SHRI V.RAVI,TECHNICAL MEMBER - (1.) BY this common order, we are disposing of ORA/231 -237/2010/TM/DEL along with the Miscellaneous Petition No. 53 -59/2011 - AND M.P.No. 236/2012 filed by the applicant seeking direction of the Board on the issues raised therein. Both the main matter and the MP were heard together. The applicant has sought removal of the following registered trade mark in the name of the respondent. Trade Mark Appln. No. Class Date of Filing User claimed from Rectification Application No. Class AMBIKA 381350 12 25.09.1981 01.04.1974 ORA -231 12 AMBIKA LOGO 1317149 35 25.10.2004 04.01.2000 ORA -232 35 AMBIKA BODY FIT [LABEL] 1285957 28 24.05.2004 01.04.2000 ORA -233 28 AMBIKA 645771 12 15.11.1994 25.07.1971 ORA -234 12 AMBIKA LE RUN 1291323 28 21.06.2004Rs. 01.04.2000 ORA -235 28 AMBI 1317151 12 25.10.2004 01.04.2000 ORA -236 12 ANAMIKA (LOGO) 1317150 12 25.10.2004 01.04.1987 ORA -237 12
(2.) THE case of the applicant is summarized below: a. It was incorporated on 8th November 1994. The word AMBIKA is an integral and essential part of the trading style of the applicant's company. The applicant also adopted a label AMBI and on 1st September, 2003 filed an application for its registration under No. 1229876 in Class 12 in respect of "Bicycles, parts and fittings and accessories thereof including tyres and tubes and autoparts" . This trade mark was duly accepted and granted registration, valid and subsisting. b. The respondent herein consist of four partners i) Shri Ashwini Kumar ii) Shri Chandra Mohan iii) Smt. Alka Rani and iv) Smt. Monika Gupta. In fact Shri Ashwini Kumar & Shri Chandra Mohan are brothers of Shri Rakesh Kumar Gupta the Managing Director of the applicant company. The brothers of Shri Rakesh Gupta have filed false & fabricated case against the applicant in Suit No. C.S. (O.S) 2175 of 2007. The Hon'ble Delhi High Court has restrained the applicant from using their registered trade mark AMBI. c. It is the case of the applicant that the said suit filed by the respondent does not disclose that the partners of the respondent company herein Shri Ashwini Kumar & Chandra Mohan are real brothers of the applicant herein. The suit is filed only to harrass the applicant's company Directors Shri Rakesh Kumar Gupta and Smt. Radha Gupta. The respondents are well aware of the incorporation of the applicant company in 1994 and are barred by principle of estoppel and acquiescence to challenge their corporate name. d. Being aggrieved with the impugned registration the applicants have preferred the present petition to remove the above mentioned registered trade marks on the following ground.: i) the above registration has been obtained by concealment, untruth and so the impugned registration are disentitled to protection under court of law. ii) the applicants have been using the trade name AMBIKA since 1994 and are, therefore, prior user being the first adopt of the same since 1994. iii) the respondents are never the proprietor of all the above mentioned registered trade mark. iv) the registration of the above marks is contrary to Sections 9,11, 18, 47 and 57 of the Act. v) the respondent/ registered proprietor has no intention to use the above mentioned impugned trade marks and has never used the mark on the goods and so it was not distinctive of the goods of the respondent. vi) the registration of the impugned trade marks has been obtained by fraud and the respondent do not have any locus standi to seek statutory protection for the above mentioned trade marks. vii) the entry relating to the above trade marks is made without sufficient cause and is wrongly remaining on the register and therefore liable to be removed. viii) the applicant state that the respondent have not used any of the registered trade marks for any of the goods in respect of which it has been applied for a continuous period of 5 years and three months from the date of filing of the rectification petition. Alternatively, the applicant state that registered proprietors do not have exclusive right to the impugned mark. Further, the registered proprietors have till the date of this petition never manufactured or sold the goods which are included in the impugned registrations. ix) most importantly, the applicants Director Shri Rakesh Kumar has never filed the joint affidavit on the basis of which the entry in respect of request in Form TM -24 for bringing on record the subsequent proprietors under No. 318350 in Class 12 was allowed. The applicants state that the said joint affidavit purportedly signed by the retiring partners Shri Om Prakash Gupta, Shri Rakesh Kumar and Shri Ashok Kumar dated 24.10.2006 is completely forged and is a false document as detailed in the Miscellaneous Petition. It is the stand of the applicant that the earliest registration under No.318350 is the mother registration and all subsequent registrations of the respondents of the above mentioned applications are associated trade marks and therefore, all the above seven registration of the respondent registered proprietors are liable to be removed from the register.
(3.) THE case of the answering respondent is summarised below: - a.The respondent is a partnership concern consisting of four partners mainly Shri Ashiwini Kumar, Shri Chandra Mohan, Smt. Alka Rani & Smt. Monika Gupta. They are old established firm engaged in the business of manufacture and sale of cycle parts and accessories thereof, tyres and tubes, gymnastic equipment under the trade mark label AMBIKA and the trade name Ambika Industrial Corporation since 1970. The respondent had acquired assets of its predecessors including the trade mark goodwill & reputation thereof. b. Shri Rakesh Kumar, the Managing Director of the applicant company is the brother of the two of the partners of the respondent and the brother -in -law of another. Further, Shri Rakesh Kupta Gupta in fact was a partner of the predecessor of the respondent firm between 2nd April, 1977 to 1st April, 1987. By virtue of the retirement deed dated 1.04.1987 Shri Rakesh Gupta retired from the respondent firm and he relinquished all his rights, title, assets, liabilities together with stock, fitting, furnitures, premises, firm name and style etc. and his interest in the partnership firm in favour of the continuing partners. The assets of the partnership firm including the trade mark and copy rights is owned by the respondents which is the subject matter of the present petition. c. Respondent state that Clause 9 of the said Dissolution Deed dated 01.04.1987 also stipulated that Mr. Rakesh Kumar would not be entitled to any goodwill of the partnership firm, name and business. The relevant portions of the above mentioned Dissolution Deed are mentioned as under: "Whereas Shri Rakesh Kumar offered to retire from the partnership business and which offer was accepted by the continuing partners and accordingly Shri Rakesh Kumar retired from the partnership business on 31.03.87, leaving the business along with all assets and liabilities in favour of the continuing partners. The terms and conditions on which dissolution took place was on 31.03.87 and which were agreed to by them orally then, are now reduced into writing, hereunder the terms of the dissolution deed. NOW THIS DEED OF DISSOLUTION WITNESSES AS UNDER: 3.In consideration of his capital share as on 31.03.1987, the retiring partner has relinquished all his rights, titles and interest in the partnership firm in favour of the continuing partners. The consideration of capital share shall be paid by the continuing partners in due course of time. That all assets and liabilities of the firm together with stock, fitting and furniture, premises, firm name and style etc.has been made over to and taken over by the continuing partners. . 9.The retiring shall not be entitled to any sort of goodwill of the partnership firm, name and business" (emphasis supplied) Shri Rakesh, therefore relinquished all his claims, if any, with respect to the trademarks/labels AMBIKA, AMBIKA LABEL, ANAMIKA LABEL etc. and thereafter he had no concern, claims, disputes, rights etc. with respect to the said trademarks/labels as well as the copyrights therein. The present petition is, therefore, malicious and malafides with a view to take undue advantage of the goodwill and reputation of the respondent firm. d) the respondent state that they have been using each trade mark /label continuously since the time of adoption of the various mark till date. They also originated and are owners of the artistic work/features in respect of various AMBIKA labels under the Copy Right Act, 1957. e) the respondent state that they are manufacturing high quality cycle products which is in great demand within & outside India. They have well equipped plants with latest machineries and all facilities for manufacturing under one roof. The raw materials are procured from very reputed sources to ensure quality control. They have qualified technicians and professionals to inspect the goods at every stage of production in their testing lab and are the leaders in this field. They have registered themselves with various Government authorities like Sales tax, Income tax departments, SSI etc. Exhibits are furnished to show year -wise sales of the goods under the various trade marks. On the date of cancellation petition, the respondents had a turn over of over Rs. 84 lakhs under its various brand. f) It is only in June, 2007, the respondent became aware that the petitioners impugned adoption and claim of user of the trade mark AMBI when he noticed advertisement, bill boards and sign boards of the applicant being conspicuously displayed. On further enquiry, the respondent learned that the applicants have clandestinely and surreptitiously obtained registration of the trade mark AMBI label. The applicant is not and cannot be the proprietor of AMBI label as he has substantially copied the well known mark of the respondent with all its features and artistic work, lay out, design, lettering style, get up, make up, colour combinations and ideas thereof. The imitation is so exact that even big retailers, dealers and distributors are bound to be confused / deceived. g) the applicant has blatantly made false and misleading statement to his own knowledge and approached the Hon'ble Board suppressing and concealing most important material facts to over reach and obtain undue advantage. The petitioner is guilty of obtaining an illegal company incorporation under the trade name AMBIKA EXPORT PVT. LTD and a fraudulent trade mark registration obtained surreptitiously under No. 1229876. h) the respondent state due to inadvertence and lack of communication with their counsel, the fact that Shri Rakesh kumar being brother of the two partners of the respondent firm was not mentioned in the suit which has, however caused no prejudice to the applicant. They are nevertheless taking steps to correct the said omission in the pending suit before the Hon'ble Delhi Court. i) the respondent deny any knowledge of incorporation of applicants firm M/s AMBIKA EXPORTS(P) Ltd. which resulted in acquiescence by them and are estopped now from questioning the same. j) In view of the foregoing all the above registration are valid and the objection raised under Sections 9,11,18,47 and 57 are not sustainable. k) the prayer of applicant is completely misconceived, devoid of legality, guilty of misrepresentation, suppression of material and crucial facts and the instant application be dismissed with heavy compensatory and exemplary costs. 4. In February, 2011, the applicant filed miscellaneous petitions seeking the directions of the Board with the prayer to stay the operation of all the impugned registrations during the pendency of the petition. In turn, the respondent who have also filed Miscellaneous Petition are seeking prior disposal of the rectification applications. The brief facts giving rise to these Miscellaneous Petitions are : (i) the first and what the applicants call "the mother registration" of the respondents various marks is AMBIKA under No. 381350 in Class 12 in the name of the following persons: (a) Om Prakash Gupta (b) Rakesh Kumar (c) Ashok Kumar (d) Ashwini Kumar (ii) The internet site of trade marks Registry provide following information in respect of registered TM 381350. "Persuant to a request on from 24 dated 30th April, 1998 and order thereon dated 30th November, 2006, "Ashwini Kumar, Chander Mohan, Smt. Alka Rani & Smt. Monika Gupta trading as M/s Ambica Industrial Corporation, B -XXXI -630, Janta Nagar, Industrial Area -B, Ludhiana -3, (PB.) is/are registered as subsequent proprietor (s) of this trade mark as from 01.04.1996, by virtue of Dissolution Deed dated 01.04.1987, Partnership Deed dated 01.04.1996 and Partnership Deed dated 01.04.1996 and an affidavit of Shri Aswani Kumar dated 24.10.2006 and Joint Affidavit of retiring partners Shri Om Prakash Gupta, Shri RAkesh Kumar & Shri Ashok Kumar dated 24.10.2006. Registration renewed for a period of 10 years from 25.09.2009 advertised in Journal No.1425". (iii) "that the applicant's director Shri Rakesh Kumar has never filed any such affidavit as mentioned hereinabove. The applicant calls upon the Respondent to produce the said affidavit. It is alleged that Respondent have committed forgery and filed such an affidavit of Shri Rakesh Kumar which is ex facie fabricated and a false document. The said registration is the mother registration and is basis of all other registrations of the respondent which have also been associated with each other. The applicant has assailed the registrations of the Respondent. The respondent has no locus standi to seek deletion of the name of the Respondent's director Shri Rakesh Kumar and then seek a restraint order against the use of the trade mark AMBIKA. The Respondent/Registered Proprietor has approached the Board with unclean hands. (iv) It is the case of the applicant that Shri Rakesh Kumar never signed the Joint affidavit dated 24th October, 2006 with Shri Ashok Kumar. In fact another purported deponent Shri Om Prakash Gupta (father of both respondent and applicant) had in fact died on 31st January, 2001. The joint affidavit is palpably a false and fabricated document. The subsequent entries on the register have been obtained by fraud. As the Joint Affidavit is clearly forged, the respondent cannot be allowed to enjoy the fruit of this mischief and all the seven registered trade mark which are associated with each other should be expunged from the register. Hence the prayer to stay the effect of these registration. (v) In reply, the respondent state that it never filed any affidavits on behalf of Shri Ashwani Kumar dated 24.10.2006 and the joint affidavit of retiring partners Shri Om Prakash Gupta, Shri Rakesh Kumar and Shri Ashok Kumar dated 24th October, 2006. The respondent firm had filed a request on from TM - 24dated 30th April, 1998 for change in the name of theproprietors of the trade marks since the respondent firm had undergone a change in its composition and it was necessary to incorporate changes in Registration Certificate. But the respondent deny having filed the above mentioned affidavit dated 24th October, 2006 and state it was not responsible for the filing of the said affidavits nor the respondent authorized or instructed anyone to file the said affidavits.;