2024 Supreme(Online)(TEL) 3990
HIGH COURT OF TELANGANA
ALOK ARADHE, CJ, ANIL KUMAR JUKANTI, J
Neeraj Kumar Agarwal – Appellant
Versus
Mrs. Priya Shah – Respondent
WP/2097/2009
The first user of a trademark holds superior rights over subsequent registrations, especially if obtained in bad faith, and concurrent use cannot be claimed without establishing prior rights.
Headnote:(A) Trade Marks Act, 1999 - Sections 2(1)(zg), 9, 11, 12, 33, 47, 57, and 125 - Dispute over trade mark ‘Show Off’ - Respondent No.1 claimed prior use since 01.04.1996, while petitioner registered it in 1999 - Board ruled respondent No.1 as prior user and directed expunging of petitioner's registration - Petitioner argued applicability of Section 33, but the court found it does not apply as respondent acted within 5 years. (Paras 3-19)
(B) Prior User - The principle of prior user establishes that the first user of a trademark has superior rights, and registration does not confer rights if obtained in bad faith. (Paras 6, 18)
(C) Honest Concurrent Use - The court clarified that concurrent use cannot be claimed when one party has prior rights established. (Paras 11, 18)
Facts of the case:
The petitioner challenged a common order which ruled that respondent No.1, having used the trade mark since 1996, was the rightful owner, leading to the expunging of the petitioner's registration obtained in 1999.
Findings of Court:
The Board's findings were upheld, confirming respondent No.1 as the prior user and dismissing the petitioner's claims.
Issues: 1) Applicability of Section 33 of the Act; 2) Consideration of Sections 9 and 11; 3) Honest concurrent use of the trade mark.
Ratio Decidendi: The court found that Section 33 does not apply since respondent No.1 initiated rectification within five years, and the petitioner could not prove honest concurrent use.
Result: Writ petitions dismissed.
COMMON ORDER:
Dr. Venkat Reddy Donthi Reddy, learned Senior
Counsel representing RVR Associates for the petitioner.
Ms. Kalpana Ekbote, learned counsel for the respondent No.1.
2. In these writ petitions, petitioner has called in question the validity of the common order, dated 14.11.2008, passed in O.R.A.Nos.128/2007/TM/CH, 129/2007/TM/CH and 130/2007/TM/CH. In order to appreciate the grievance of the petitioner, relevant facts need mention, which are stated infra.
3. Respondent No.1 is engaged in the manufacture and sale of readymade garments under the name, style and trade mark, namely, “Show Off” since 01.04.1996.
According to respondent No.1, she has been using the aforesaid trade mark continuously and extensively since 01.04.1996 and the same has become a well known mark within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999 (hereinafter referred to as ‘the Act’). As per the case of respondent No.1, the petitioner was associated and was residing as a family member of respondent No.1 for several years, but later on separated from the family and started his own business in Hyderabad in the name and style of “Show Off”. The petitioner with an ulterior motive got the trade mark namely, “Show Off” registered on 16.09.1999.
4. Respondent No.1 thereupon filed applications under Sections 47, 57 and 125 of the Act inter alia on the ground that the petitioner was well aware of using of trade mark “Show Off” by respondent No.1 and was all along assisting respondent No.1 in her business and residing with the family members of respondent No.1. It was averred in the application that the petitioner has slavishly copied the trade mark of respondent No.1 with a dishonest intention and trading in the same goods. It was further averred that impugned registration will enable the petitioner to pass off his goods as that of respondent No.1’s well established goods. It is pleaded that respondent No.1 being the prior user of trade mark “Show Off”, the impugned registration is causing business loss as well as loss of goodwill and reputation and therefore, respondent No.1 is a person aggrieved. It is further pleaded that the impugned registration was made without any sufficient cause. Accordingly, respondent No.1 filed three applications, namely, O.R.A.Nos.128/2007/TM/ CH, 129/2007/TM/CH and 130/2007/TM/CH under Sections47, 57 and 125 of the Act.
5. The petitioner filed counter statements in which inter alia it was pleaded that the petitioner is engaged in the business of dealing with and selling of textile piece goods, readymade garments, shoes and belts and leather goods since 16.09.1999 under the name and style of “M/s. Show Off His and Her Hi-Fashion Boutique”. It was averred that the petitioner is selling the goods under the distinctive trade mark of “Show Off” after being satisfied about non-existence of the word “Show Off” as a trade mark in relation to aforesaid goods and obtained registration of the trade mark “Show Off” which was written in an artistic manner by embossing its alphabet placement, appearance, size, shape, distinguishing feature and images. It was also averred that the application for registration was not opposed by anyone. The stand taken by respondent No.1 that she is the prior user of the trade mark “Show Off” was denied. It is averred in the counter statements that certificate dated 25.09.1996 issued under the Karnataka Professions, Trade, Livelihood and Employment Act, 1976 (hereinafter referred to as ‘the 1976 Act’) does not authorize respondent No.1 to manufacture or sell readymade garments as proprietor of the firm and the said certificate is contradictory to the date of use of trade mark claimed as 01.04.1996 by respondent No.1.
6. The Intellectual Property Appellate Board
(hereinafter referred to as ‘the Board’) thereafter with the consent of the parties recorded common evidence in all the three applications and heard the arguments. The Board by a common order dated 14.11.2008 inter alia held that respondent
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