Writ petition against order of Appellate Board maintainable.

Common Judgment: (V. Ramasubramanian, J.)

The writ appeal, 2 writ petitions and 4 civil revision petitions arise out of a cobweb of litigation, in which, the word “Maharaja” and his caricature are caught in a triangular contest.

2. The parties involved in this contest, carry on business in the sale of rice and grains, under the brand name “MAHARAJA’ with or without a caricature/device of a Maharaja. Since they are arrayed in different positions in the writ appeal, writ petitions and civil revision petitions, their description as petitioners or respondents would defy uniformity and would only create confusion. Therefore, they are referred to herein, as the “Delhi Party”, “Tindivanam Party” and “Kangayam Party”, for the sake of convenience, since they have their head offices at Delhi, Tindivanam (Villupuram District, Tamilnadu) and Kangayam (Erode District, Tamilnadu) respectively.

3. Since the parties hereto have wielded against one another, almost all the weapons available under the Trade Marks Act, 1999, such as (i) opposition for registration, (ii) Assignment (iii) appeals and review petitions before the Appellate Board, (iv) rectification petition, (v) petition for prosecution (vi) civil suit and (vii) proceedings under Article 226/227 of the Constitution, it is necessary to give a brief prelude, before plunging into complete factual details, though it would be at the cost of repetition.

4. The Delhi party had a registration in respect of the word mark, “MAHARAJA SPECIAL” from 23-5-1977 without any picture or caricature, in Class 30, in respect of grains and rice, claiming user since 1966. The Tindivanam and Kangayam parties applied for registration of the same word mark along with the caricature of a Maharaja, on 4-8-1992 and 15-9-1992 respectively in respect of the same goods, claiming user since 1983 and 1980 respectively. It is pertinent to note that the application of the Tindivanam Party for registration, was made in the names of B.MOHAMMED YOUSUF, B.MOHAMMED SHERIFF AND B.HYDER ALI, trading as MUJEEB MODERN RICE MILL.

5. When the applications of Tindivanam and Kangayam parties for registration, were published in the Trade Marks Journal in the year 2000, the Tindivanam and Kangayam parties filed notices of opposition against each other. The notices of opposition filed by them against each other, were dismissed and the applications for registration filed by both of them were allowed by the Assistant Registrar of Trade Marks, by orders dated 23-1-2004 and 30-1-2004. But while doing so, the Assistant Registrar imposed different conditions upon them for registration. In respect of the Tindivanam party, the Assistant Registrar directed them to use the mark always with the full name and address of their firm in prominent feature on the label, sticker etc., under section 12 of the Act without any territorial restriction. But in respect of the Kangayam party, the Assistant Registrar not only imposed the same condition, namely that they shall use the mark along with the name and address of their firm prominently, but also imposed a territorial restriction to the user of the mark, within the State of Tamilnadu only.

6. Aggrieved by the conditional registration (granted by the Assistant Registrar under order dated 30-1-2004) restricting their area of operation to the State of Tamilnadu only, the Kangayam party filed an appeal in O.A.No.25 of 2004 before the Intellectual Property Appellate Board, hereinafter referred to as the “Board”. Contending that no registration ought to have been granted in favour of Kangayam party even conditionally, B.Mohammed Yousuf, describing himself as the Proprietor of Mujeeb Modern Rice Mill (who is also hereinafter referred to only as the Tindivanam party, though the actual Tindivanam party who filed the application for registration comprised of 3 persons) filed an appeal in O.A.Nos.24 of 2004 before the Board. Similarly, challenging the grant of registration to the Tindivanam party, (granted