The Intellectual Property Appellate Board recently removed a trade mark that was deceptively similar to KHYBER RESTAURANT (stylized) in a trade mark rectification filed by partnership firm Khyber Restaurants, Mumbai in a case titled Sudheer Bahl V Khyber Restaurant & Anr ORS/119/2011/TM/AMD. In doing so, the Board relied on evidence filed by both the parties to establish the priority in use. The Board also observed that when the adoption of the mark is not honest then any amount of user, if any, does not entitle the party to have the benefit of concurrent user under Section 12 of the Act.
Facts before the Board: The dispute was regarding the exclusivity of use of the trade mark KHYBER between two restaurants. The applicant claimed the use of trade mark KHYBER and KHYBER RESTURANT for restaurant services since the year 1958 and had obtained registrations for the trade marks in classes 42, 33, 32 and 16 while the Respondent started the business under the name and style of Khyber Restaurant and Khyber in the year 1975. The Respondent claimed that they are the honest and bonafide users of the trade mark and with such a long usage since 1975, they are entitled for the benefit under Section 12 (honest concurrent use) of the Act. The real test before the Board was to see if the applicant would be injured by the presence of the impugned trade mark.
Decision of the Board: The Board deciding in favour of the applicant concluded that:
(a) The impugned application was advertised on 30.05.2005 and the Respondents on 24.05.205 filed a request on Form TM-16 for recoding their statement as to restricting their sales to the city of Surat. This TM-16 has not been considered by the authorities before issuing the certificate. If this was and has been considered, the trade mark ought to have been advertised.
(b) With respect to use of the marks, the Respondent filed various documents rental receipts, certificate of firm registration, medical certificate of employees, sales tax receipt etc. The Board held that the mere filing of these documents does not prove the commercial use of the trade mark impugned. There was no evidence in the invoice/bill to prove use since the year 1975 and therefore held that the mark is liable to be rectified.
(3) The Respondents have failed to prove their use of the mark since 1975 and therefore mark is liable to rectified.
(4) The Respondent failed to provide the reason for adoption of the mark. The Board held that when the adoption of the mark is not honest then any amount of user if any does not entitle the party to have the benefit of concurrent user under Section 12 of the Act. In the instant case, there is no proof of the use, the ground of concurrent use fails.
The reasoning provided by the Board is consistent with the various other matters wherein it was held that if the applicant had obtained the registration by wrong statement of use, the mark should go out of the Register. Lately, the decisions of the Intellectual Property Appellate Board have been highlighting on establishing 'User' of a mark as claimed in deciding rectification petitions and the stand of the Board is very clear that the rectification petitions are allowable against the registered proprietor if the registered proprietor is not able to prove the actual use as claimed of registered trademark for the goods for which the said mark is registered. Therefore, it becomes significant for trade mark owners to maintain a brand diary comprising evidence of use of the mark in a strict commercial sense.
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