Madras High Court
M/S.White House vs White House Apparels Private ... on 15 September, 2023
2023:MHC:4269
1
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 15.09.2023
CORAM:
THE HON'BLE MR. JUSTICE SENTHILKUMAR RAMAMOORTHY
(T)OP(TM) No. 371 of 2023 (ORA/77/2020/TM/CHN),
(T)OP(TM) No. 372 of 2023 (ORA/79/2020/TM/CHN),
(T)OP(TM) No. 373 of 2023 (ORA/85/2020/TM/CHN),
(T)OP(TM) No. 374 of 2023 (ORA/86/2020/TM/CHN),
(T)OP(TM) No. 417 of 2023 (ORA/83/2020/TM/CHN),
(T)OP(TM) No. 418 of 2023 (ORA/84/2020/TM/CHN),
(T)OP(TM) No. 419 of 2023 (ORA/87/2020/TM/CHN),
(T)OP(TM) No. 436 of 2023 (ORA/82/2020/TM/CHN),
(T)OP(TM) No. 437 of 2023 (ORA/80/2020/TM/CHN),
(T)OP(TM) No. 438 of 2023 (ORA/81/2020/TM/CHN)
&
(T)OP(TM) No. 459 of 2023 (ORA/78/2020/TM/CHN)
M/s.White House, a Partnership Firm
rep by its Partner, Mohamed Yunus 1096,
EVR Periyar Road,
Periamet, Chennai 600 003 ... Petitioner in all OPs
Vs.
1.White House Apparels Private Limited
2-4-542, 1st Floor, Ramgopalpet,
Secunderabad 500003, AP India.
2.The Registrar of Trade Marks
Intellectual Property Office,
https://www.mhc.tn.gov.in/judis
1/14
2
G.S.T.Road, Guindy,
Chennai 600 032. ... Respondents in all OPs
PRAYER in (T)OP(TM) No. 371 of 2023: This Civil Miscellaneous
Appeal filed under Sections 47, 57 & 125 of the Trademarks Act,
1999, prays the present application be allowed and the subject
Trade Mark No.999040 in class 25 be removed from the Register.
PRAYER in (T)OP(TM) No. 372 of 2023: This Civil Miscellaneous
Appeal filed under Sections 47, 57 & 125 of the Trademarks Act,
1999, prays the present application be allowed and the subject
Trade Mark No.2716096 in class 25 be removed from the Register.
PRAYER in (T)OP(TM) No. 373 of 2023: This Civil Miscellaneous
Appeal filed under Sections 47, 57 & 125 of the Trademarks Act,
1999, prays the present application be allowed and the subject
Trade Mark No.2283785 in class 35 be removed from the Register.
PRAYER in (T)OP(TM) No. 374 of 2023: This Civil Miscellaneous
Appeal filed under Sections 47, 57 & 125 of the Trademarks Act,
1999, prays the present application be allowed and the subject
Trade Mark No.2283771 in class 24 be removed from the Register.
PRAYER in (T)OP(TM) No. 417 of 2023: This Civil Miscellaneous
Appeal filed under Sections 47, 57 & 125 of the Trademarks Act,
1999, prays the present application be allowed and the subject
Trade Mark No.2716101 in class 35 be removed from the Register.
PRAYER in (T)OP(TM) No. 418 of 2023: This Civil Miscellaneous
Appeal filed under Sections 47, 57 & 125 of the Trademarks Act,
1999, prays the present application be allowed and the subject
https://www.mhc.tn.gov.in/judis
Trade Mark No.2283777 in class 24 be removed from the Register.
PRAYER in (T)OP(TM) No. 419 of 2023: This Civil Miscellaneous
Appeal filed under Sections 47, 57 & 124 of the Trademarks Act,
1999, prays the present application be allowed and the subject
Trade Mark No.1997366 in class 24 be removed from the Register.
PRAYER in (T)OP(TM) No. 436 of 2023: This Civil Miscellaneous
Appeal filed under Sections 47, 57 & 125 of the Trademarks Act,
1999, prays the present application be allowed and the subject
Trade Mark No.2283773 in class 35 be removed from the Register.
PRAYER in (T)OP(TM) No. 437 of 2023: This Civil Miscellaneous
Appeal filed under Sections 47, 57 & 125 of the Trademarks Act,
1999, prays the present application be allowed and the subject
Trade Mark No.1997370 in class 25 be removed from the Register.
PRAYER in (T)OP(TM) No. 438 of 2023: This Civil Miscellaneous
Appeal filed under Sections 47, 57 & 125 of the Trademarks Act,
1999, prays the present application be allowed and the subject
Trade Mark No.2283778 in class 25 be removed from the Register.
PRAYER in (T)OP(TM) No. 459 of 2023: This Civil Miscellaneous
Appeal filed under Sections 47, 57 & 125 of the Trademarks Act,
1999, prays the present application be allowed and the subject
Trade Mark No.2283772 in class 25 be removed from the Register.
For Appellant : Mr.B.Karthik
for M/s. Lencorp Legal
For 1st Respondent : Mr.Vinod A.Bhagat
for M/s.Arjun T. Bhagat & Co.
https://www.mhc.tn.gov.in/judis
For 2nd Respondent : Mr.K.Subbu Ranga Bharathi,
Central Govt. Standing Counsel
COMMON ORDER
On 07.01.2020 and 14.01.2020, respectively, the petitioner
filed three applications for registration of the word mark 'WHITE
HOUSE' under classes 24, 25 and 35. In the examination report,
objections were raised by the Registrar of Trade Marks by citing
marks registered in favour of the first respondent. In the reply
thereto, the petitioner asserted use of the relevant mark from 1963
but proceeded to state that the mark applied for and the cited
marks are visually and phonetically dissimilar. These petitions for
rectification were filed in the above factual context.
2. Oral arguments on behalf of the petitioner were
addressed by Mr.B.Karthik, learned counsel; on behalf of the first
respondent by Mr.Vinod Bhagat, learned counsel; and on behalf of
the second respondent by Mr.Subbu Ranga Bharathi, learned
Central Government Standing Counsel.
https://www.mhc.tn.gov.in/judis
3. Learned counsel for the petitioner asserted that the
petitioner has used the mark 'WHITE HOUSE' from 01.04.1963 in
relation to apparel and textiles. In support of this contention,
learned counsel relied upon the acknowledgement of registration
of the partnership firm, M/s.White House, on 18.09.1981. He also
placed for consideration the certificate of incorporation of an entity
called 'White House Process Private Limited' on 05.10.1990. The
extract from the Register of Firms with regard to the firm 'WHITE
HOUSE' was also placed for consideration. Learned counsel relied
on the registration certificate issued in the name of the exporter,
WHITE HOUSE, by the Apparel Export Promotion Council (the
AEPC) and pointed out that it establishes registration on
27.06.1985. The application submitted by the petitioner to the
Reserve Bank of India for allotment of an Import Export Code was
also placed for consideration.
4. By relying upon certificates issued by a Chartered
Accountant, learned counsel submitted that the petitioner had a
turnover of about Rs.81,35,038.03 in the financial year 1984-85. In
https://www.mhc.tn.gov.in/judis
the financial year ended 31.03.1988, the turnover increased to
Rs.2,50,50,559.03 and in the following financial year (ended
31.03.1989) it further increased to Rs.3,72,22,325.63. After pointing
out that the turnover was about Rs.36,49,98,225.00 for the financial
year ended 31.03.1999, learned counsel referred to invoices
relating to the export of goods by the petitioner. In particular, he
pointed out that the invoice dated 22.04.2015 bears the mark
'WHITE HOUSE'.
5. Based on the above evidence, learned counsel
contended that the petitioner is the prior user of the mark 'WHITE
HOUSE' and that the rights of a prior user override the rights of a
subsequent user although such subsequent user may have
obtained registration in respect of the relevant marks. In support
of this contention, learned counsel relied upon the judgment of the
Hon'ble Supreme Court in Syed Mohideen v. P.Sulochana Bai,
(2016)(2) SCC 683. With regard to the application of the mark to
goods which are the subject of export, learned counsel relied on
Section 56 of the Trade Marks Act, 1999 (the Trade Marks Act). He
https://www.mhc.tn.gov.in/judis
further relied on the judgment of the Bombay High Court in
Wockhardt Limited v. Eden Healthcare Private Limited, particularly
paragraph 22 thereof. Learned counsel concluded his submissions
by contending that use of the mark as the trading style would also
qualify as use at least for purposes of class 35, and that all the
entries in relation to the mark 'WHITE HOUSE' in the name of the
first respondent should be directed to be removed from the
register.
6. In response to these submissions, learned counsel for
the first respondent contended that the said respondent had used
the mark 'WHITE HOUSE' from the year 1994. In support of this
contention, he relied on the registration certificates. As regards the
petitioner, he contended that the petitioner had not provided any
evidence of application of the mark 'WHITE HOUSE' to goods
until about April 2015. By contrast, learned counsel contended that
the first respondent has placed on record invoices dating from
May 1994. Learned counsel for the first respondent further
submitted that the petitioner advertised products bearing the
https://www.mhc.tn.gov.in/judis
mark 'WHITE HOUSE' extensively. In order to substantiate such
contention, invoices issued by advertising agencies were relied
upon. Learned counsel also relied on the advertisements
published in the print media.
7. After honestly adopting the mark by drawing on two
common English words, learned counsel submitted that the mark
was used openly, honestly and continuously over an extended
period of time. He further submitted that whenever an identical or
deceptively similar mark was attempted to be registered by third
parties, the first respondent opposed such registration before the
Trade Marks Registry.
8. The next contention of learned counsel was that the
petitioner responded to the examination report by contending that
the petitioner's mark is visually and phonetically different from
that of the petitioner. In proceedings before this Court, he
contended that the petitioner did a volte face and contended that
the petitioner is the prior user of the mark. As regards the reliance
https://www.mhc.tn.gov.in/judis
on Section 56 of the Trade Marks Act by learned counsel for the
petitioner, learned counsel for the first respondent submitted that
Section 2(2)(c) of the Trade Marks Act makes it abundantly clear
that a mark should be used either in relation to goods or services
to qualify as use of the mark for purposes of the Trade Marks Act.
Consequently, learned counsel contended that the reliance on
Section 56 by learned counsel for the petitioner is misplaced.
9. In conclusion, learned counsel for the first respondent
reiterated that the first respondent is the prior user of the mark
and that such mark was used extensively from the year 1994 and
that about 20 registrations were obtained by the first respondent in
classes 24, 25 and 35. Therefore, learned counsel submitted that
these petitions are completely devoid of merit and are liable to be
dismissed.
10. Upon taking stock of the rival contentions, the
principal question that arises for consideration is whether the
petitioner has established prior use of the mark 'WHITE HOUSE'.
https://www.mhc.tn.gov.in/judis
In order to answer this question, the evidence placed on record by
the petitioner should be examined. The petitioner relied on the
acknowledgement of registration of the partnership firm
“M/s.White House” on 18.09.1981. This document establishes that
a partnership firm was registered on the said date under the name
and style of “M/s.White House”. Similarly, the petitioner relied
upon the certificate of registration issued by the AEPC. This
certificate provides evidence that an exporter under the name and
style of 'WHITE HOUSE' was registered by the AEPC on
27.06.1985. Multiple certificates from the Chartered Accountant of
the petitioner firm were placed on record and relied upon. Each of
these certificates specifies the export turnover of the petitioner
during specific financial years. In addition, some of the certificates
indicate the products that were exported by the petitioner and the
turnover accrued from the export of specific products. None of
these certificates provide evidence that the mark 'WHITE HOUSE'
was applied in relation to the products exported by the petitioner.
https://www.mhc.tn.gov.in/judis
11. Turning to the invoices that were relied upon by the
petitioner, the first of these invoices is dated 21.07.2010. Under the
column 'mark', the abbreviation, W & H, is set out. The first
invoice bearing the mark 'White House' is the invoice dated
22.04.2015. When these invoices are compared and contrasted with
the invoices placed on record by the first respondent, it is evident
that the invoices of the first respondent are from May 1994
onwards and precede the invoices placed on record by the
petitioner by about two decades.
12. Learned counsel for the petitioner relied on Section 56
of the Trade Marks Act to contend that proof of export of goods
from 1984-1985, in the form of certificates issued by the Chartered
Accountant, would qualify as use for purposes of Section 56 of the
Trade Marks Act. Section 56(1) is set out below:
“ 56. Use of trade mark for export trade and use when
form of trade connection changes.—
(1) The application in India of trade mark to goods to be
exported from India or in relation to services for use
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outside India and any other act done in India in relation
to goods to be so exported or services so rendered outside
India which, if done in relation to goods to be sold or
services provided or otherwise traded in within India
would constitute use of a trade mark therein, shall be
deemed to constitute use of the trade mark in relation to
those goods or services for any purpose for which such
use is material under this Act or any other law.”
13. Section 56 provides that the application in India of a
trade mark to goods exported from India or in relation to services
for use outside India would be deemed to be use of the trade mark
for purposes of the Trade Marks Act. Thus, the foremost
requirement for the applicability of sub section (1) of Section 56 is
the application in India of the trade mark to goods or services, as
the case may be. As noticed earlier, the petitioner did not provide
any evidence of the application of the trade mark to goods until
about 22.04.2015. The certificates that were relied upon by the
petitioner do not constitute evidence of the application of the
mark 'WHITE HOUSE' to goods that were exported by the
petitioner. Especially when Section 56 of the Trade Marks Act is
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read in the context of Section 2(2)(c) thereof, the conclusion that
follows is that the petitioner failed to provide any evidence of use
until about April 2015. As a corollary, I conclude that the first
respondent's use of the mark preceded use by the petitioner by
several years.
14. For reasons set out above, it cannot be said that
entries were made in the Register of Trade Marks without
sufficient cause. Therefore, all these rectification petitions are
dismissed without any order as to costs.
15.09.2023
Index : Yes/No
Internet : Yes/No
Neutral Citation : Yes/No
kal
https://www.mhc.tn.gov.in/judis
SENTHILKUMAR RAMAMOORTHY, J.
kal
(T)OP(TM) No. 371 of 2023 (ORA/77/2020/TM/CHN),
(T)OP(TM) No. 372 of 2023 (ORA/79/2020/TM/CHN),
(T)OP(TM) No. 373 of 2023 (ORA/85/2020/TM/CHN),
(T)OP(TM) No. 374 of 2023 (ORA/86/2020/TM/CHN),
(T)OP(TM) No. 417 of 2023 (ORA/83/2020/TM/CHN),
(T)OP(TM) No. 418 of 2023 (ORA/84/2020/TM/CHN),
(T)OP(TM) No. 419 of 2023 (ORA/87/2020/TM/CHN),
(T)OP(TM) No. 436 of 2023 (ORA/82/2020/TM/CHN),
(T)OP(TM) No. 437 of 2023 (ORA/80/2020/TM/CHN),
(T)OP(TM) No. 438 of 2023 (ORA/81/2020/TM/CHN)
&
(T)OP(TM) No. 459 of 2023 (ORA/78/2020/TM/CHN)
15.09.2023
https://www.mhc.tn.gov.in/judis
