JUDGMENT
Raghbir Singh, Vice-Chairman
1. O.P. Nos. 764, 765, 766/2001 for rectification of the Register / removal of the trade mark from the Register under Sections 11, 46, 56 and 107 of the Trade and Merchandise Marks Act, 1958 were filed in the High Court of Judicature at Madras and have been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TRA Nos. 25, 26 and 27/2003/TM/CH.
2. Petitioner, M/s Jupiter Infosys, Kolkata is a company registered, under the Companies Act, 1956 and is carrying on business of sales and distribution of computers, computer parts, accessories, computer peripherals and other items of hardware. It does not deal in software. First respondent, M/s Infosys Technologies Limited, Bangalore filed an application with the Registrar of Companies, West Bengal seeking issue of a direction to the petitioner to change its name by deleting the word ‘Infosys’. The Registrar of Companies, West Bengal declined to issue such a direction. First respondent filed a civil suit No. 319 of 1996 before the High Court at Kolkata alleging infringement of its registered trade mark ‘INFOSYS’ and for passing-off against the petitioner. In another matter relating to the public issue of the petitioner company, first respondent had addressed a communication to SEBI requesting that the petitioner company’s application for public issue should be refused. First respondent filed C.S. No. 71/2001 before the High Court of Judicature at Madras in February, 2001 after obtaining leave to sue in application No. 222 of 2001. Alongwith the plaint, the respondent moved OA No. 109 of 2001 for interim injunction against the petitioner and ex-parte interim injunction was granted by that Hon’ble Court on 1.2.2001 restraining the petitioner company from using the name Jupiter Infosys (Pvt) Ltd. By a common order dated 22.5.2001, Hon’ble Mr. Justice A.K.Rajan dismissed all the four petitions moved by the respondent company (wrongly mentioned as petitioners in the application). Petitioner in its instant application for rectification of. the Register has claimed that it is an aggrieved person in view of the above facts.
3. First respondent in its CS No. 71/2001 on the file of High Court of Judicature at Madras has claimed that it is the registered owner of the following trade marks. The petitioner has furnished the particulars of all the five trade marks claimed by the first respondent registered as under:-
Date Registration No. Class Goods
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15.07.1987 475269 Class 16 Computer stationery, Computer
Manuals, Printed Matter for Computer,
Instructional and teaching materials
etc.
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15.07.1987 475267 Class 09 Computer Hardwares, Computer interface,
Computer Peripherals, Electronic Telex
interface and all goods included
in class_09
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27.01.1988 484837 Class 07 Machine and Machine Tools and Motors
(not for land vehicles) included in
class 07
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18.08.1994 637314 Class 16 Computer Software, Computer Stationery,
Computer manuals, Printed matter,
brochures, instruments and teaching
materials
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18.08.1994 637315 Class 09 Computer Hardware, Data Models, Motion
Central Devices, Wave Management Systems,
Customer Service system used as Bank,
Automatic Teller Machines, Computer
Inspection systems.
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But later on it transpired in the pleadings and arguments that application Nos. 637314 and 637315 filed on 18.8.94 did not move for registration. The petitioner has claimed that mark registered as No. 475269, 475267 and 484837 were not used in respect of the goods for which the applications for registration had been made. Hence the first respondent had no bonafide intention to use the mark applied for registration in respect of the goods for which the registration was sought under Section 18 of the Act. First respondent company is a leading service industry. They are providing software services to leading companies in India and abroad. They have never manufactured or marketed any goods specified in the trade mark applications. They are only in the service industry. Hence the claim for use in respect of goods stipulated in the trade mark application claiming user since 1981 is incorrect and false. Thus it had no bonafide intention to use the mark under Section 18 of the Act. The mark ‘Infosys’ has all along been used by first respondent as a service mark and not as a mark for goods. First respondent even in the suits filed by it against the petitioner has claimed that it is providing software services to the leading companies in India and abroad. The mark registered have never been used in respect of goods for which those were registered for the last five years and one month, the period prescribed under Section 46 of the Act. Thus the registered mark is liable to be rectified on the ground of non use under Section 46 of the Act. The petitioner claims that the mark is disentitled to protection in court of law under Section 11(e) of the Act. Further the mark which was distinctive on the date of registration ceases to be distinctive on the date of this proceeding for rectification and is liable to be rectified under Section 32(c) of the Act. Petitioner further drew support from a recent circular issued by the Ministry of Law, Justice and Company Affairs, Department of Company Affairs vide No. 5/35/98-CL.V, General Circular No. 6/99 dated 13.05.1999 wherein that Department of Government of India, referring to the earlier circulars issued by it, has issued certain clarifications and in para 4 of that circular instructed that with the increase in combination of activities by companies in matter of financing and computer software, tendency has grown in to use the words Infosys; Software; Systems; Infosystem; Computers; Cyber; Cyberspace etc. in their names. The Department of Company Affairs has issued instructions to the Registrars of Companies advising that if a substantial portion of income of such company is in the area of software, change in the name reflected as above may be allowed. Thus the petitioner draws conclusion that the word ‘Infosys’ as such is not a word of exclusivity and has been allowed to be used in situations wherever the concerned companies have software as a business activity. The petitioner has further claimed that the word ‘Infosys’ is being used globally and for that matter the petitioner has submitted some downloaded material from the internet wherein the word ‘Infosys’ has been used in various situations. Thus the petitioner’s claim is that since the first respondent is a leading company exclusively in the field of software, its registration Nos. 475269, 475267 and 484837 which are not relatable to services and are exclusively in relation to goods of various description mentioned in the Fourth Schedule under the Trade and Merchandise Marks Act, 1958 be removed from the register.
4. First respondent in its counter affidavit denied all the contentions of the petitioner generally. First respondent has pleaded that the petition is barred by limitation as the petitioner was aware about the subject registration in 1996 and has chosen to file the petition of rectification belatedly in 2001. Since its inception, first respondent has been active not only in developing software solutions for large scale industrial corporations across the globe, but in hardware, computer interface, mechanical aspects relating to software system as well as training on computer related activities. The main business activities of first respondent relate to customised software development, re-engineering services, maintenance work, dedicated offshore software development services, creation of marketing of computer software in India and in foreign countries. First respondent had associate companies by the name of Infosys Manufacturing Systems Pvt. Ltd., Bangalore and Infosys Digital Systems (P)Ltd., Bangalore. The latter company was engaged in the business of electronic / electrical / mechanical components or sub-assemblies. Both these companies were absorbed into the first respondent company in the year 1983. First respondent claims that both these companies were involved in the business of computer hardware. Under the trade mark ‘INFOSYS’, internationally acclaimed packages targeted towards banking sector, telecommunications, manufacturing and distributing are developed and marketed by the first respondent. The entire range of commercial activities of first respondent arc carried on under its trade mark ‘INFOSYS’ and it has given details of various awards won by the company for the services rendered by it. It mentioned about its worldwide clientele and presently it employs more than 10,000 high calibre software professionals. First respondent has given its sales figures and the expenses on advertisements and promotional activities beginning with the year 1990-91 upto 2001-02. Its worldwide sales in the year 2001-01 stand at 2603,59,00,000 and its advertisement / promotional expenditure for that year are 129,79, 00, 000 (presumably in Indian rupees in both the cases, as there is no reference to the currency). First respondent has denied that it is only a service industry and it has never manufactured or marketed any goods specified in the trade mark applications. It has extensively used the mark ‘INFOSYS’ in relation to goods for which registration was obtained. It has mentioned certain uses made by it which are relatable to the registration for which those marks stood. Those are:-
a) Envelopes, letterheads for use in relation to computers, note pads upon which the expression ‘INFOSYS’ has been used.
b) Institute started by first respondent by the name of INFOSYS LEADERSHIP Institute at Mysore. The said Institute issues its instruction manual and teaching material under the expression INFOSYS,
c) Since first respondent’s activities involve intricate combination of software and hardware, it has used the mark INFOSYS in relation to computer hardwares, interface, computer peripherals and electronic telex interface. Programmes developed by it , namely, Bank Away, Finacle form part of the hardware of computers. First respondent has developed instruction manuals whereupon trade mark ‘INFOSYS’ has been used. The CDs pertaining to these programmes also come within the goods designated as computer interface, computer peripherals. First respondent also used hardwares in relation to advertisements, promotion materials. The said brochures also show use of the mark / name INFOSYS in relation to computer machines which include machine tools and motors. First respondent also undertakes annual technical support fees for maintenance of different programmes, that is, BANCS 2000, Finacle 6.0 etc. First respondent has given the following as the various goods in respect of which they have used the trade mark INFOSYS:-
i) Letterheads and other stationeries, response for proposals
ii) Process maps, flow charts
iii) Instruction and teaching materials
iv) Computer hardware digital system
v) Advertisements
vi) Display in pavilions, galleries of the trade mark INFOSYS in relation to computer hardware
vii) Automatic teller machines.
First respondent submitted that the technology which it specialises in involving an integral approach in application of software and the use of software cannot be detached from hardware, particularly for developing systems like Automatic Teller Machines, computer hardwares, computer peripherals etc. The system requires composite application of software and hardware and the use of the expression ‘INFOSYS’ in respect of such system automatically involves use thereof in respect of hardware.
First respondent has further denied that, in view of the recent circular of the Department of Company Affairs, ‘INFOSYS’ has become a descriptive expression like Cyber, Infotech, and Computers etc. The petitioner filed a common proof affidavit on 23.01.04 and common proof affidavit of the first respondent dated 24.1.04 were also filed.
5. The matter came up for consideration before the High Court of Judicature at Madras on 12.8.03 and the said High Court was pleased to frame the issues in the matter as under:-
a) Whether the mark applied for registration was used in respect of the goods for which the mark was registered?
b) Whether the respondent had a bonafide intention to use the mark applied for under Section 18 of the Trade and Merchandise Marks Act?
c) Whether the mark registered in favour of the respondent is a service mark?
d) Whether there is a non use of registered trade mark by the respondent for a period of over 5 years and 1 month?
e) Whether the registered trade mark is disentitled for protection in a Court of Law under Section 11 (e) of the Trade and Merchandise Marks Act?
f) Whether the registered trade mark has lost its distinctiveness and is liable to be removed under Section 32 (c)
g) Whether the respondent has committed fraud while obtaining registration of the mark? and
h) To what further relief?
We are broadly in agreement with the issues framed by the Hon’ble High Court and shall examine the matter from that angle.
6. In its hearing held on 28.01.04, the Board permitted the petitioner to withdraw rectification application Nos. 28 and 29/03 in relation to application Nos. 637314 and 637315 as the same had not been registered. Thus in fact the application for rectification of the petitioner relates to registration Nos. 475269, 475267 and 484837.
7. Alter successive adjournments beginning with 24.12.03, the matter came up for final hearing on 22.7.04. Learned counsel Ms. Gladys Daniel appeared for the petitioner and learned counsel Shri N.S. Sivam appeared for the first respondent.
8. Learned counsel for the petitioner submitted that the registration for the mark INFOSYS under registration No. 475269 dated 15.7.87 relates to computer stationery, computer manuals, printed matter for computer, instructional and teaching materials etc. under class 16 of the Fourth Schedule to the Act. Registration No. 475267 dated 15.7.87 relates to computer hardwares, computer interface, computer peripherals, electronic telex interface and all goods included in class 9. Registration No. 484837 dated 27.1.88 relates to machines and machine tools and motors (not for land vehicles) included in class 7 of the Fourth Schedule. She argued that the exclusive activity of the first respondent is in the field of software which is in the nature of services whereas registration under these numbers principally relates to goods. She drew our attention to the counter affidavit of first respondent wherein it had mentioned that it was originally incorporated in the year 1981 in the name of Infosys Consultants Private Limited and then in the year 1992 the corporate name of first respondent was changed to Infosys Technologies Pvt. Ltd. They are exclusively operating in the field of softwares which in relation to the registration of trade marks falls under the category of services. The subject matter for which the above three registrations stand are goods and first respondent ever since those registrations were taken has not used it for the manufacture or trading of those goods. It had exclusively been operating in the field of computer software which is in the nature of services. Service as a trade mark is non registrable under the provisions of the Trade and Merchandise Marks Act, 1958. She drew sustenance from the Charminar case – Vishnu Das v. Vazir Sultan Tobacco Company Limited AIR 1996 SC 2275 where squatting of a trade mark for a subject matter which is not covered as a product of the trade mark holder is not permissible. First respondent having obtained registration for certain specified goods under classes 16,9 and 7 under three registrations has no business to use it for the other areas not covered under those registrations. She drew our attention to the Government of India, Ministry of Law, Justice and Company Affairs, Department of Company Affairs No. 5/35/98-CL.V, General Circular No. 6/99 dated 13.05.1999 whereunder the said Department has instructed the Registrars of Companies that in future they should allow change of names of companies to reflect the business of software like Infosys; software; systems; infosystem; computers; cyber; cyberspace etc. She drew our attention to print out hard copies downloaded from Yahoo and Google search engines which she had produced as evidence to support her claim that first respondent does not enjoy exclusivity of the word ‘INFOSYS’. It is being used liberally throughout the world and there are other companies by that name. She also referred to para 4 of the counter statement of the first respondent wherein it has submitted that the main business activity of the first respondent relate to customised software development, re-engineering services, maintenance work, dedicated offshore software development services, creation of marketing of computer software in India and foreign countries. Learned counsel for the petitioner drew our attention to a decision of this Board in Cavinkare Pvt. Ltd. v. Latha C.Mohan decided on 7th July, 2004 wherein the respondent who was holding trade mark ‘KANYA BEAUTY PARLOUR’ relating to certain stationery items under classs 16 was using the mark for running beauty parlours for more than 5 years and 1 month. The mark was ordered to be removed from the Register. In view of the above and the other evidences submitted, she argued that there had been a non user of the marks for over a period of 5 years and 1 month as on the date of filing of application for rectification and thus the marks are liable to be removed from the register.
9. Learned counsel for the respondent drew our attention to the excellent work done by first respondent in matter of both software and hardware and that the subject matter of registration under three registrations which they are holding. He mentioned that they had been assiduously protecting their trade mark and wherever infringements have taken place they have filed suits and certain matters have been compromised before the Supreme Court also. He drew our attention to the Civil Appeal 395 of 99 between Infosys Technologies Ltd. v. Ajay Sanghi and Anr. where a settlement had been arrived at out of the Court and necessary orders were passed by the Supreme Court.
10. We shall in the first instance deal with the issue of limitation raised by first respondent. The learned counsel for the first respondent submitted that a suit of passing-off and infringement was filed by first respondent against the petitioner in Calcutta High Court on 11th October, 1996 and the present application for rectification has been filed by the petitioner on 20th November, 2001, thus a period of more than three years having elapsed, it is time barred. Whereas the learned counsel for the petitioner submitted that the cause of action in the present matter begins with the filing of CS No. 71/2001 in February, 2001 by the first respondent against the petitioner in the High Court of Judicature at Madras and thus the petition is not time barred. Learned counsel for the first respondent drew our attention to Fedders Lloyd Corporation Ltd. v. Fedders Corporation, 1997 PTC 737 wherein the Delhi High Court has held that the petition for rectification is subject to the provisions of the Limitation Act, 1963. He further drew our attention to Patel Field Marshal Agencies v. P.M. Diesels Limited, 1999 PTC 718 (739) wherein the Gujarat High Court held as under:-
“It is not in dispute that there is no specific article in the schedule which governs the period of limitation for making an application under the Trade Marks Act. Hence residuary Article 137 shall ordinarily govern the limitation. Whether the wrong is continuing or completed depends upon the facts pleaded. Say for example if the rectification is sought on the ground that registration has been obtained by fraud. Section 17 of the Limitation Act comes into play and period of limitation is to be reckoned from the date the fraud is discovered. If the rectification is sought on the ground that it has been granted wrongfully, the date of registration becomes the starting point of limitation. On the other hand if it is alleged that continuing of entry on register has become erroneous because it has ceased to be distinctive, different consideration may arise. In each of such cases mere existence of such circumstances will not confer locus to file application. In each case such cause must be coupled with cause which makes the suitor aggrieved with continuance of such entry. It is the coexistience of law that makes the injury complete and the period of limitation commences therefrom. However, in all cases the person filing an application for rectification must also show that he is a person aggrieved. Under Section 56 of the Act only a person aggrieved has a right to file the application. Very crucial question that requires consideration is when and which person can be called a person aggrieved. This again may give rise to a variety of considerations. But in any case once a suit for infringement of a mark has been filed, the person against whom such suit is filed certainly becomes a person aggrieved when he comes to know of such suit.”.
In the light of the above observations of the Hon’ble Gujarat High Court it is clear that with the filing of CS No. 71/2001 by the first respondent against the petitioner a fresh cause of action has arisen and the petitioner is the appropriate aggrieved party in the matter and hence the petition is within the limitation period.
11. The evidence which was filed by the first respondent was type set of papers covering extracts from the annual reports of the company relatable to the years 1993-94, 1995-96, 1999-2000 and 2001-02. It contained some more materials relating to various products of the company. It has some write ups about the performance of the company as published in various journals. Learned counsel for the first respondent took us through few important features of the documents submitted by him. He drew our attention to a certificate of approval dated 15.12.93 issued by Bureau Veritas Quality International forming part of Annual Report for 1993-94. None of the activities of the company enumerated under the caption ‘Scope of Supply’ in the said certificate is relatable to the goods covered in either of the registration numbers, that is, 475269, 475267 and 484837. The products or the activities as referred to in the certificate are as under:-
“The provision of software services, including project management, consultancy, analysis, design, build, test, user, documentation, installation, maintenance, customization, conversion and re-engineering. Supply of software for financial, retailing / distribution, manufacturing, communications, industrial automation and management information applications. The design and development of embedded system hardware and software, and of simulation software, for motion control systems. The distribution and support of third party shrink-wrapped software products.”.
Furthermore, the certificate is dated 15.12.93 and the present application for rectification was filed on 20.11.2001. Hence it is an evidence of a date much earlier to the start of period of 5 years and 1 month for the purpose of non user.
Learned counsel took us to the signed message dated 9.4.96 of the Chairman and Managing Director of the company, forming part of the annual report for the year 1995-96, wherein the Chairman and the Managing Director has reported that Infosys became the first Indian software company to provide a Java based front end for its bank automation product ‘BANCS 2000’- a truthful and proud acclaiming of marvels achieved in the field of software. He brought us further to the extracts from the annual report for the year 1999-2000 wherein under the head income two specific categories of income have been shown as under:-
INCOME Schedule 2000 1999
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Software
development
services and
products
Overseas 869,69,80,931 500,25,40,418
Domestic 12,62,56,042 8,63,71,250
Other income 10 39,14,11,095 3,84,71,833
921,46,48,068 512,73,83,501
We did not have the benefit of looking into the break up of other income (though an insignificant amount as compared to incomes from software development service and products) as only certain extracts covered under pages 165, 190 and 191 of the Annual Report have been included in the typeset paper which did not include schedule 10 of the annual report. Anyhow on comparison it is self-speaking for itself that the main activity of the company is software and possibly the other income which is an insignificant amount comparing it with the total income of the company would possibly be in relation to sources like interest or dividends and not reflecting the thrust activities of the company and not necessarily relating to the goods for which the company is holding its trade mark registration. Learned counsel drew our attention also to the accounting details on the expenditure side. We find that the expenditure too is preponderatingly in relation to the software related activities of the company and the expenditure on heads other than software development expenses is in relation to the areas ancillary to software. There is nothing in it to indicate linkage with the manufacturing or the marketing of the goods for which the company is holding registration of the trade marks. Learned counsel took us to pages 190 and 191 of the annual report placed at pages 15 and 17 of the type set containing the system of brand evaluation adopted by the company. We find nothing in it to lead us to any clues to know the goods or even services for which the company is using the registered trade marks for its products. Page Nos. 26,49, 72,164 and 165 of the annual report 2001-02 placed in the typeset of papers narrate the achievements of the company which are in relation to the software products of the respondent. Learned counsel for first respondent took us to page 49 of the report wherein under the head expenditure the various break ups relatable to income from software services and products and software development expenses have been given. Our anxiety is to get information relatable to the goods referred to in the registration of three impugned trade marks held by the company. Page 165 of the same report refers to the ‘Infosys’ trade mark held by the company in India and in the United States. There is a mention that the company is having an Education Research Unit and the store selling Infosys branded merchandise and a grocery store. In any case after surveying through the extracts provided from the annual reports of the company relatable to years referred earlier, it is clearly discernible that in the profit and loss account for the relevant years, on both income and expenditure side, there are distinct columns relatable to software development. However, there is nothing of the sort which are normally to be found in relation to a company engaged in the manufacturing or trading activity of computer stationery, computer manuals, printed matter for computer, instructions and teaching materials, computer hardwares, computer interface, computer peripherals, electronic telex interface, machine and machine tools and motors. These are goods in the proper sense to be manufactured in a factory relatable to the production of these items or these are to be found in a trading concern relatable to these products which buys these items from a manufacturer for purpose of selling under its own trade name / mark to the others . Learned counsel took us through to a pamphlet for the software product of the company ‘BANCS-2000’ giving the various details and usefulness of the software for the users thereof. It is enough to conclude about the same that it is software developed by the company for selling to its customers. Certain news items published in the various national and international journals placed at pages 47 to 76 of the typeset are a pointer only in one direction only that the first respondent deals in software and not in the products for which the registration under the trade marks held by it. Learned counsel put reliance upon the booklet titled as ‘Tier 1 Competencies’ by Infosys Leadership Institute in 2004 which describes about the management skills being used by the first respondent in functioning set. It does not hold ground in any way to meet the reasons for which the rectification has been sought. Still the learned counsel for petitioner objected to its admissibility as something not related to relevant period. The mark of copyright thereupon itself signifies that it was produced in 2004.
12. Learned counsel for first respondent drew our attention to the meaning of the words hardware and software as given in the New Webster’s’ Dictionary of English language. It provides hardware to mean any mechanical, electrical, or electronic equipment, as distinguished from software, that includes the manuals, procedures and specifications. Software means, in the context of computer, the program and programming support necessary to put a computer through its assigned tasks, as distinguished from hardware or the actual machine and its parts. It is clear from the meaning ascribed to these two words that, in the context of computers, hardware has to be a physical object or a tangible item whereas the software is something in the nature of ideas, design, programmes and programming support. We feel that these meanings could go to support the case of the petitioner that the first respondent is a reputed company concerned with software and software only. Learned counsel for the first respondent took us to Advent System v. Unisys Corporation, 925 F.2d 670 (3rd Circuit, 1991) wherein the circuit Judge of the US described the distinction between hardware and software in a computer system. At the outset the learned Judge has placed the entire computer machinery in the category of hardware. In order to define software, he starts his description with a note of caution as to the concept being elusive. Still he has given description thereof as understood in general parlance as to something which refers to the medium that stores input and output data as well as computer programs. The medium includes hard disks, floppy disks, and magnetic tapes. In simplistic terms, programs are codes prepared by a programmer that instruct the computer to perform certain functions. When the program is transposed on to a medium compatible with the computer’s needs, it becomes software. It is clear from his description that he very definitely places the programming aspect of the computers as clearly falling within the category of software. However, as to the mediums which are carriers of that programme like hard disks, floppy disks and magnetic tapes, he has very clearly described them as to be referred as software in common parlance and not in any technical aspect of the thing.
13. In view of the above dichotomy between hardware and software remains to be that something which is in physical form, or to say is tangible, is referred to as hardware and something which is in the form of ideas or designs, or to say is intangible, belongs to the arena of software. Learned counsel for the respondent also referred to Tata Consultancy Services v. State of Andhra Pradesh, 2001 STC 198 where there was a question of distinction between the branded software and un-branded software for being treated as goods for the purpose of Andhra Pradesh General Sales Tax Act, 1957. It is sufficient to mention that the matter involved in that case was in relation to the definition of the term “goods” under Section 2(h) of that Act. A definition under an Act specifically providing so can expand or constrict the meaning of an expression, as is deemed necessary. Its analogy in the instant matter does not help. In the trade mark law as developed in India, the dichotomy between treatment of goods and services is well recognised since the introduction of common law system in this country. Statutory legislations all along till recently had been providing for the registration of goods only. However, protection of service marks under common law was available. It is only with the enactment of Trade Marks Act, 1999 and by bringing it into force on 15th September, 2003 that the registration of service trade marks has been provided for. In view of the specific provisions of the Trade and Merchandise Marks Act, 1958 and the rules framed thereunder, more particularly in the context of description of various classifications of goods mentioned in the Fourth Schedule, there cannot be any scope for interpreting activities which are known to be ascribable to services to be included as goods. In view of that the case relating to imposition of sales tax renders no help to the first respondent. To conclude, the learned counsel for the respondent referred to Supreme Court judgment in Hardie Trading Ltd. v. Addison Paint and Chemicals Ltd. 2003 PTC 241 (SC). In that case there was evidence on record to show that there was no absolute non-user of the trade mark during the period of five years and one month prior to application for rectification and it was economically not possible for the owner of the registered trade mark to put its goods manufactured abroad immediately due to restrictions imposed by the Import Trade Control Policies for the relevant years. The Supreme Court decided that application for rectification cannot be allowed on the ground of alleged non user as the goods were held to be covered by the term ‘special circumstances’. The facts of the case are absolutely different vis -a – vis the instant application for rectification. In view of that no help goes to the first respondent in this matter. Classification of goods and services provided in the Fourth Schedule of the Trade Marks Rules, 2002 framed under the Trade Marks Act, 1999 gives a clear understanding as to the dividing lines between the concepts of goods and services. Entries 1-34 are broadly drawn on the basis of similar entries as were available under the Trade Mark Rules, 1959 (since repealed) and entries 35-42 under the heading ‘services’ enumerate the various spheres of services which includes in entry 42 ‘computer programming’. It is true that the legislature can by a statutory definition ascribe any meaning to an expression which may be different from its natural meaning or meaning as understood in the relevant area to which that expression relates. However, from the scheme of the Fourth Schedule to the Trade Marks Rules, 2002, it appears that an attempt has been made to include the various descriptions relatable to goods and services as those are normally understood in the market or amongst the users of those products. Generally it is well understood that all software is relatable to computer programming and computer programming is something which is relatable to services. Scheme followed in drafting Fourth Schedule to the Trade Marks Rules, 2002 helps to understand its counterpart under the Trade and Merchandise Marks Rules, 1959 as to what was sought to be included therein and what not.
14. Maintenance of the purity of Register has been emphasised by the English and Indian courts time and again. The purity of Register of trade marks – if one may use the expression – is of much importance to trade in general; quite apart from the merits or demerits of particular litigants. If on a motion like the present the attention of the Court is called to an entry on the Register of a trade mark which cannot in law be justified as a trade mark, it seems to me that the Court’s duty may well be -whatever the demerits of the applicant – to purify the register and to expunge the illegal entry in the interests of trade, Paine and Co. v. Daniell and Sons, Breweries, (1893) 10 RPC 217 (C.A), p.232. The dividing line between service mark and goods mark is so clearly delineated now that, as back as 1945, House of Lords, on opposition by the owners of the mark ” Aristoc”, did not allow registration of mark “Rysta” for stockings to the applicant who had been using “Rysta” as repairer of stockings since 1929, the former being an application for registration as a goods mark and the latter being a service mark in use under common law (Aristoc Ld. v. Rysta Ld. and Rysta Ld’s application (1945) 62 RPC 65 (H.L.). CJ.Chagla in Ciba Ltd. v. Ramalingam, AIR 1958 Bom 56 held as under:-
“Now, in considering both Section 46 (Section 56) and Section 10 (Section 12) it has got to be remembered that the primary duty of the Court is towards the public and the maintenance of the purity of the register. When a case is sought to be made out that a particular trade mark is likely to deceive or cause confusion, the contest is not so much between the parties to the litigation as it is a contest between the party defending his right to a particular trade mark and the public; and the duty of the Court must always be to protect the public irrespective of what hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive or cause confusion.”.
In a case of deceptive similarity of domain names, a submission was made that since Trade and Merchandise Marks Act, 1958 allows for registration of goods only and not services, internet services are not entitled for a passing – off or infringement remedy. The court clarified that infringement remedies are available for registered trade marks only and the impugned matter relates to an unregistered mark for which common law remedy of passing -off is available, Yahoo Inc. v. Akash Arora, 1999 PTC 201 DEL. The judgment was approvingly followed in Rediff Communications Ltd. v. Cyberbooth, 2000 PTC 209 Bom. Findings in these cases lead to inescapable conclusion that all information technology related services like computer software, internet, telecommunication including radios and telephone etc., belong to service segment of the trade marks.
15. From the above, it is clear that first respondent has not used the registered trade mark Nos. 475269, 475267 and 484837 for more than a period of 5 years and one month. First respondent has failed to make out its case that it had been in manufacturing or trading of the goods, for which it had taken registration Nos. 475269, 475267 and 484837. Accordingly, we hold that the petitioner succeeds in his application. The applications are allowed and the Registrar shall remove these registrations from the Register. No order as to costs.