S.Jagadeesan, J. (Chairman) - (1.) THE petitioner filed OP No. 368 of 2003 on the file of High Court of Judicature at Madras for rectification of the first respondent's trade mark by removing the mark 'SWASTIK' registered under number 232283 in class 30 and cancel the same. By virtue of section 100 of the Trade Marks Act, 1999, the said OP was transferred to this Appellate Board and numbered as TRA/42/2003/TM/CH.
(2.) The case of the petitioner is that in or about 1973 one Mr. A.C.Venkatachalapathi, the promoter and Director of the first petitioner, originally started the business under the name and style Swastiks Chemical Industries as a proprietory concern at Bangalore, adopting the trade mark 'SWASTIKS'. In 1992 he inducted his son Shri A.V.Sridhar as a partner in the business and constituted the second petitioner firm under the name and style of M/s Swastiks Instant Food Products. The second petitioner firm took over the business of the first petitioner also as a going concern with its goodwill in the business and also with all tangible and intangible assets including rights under the registered and unregistered trade marks. The second petitioner adopted the trade mark 'SWASTIKS' along with the device of 'SWASTIK' in respect of various food products manufactured and marketed by them apart from the trade marks acquired from the first petitioner. The petitioners have got the registration of their mark under No. 330673 registered as of 15.11.1977 in respect of preparations included in class 30 for making gulab jamoon mix and arrowroot powder and under No. 479408 for glucose registered as of 6.10.1987, both under class 30. Another registration No. 546489 is in respect of castor oil under class 29 registered as of 4.3.1991. The petitioners also applied under application No. 480323 for glucose and application No. 480324 in respect of instant jamoon mix as well as application No. 818660 in respect of spices of all kinds and other products under class 30. They also filed application No. 818659 in respect of edible oils, fats and pickles and other products under class 29 and application No. 818661 in respect of agriculture, horticulture and forestry products and other falling under class 31, which applications are still pending with the Registrar of Trade Marks. The partnership firm was promoted as a limited company and accordingly incorporated as a private limited company under the name and style of the first petitioner Swastiks Masalas Pickles and Food Products Private Limited since 10.12.1999. After the incorporation of the first petitioner the trade mark 'SWASTIK' along with the goodwill owned by the second petitioner were assigned in favour of the first petitioner. The petitioners, right from 1973 through their predecessors in title and by themselves have been extensively using the said trade marks and their turnover in the year 1989-90 was Rs.33,33,124.88 and the same increased to Rs.5,10,37,565.13 in the year 1998-99. The first respondent filed suit OS No. 73 of 2000 on the file of City Civil Fast Track Court at Hyderabad against the petitioner on the cause of infringement of their trade mark and the said suit is pending. In the course of the trial of the said suit before the fast track court, the petitioners came to know that the first respondent is using the name 'Swastik Mirch Stores' as a trading name and not using the mark 'SWASTIK' as a trade mark in respect of any goods. Hence the trade mark of the first respondent is neither distinctive nor adopted to distinguish any of its products. The registration by the first respondent itself is only as 'Swastik Mirch Stores' and the business of the first respondent is a wholesale store. To the knowledge of the petitioners the first respondent is not manufacturing or marketing any food preparations under the alleged trade mark 'SWASTIK'. The first respondent filed a suit before the City Civil Fast Track Court at Hyderabad on the ground that their registered mark 'Swastik Mirch Stores' under No. 232283 under class 30 is for the manufacture of chilly powder, turmeric powder, coriander powder masala. As the first respondent did not use the impugned mark in relation to any goods specified in the certificate of registration and moreover it is only a trading name of the first respondent, ultimately the first respondent is not using the mark in respect of any goods mentioned in the specification for a period of five years and one month prior to the date of filing of the application, is allowed to stay in the register without sufficient cause and consequently is liable to be removed from the Register. When, from the inception of the registration of the first respondent's mark, 'Swastik Mirch Stores' being used only as a trading name of the first respondent and there being no bonafide intention on the part of the first respondent to use the said mark 'SWASTIK' as a trade mark in respect of any of the commodities mentioned in their registration certificate, the impugned mark is liable to be removed from the Register and hence the petitioners are seeking the relief. The first respondent filed counter statement stating that their mark cannot be challenged since 7 years had elapsed after the registration and the same has become valid in all respects. Further the suit OS No. 73/2000 on the file of City Civil Fast Track Court at Hyderabad had decreed in their favour on 1.5.2003 and the appeal filed by the petitioners are pending. As the matter is sub-judice before the Court, the application is not maintainable. The first respondent is using the registered mark 'SWASTIK' since 1965 and gained unrivalled reputation for its quality and purity. The petitioners have adopted the mark to infringe the registered trade mark of the first respondent and there is no honesty in the conduct of the petitioners in adopting the mark as their registration is subsequent to the registration of the first respondent. So far as the registration of the petitioners' mark in respect of gulab jamoon mix, arrow root powder, glucose is concerned, the first respondent is not manufacturing those products. The petitioners have filed the petition only to overcome the order of injunction granted by the civil court. The first respondent is a leading manufacturer of spices, masala etc., for the past five decades and to label him as "Wholesale provision shop" is defamatory. They are manufacturing masalas, mirch, turmeric, garam masala, sambhar masala, peppu powder etc., and they have established their reputation by the name 'SWASTIK' only. The mark has been renewed periodically and swastik masala of the first respondent have no rivals. Basically the first respondent applied for the name as a trade mark for their goods. As the petitioners adopted the mark of the first respondent and created confusion in the trade as well as among the public, the first respondent filed the suit which ultimately was decreed. Though the appeal filed by the petitioners is pending in the High Court that cannot be a reason to maintain the application for rectification. The first respondent is using the trade name in respect of the goods continuously without any interruption.
(3.) WE have heard the arguments of Shri R.Sudhakar learned counsel assisted by M/s Kane, Prabhakar Reddy and Raghavacharyalu for the petitioners and Shri Manohar Prasad Mathur learned counsel assisted by Shri R.C.Varma for the first respondent.;