India: Regional Players as Bonafide Users??

Last Updated: 13 July 2006

The Trademark battle often runs into taking the shape of a suit for infringement, deception, claim of being a prior user, so on and so forth. While a claim for damages caused to reputation and goodwill is an integral part of the prayer, more often than not, the same includes a prayer to cancel the registration itself. In the instant case of Janardan Prasad Singh v. Jitendra Kumar 2006(32) PTC 843 (IPAB), an attempt to cancel such registration was made.

The petitioner-appellant Janardan Prasad Singh had moved an application for removal of the trademark as per Sections 47, 57 and 125 of the Trade Marks Act, 1999. The trademark was registered in the name of the respondent Jitendra Thakur. The petitioner in his application for rectification, claimed to be in the business of washing powder and washing soap under several trademarks including ‘HARAPATTA’. He claimed to have set up business in the year 1993 and since then continuously and extensively carrying out the same in the style JAYPEE CHEMICALS. He claimed to be doing business in and around certain districts of Bihar. He further claimed to have filed an application for the registration of ‘HARAPATTA’ in respect of washing powders, claiming to be a user since 1999.A notice was sent across by the petitioner, on learning of the use of the trademark by the respondent.

As per the petitioner, the respondents never used the mark in the districts of Bihar, where they had roaring business. They stated that while the registration had been made devoid of any bona fide intention, there was in fact no bona fide use in relation to those goods, until three months prior the date of filing the suit. Hence the entry in the Register was held to be wrong. Further, the petitioner claimed that the trademark offended Section 11, Clauses 2, 3 and 7 in particular. He further went on to state that the mark was not put into use either by himself or his registered user, in the States of Bihar and Jharkhand. He claimed to have acquired rights to the mark and devices vide honest adoption, continuous and extensive use. The trademark was also stated not to be deceptive, in violation of Section 9 of the Act. Suggesting that the trademark be rectified to exclude certain districts in Bihar and Jharkhand, photocopies of advertisements, IT returns and other certificates of the nature of sales and commercial tax were submitted.

The Respondent, filing his counter statement, controverted the submissions of the petitioner. Contending to have various other marks registered in his name, he denied the petitioner being the user of the same since 1991. Bringing out sales figures from 1996-97 to 2003-04, the same were indicative of goodwill and reputation earned by them in the market vide the mark ‘HARAPATTA’ and device. An affidavit was filed supported by photocopies of advertisements, court cases and bills. A copy of the deed of assignment made in favour of Jai Chemical Works was also submitted. Evidence in reply was filed by the Petitioner.

The Board held that the case being based on the provisions Section 47(a) of the Trade Marks Act, 1999, satisfied its conditions. Furthermore, in regard to Sections 57 and 125 of the Act, no merit was found and the petitioner did not emphasize on the same. His arguments were based on the ground that no bona fide use of the trademark could be made out in relation to Bihar and Jharkhand. In view of that under current, the rectification should be allowed. The expression was held to possess inherent vagueness, the petitioner held to be unclear in his submissions.

In respect of the bills and other documents placed on record, it was held that these emanated from the office of the respondent or his dealers. The court found a sizeable number issued in favour of firms in Bihar. The registration made in December 2003 was found to be effectual from December 1999, and no geographical specifications were made in the same. The Court held that there was no need to refer to the bills.

It was further stated that the petitioner had failed to prove the two vital elements for entitlement to Section 47(a), i.e. lack of bona fide intention at the time of registration, and no bona fide use of the Trademark in relation to the goods unto three months before the date of registration. The onus was stated to lie on the respondent at the time of seeking the mark, that the same was being used continuously.

The prayer to exclude certain regions in Bihar and Jharkhand was held to be of no merit. The court stated that it was usual for an entrepreneur to expand his business gradually and hence could not be an issue for rectification of the mark. In this regard, the application was dismissed.

In cases wherein the parties trade in similar goods and similar zones, the question of being a bonafide user needs to be answered. While the scale might tilt in favour of either of the parties, it is for the evidence and judiciary to decide on the issue.

© Lex Orbis 2006

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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