IN THE HIGH COURT OF GUJARAT AT AHMEDABAD SPECIAL CIVIL APPLICATION No. 7411 of 2010 For Approval and Signature:
HONOURABLE THE ACTING CHIEF JUSTICE MR.BHASKAR BHATTACHARYA HONOURABLE MR.JUSTICE J.B.PARDIWALA ========================================================= 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, 1950 or any order made thereunder ?
5 Whether it is to be circulated to the civil judge ?
========================================================= SHANTIKUMAR RATILAL - Petitioner(s) Versus MAHENDRA KAUR & 2 - Respondent(s) ========================================================= Appearance :
DR RAJESH H ACHARYA for Petitioner(s) : 1, NOTICE SERVED for Respondent(s) : 1 - 2. MR PARTHIV B SHAH for Respondent(s) : 1, NOTICE NOT RECD BACK for Respondent(s) : 3, ========================================================= CORAM :
HONOURABLE THE ACTING CHIEF JUSTICE MR.BHASKAR BHATTACHARYA and HONOURABLE MR.JUSTICE J.B.PARDIWALA Date : 20/01/2012 CAV JUDGMENT (Per : HONOURABLE MR.JUSTICE J.B. PARDIWALA)
1. This petition under Articles 226 and 227 of the Constitution of India has been preferred by the petitioner challenging an order dated January 7, 2010 passed by the respondent No.3-Intellectual Property Appellate Board at Chennai (hereinafter referred to as 'the Board'), whereby the Board allowed the appeal preferred by the respondent No.1 herein against the order dated February 6, 2004 passed by the Assistant Registrar of Trade Marks, thereby dismissing the Opposition No.AMD-544 and allowing registration of Application No.445245 in Class III under the provision of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as 'the Act, 1958').
2. A brief resume of facts relevant for adjudicating this petition may be summarised thus :
2.1 On November 6, 1985 the petitioner herein preferred an application for registration of trade mark “MAJA” label in the name of one “Shantikumar Ratilal” trading as “Shashi Industries” under No.445245 in Class-III in respect of “Agarbatti” (incense stick) claiming use of the said mark since the year 1985 itself under the provisions of the Act, 1958.
2.2 After due compliances and procedures involving multiple interactions, the application came to be advertised on October 01, 1992, in Trade Mark Journal (“TMJ”) for the purpose of inviting objections under the provisions of Section 20 of the Act, 1958 from general public and owners of trade marks to registrability thereof.
2.3 On December 14, 1992 the respondent No.1 M/s.Maja Cosmetics filed a notice for opposition, as provided under the provision of Section 21(1) of the Act, 1958 on the prescribed form TM-5 on the ground that the respondent No.1 was the prior user of the mark “MAJA” since the year 1961 in relation to perfumery and cosmetics and since “Agarbatti” (incense stick) was one of the species of perfumery, the registration in the name of petitioner was barred under the provisions of Sections 9 and 11 of the Act, 1958.
2.4 On May 4, 1993 a counter statement under Section 21(2) of the Act, 1958 was filed on behalf of the petitioner in response to the notice of opposition, again in the name of “Shantikumar Ratilal” trading as M/s.Shashi Industries.
2.5 On November 18, 1993 the respondent No.1 adduced evidence in support of opposition in terms of Rule 53 of the Trade and Merchandise Marks Rules, 1959.
2.6 In January, 1994, the petitioner adduced evidence in support of application under Rule 54 by way of an affidavit of one Mr.Shashi Kant son of Ratilal Vadhar.
2.7 On March 22, 1994 the respondent adduced evidence in reply to the petitioner's affidavit under Rule 55. Record reveals that the petitioner specifically objected to the affidavit on the ground that the affidavit was contradictory to the counter statement and the TMJ as the name of the petitioner was “Shashi Kumar Rati Lal” while the affidavit was filed by one Shri Shashi Kant son of Rati Lal.
2.8 The petitioner, however, did not take any steps to correct the name of the applicant by way of filing prescribed amendment application.
2.9 The matter was finally argued and heard before the Registrar of Trade Marks at Ahmedabad (hereinafter referred to as 'the RTM'). The respondent No.1 took a specific objection to inherent contradictions in the application and counter statement on one hand and the evidence of the petitioner on the other hand.
2.10 On January 24, 1995 and February 18, 1995, the petitioner-original applicant filed two amendment applications on Form TM-16 after the matter was finally heard.
2.11 On March 13, 1995 the RTM allowed the opposition of the petitioner and refused registration to application under No.445245 in Class III.
2.12 In the meanwhile, on April 10, 1995 the petitioner preferred another application afresh for registration of the same trade mark under No.662133 in Class III claiming the benefit of same user since January 01, 1985.
2.13 The petitioner assailed the order dated March 13, 1995 before this Court under Section 109 of the Act, 1958 and pleaded that the application was filed in a wrong name due to inadvertence and the proprietor of the firm was Shashi Kant instead of Shanti Kumar as mentioned in original application as well as the counter statement filed in the year 1992.
2.14 On February 16, 2000 the petitioner preferred another application afresh for registration of the same trade mark under No.903876 in Class III for expanded description of goods including perfumery and cosmetics.
2.15 The learned Single Judge of this Court vide order dated December 01, 2000 allowed the appeal of the petitioner on the ground that the RTM ought not to have taken a technical view in the matter and could have called for further evidence to substantiate the amendments. We deem it fit and proper to quote the relevant observations made by the learned Single Judge while disposing of Appeal No.9 of 1995 preferred under Section 109 of the Act. While allowing the appeal vide order dated December 01, 2000, the learned Single Judge observed as under :
“.. .. ..The Assistant Registrar could have called upon the appellant to produce necessary materials to substantiate the amendment sought for. Section-22 of the Act empowers the Registrar to permit an amendment of the application and or to permit correction of any error in, or an amendment of, a notice of opposition or a counter-statement under section 21. Thus, a discretion could have been exercised in favour of the appellant especially the case on hand is a case of inadvertence of mentioning the correct name and especially when application as well as counter-statement have been filed under the signatures of the Attorneys. It is a specific case of the appellant that its Attorney at Bombay presented the application by inadvertently stating the name as Shantikumar instead of Shashikant and even at the stage of filing the counter- statement filed after about 7 & 1/2 years, the said mistake continued. The correspondence produced in the instant case clearly suggests that there was no fault on the part of the appellant and no sooner he came to know that his name has been wrongly stated in the proceedings, he has taken prompt action. Thus, this is a case where an obvious mistake has been committed by the Attorneys and for the same the appellant cannot be penalised. The appellant has, in fact, replaced the said Attorneys. From the documents of Income Tax, Sales Tax Certificate etc. prima facie it appears that Shashikant Ratilal is the proprietor of M/s. Shashi Industries, however, no final opinion can be expressed about the same. In my opinion, the appellant can produce the documents attached with this appeal and such other necessary materials to substantiate his say that Shri Shashikant and not Shantikumar is the sole proprietor of M/s.Shashi Industries. Hence, following order:
The appeal is allowed. The impugned decision dated 13.3.1995 taken in the matter of Application No. 445245 in Class - 3 rendered by Assistant Registrar of Trade Marks is set aside. The matter is remanded to the said authority with a direction to allow the parties to lead proper evidence in the matter to substantiate their say and to take appropriate decision afresh in accordance with law. There shall be no order as to costs.”
2.16 Pursuant to the order of remand passed by the learned Single Judge of this Court, the petitioner instead of complying with the directions to lead evidence, which could have been led only on affidavit in terms of Section 99 of the Act, 1958, preferred another amendment application on December 14, 2000 claiming that M/s.Shashi Industries was a partnership firm of which Shri Shashi Kant and Shri Tushar Vadhar are the partners. We took notice of the fact that the partnership deed is claimed to have been executed in the year 1994, but in the earlier amendment applications filed in the year 1995, there is no mention of such partnership.
2.17 On July 26, 2002 a notice in the amendment application dated December 14, 2000 was issued to respondents and comments were forwarded on August 13, 2002.
2.18 On September 4, 2003 the matter was finally heard by the RTM again.
2.19 On September 6, 2003 the petitioner filed a letter before RTM relying upon the documents filed before this Court in Appeal No.9 of 1995. The respondent No.1 herein brought to the notice of the RTM vide letter dated October 01, 2003, and pointed out complete facts, non- compliance of the directions issued by this Court and requested the RTM to ignore the letter dated September 6, 2003.
2.20 Record reveals that the RTM vide order dated February 6, 2004 rejected the opposition of the respondents and allowed the registration as well as all the amendment applications without appreciating that no notice of earlier applications of the year 1995 was ever issued and also overlooking and ignoring the directions issued by the learned Single Judge of this Court vide order dated December 01, 2000.
2.21 Aggrieved by the order passed by the RTM, the respondent No.1 preferred an appeal before the Board to which the petitioner filed his counter statement. The Board allowed the appeal of the respondent refusing registration to petitioner's application. The Board held that the directions issued by the learned Single Judge of this Court while disposing of Appeal No.9 of 1995, have not been complied with. We may quote the relevant portion of the order passed by the Board as under :
“17. In the impugned order under appeal before us the Registrar had dealt with the new application which was not before the High Court. We are also of the view that the application for registration was filed on 06.11.1985 and the mark was advertised in the Trade Mark Journal on 01.11.1992. The mark was opposed for registration and the notice of opposition was filed on 14.02.1992 and the counter statement was filed on 04.05.1993 by Shantikumar Ratilal as proprietor of M/s Shashi Industries. The affidavit of evidence in support of application has now been filed by Shashikant S/o Ratilal Vadhar as proprietor of M/s Shashi Industries in the year 1994. The appellant herein had raised this issue as to the change in the name in the application and the affidavit of evidence which was never clarified by the respondent, instead made an attempt to rectify the same after the matter was heard and orders reserved. The reason was that the change was because of the mistake (typographical error) of the counsel. Even assuming that to be correct, we do not understand how that application can be allowed without giving an opportunity to to the appellant to represent his case. The directions of the Hon'ble High Court have not been complied with. The contention of the first respondent was that they are a partnership firm and brought to our notice the certificate of Registration of firm wherein it bears date as of the year 1994., if that be the case, there is no proof as to how the applicant (first respondent herein) as a partnership firm acquired the proprietary right to the trade mark from the so called Shashikanth the sole proprietor. If there was a change as to the constitution from proprietary concern to partnership concern in the year 1994 then why this was not brought to the notice of the Registrar at the time of hearing the matter or to the notice of the High Court in the appeal. This itself creates a doubt in our mind.
18. In view of the above, we are of the opinion that the Registrar has gone beyond the directions of the Hon'ble High Court. The directions were to decide the application on Form TM-16 for amending the name of the applicant as the mistake has crept in due to the mistake of the counsel and it was that the party should not be made to suffer for the mistake committed by the counsel. The Registrar has not dealt with that application i.e. has not heard that application instead gone ahead with another application and passed orders allowing the application. Even without going into the merits of the case, we thing it is a fit case for allowing the appeal. The first respondent, in our opinion, has not come to court with clean hands as in one application he seeks for amending the name and in another he seeks for amending the constitution when that was not pleaded before the High Court.”
3. Aggrieved by the order passed by the Board, the petitioner has preferred this petition which though has been labelled as one under Articles 226 and 227 of the Constitution of India, but in substance it is under Article 227 of the Constitution of India.
4. We have heard learned counsel Mr.R.K. Shah appearing with the learned advocate Mr.Rajesh A. Acharya on behalf of the petitioner and the learned counsel Mr.Niraj Grover appearing with the learned advocate Mr.Parthiv B. Shah on behalf of respondent No.1.
5. We have also perused the materials on record. It appears that the main thrust of the petitioner's defence all throughout has been that filing of the application in a wrong name was the mistake of his counsel and he himself signed the power of attorney to file the application. This stand led this Court to pass the following order on February 24, 2011 :
“To find out the genuinity of the claim made by the petitioner that by mistake in place of Shashikant Ratilal Vadhar, the application for registration was filed with the wrong name of Shri Shantikumar Ratilal, we direct the petitioner to file true copy/certified copy of the application (format) filed in the year 1985 and also a certified copy of the Vakalatnama filed before the Deputy Registrar. The petitioner will also reply as to why the Court will adjudicate the matter, if second application for registration of the very same product has been filed with correct name, address, etc. in the year 1995. Post the matter on 06.04.2011 at 02.30 p.m.”
6. The petitioner filed the affidavit in response to the directions issued by this Court on February 22, 2011 contending that he applied for certified copies, but the registrar responded by affirming that the file of the matter has been misplaced since the power of attorney was sent to Mumbai and was never received back. The letter of the Registrar further points out that the petitioner was earlier requested in the year 2001 to provide a copy of the file which was not responded to. As the second part of the directions contained in order dated February 22, 2011 were not complied with, this Court again directed the petitioner to comply with the directions and reply as to why this Court should adjudicate the matter, when the second application with correct particulars was already filed in the year 1995. The second affidavit was filed by the petitioner admitting that two fresh applications were filed.
7. The facts, as disclosed above, make it abundantly clear that the order dated January 7, 2010 passed by the Board is absolutely in accordance with law and no error much less an error of law can be said to have been committed by the Board.
8. We are of the view that the Board has rightly observed that the Registrar dealt with the application which was not before this Court and the directions of this Court have not been complied with. The Board has also rightly observed that the Registrar has gone beyond the directions of this Court. The directions issued to decide the application on Form TM-16 for amending the name of the petitioner, as a mistake had crept in due to lapse on the part of the counsel, but the Registrar failed to deal with the said application and instead proceeded to decide another application and passed orders allowing the said application.
9. In the present case, the petitioner has miserably failed to substantiate its claim that application was erroneously or inadvertently filed in wrong name. The original file of the application is already lost and cannot be reconstructed as admittedly even the petitioner does not have true copies of papers and his counsel has destroyed his file.
10. The petitioner has failed to justify as to why the application for amendment was moved after orders were reserved in 1995 while the petitioner filed affidavit of evidence in correct name in January, 1994 itself.
11. The petitioner has further failed to justify as to why the partnership deed which came into existence on April 1, 1994 was not disclosed in amendment applications filed in 1995.
12. The petitioner has further failed to justify as to what prejudice would be caused to it as its two more applications for the same mark in correct name are pending adjudication. It is pertinent to point out that the trade mark rights are governed by priority in use date and not the registration date. In any case, the petitioner claimed priority of use since the year 1985 in all applications and thus date of registration (if at all granted) will not affect the petitioner. The reliance on Sections 30 and 34 of the Trade Marks Act, 1999 in this regard is thus misconceived.
13. In the aforesaid view of the matter, we are convinced that the petitioner is not entitled to any relief and the petition deserves to be rejected.
14. In the result, the petition fails and the same is hereby rejected. However, there shall be no order as to costs. Notice is discharged.
(Bhaskar Bhattacharya, Acting C.J.)
(J.B. Pardiwala, J.)
Aakar