A. HABEEBUR RAHMAN SONS Vs. K. RAJENDER

JUDGEMENT

(1.) THIS is an application for removal of trade mark No. 1072315 in Class 34 from the Register of Trade Marks or rectification of the Register under Section 47/57/125 of the Trade Marks Act, 1999 (hereinafter referred to the Act).

(2.) THE case of M/s A. Habeebur Rahman Sons, represented by its Managing Partner Shri A. Mohamad Ashraf, is that the applicant firm is the leading manufacturer of 'Beedies' and had been carrying on business for a long time. In the course of the said business, the applicant had honestly conceived and adopted the trade mark 'S. Beedi' together with a letter 'S' in respect of 'Beedies' since 1930 and had been regularly using the said mark in the course of trade in connection with the aforesaid products sold by them. The applicants have also adopted the trade mark 'S. Beedi' together with the letter 'S' written in an artistic manner in respect of their beedi ring label, kattu label as well as packet label and they have been using the said trade mark and have done and are still doing extensive business and their products have become distinctive of products of the applicants' manufacture only and none else. The applicants have also been using the trade mark S. Mark Jadi Beedies together with the letter 'S' written in an artistic manner in their kattu and packet labels since 11.2.1993. The applicants have spent considerable amounts and efforts for promoting the sales of their product bearing the aforesaid trade mark 'S. Beedi'. There is an ever increasing demand of the applicants' product which is evident from the sales turnover of their Beedies sold under the trademark S. Beedi/S. Mark Jadi Beedies which was in the year 1960 -61 to the tune of Rs. 36,27,212.00 which arose to Rs. 54,82,47,168.40 in the year 2006 -07. The applicants have stated that the sales turn over for the years 1930 to 1959 -60 are not available since the accounts were destroyed for want of space. It is further stated that the unwary and illiterate purchasers refer to and identify the applicants' beedies the trade mark S. Mark Jadi Beedi/S. Beedi.

(3.) IT is also submitted that the respondent's initial adoption of the trade mark letter 'S' written in an artistic manner is dishonest and the respondent is not entitled to the registration of the impugned mark and the respondent at the time of making application for registration of the impugned mark was fully aware about the existence of the applicants' trade mark. The impugned trade mark of the respondent was not adapted to distinguish its products in terms of the provisions of Section 9 and the impugned mark offends the provisions of Section 11 of the Act. It is also submitted that the respondent is not the proprietor of the impugned trade mark under the provisions of Section 18(1) of the Act since the initial adoption of the impugned trade mark is dishonest, and the respondent is not entitled to claim registration under Section 12 of the Act. The impugned registration was made without any sufficient cause, remaining on the register without sufficient cause and the impugned registration has been obtained fraudulently and by making material misrepresentation as to the proprietorship over the impugned trade mark. It is also submitted that the applicants are engaged in the same trade as that of the respondent and in the goods for which the impugned mark is wrongly registered; such registration of the mark is causing embarrassment to the applicants in their business, besides loss of goodwill and reputation, and as such the applicants are the persons aggrieved within the meaning of Section 57 of the Act and are entitled to file the present rectification proceedings.