V.RAVI,TECHNICAL MEMBER - (1.) APPLICATION is for removal of registered trade METRO under No.1354281 in Class 16. The case of the applicant and the grounds for removal are briefly as follows: - (i) the applicant and respondent both started the business of printing visiting cards as a partnership firm on 15th January, 1979 under the name M/s. METRO CARD AGENCY. There were later changes in the constitution of the firm but the business was carried on at the same premises. (ii) In July, 1992 to further expand their business both the present applicant and respondent started another firm M/s. METRO CARD GALLERY at another premises. Wide publicity in local newspapers such as "Gujrat Samachar" was given highlighting the expansion of "M.G.Road is also extended to CG Road". Invitation Card mentioned the respondent who attended the inauguration as one of the well wishers. (iii) The applicant submits that both he and respondent were using the trade mark METRO' for their business as also trading style and art work since inception. Therefore, the respondent is not the exclusive proprietor of the mark "METRO" (iv) The applicant submits that the respondent surreptitiously obtained registration of the impugned mark by suppressing material facts before the Registrar. Thereafter the respondent issued a Legal Notice on 27th February, 2010 to the applicant objecting to the use of METRO trade mark to which a suitable reply was sent. The respondent then filed a Civil Suit being No.913 of 2010 at City Civil Court, Ahmedbad for infringement and passing off. Thus, the applicant is an aggrieved person' seeking removal of the impugned mark from the register. The Hon'ble City Civil Court, Ahmedbad rejected the Notice of Motion after hearing both parties observing that registration was obtained by suppressing material informations from the Register amounting to fraud. (v) The various legal grounds on which the removal of the impugned trade marks under Section 57 of the Trade Marks Act alleged are: - (a) False averments of ownership of the mark under Section 18(1) before the Registrar. (b) The impugned mark is remaining on the register without sufficient cause. (c) Respondent himself has accepted joint ownership of the mark METRO. (d) The registration of the impugned mark obtained illegally affecting the purity of the register. (e) The respondent registered the impugned mark in bad faith with mala fide intention and conducted himself with unclean hand before the registrar.
(2.) THE case of the respondent/registered proprietor is as follows: - (i) It is an admitted position that the business was started in 1979 in the name of M/s. METRO CARD AGENCY. The respondent has been using this business name till date. On dissolution of the said firm the respondent has been using the trade mark METRO with full knowledge of the applicant since 1998 in the name of M/s. METRO CARD AGENCY in his sole name as proprietor and owner therof. The applicant had also failed to file Notice of Opposition when the impugned mark was published in the Trade Marks Journal. Filing of impugned rectification petition after such a long time shows the mala fide conduct of the applicant. The applicant are seeking to harass the respondent after a hiatus of 13 years. This petition therefore ought to be dismissed in limine. (ii) The applicant has raised false and frivolous grounds of business relation with family members to establish a right over the trade mark/trade name METRO. (iii) The applicant have admitted that there has been changes/dissolution in the partnership firm since 1979 and is therefore an admitted position that the trade M/s. METRO CARD AGENCY and the trade mark METRO remained with the respondent and so he was entitled as of right to the registration and exclusive use of the trade mark METRO. (iv) The claim of the mark METRO as joint property even now it is totally false and legally untenable. After dissolution, the firm name M/s. METRO CARD AGENCY continued to remain in business. The said trade name came to the respondent under dissolution. The respondent therefore continues to use the mark METRO since 1979 for his business. The applicant started M/s. METRO CARD GALLERY on 2nd July, 1992 along with the wife of the respondent. Thus the respondent user since 1979 has been continuous and uninterrupted. The applicants have thus acquiesced the use of the impugned mark by the respondent. In fact, the present rectification petition is a counter -blast to the Civil Suit No.913 of 2010 filed by the respondent against the applicant. It was only after dissolution of the firm that the respondent applied for the trade mark METRO as sole owner. The applicant elected not to oppose respondent's trade mark application and on the principle of estoppel cannot agitate removal of the impugned mark as he has acquiesced to the use of the METRO mark by the respondent. Filing of a civil suit against applicant does not make them person aggrieved'. The applicants themselves are using the trade name M/s. METRO CARD GALLERY since 2nd July, 1992 using identical trade mark METRO. They have not been put to any business loss. Hence, the applicant cannot be aggrieved person'. (v) With regard to the Civil Suit filed by the respondent, the respondent state that he has a legal right to stop any party infringing his trade mark right and also for passing off under common law. The observation of the Hon'ble City Civil Court was not based on merits of the case and is an interim order. The respondent has filed an appeal in High Court of Gujarat and the applicant cannot take advantage of this order. (vi) The respondent claims to be the exclusive owner of the trade mark METRO. Para 4 of the rectification aversthat with effect from 01.09.1998 Dipakbhai Natwarlal Contractor had become sole proprietor of M/s. METRO CARD AGENCY and the retiring partner Smt. Lataben G.Seth will not do any business with M/s. METRO CARD AGENCY. This implies the entire business including the trade mark belongs to sole owner i.e. the respondent herein. The respondent states in the Trade Marks Act under Section 2 (1) (m) the definition of a mark includes a trade name and here the trade name includes the word METRO and hence he had a right to file for the registration of the impugned mark. Therefore, this rectification application is an abuse of the processes of law to harass the respondent. (vii) The respondent also submits that there has been continuous acquiescence for over 13 years by the applicant and further the applicant have not been put to any business loss and there is no evidence to establish any confusion and/or deception in the market. Hence, the subject rectification petition should be dismissed in limine.
(3.) THE applicants have filed a reply to the counter statement of the respondent. He has denied in toto all the contentions raised on by the respondent. The applicant submits that the partnership firm was started with three partners - (a) Shobhnaben (b) Gajendrabhai & (c) Dipakbhai (the respondent herein). Shobhnaben retired from the partnership firm on 31st October 1979. The remaining two partners (applicants and the respondent) continued the business and using the trade mark METRO and METRO CARD AGENCY as Joint Property. On 1st October, 1979 Gajendrabhai Sheth also retired and on the same day his wife replaced him as a partner in METRO CARD AGENCY. Thus the business of the firm remains with the family members of both partners. Due to huge success both partners in 1992 decided to start a sister concern METRO CARD GALLERY with the applicant and the wife of the respondent Bharatiben Contractor for expansion of business and set up an office at C.G. Road also to develop new markets. The respondent was present at the inauguration. He was a party to the Joint venture of the family business and the trade mark METRO was jointly used by both parties. Even though the partners have retired, both family members were doing their business with each other. This material position has been suppressed by the respondent. The applicant never suspected the respondent would secure registration of the trade mark METRO behind their back and had blind faith in respondent's honesty and the registration of the impugned mark has been secured by fraud. It was only after the respondent had issued Legal Notice on 27th February, 2010 the shell shocked applicant realized that the registration of the impugned mark has been obtained illegally of what is a jointly owned trade mark METRO. The City Civil Court, Ahmedbad after hearing both the parties dismissed the Notice of Motion. The respondent went to the Hon' ble Gujarat High Court. Thereafter, there was settlement talk which failed compelling the applicant to move for rectification. The respondent has misguided the Registrar and secured the registration of impugned illegally. The user claimed by the respondent is false.It was also decided not to use the trade name METRO CARD AGENCY and there is signature of the respondent as a witness. In the aforesaid circumstance, the impugned mark should be removed from the Register. The matter was listed for hearing on 5th September, 2013. We have heard the arguments of the respective counsel, gone through the pleading and the records.;