V.RAVI,TECHNICAL MEMBER - (1.) THE applicant seeks removal from the register of the following trade marks : - a) Prime Cab Cables (label) under no. 1250483 b) Prime Cab Kables (label) under no. 1250484 c) Prime Cab Cables (label) under no. 813036
(2.) AS all the impugned marks are similar and identical pleadings and defense raised, we are disposing of the matter through a common order. The grounds for seeking removal of the above registered trade marks are as follows: i) the application is to maintain the purity of the Register; ii) the applicant is bonafide user of the trade mark PRIMECAB since April, 1997 and has been using the said mark continuously and extensively since then; iii) the applicants have obtained registration certificate from the Central Sales Tax Department on 30.07.1997. iv) they have obtained ISI mark from the Bureau of Indian Standard on 30.10.2000. They also own an ISO obtained ISO 9001 -2000 Certificate; v) the product of the applicant has been approved and commended by various department and corporations of many State Governments and the applicants product have achieved tremendous sales. vi) the applicant sole proprietor Shri Purushotam Singal filed an application for registration of PRIMECAB in Class 9 on 20.11.1997 under No. 779092 ; vii) the applicant received a notice on 18.01.2002 from the respondent claiming to be proprietor of the trade mark PRIMECAB and demanding the applicant to Cease and Desist from using the mark PRIMECAB. A reply to this notice was sent by the applicant to which there was no response; viii) the applicant later came across an advertisement published by the respondent claiming use of the impugned mark PRIMECAB. ix) being aggrieved the applicant sent a fresh Legal Notice to the respondent on 26.09.2003 to Cease and Desist from using the impugned marks and withdraw all products bearing the said mark from the market; x) in response thereto the respondent phoned the applicant assuring them it will not use the said trade mark believing which the respondent did not pursue the matter further. xi) in utter breach of this oral undertaking the respondent have obtained the registration of the impugned mark. The applicant got a further shock when they learnt that their application under no.779092 has been opposed and they suspect foul play as no Notice of Opposition has been received so far. xii) all the three impugned applications have been made in bad faith and are malafide. It is noteworthy that the first application of the respondent claimed user from January, 1997 while the subsequent application filed in 2003 have claimed an anti -dated user from December, 1995 which clearly shows that the alleged user are false and concocted. xiii) the malafide conduct of the respondent is apparent from the fact that the response to the Legal Notice sent by the applicant did not mention or disclose the first application of the respondent filed on 3rd August, 1998. xiv) the subsequent application filed on 19th November, 2003 was immediately after the issue of Legal Notice dated 26.09.2003 sent by the applicant to the respondent. Curiously, the Registrar has not yet registered the applicant's application for the same mark for identical goods although filed much earlier to the respondent's application. All the three impugned registrations are in utter violation of the provisions of the Act and the impugned registration is also against the principles of the natural justice, equity and good conscience. The impugned mark are objectionable under Sections 9(2)(a), 11(1)(a) and 11(3)(a) of the Act; xv) the applicants are person aggrieved' being the prior bonafide user of an identical mark and the impugned registration is adversely affecting the trading rights of the applicant. xvi) the applicant are also aggrieved that their prior application for the mark "PRIME CAB " filed on 20.11.1997 has been kept pending by the Registrar while the first application of the respondent filed on 3rd August, 1998 and the subsequent applications on 19.11.2003 have been registered. This ex -facie is unjust and malafide and as such the impugned mark ought to be removed from the Register. xvii) The respondent is doing business in respect of the same products i.e. electrical goods and the applicants have approached the Board seeking removal of the impugned marks without any unwarranted delay. xviii) the applicants have also enclosed sample invoices to prove use of their trade mark PRIME CAB in support of their claim of prior use.
(3.) THE case of the answering respondent is summarized below: a) they were incorporated as a company in November, 1982 with the main object of manufacturing, selling and marketing or otherwise dealing in wire, cables and accessories. In October, 1994 their corporate name was changed to Ravin Cables Limited. The respondents commenced their business in 1982 and have been trading in cables, wires and accessories till 1995. In 1995, they conceptualized the trade mark "PRIME CAB" in respect of cables, wires and accessories and since then have been using all their goods under the impugned mark. So much so, their trade mark is now well known all over India and exported to over 36 countries. The year -wise sales and advertisement figures of goods sold under the trade mark "PRIME CAB" are given below: - Financial Year Sales (Value in Rs. Crores) Advt. (Rs. lacs) 1995 -961996 -97 1997 -98 1998 -99 1999 -2000 2000 -01 2001 -02 2002 -03 2003 -04 2004 -05 2005 -06 2006 -07 2007 -08(un -audited) 17.6816.19 10.50 19.45 27.41 33.08 34.88 46.83 57.57 96.57 144.38 222.80 255.08 **** ** ** ** ** 8.57 6.89 125.03 230.34 88.63 b) the respondent have also enclosed random invoices evidencing sales of their goods under the impugned trade mark "PRIME CAB" since 1995. They have also furnished copies of newspaper reports, clipping, advertisement, publicity and promotional materials to show use of the impugned mark PRIME CAB sine 1995. A State of Art, plant at Pune was awarded ISO 9002 Certificate in 1999. In 2000, the applicants have achieved Export House status and have set up offices abroad. The respondents are also winner of EEPC award for the highest power cable export since 2001. They have also won the award for export excellence by Engg. Export Promotion Council (EEPC) during 2003. In 2005 -06, their turn over crossed Rs. 1,000 million and by 2007 -08, the annual turn over was Rs. 2500 million. The respondents have also formed an alliance with His Highness the ruler of Fujairah, UAE and a plant was commissioned in 2008. The respondents are registered with many government agencies and their clientele cover all giants from different industries such as Sugar, textiles, tyres, paper, hospital, pharmaceutical, telecom sector, infrastructure, chemical plants, metals, port trusts, power plant, refineries, automobiles, cements, fertilizers and engineering., including most government and semi -government institutions. The respondents have also been using ISI mark on their goods. By virtue of long usage, extensive sales and wide publicity, the impugned trade mark "PRIME CAB" has become distinctive of and exclusively identified with the respondent. c. The respondents further state that the applicants have made several false and fraudulent statement through -out the application and Statement of Case filed by them. In fact they have suppressed material facts and even told blatant lies. The impugned cancellation petition has been filed merely as a counter blast to the opposition entered into by the respondent in respect of application no. 779092 in Class 9. The respondent specifically denied that the grant of the impugned registration is contrary to the provision of the Act. The respondent had filed evidence of use of the impugned mark by way of an affidavit before the Registrar at the pre -advertisement stage and consequently the impugned mark was considered favourably by the Registrar for further processing. The applicants have not even made out a prima -facie case for removal of the impugned registration. The Central Sales Tax registration claimed by the applicant is extraneous to the issue at hand and has no bearing or relevance to the present proceeding. So also the ISI certificate has no bearing to the present case. Significantly, the documents relied on by the applicant therein do not carry any reference to the trade mark PRIME CAB. Being in the same trade, the applicant cannot feign ignorance of the fact that the respondent have never discontinued the use of the impugned marks and in fact have been heavily been advertising the respondent's goods under the impugned mark. Further, the alleged telephonic conversation is bluntly denied and too childish to merit any consideration. Also, the alleged undertaking given by the respondent canvassed by the applicant is based on false premises, trumped up claims and is illogical and fallacious. The respondents have been using the impugned marks without causing any confusion or deception, to the full knowledge of the applicant for over the last 12 years. It is a matter of record that all the three impugned registration of the trade mark PRIME CAB were initially allowed to proceed to advertisement in the TM journal under proviso to Section 20(1). Subsequently, it was accepted and finally registered on the strength of the documentary evidence of prior use by way of affidavit of the respondent's director Shri Vijay P. Karia. Therefore, objection raised under section 9(2) (a) is not valid. Further, if the applicants best claim of having adopted the mark "PRIME CAB" in 1997 were to be accepted as genuine, it cannot constitute a valid ground to attack the impugned registration under Section 11(1)(a). The objection raised under Section 11(3) (a) is utterly ludicrous. The settled position in law is that no action for passing of is maintainable against the use of the prior used trade mark that has been registered under the Act. As the respondent have justified the prior adoption, extensive use and wide publicity of the impugned marks, the objection raised under Section 11(3) (a) is not tenable. d. The respondent took strong exception to the reckless, unwarranted, irresponsible, repetitive and vague allegation made against them by the applicant who have not made out any case whatsoever for the removal of the impugned mark. By their own admission, the applicant are guilty of laches, delay and acquiescence. In brief, this is an open and shut case for the dismissal of the application and awarding exemplary and deterrent cost to the respondent. Rejoinder OF THE APPLICANT: The applicants state that the respondent is trying to paint a concocted story of being the prior user of the impugned trade mark PRIME CAB and have filed fake and fabricated documents to substantiate their claim. The fact of the matter is that it is the applicant who first coined the trade mark "PRIME CAB" in 1995. The respondents are trying to twist facts and mislead the Board that they have been using the mark since 1995 whereas in fact none of the annexures furnished by the respondent prove any factum of use since 1995. The applicants have been using the mark "PRIME CAB" continuously and extensively since 1995. The allegation of the respondent that the present cancellation petition has been filed merely as a counter blast to the opposition entered under no. 779092 has no merit whatsoever. Most crucially, the respondents have secured three trade mark registrations. In a search conducted by the applicant on 4th January, 2008 (Annexure K), it was found that in the first application, the date of user was mentioned as 1.01.1997 whereas in the subsequent application, filed by the respondent the user date is mentioned as 31.12.1995. This shows that the change of dates in the subsequent application is concocted and malafide. Shockingly, the affidavit annexed and marked as Exhibit -1 by the respondent evidencing the use of the mark "PRIME CABLES" in respect of application no. 1250483 is the same affidavit which is filed with respect to application no. 813036 in respect of the mark "PRIME CAB". Anti dating of user by the Registrar from 1997 to 1995 merely on the basis of an affidavit without cogent evidence or document is highly suspicious. The applicant finds it incomprehensible how the respondent's subsequent application has been registered during the pendency of the prior application. The impugned marks are objectionable under section 9(2)(a) and 11(1)(a) of the Act. f. The matter was listed for hearing on 12.02.2013. We have heard both the learned counsel and gone through the pleadings and records. The following authorities were relied on by the respondent : 1. Eagle Potteries Pvt. Ltd. Vs Eagle Flasks Industries Pvt. Ltd. - 1993 -PTC -273. 2. Our attention was invited to P. Narayanan's Book on the Law of Trade Mark Para 21.34 regarding "ONUS OF PROOF" on applicant, reproduced below: "Registration of a trade mark and of all subsequent assignments and transmissions of the trade mark is prima facie evidence of the validity thereof. It, therefore follows that the onus of proof is on the applicant for rectification to show that the mark is wrongly registered or is wrongly remaining on the register. This is also clear from section 101 and 102 of the Evidence Act 1872 dealing with burden of proof on the pleading and the burden of adducing evidence." ;