(2019) 258 DLT (CN 14) 14
The Petitioner is a partnership firm trading as M/S Khushi Ram Behari Lal (Export Division) established in the year 1978 carrying on the business of processing, marketing and exporting of rice since 1978. They own the trademark 'TRAIN BRAND WITH DEVICE OF TRAIN' in relation to said goods and business and have been continuously using the same since 1978 up to the present time.
The Respondent i.e. M/S Jaswant Singh Balwant Singh is also engaged in the same business of processing, marketing and exporting of rice.
The petitioner firm was taken over as a going concern including its Trade Marks and other assets and properties by M/s. Khushi Ram Behari Lal Ltd. with effect from 1.4.1996 under an agreement. The partners of the petitioner firm were engaged as the directors of the incorporated company which as on date is carrying on the said business under the subject matter trademarks, hence, owing to the previous Partnership concern's name 'M/s Khushi Ram Behari Lal'; the petitioner and its successors changed their name to M/s. KRBL Ltd. The Petitioner, M/s Khushi Ram Behari Lal ("KRBL") hence, filed an application for its registration in class 30 of the IV Schedule of the then Trade & Merchandise Marks Act, 1958 before the Registrar of trade marks on 11.10.1993.
The respondent filed notice of opposition on 24.07.2000 objecting to the registration of the said Trade Mark in favour of the petitioner on the grounds inter alia that the respondent is engaged in the business of Rice under the Trade Mark "TRAIN" as well.
The Registrar, on consideration of the Respondent's previously registered trade mark, dismissed Petitioner's Form TM-16(an application to request for correction of clerical error or for amendment) and refused the application for registration of the said trade mark.
The Petitioner, aggrieved by the order, approached the IPAB which dismissed the appeal on the ground that the Respondents had adopted and registered the trade mark prior in point of time.
Whether copyright registration is sufficient for proving the use of subject Trademark?
Section 12 in The Trade Marks Act, 1999
Section 18 in The Trade Marks Act, 1999
The petitioner contended that the order of the assistant registrar is contrary to law and facts of the case. The documents filed by the respondent are forged and fabricated.
It was further alleged that the invoices of telephone number are doctored and forged.
The respondent had pleaded before the Assistant Registrar to reject the impugned application outright as the applicant had failed to establish entitlement to trade mark. The Respondent has also secured copyright registration for the artistic label comprising the word & device of the trade mark under No.A-44877/84.
The Hon'ble court on perusal of the documents on record, said that the learned Appellate Board had relied on the Copy Right Registration of respondent under No. A44877/84. The Copy Right Registration of the art work of "TRAIN" brand is extraneous for the purpose of proving the use subject Trade Mark.
The Hon'ble High Court hence, through this case, decreed that a Copyright Registration of the artwork of the brand "TRAIN" is immaterial for the purpose of proving the use of the subject trade mark. Some cases with similar issue before the Supreme Court were cited as Corn Products Refining Co. v. Shangrila Food Products Ltd and in case of Gandhi Scientific Company v. Gulshan Kumar.
1 AIR 1960 SC 142
2 2009 (40) PTC 22 (Del.)
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