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MADRAS HIGH COURT
RAMASWAMI
B.Monappa
Versus
R.S. Ramappa
O.P. No. 65 of 1954
Decided On : 8 December, 1954
TRADEMARK - RECTIFICATION OF REGISTER - ENTRY MADE WITHOUT SUFFICIENT CAUSE - FRAUD - JOINT REGISTRATION - DELAY - PUBLIC INTEREST.
Fact of the Case:
The petitioner and the respondent were brothers and businessmen in Mangalore. Their father, Bolar Ramappa, had started two factories manufacturing tiles under a distinct trademark, Taj Double Bavta. The father registered the trademark with the Chamber of Commerce in Madras in 1936. In 1946, the respondent applied to the Registrar of Trademarks in Bombay for registration of the trademark in his name, claiming to be the proprietor of the concern "National Tiles" and the user of the mark since 1936. The Registrar proceeded on the footing that the respondent was the proprietor of the concern and the mark and registered the trademark in his name. In 1950, the father settled one of the factories on the petitioner. In 1951, trouble arose between the brothers over the use of the trademark. The respondent issued a notice to the petitioner claiming proprietorship of the trademark and threatening legal action. The petitioner replied denying the respondent's claim and alleging that the respondent had surreptitiously copied the trademark. The respondent filed a suit against the petitioner for infringement of trademark. The petitioner filed this petition under Section 46 of the Indian Trade Marks Act, 1940, seeking to expunge the entry in the Trademarks Register relating to the trademark and to cancel the registration granted to the respondent.
Finding of the Court:
The court found that the respondent had obtained the registration of the trademark by fraud. The respondent had made false statements in his application for registration, claiming to be the proprietor of the concern and the user of the mark since 1936. The court also found that the respondent was not the proprietor of the concern or the user of the mark at the time of the application. The court further found that the respondent had not disclosed to the Registrar that his father had settled one of the factories on the petitioner in 1950. The court held that the registration of the trademark had been procured by fraud and was therefore liable to be cancelled or varied under Section 46(2) of the Trade Marks Act.
Issues: 1. Whether the respondent had obtained the registration of the trademark by fraud. 2. Whether the registration of the trademark was liable to be cancelled or varied under Section 46(2) of the Trade Marks Act.
Ratio Decidendi: 1. The court held that the respondent had obtained the registration of the trademark by fraud. The respondent had made false statements in his application for registration, claiming to be the proprietor of the concern and the user of the mark since 1936. The court also found that the respondent was not the proprietor of the concern or the user of the mark at the time of the application. The court further found that the respondent had not disclosed to the Registrar that his father had settled one of the factories on the petitioner in 1950. The court held that the registration of the trademark had been procured by fraud and was therefore liable to be cancelled or varied under Section 46(2) of the Trade Marks Act. 2. The court held that the registration of the trademark was liable to be cancelled or varied under Section 46(2) of the Trade Marks Act. Section 46(2) provides that any person aggrieved by an entry made in the register without sufficient cause may apply to the Registrar or a High Court to expunge or vary the entry. The court held that the respondent had obtained the registration of the trademark by fraud, which was a sufficient cause for cancelling or varying the entry.
Final Decision: The court allowed the petition to the extent that it directed the Registrar of Trademarks to vary the entry in the Trademarks Register by registering both the petitioner and the respondent as joint proprietors of the trademark. The court held that this was a case where the special circumstances made it proper to permit the registration by more than one proprietor under Section 10(2) of the Trade Marks Act. The court also held that there was no substance in the plea of delay put forward by the respondent.
ORDER :- This is a original petition filed under Section 46 of the Indian Trade Marks Act, 1940 read with S. 24 of the aforesaid Act for directing that the entry in Trade Marks Register at Bombay registering the trade mark referred to in paragraph 4 of the petition in the name of the first respondent under No. 126612 be expunged from the registry and that the registration granted to the first respondent under the said entry be cancelled.
2. The parties in this case are businessmen and living at Mangalore, and, therefore, by consent of parties the oral and documentary evidence in this case has been recorded and filed before the Commissioner Mr. M.G. Kamath, Advocate, High Court, who has done his work well, and that evidence, by consent of parties is treated as evidence before me.
3. The facts are : The father of the petitioner and the respondent, Bolar Ramappa, who has been examined as P.W. 6 and who is now aged about 75, was a Mangalore the merchant. He started a the factory named Jayaram Tile Works somewhere about 1923 at Hoige (meaning sand) Bazaar in Mangalore. Some time later he started another the factory in Kudroli in Mangalore. Both, are suburbs of Mangalore town.
This father Ramappa gave the name "Jayaram Tile Works" to the Kudroli factory and renamed the Hoige Bazaar factory as "the Indian National Tile and Lime Works". For some time he also ran another factory called the "B. Ramappa Tile Works". This father Ramappa was manufacturing tiles in all these places under a distinct trade mark which will be found reproduced in the second annexture to the statement of the second respondent, the Registrar of Trade Marks, Bombay, marked by him as Ex. B. This trade mark can be compendiously described as Taj Double Bavta trade mark.
In or about 1936 Ramappa registered the trade mark with the Chamber of Commerce at Madras, and, he was in the habit of mentioning this in his letter head showing the registration No. 1965. It was the common practice of this State before the Indian Trade Marks Act came into existence to register trade marks with the Chamber of Commerce in Madras, and, though this did not confer the same rights as the Indian Trade Marks Act, it was no doubt sufficient for proving the existence of that mark, See - Subbiah Nadar v. Kumaraval Nadar, AIR 1946 PC 109 at p. 113 (A). These facts are undisputed and therefore the evidence establishing the same need not be recapitulated.
4. In 1946 the respondent Ramappa applied to the Registrar of Trade Marks in Bombay for registration of the Taj Double Bavta trade mark which was till then being used by the father as his distinctive trade mark registered with the Chamber of Commerce in the State of Madras in the name of B.S. Ramappa, son of Bolar Ramappa, Billava by caste, trading as "National Tiles" whose trade or business address is Manager, Jayaram Tile Works. Kudroli, Mangalore by whom the said mark is being used and who claims to be proprietor thereof, in use since 1936.
Further, in a letter dated 23-7-1948 by him to the Registrar in answer to a query of the latter the respondent assured the Registrar, "I am the sole proprietor of National Tiles. I have been printing the said mark since 1936. Thereupon, as stated by the Registrar of Trade Marks the second respondent, in paragraph 6 of his written statement, the Trade Marks Registry was proceeded with on the footing that B.S. Ramappa, the respondent, was the proprietor of the concern "National Tiles" at Kudroli, and that he was the proprietor of the Mark in question.
Therefore this respondents name was entered in the Trade Marks Register on 18-12-1946 for the Taj Double Bavta trade mark and given the distinctive number 126612 in the register. Though the application for the registration of the trade mark is dated 18-12-1946 and the trade mark was ultimately entered in the register on 12-5-1950, the date of registration relates back to the date of application viz., 18-12-1946 under the provisions of S. 16(1) of the Trade Mar
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