S. Jagadeesan, Chairman - (1.) SINCE the issues involved in all the rectification applications are the same, both the counsel requested that all the applications be clubbed together and heard jointly. Hence, we have heard all the applications jointly.
(2.) All the applications were filed under Sections 47, 57 and 125 of the Trade Marks Act, 1999, for removal of the respondent's trade mark from the Register of Trade Marks Registry. The case of the applicant in ORA 1/2004 is that they are carrying on the business of running a restaurant under the name and style of M/s. Shanti Sagar since 5.8.1991. The applicant is also running a chain of vegetarian restaurants under the same name and style of Shanti Sagar. The applicant filed an application on 15.10.2001 for registration of the trade mark Shanti Sagar in application No. 1051236 under the Trade Marks Act, 1999. The applicant sought registration in class 42. The applicant's mark Shanti Sagar is with particular artistic work, design and get-up and the same became popular in the southern part of Bangalore. The applicant is having branches and is also directly or indirectly associated with seven other restaurants with the same trade name. The applicant, further stated in the application that in the city of Bangalore, about 25 hoteliers adopted the trading style Shanti Sagar for running vegetarian restaurants, particularly, which are selling chats, juices, ice-creams, south Indian and north Indian sweets and savories and as such, the trade mark as well as the trading style Shanti Sagar has become public juris and common to trade. Hence, no one can exclusively claim any right or title and interest in the same. The Registrar of Trade Marks has also given a search report stating that nearly 13 trade marks were applied for registration by various persons from all over India which are deceptively similar to the applicant's trade mark. The trade mark Shanti Sagar is being used by various persons for trading under food stuffs falling under class 30 of Trade Marks Act, 1999. The applicant also furnished the list of hoteliers using the name Shanti Sagar. The applicant is therefore, adversely affected by the continuation of the respondent's trade mark "NEW SHANTI SAGAR" registered under No. 566035 B in class 30. The respondent is claiming to be the proprietor of the trade mark 'NEW SHANTI SAGAR', adopted for the first time in the year 1989. The trade mark was advertised in the Trade Marks Journal No. 1219, dated 16.3.2000. But, the respondent, consequent to obtaining the registration of the said trade mark, has been indulging in misappropriation of the trade mark contrary to the conditions attached to registration and has initiated vexatious litigations against the applicant and others. The suit O.S. No. 5087/1995 filed against the applicant was dismissed for default. The respondent is having five branches in and around Bangalore in the year 1995. The branches were started by the respondent much later of the adoption of the trade mark Shanti Sagar by the applicant.. The respondent, without disclosing the correct facts has obtained the registration of the trade mark 'NEW SHANTI SAGAR' The respondent was working in the restaurant New Shanti Sagar', which was initially started by M/s. T. Rama Bhat and others in the year 1982. The respondent was working in the said hotel for a few years and thereafter, commenced his own restaurant at C.M.H. Road, Indiranagar, Bangalore, in the year 1987. Hence, the trade mark and the trading style 'New Shanti Sagar', was first conceived and adopted by the said Shri T. Rama Bhat and others, which exists even now, though, the ownership changed several hands. The respondent clandestinely made an application seeking registration of the impugned trade mark and obtained registration, even though he is not a proprietor of the said trade mark. The main grounds on which removal of the impugned trade mark is sought for are: (1) The respondent's mark is without sufficient cause and the same has been wrongly entered in the register; (2) The impugned mark has not become distinctive with the respondent at a particular point of time since the search report clearly reveals that the applicants' trade mark Shanti Sagar was being used by various traders in so far as it relates to manufacture and sale of food items falling under class 30 and therefore the registration of the impugned mark is opposed to Section 11; (3) The impugned mark was conceived and adopted by Smt. Shanti P. Amin, wife of Shri Babu P. Amin, in the year 1980, which is her own name in combination of word Sagar and by prefixing the word New Shanti is the personal name of a living person adopted for running a restaurant under the trading style New Shanti Sagar and as such, the trade mark cannot be registered under Section 14 of the Trade Marks Act, 1999, without the consent of that person; (4) The respondent obtained the registration of the impugned trade mark in class 30 for manufacture and sale of food items falling under class 30 of the Trade and Merchandise Marks Act, 1958. The respondent is using the impugned mark for running vegetarian restaurant which is per se a service mark falling under class 42 of Trade Marks Act, 1999. Hence, the registration of the trade mark obtained by the respondent is contrary to conditions entered in the Register and is therefore liable to be cancelled.
(3.) AN additional prayer is to restrain the respondent from in any manner making groundless threats and initiating vexatious legal proceedings against the bona fide use of the trade mark Shanti Sagar by the application is also sought for on the ground that the respondent has instituted various legal proceedings both civil and criminal against the persons who adopted the trade mark Shanti Sagar.;