Z.S. Negi, Chairman - (1.) BY this common order we propose to dispose of the aforementioned applications involving the similar and common issues for consideration in which the applicants have sought removal/rectification of the entries relating to the registered trade marks under No. 898916 in class 12 in respect of cycle and parts thereof under Sections 47 and 57 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) and under No. 656900 in class 12 under Section 56 of the Trade and Merchandise Marks Act, 1958, respectively, and the two miscellaneous petition Nos. 124/2007 and 159/2007, in the first aforementioned application, whereby the respondent No. 1 has sought certain directions of the Appellate Board.
(2.) The brief facts leading to filing of the aforementioned applications is that the first applicant is a private limited company under the Companies Act, 1956 and the second applicant Shri Subhash Gupta is the managing director of the first applicant (for the sake of convenience hereinafter referred to as Shri Gupta). The applicants are engaged in the business of manufacture and sale of various types of cycles and their parts under the trade mark SAFARI, which was adopted by Shri Gupta way back in 1974 and which mark is being used by the first applicant continuously and extensively since 1985 up till now. It is stated that Shri Gupta, in the year 1974, started the business of manufacture and sale of various types of bicycles, baby cycles and tricycles under his proprietorship concern namely, M/s Shagun Udyog, by adopting and using the trade mark SAFARI. In the year 1977 Shri Gupta changed the assumed trade name from M/S. Shagun Udyog to M/s. Safari Cycles. On 18.4.1979 Shri Gupta applied for registration of the trade mark SAFARI and got the registration under No. 348290 as of 18.4.1979 in the name of Subhash Gupta trading as Safari Cycles. With a view to expand and organise his business activities, Shri Gupta incorporated the Safari Cycles Private Limited and from the year 1985 onwards, Shri Gupta continued the business activities of his proprietorship concern, M/s Safari Cycles, under the name of the first applicant from the same premises and by using the same infrastructure, telephones, dealers, employees and raw material suppliers as those of the proprietorship firm M/s. Safari Cycles. Shri Gupta is the majority shareholder in the company and the company continued to be the family concern of Shri Gupta who holds 70% of the shareholding and rest 30% is held by the wife of Shri Gupta. The applicants have claimed that being the proprietors of the trade mark SAFARI, they have acquired and retained exclusive rights to use that trade mark as well as an essential key and leading position of corporate name and to restrain others from using the identical and/or deceptively similar mark/name in relation to same goods or the same description of goods. It is averred in the first aforementioned application that the same is filed against the illegal and unlawful grant of impugned label trade mark registration to the respondent No. 1 under No. 898916 in class 12 by circumventing and negating the prescribed mandatory procedure under the law. It is alleged that the application for the registration of the impugned mark was advertised in the Trade Marks Journal Mega 3 dated 14.10.2003 at page 1277 which is extremely blurred, illegible and in undecipherable manner making it impossible for any person to read the contents thereof except the word FRIEND appearing on the said label, whereas in the registration certificate, the words SAFARI INTERNATIONAL are also clearly visible. This illegality in the advertisement has denied the applicants- being the registered proprietors of the trade mark SAFARI-an opportunity to oppose the impugned registration and as such the illegally and unlawfully granted registration which subsists in the name of the respondent No. 1 is liable to be cancelled. It is further averred that by virtue of the impugned trade mark the respondent No. 1 is trying to take benefit of the said registration in legal proceedings pertaining to the trade mark SAFARI pending against it at the behest of the applicants. It is further averred that even otherwise the impugned registration has been obtained by fraud committed on the respondent No. 2 in as much as apparently on false claim of the user since 1.4.1959 despite the fact that the company itself has been incorporated in the year 1998. The respondent No. 1 knowing fully well that the user claimed by it is false has defrauded the respondent No. 2 in accepting the application for registration for publication on the basis of such false user claimed and thus the registration obtained by fraud is liable to be cancelled/rectified. The other grounds, on which removal/rectification sought, inter alia, are that the entry relating impugned trade mark has been made without any sufficient cause and the same is wrongly remaining on the register; that the respondent No. 1 had no bonafide intention to use the label mark at the time of making application for registration in relation to the goods of its manufacture and sale and the said mark has been registered without any bonafide use of the respondent No. 1 in relation to cycle and its parts; that the registration is contrary to the provisions of Sections 9, 11 and 18 of the Act and that the registration granted is also in contravention of the provisions of Sections 20 and 21 of the Act. The applicants claimed to be the persons aggrieved to file the application as being the proprietors of the well-known trade mark SAFARI which is inter alia contained in the impugned label registered under No. 898916 in respect of the same goods and business as those of the applicants'.
(3.) THE respondent No. 1 in its two miscellaneous petitions has sought certain directions from this Appellate Board. In the Miscellaneous Petition No. 124/2007 it is averred that the petition is not maintainable as the petitioners have themselves stated in the petition that they have come to know about the registered trade mark when the respondent filed an application in the pending suit. In such circumstances, the petition could not have been filed without complying with the provisions of Section 124 of the Act. Since the present petition is filed without complying with the provisions of Section 124 of the Act, this Appellate Board may, in the interest of justice, dismiss the case at the threshold. In the other Miscellaneous Petition No. 159/2007 it is averred that the petition is not maintainable firstly, that two persons cannot file one petition and the present petition has been filed by two petitioners, namely, the Safari Cycles Pvt. Ltd. and Shri Subhash Gupta and secondly, as per THE Trade Marks (Application to the Intellectual Property Appellate Board) Rules, 2003, which prescribes a fee for filing of rectification application, two petitioners cannot file one petition with one filing fee and such the Appellate Board may dismiss the petition with exemplary costs.;