Raghbir Singh, Vice-Chairman - (1.) O.P. Nos. 764, 765, 766/2001 for rectification of the Register / removal of the trade mark from the Register under Sections 11, 46, 56 and 107 of the Trade and Merchandise Marks Act, 1958 were filed in the High Court of Judicature at Madras and have been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TRA Nos. 25, 26 and 27/2003/TM/CH.
(2.) Petitioner, M/s Jupiter Infosys, Kolkata is a company registered, under the Companies Act, 1956 and is carrying on business of sales and distribution of computers, computer parts, accessories, computer peripherals and other items of hardware. It does not deal in software. First respondent, M/s Infosys Technologies Limited, Bangalore filed an application with the Registrar of Companies, West Bengal seeking issue of a direction to the petitioner to change its name by deleting the word 'Infosys'. The Registrar of Companies, West Bengal declined to issue such a direction. First respondent filed a civil suit No. 319 of 1996 before the High Court at Kolkata alleging infringement of its registered trade mark 'INFOSYS' and for passing-off against the petitioner. In another matter relating to the public issue of the petitioner company, first respondent had addressed a communication to SEBI requesting that the petitioner company's application for public issue should be refused. First respondent filed C.S. No. 71/2001 before the High Court of Judicature at Madras in February, 2001 after obtaining leave to sue in application No. 222 of 2001. Alongwith the plaint, the respondent moved OA No. 109 of 2001 for interim injunction against the petitioner and ex-parte interim injunction was granted by that Hon'ble Court on 1.2.2001 restraining the petitioner company from using the name Jupiter Infosys (Pvt) Ltd. By a common order dated 22.5.2001, Hon'ble Mr. Justice A.K.Rajan dismissed all the four petitions moved by the respondent company (wrongly mentioned as petitioners in the application). Petitioner in its instant application for rectification of. the Register has claimed that it is an aggrieved person in view of the above facts. First respondent in its CS No. 71/2001 on the file of High Court of Judicature at Madras has claimed that it is the registered owner of the following trade marks. The petitioner has furnished the particulars of all the five trade marks claimed by the first respondent registered as under:- JUDGEMENT_24_TLIP0_20040.htm But later on it transpired in the pleadings and arguments that application Nos. 637314 and 637315 filed on 18.8.94 did not move for registration. The petitioner has claimed that mark registered as No. 475269, 475267 and 484837 were not used in respect of the goods for which the applications for registration had been made. Hence the first respondent had no bonafide intention to use the mark applied for registration in respect of the goods for which the registration was sought under Section 18 of the Act. First respondent company is a leading service industry. They are providing software services to leading companies in India and abroad. They have never manufactured or marketed any goods specified in the trade mark applications. They are only in the service industry. Hence the claim for use in respect of goods stipulated in the trade mark application claiming user since 1981 is incorrect and false. Thus it had no bonafide intention to use the mark under Section 18 of the Act. The mark 'Infosys' has all along been used by first respondent as a service mark and not as a mark for goods. First respondent even in the suits filed by it against the petitioner has claimed that it is providing software services to the leading companies in India and abroad. The mark registered have never been used in respect of goods for which those were registered for the last five years and one month, the period prescribed under Section 46 of the Act. Thus the registered mark is liable to be rectified on the ground of non use under Section 46 of the Act. The petitioner claims that the mark is disentitled to protection in court of law under Section 11(e) of the Act. Further the mark which was distinctive on the date of registration ceases to be distinctive on the date of this proceeding for rectification and is liable to be rectified under Section 32(c) of the Act. Petitioner further drew support from a recent circular issued by the Ministry of Law, Justice and Company Affairs, Department of Company Affairs vide No. 5/35/98-CL.V, General Circular No. 6/99 dated 13.05.1999 wherein that Department of Government of India, referring to the earlier circulars issued by it, has issued certain clarifications and in para 4 of that circular instructed that with the increase in combination of activities by companies in matter of financing and computer software, tendency has grown in to use the words Infosys; Software; Systems; Infosystem; Computers; Cyber; Cyberspace etc. in their names. The Department of Company Affairs has issued instructions to the Registrars of Companies advising that if a substantial portion of income of such company is in the area of software, change in the name reflected as above may be allowed. Thus the petitioner draws conclusion that the word 'Infosys' as such is not a word of exclusivity and has been allowed to be used in situations wherever the concerned companies have software as a business activity. The petitioner has further claimed that the word 'Infosys' is being used globally and for that matter the petitioner has submitted some downloaded material from the internet wherein the word 'Infosys' has been used in various situations. Thus the petitioner's claim is that since the first respondent is a leading company exclusively in the field of software, its registration Nos. 475269, 475267 and 484837 which are not relatable to services and are exclusively in relation to goods of various description mentioned in the Fourth Schedule under the Trade and Merchandise Marks Act, 1958 be removed from the register.
(3.) FIRST respondent in its counter affidavit denied all the contentions of the petitioner generally. FIRST respondent has pleaded that the petition is barred by limitation as the petitioner was aware about the subject registration in 1996 and has chosen to file the petition of rectification belatedly in 2001. Since its inception, first respondent has been active not only in developing software solutions for large scale industrial corporations across the globe, but in hardware, computer interface, mechanical aspects relating to software system as well as training on computer related activities. The main business activities of first respondent relate to customised software development, re-engineering services, maintenance work, dedicated offshore software development services, creation of marketing of computer software in India and in foreign countries. FIRST respondent had associate companies by the name of Infosys Manufacturing Systems Pvt. Ltd., Bangalore and Infosys Digital Systems (P)Ltd., Bangalore. The latter company was engaged in the business of electronic / electrical / mechanical components or sub-assemblies. Both these companies were absorbed into the first respondent company in the year 1983. FIRST respondent claims that both these companies were involved in the business of computer hardware. Under the trade mark 'INFOSYS', internationally acclaimed packages targeted towards banking sector, telecommunications, manufacturing and distributing are developed and marketed by the first respondent. The entire range of commercial activities of first respondent arc carried on under its trade mark 'INFOSYS' and it has given details of various awards won by the company for the services rendered by it. It mentioned about its worldwide clientele and presently it employs more than 10,000 high calibre software professionals. FIRST respondent has given its sales figures and the expenses on advertisements and promotional activities beginning with the year 1990-91 upto 2001-02. Its worldwide sales in the year 2001-01 stand at 2603,59,00,000 and its advertisement / promotional expenditure for that year are 129,79, 00, 000 (presumably in Indian rupees in both the cases, as there is no reference to the currency). FIRST respondent has denied that it is only a service industry and it has never manufactured or marketed any goods specified in the trade mark applications. It has extensively used the mark 'INFOSYS' in relation to goods for which registration was obtained. It has mentioned certain uses made by it which are relatable to the registration for which those marks stood. Those are:- a) Envelopes, letterheads for use in relation to computers, note pads upon which the expression 'INFOSYS' has been used. b) Institute started by first respondent by the name of INFOSYS LEADERSHIP Institute at Mysore. The said Institute issues its instruction manual and teaching material under the expression INFOSYS, c) Since first respondent's activities involve intricate combination of software and hardware, it has used the mark INFOSYS in relation to computer hardwares, interface, computer peripherals and electronic telex interface. Programmes developed by it , namely, Bank Away, Finacle form part of the hardware of computers. FIRST respondent has developed instruction manuals whereupon trade mark 'INFOSYS' has been used. The CDs pertaining to these programmes also come within the goods designated as computer interface, computer peripherals. FIRST respondent also used hardwares in relation to advertisements, promotion materials. The said brochures also show use of the mark / name INFOSYS in relation to computer machines which include machine tools and motors. FIRST respondent also undertakes annual technical support fees for maintenance of different programmes, that is, BANCS 2000, Finacle 6.0 etc. FIRST respondent has given the following as the various goods in respect of which they have used the trade mark INFOSYS:- i) Letterheads and other stationeries, response for proposals ii) Process maps, flow charts iii) Instruction and teaching materials iv) Computer hardware digital system v) Advertisements vi) Display in pavilions, galleries of the trade mark INFOSYS in relation to computer hardware vii) Automatic teller machines. FIRST respondent submitted that the technology which it specialises in involving an integral approach in application of software and the use of software cannot be detached from hardware, particularly for developing systems like Automatic Teller Machines, computer hardwares, computer peripherals etc. The system requires composite application of software and hardware and the use of the expression 'INFOSYS' in respect of such system automatically involves use thereof in respect of hardware. FIRST respondent has further denied that, in view of the recent circular of the Department of Company Affairs, 'INFOSYS' has become a descriptive expression like Cyber, Infotech, and Computers etc. The petitioner filed a common proof affidavit on 23.01.04 and common proof affidavit of the first respondent dated 24.1.04 were also filed.;