2013 (12) TMI 288 - SC - Companies Law

Non-usage for a period in excess of five years and one month of registered Trade Mark The appellant filed rectification application for deregistration of trademark KOHINOOR in favour of the respondent in respect of rice in class 30 on the plea that the respondent had got the trademark KOHINOOR registered without bonafide intention to use it and there was no bonafide use of the trademark by the respondent for a period of 5 years and 1 month preceding the date of filing of the application for rectification. - Held that - Section 46(1)(b) provides that that up to a date one month before the date of the application, a continuous period of five years or longer had elapsed during which the trademark was registered and during which there was no bonafide use thereof in relation to the goods for which it was registered by the proprietor for the registered trademark - Onus to prove non-use rests upon the applicant who has filed the application for rectification. The applicant who has filed the application for rectification to give prima facie evidence for non-use of the mark during the relevant period of five years from the date of one month before the date of the application for rectification. Once it is prima facie shown, then the onus shifts to the registered proprietor to prove the use of the trademark during the relevant period - Relying upon Hardie Trading Ltd. & Anr. V. Addisons Paint and Chemicals Ltd. 2003 (9) TMI 542 - SUPREME COURT OF INDIA where the evidence on record does not show absolute non-user of trademark during the period of 5 years and one month prior to the application for rectification and it was not economically possible for the owner of the registered trademark to put its goods manufactured abroad immediately due to restrictions imposed by the Import Trade Control Policies for the relevant years, the application for rectification could not be allowed on the ground of alleged non-user as the case is covered under the term special circumstances . There was no non-user of the trademark KOHINOOR in respect of rice in class 30 for five years and one month prior to the date of the rectification application there was no error in the inclusion of another District also for selling the rice and later extending the benefit of the trademark to the respondents to the whole State of Uttar Pradesh - restricting the trademark to few cities would create lot of complications and litigations as to the exact boundary of a particular city or District - It will also be impossible for the respondents to ensure that its products are not sold to retailers outside the six cities - Putting geographical restrictions was unjust Decided against Appellant.

Summary

Issues:
1. Rectification of entry in a Registered Trade Mark.
2. Review of the rectification order.
3. Clubbing of multiple applications and subsequent orders.
4. Appeal against the Single Judge's order.
5. Contempt application.
6. Special Leave Petitions filed.
7. Interpretation of provisions of Section 46(1) and 46(2) of the Act.

Rectification of Entry in a Registered Trade Mark:
The appellant applied for rectification of entry in a Registered Trade Mark "KOHINOOR" due to non-usage for over five years. The Registrar allowed the application, modifying the specification of goods for the respondent. The respondent filed for a review, which partially allowed the application, expanding the usage to more cities in Uttar Pradesh. Subsequently, the matter was taken to the High Court, which partially allowed certain applications and dismissed others.

Review of the Rectification Order:
The High Court reviewed the rectification and granted permission to the respondent to use the trademark "KOHINOOR" in the entire state of Uttar Pradesh. The appellant challenged this decision, citing the registration under the Trademark Act and the geographical limitations imposed by the Assistant Registrar initially. The High Court justified its decision based on evidence of the respondent's bona fide use of the trademark.

Clubbing of Multiple Applications and Subsequent Orders:
All applications were consolidated, leading to a Single Judge's order partially allowing certain applications and dismissing others. The appellant then appealed against this order, leading to a Division Bench upholding the Single Judge's findings.

Appeal Against the Single Judge's Order:
The appellant further appealed to the Division Bench against the Single Judge's order, raising concerns about the usage of the trademark and geographical restrictions. The Division Bench upheld the Single Judge's decision, finding no error in the judgment.

Contempt Application:
The appellant filed a Contempt Application against the High Court's order, alleging a violation of a previous order staying the operation of the Single Judge's decision. The High Court passed a common order upholding all findings of the Single Judge.

Special Leave Petitions Filed:
The appellant filed three Special Leave Petitions against various orders issued by the High Court, challenging the interpretation of provisions of Section 46(1) and 46(2) of the Act. The appellant argued for the right to use the trademark throughout Uttar Pradesh based on concurrent use provisions.

Interpretation of Provisions of Section 46(1) and 46(2) of the Act:
The Court analyzed the provisions of Section 46(1) and 46(2) of the Act concerning the removal of a registered trademark due to non-usage. The burden of proof lies on the applicant to show non-use, which can then shift to the registered proprietor to prove usage. The Court referenced previous cases to determine the scope of non-use and the considerations for rectification. In this case, the Court found no error in the Division Bench's decision to extend trademark usage to the entire state of Uttar Pradesh, dismissing the appeals for lack of merit.