S. Jagadeesan, J. (Chairman) - (1.) THE petitioner has filed this petition under Sections 56 and 107 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act), for cancellation of the entry dated 25.10.1980 by entering the respondents as registered proprietors of the impugned mark. Originally, the petition was filed in CO 32/1995 on the file of the High Court of Delhi at New Delhi and subsequently transferred to this Appellate Board by virtue of Section 100 of the Trade Marks Act, 1999 and numbered as TRA/147/2004/TM/DEL.
(2.) The claim of the petitioner is that in 1971, four brothers, namely, S/Shri Kesar Singh, Ajit Singh, Teg Bahadur Singh and Navrattan Singh, all sons of Kirpal Singh, applied for registration of the trade mark 'RIAT' in respect of crank shaft, grinding machines and centreless grinding machines. The said mark was duly registered under No.276200 in the name of the said four brothers trading as M/s. Riat Machine Tools in class 7 of the Fourth Schedule of the said Act. By mutual consent, the partnership was dissolved under the dissolution deed dated 1.9.1978. S/Shri Ajit Singh and Teg Bahadur Singh retired from the said partnership business and as per clause 8 and 9 of the dissolution deed, they are entitled to manufacture centreless grinders, duplex surface grinders, bar straightening machines of all sizes, planners of all types and sizes and they are also entitled to use the mark 'RIAT' in respect of the four items alone. By virtue of the dissolution deed, the four items became the exclusive property of the retiring partners and after the death of Shri Ajit Singh, his wife Smt. Balwant Kaur, joined the firm M/s. Riat Grinders, which had the sister concern namely, Ajit Machine Tools. On 31.3.1992, a dissolution took place between Shri Teg Bahadur Singh and Smt. Balwant Kaur, wife of Shri Ajit Singh by which M/s. Riat Grinders was taken over by Shri Teg Bahadur Singh and M/s. Ajit Machine Tools was taken over by the legal representatives of Shri Ajit Singh. There was a subsequent agreement dated 28.10.1993 between Shri Teg Bahadur Singh and Smt. Balwant Kaur, wife of Shri Ajit Singh, by which the rights of centreless grinders and duplex grinders along with the trade mark 'RIAT' came to the share of Smt. Balwant Kaur. Hence, the legal representatives of Shri Ajit Singh under the trading name of M/s. Ajit Machine Tools are entitled to use the trade mark 'RIAT'. Respondents No.2 and 3 are the sons of the first respondent and they are carrying on the business of partnership concern under the name and style of Riat Machine Tools. The petitioners came to know that the respondents No.1 to 3 applied for the change of the name in the Register pertaining to the trade mark No.246200 by filing TM 24 dated 13.5.1980 and the same was ordered. The petitioners came to know about the same through the criminal complaint filed by the respondents No.1 to 3 against the petitioners under Sections 78 and 79 of the said Act. The respondents No.4 and 5 ordered and the TM 24 filed by the respondents No.1 to 3 and changed the proprietorship of the said trade mark in the Registry on 25.10.1980. The present application is to rectify the said entry on the ground that respondents No.4 and 5 did not issue any notice on Form TM 24 to the petitioners. Since the issue of notice is a mandatory one, failure to do so by the respondents No.4 and 5 vitiates the entries made in the Register. Even apart from that, on the canons of natural justice, respondents No.4 and 5 ought to have issued notice to the petitioners before ever any modification is made in the Register pursuant to the claim made by third parties. The respondents No.1 to 3 filed their reply stating that the petitioners' partnership concern is an unregistered one and as such the proceedings is barred under Section 69 of the Partnership Act. The respondents denied the claim of the petitioners that they are entitled to use the trade mark 'RIAT' pursuant to the dissolution deed of the partnership concern. Further, the petition is barred by limitation since already 15 years had elapsed and the petitioners had full knowledge of the change in the Register. Hence, the petitioners are guilty of delay and latches and as such, the petition is liable to be dismissed. The respondents also claimed that they are the proprietors, inventors and creators of the impugned trade mark and the registration of which had been periodically renewed from 11.11.1978 and till today it is valid. In the criminal complaint one of the petitioners Shri Kartar Singh, son of Shri Hazara Singh, partner of M/s. Ajit Machine Tools had given a statement on oath that he will not use the trade mark 'RIAT' either himself or in the name of the firm in future nor he would sell or offer for sale any goods manufactured by them having trade mark 'RIAT'. Pursuant to this undertaking, the Criminal complaint filed by the respondents No.1 to 3 was dismissed. Having given an undertaking before the Criminal Court, now, it is not open to the petitioners to claim any right in the said trade mark 'RIAT'. Consequently, the petition is liable to be dismissed. The petitioners filed a rejoinder stating that the entry made in the Register incorporating the names of the respondents No.1 to 3 as the proprietors is by fraud and the fraud being a continuous offence, the question of limitation does not arise. In support of the petition, the petitioners have also filed the certified copy of the deed of dissolution dated 31.7.1979 marked as Annexure-P3.
(3.) SHRI Surinder Singh appeared on behalf of the petitioners and SHRI Samar Bansal on behalf of the respondents No.1 to 3.;