Pratibha Banerjee, J. - (1.) This is an application by the petitioner under Sec. 46 of the Trade & Merchandise Marks Act 1958 for removal of the marks "Pepsi Cola" "Pepsi" and "Pepsico" from the Register and for rectification of the Register. The respondent No. 1 is the registered proprietor of the said marks the particulars whereof are set out below: - - JUDGEMENT_14_PTC9_1989.htm The petitioner claims to be a manufacturer of ingredients and salts etc. for manufacture of non -alcoholic beverages, aerated water under the mark "Pepsi". The petitioner also claims to be selling beverages under the said mark and labels and the respondent No. 3 Pepsi Soda Water Co. is one of the franchise holders of the petitioner and as such Pepsi Soda also manufactures salts, beverages under the mark "Pepsi". The case of the petitioner is that the respondent No. 1, Pepsico Inc., a company, incorporated under the appropriate laws of Delaware, in the United States of America, the registered proprietor of the aforesaid trade marks, did not make bonafide use of the trade marks in relation to goods within the meaning of Sec. 46(1)(b) of the Act and as such the trade marks are liable to bo removed from the Register for non -user. The defence taken is two -fold. First, there was bonafide use within the statutory period as required under Sec. 46(1)(b) of the Act and, secondly, non -user, if any, was due to the special circumstances prevailing throughout the period and without any intention to abandon or not to use the trade marks in relation to the goods under Sec. 46(3) of the Act. The respective case of the petitioner and the respondent No. 1 and the law relating thereto will be dealt with in details later on. Jurisdiction Out of the three trade marks, one was registered at Delhi. The respondent No. 1 has taken the point that this Court has no jurisdiction to adjudicate in respect of the trade mark "Pepsico" which was registered at Delhi. On this point, the counsel for the respondent No. 1 cited : AIR1962Mad214 (Sri Chamundeswari Weaving and Trading Co. Pvt. Ltd. v/s. The Mysore Spinning and Manufacturing Co. Ltd.) a decision of the Division Bench holding at page 216, paragraph 4 : - - "On this principle, an application for rectification can be filed only in the High Court within whose jurisdiction the Trade Marks Registry is situate or in that High Court within whose jurisdiction the owner of the marks resides or carries on business". The petitioner is not disputing this legal proposition. Hence the mark 'Pepsico' should be treated as excluded from the scope of the present application.
(2.) The scope and requirements of Sec. 46 of the Act of 1958 Section 46 of the Trade & Merchandise Marks Act 1958 provides that a person aggrieved can make an application to a High Court or to the Registrar for taking off from the register a registered trade mark on the following grounds. The relevant provisions of Sec. 46 are set out below : - - Section 46(1) (a) "That the Trade Mark was registered without any bonafide intention on the part of the applicant for registration that it should be used in relation to those goods by him ..................... and that there has, in fact, been no bonafide use of the trade mark in relation to those goods by any proprietor thereof for the time being upto a date one month before the date of the application; or (b) that upto a date one month before the date of the application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bonafide use thereof in relation to those goods by any proprietor thereof for the time being." Section 46(3) "An applicant shall not be entitled to rely for the purpose of Clause (b) of Sub -section (1) or for the purposes of Sub -section (2) on any non -user of a trade mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates". It is clear from the provisions of Sec. 46(1)(a) that it attracts the case where a registered proprietor of a trade mark got his mark registered without any bonafide intention to use the same in relation to those goods and has not, in fact, made any bonafide use of the mark in relation to the goods since its registration upto the date one month before the date of the application. The facts of this case will not attract the provisions of Sec. 46(1)(a) inasmuch as it is not disputed that since the date of registration of the marks "Pepsi Cola" and "Pepsi" in Calcutta in 1943 and 1957 respectively, the respondent No. 1 had made bonafide use of these marks in relation to the goods during the period between 1956 and 1960 when Pepsicola used to be bottled and sold by the respondent No. 1 through Messrs. Jagjit Distilleries & Allied Industries Ltd., the permitted user of the said trade marks. Although, in the petition, the petitioner has relied on both Sec. 46(1)(a) and 46(1)(b), during the hearing, Sec. 46(1)(a) was not pressed. This application was really fought out under Sec. 46(1)(b) and Sec. 46(3) of the Act. The petitioner's case is that since 1961 upto one month prior to the date of the present application which is 4th September 1985, the respondent No. 1 did not make any bonafide use of the mark in relation to those goods and these facts fulfil all the requirements of Sec. 46(1)(b) of the Act. Hence the marks are liable to be taken off the register. In answer to these allegations of the petitioner, the respondent No. 1 alleges that in 1961 the Government of India imposed import restrictions on the consumer goods. Due to this trade restriction, it was not possible for respondent No. 1 to import the ingredients and to manufacture or sell its products under these trade marks in the overt market to the general public in India. But the respondent No. 1 made bonafide use of these marks in relation to these goods during this period in the available limited market, viz., to the bonded warehouses, foreign embassies, missions, diplomats and U. N. Agencies in India. Therefore, Sec. 46(1)(b) has no application on the facts and circumstances of this case. The truth and the legal effects of these allegations would be considered later.
(3.) How the proprietary right over the mark is acquired On behalf of the petitioner, it is contended that these restricted sales, if any, to the missions, diplomats and U. N. Agencies are not commercial sales. The words "bonafide use thereof in relation to those goods" appearing in Sec. 46(1)(b) are crucial for adjudication of this application. According to the petitioner, a trade mark to be capable of being the subject matter of 'property' is required to be distinctive. It has to be recognised by a purchaser of the goods to which the mark is affixed to be of the same origin and whose quality had engendered goodwill. Therefore, the property in the trade mark can only be acquired by public use of it and is lost by its disuse. In an action for infringement of a trade mark, the proprietor has to prove his title by adducing evidence of public use of the mark. In support of his contention, the petitioner's counsel cited "G. E. C. - -v. - -G. E. Company Ltd.' reported in (1972) 2 All E. Reports, 507 at 520. The counsel for the respondent No. 1, on the other hand, submitted that in (1972) 2 All E. R. 507 the Court was considering the history of the trade mark as it was under the common law of trade mark in England prior to the law being modified. He also relied on the same case and invited this Court's attention to page 520 where it had been clearly observed : - - "The principal defects in law of trade mark as it had developed by 1875 were first, that in any action which he brought for infringement of his trade mark the proprietor had to prove his title to the mark afresh by adducing evidence of his public use of it; and, secondly, that there was no easy way in which a trader who wished to adopt a particular mark to distinguish his own product could find out whether its use would infringe proprietary rights in that mark already vested in some other trader by virtue of his public use of it. The evident purpose of the 1875 Act was to provide a practical remedy for those defects without changing the main characteristics of trade marks at common law." At page 523 it was observed : - - With the passing of 1905 Act the law of trade marks assumed what is substantially its modern form. The basic change effected by the Act was that registration of a person as the proprietor of a trade mark became the source of his title to the exclusive right to the use of the mark and not mere evidence of a title acquired at common law by actual public use of the mark ............. The Act also authorised registration of marks prior to their actual use ............... but it contained express provisions for removal of a mark from the register for non -use." Therefore, acquisition of proprietary right over a trade mark is no longer dependent of the public use of the mark. The title of ownership over a trade mark is acquired by a person by getting his name registered as the proprietor of the mark concerned in the Register of Trade Marks in the Registry Office. Sec. 28(1) of our Trade & Merchandise Marks Act 1958 provides : - - "Subject to the other provisions of this Act, the registration of a trade mark in part A or part B of the Register, shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in the manner provided by the Act." Sections 31 and 32 of 1958 Act provide that registration of a trade mark is prima facie evidence of its validity which becomes conclusive proof after seven years of registration. It is no longer necessary to adduce evidence of public use to establish title over a trade mark.;