S. Jagadeesan, Chairman - (1.) THE applicant filed the application for setting aside the order dated 27.4,1998 of the Registrar of Trade Marks, the 4th respondent herein recording in the Register the second respondent as the subsequent proprietor of the trade mark 477067, Nandi Seeds, in class 31, jointly owned by M/s. M.V. Subbaiah; M.V. Subha Rao; M. Anjaneyalu and K. Sivaji in T.M. 24 dated 7.12.95 and to set aside the order of the Registrar of Trade Marks, the respondent herein, recording in the register the 3rd respondent Nandi Seeds Private Limited as subsequent proprietor by order dated 29.4.98 in TM 24 dated 3.4.98 and to rectify and remove from the Register the Trade Mark No. 477067 in class 31 presently in the name of the 3rd respondent herein.
(2.) The case of the applicant is that the applicant is engaged in the business of production and marketing of various kinds of seeds i.e., Hybrid Bajra, Hybrid cotton seeds, castor seeds, wheat seeds, muster seeds, etc. The predecessor of the applicant, Nandi Seeds Corporation started the business in the year 1976 under the trade mark "Nandi". The said trade name for the purpose of their business was adopted as trade mark. The predecessor of the applicant got the name "Nandi" registered under registration No. 353869 from 26.9.1979 on the basis of their use since 1976. Subsequently, the said trade mark was assigned to the applicant i.e., "New Nandi Seeds Corporation". The assignment was approved by the Registrar of Trade Marks and was also advertised in the Trade Mark Journal dated 1.3.93. Thus, the applicant is the registered proprietor of the said trade mark 'Nandi'. While so, the first respondent was trading under the name and style of M/s. Nandi Seeds, claiming to be the registered proprietor of trade mark "Nandi" in respect of the seeds. The applicant was not aware, as to how the first respondent became the registered proprietor of trade mark "Nandi". The first respondent also did not obtain any permission from the applicant. On coming to know that the first respondent was producing and marketing the products using their trade mark "Nandi", with the same and similar logo used by the applicant, the applicant issued a notice dated 5.4.87 to the first respondent calling upon him to refrain from using the disputed trade name/mark "Nandi" as well as the device and logo in respect of the seeds. The first respondent through his advocate sent a letter dated 5.5.87 refuting the charge and contended that the first respondent was not aware about the adoption of the trade mark himself in the trade by using the disputed trade mark. However, the applicant came to know from the local market at Amreli in Gujarat State that the 3rd respondent company, incorporated under the Companies Act, of which the first respondent is the Managing Director, had marketed cotton seeds in the name of Nandi seeds. On the basis of the said information, the applicant filed Civil Suit No. 2/97 in the court of District Judge at Amreli against the 3rd respondent as well as one Shiv Agro Chemicals, the distributors of the 3rd respondent company for infringement of the applicant's trade mark. The applicant contended that the trade mark "Nandi" and the device thereon were registered in favour of the applicant not only under the Trade Marks Act but also under the Copyright Act and as such the respondents cannot use the identical trade mark for their trade. In the reply to the injunction application, the first respondent stated that he was earlier carrying on business in the name of "Nandi Seeds" and he also obtained the registration certificate of the trade mark on 14.10.94. Thereafter, under an agreement dated 20.7.96 the said first respondent transferred the use of the said trade mark in favour of the 3rd respondent company and consequently the 3rd respondent company claimed right to market their goods under the disputed trade mark. The learned District Judge, Amreli granted interim ex pane, injunction on 26.11.97 against the 3rd respondent and subsequently the interim injunction order was made absolute. The 3rd respondent, being aggrieved by the order of the trial court, preferred an appeal before the High Court of Gujarat at Ahmedabad. The said appeal was disposed of by the High Court on 28.9.98. The High Court confirmed the order of injunction granted in favour of the applicant by the trial court, with certain variations. The High Court permitted the 3rd respondent to produce and market the seeds in the States of Andhra Pradesh, Karnataka and Maharashtra. Further, the High Court permitted the 3rd respondent to deal in products of cotton seeds and maize seeds in the State of Madhya Pradesh. The High Court confirmed the order of injunction granted by the District Court in favour of the applicant, in respect of other States. By a subsequent order, the High Court permitted the first respondent till the disposal of the suit to market their products in the State of Tamil Nadu also. As a result, the 3rd respondent was permitted to market their products in the brand name of "Nandi" in the States of Andhra Pradesh, Maharashtra and Tamil Nadu and also market its products of cotton seeds and maize seeds in the State of Madhya Pradesh subject to the right and the contention of the parties to be decided in the suit. The first respondent Mr. Subbaiah, transferred and assigned all his rights in the said trade mark in favour of the 2nd respondent, who in turn transferred the same in favour of the 3rd respondent herein, who became the subsequent proprietor and owner of the registered trade mark. The applicant made detailed enquiries at the Registry and also traced the relevant trade mark transferred. From the two orders of the Registrar, gazetted in the trade mark journal 1178, it is evident that it is only on a request from the first respondent to record the assignment of the trade mark in favour of the joint proprietors of the partnership firm, the same was done in favour of second respondent herein. The further entry in the trade mark journal reveals that the second respondent firm applied for transfer on 3.4.98 and the same was effected in the Registry on 29.4.98. These transfers by the first respondent and thereafter by the second respondent were made, when interim orders of the civil court was in force, totally surpassing the pendency of the civil court proceedings. The second respondent made an application for transfer of the ownership in favour of the 3rd respondent even before the second respondent became the owner of the said disputed trade mark. When the second respondent filed the application for transfer, the application filed by the first respondent to change the ownership in favour of the 2nd respondent was still pending. Hence the application filed by the second respondent for transfer of the ownership of the trade mark in favour of the 3rd respondent itself is not maintainable and ought to have been rejected. The deed of assignment dated 25.2.91 in favour of the second respondent firm made it clear that the 3 partners shall have no right in the goodwill of the firm. However, contrary to the terms of assignment the letter of request in TM 24 given by the 2nd respondent mentions that the partnership firm is having goodwill of the business. When different procedures has been prescribed for the assignment of the trade mark registered without goodwill and with goodwill the entire procedure adopted by the respondents for transfer of the registered trade mark is illegal and virtually many of the statements filed before the Registrar of trade mark are not true and correct and thereby the transfer was obtained by fraud on the Registry. The first respondent cannot be said to be the bona fide user, who is entitled for the concurrent registration. There is absolutely no record to establish the use of the disputed trade mark by the first respondent for some considerable time prior to the filing of the application. In the absence of any such record, it is not open to the first respondent to claim to be the bona fide user entitled for the concurrent registration. As the entire procedure adopted by the Registrar cannot be sustained under law, the registration made in favour of the second and third respondents also cannot be sustained and are liable to be set aside. The applicant filed O.P. 169 of 1999 on the file of High Court of Madras seeking to set aside of the order of the Registrar of Trade Marks recording the second and third respondent as the subsequent proprietor of the Trade Mark "Nandi Seeds" and also to set aside the order of the Registrar of Trade Marks by order dated 27.4.98 and 29.4.98 respectively. The applicant also prayed for rectification of the register removing the Trade Mark registered as No. 477067 in class 31 presently in the name of Nandi Seeds Pvt. Ltd.
(3.) THE respondents 1 to 3 herein filed common counter stating that the first respondent has been carrying on the business as manufacturer of seeds under the trade mark of "Nandi" since 1980. On 5.4.87 the Applicant issued a notice to the first respondent calling upon the first respondent to stop using of the trade mark "Nandi" for his products. On 5.5.87 the first respondent sent a reply stating that he is using the disputed trade mark since 1980 and requested the Applicant to furnish a copy of the certificate and also reserved his right to give a detailed reply. THEreafter the Applicant did not take any steps till the filing of the suit on the file of the District Court, Amreli in 1997. THE first respondent applied for the registration of the trade mark "Nandi" in class 31 on 18.8.87. THE examination report sent by the Registrar of the Trade Marks reveals that the Applicant's mark is a pending mark. THE Registrar of Trade Marks granted the registration of the trade mark "Nandi" in favour of the respondent only after careful consideration of the materials placed by both the parties. THE first respondent entered into a partnership with Mr. M.V. Subba Rao and two others on 25.2.91 and applied to the Trade Marks Registry to register the partnership firm "Nandi Seeds", the second respondent herein, as subsequent proprietor of the registered Trade Mark No. 477067 in class 31. THE said partnership was again reconstituted under a deed dated 9.9.92. On 30.5.96, the first respondent floated a private limited company, the 3rd respondent, in which the first respondent is the Managing Director. On 30.7.96 the first and second respondents assigned the registered trade mark in favour of the 3rd respondent. THE 3rd respondent had filed a request for registering them as the subsequent proprietor of the disputed trade mark on 26.2.98. Considering the request filed by the second and third respondent, the Registrar of Trade Mark allowed the request made by them, by orders dated 27.4.98 and 29.4.98 respectively. THE respondents are using the disputed trade mark for a very long time without any interruption from any third party and as such the registration in their favour cannot be questioned after a lapse of considerable time. THE first respondent requested the applicant by their reply dated 5.5.87 to produce the copy of the certificate of registration. THE Applicant neither sent any reply, nor forwarded the copy of the certificate of registration. THE respondents are continuously using the disputed trade mark and only to safeguard their right to the disputed trade mark, the first respondent applied for the registration of the said trade mark on 18.8.87. THE Applicant did not challenge the assignment in favour of the 3rd respondent and as such the registration of the trade mark in favour of the third respondent is not affected. THE interim order granted by the learned District Judge Amreli is not a final order and it is an interim order pending disposal of the suit. THE impugned orders of the Registrar are only registering the change of ownership of the trade mark in the records of the Registry. As the Applicant did not challenge the assignment in favour of the 2nd and 3rd respondent, the impugned orders of the Registrar is quite valid. THE first respondent produced all the necessary documents to establish his user since 1980. Section 11 of the Trade and Merchandise Marks Act has no relevance to the instant case. THE first respondent was a concurrent user and as such entitled for the registration of the disputed trade mark under Section 12(3) of the said Act. THE first respondent was carrying on the trade independently till 1.4.85 and thereafter he was carrying on the business with the assistance of other persons who became the partners under the partnership deed dated 25.2.91 and 9.2.92. THE said partnership firm had started using the trade mark in question from the date of the assignment of the same in their favour. THE first respondent being a long user of the disputed trade mark is entitled for the concurrent registration under Section 12(3) of the said Act. Since the Registrar of Trade Mark granted the registration in favour of the respondents after considering the documentary evidence, it is not open to the Applicant to seek for the rectification so belatedly. THE Applicant cannot maintain the petition since he is not an aggrieved person. THE registration of the trade mark having been granted in favour of the respondents restricting in respect of the sales in the States of Tamil Nadu, Andhra Pradesh and Maharashtra, the Applicant cannot at all be aggrieved by the same. THE High Court of Gujarat also vacated the, interim order granted by the District Judge, Amreli and permitted the respondents to use the trade mark in respect of the sale in the above said restricted States. Hence, there is absolutely no merit in the application and the O.P. is liable to be rejected.;