V. Ravi, Member (T) - (1.) THE applicants are seeking the removal from the register, the trade mark No. 458707 in Class 2 registered as of 18th August, 1986 in respect of "SUNLAC" for paints, varnish, lacquers, thinners and primers which according to them was secured illegally and on the basis of which they secured interim injunction against the applicant from the Vacation Judge by concealing material facts to the Hon'ble Court. Being a transferred matter, the subject appeal is required to be decided under the repealed Trade and Merchandise Marks Act, 1958. The facts giving rise to this application are briefly stated below: a. The applicants are carrying on the business of manufacturing and marketing paints, NC. Putty and other cognate goods under the trade mark SUNLAC since 1969 -70. The applicant is thus the original and true proprietor of the impugned mark "SUNLAC". By virtue of its continuous use it has acquired tremendous reputation and goodwill in the market. b. The respondent herein cannot be the proprietor of the impugned mark either on the date of its adoption or on the date of the filing of the application for registration as he was fully aware of the applicants trade mark 'SUNLAC'. Therefore, Section 18(1) of the Act is a complete bar to the registration of the impugned mark. c. To acquire legitimacy for adoption and mala fide use of the trade mark SUNLAC, the respondents had applied for an identical trade mark in respect of the same goods or description of goods. Therefore, the impugned mark is wrongly registered and wrongly remaining in the register. d. A false impression is being created in the minds of the public of a trade connection between the respondent and the applicant with a view to encash on the hard earned reputation, skill, labour and goodwill of the applicant resulting in untold damages to them. e. The impugned mark SUNLAC was neither distinctive at the time of registration nor has it acquired distinctiveness as it continues to be wrongly remaining in the register. The registration of the impugned mark contravenes the provisions of Sections 9, 11, 12(1), 18 and 32 of the Trade Marks Act, 1999. Further, the impugned mark is registered without any bona fide intention to use the same in relation to the goods for which it is registered. Thus the registration of the impugned mark and its continuance in the register is a direct interference in the business of the applicant. f. The existence of the impugned mark in the register affects the purity of the register of trade mark and as such it is remaining without sufficient cause and requires to be expunged from the register forthwith.
(2.) THE case of the respondent/registered proprietor is indicated below: - a. The respondent is running an established business of manufacturing and marketing paints (including automotive paints), NC Putty, varnishes, lacquers and other cognate and allied goods for the past several years. b. The respondent is the true owner and legitimate proprietor of the trade mark "SUNLAC". Registration of the said trade mark having been granted in Part A of the Register (under repealed Trade and Merchandise Marks Act, 1958) and the same being over 7 years old has become conclusive under the law. Registration of the said trade mark has been renewed from time to time and is valid, subsisting and effective till date. c. The respondent states that originally a partnership firm under the name SUNLAC PAINTS & CHEMICAL INDUSTRIES was established in December, 1985 by one Ashwani Mehra and Vipin Kumar Malhotra. This firm adopted the firm name beginning with the word SUNLAC and the trade mark SUNLAC was honestly and bona fidely adopted knowing well that there was no such or similar trade mark in use and/or in existence with respect to the said goods. It is further submitted that late Mr. Satya Kant Mehra, father of Mr. Ashwani Mehra, who was one of the partners of the said firm and one of the present directors of the respondent company was known, identified and called by his nick name Sunny. The mark SUNLAC was coined by taking SUN from his nick/pet name and adding a common suffix LAC from lacquers. The said firm put the trade mark SUNLAC to commercial use in December, 1985. An application for registration of the said trade mark SUNLAC in the name of the partnership firm was filed on 18/08/1986. The application was in due course advertised in the Trade Marks Journal No. 978 dated 01/03/1990 by the Registrar of Trade Marks. None including the Applicants herein objected to its registration and the mark was registered in the name of the said partnership firm. The said partnership was dissolved vide Dissolution Deed dated 31/03/1990 and Mr. Vipin Kumar left the said business and Mr. Ashwani Mehra took over the running business along with assets, liabilities, goodwill as well as the trade name and trade mark SUNLAC. Mr. Ashwani Mehra incorporated the respondent company and on 01.04.1991 passed on all his rights, titles and interests in the registered trade mark No. 458707 to the respondent company as subsequent proprietor and the same was allowed by the Registrar. The respondent therefore is at present registered proprietor of the trade mark SUNLAC. d. The respondents have been promoting the sale of their goods under the impugned mark "SUNLAC" over the last two decades as is evidenced by the yearwise sales particulars furnished below: - e) On account of superior quality, continuous and extensive use of the impugned mark, it is identified exclusively with the respondent. The respondent for the first time learnt of the use of the trade mark "SUNLAC" by the applicant after noticing advertisement of the applicant soliciting dealership enquiry in the daily newspapers "Sandhya Times" dated 14th June, 2000. On enquiries they came to know that the goods of the applicant under the impugned mark "SUNLAC" are already being sold by shopkeepers in Delhi. Further enquiries revealed that the applicant a few months prior to the filing of the suit was using the trade mark 'ROYAL 555'. After noting the success of the respondent product bearing the impugned mark, they adopted the same as the leading feature adding the earlier mark ROYAL 555 in an insignificant manner thereby tarnishing the reputation and goodwill of the respondent products. Consequently, they filed an infringement suit and obtained a restraint order from the Hon'ble Delhi High Court. In due course it was noted that the applicant continued to sell its products under the trade mark "SUNLAC" and accordingly the respondent moved a contempt application. To obviate this, the applicant created another firm by the name SUNSHINE PAINTS at a nearby address of the applicant using the same logo, trade mark and script. On noticing this, the respondent moved an application before the Additional District Judge, Delhi and Sunshine Paints had been added as a defendant in the suit of the plaintiff. f. The present application is bad in law due to the unreasonable, unexplained and inordinate delay as also laches and on the principles of acquiescence, waiver and estoppel. The respondent is doing commerce under the impugned mark for the last 27 years and the applicant has never raised any objection so far. The impugned mark was registered in 1991 after compliance with the due process of law in the name of the respondent. The respondent filed a suit for infringement of registered trade mark and the applicant was restrained from using SUNLAC trade mark and is continuing till date. The respondent have acquired enviable goodwill and impeccable trade reputation having pumped in substantial money, investment, funds, time, energy and efforts in establishing the trade mark "SUNLAC" in the market. In view of the applicant's deplorable conduct the impugned application for rectification deserves to be dismissed with exemplary costs. The present application is a complete abuse of process of law and is not maintainable as it is based on false allegations. g) On the merits of the case, the respondent state that the alleged user by the applicant since 1969 -1970 is absolutely false, strongly disputed and denied. Further the alleged sales figure of the applicant on a sheet of paper is no evidence at all and the figures do not pertain to the goods under the trade mark "SUNLAC" and is therefore irrelevant and immaterial and cannot be relied on for the purpose of these proceedings. The respondents also deny that they had full knowledge about the name, goodwill and reputation of the trade mark "SUNLAC" since 1969 -70. The adoption and use of the impugned mark by the respondent is honest and bona fide. The documents filed by the applicant on record do not support the allegations made by them against the respondent and are therefore not admissible in law. These documents are made up, fabricated and cooked up by the applicant. The rest of the counter statement is complete denial of all the allegations made against the respondent by the applicant. The applicant has also filed a reply to the counter statement which is on record. It essentially reiterates the allegation made against the respondent claiming to be the prior adopter of the impugned mark since 1969 -70. In particular, the applicant states that they are manufacturing and marketing their products only in Gujarat and never sold the same in Delhi and these advertisements and products have been created by them to prejudice and ruin their rights and create bias against them before the Board. Accordingly, the averments made by the respondents are totally baseless and not to be believed. The applicant repeats, reiterates and maintains whatever has been said in the rectification petition originally filed before the Hon'ble Delhi High Court. The respondent had surreptitiously secured the registration of the impugned mark and non filing of opposition cannot be held against the applicant as it was through inadvertence. The applicants have been using the impugned mark in Gujarat continuously, extensively and uninterruptedly for the last 30 years. The respondents have no record of any business in the State of Gujarat and therefore the impugned rectification application should be allowed.
(3.) THE matter came up before us on 22nd August, 2013. We have carefully heard the arguments of both the respective counsel, gone through the pleadings and records.;