S. Jagadeesan, Chairman - (1.) THE applicant has filed this application under Sections 11, 32, 46, 107 and 108 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act), seeking a direction to the Registrar of Trade Marks to cancel the Trade Mark of the respondents Hexagon Frame covered under Certificate of Registration of Trade Mark No. 394013 B in Class 24 in Part B dated 10-8-1982.
(2.) The case of the applicant is that the Respondents No. 1 to 5 are the joint proprietors of the Trade Mark No. 394013 B in Class 24 in Part B and trading as M/s. P.M. Palani Madaliar & Co. The applicant has been carrying on the business dealing with handloom towels and lungies ever since 1975 under the label containing No. 744 with P R T Round Seal. By virtue of long, extensive and continuous use, the Trade Mark (label) 744 and PRT Round Seal has become distinctive of and is exclusively identified with the goods sold by the applicant in the Textile Market. The applicant is adopting and has selected 744 number because it represents the 7th house in the Horoscope of the applicant's husband Shri Premraj Chordia, in which are situated four planets viz., Sun, Moon, Mercury and Jupiter with 6th Rasi Virgo. The artistic work 744 label was thus extracted from the Horoscope of the applicant's husband. The Hexagon device frame used to display the letters "PRT" mark was also created by the Horoscope Scholar of the applicant in the year 1973. The applicant has been using this frame prominently in the labels used in the course of manufacture and sale of the applicant's products since 1975. The applicant in the course of the textile business has created enormous goodwill and reputation in the Trade Mark, The respondents registered Trade Mark label 144 is almost identical and similar to that of the applicant's Trade Mark label 744 and as such, the consuming public will mistake as to its identity and its source. The public and the traders will think that there is some connection between the applicant's goods and the respondents' goods, especially, when the goods are of the same kind. The respondents, knowing the applicant's popularity of the Hexagon device frame mark, fraudulently adopted the identical mark and applied for registration of the blank frame mark on 10.8.1982 and secured the registration clandestinely suppressing the applicant's use of the identical mark. The registration secured by the respondents, the subsequent user is liable to be rectified in view of Sections 11(a) and (e) of the said Act. The respondents, having known about the use of the identical frame and mark by the applicant, has falsely claimed as user since 1974 and the same would amount to fraud and as such, the respondent's registered mark is liable to be rectified under Sections 32 (a) and (b) of the said Act. It is the further case of the applicant that the respondents at the time of filing the application for registration had no bona fide intention to use the mark as applied for. Their intention is to use the mark alongwith the initial PMP in the blank frame. The respondents have no bona fide intention to use the mark as registered, but, use the same with additions and alterations. Since the respondents never used the mark as registered on any point of time from the date of registration, the mark is liable to be rectified under Section 46 of the said. Act for non use. The registered mark was not used by the respondents as registered, but, with additions and alterations substantially affecting the registered one. The respondents, when applied for registration had no right to use the Trade Mark under Section 2(v) (ii) in view of the applicant's pre-existing right on the said mark. The respondents' sole intention is to secure the frame and to display the initials and the numerals deceptively similar to that of the applicant's, which have had a very good reputation in the trade. The applicant also filed O.P. No. 712/1995 under Section 56 of the said Act in respect of the registered Trade Mark label 144 of the respondents. The applicant also filed an application for registration of the Hexagon framework with PRT Round Seal under Application No. 589840/1993 and the same is pending. For the above reasons, the applicant is seeking for the rectification of the Register of Trade Marks by removing the registered Trade Mark of the respondents No. 394013 B in class 24 in Part B dated 10.8.1982.
(3.) THE first respondent filed counter affidavit stating that the respondent firm P.M. Palani Mudaliar & Co. is the Proprietor of the Trade Mark device mark registered under No. 394013 B, dated 10.8.1982 in Class 24 and also the Trade Mark PMP registered under No. 394012, dated 10.8.1982, in respect of textile piece goods, including lungies, sarongs, handkerchiefs, sarees and dhotis. THE said registration had been duly renewed and is validly subsisting. THE firm is using the Trade Mark registered under Nos. 394012 and 394013 B together. THE respondents' device mark has become distinctive and is identified by the traders and public exclusively with lungies, handkerchiefs and other products. Rectification petition has been filed by the applicant only to harass the respondents. THE respondents have also referred to several criminal proceedings and the suit and other legal proceedings about which there is no need to mention elaborately except to draw an inference with regard to the conduct of the applicant. It is further stated that the respondents have filed their suit C.S. No. 1017/1995 on the file of the High Court of Madras and there is an interim injunction in their favour. It is further stated that the applicant has not sold any lungies since the year 1975 and they are not carrying on any business. THE applicant/s claim to have been carrying on the business at Madurai with the Sales Tax Registration No. 497904, whereas, the applicant was not registered with the Sales Tax authorities at Madurai and in fact, the Registration No. 497904 did not belong to the applicant. THE respondents had been continuously using the registered Trade Mark since 1974 and earned a reputation and goodwill for themselves. In fact, the applicant has copied the respondents' registered Trade Mark and device mark in its entirety.;