in terms of para-6(a) of
the writ-application.
(VAIBHAVI D. NANAVATI,J)
K.K. SAIYED
After pronouncement of the judgment Mr. Kedar G. Dave,
the learned advocate appearing for the respondent No.1
requested to stay the operation and implementation of the
present judgment for a period of six weeks. Mr. Abhisst K.
Thaker, the learned advocate appearing for the writ-applicant
has strongly objected. Looking to the facts of the case and
circumstances of the case, operation and implementation of
present judgment shall stand stayed for a period of four weeks
from today.
(VAIBHAVI D. NANAVATI,J)
K.K. SAIYED
