The Intellectual Property Appellate Board (IPAB) recently passed an order for the removal of a trade mark (Tiger Brand label registered under No. 1330146 in class 34) from the Register of Trade Marks in a rectification petition being heard by it. The main ground on which the order was founded was that the proprietor of the mark had provided the wrong date of first use in relation to the mark.
It was averred by the applicant, a partnership firm, that in the year 1955, M/s. Jagan Nath & Sons the applicant's predecessor adopted the trade marks Tiger and Tiger (device) in respect of its products falling in class 34. Subsequently the marks were registered. The trade marks were used continuously until 1973. However, due to differences among the partners, the assets and liabilities were divided through arbitration and all rights and liabilities in the trade marks belonging to the firm along with the goodwill came to the share of one of the partner's namely Mr. Shiv Prasad Aggarwal. Thereafter, he started a firm under the name Shiva Tobacco Company in the year 1973. The change of name of proprietor was duly recorded before the Registrar of Trade Marks. The applicant averred that by virtue of continuous use of the trade mark by the predecessors, the time, effort and money spent in promoting, publicizing and popularizing the trade mark since its adoption, use and acquired goodwill and reputation among the public and trade the applicant is entitled to the benefit of the use of the trade marks. The use of the word mark Tiger and/or Tiger device or any other mark visually, phonetically or structurally similar is bound to cause confusion and deception amongst the consumers if used for identical, similar or allied goods.
The rectification was filed inter alia on the grounds that the registration of the trade mark Tiger Brand label under No. 1330146 in class 34 has been wrongly made, the respondent was not the proprietor of the trade mark on the date of application for registration as per section 18 of the Trade Marks Act, 1999 (the "Act"), the respondent has wrongly claimed to have been using the trade mark on the date of application and section 9(1) of the Act was and is an absolute bar to the registration, though the respondent obtained registration no use was made or has been made by it for the goods under registration.
The respondent filed its counter statement denying all the allegations made by the applicant. The respondent stated that it is engaged in the business of manufacture and trade of snuff and in the year 1962 honestly through its predecessor i.e. father adopted and started using the trade mark Tiger (label). Ever since 1962, the respondent has been using the said trade mark in relation to the goods i.e. snuff and continuously and extensively without any interruption in the States of Karnataka, Tamil Nadu and Andhra Pradesh. The respondent further claimed copyright in the original artistic features of the label mark. The respondent's trade mark was initially registered in the name of the respondent's father Mr. Md. Azeemuddin Patvegar under No. 320131 in class 34 as long back as 1976. However, this registration lapsed for non renewal. Mr. Md. Azeemuddin, passed away in April 1994. On the death of the father, the respondent took over the business and the trade mark under a mutual family understanding and arrangement between the legal heirs and has been using the trade mark since. With a view to safeguard its rights and interests, the respondent applied for registration under Nos. 1330146 in class 34. The respondent's sales turnover runs to several lakhs of rupees. The respondent's trade mark has become distinctive and associated with its goods and the public identifies the respondent as the source of origin of these goods.
The counsel for the applicant argued that the respondent has obtained registration by fraud. The registration has been obtained by giving the wrong date of first use. The counsel argued that the impugned trade mark was not distinctive on the date of application for registration, neither was it distinctive on the date of registration nor on the date of application for rectification. The respondent in the counter statement filed by it in the opposition proceedings in application No. 1495476 has admitted that the use was limited to the States of Karnataka, Andhra Pradesh and Tamil Nadu. The first registration under No. 320131 was therefore granted only on territorial basis. Though the respondent claims use from its predecessor, there is nothing in the counter statement as to the family understanding or arrangement. There is nothing to show how the trade mark devolved on the respondent. No family understanding or arrangement has been filed. Though a claim of use has been made since the year 1962 the user, if at all, is only since 1994 and not earlier.
The learned counsel for the respondent submitted that the onus is always on the applicant to prove its case. The impugned trade mark was used by the respondent's predecessor since 1962.
The IPAB noted that the respondent claimed use of the trade mark since January 1, 1962 through its predecessors in the application for registration filed on January 1, 2005. However, it found no material on record to prove the respondent's statement that it acquired the right and title to the business and trade mark under a family undertaking and arrangement after the death of the father. The IPAB was of the view that the respondent as applicant for registration has not proved its proprietorship to the trade mark. The registration was therefore, found to be in contravention to section 18 of the Act. IPAB observed that the date of use claimed in the application for registration is January 1, 1962 whereas the document from the Central Excise is dated November 23, 1976 which is in the name of Mr. Azeemuddin. If at all the respondent has been using, it would only be from 1994 after the death of Mr. Azeemuddin which is the admitted statement of the respondent. As regards the date of use being a wrong one, the IPAB was of the opinion that it was a case where the mark has to be rectified. The IPAB has previously held in several cases that a mark deserves to be cancelled for wrong user. Therefore the IPAB held that the impugned trade mark therefore, deserves to be rectified.
In view of this decision by the IPAB it becomes imperative for an applicant to state the correct date of first use of its mark when applying to register.
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