V.RAVI,TECHNICAL MEMBER - (1.) THE applicant are seeking the removal of the label mark TAJ BIDI from the register along with a device of a ship with the human face depicted in the opposite side of the label circumscribed with the firm name Mahesh Chand Dinesh Kumar, Baran at the bottom of the label under application no. 1294306 in Class 34 on the following grounds : - a. It is alleged that the respondent has secured registration of the impugned trade mark label by misrepresenting facts before the Registrar. The registration has been obtained in bad faith and with unclean hand. b. The applicants were carrying on business of selling and manufacturing bidis under the name and style of MAHESH CHAND DINESH KUMAR at Baran, Rajasthan using a label mark Taj bidi represented in a special manner and registered under no. 270560 claiming user since 1967. The artistic work of the said label is also registered under the Copyright Act. The applicant subsequently adopted another label Mark containing device of human faces in two square facing each other and the picture of Lord Ganesh as also the picture of a Ship in a circle bearing the device of Taj with the word Taj bidi and numeral 270560. The artwork of the label has also been registered under the Copyright act. Further, the squares have the word MAHESHCHAND DINESH KUMAR. The applicants have been in bidi business since 1965 -66 using the above two trade marks. c. The original founder of the applicants' firm Shri Krishna Pauranik died in 1973. Thereafter his widow Bhagwathi Bhai continued the business of her deceased husband and their only son Shri Davinder Kumar was a minor till 1974. Though there was a will in the name of Shri Davinder Kumar, the brothers of late Shri Krishna Pauranik took over the business and have constituted a firm taking other family members as partners. In November, 1974 a partnership was formed consisting of Smt. Bhagwati Bai, Shri. Vitthalprasad, Shri. Maheshchand, Shri. Dineshkumar, Smt. Gopi Bai and Shri. Jitendrakumar. These partners continued the business of the firm under the name and style of M/s Mahesh Chand Dinesh Kumar. d. In August, 1989 Smt. Gopi Bai died and the partnership was reconstituted with the remaining partners. Request in Form -24 was filed before the trade marks Registry on 28th March, 1994 to bring the remaining partners on record of the reconstituted firm by way of assignment . Due to lack of cordial relation between the partners Shri Davinder Kumar Pauranik filed a separate request in Form TM -24 on 25th March, 1994 claiming himself as the only survivor and assignee. He relied on the will of his deceased father dated 14th January, 1973 to establish his claim on transmission as the heir. e. The Registrar of Trade Marks by his order dated 15.12.1997 allowed the TM 24 request dated 28.03.1994 and the assignment in favour of the remaining partners was permitted but he disallowed the TM -24 request dated 25.03.1984 and did not enter the name Shri Davinder Kumar Pauranik as the proprietor. The Registrar had held that Shri Davinder Kumar Pauranik failed to establish his right, interest and title for his request on TM -24 dated 25.03.1994. An appeal was filed against this order before the Hon'ble Gujarat High Court which was later transferred to the Board and re -numbered as TA/Rectt./No.271/2004/TM/AMD. The said appeal was filed by Shri Devendra Kumar Pauranik and his mother, Smt. Bhagwati Bai against Mr. Vitthalprasad and five others. It was heard by the Board and by order No.144/2004 dated 09.09.2004; IPAB held that the Registrar had exceeded his jurisdiction in interpreting the genuineness of the will and its admissibility as such dispute in respect of assignment or transmission is to be decided by Civil Court of Competent Jurisdiction under the provisions of Section 44(1). f. The applicant's mother Smt. Bhagwati Bai filed a Civil Suit No.04/2002 before the Addl. District Judge, Baran . In the said suit, on the basis of the will of late Shri Krishna Pauranik and the counter statement of defendant no.1, who are the partners of the firm, M/s Maheshchand Dineshkumar and on their admission in the counter statement, the fact emerges that the ownership of the business, the trademark and the copyright in the labels of the firm was that of Smt. Bhagwati Bai. g. The applicant states that the original partnership constituted on 14.11.1974 included Smt. Bhagwati Bai as one of the partners and on the death of her late husband Shri Krishna Pauranik, the said partnership was dissolved by giving a legal notice dated 15.11.1997 as it was formed as "partnership at will". Hence, after that date of dissolution the remaining four partners of the firm of Maheshchand Dinesh Kumar could not legally file application no.1294306 for the registration of the impugned trade mark label using identical art work and also the respondent had illegally secured the copyright in respect of the artwork of the label bearing and consisting of the word MAHESHCHAND DINESH KUMAR from the Copyright Office. The respondent had played a fraud with the Registrar of Copyright in as much as the trade mark label included the numeral 270560 which is the registered trade mark number of the applicant's label TAJ BIDI. The respondent's registered trade mark label and copyright are material reproduction of the applicant's trade mark label. h. In the foregoing circumstances the entry relating to the registered trade mark label Taj bidi under no 1294306 in Class 34 is wrongly remaining in the register without sufficient cause and obtained by false statement of proprietorship. The applicant are the owner of the trade mark Taj bidi claiming user since 1967 and registered under no.270560 as of 9th March, 1971. The respondent's trade mark was applied for on 5th July, 2004 claiming user since 1st April, 1998 which is substantial reproduction of applicant's mark. The impugned mark is, therefore, barred under section 9(1)(a), 11(1)( a)&( b) and 18(1) of the Act. The applicants allege that there was no assignment and transmission in favour of Shri Vitthal Prasad and others trading as M/s. Maheshchand Dinesh Kumar and registered trade mark no 1294306 should be removed from the register forthwith. The respondent did however not file their counter statement but furnished a written note at the time of hearing.
(2.) WRITTEN NOTE OF ARGUMENT ON BEHALF OF RESPONDENT/ REGISTERED PROPRIETOR The respondents submit the registered trademark which is the subject matter of present proceedings belongs to them. The relevant and material facts are concisely stated below: - i). A business of manufacture and sale of bidis was established by late Shri Mati Lal Pauranik under the name and style M/s Mahesh Chander Dinesh Kumar in the year 1955. Both Mahesh Chand and Dinesh Kumar are the sons of late Shri. Mati Lal Pauranik the other sons being Shri. Shrikrishan Pauranik and Vitthal Prasad. It is a family business. ii). A partnership firm was formed comprising Shri Mahesh Chand, Shri. Dinesh Kumar, Sh. Vitthal Prasad, Sh. Jatinder Kumar and Smt. Bhagwati Bai under the name style M/s Mahesh Chand Dinesh Kumar and it has been carrying on the manufacture and sale of bidis under the trade mark TAJ BIDI as per the deed of partnership dated 30.08.1989. Prior to the said partnership business, Smt. Gopi Bai (Mother) was also one of the partner in the business and who died on 14.08.1989. The said partnership comprised of Mahesh Chand, Dinesh Kumar, Vitthal Prasad, Jatinder Kumar, Smt. Gopi Bai and Bhagwati Bai as per the deed of partnership dated 14.11.1974. iii) The trademark TAJ BIDI (label) was registered under No. 270560 as of 9.03.1971 and is remaining on the register as such. Since it was a family business the mark still remains registered in the name of Sh. Shrikrishan Pauranik (eldest son of Smt. Gopi Bai), Sh. Mahesh Chand, Sh. Dinesh Kumar and Sh. Vitthal Prasad the other sons of Smt. Gopi Bai and Smt. Bhagwati Bai who is the wife of deceased Shri Krishan Pauranik. On 28th March 1994 a request was filed before the Registrar of Trade Marks for recordal of the names of the partners of the firm, M/s Mahesh Chand Dinesh Kumar which firm had been continuously using the said trade mark right since its inception. iv). The applicant Shri Devinder Kumar S/o late. Shri Krishan Pauranik is wrongly claiming himself to be the sole proprietor of the business and had filed a request before the Registrar of Trade Marks dated 25.03.1994 that he should be declared as the subsequent proprietor of the trademark TAJ bidi claiming a right to the trademark TAJ bidi (label) by virtue of the copyright registered under the Copyright Act. v) Shri Devinder Kumar Pauranik was born on 06.01.1957 attaining majority subsequent to the partnership deed dated 14.11.1974 in which partnership Bhagwati Bai the wife of the deceased Shrikrishan Pauranik (the mother of Devinder Kumar) was herself a partner and had continued to be so even after the death of one of the other partner Smt. Gopi Bai, who died on 14.08.1989. vi) At no stage the rights of the mother in the said business carried on under the name and style M/s Mahesh Chand Dinesh Kumar were challenged. Late Smt. Gopi Bai the grand mother of the registered proprietor had also continued to be partner in the firm till her death. vii) At one stage Smt. Bhagwati Bai had proposed a family settlement whereby her son may be taken as a partner in the business instead of her to which proposal all other partners had agreed but it did not materialise due to greed Shri Devinder Kumar who wanted to usurp the flourishing business carried on under the name and style M/s Mahesh Chand Dinesh Kumar relying upon a false Will without a probate. viii) The so -called Will now relied upon by the applicant is obviously a fabricated document and no justification has been shown for concealing the same for decades, if there was any such Will in existence. ix) Smt. Bhagwati Bai mother of Devinder Kumar, had at no stage either during the existence of partnership deed dated 14.11.1974 or under the reconstituted partnership deed dated 30.08.1989 disclosed that there was any such Will of her late husband. That apart, neither the mother nor the son has stated anywhere that they had come to know about the so -called Will at later stage. The fraud perpetuated by them is apparent from the record of the proceedings. Both the mother and the son are living at the same place just near the business under the name M/s Mahesh Chand Dinesh Kumar being carried on at Baran, Dist. Kota (Raj). x) In view of the above facts and surrounding circumstances it is prayed that Rectification Petition be dismissed with full costs.
(3.) THE matter was listed before us on 8th January, 2013. Counsel for applicant was present. None appeared on behalf of respondent. We have heard the arguments of counsel for the applicant. Counsel for respondent filed their written note of arguments vide their letter dated 26.12.2012 the gist of which is stated in above mentioned paragraphs. To get a grip of the contentious issues we reproduce the competing trade marks hereunder: Applicant's TM Respondent's TM "Image" ;