JUDGMENT
K. Ramamoorthy, J.
(1) The two petitioners had filed a petition against Fedders Corporation (the first respondent) for removal of the Trade Mark No. 175253 and in the alternative for rectification. The second respondent is the Registrar of Trade Marks, New Delhi. The petitioner Nos. I and 2 are the same except that the petitioner No. 1 is a limited Company controlled by the same persons who are the partners in petitioner No. 2.
(2) The case of the petitioners tersely stated is this. In the year 1956, M/s. Lloyd Electric and Engineering Company, New Delhi, adopted the trade make FEDDERS. M/s .Lloyd Electric and Engineering Company it may be noticed was in the control of the persons who are now representing the petitioners. M/s. Lloyd Electric and Engineering Co. applied for its registration under Application No. 175253 dated 18.7.1956. On 16.11.1996, it was advertised in the Trade Mark Journal No. 179. By virtue of agreement between the Lloyd Electric and Engineering Co. and Fedders Quigan Corporation of 58-0, Grand Avenue, Maspeth, New York, U.S.A., the trade mark Fedders was registered with effect from 24.2.1958 as the subsequent proprietor. The name of the Fedders Corporation was entered in the Registrar of Trade Marks as subsequent proprietor, according to the record maintained by the Trade Marks Registry.
(3) The 1st respondent has no bona fide intention to use the trade mark and has not used this trade mark in relation to the goods in respect of which the registration extends, that is, refrigerators, air conditioners, refrigeration and air conditioning machinery and parts thereof and fittings therefor included in Class 11, under the. Trade Marks Act, installations for cooling water, beverages and asserts. The main ground of the petitioners for the relief prayed for is that one month before the present application a continuous period of five years or longer has elapsed during which the trade mark was registered and there has in fact been no bonafide use of the aforesaid trade mark in relation to the goods specified above by any proprietors thereof. It is stated in the petition that Fedders Corporation, the 1st respondent filed a Civil Suit No. 361/72 against the petitioner in the High Court at Calcutta. The 1st respondent agreed to appoint petitioner No. 1 as a registered user of the trade mark but failed to do so. In the year 1963, the 1st petitioner M/s. Fedders Lloyd Corporation Pvt. Ltd. entered into a technical collaboration arrangement with the 1st respondent Fedders Corporation with regard to manufacture of window type Airconditioner and that arrangement concluded in the year 1968. Therefore, there were no arrangements between the parties. It is asserted that the petitioner No. 1 has built up a large goodwill and reputation by sale of its goods in India bearing the trade mark Fedders Lloyd by virtue of long and established user and the said trade mark is exclusively associated with the goods of the petitioner No. 1. The 1st petitioner had been using the trade mark Fedders Lloyd since 1957 in relation to the airconditioning units and at no time the 1st petitioner sed Fedders (per se) in relation to the said goods. According to the petitioner the use of trade mark Fedders Lloyd by the 1st petitioner under no circumstances can be deemed to be used by the 1st respondent under the law as applicable.
(4) According to the petitioner, the 2nd petitioner Lloyd Sales Corporation is also in the same trade as a dealer against whom the suit had been filed in Suit No. 361/72 in the Calcutta High Court, the 2nd petitioner also is a person aggrieved. On these allegations the petitioners pray for the following relief: “that the Trade Mark No. 175253 be removed from the Register of Trade Marks or in the alternative the registration be so rectified as to remain on the register of trade mark so as to be confined to in relation to those goods manufactured and sold by respondent No. 1 under the Mark “FEDDERS.”
(5) The first respondent filed its reply on 3.3.1983. The defense put forth by the first respondent could be noticed in the following terms:
(6) On 21.5.1956 the Fedders Corporation, 1st respondent, which was at that time Fedders Quigan Corporation of 58-0, Grand Avenue, Maspeth, New York, Usa, entered into an agreement with M/s. Lloyd Electric and Engineering Company which was a partnership consisting of Kanahya Lal Punj, S.P. Punj, I.P. Punj, V.P. Punj and S.P. Sawhney trading as Lloyd Electric and Engineering Company filed an application for registration on 18.7.1956. On 19.2.1958 the said trade mark was entered in the Registrar of the Trade Marks. When Fedders Quigan Corporation came into know about this, the Lloyd Electric and Engineering Company agreed to assign the Trade Marks and on 24.2.1958, an assignment deed was executed and the same was registered with the Registrar of the Trade Mark. The 1st petitioner Fedders Lloyd Corporation Pvt. Ltd. was incorporated in or about 21.5.1956 and this was formed to take over the business of Lloyd Electric and Engineering Company.The first petitioner’s Company sought permission from the 1st respondent to use the word Fedders. On 11.10.1963, an agreement was entered into between the 1st petitioner and the 1st respondent. The parties had agreed to the 1st petitioner using the word Fedders as part of its trading style and by letter dated 27.10.1963 there was a modification of the terms. The duration fixed in the agreement was 5 years. In October, 1968, the parties negotiated for continuance of the arrangement but it did not materialise, therefore, the first respondent called upon the first petitioner to cease and desist from using the trade mark Fedders and the first petitioner did not comply with the demands, therefore, the suit was instituted in the Calcutta High Court. It is stated by the first respondent that the trade mark Fedders had been used by the first respondent Fedders Corporation, although the trade mark and part of his trading style were Lloyd Electric and Engineering Company. ThefirstdefendantappliedforregistratfononJulyl8,1956. The “1st respondent has used and always had the intention to use the Fedders trade mark in relation to the goods in respect of which it is registered. The first respondent has used and always had the intention of trade mark Fedders in relation to the airconditioners and airconditioning machinery and parts and fittings therefor included in Class 11 under the Trade Marks Act. The first respondent has made use of trade mark Fedders is relation to its goods in India and was not able to make more extensive use of this restriction and it was not permitted to use in the five years and one month immediately preceding the filing of the instant petition.
(7) The first petitioner was given the right to use the trade mark Fedders inaccordance with the terms and conditions entered into between the parties. The use of the Trade Mark Fedders by the first respondent is frivolous and dishonest and that would not confer any right on the first petitioner. The 1st respondent prayed for the dismissal of the petition.
(8) The 1st respondent filed an affidavit by Mr. Sam Muscarnera sworn on 30.10.1986 and alongwith the affidavit Exhibits A to 1 were filed.Exhibit A is the agreement dated 21.5.1956. Exhibit B is the agreement dated 10.10.1963. Exhibit C is the agreement dated 11.10.1963, Exhibit D is the photocopy of the Appendix 4 to the import policy for the period from April, 1978 to March, 1979 published by the Government of India. That Appendix gives the list of banned items and Item 96 in that list reads as under: Any consumer goods, however, described of industrial, agricultural or animal origin, not appearing individually in Appendices 5 and 8 or specifically allowed for import under Open General Licence (750). Exhibit E is also photocopy of Appendix 4 of the Import Policy but that is for the period from April, 1977 to March, 1980. Item No. 65 reads in the following terms: All consumer goods, howsoever described, of industrial, agricultural or animal origin, not appearing individually in Appendices 5 and 8 or specifically listed for import under Open General Licence (667). Exhibit F is again photocopy of Appendix 4 of the Import Policy for the period from April 1980 to March, 1981. Item No. 65 is the banned items which reads as under: All consumer goods, howsoever described of industrial, agricultural or animal origin, not appearing individually in Appendices 5 and 8 or specifically listed for import under open General Licence (669). Exhibit G is again the photocopy of appendix 4 of Import and Export Policy from April, 1981 to March, 1982. Item No. 70 under the heading of absolute banned list reads as under: All consumer goods, howsoever, described of industrial, agricultural or animal origin, not appearing individually to Appendices 5 and 8 or specifically listed for import under Open General Licence (695). Exhibit His a photocopy of the Appendix 4 Export and Import Policy from April, 1982 to March, 1983 under the heading of rawmaterials,components,consumables, tools and spares list of non-permissible items (banned) item No. 77 is in the following terms: All consumer goods, howsoever described, of industrial, agricultural or animal origin, not appearing individually in Appendices 3, 5, 8 and 9 or specifically listed for import under Open General Licence. Exhibit I has been filed to show that a new branch of Trade Marks Registry was opened in the Industrial Estate, Okhla With effect from 6.7.1959.
(9) The petitioners on 29.8.1986, filed an affidavit by Mr. Charan Das wherein he has stated: The Trade Mark Tedders LLOYD’ is a distinctive trade mark belonging to M/s. Fedders Lloyd Corpn.Pvt. It is also the key portion of the said business name. On l8th July,1956 M/s. Lloyd Electric and Engineering Company had filed an application for registration of trade mark TEDDERS’ under No. 175253. The said application was advertised in Trade Mark Journal No. 179 dated 16th November, 1956. Later the said application was transferred in the name of M/s. Fedders Quigan Corporation of 58-0 Grand Avenue, Maspeth, New York, Usa and thereafter subsequently transferred to respondent No. I on 26th June, 1959. The respondent M/s. Fedders Corporation though obtained the registration of Trade Mark No. 175253 has neither used the trade mark TEDDERS’ in respect of refrigerators, airconditioners, refrigeration and airconditioning machinery and parts thereof and fittings therefor, installation for cooling water, beverages and deserts etc. nor has any intention to use the same for all or any of the goods stated above. I say that referring to the provisions of Law that one month before the filing of the petition C.O. 10 of 1982 or at any time even earlier for a continuous period of 5 years or longer, the registered proprietor has in fact not used the trade mark TEDDERS’ nor had any bona fide intention to use the same in respect of the goods as are specified in the earlier parts of my affidavit. I say that there has been no use what so ever of trademark FEDDERS’in India and it is a case of absolute non-use and total omission on the part of the Registered Proprietors. In para 6 he would state as under: I say that during the past decade, the petitioner has built for itself a large and important goodwill and reputation by sale of its airconditioners in India bearing the trade mark Tedders LLOYD’ and that by virtue of long and established user the trade mark Tedders LLOYD’ is exclusively associated with the airconditionets manufactured by petitioner No. 1 i.e. M/s. Fedders Lloyd Corporation Pvt. Ltd. as are marketed by M/s. Lloyd Sales Corporation.
(10) Mr. Jalil Khan son of Shri Abdul Hamid Khan, working as the Assistant Manager, Hotel Ambassador, Sujan Singh Park, New Delhi, has filed the affidavit sworn on 18.8.1986. In paras 2 to 4 he would state as under: That in our Hotel we have installed Room Airconditioners manufactured by Fedders Lloyd Corporation Pvt.Ltd. through their selling agency M/s.Lloyd Sales Corporation. That Fedders Lloyd airconditioner is superior in quality. It has warranty, efficient cooling and after sale service is very good. That although few other brands of imported airconditioners are available in Indian Market but never seen any airconditioners under the name of Fedders.
(11) Mr. R.K. Bali, Dental Surgeon, 20, Bll Desh Bandu Gupta, Road, Karol Bagh, New Delhi, has filed the affidavit which was sworn to on 18.8.1986. The affidavit is in the following terms: That I purchased six Nos. Fedders Lloyd Airconditiones of I ton capacity and one air conditioner of two tons capacity from Lloyd Sales Corporation vide Invoice No. ND/LSC/AC/SPI/R-47/84 dated 10.7.1984. That I am completely satisfied with the performance, quality, efficient cooling of the airconditioners. That the Fedders Lloyd Airconditioners gave the benefit of computerised after sales service in work which is spares the entire country. I have seen other imported airconditiones like Westing House, National, Fridgdaire but never heard any airconditioner under the name of Fedders.
(12) Mr. D.N. Chawla, Partner, Chawla Radios, 286, Old lajpat Rai Market, ChandniChowk, Delhi, has filed an affidavit which was sworn to on 18.8.2986, in the following manner: I am the partner of firm Chawla Radios, 353, Old Lajpat Rai Market, Chandni Chowk, Delhi. My firm is dealing in radios, parts and allied goods of sound equipment for the last ten years. I purchased Fedders Lloyd Airconditioner manufactured by the petitioner No. 1 through their selling agents – Lloyd Sales Corporation petitioner No. 2, M-13, Connaught Circus, New Delhi. The said purchase was vide Invoice No. 152 dated 30.3.1985. I have found the airconditioner to my satisfaction. I say that Fedders Lloyd airconditioner is superior in quality coupled with warranty and service. I say that I have not come across any Airconditioner called Fedders though I know of the other Airconditioners such as VOLTAS-CRYSTAL, Blue Star, Arco and ACCAIRE. Among the imported Aircondtioners westing House and National are the brands of Airconditioners known to me.
(13) Mr. L.P. Gaur (Senior Office Assistant), National Counsel of Applied Economic Research, Prisila Bhawan, 11, Inderprastha Estate, New Delhi, has filed an affidavit which was sworn to on 16.8.1996 in the following terms: That our Institution purchased four Fedders Lloyd Airconditioners manufactured by Fedders Lloyd Corpn. through their authorised distributor M/s. Lloyd Sales Corporation. The said purchase was made vide Invoice No. RC/ AC/7341/79-80/82 dated 16.3.1982. That despite various brands of Room Airconditioners like Voltas, Accaire & others are available in the market but the Institution preferred to purchase Fedders Lloyd Airconditioner as it has many other qualities which are not available in any other Airconditioner. Fedders Lloyd Airconditioner has widest range, fast & efficient cooling, superior in quality and facilities of After Sale Service by highly qualifier Engineers. That the Compressor is noise-less and cooling is very effective because of changeable grills. That I have never heard or even came across with any airconditioner under the brand name Fedders though other imported brands like National and others are available in the market.
(14) Mr. S.S. Mutta (Administrative Officer), Photo Division, Ministry of Information and Broadcasting, Doordarshan Kendra, Sansad Marg, New Delhi, has filed the affidavit which was sworn to in on 16.8.1986 in the following manner: That on31.12.1984 the Photo Division,Ministry of Information and Broadcasting. Akashvani Bhawan, New Delhi, vide Purchase Order No. D-2107/1 /82- 84/Accts/3547 dated 31.12.1984 purchased 8 Nos. (Eight) 1.5 ton capacity Window Fedders Lloyd airconditioners manufactured by Fedders Lloyd Corporation through their distributor M/s. Lloyd Sales Corporation, M-13, Connaught Circus, New Delhi. That since the Fedders Lloyd Airconditioner has been manufactured as per 1.5 specification 1391/1971 and also under the rate contract with D.G.S. & D” the Ministry gave preference for the purchase of Fedders Lloyd Airconditioners due to other distinctive features like superior in quality, warranty, after sale service by qualified technicians and efficient cooling. That I have heard about other brands of airconditioner like Voltas Crystal, Blue Star, Accaire and among the imported airconditioners Westing-House, National are the brands known to me but I have never come across any airconditioner under the brand name of Fedders.
(15) Mr. J.B.L. Mathur son of Mr. R.B.L. Mathur, Law Officer of the 1st petitioner Company had filed counter affidavit sworn to on 1.5.1987 disputing the contents of the affidavit filed by Mr. Sam Muscarnara, Counsel for Fedders Corproation, Usa, (respondent No. 1).
(16) On 9.5.1984, the following issues were framed :
1.Did respondent No. 1 not use the trade mark Fedders as alleged in the petition and the trade mark is liable to be rectified on that grounds ? Opp
2.Is the petition liable to be allowed for any of the reasons stated in the petitioner ? Opp
3.Have Delhi Courts no jurisdiction to entertain and try the petition ? Opr
4.Is the petition mala fide and if so what is its effect ? Opr
5.Are the petitioners or any of them, not 6 persons aggrieved within the meaning of Section 56 of the Trade & Merchandise Act, 1958 ? Opp
6.Relief.
(17) Mr. Parveen Anand learned Counsel for the petitioners contended that the petitioners had established that the 1st respondent had not been using the mark for the period mentioned in the Statute and, therefore, the petitioners are entitled to the relief as prayed for. According to him, there were no restrictions in sales from 1955 to 1959. The identity of the respondent as believed user of the same trade mark during the period would show that the first respondent did not have in law any restrictions. The learned Counsel contended that if the first respondent could use the Trade Mark for refrigerator they can use for airconditioning also. He next contended that when the assignment was made and the first respondent did not identify the person through whom they can have the bona fide intention to use the trade mark the provisions of Section 46(l)(c) of the Act are not satisfied.He referred to the judgment of the Supreme Court reported in American Home Products Corp v. Mac Laboratories Pvt. Ltd., . The learned Counsel relied upon the judgment reported in Vishudas Trading As Vishnudas Kishendusv. Vazir Sultan Tobacco Co. Ltd., 1996 (PTC) 512 to show that the intention would not be bonafide if there was no restriction relating to the refrigerator. The learned Counsel also submitted that the first respondent could not specify the agent or identify it.
(18) The use of unregistered licencee would not amount to use of the respondents. The first respondent has not shown the user during the period from July, 1977 to July, 1982. Therefore, under Section 46(l)(b) of the Trade and Merchandise Marks Act, 1958 the Trade Mark is liable to be cancelled.
(19) Before I deal with the authorities cited by the learned Counsel for the parties it is better to notice the agreement referred to ‘by the first respondent. On 71.5.1956, it is common ground that there was an agreement between the Fedders Quigan Corporation and Lloyd Electric and Engineering Company, a partnership consisting of Kanahya Lal Punj and Suraj Parkash.Thefirstclause of the agreement dated 21.5.1956 provides as under: First, subject to the conditions hereinafter contained, Fedders docs hereby grant to Lloyd, the sole and exclusive right and licence for a period of five (5) years from June 30,1956, unless sooner terminated by virtue of default as hereinafter provided, to assemble, manufacture and sell in the Union of India, Country of Pakistan and the Country of Ceylon, (hereinafter referred to as the “designated territory”), room air conditioners manufactured by or incorporating parts manufactured or sold by Fedders under the Fedders trade name and lable, which units so to be assembled and/or sold by Lloyd in accordance with the provisions hereof shall be identified and bear the trade name and label “Fedders”. It was agreed that the Fedders had to help the Lloyd Electric and Engineering Company in the following manner: To implement the purposes of this agreement, and to assist Lloyd in its production, development, sales and distribution efforts, the parties agree, subject to the terms and conditions hereinafter more fully set forth, that:
(1)Fedders shall furnish to Lloyd certain technical information for which Lloyd agrees to pay to Fedders a royalty according to the terms and conditions hereinafter set forth.
(2)Fedders shall sell and Lloyd shall purchase exclusively from Fedders component parts for room air conditioners according to the terms and conditions hereinafter more fully set forth, provided, however, that nothing in this agreement contained shall obligate Fedders to sell to Lloyd component parts other than those actually produced by Fedders for its standard models of rooms air conditioners. Clause 13 of the agreement provides as under: In connection with the performance-of this agreement by Lloyd, but not otherwise, Fedders granted permission to Lloyd to use the trade name and label “Fedders” as hereinbefore provided. The parties understand and agree that the aforesaid trade name and label “Fedders” is and shall at all times be and remain the exclusive property of Fedders. Upon the termination or cancellation of this agreement for any reason whatsoever (and in addition to the provisions concerning the termination of the use of the Fedders name as hereinabove provided in paragraph “twelfth” of this agreement), Lloyd shall forthwith discontinue the use of the trade name or label “Fedders” in connection with any merchandise manufactured, produced, assembled or sold by it. In addition to but not in limitation of any other rights and remedies to which Fedders may be entitled by the terms of this agreement or otherwise, and despite any provisions for arbitration hereinafter contained, Fedders shall have the right to seek, apply for and obtain by independent application in any Court: of complaint jurisdiction a mandatory injunction to enforce the provisions of this paragraph “thirteenth” of this agreement.
(20) On 1″.10.1963, there was an agreement between the first respondent Fedders Corporation and the first petitioner Fedders Lloyd Corporation Pvt. Ltd. The nomenclature given to the document could be seen from the following paragraph in the preamble portion : Whereas, the parties hereto desire hereby to enter into the manufacturing and assembling royalty licence and selling agreement (sometimes referred to as the “royalty licence agreement”) hereinafter set forth. Clause I reads as under: Upon the subject to the conditions hereinafter contained, Fedders does hereby grant to Lloyd, the sole and exclusive right and licence for a period of five (5) years from October 11th, 1963, unless sooner terminated as hereinafter provided, to assemble, manufacture and sell in the Country of India (hereinafter referred to as the “designated territory”) airconditioners (as that term is defined by the National Electrical Manufacturers Association, and which definition is known as the Nema definition under Code Number CN- 1-1958, or equivalent thereof) designed either in part or in whole, or manufactured by, or incorporating parts manufactured or sold by Fedders, . all or any of which are sometimes hereinafter referred to as the “Fedders Products”, or “Fedders Units”, or “Units”. Fedders represents that it has the right to grant and does hereby further grant to Lloyd, upon, subject to, and limited by the conditions and terms specified hereunder and pot otherwise, the authorisation to use the Fedders trade name and label and the trade mark “Fedders” which has been registered in India in respect to the Fedders Product. Clause 3 provides as under : Lloyd agrees that it will not, during the term of this agreement, or any extensions or renewals thereof, assemble, manufacture, promote the sale of or sell, directly orindirectly, or through any other person, firm or corporation, air conditioners or the basic components thereof in any part of the world except the designated territory (unless otherwise consented to in a writing subscribed by Fedders) and that it will not during the term of this agreement or any extensions or renewals thereof (unless otherwise consented to in a writing subscribed by Fedders), either directly or indirectly, or through or in conjunction with any other person, firmer corporation, manufacture, assemble, sell advertise for sale or distribute air conditioners, or the basic components thereof, except those purchased, manufactured or assembled in pursuance of the provisions hereof and identified by the trade mark or trade name and label “Fedders” as herein provided. Lloyd further agrees that it shall not in any way sub-license any of the rights granted hereinunder.
(21) Under Clause 4 the first respondent Fedders Corporation had agreed to furnish the first petitioner such technical and engineering instruction, knowledge and information for standard Fedders airconditioners to enable the first petitioner to manufacture and assemble such airconditioners.
(22) Under Clause 6 the first petitioner was obliged to do the following: Lloyd shall furnish Fedders with quarter-annual reports on the 15th day of the month following each quarter-annual period of each contract year.Each such report shall be a true and accurate statement of the business activities of Lloyd concerning its transactions with Fedders, and shall include a true and accurate report of the number of units manufactured or assembled either in whole or in part by Lloyd, and the number of such units sold. Each such report shall be verified by the fiscal officer of Lloyd or at Fedders’ request, by a firm of independent Chartered Accountants. The rendering of any reprots, or the payment of any royalties by Lloyd shall not be a bar to or operate as an estoppel as against any rights of Fedders.
22.Under Clause 7 the first petitioner has agreed to give inspection of the accounts to the first respondent.
(23) Clause 8 relating to the trade name/trade mark. The parties had agreed in the following terms : Lloyd agrees that in using the said trade name and/or trade mark upon the products made by it under this authorisation, it will not represent in any way that it has any right or title to the ownership of the said trade name and/or trade mark, or to the eventual registration thereof, since it is understood that such trade name and/or trade mark and the registration thereof will continue to be in the ownership of Fedders and will be used by Lloyd on behalf and in the interest of Fedders, and Lloyd will first obtain the approval of Fedders as to the form and manner in which the said trade name and/or trade mark shall be used upon or in connection with or in relation to the products, labels, container, advertisements or other materials. Lloyd specifically recognises Fedders title in and to the trade name and/or trade-mark “Fedders” and it will not at any time do or suffer to be done any act or things which will in any way impair the rights of Fedders in and to the said trade name and/or trade-mark and to its registration, provided, however, the accepting of a licence to use and use of the trade-mark “Fedders” under this agreement shall not be deemed any breach of this paragraph “8” by Lloyd and Lloyd further covenants that it shall not either directly or indirectly, at any time challenge the title of Fedders to such trade name and/ or trade-mark, or the validity of such registration obtained by Fedders for such trade-mark. Upon termination of this license for any reason, including, without limitations the wilful default of either party, all finished stocks of the said products manufactured by Lloyd and already bearing the trade name and/ or trade-mark of Fedders, in compliance with the provisions of this agreement, may be sold by Lloyd in the usual and customary manner. Subject to the preceding sentence, Lloyd shall destory all material containing any reference to Fedders, or to Fedders trade name or trade-mark, and shall no longer use any such trade name or trade-mark in the future or any imitation thereof. In addition to, but not in limitation of any other rights and remedies to which Fedders may be entitled by the terms of this agreement or otherwise, and despite any provision for arbitration hereinafter contained,Feddersshall have the right to seek, apply for and obtain by independent application in the Supreme Court of the State of New York, and in any other Court having jurisdiction over Lloyd, a mandatory injunction to enforce the provisions of this paragraph “8” of this agreement, and Lloyd does hereby consent to the entry of a decree or decrees to that effect in all or any of said Courts.
(24) The first petitioner had also agreed that the first respondent can apply for mandatory injunction to enforce any of the provisions in para 8 in the Supreme Court in the State of New York Ny and this agreement was for a period of five years.
(25) After this the parties would appear to have made attempts for renewal for the agreement and the negotiations failed. In January, 1972, the first respondent instituted the suit against the two plaintiffs as I had stated above. It is only during the pendency of that suit the present petition has been filed. Therefore, the relevant period has to be considered under Section 46(1) as the period of five years one month preceding 1972 and not five years one month preceding the following of the petition in 1982 as contended by the learned Counsel for the petitioners that is, from 1977. If this position on facts is appreciated there is no need to discuss any authorities to consider any point large by the learned Counsel for the petitioners. When the suit was filed in 1972, the petitioners could have filed an application for rectification or after the negotiations failed in 1968 the petitioners could have filed an application for rectification. It has to be borne in mind that right from 21.5.1956 upto the filing of the suit in 1972 the facts as stated by the first respondent are not disputed by the petitioners. The fact that for five years preceding the filing of the suit in 1972 the first petitioner was using the trade mark under the agreement dated 11.10.1963 is admitted and not disputed by the petitioners. The petitioners cannot take its own time for filing the petition for rectification and then try to apply the period, mentioned in Section 46 to suit the petitioners. Therefore, .1 am very dear in my mind that the application for rectification filed by the petitioners is liable to be dismissed on this short ground.
(26) Mr. Parveen Anand learned Counsel for the petitioner relied upon the judgment of the Calcutta High Court reported in M/s.J.N.Nichols(Vimto) Ltd. v. Rose & Thistle and Another, . The Division Bench of the Calcutta High. Court had to deal with the application for rectification after comparing Section 26 of the U.K. Trade Marks Act, 1938 and 46 of the Trade and Merchandise Marks Act, 1958. The learned Judges observed : On perusal of the above noted two statutory provisions therefor, it appears that the legislative intent in both the statutes are identical and to the effect that in the event of there being a non-user of a registered trade mark or in the event there is no bonafide user thereof by the proprietor for a period of 61 months, the proprietor cannot keep a mark duly registered in the register of marks excepting however, that in the event of there being any special circumstances existing, the proprietor of the marks will have a good defense in regard thereto. The learned Judges noticed the fact in the following terms: Having discussed the law on the subject as above and turning attention now however on to the factual context pertaining to this appeal it is to be noted that the learned trial Judge has allowed the application of the respondent herein in regard to removal of the trade mark “Vinto” formerly recorded in the name of J.N. Nichols and Company Limited and now under the name ofJ.N. Nichols (Vimto) Limited being the successor-in-interest of the erstwhile J.N. Nichols and Company Limited. On the factual score it appears that M/s. J.N. Nichols and Company Limited being the predecessor-in-interest of the appellant was the registered proprietor of the Trade Marks Nos. 7060,170440 and 170441 registered in India in Class 32 in respect of non-alcoholic drinks and preparation making such drinks and non-alcoholic fruit flavoured cordials under the provisions of the Trade and Merchandise Act, 1958. In January, 1978 the respondent herein made an application in this Court under Section 46 of the 1958 being Matter No. 156 of 1978 for an order that the trade mark “VIMTO” (word or device) registered in the name of J.N.Nichols and Company Limited under Nos-7060, 170440 and 170441 be removed and taken off and/or cancelled from the Register of Trade Marks and this Court by an order dated 30th November, 1978 directed the removal of the said mark “VIMTO” be taken off the register of trade mark. Incidentally, it is to be noted that the respondent applied for registration of its trade mark “VIMTO” with the appropriate authority by reason of the said mark being extensively used in and around the city of Calcutta. The appellant however, opposed the said application for registration on the ground that “VIMTO” would otherwise be deceptively similar to the existing registered trade mark of the appellant “VINTO”. The opposition of the appellant has been registered bearing No. CAL-1727and the proceeding is now pending before the learned Authority. On the further factual score it appears that during – the pendency of the proceedings in regard to the opposition of the appellant being Case No. Cal 1727, the respondent herein applied before this Court for removal of the mark “VINTO” (word or device) registered in Class 32 under No. 7061 from the register of trade marks.lt is on this application that the learned trial Judge has passed an order of removal of the appellant’s mark “VINTO” from the register of trade marks maintained by the Registrar of Trade Marks, Calcutta and hence the appeal against the order of the learned trial Judge.
(27) The learned Judges had noticed that the mark Vimto has been used after its registration. The appellant before the learned Judge was the registered proprietor of the both the products Vinto as well as VIMTO. In Class 32 having separate registration number. The product Vinto was nothing in use by virtue of the order passed by that Court in the year 1978. The application filed by the respondent before the Calcutta High Court related to the removal of the mark, namely, VIMTO. The defense by the appellant to the application for removal filed by the respondent before that Court was that there was special circumstance by way of import restrictions. From the facts it could be seen that there was no relationship between the parties before the registration or at the time of filing of the suit before the Calcutta High Court as in the present case. Therefore, the decision of the Calcutta High Court relating to the meaning of the special circumstances in the trade as explained by the U.K. Court is not relevant. In any event, in the present case, the first respondent had produced enough materials to show that there was import restrictions during the relevant period. According to the respondent in trademark case the facts of each case and the jural relationship between the parties at the time of institution of the action cannot be ignored and the provision of the statute have to be considered in the light of the facts. It is not open to the applicant for rectification to just a particular time for instituting action for rectification and then fix the period under Section 46 of the Trade and Merchandise Marks Act, 1958 to suit its convenience. Therefore, in my view, the ratio laid down by the Calcutta High Court would not apply to the facts of this case.
(28) Mr. Parveen Anand learned Counsel for the petitioner referred to the judgment of this Court reported in R.J. Reynolds Tobacco Co. v. LT.C. Limited, 1987 (1) Plr 85. This is the judgment of Mr. Justice N.N. Goswmany. The learned Judge dealt with an application for injunction and the learned Judge has not laid down any radio which could be of any help ot the instant case.The learned Counsel also relied upon the order dated 15.7.1996 passed by Hon’ble Mr. Justice Ajoy Nath Ray in Kabushik Kmskti Toshiba. T0 shiba Corporation .Toshiba Applicative Co. Ors. appeal from original Order No. 532 of 1992.1 have gone through the judgment and I do not find anything which could be of any assistance for resolving the disputes in this case. Mr. Parveen Anand, learned Counsel for the petitioners referred to a decision of a Division Bench of this Court reported in K.R. Ben & Co. v. The Metal Goods Manufacture Co. Ltd. and Another, , for the proposition that use of trade mark by virtue of un-registered document cannot be availed of by the proprietor for the purpose of Section 46 of Trade and Merchandise Act, 1958.
(29) The fact in that case is entirely different and the learned Judge remanded the matter back for reconsideration to the Single Judge. Mr. Parveen Anand learned Counsel for the petitioners relied upon the judgment of the Supreme Court reported in Vishnudas Trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd., 1996 Ptc (16) 512. The Supreme Court had to consider the scope and ambit of manufacture and the question that has arisen in this case was not considered by the Supreme Court. Mr. Parveen Anand, learned Counsel for the petitioner relied upon Para 71 of the judgment reported in American Home Products Corporation v. Mac. Laboratories Pvt. Ltd. and Anr., . Para 71 of the judgment reads as under: In our opinion, to enable the proprietor of a trade mark who has got it registered on the ground that he intends to use the trade mark to avail himself of the fiction created by Section 48(2) he must have had in mind at the date of his application for registration some person to whom he intends to allow the use of the trade mark as a registered user. This would eliminate all chances of trafficking in a trade mark. If an applicant for registration did not have at. the date of his application for registration a particular registered user in view, he cannot be said to have had a bonafide intention to use the trade mark and in such an event he cannot resist an application made under Clause (a) of Section 46(1) of the 1958 Act. This paragraph has to be read alongwith other portion of the judgment and it cannot be read in isolation.
(30) Mr. Manmohan Singh, learned Counsel for the first respondent contended that the first respondent from the fact it is clear, had the bona fide intention to use the said trade mark. The first respondent had entered into an agreement with the petitioners in the interest of the first petitioner. On 24.2.1958, there was an assignment with the trade mark registration with the petitioners in favour of the * first respondent and necessary entry was made in the register on the 20th of the August, 1958. The first respondent has clearly shown the intention to use the trade mark in india entering into the agreement on ll.10.1963 for a period of five years. The first respondent has filed a suit in 1972 as noticed above and the first respondent had clearly established its bona fide intention as laid down by the Supreme Court in the case American Home Products Corporation v. Mac. Laboratories Pvt. Ltd. and Another, .
(31) The learned Counsel for the first respondent Mr. Manmohan Singh submitted that Section 46(1)(b) of the Act does not apply. According to the learned Counsel, there was a complete ban of the articles as could be seen from Exhibits D to H which had already been extracted. According to the learned Counsel for the first respondent Mr. Manmohan Singh the import restrictions imposed by the Government would constitute special circumstances within the meaning of Section 46(3) of the Act. He referred to the judgment reported in Mis. Plaza Chemical Industries v. Kohinoor Chemical Co. Ltd., .
(32) I am of the view that the first respondent has established his intention to use the trade mark and the first respondent could not effectively use the article owing to the restrictions imposed by the Government and the petitioners have not made out any case for the relief prayed for by them in the petition.
(33) There is another aspect of the matter. The application filed by the petitioners is barred by limitation. Section 107 of the Trade & Merchandise Marks Act, 1958 provides for an application for rectification of register to be made to High Court in certain cases. Section 107 reads as under:
(1)Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff’s trade mark is questioned by the defendant or where in any such suit the defendant raises a defense under Clause (d) of Sub-section (1) of Section 30 and the plaintiff questions the validity of the registration of the defendant’s trademark, the issue as to the validity of the registration of the trade mark concerned shall be determined only on an application for the rectification of the register, and notwithstanding anything contained in Section 46. Sub-section 4 of Section 47 or Section 56, such application shall be made to the High Court and not to the Registrar.
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(2)Subject to the provisions of Sub-section (1), where an application for rectification of the register is made to the Registrar under Section 46 or Sub-section (4) of Section 47 or Section 56, the Registrar may, if he thinks fit, refer the application at any stage of the proceeding to the High Court. Section 108 provides procedure for application for rectification before a High Court and the same reads as follows:
(1)An application for rectification of the register made to a High Court under Section 46, Sub-section (4) of form and shall contain such particulars as may be prescribed.
(2)Every such application shall be heard by a Single Judge of the High Court : Provided that any such Judge may, if he thinks fit, refer the application at any stage of the proceedings for decision to a Bench of that High Court.
(3) Where any such application is heard by a single Judge of the High Court, an appeal shall lie from the order made by him on application to a Bench of the High Court.
(4)Subject to the provisions of this Act and the rules made there under,the provisions of the Code of Civil Procedure, 1908, shall apply to application to a High Court under this section.
5.A certified copy of every order or judgment of the High Court or of the Supreme Court, as the case may be relating to a registered trade mark under this section shall be communicated to the Registrar by that Court and the Registrar shall give effect to the order of the Court and shall, when so directed, amend the entries in, or rectify the register in accordance with such order.
It will be seen from Sub-section(4)ofSection 108 that the provisions of the Cpc would apply to the application to the High Court under this section. In this case, we are concerned only with the question what is the period of limitation for rectification petition filed in the High Court or in any Civil Court. Article 137 of the Limitation Act, 1963 is the relevant article and the same is as follows: Description of Period of Time from which suit limitation period begins to run Any other Three years When the right to application apply accrues. for which no period of limitation is provided elsewhere in this Division.
It is well settled in construing an article in a Statute of limitation that all the three columns have to be read together. The third, column states that the application must be filed within three years from the date when the right to sue accrues. The petitioners ought to have filed an application for rectification when the right to sue accrued in 1972 when the first respondent filed the suit before the Calcutta High Court. The petitioners cannot contend relying upon the provisions of Section 46 which provides that conditions for rectification and then contended that provisions provide for five years and one month and, therefore, the petition for rectification is not governed by any of the provisions of the Limitation Act, 1963. Section 46 of the Trade & Merchandise Marks Act, 1958 reads as under: Removal from register and imposition of limitation ongroundofnon-use(l) Subject to the provisions of Section 47, a registered trade mark may be taken off the register inrespect of any of the goods in respect of which it is registered on application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved on the ground either –
(A)that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of Section 45 apply, by the Company concerned, and that there has,, in fact, been no bonafide use of the trade mark in relation to those goods by any proprietor thereof for the time being upto a date one month before the date of the application; or
(B)that upto a date one month before the date of the application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bonafide use thereof in relation to those goods by any proprietor there of for the time being:
Provided that, except where the applicant has been permitted under Sub-section 3 of Section 12 to register an identical or nearly resembling trade mark in respect of the goods in question or where the Tribunal is of opinion that he might properly be permitted so to register such a trade mark, the Tribunal may refuse an application under Clause (a) or Clause (b) in relation to any goods, if it is shown that there has been, before the relevant, date or during the relevant period, as the case may be, bonafide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description being goods in respect of which the trade mark is registered.
(2)Where in relation to any goods in respect of which a trade mark is registered –
(A)the circumstances referred to in Clause (b) of Sub-section (1) are shown to exist so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in, in a particular place in India (otherwise than for export from India), or in relation to goods to be exported to a particular market outside India; and
(B)a person has been permitted under Sub-section (3) of Section 12 to register an identical or nearly resembling trade mark in respect of those goods under a registration extending to use in relation to goods to be so sold, or otherwise traded in.orinrelation to goods to be soexported, or the tribunal is of opinion that he might properly be permitted so to register such a trade mark;
on application by that person in the prescribed manner to a HighCourt or to the Registrar, the Tribunal may impose on the registration of the first-mentioned trade mark such limitations as it thinks proper for securing that registration shall cease to extend to such use.
(3)An application shall not be entitled to rely for the purposes of Clause (b) of Sub-section (1) or for the purposes of Sub-section (2) on any non- use of a trade mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates.
The Trade Mark Act is both substantive and procedural law. The petitioners cannot keep quite for a considerable length of time and then take their own time for filing an application for rectification. In my view, the petition is barred by limitation under Article 137 of the Limitation Act, 1963. The petitioners have not made out any case for rectification and the application is barred bytime. Accordingly, the petition is dismissed. There shall be no order as to costs.