JUDGMENT
Mukundakam Sharma, C.J.
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1. These appeals are directed against the order passed by the learned Single Judge on 11th September, 2003 whereby the learned Single Judge partly allowed the petitions registered as CM (Main) No. 303/93 and CM (Main) No. 313/96 and has dismissed CM (M) No. 327/93.
2. Respondent No. 1, Sant Ram & Company obtained registration of the trademark KOHINOOR under trademark registration No. 274996 in respect of rice in class 30 on September 15, 1971
3. The appellant M/s Satnam Overseas claims that they adopted the trade mark KOHINOOR in respect of rice in July 1979. In July 1985, they applied for registration of the trade mark KOHINOOR vide application No. 372700 in respect of rice included in class 30 for sales in India. The said trade mark was advertised in Trade Mark Journal in 1985. Another application was filed by the appellant for registration of the trade mark KOHINOOR in respect of rice for export included in class 30 on 3rd July, 1985. The said trade mark was published in Trade Mark Journal on 11th October, 1989. The respondent filed objections and opposed the registration of the trade mark KOHINOOR by the appellant.
4. The appellant also filed a rectification application for de-registration of the trade mark KOHINOOR in favor of the respondent in respect of rice in class 30. It was alleged by the appellant that the respondent had got the trade mark KOHINOOR registered without bona fide intention to use it and in fact there was no bona fide use of the trade mark by the respondent for the period of five years and one month preceding the date of filing of the application for rectification. In the alternative, it was submitted that the respondent had used the trade mark KOHINOOR in respect of rice only in the five cities and, therefore, in terms of Section 46(2) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act), the territorial restriction in respect of area where the trade mark could be used should be imposed.
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5. The Deputy Registrar of Trade Mark by order dated 18th June, 1992, partly allowed the rectification application filed by the appellant. It was held by him that the appellant had bonafide adopted the trade mark KOHINOOR in respect of rice for whole of India and export, whereas the respondent was selling rice in cities of Faizabad, Maunath, Bhanjan, Jaunpur, Shahgang and Agra in the State of Uttar Pradesh. He held that there was honest and concurrent user by the appellant as provided in Section 12(3) of the Act and accordingly Section 46(2) of the Act was applicable. In view of the said order, the trade mark KOHINOOR in respect of rice included in class 30 in the name of the respondent was modified to read as – “rice for sale in the cities of Faizabad, Maunath, Bhanjan, Jaunpur, Shahgang and Agra in the State of Uttar Pradesh”.
6. By a separate order dated 29th March, 1993, the appellant’s application for registration of the trade mark KOHINOOR in respect of rice included in class 30 was allowed. It was again held that the appellant had bonafide adopted the trade mark KOHINOOR and there was honest and concurrent user by the appellant since 1979-80. It was observed that the appellant had no prior knowledge of user of the trade mark KOHINOOR by the respondent. By another order dated 3rd May, 1995, the registration of trade mark KOHINOOR in respect of rice for export was also allowed in favor of the appellant.
7. The respondent filed a review application seeking review of the order dated 18th June, 1992 allowing the rectification application of the appellant by which the registration of trade mark KOHINOOR in favor of the respondent was modified by restricting it to cities of Faizabad, Maunath, Bhanjan, Jaunpur, Shahgang and Agra in the State of Uttar Pradesh. By order dated 15th February, 1993, the review application was partly allowed and the city of “Saharanpur” was also included in the list of cities. Accordingly, the respondent was held entitled to registration of trade mark KOHINOOR in respect of rice included in class 30 for sale of rice in the cities of Faizabad, Maunath, Bhanjan, Jaunpur, Shahgang, Agra and Saharanpur in the State of Uttar Pradesh.
8. The order passed by the Deputy Registrar of Trade Marks allowing the rectification application vide order dated 18th June, 1992 was made subject matter of challenge in this Court in CM(M) No. 303/1993 by the respondent. The order dated 15th February, 1993 partly allowing the review application was also challenged in this appeal. Similarly, the order dated 29th March,1993 passed by the Registrar of Trade Marks dismissing the objections filed by the respondent and allowing the registration of the trade mark KOHINOOR in respect of rice included in class 30 by the appellant, was challenged in CM(M) No. 327/1993. The respondent also challenged the order dated 3rd May, 1995 allowing the registration application of the appellant in respect of trade mark KOHINOOR for export of all kinds of rice in class 30. This order was challenged in CM(M) No. 313/1996.
9. Since all the aforesaid petitions arose out of a common set of facts between the parties and related to three different orders passed by the Office of the Registrar of Trademarks, all the three petitions were taken up together by the learned Single Judge. After hearing the counsel for the parties, the learned Page 1640 Single Judge passed the order on 11th September, 2003, which is the impugned order under challenge in this appeal. By the said order, the learned Single Judge dismissed C.M (Main) No. 327/93, whereas C.M (Main) 303/93 and C.M (Main) No. 313/96 were partly allowed. It was held by the learned Single Judge that the respondent was entitled to registration of the trade mark KOHINOOR for rice in class-30 for the State of Uttar Pradesh and not merely six cities as directed by the Assistant Registrar of Trade Marks. The registration in favor of M/s.Satnam Overseas would also accordingly incorporate “except the State of Uttar Pradesh”.
10. Contention raised before us by the counsel appearing for the appellant was that when M/s Sant Ram & Co., the respondent No. 1 herein, was carrying on business of dealing with rice only in particular towns of U.P., the learned Single Judge exceeded his jurisdiction in directing for modification of the order dated 3rd May, 1995 passed by Registrar of Trademarks in the rectification application filed by appellant herein, by incorporating the words “except the State of U.P.” thereby extending the rights of the respondent No. 1 herein to deal with rice under the trade name KOHINOOR. We have considered the aforesaid submission in the light of the records placed before us.
11. The facts disclosed from the records clearly establish that respondent No. 1 herein, M/s.Sant Ram & Co., got registration of the trademark KOHINOOR on 15th September, 1971 in respect of rice in Class 30. The said registration was for whole of India. It is the case of the respondent that it had adopted the said trade mark in 1961. Satnam Overseas (appellant herein) thereupon filed an application for rectification of the trademark KOHINOOR obtained by the respondent No. 1 herein on the allegation that the impugned mark was got registered without any bona fide intention to use it and that the same was not used by M/s.Sant Ram & Co. for five years and one month preceding the date of filing of the application for rectification by Satnam Overseas. It was also contended that mark in question has been used by M/s.Sant Ram & Co. in a few cities and in any case the same is liable to be rectified in terms of Sub-section (2) of Section 46 of the Act, by putting limitation/restriction on use qua the area where the mark was actually used by M/s.Sant Ram & Co. The Assistant Registrar found that the respondent had not stopped using of the trade mark KOHINOOR in respect of rice in class 30 for five years and one month prior to the date of the rectification application. The respondent had filed on record several bills for the last five years from 1980 to 1985 in support of its stand that it had continued to use the said trade mark. The original bills were shown to the Assistant Registrar of trade marks.
12. It may be relevant to state here that the burden lies on the registered proprietor of the trade mark to establish exceptions to Section 46(3) of the Act. At the same time, it is for the applicant, who seeks rectification, to prima facie show non-user for the relevant period. The burden shifts to the proprietor of the trade mark only after the applicant seeking rectification is prima facie able to show non-user by the registered proprietor. The initial burden is on the applicant seeking rectification to establish that the registered proprietor has no intention to use the trade mark during the relevant period and in fact Page 1641 has failed to do so. (see Cycle Corporation of India Ltd. v. T.I. Raleigh Industries Pvt. Ltd. and others .)
13. Satnam Overseas also applied for registration of the trade mark KOHINOOR in respect of rice included in class 30 contending, inter alia, that it has been using the aforesaid mark since 1st January, 1975.
14. After considering the entire facts and circumstances of the case, the learned Single Judge was in accord with the Registrar of Trade Marks and held that there was ample evidence on record that Satnam Overseas bonafidely and honestly adopted the word KOHINOOR as its trademark and, therefore, they shall be entitled to the concurrent registration of the mark under Sub-section (3) of Section 12 of the Act. Therefore, the bills filed by the respondent challenging the registration of the trade mark KOHINOOR for sales in India and abroad in respect of rice in class 30 were not accepted except to the extent that registration of the respondent was to be in respect of old State of Uttar Pradesh and not restricted merely to the six cities of Uttar Pradesh, as per the order of the Assistant Registrar of Trade Marks. This modification was done as the learned Single Judge was of the opinion that the geographical limitation incorporated was harsh and not based upon practical considerations. He held that sales at the first instance are effected to wholesalers or distributors, who in turn make deliveries to retailers. Invoices produced by the respondent to its distributors and dealers in various cities have to be understood.
15. The aforesaid findings which are recorded by the learned Single Judge in our considered opinion do not call for any interference. The said findings are based upon practical consideration of facts. Manufactures of products do not normally market product by effecting direct deliveries to retailers. The product is normally sold through dealers and distributors located in big towns and cities, who in turn sell the product to retail shopkeepers in towns and villages. It is admitted that the respondent is the prior user of the trade mark KOHINOOR. The respondent claims that it was using the same since 1961. Registration of the trade mark KOHINOOR in respect of rice in class 30 in favor of the respondent was done in 1975. In these circumstances limiting the right of the respondent to use the trade mark KOHINOOR for the rice in six cities only was unjustified and arbitrary. Restricting the trade mark to few cities would have created a lot of complications and litigation as to the exact boundary of a particular city or district. Rather it would be impossible for the respondent to ensure that its products are not sold to retail shopkeepers outside the six cities. Putting geographical limitation on the respondent with reference to only six cities in the State of Uttar Pradesh was not justified and proper and would have adversely affected the respondent, the prior user. The restriction imposed was contrary to the normal trade practice wherein the distributors and dealers sell the products by effecting delivery to retail shopkeepers, who are located all over the State. The said retail shopkeepers may be belonging to villages and towns located in the State of U.P.
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16. Learned Counsel appearing for the appellant submitted that the learned Single Judge had gone beyond the pleadings and therefore erred in modifying the order passed by the Assistant Registrar of Trade Marks. He submitted that in the review application the respondent had restricted his prayer for including the city of Saharanpur along with five other cities, which had been included in the order dated 18th June, 1992. In this regard, he relied upon Regional Manager, SBI v. Rakesh Kumar Tewari in which it has been held that foundation of a case must be made in the pleadings and fresh evidence beyond the pleadings should not be permitted.
17. We do not find any merit in the said contention. It is admitted that the respondent had contested the rectification application filed by the appellant and filed objections to the applications for registration filed by the appellant. The respondent did not admit that the said rectification application should be allowed or that the respondent would be satisfied if the registration of the trade mark KOHINOOR in its favor is restricted to 5/6 cities. In the review application the respondent had raised number of pleas seeking recall/review of the order dated 18th June, 1992. It is clear from the order dated 15th February, 1993 that in the review application as many as six different issues and points were taken for recalling/reviewing the order. One of the points taken in alternative was that the Assistant Registrar of Trade Marks had wrongly not included the city of Saharanpur, which is the principal place of business of the respondent. The said plea was taken as one of the grounds for review. It cannot be said that the respondent had given up its claim for registration of the trade mark KOHINOOR for rice in class 30 for the entire country and/or the State of Uttar Pradesh. No such pleading has been filed and brought on record. This contention of the appellant, therefore, fails.
18. We, therefore, find no merit in both the appeals and the same are dismissed. Contempt petition registered as CCP No. 928/2006 also stands disposed of accordingly. No costs