S. Jagadeesan, J. (Chairman) - (1.) THE applicant filed this application under section 57 of the Trade Marks Act, 1999 (hereinafter referred to as the said Act) for rectification of the Register of Trade Marks by directing the Registrar of Trade Marks to expunge and cancel the respondent's mark 'NEW M P JEWELLERS' under registration No.690610 dated 14.12.1999. THE case of the applicant is that it is a registered partnership firm established in or about 1945. It was registered with the Registrar of Firms. THE applicant used the words 'M.P. JEWELLERS' and /or 'M. P.' as its trading names and trade mark in respect of its business to distinguish its products. THE said trade marks have been popular in the field of jewellery, precious and semi precious stones together with astrological consultancy services. Apart from the registered place of business at Ramakrishna Samadhi Road, Kolkata, the applicant also has branches in other places of Kolkata. THE applicant is engaged in trading and marketing of all types of jewellery made of gold, silver and other precious metals. THE said jewelleries are sold and marketed under the trade name and trade mark 'M.P. JEWELLERS' and / or 'M.P.'. THE said trade marks were registered and some of the applications for registrations in different languages are pending. THE applicant is using the said marks continuously since 1945 and their turnover for the year 1988-89 was Rs.38,46,890 and the same rose to Rs.15,91,19,615 during the period 2002-03. Similarly the advertisement expenses of the applicant which was Rs.4,36,867 in the year 1988-89 rose to Rs.1,11,00,739 during the year 2002-03. Due to the long use of the mark, the public associates the same exclusively with the applicant. THE applicant also initiated legal proceedings against M/s National MP Jewellers and another M/s New MP Jewellers for using the same mark. THE applicant filed yet another legal proceeding which was settled between the parties. In or about 1997 the applicant came to know that some other party was offering jewels for sale under the trade name 'M.P. JEWELLERS' alias 'NEW M.P. JEWELLERS' consisting of words M.P. JEWELLERS so as to take unlawful and illegal benefit of the goodwill existing in favour of the applicant and filed a suit which also ended in compromise. Whenever the applicant came to know about the use of the offensive mark, without fail they initiated legal proceedings to protect their mark. In 1995 the applicant came to know that the respondent herein using the trade name M/s New MP Jewellers and making unlawful gain by passing off its goods as that of the applicant. THE applicant duly filed a suit 4/1996 on the file of the District Court, Hooghly for injunction restraining the respondent from passing off its goods as that of the applicant. By an order dated 7.6.1996 the District Judge restrained the respondent from using the name 'NEW MP JEWELLERS' or another name which includes the words 'MP JEWELLERS'. During the pendency of the suit, in or about May, 2001 the respondent took out an application stating that they have changed the name of their business from the impugned 'M/s NEW M.P. JEWELLERS' to 'M.M.P JEWELLERS' and prayed for disposal of the suit in view of the change of name. As the change of name by the respondent gave rise to a new cause of action, the applicant filed another suit OS 12/2001 in the District Court, Hooghly alongwith an interlocutory application seeking for interim injunction. THE District Judge granted the interim order restraining the respondent from using their trade name 'MP JEWELLERS' or another deceptively similar trade name. Irrespective of the injunction order the respondent was using both the impugned names, 'NEW M.P. JEWELLERS and M.M.P . JEWELLERS'. Later the applicant came to know that the respondent did not change their name from 'NEW M.P. JEWELLERS' to 'M.M.P. JEWELLERS' and were continuously using the name 'NEW MP JEWELLERS'. On 27.11.2003 the respondent's counsel served a copy of the application under Order VI Rule 17 in OS 4/1996 to amend the written statement including the fact that the respondent is the proprietor of the registered trade mark 'NEW MP JEWELLERS' under No.690610 in class 14 as the same was registered under the Trade and Merchandise Marks Act, 1958. THE applicant is the prior adopter and prior user of the mark 'M.P. JEWELLERS' and / or 'M.P.' in respect of jewellery and precious metals and the said marks have become distinctive of the goods of the applicant. Hence the use of the impugned trade mark by the respondent is unlawful and the impugned registration is in contravention of sections 9, 11 and 18(1) of the said Act. THE trade mark of the applicant earned huge goodwill and as such the use of an identical mark by the respondent would cause deception and confusion among the public even if the impugned mark is used in respect of goods and / or services which is not similar to the goods of the applicant. Hence the remaining of the mark in the Register is in contravention of section 11(2) of the Act. THE applicant came to know about the registration only by way of the amendment petition filed by the respondent and immediately this application for rectification was filed.
(2.) The main grounds urged by the applicant are that they are prior adopter and user of the impugned mark as such the registration granted in favour of the respondent is in contravention of provisions of sections 9,11, and 18(1) of the Act. Furthermore the impugned mark being same or identical to that of the applicant's mark, the use of the same would cause confusion and deception in the trade as well as in the public. The respondent obtained the registration suppressing the pendency of the proceedings in the Civil Court and as such the impugned mark cannot continue to be in the register and there is no sufficient cause for the registration of the same and also for continuation of the same in the Register. The respondent filed their counter statement stating that they adopted the composite mark in the year 1992 comprising the letters 'N M P J' interwoven with each other, making a monogram and name 'New M.P. Jewellers' to be used in connection with its business in relation to gold and silver ornaments. After adopting the composite trade mark the respondent had been using the same continuously to the knowledge of all concerned. In order to get the statutory protection, the respondent applied for registration of the monogram 'N M P J' with 'New M.P. Jewellers' and also obtained the registration as there was no opposition. When the respondent was using the monogram with the name honestly, they received a notice in June, 2004 from the District Court through which it came to know about the injunction order in the other suit. It had also filed an application for vacating the interim order. The respondent also filed an application for amendment of the written statement after obtaining the registration and the same was allowed. The present rectification application is vexatious, motivated and out of business rivalry. The respondent adopted the monogram written in a particular style interwoven to distinguish and to denote their product and the name 'New M.P. Jewellers' adopted long back in the year 1978. Apart from this plea the respondent made specific denials of the averments in each and every paragraphs of the application and further stated that the application filed to dismiss the suit OS 4/1996 on the ground of change of name into 'M P Jewellers' from 'New M P Jewellers' was not pressed as the application filed in or about 2001 was in disturbed mind as the respondent was completely frustrated and in depression. The respondent also pleaded that the use of the composite mark, monogram 'N M P J' with the name 'New M. P. Jewellers' will not cause any confusion or deception in the trade. Along with the counter statement the respondent also filed evidence in support of the registered mark by way of an affidavit of Madan Mohan Pal, the sole proprietor of the respondent's firm wherein it is stated that the respondent honestly adopted the name 'New M.P. Jewellers' in the year 1978 and the name was adopted from the initial words of his name and first letters of Madan Mohan Pal. He also furnished the sales statistics for the year 1990-91 which was Rs.3,20,112 and it rose to Rs.13,19,279 during the period 1995-96.
(3.) THE applicant filed evidence in reply and also the objections to the supplementary affidavit to the evidence in support of registration.;