S. Jagadeesan, Chairman - (1.) THE applicant filed this application for rectification of the register or removal of trade mark of the first respondent from the Register under Sections 9, 11, 18 and 56 read with Section 108 of the Trade and Merchandise Marks Act, 1958.
(2.) The case of the Applicant is that he is a manufacturer and trader in Agarbathis. For a considerable long period, the applicant is using various trade marks for their Agarbathis containing the words "THREE IN ONE and FOUR IN ONE" such as "SHALIMAR THREE IN ONE, KUNAL THREE IN ONE, SHALIMAR 100 THREE IN ONE" among others. The use of the expression THREE IN ONE and FOUR IN ONE and other words referring to the numerical is intended to inform the purchaser that the cartons of agarbathis bearing such expression contain, the agarbathis of three different fragrances or four different fragrances as the case may be. Hence, such expressions are purely descriptive in nature, having a direct reference to the goods, indicating the number of fragrances each carton contains. While so, the first respondent has secured a registration of a trade mark THREE IN ONE in No. 426521 for agarbathis in Class 3 under the Trade and Merchandise Marks Act, 1958 and thereby the first respondent is in a position to claim exclusive right to use of the said expression in respect of Agarbathis and to prevent others from using the said expression in respect of each goods. The applicant apprehends legal action against them by the first respondent for infringement of the trade mark for use of such descriptive expression THREE IN ONE. When the impugned mark was advertised in the Trade Mark Journal dated 16.11.1989, there was an explicit disclaimer entered in the application to the effect that the first respondent cannot claim any exclusive rights to the expression THREE IN ONE. Subsequently, a notification appeared in a latter issue of the Journal dated 16.1.1990 under the hearing CORRIGENDA wherein the disclaimer in respect of the description had been withdrawn. The first respondent also field another application No. 544494 in Class 3 for registration of a trade mark containing the expression THREE IN ONE which has been advertised in the Trade Mark Journal dated 1.5.1997. The same is pending under opposition by the applicant. The first respondent, since already obtained a registration in respect of the impugned mark containing the expression, the applicant has filed this application. The first respondent filed counter contending that they are engaged in the manufacture and sale of incense sticks, i.e., Agarbathis for several years. During the course of the trade, the first respondent firm adopted the trade mark THREE IN ONE and started using it from the year 1981. It is further the case of the first respondent that ever since 1981, the aforesaid THREE IN ONE is being used continuously and extensively and has become distinctive of the first respondent's goods. The first respondent has also furnished the sales turn-over from 1981 to 2000. The registration was made by the Registrar only after careful consideration of the particulars furnished by the first respondent in the application for registration. The first respondent further registered the impugned trade mark in the United Arab Emirates; Kingdom of Saudi Arabia; Ethiopia, Brunei Darussalam. The first respondent also denied the use of the expression THREE IN ONE and FOUR IN ONE by the applicant. At any rate, the registration granted to the first respondent is not in contravention of the provisions of Section 9 of the said Act. By virtue of long, continuous and extensive usage, the first respondent has established a distinctiveness of their goods. The words THREE IN ONE in the carton of the first respondent would prove that the character and quality of the goods are separately mentioned in the carton for which the Registrar of Trade Marks had imposed disclaimer. The applicant is not a aggrieved person and as such, the application is not maintainable and accordingly the same is liable to be dismissed.
(3.) THE learned counsel for the applicant, Shri M.K. Rao, fairly represented that the first respondent's trade mark as per the Certificate is CYCLE brand Agarbathis under the registration of Trade Mark No. 426521, dated 14.9.1990. Subsequently, the same has been periodically renewed. THE applicant has no objection for the registered Cycle brand. THE only objection of the learned counsel is in respect of the words THREE IN ONE in the cartons of the first respondent on the ground that the first respondent got them registered and thereby the first respondent gets an absolute right in respect of those words as a registered mark and is entitled to prevent the other manufacturers from using such words. When the words THREE IN ONE or FOUR IN ONE are common in nature, cannot be registered in anyone's favour, because it reflects the descriptive expression of the different fragrances of Agarbathis in the carton. Every manufacturer is entitled to use such descriptive expression in their respective cartons and no one can claim any exclusive ownership or right in respect of the said impugned registered mark. When the disclaimer in respect of the word THREE IN ONE of the first respondent registered trade mark was published on 16.11.1989, marked as DOCUMENT No. 2 it is not clear as to the basis on which the corrigenda was published in the manual marked as DOCUMENT No. 4.;