Z.S. Negi, Chairman - (1.) THESE two applications are for the removal of the trademarks 'ULTRAFILTER' under Nos. 805999 and 803449, respectively, from the register or rectification of the register under Section 57 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
(2.) IT is stated in the applications that the applicant is a German Company of international repute, known world over for the high quality of its products range which comprises of various kinds of filters, etc. It is further stated that Ultrafilter GmbH, the predecessor in title of the applicant (hereinafter referred to as the predecessor), adopted 'ULTRAFILTER' as the trade mark and as part of its name; obtained registration of the said trade mark in several countries and has built up a substantial name and reputation for its products. The trade mark has been widely used on the goods manufactured by the applicant and the predecessor; the predecessor commenced supply of its products to several leading companies in India during 1981 -82 and adopted the direct marketing method and directly sold the goods to customers and owing to the high quality of the goods, the mark ULTRAFILTER gained excellent reputation in India within a very short span. It is also stated that the predecessor merged into Ultrafilter AG which changed its name to Donaldson Filtration Deutschland GmbH and by virtue of the said merger and name change the applicant is the proprietor of the trade mark as on date. Averment' is made that Mr. Krisnanand Kini approached the predecessor during 1985 seeking technical collaboration and know -how for a company which was proposed to be setup in India for manufacture of filters. During the negotiations, Mr. Kini by writing a letter dated 1.10.1985 to the Chairman and CEO of the predecessor acknowledged the presence of ULTRAFILTER in India. The negotiation culminated in the incorporation of Ultrafilter (India) Pvt. Ltd. (the respondent herein) on 31.12.1985. The predecessor held 26% of the shares in the respondent with necessary approval having been obtained from the Government of India for the foreign collaboration. After incorporation of the respondent, the Chairman of the predecessor addressed a circular to all customers in India informing them that a technical collaboration agreement dated 17.2.1986 with substantial equity participation had been approved by the Government of India and that the registered proprietor had been granted an exclusive tie -up of technical know -how for the manufacture and distribution of its product in India and the Indian customers were also requested to continue their dealing with the registered proprietor. The respondent immediately after its incorporation conducted a market survey and in the survey report signed by its director on 28.1.1986, the respondent acknowledged the fact that ULTRAFILTER goods were available in India for 4 years prior to its incorporation.
(3.) IT is further averred that the arrangement between the parties warranted certain agreements with regard to the rights and liabilities of the parties and accordingly a Shareholders Partnership Agreement was prepared annexing therewith, to form part thereof, three other agreements, namely, Name Protection Agreement, Distributor Agreement and Trade Marks Registered User Agreement and the Shareholders Partnership Agreement was executed on 16.10.1986. It was categorically provided that the name ULTRAFILTER could be used as part of the respondent's corporate name and in connection with the products distributed by the respondent in terms of the Name Protection Agreement, the Distribution Agreement and the Trade Marks Registered User Agreement. Another annexure to the said agreement was the text of amendments to be carried out to the respondent's Articles of Association. Though the text of the aforesaid three agreements to the Shareholders Partnership Agreement were approved and agreed to by all the parties and the parties initialed the same, the said agreements were not formally executed separately as the initialing by the parties was itself sufficient to bind the parties. Further provision was made to the effect that after the termination of the said agreements, the predecessor can demand deletion of the word ULTRAFILTER from the name of the respondent and also that pursuant to the termination, the trade mark ULTRAFILTER or any other similar mark will not be used by the respondent.;