ASN 1 WP-5255.sxw IN THE HIGH COURT OF JUDICATURE AT BOMBAY CIVIL APPELLATE JURISDICTION WRIT PETITION NO. 5255 OF 2011 Larsen and Toubro Limited and anr. ..Petitioner. Vs. Union of India and ors. ..Respondents. Mr.V.R. Dhond along with Himanshu W. Kane. Ashutosh Kane and Ms. Aditi Kulkarni i/by W.S.Kane & Co. for the Petitioner. Mr. Ashok Verma for Respondent No.1-Union of India. Mr. Tehemtan N. Daruwalla with Ms. Blkossom Noronna i/by Jahangir Gulabbhai Bilmoria and Daruwalla for Respondent No.3. CORAM : MOHIT S. SHAH, C. J. AND GIRISH S. GODBOLE, J. 26 July 2011 PC: In this petition under Articles 226 and 227 of the Constitution, the petitioner has challenged the order dated 3 September 2010 allowing the original rectification application filed by present respondent No.3 for removal of the trade mark LT, registered under No. 1169161 in class 25 of the registration of the trade mark under Section 47, 57 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as “the Act”) . 2 The present petitioner obtained registration of the above trade mark in relation to clothing and wearing apparels of all sorts ASN 2 WP-5255.sxw including hosiery and boots, shoes and slippers included in class 25. The petitioner had made application on 24 January, 2003 claiming user since 1 April, 1946 and the impugned trade mark was used from 17 May 2005. The respondent No.3 herein is carrying out business in the name and style as M/s. Life Time Fashions – manufacturing, distributing and selling readymade garments including jeans, trousers and shirts. Respondent No.3 is the owner and proprietor of the trade mark LT in respect of the above mentioned goods falling in class 25 from 16 June 1998 as a proposed to be used mark. 3 Respondent No.3 herein filed application on 9 April 2007 for rectification of the trade mark registered in favour of the petitioner on various grounds including the following grounds. “4 Because the respondent had knowledge of the petitioner’s mark L.T. In respect of READYMADE GARMENTS INCLUDING JEANS, TROUSERS AND SHIRTS at the time of filing application for registration of impugned marks as the respondent in the above mentioned Suit No.336/2004 inter alia states that “the cause of action for the present suit arose on 23.7.2004 inter alia states that “the cause of action for the present suit arose on 23.7.2004 when after a search was taken with the Trade Mark Registry, the plaintiff learnt about the defendants use/intention to use of the impugned mark “LT” in respect of their products/goods/business including the said products.” Respondent is making false and misleading statement in the suit as well. From the Trade Mark Journal MEGA 5 Page 6106 where the mark of the respondent has been advertised, it is clear that the application for registration was filed on 24.1.2003. The respondent ASN 3 WP-5255.sxw must have obtained the search report prior to that date. Petitioner is not only the prior user but also the prior applicant for the registration of mark L.T. For goods in class 25. 7 Because respondent is wrongly claiming proprietary rights over the impugned trade mark L.T. In relation to clothing and wearing apparels of all sorts including hosiery and boots, shoes and slippers included in class 25 which it neither was at the time of filing of application, nor at the time of grant of registration certificate nor till date. The respondent made a false claim as to its proprietorship before the Ld. Registrar. 8 Because the impugned registration was sought dishonestly and the Respondent was aware and/or ought to be aware of the proprietary rights of petitioner over the impugned mark in respect of readymade garments including jeans, trousers and shirts included in class 25. 9 Because the respondent is guilty of fraud in alleging the user of the impugned Trade Mark since the year 01.01.1946 in relation to clothing and wearing apparels of all sorts including hosiery and boots, shoes and slippers including in class 25 inasmuch as the respondent has never used the impugned mark for goods as mentioned at all till date and thus its registration cannot be sustained. The user claimed by the Respondent itself is contradictory and void-ab-initio. 11 Because the impugned Trade Mark was not distinctive of the impugned goods neither at the time when the impugned application was filed nor at the time when impugned registration was obtained and nor even till date in favour of the respondent. No cogent and sufficient documents were filed before the Registrar in support of any distinctiveness. Assuming that the some ASN 4 WP-5255.sxw documents were filed, no distinctiveness claim could have been based thereon as the documents on their very face would be fabricated as the respondent has never used the mark L.T. In relation to clothing and wearing apparels of all sorts including hosiery and boots, shoes and slippers including in class 25. Any grant of registration by the Registrar thereon is vitiated and is an erroneous grant. The impugned registration as such on its very face is contrary to the provisions of Section 9 of the Trade marks Act, 1999.” 4 The petitioner filed its counter statement on 2 July 2008 and in Paragraph 16 of the said statement the petitioner made the following averments of the submissions. “16 Contents of paras 12 to 30(a) and (b) are specifically denied. We deny that our trade mark fails to identify our goods. We submit that we being the prior adopters and users of the mark LT it is the appellants who have copied and have tried to come close to our mark for which there can be no justification. We deny that the appellants are the prior adopters or users of the mark LT in relation to its goods. As we are the prior adopters and user of the mark LT there is no question that the use of our mark by us would cause confusion or deception and we submit that the converse of the same is however true. We deny that the registration of our mark is barred by the provisions of Section 11 of the Act. We deny that we are engaged in trading deceptively or are pursing the policy of deliberately deceiving the purchasers as to the source of origin of the goods. We deny that the appellants have acquired any goodwill or reputation with respect to the mark LT and a such there is no question for us for us to encashing upon the appellant’s goodwill. We deny that we are guilty of passing off and submit that the appellants are indeed ASN 5 WP-5255.sxw guilty of passing off their goods as and for those of ours. We deny that a period of 5 years and 3 months has expired prior to the filing of the present petition since our mark is not used. We deny that we have no intention to use the said mark LT with respect to the goods falling under class 25. We submit that there are no special circumstances or any other factor which exists against us and we reiterate that our said mark. Being a well known trade mark, ought to be protected under the Act. We deny that the registration of our mark is contrary to the provisions of Section 9, 11 or 18 or their sub-sections of the Act. Question of seeking concurrent registration under Section 12 does not arise, for the appellants have no registration in class 25 in their name. We deny that we have no rights in the mark LT with respect to the goods for which it is registered or that we have abandoned all or any of our rights. We deny that we have violated any copyright of the appellants and submit that it is the appellants who have sought to copy or mark. Hereto annexed and marked as EXHIBIT A is a pirated label as used by the appellant which establishes beyond doubt their ulterior motive. We deny that the registration of our mark is vaild ab-initio. We deny that the entry pertaining to the registration of our mark exists without sufficient cause or that the same wrongly remains on the Register. We deny that the entry of our registration be removed. We deny that petition of the appellants be allowed. We deny that the appellants are aggrieved persons or that it can maintain or institute the present petition/action. We deny each and every averment made by the appellants in their statement of case. We deny that the Hon’ble Tribunal should allow the appellants to rely upon any other ground/s. We deny that the Hon’ble Tribunal should remove or expunge or rectify the entry pertaining to the registration of our mark consisting of the LT Logo under No.1169161 in class 25 from the Register.” ASN 6 WP-5255.sxw 5 By the impugned order the Intellectual Property Appellate Board (hereinafter referred to as “the Board”) held inter alia as under:- “22 The next ground is that the impugned registration of the mark is wrongly remaining on the register without sufficient cause as the use is wrongly given and the registration has been obtained fraudulently. The main contention of the applicant was that registration was obtained claiming user since 1.1.1946 for the goods in class 25 whereas the respondent had no use in respect of garments but was dealing only with engineering and construction business. We also find force in the arguments of the applicant. The Court has to decide whether in the facts and circumstances of the case the trade mark was registered without any bonafide intention on the part of the proprietor and that the mark would be used by him in relation to the goods/services in respect of which the mark was sought to be registered. The onus to estabalish is on the applicant. 24 A mark could be removed from the register either it was applied for without a bonafide intention to use it and it has not in fact been used prior to the application to remove it from register, or alternatively if it has not been used bonafidely for five years prior to the application. Bonafide intention or bonafide use is as per the provisions of section 47 of the Act in relation to the goods or services in respect of which the mark is registered. 29 The impugned trade mark has not been put to use either before the date of application or between the period of the date of application and the date of application for rectification or thereafter. The impugned trade mark is therefore wrongly remaining ASN 7 WP-5255.sxw on the register without sufficient cause and has to be expunged from the register of trade marks. 30 The user claimed in the application for registration is 01.01.1946 for the goods falling under class 25 in respect of garments but it is admitted fact by the respondent that they intend to use in future. This itself prove the malafides of the respondent. On this account, the impugned trade mark is to be expunged. There is no doubt that the mark was in use for other goods specifically in respect of engineering and construction goods but not in respect of garments. The intention to use a trade mark sought to be registered must be genuine and real. If the mark is thought to be something which might be useful some day, it would not amount to any definite and precise intention to use the mark. 31 In view of the foregoing reasons, we are of the opinion that the impugned registration of the trade mark be removed/ cancelled. Accordingly the original rectification application is allowed with a direction to the Register of Trade Marks to remove the trade mark No.1169161 in class 235.There shall be no order as to costs.” 6 Mr. Dhond, learned counsel for the petitioner submitted that respondent No.3 herein had never raised or pleaded ground under Section 47(1)(a) of the Act for removal of petitioner’s trade mark from the register. It is further submitted that ground under Section 47(1)(b) was not available to respondent No.3 because the trade mark had been registered only on 15 May 2005 and the period of five years contemplated in Section 47(1)(b) has not expired on the date of filing ASN 8 WP-5255.sxw the application. The learned counsel for respondent No.3 has opposed the petition and supported the order of the Court. 7 Having heard the learned counsel for the parties, we do not find any substance in the contentions of the petitioners that respondent No.3 herein had not invoked the provisions of Sub Section (1)(a) of Section 47. Perusal of the grounds in the rectification application set out herein above clearly states that the respondent No.3 herein and the applicant in the rectification application states that trade mark was registered without any bonafide intention to use it and it had not in fact been used prior to the application to remove it from register in class 25 and that there had been no bonafide use of the trade mark in relation to the goods before the three months of the date of the application. 8 In view of the fact that though the registration was obtained by the petitioner claiming user since 1946; the petitioner has not used the said trade mark in relation to the clothing and other goods in class 25 and the said trade mark was not even used even on the date of filing the counter statement on 5 January 2008 or before that or at the time of hearing of the application by the Board or at the time of argument on 7 June, 2010, no fault can be found with the findings given by the Board that the petitioner’s registration of the trade mark in question has been obtained by the petitioner without any bonafide intention on the part of the petitioner that it could be used in relation to the goods in class 25 and that there is in fact no bonafide use of the trade mark by the petitioner either at the time or upto three months ASN 9 WP-5255.sxw before making the rectification application. 9 In our view merely because the respondent No.3 herein, in his rectification application, does not specifically refer to sub section (1)(a) of Section 47 or did not use the language of the said section verbatim; it cannot mean that the respondent No.3 cannot invoke the ground (a) of Section 47(1) of the Act. Perusal of the counter statement of the petitioner, particularly Paragraph 16 which is quoted herein above, also clearly shows that the petitioner was aware about the allegations made in the rectification application that petitioner’s trade mark was registered without any bonafide intention to use the same. The petitioner purported to rebut that allegations in the words which are already quoted herein above. The petitioner also referred to the contentions of respondent No.3 and submitted that the registration of the trade mark cannot be removed having regard to the provisions of Section 47(1)(a) of the Act. The said pleadings clearly indicate that the petitioner was called upon to meet with the ground specified in clause (a) of Section 47(1) of the Act. 10 In view of the above discussion we find no fault in the impugned order passed by the Appellate Board. It goes without saying that in case the petitioner is desirous of applying for registration of its trade mark for the goods in class 25; it will be open to the petitioner to make such an application for registration of the said trade mark in accordance with law. The impugned order passed by the Board will not ASN 10 WP-5255.sxw come in the way of the petitioner if it makes such application and when such application is made, the competent authority will decide the same in accordance with law. 11 Subject to above clarification, petition is dismissed. CHIEF JUSTICE GIRISH S. GODBOLE, J.