JUDGMENT
Raghbir Singh, Vice-Chairman
1. Petitioner tiled an application for removal of trade mark No. 893660 registered in the name of respondent from the register under Sections 47, 57, and 125 of the Trade Marks Act, 1999. Petitioner in his application for rectification filed on 31.3.2004 claims to be carrying on business of manufacture and marketing of washing powder and washing soap under several trade marks including trade mark ‘HARAPATTA’. He also claims to be marketing detergents under the trade mark ‘HARAPATTA’. He set up the business in the year 1993 and since then continuously and extensively is carrying out the same in the name and style of JAYPEE CHEMICALS at Dhanbad, Bihar. The petitioner claims to be selling his products in certain districts of State of Bihar, namely, Dhanbad and adjoining areas. The products are also known in the neighbouring areas of West Bengal. He claims to have filed an application for registration Of trade mark ‘HARAPATTA’ in respect of washing powder being application No. 1125676 dated 12.8.2002 claiming user since 1999. Petitioner came to know that the respondent was using the trade mark ‘HARAPATTA’ and device and as such sent a notice through his attorney on 17.8.2002. The petitioner claims that the respondent never used its products bearing the trade mark ‘HARAPATTA’ and device in the districts of Bihar where the petitioner has been extensively, continuously and openly selling its products. The petitioner claims that the trade mark ‘HARAPATTA’ and device was registered without any bona fide intention on the part of the respondent to be used in the State of Bihar and that there has in fact in no bona fide use of the trade mark in the State of Bihar in relation to those goods for the time being upto a date three months before the date of this application. Thus, the petitioner claims that the entry relating the trade mark No. 893660 wrongly remains in the Register. The petitioner further claims that the said trade mark offends the provisions of Section 11 and particularly those of Sections 11(2), (3) and (7) of the said Act. The petitioner has given certain details of the cases filed by him against the respondent and the cases filed by the respondent against him being title Suit No. 130 of 2002 filed by the petitioner against the defendant Jai Chemical Works and the title Suit No. 3 of 2003 filed in Kanpuar by the Respondent against the petitioner and Appeal No. 1143 of 2003 filed in the High Court of Allahabad by the respondent against the petitioner. The petitioner claims that the said trade mark has not been used by the registered proprietor either by himself or through his registered user in the districts of the States of Bihar and Jharkhand etc., The petitioner claims to have acquired the rights in the trade marks ‘HARAPATTA’ and device by virtue of honest adoption and use and by virtue of such use which has been continuous and extensive. The petitioner further claims that the trade mark in the Register in the name of respondent is not distinctive and thus the mark is in contravention of the provision of Section 9 of the Act. The petitioner submitted that the Trade Mark No. 893660 may be rectified in the Register by excluding certain districts in the State of Bihar, Jharkhand and adjoining areas and other places. The petitioner in support of his claim has adduced evidence in the form of an affidavit alongwith certain enclosures which are in the nature of photo copies of advertisements of the mark ‘HARAPATTA’, copies of income tax returns and certain other registration certificates in the nature of sales tax and commercial tax of the various Government authorities.
2. Respondent filed his counter affidavit on 31.5.2004. Respondent in his counter statement has controverted the submissions of the petitioner in his petition. Respondent submitted that the petitioner is having registration of various other marks and he vehemently denied that the petitioner is using the mark since 1991. Respondent has given his sales figures beginning with year 1996-97 to 2003-04 and has claimed that the huge sale is clearly indicative of the strong goodwill and reputation in the market including the States of Bihar and Jharkhand under the trade mark ‘HARAPATTA’ and device. Respondent filed evidence by way of an affidavit alongwith enclosures in the form of photocopies of advertisements, copies of the court cases, filed at Kanpur and Allahabad. He has submitted a number of copies of the bills for the sale done by him for the products with brand ‘HARAPATTA’. Respondent has also filed photocopy of the deed of assignment made by him in favour of Jai Chemical Works. He has also submitted a copy of trade mark certificate No. 893660 dated 4.12.2003 effective from 23.12.1999 in class 3 in respect of washing powder, cake, toilet soap and aggarbatti.
3. Petitioner filed his evidence in reply on 30.7.2004 enclosing therewith certain copies of the invoices issued by him for the HARAPATTA washing powder.
4. The case was listed for arguments in the sitting of the Board held at Kolkata on 24.8.2004. Learned Counsel S/Shri Ranjan Bachawat and G. Banerjee appeared for the appellant and learned Counsel Shri Ratnanko Banerjee appeared for the respondent.
5. The case of the petitioner primarily is based upon the provisions of Clause (a) of Section 47 of the Trade Marks Act, 1999 which has two important elements therefor, namely, (a) that the trade mark for goods 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, and (b) that there has, in fact been no bona fide use of the trade mark in relation to those goods by any proprietor thereto for the time being upto a date three months before the date of the application. The date of filing application in the instant case is 31.3.2004. Insofar as the contention of the petitioner in relation to Sections 57 and 125 of the Act is concerned, we do not find any merit therein and further the counsel for the petitioner did not emphasise for that in his arguments. His arguments were primarily based upon the fact that there had not been bona fide use of the trade mark for the goods for which it is registered, more so in relation to the States of Bihar and Jharkhand. In view of that under current running throughout the petition is that the rectification should be allowed with a view to exclude the user of the trade mark by excluding certain districts of the States of Bihar and Jharkhand, namely, Dhanbad and adjoining areas and other places where the trade mark has not been used. The expression in itself suffers from its own inherent vagueness. The petitioner himself is not clear of the precise exclusion which he wants and in his submissions before the Board also no precise narration about the geographical exclusion prayed for was identified.
6. Learned Counsel for the respondent in his counter statement filed on 31.5.2004 and submissions made before the Board has drawn our attention to a large number of bills for the sales done by the respondent for the goods registered under the impugned trade mark No. 893660 bearing the trade mark ‘HARAPATTA’. These are the bills emanating from his own office at Kanpur or issued by certain dealers of the respondent. We find sizeable number of bills which are towards the sales made to the firms in the State of Bihar. Registration of the impugned trade mark was done on 4.12.2003 effective from 23.12.99 for washing powder, cake, toilet soaps and aggarbatti with no restrictions to geographical territories. This implies that this is for an all India jurisdiction. Learned Counsel for the respondent drew our attention to many copies of the sales bills produced by the petitioner alongwith reply affidavit which had lot of contradictions in the nature of Jharkhand Sales Tax number with abbreviation JST mentioned on the top of the printed bill and at the bottom Bihar Sales Tax with abbreviation as BST having been made therein by a correction in pen. These contradictions in numerous bills go to doubt the veracity of the bills. In any case there is no need to focus on these bills. In view of the petitioner having failed to otherwise prove the case in matter of entitlement to two important elements of Clause (a) of Section 47 of the Act, that is, lackness of bona fide intention on the part of the applicant for registration at the time of registration of the trade mark and there being no bona fide use of the trade mark in relation to those goods upto date of three months before the date of the application, the onus to prove in this matter lay upon the petitioner and he has not been successful in producing any material to prove that there was no bona fide intention on the part of the respondent at the time of seeking registration to use the trade mark in relation to those goods. Insofar as the current user of the trade mark by the respondent is concerned, he has adduced sufficient material in support of his case that the mark is being used by him continuously. The prayer for exclusion of certain territories, that is, certain areas in Bihar and Jharkhand is without any substance and device of any merit. It is very common and usual that an entrepreneur having started a venture shall slowly and gradually expand his sales and penetrate into other areas. In any case this cannot become as issue for rectification of trade mark which is already on the Register. In view of the above the application is dismissed with no orders as to costs.