Well-known brands and Word “invalid” of Trademark Registration in Cochin
Well-known brands — internationally famous brands
In the instant case, the learned Single Judge has rightly observed that respondent №1 is a small time operator and cost of the well-known product which was being sold by him was only Re. 1/-(Rupee One) as against the product of the plaintiff, which was being sold at Rs. 10-(Rupees Ten). Notwithstanding the fact that the price differential between the product of the appellant and that of the respondent №1 was substantial, even otherwise also the product of the plaintiff will invariably be consumed by school going children of a specific age group. Therefore, the public especially school children who constitute the major segment of consumer of product would hardly be expected to be deceived by the color formula, combination format of the product of the MAGIC to be that of MAGGI. It could hardly be said to be a ground for passing an order of punitive damages against a small time operator.
A perusal of Section 135 (b) of the Trademarks Act, 1999 lays down that if at the time of commencement of the use of trademark in the suit, a party was unaware and had no reasonable ground for believing that the trademark registration in Cochin of the plaintiff was on the register or when he becomes aware of the existence and nature of the plaintiffs right in the trademark forthwith ceases to use the said trademark in relation to such goods, the Court shall not grant relief by way of damages (other than normal damages) or on account of profits. Thus there is a clear mandate in a case of the present nature where the parties were not aware that there mark was offending a registered trademark of appellant and at the threshold admitted their mistake. The grant of damages even nominal or rendition of account would not only have been against the law but also unjustified and harsh. In our view, the respondent No. l is only a small time operator who has accepted his mistake on the very first instance without wasting the time of the Court and therefore, we agree with the view of the learned Single Judge in not granting the damages nominal or punitive to the appellant on the basis of the admission of infringement of its trademark by respondent №1.
The judgment which has been relied upon by the learned counsel for the appellant in Hero Honda’s case (supra) is distinguishable from the facts of the present case in as much as that was a case in which the respondent had not admitted that it had indulged in violation of any trademark and further the status of the parties would also most comparable with the status of parties in the present case and accordingly merely on account of the fact that damages to the tune of Rs.5,00,000/-(Rupees Five Lacs) had been granted in the said case, could hardly be said to be a ground for grant of damages in the present case.
Similarly, the second judgment also cited by the learned counsel for the appellant is also not applicable in view of clear admission made by the Respondents on two different dates and Section 58 of The Evidence Act and Order 12 Rule 6 CP.C. in the present case. So far as the grant of injunction against the remaining defendants/ respondents are concerned, the grievance of the appellant is also not sustainable on account of the fact that the respondent №1 was the main distributor or the seller of the offending product. It was he who had been getting the goods sold under the brand name of MAGIC after getting the goods printed, packed etc. and if he himself had admitted his mistake and permitted himself to suffer from the decree of injunction, there is hardly any occasion to pass a corresponding decree against the remaining defendants/respondents. Even otherwise assuming though such a decree is passed in favor of the appellant and against the respondent Nos. 2 to 4, it would be a mere paper formality in as much as the respondent №1 himself has admitted that he does not intend to proceed further in the said business resulting in the offence to the trademark of the appellant.
Word “invalid” — Trademark ‘Pilot’ in respect of manufactured tobacco
The law as to registration permits both a user and a proposed user to apply for the registration of a mark. That would implies that it is not mandatory that a mark be previously used for an application for registration thereof being received. Thus, it cannot be said that if a registered trademark has not been used for the length of time that is stipulated in either limb of Section 47(1) of the 1999 Act, the application for grant would have to be rejected if such application were made as on the date of the challenge. It is also of some significance that both in its heading and the sense that the provision conveys, Section 47 provides for removal of a mark from the register or the impositions of limitations in its use. Ordinarily, the word “removal” in the context such as these as amplified by the expression “taken off the register” presupposes that the mark was validly entered in the register or otherwise remains valid as on the date of the challenge, but for the statutory ground provided for the challenge. In contrast, Section 57 recognizes the power to cancel or vary the registration and to rectify the register. The expression “cancelling or varying the trademark registration” appears in Section 57(1) and the expression “expunging or varying the entry” appears in Section 57(2) of the Act. The ground that may be canvassed under Section 57(1) of the Act is for contravention of, or the failure to observe, a condition entered in the register in relation to the use of the mark. This envisages either a case where the registered proprietor acts in complete derogation of any condition attached to the mark or acts in such manner that tends to breach the spirit of the condition attached to the use of the trademark There is a discretion that is available to the tribunal receiving the complaint to consider the nature of the breach and the quality of the conduct of the registered proprietor in assessing whether the registration should be cancelled or varied. It is also possible that the spirit of any condition is breached without the letter of the condition being contravened; and this would entitle the registration to be varied in the sense that the condition is clarified or additional conditions are imposed.
Section 57(2), on the other hand, refers to four classes of challenge and the power to expunge or vary the relevant entry. In each case it is the validity of the trademark or the sanctity of the entry that is questioned. Though the judgment in General Electric is instructive in the interpretation of the expression “entry wrongly remaining on the register,” as to whether such entry should be expunged or varied depends on an assessment of whether there is blameworthy conduct on the part of the registered proprietor. But that is in considering what the result ought to be and not in assessing whether the entry is wrongly on the register since the only consideration for such purpose is as to whether the entry could have climbed on to the register as on the date of the challenge. The second approach to assessing the impact of the word “invalid” in Section 14 of the 1999 Act is to import the understanding thereof from the interpretation of the equivalent provision in the contemporary English statute. If the genesis of a statute is in the body of common law governing such aspect prior to the enactment and if any provision undergoes subsequent statutory refinement, the understanding of the principle embodied therein in the Indian context may be based on the effect of the statutory refinement of the equivalent provision in England. The provisions as to cancellation or rectification of trademark registration in cochin and those as to removal or revocation of a trademark in England are distinct. There are indications on the same lines in the 1999 statute but not with the degree of clarity that is apparent in the English statute. But if it is the general rule that a specific provision available for a purpose has to be taken recourse to rather than a more general provision, a challenge on the ground of non-user has per force to be confined to Section 47 of the 1999 Act and not carried under Section 57(2) of the Act. The result is that the challenge on the ground of non-user is for removal of the trademark. The word ‘removal” in the context implies cessation, whereas the words “rectification” and “cancellation” in the context of Section 57 of the Act imply obliteration. In the one case the propriety of the mark getting on the register is not in question; in the other it is. The word “invalid” in Section 124 of the 1999 Act has to be understood in the second sense.
Application for taking on record additional documents
Rule permits and allows IPAB to extend the time for doing any act prescribed under the IPAB Rules whether such time as specified has expired or not. Thus IPAB has been given power to extend the time even if the time is specifically fixed under the Rules but cannot extend time fixed under the provisions of the parent Act. It will be incongruous to hold that IPAB has power to extend the time fixed under the statutory Rules but is focus officio and barred from extending time fixed in an order or direction given in an earlier order passed by them. It follows that IPAB has the power to extend the time even when it has fixed a specific time in their earlier order. Rule 14 certainly does not bar or expressly or impliedly prevent the IPAB from extending time fixed by them in an order. IPAB retains inherent eight and power to extend time. IPAB is required to follow fair and just procedure. Section 92 of the Act gives wide discretion to IPAB in following and adopting its own procedure but the procedure should be fair and prevent injustice. Principles of natural justice do not state that the time once fixed by the Court or forum cannot be extended.
The second question which arises for consideration is whether the petitioner has disclosed sufficient cause and justification for condonation of delay in filing of documents. During the course of hearing before me, it is pointed out that the petitioner has already paid Rs. 75,000- as cost to the respondent pursuant to an interim directions passed by this court. It also transpires that the respondent have filed six additional affidavits by way of evidence which have not been taken on record because of the delay in filing of the same. It does appear that the petitioner is somewhat responsible for the delay and has defaulted in filing of documents within time. The petitioner, it is apparent, did not realize the significance and importance of filing a detailed application explaining the reasons why there was delay in filing of documents. However, it is noticed that in the present case final arguments were heard on 25–26th October, 2007. Orders were not passed and the matter was relisted for hearing to enable the parties to file affidavit by way of evidence. There are no proceedings pending before the IPAB, one filed by the petitioner and the other by the respondent for rectification. Keeping these aspects in mind and to ensure that there is effective and complete adjudication of disputes, one last opportunity should be granted to the petitioner and the respondent to file documents and also file affidavit by way of evidence in support of their case.
The petitioner and the respondents will file additional documents if any within four weeks from today and affidavits by way of evidence within four weeks thereafter. No further extension of time will be granted as agreed and accepted by the learned counsel for the parties Additional documents and affidavits by way of evidence already filed will be taken on record.