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IN THE HIGH COURT OF DELHI AT NEW DELHI
Suresh Kumar Kait, J.
M/s Khushi Ram Behari Lal - Petitioner
Versus
M/s Jaswant Singh Balwant Singh - Respondent
W.P.(C) 7983 of 2012 & CM APPL. 19969 of 2012
Decided On : 21-01-2019
TRADE MARK - Intellectual Property - Trade & Merchandise Marks Act, 1958, Section 9, 11, 12, 18 - The judgment discusses the registration of the subject matter trademark 'TRAIN BRAND WITH DEVICE OF TRAIN' under application no. 609141 in class 30, and the opposition filed by the respondent based on their prior use of the 'TRAIN' trademark for rice. The court considered the evidence of both parties, including invoices, and found that the respondent's use of the trademark was prior to the applicant's use, leading to confusion and deception in the market. The court dismissed the appeal and upheld the refusal of the trademark registration.
Fact of the Case:
The petitioner challenged the order dismissing their appeal for the registration of the 'TRAIN BRAND WITH DEVICE OF TRAIN' trademark. The respondent opposed the registration based on their prior use of the 'TRAIN' trademark for rice. The court considered the evidence and found the respondent's prior use of the trademark.
Finding of the Court:
The court found that the respondent's prior use of the 'TRAIN' trademark for rice precluded the registration of the petitioner's trademark, leading to confusion and deception in the market. The court dismissed the appeal and upheld the refusal of the trademark registration.
Issues: The issues included the validity of the opposition based on prior use, the evidence of trademark use by both parties, and the likelihood of confusion and deception in the market.
Ratio Decidendi: The court's decision was based on the finding that the respondent's prior use of the 'TRAIN' trademark for rice precluded the registration of the petitioner's trademark, leading to confusion and deception in the market.
Final Decision: The court dismissed the appeal and upheld the refusal of the trademark registration.
1. Vide the present petition, the petitioner has challenged the order dated 18.05.2012 passed by the Intellectual Property Appellate Board (hereinafter referred to as “the Appellate Board”), whereby the appeal filed by the petitioner has been dismissed.
2. Brief facts of the case are that the petitioner, a partnership firm trading as M/s Khushi Ram Behari Lal (Export Division) comprising of three partners which was established in the year 1978 and has been carrying on the business of processing, marketing and exporting of rice since then.
The trademark TRAIN BRAND WITH DEVICE OF TRAIN (herein after referred to as the subject matter Trade Mark) in relation to said goods and business and has been continuously using the same since then up to the present time. The petitioner firm was taken over as a going concern including Trade Mark and other assets and properties by M/s. Khushi Ram Behari Lal Ltd. with effect from 1.4.1996 under an agreement. Subsequently, the name of M/s. Khushi Ram Behari Lal Ltd. changed to be M/s. KRBL Ltd. by taking due steps. The partners of the petitioner firm happens to the directors of the incorporated company which as on date is carrying on the said business under the subject matter trademarks, hence the petitioner and its successors name changed to M/s. KRBL Ltd. The petitioner in order to acquire statutory rights for the subject matter trademark filed an application for its registration under application no. 609141 in class 30 of the IVth Schedule of the Trade & Merchandise Marks Act, 1958 before the Registrar of Trade Marks on 11.10.1993. The Trade Marks Registry was pleased to advertise this subject matter trade mark in Trade Marks Journal No. 1224 dated 01.06.2000. The respondent filed notice of opposition on 24.07.2000 objecting to the registration of the said Trade Mark in favour of the petitioner on the grounds interalia that the respondent is engaged in the business of Rice under the Trade Mark “TRAIN”.
3. After considering the rival contentions of the parties, the learned Registrar vide its order dated 12.10.2006 dismissed the Form TM-16 dated 17.02.2006 filed by the petitioner and allowed the opposition of the respondent and refused the application for registration of the subject matter trademark under no. 609141 in Class 30.
4. Being aggrieved the petitioner approached the Appellate Board by filing appeal bearing No. OA/05/2007/TM/DEL and the same was dismissed by the impugned order dated 18.5.2012.
5. The case of the petitioner before the Appellate Board was as under:
“A. The Order of the Assistant Registrar is contrary to the law and the facts of the case. The Assistant Registrar has failed to appreciate that the documents filed /relied on by the opponents/respondents are forged and fabricated, inter-alia, on the following grounds:-
(i) Exhibit 37 of the alleged invoices filed by the above respondent shows telephone number which are different from Exhibit 43 both filed before the Registrar. The discrepancy in the telephone number is for the same period in the alleged invoices for the same calendar year and therefore the documents filed by the respondent are doctored and forged.
(ii) Similarly, in Exhibit No. 5 (invoice dated 08.05.1985); exhibit No. 14 (invoice dated 14.03.1987); Exhibit No. 28 (invoice dated 16.08.1995); Exhibit No. 29 (invoice dated 23.08.1995) and Exhibit 30 (invoice dated 07.10.1997) the impugned trade mark TRAIN brand depicted on the bills do not correspond to the goods for which it is registered viz. rice. It is alleged that the respondents have imprinted the same on the impugned bills at one go without taking into consideration the description of the article/goods mentioned thereon. It is further alleged that all the invoices filed by the respondent were prepared prior to 1988 when the trade mark application was still pending and not registered.
(iii) It is further alleged that the various invoices filed by the respondent before the Registrar from 1985 to 2002 is
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