Raghbir Singh, Vice Chairman - (1.) C.O. No.8/2002 filed in the High Court of Delhi was filed under Sections 56 and 107 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) and the same has been transferred to this Board in terms of section 100 of the Trade Marks Act, 1999 and numbered as TRA/168/2004.
(2.) As per the petitioner, the petitioner is a company organized and existing under the laws of Canada. Petitioner company is engaged in the business of manufacturing, marketing, selling and trading in respect of polymer modified cementatious materials, woven tapes or cloths of glass and / or steel fibbers, impregnated of bearing cementatious compositions, etc., and is the owner of trade mark 'TAPECRETE'. The said trade mark is registered in Canada and USA. The petitioner entered into a collaboration agreement and technology licence agreement with Mr. Amit Gupta, Director of Structural Water Proofing Company (P)Ltd.,, New Delhi and mutually desired to establish in India an organization and facilities for the purpose of producing, marketing, selling and contracting products manufactured by the petitioner in Canada and it was decided that the name of joint venture in India shall be FRC Composites India Private Limited which company was later on converted into a public limited company under the name and style of FRC Composites India Limited. The petitioner has subscribed 40% of the issued and paid up equity capital of FRC Composites India Limited. It transpired on 22.4.1987 that respondent No.1 at the behest of Mr. Amit Gupta and behind the back of the petitioner applied and obtained registration of trade mark 'TAPECRETE' for polymer modified cementitious materials under No.471218 in class 1 in its own name. The said registration by respondent No.1 was done without the knowledge of the petitioner and that the petitioner was kept in dark about the fraudulent registration all through. Respondent No.1 through its Director Shri Amit Gupta was fully aware that Respondent No.1 is not the owner of trade mark 'TAPECRETE' and the said trade mark belongs to the petitioner company who invented and adopted the same in Canada in the year 1975. Thus respondent No.1 through its Director, Shri Amit Gupta has committed fraud and has fraudulently got registration in its name. Respondent No.1 has further committed a fraud by assigning the trade mark to respondent No.2 by virtue of assignment deed dated 1.4.2000. Respondent No.1 had no rights either to obtain the registered trade mark registered in its name or to assign the trade mark to respondent No.2. Respondent No.1 was always aware of the invention, prior adoption and prior use of the trade mark 'TAPECRETE' by the petitioner in Canada for aforesaid products since 1975. Respondent No. 1 and 2 are not the proprietors of the mark in terms of section 18(1) of the Act. The trade mark registered was not distinctive of the goods or business of respondent No.1 on the date of application dated 22.4.1987. The registration also contravenes the provisions of section 11 of the Act. The petitioner is an aggrieved person entitled to seek rectification. Respondent No.1 in their written submission in the form of affidavit dated 24.1.2003 controverted all the material averments of the petitioner. Respondent No.1 submitted that the petitioner has already concluded an agreement for the sale of 40% of the shareholdings in the respondent company and are now endeavouring to wriggle out of the contract by filing the present suit and the respondent has filed suit of specific performance against the petitioner in that regard. Respondent No.1 submitted that the respondent continuously kept the petitioner informed of the developments in the respondent company. It was only on the active participation of President of the company in Canada that the said trade mark was registered in India. The petitioner was duly informed of the registration of the mark and copies of entire documents relating to the same were handed over to the petitioners.
(3.) THE matter was taken up for consideration by the Board in its sitting held at New Delhi on 14.2.2005. Learned counsel Shri Ajay Brahme appeared on behalf of the petitioner and learned counsel Shri Ashok K.Chabra appeared on behalf of the respondents.;