India: World Wide Brand’s Petition Dismissed: No Infirmity In IPAB Order Found

Last Updated: 18 June 2009

The present case at hand constitutes Civil Revision Petitions invoking Article 227 of the Constitution of India, which was initiated by M/s. World Wide Brands Inc [World Wide Brands Inc. vs. Dayavanti Jhamnadas Hinduja & Anr. 2009 (39) PTC 457 (Mad.) (DB)] against an earlier order passed by the Intellectual Property Appellate Board (IPAB). Smt. Dayavanti Hinduja and other co-parties in the matter (hereinafter referred to as Hindujas), being partners of a registered partnership firm and trading as M/s Central Wearhouse at Bangalore had filed six trademark applications under Class 25 for registration of the "Camel Collection" in respect of "all types of readymade garments, including foot wear and head gear" before the Assistant Registrar of Trade Marks, Chennai. The applications had been ordered to be advertised in the Trade Mark Journal, to which M/s World Wide Brand Inc.(incorporated and existing under the law of the State of Delaware, United States of America) filed a notice of opposition along with a request on TM-44. The objections raised mainly constituted that World Wide Brands were carrying on an established international business as merchants of clothing, suits, coats, vests, trousers, shirts, sweaters, belts, neckties, scarves, hats, caps, foot wear and head gear and in the pursuance own and use, the trade mark "Camel Collection" and the device of camel which are registered and/or applied for registrations in other countries of the world. They also contended that the name had been applied for under Class 25 and by virtue of registrations and long standing use of the same, they held exclusive proprietary rights therein. They averred that the members of the trade and public recognized the said marks as distinctive of the products and business of their company alone, including the Hindujas whose adoption owing to their awareness of the marks' use and reputation, had dishonestly adopted the same with a view to trade upon and benefit from its goodwill. They also stated that the use of the trade mark "Camel Collection" would cause confusion and lead to dilution of distinctiveness of the trademarks of World Wide and would be contrary to Section 11(a) in addition to 9, 11(e) and 18(1) of the Trade and Merchandise Marks Act, 1958.

The Hindujas disputed World Wide' claim by contending that they had adopted the trade mark "Camel Collection" along with device of camel and were using the same since 1992 openly and continuously without any encounter for several years. They denied World Wide to have acquired reputation goodwill and distinctiveness by virtue of long and continuous extensive use. Hindujas contended that their applications were well within the provisions of the Trade and Merchandise Marks Act, 1958. Both parties filed evidence; however the Assistant Registrar of Trade Marks on consideration of the rival claims including the evidence, disallowed the opposition and ordered to proceed for the registration of the applications filed by the Hindujas.

In pursuance of the order of the Assistant Registrar, World Wide moved before the IPAB, who in consideration of the documents filed, found that World Wide had registered the camel brand in various forms either as a word mark or with a device mark with various countries and the advertisements produced were admittedly made in other countries and not in India. The IPAB also considered the calendar of the year 1954 filed by them to support their plea that Camel brand cigarettes were familiar in India and found that the calendar was in Spanish language and also found that there was no evidence to show that the materials were also in circulation in India. The appellate Board found that those advertisements had in fact related to cigarettes and that the same were available in duty free shops in Indian Airports. The contention as to transborder reputation having been acquired in respect of Camel brand Cigarettes was dismissed and refused to accept the opposition filed by World Wide. With respect to the plea of prior use, IPAB found that the goods are totally different and that there could not be any confusion. Finding that the petitioner had failed to produce any evidence in regard to the Camel and publicity either in magazines or otherwise as a trade mark in India, the IPAB found that World Wide failed to discharge their initial burden of proving the reputation.

As regards Section 11(1) (a) of the Trade Marks Act, 1999 which came into force when the applications for registration were taken up for consideration, after analyzing the documents produced by World Wide with regard to an agreement entered into by them with Dornbusch & Co, permitting the licensee to manufacture shirts, sweat/T-Shirts, knitwear, etc., the IPAB found that in as much as the territory for the licensee was mentioned as Benelux, Switzerland, Denmark, and Israel and the licence agreement was in respect of use of trade mark set forth in Schedule-A of the licensed articles and in connection with the manufacture, advertisement, permission, sale and distribution thereof in the territory described therein. The IPAB noting the entire issue rejected all the objections and had ultimately dismissed the appeals, in challenge to which the present civil revision petitions were filed.

The High Court of Madras in addressing the issues first examined the scope of interference of the orders in exercise of the power under Section 227 of the Constitution of India. In this pursuance, the case of Waryam Singh v. Amarnath, AIR 1954 SC 215 was reiterated whereby the Apex Court held that the power of superintendence conferred by Article 227 of the Constitution is to be exercised more sparingly and only in appropriate case in order to keep the Subordinate Courts within the bounds of their authority and not for correcting mere errors. Attention was also paid to T. Prem Sagar v. M/s. Standard Vacuum Oil Company, AIR 1965 SC 111, where it was held that

"In writ proceedings if an error of law apparent on the fact of the records is disclosed and the writ is issue, the usual course to adopt is to correct the error and send the case back to the special Tribunal for its decision in accordance with law. It would be inappropriate for the High Court exercising its writ jurisdiction to consider the evidence for itself and reach its own conclusions in matters which have been left by the legislature to the decisions of specially constituted Tribunals."

The case of State v. Navjot Sandhu, (2003) 6 SCC 641, in addition to others was also referred to in order to examine the jurisdiction of Courts under Art. 227 and concluded that the Superintendence power of the High Court under Article 227 of the Constitution of India, was to keep the subordinate courts/tribunals/appellate authorities constituted under statutes within their bounds and not for correcting mere errors. The exercise of power was found to be limited to want of jurisdiction, errors of law, perverse findings and gross violation of principles of natural justice. Further, it was concluded that unless the errors questioned are apparently erroneous, perverse and the findings are not supported by any materials, the exercise of power under Article 227 of the Constitution to interfere with in such orders may not be available.

Keeping the judicial dicta in mind, the Court took consideration of the grievance of M/s World Wide Brands Inc. The Court noted the IPAB's finding that the trademark "Camel" in various forms either as a word mark or with device mark had been registered in various countries. Considering the submissions made by either party, the Court opined that with the exception that the Exhibits bore the brand name "camel", there was no other indication that World Wide had any connection with those documents. In respect of the trade mark owned by RJ Reynold Tobacco Company (RJR), they found that no evidence had been placed either before the registering authority or the appellate Board, as to how World Wide became the owner of the trade mark, except producing some list of registrations. The Court noted that different pleas had been taken as to the ownership of the trade mark 'camel', yet no evidence was on record to show as to how they derived the ownership of the trade mark "camel collection" etc., from RJR.

Stating that the IPAB had not considered the aspect of dishonest adoption of the trademark and transborder reputation and passing off, the High Court stated that it was inclined to refer the matter to the IPAB and in the absence of findings that were totally perverse or where the same was contrary to admitted facts, the High Court said that it could not interfere. Taking note of the IPAB's finding in the matter, the High Court held that the same could not be deemed perverse and even in an event where two views were possible, the view adopted but the Board could not be interfered with and disagreed with World Wide's submission vis-à-vis dishonest adoption.

Addressing the submission relating to the transborder reputation, the Court referred to the established principles in law as also the IPAB' finding on the same and stated the same to be on due appreciation of documents. The Court held that documents adduced for the first time in the course of proceedings could not be considered and the challenge to the registration of the trade marks "camel collection" in favour of the Hindujas contrary to Sections 9, 11(a), 11(e) and 18(1) of the Trade Marks and Merchandise Act, 1958 was also opined liable to be rejected. The Court in the light of having found no infirmity or patent error in the order of the IPAB dismissed the Civil Revision Petitions.

© Lex Orbis 2009

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