S. Jagadeesan, J. (Chairman) - (1.) THE petitioner filed this petition under section 56 and 46 of the Trade and Merchandise Marks Act, 1958 for cancellation of the registered trademark No. 326169 in Class 12 in the name of the respondents 1 and 2. Originally the petition was filed in the High Court of Delhi in C.O. No. 15 of 1993 and the same stood transferred to this Appellate Board by virtue of section 100 of the Trade Marks Act, 1999. THE petition was heard on 25.1.2005 during our sitting at New Delhi.
(2.) It is the case of the petitioner that they were carrying on business of manufacture and sale of cycle tubes and tyres and quality rubber goods since 1973 adopting the trademark 'USHA' in respect of cycle tubes. By virtue of the user, the petitioner became the proprieoter of the said mark and the same is used in the course of the trade and the mark has become distinctive to identify and recognise with goods exclusively belonging to the petitioner. The second respondent herein filed a suit No. 1409 of 1993 against the petitioner for infringement of trademark 'USHA' and passing off etc. on the basis of the registration of the mark No. 326169 in class 12 in respect of tyres and tubes for cycles, in their favour. The second respondent also obtained an interim injection restraining the petitioner from using the same mark and the order of injunction is still in force. The word 'USHA' is a well-known female personal name among the Hindus and as such, the respondents 1 and 2 cannot claim any exclusive right over the trade mark 'USHA'. The first and second respondents were not the proprietors of the trademark 'USHA' on the date when the first respondent filed the application for registration as the petitioner was already using the said trademark in respect of cycle tubes. The respondents 1 and 2 had obtained the registration by making a false statement. Though they claim the user since 1974, they have totally failed to produce any evidence to substantiate their claim. The first respondent did not even file the affidavit of user of the said trademark 'USHA'. The first respondent assigned the impugned trademark in favour of the second respondent. The Assistant Registrar has allowed the request on Form TM-24 without any documentary evidence and as such, the assignment pleaded by the second respondent is illegal. The registration in favour of the first and second respondents is in contravention of the provisions of section 9, 11(a), 11(e), 12(1), 18(1) and 18(4) of the Trade and Merchandise Marks Act, 1958 and as such, the registered mark of the second respondent has to be removed from the register of the trademark. The respondents 1 and 2 filed a reply stating that they filed a suit No. 1409 of 1993 in the Delhi High Court and obtained an order of injunction restraining the petitioner from using the trademark 'USHA' as early as 7.7.1993. Immediately thereafter, the petitioner filed this petition on 3.8.1993 as a counter blast to the suit filed by the respondents 1 and 2. It is also stated that the petitioners are neither owners nor proprietors of the impugned mark and the petitioners pirated the same during the first week of July 1993 with malafide intention. The injunction granted in favour of the respondents 1 and 2 is still in force and the respondents are restrained from using the said mark. The respondents are using the mark since 1974 and the first respondent assigned the mark in favour of the second respondent as early as 2.1.1989. Since the registration in favour of the respondents is in conformity with the provisions of Trade and Merchandise Marks Act, 1958, the petitioner cannot seek a rectification to have the benefit of the use of the said mark. Hence the petition is liable to be dismissed. The petitioner filed a rejoinder mainly controverting the statements in the reply and also further stated that the documents produced by the petitioner establish that the petitioner is the prior user of the mark since 1973. Admittedly, when the first respondent has claimed the user since 1974, they become the later user adopting the petitioner's mark with malafide intention and got the registration of the same by filing an application in 1977. As admittedly the respondents being subsequent user, they are not entitled for registration of the same and consequently the registration in their favour is liable to be removed.
(3.) SHRI V.P. Ghiraiya, learned counsel appeared on behalf of the petitioner. Though the notice was served on the respondents, there was no representation on their behalf.;