Z.S. Negi, J. - (1.) THIS order disposes of the above two rectification applications filed by the applicant for the removal of trade marks 'MARDAN No. 1' and 'MARDAN', respectively, from the Register of Trade Marks or rectification of the Register under Section 47/57/125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) and the M.P. No. 58/2008 filed by the respondents to 5 for taking its evidence and additional documents on record. During the pendency of the rectification applications, Sardar Upkar Singh, the respondents died on 3.11.2006 and the legal representatives of the deceased respondents filed miscellaneous petitions being M.P. Nos. 7 & 8 /2007 under rule 24 of the Intellectual Property Appellate. Board (Procedure) Rules, 2003 for continuation of proceedings and the amendment of cause titles in the pending rectification applications were allowed vide order dated 9.8.2007. Since the facts of both the matters and issues involved and evidence relied therein are almost identical and the parties are also same, the matters, with the consent of counsel for both the sides, were heard together.
(2.) THE applicant, a registered partnership firm trading as Mardan Industrial. Corporation, has filed two rectification applications for removal and/or rectification of trade mark MARDAN No. 1 under No. 1087559 and trade mark MARDAN under No. 1087560, both as of 15.3.2002 in class 12 in respect of automobiles parts and fittings thereof, registered in favour of the respondents (the Registrar of Trade Marks, respondent No. 6 being a proforma party, the respondent Nos. 1 to 5 shall hereinafter be referred to collectively as the respondents). The aforesaid firm initially on 1.9.1990, constituted of Sardar Jagmohan Singh, Sardar Amanveer Singh and Sardar Paramveer Singh as its partners, is engaged in the business of manufacturing and trading in various rubber products used as parts and fittings in automobile. With the retirement of Paramveer Singh from the firm, the partnership firm now consists of two partners, namely, Sardar Jagmohan Singh and Sardar Amanveer Singh. The applicant is the bonafide and rightful proprietor of the aforesaid trade mark MARDAN, which having initially adopted and used by the predecessors of the applicant in the year 1969 and since then the mark has been in regular and continuous use. The applicant claims that it is accorded with exclusive rights along with goodwill in the trade mark/trading style MARDAN by a chain of events, inter alia, that the predecessors in business of the applicant commenced business on 6.5.1972 in the name of Mardan Industries which was a partnership firm consisting of Sardar Kishan Singh, Sardar Upkar Singh and Sardar Jagmohan Singh as partners and Sardar Kishan Singh and Jagmohan Singh, applied for registration of trade mark MARDAN under application No. 280044 in class 12 in respect of parts and fittings in automobile claiming user since April, 1969 which registration lapsed in 1991 due to non renewal; that Sardar Kishan Singh passed away on 22.9.1984 and after his demise, Sardar Jagmohan Singh along with Sardar Upkar Singh and Sardar Harvinder Singh executed a partnership deed on 29.10.1984 wherein it was decided that the business will be carried on by the partners in the name and style of Mardan Industries; that during the continuance of business in the name and style of Mardan Industries, another partnership firm 'Mardan Industrial Corporation' was formed constituting of Sardar Jagmohan Singh, Sardar Parmveer Singh and Sardar Amanveer Singh as its partners, after having no objection certificate dated 09.05.1990 obtained from the three partners of Mardan Industries, to tarry on business of the applicant firm from the premises of Mardan Industries (there is also a hand -written settlement wherein everyone has agreed to the applicant's business activities); that in November, 1991, the aforesaid three partners of Mardan Industries entered into a family settlement whereby the partnership business under the name of Mardan Industries was to be dissolved, which ultimately stood dissolved in 1992 in terms of the family settlement whereby the three partners decided that the entire assets and liabilities including the goodwill, of the firm Mardan Industries would go to Sardar Jagmohan Singh. Two other family concerns, namely, Ruby Auto (P) Ltd. and M/s Endet Jamshedpur (P) Ltd. would go to Sardar Upkar Singh. It was decided and covered under the Memorandum of Understanding that payments will be made to Sardar Harvinder Singh. The entire assets of Mardan Industries including the trade mark MARDAN along with goodwill has devolved upon Sardar Jagmohan Singh which is evident from the Income Tax Assessment records; that pursuant to this family settlement, Shri Upkar Singh and Shri Harvinder Singh along with their children withdrew their capital in full from Mardan Industries and they were paid their share on 10.01.92 by five cheques all dated 10.01.92 bearing Nos. 669504 to 669508; that to give effect to the said family settlement and understanding arrived at between the three partners of Mardan Industries, an Memorandum of Understanding dated 31.03.1992 was executed in which it was decided that (i) Mardan Industries along with assets and liabilities including goodwill would go to Sardar Jagmohan Singh, (ii) Ruby Auto (P) Ltd would be taken over and run by Shri Upkar Singh and (iii) payments will be made to Shri Harvinder Singh as specified in the Memorandum of Understanding. It is therefore evident from the above that the applicant is the sole owner of Mardan Industries as well as the goodwill of the business including that of the trade mark.
(3.) IT is claimed that the applicant has been using the mark MARDAN extensively and continuously for long period of time and has maintained very high quality standards and expended tremendous amount of money and efforts in promoting and advertising its trade mark which has resulted in creation of tremendous reputation and immense goodwill in the said trade mark amongst the purchasers and the members of the trade. The applicant has created an eye -catching carton comprising of red, white and green colour combination along with a 'Ml' logo represented in a stylised and unique font and the mark is represented in a unique and a distinctive manner thereby constituted an original artistic work capable of being protected as a copyright as envisaged under the Copyright Act. Due to long and continuous use, the mark MARDAN has led to the exclusive association of the said mark with the applicant. Any use of the trade mark MARDAN or any similar sounding and looking mark whether in relation to the same goods or any other goods would inevitably result in an association with the applicant. It is further claimed that the applicant has a prior registration for the trade MARDAN in India under No. 616636 advertised in Trade Marks Journal No. 1 Special Supplementary Journal (Vol. C - Class 11 to 16) at page No. 2078 dated 14.6.2003. The applicant has been extremely vigilant in protecting and safeguarding its rights in the mark MARDAN and has time and again resorted to appropriate legal recourse. In light of the facts and circumstances mentioned herein before, the use of the trade mark MARDAN or any other identical or deceptively similar mark by any other trader not connected to the applicant is bound to cause confusion and deception in the minds of the consumers and members of the trade leading to false belief that such third party goods originate from the applicant or that it has some trade connections or association with them.;