Raghbir Singh, Vice Chairman - (1.) PETITION under sections 45, 56 and 107 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) was filed in the High Court of Delhi as C.O.26/95 and the same has been transferred to this Board in terms of section 100 of the Trade Marks Act, 1999 and numbered as TRA/146/04.
(2.) Petitioner is a partnership firm consisting of Shri Dwarka Nath Jain and his son Shri Kul Bhushan Jain. The said partnership agreement was entered into on 8.8.1979. The present petition has been filed by Shri Kul Bhushan Jain on behalf of the partnership firm. According to the petitioner, in the year 1970 Shri Dwarka Nath Jain conceived and adopted the trade mark 'JAMCO' in respect of radios, transistors and tape recorders and the business at that time was being carried out under the name of the firm Jain Music Corner. Shri Dwarka Nath Jain, Shri Kul Bhushan Jain and Shri Anil Bhushan Jain (Respondent No.1) used to work together in the said business in the same premises and the trade mark 'JAMCO' was used in the family business. Shri Anil Bhushan Jain, Respondent No.1 is another son of Shri Dwarka Nath Jain. As the business grew, another firm in the name of JAMCO RADIOS was established with Shri Dwarka Nath Jain and Shri Kul Bhushan Jain as the partners in the same premises. According to the petitioner till 1983 the trade mark 'JAMCO' was being used by both the petitioner and respondent No.1 and the same family business was carried out from the same premises. In the year 1983 it was considered to register the trade mark 'JAMCO'. Respondent No.1 suggested to his father and brother (Partners of petitioner) that as the firm 'JAMCO RADIOS' already possess the word / trade mark 'JAMCO' as its predominant and memorable part and portion, it is advisable that the petitioner firm shall be registered as a firm and application for registration of the trade mark 'JAMCO' is filed in the name of the firm JAIN MUSIC CORNER. In view of the pleasant familial ties and business relations, the petitioner could not understand the cunning move of Respondent No.1. The petitioner firm was registered by way of declaration before the Sub Registrar's Office and the petitioner firm had been using the trade mark 'JAMCO' and firm name JAMCO RADIOS ever since 1979 to the full knowledge of Respondent No.1 and from the same premises in which the Respondent No.1 is situated. The same packaging was being used by both the firms, that is, M/s JAMCO RADIOS and M/s JAIN MUSIC CORNER. But, according to the petitioner copy right in the packaging vested in both the parties in view of the use by both the firms. Respondent No.1 served a cease and desist notice dated 18.7.1995 on the petitioner to stop using the trade mark 'JAMCO' as also the firm name JAMCO RADIOS. The petitioner made an inspection of record of Registrar of Trade Marks and found that the impugned mark has been registered in the name of Respondent No.1 only. The petitioner has submitted that the impugned mark was not distinctive of the goods of the Respondent No.1 at the commencement of the present proceedings. The mark was obtained by exercise of fraud. The mark was the joint property of Respondent No.1, his father and brother. Respondent No.1 did not disclose to the Registrar that the petitioner firm was also carrying on the same business under the same trade mark and firm name. The impugned mark was registered in contravention of provisions of Section 11 of the Act on the date of application of impugned mark. More than a continuous period of five years and one month has elapsed during which the impugned mark was registered, but there was no bonafide use of the same. There had not been any bonafide intention to use the mark in respect of goods for which it was registered. In reply by respondent No.1 to the petition filed by the petitioner, all the relevant submissions made by the petitioner have been controverted. Respondent No.1 has submitted that his proprietorship firm was established in the year 1970. Respondent No.1 was registered with the sales tax authorities in 1970. The firm since the year 1970 continues to be a proprietorship concern with Shri Anil Bhushan Jain proprietor thereof. The trade mark ' JAMCO' was coined, invented, adopted in 1970 by Respondent No.1. Respondent No.1 has not authorized any person to use the trade mark 'JAMCO' in a similar manner or deceptively similar manner whosoever, including the petitioner. The trade mark 'JAMCO' was registered under the Act vide registration No.400404 in class9 and the same was renewed and is still valid and subsisting. The petitioner and its associates started using the mark as 'ORIGINAL JAMCO'. The petitioners have also put the logo 'R' in a circle over the trade mark 'JAMCO' for their products with the sole and exclusive object of fraudulent intentions of trading upon the good will of Respondent No.1.
(3.) THE petitioner filed his rejoinder dated 11.3.1996 controverting the material submissions of Respondent No.1;