Raghbir Singh, Vice-Chairman - (1.) THE petitioner filed O.P. No. 405/03 under Section 56 read with Sections 107 and 108 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) in the High Court of judicature at Madras and the same has been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and numbered as TRA/43/04/TM/CH.
(2.) According to the petitioner referred to above, in 1945 one Shri P. Iya Nadar conceived and popularised and brand 'CAMEL' and got the same registered under No. 109120 dated 4.4.1945 for being used for safety matches under the name and style of South Indian Lucifer Match Works. There are certain events whereby the said proprietory concern was converted into a partnership firm and ultimately reverting back to a proprietary concern, which events are not material for the present case excepting that the issues relate to parties who are part of the same family owing its origin to Shri P. Iya Nadar. Shri Iya Nadar by a deed of settlement dated 1.10.1980 transferred the ownership of the trade mark to a public charitable trust under the name of P. Iya Nadar Charitable Trust. On a request in form TM-24 dated 12.6.1981, the Registrar by an order dated 2.4.1984 registered the mark in the name of public charitable trust. The said trust applied for another trade mark 'CAMEL' for card board safety matches in class 34 and the same was registered under No. 439372 dated 24.6.1985. The said mark was treated in association with earlier registered mark No. 101920. A deed of lease dated 1.4.1983 was executed between the respondent trust and the petitioner by which the entire business including the plant and machinery and land and building were given out on lease to the petitioner for a period of five years on an agreed rental. The said lease has been periodically renewed and the last such renewal was dated 31.3.2003 making the lease valid for a period of 20 years from 1.4.2003 to 31.3.2003 on a rental of Rs. 75,000 per annum. With the demise of Shri Iya Nadar on 27.12.1982, there had been frictions and disputes in respect of family properties and businesses amongst the children of Shri Iya Nadar. The petitioner has submitted that it had been sub-contracting of manufacturing of safety matches with the 'CAMEL' brand with various other manufacturing facilities to various units detailed by it in the petition which are held by the members of the family of late Shri iya Nadar and some others. The petitioner alleges that recently respondent No. 1 has issued certain notices to sub-contractors for having not paid royalty allegedly due and payable to respondent No. 1. The petitioner has submitted that it has taken advice from trade marks specialists recently and has been advised that the very registration of the mark in favour of the respondent trust by a deed of settlement dated 2.10.1980 is ultra vires of the Act, in particular in matter of Section 6(2) of the Act which provides that "No notice of any trust, express or implied or constructive, shall be entered in the register and no such notice shall be receivable by the Registrar". The petitioner alleges that the 'CAMEL' brand safety matches are manufactured and sold by not less than 30 units in Tamil Nadu only, some of which are owned and operated by family members of late Shri Iya Nada. Thus the device is being allowed to be diluted. The petitioner has submitted for the expunction of the registered mark 'CAMEL' under registration No. 109120 and 439372 both in class 34 in respect of safety matches and card board safety matches on the ground that their registration in itself is in violation of the provisions of Section 6(2) of the Act. The respondent has no legal right to maintain the mark and it has no intention to use the same and it is only interested in trading with the mark for consideration by way of lease or royalty. Through such indiscriminate usage by several parties, the very distinctiveness of the mark has been lost completely. In the counter-statement filed on behalf of the first respondent certain preliminary objections have been raised to the filing of the petition. It has been submitted that the petitioner is estopped to dispute the respondent's absolute right as proprietor over the trade mark 'CAMEL' since he had been acknowledging its right since 1980. The petitioner being lessee cannot take advantage of its own wrong. The petition is barred by limitation as the right of the first respondent over the trade mark 'CAMEL' has been unequivocally acknowledged and accepted by the petitioner over a period of 23 years. The persons who manage the petitioner company and the first respondent trust are close relatives and belong to the family of late Shri Iya Nadar. The present dispute is only an offshoot of ongoing disputes within the family. The first respondent has given details of 25 factories established by Shri Iya Nadar and his family members who are using the trade mark 'CAMEL'. The first respondent has filed various suits for the recovery of royalty in different civil courts which are still in progress'. The first respondent has also given details of the various suits filed against the 17 manufacturing units mentioned by the petitioner in his petition. All these units are held by the family members of late Shri P. Iya Nadar. The first respondent has disputed the interpretation raised by the petitioner in matter of Section 6(2) of the Act. It is fallacious. All the 30 units held by the petitioner in the State of Tamil Nadu using the brand 'CAMEL' are owned and operated by the family members of late Shri Iya Nadar on the basis of permission from the first respondent trust. There are only a few infringers including the units established by Shri V. Ramamurthy and action against those infringers as and when occasion arises had been initiated by the first respondent through civil and/or criminal proceedings. Thus, the charge of trafficking in the 'CAMEL' trade mark is false and groundless. The petitioner being the beneficiary of the first respondent trust cannot be permitted to maintain the petition on the principle of equity, justice and good conscience and in particular under the principle of estoppel. Petitioner filed his reply and evidence in the form of affidavit on 2.8.2004.
(3.) THE petition was taken up for arguments on 25.10.2004 in the sitting of the Board held at Chennai. Learned counsel Shri P.S. Raman appeared for the petitioner and learned counsel Shri Satish Parasaran appeared for the first respondent.;