Case: Creative Tours &amp; Travels (India) Private Limited Vs. Intellectual Property Appellate Board (Circuit Bench Sitting At Mumbai) &amp; Others

a letter dated 2nd July 1997 produced by Respondent No.3 before it containing a suggestion by the Registrar of Companies to the Petitioner before us that some other name be adopted, as "CREATIVE" was not available now and it was already used by some other Company. Yet, the Petitioner applied and wished to use the same name. The Board then referred to the specific argument of the Applicant before it / Respondent No.3 before us, that it has been using the mark and name since 1977. After noting all the contentions and the Judgments relied upon, what is specifically noted is the argument by the Petitioner that provisions of Section 12 of the Trade Marks Act, 1999 are not applicable, as the adoption is honest. After hearing both the parties, the Board reserved its orders, but, later on, certain documents were filed. Those were public documents, including some of the communications from the Registrar of Companies. It, therefore, permitted the Applicant (Respondent No.3) before it to file the documents along with an application styled as Miscellaneous Petition No.233 of 2012. It also gave opportunity to the Petitioner to file its documents and, equally, reply and rejoinder to the Miscellaneous Petition. The Miscellaneous Petition was heard and thereafter the Board, in the interest of justice, granted opportunity to produce the documents. All these documents are, thus, referred to by the Board, from Para 48. It then proceeded to consider the rival contentions.We are in agreement with Mr. Rao that, as far as the locus standi of the Applicant / Respondent No.3 before us, it has not been disputed. What is then material and relevant to note is the evidence that the Petitioner before us produces to support its version of honest concurrent use. The burden to prove that version was entirely upon the Petitioner. The burden to prove the assertion of honest concurrent use, in the opinion of the Board, has not been discharged by the Petitioner. The Board firstly refers to the e-mail demanding payment. That, according to the Board, is one of the supporting materials. That would indicate that both marks remaining on the register is likely to cause confusion. Then it relies upon a communication by the Registrar of Companies dated 2nd July 1997 addressed to the Petitioner before us. If the Registrar brought to the notice of the Petitioner that there was already another Company functional and in the name of Respondent No.3, then, he advised the Petitioner to choose some other name. The Petitioner has ignored that aspect. Apart therefrom, it asserted before the Board independently that it is using the trade mark since 12th August 1997. That was definitely a much later date in point of time. Before us what has been asserted is the usage is from 1979. That is admittedly not by the Petitioner and the registered Entity that it is now, namely, under a distinct Statute, the Indian Companies Act, 1956. The uninterrupted user is claimed and on the basis of the Sole Proprietors registration. However, we are concerned in this case with the two companies and it is the Companys version, which would have to be gone into and dealt with by the Board.The Board found that the Assessment Orders, Income Tax Returns, advertisement, awards etc. would not indicate that prior to 1997 or the registration, there was any user or from the registration, the use is stated to have commenced. That is, according to the Petitioner, also referable to first Assessment Order-1998. However, that is not in the name of the Petitioner-Company but an individual. The explanation now given for the same is that, there was no occasion for the Petitioner-Company to file Income Tax Returns in its name and as a company prior to its incorporation and registration. We are, therefore, of the clear view that this argument is an afterthought. The Petitioner went before the Board and relied upon its honest concurrent use as a Private Limited Company. When it produces the requisite materials, those are of 1998 and onwards. There is no evidence of the year 1997, much less from 1979. It is in these circumstances that the Board finds that there is no substance in the contentions raised on behalf of the Petitioner. The Board summarizes this conclusion possibly in one or two paragraphs. However, we do not find that the same is perverse or vitiated by non-application of mind, as criticized by Dr. Saraf. Thus, when there is no consistency in the version of the Petitioner and it has changed from time to time, then, this criticism is not warranted.43. In the present case, when the two Entities are Corporate Entities, namely, Companies and registered under the Indian Companies Act, 1956, then, it was for the Petitioner-Company to have established and proved its honest concurrent use. That is not established and proved, as is demanded in law. In such circumstances, we do not think that the Board committed any error in allowing the application filed by Respondent No.3 and expunging the trade mark from the register. The Board, thus, summarizes its conclusions and rightly in Para No.59. It has also concluded, on the basis of all the materials produced and order of assessment, that Respondent No.3 is prior user and that the Petitioner before us has not satisfied the Board as to the use, as claimed in the application for registration. The Board was, therefore, justified in issuing its ultimate direction of expunging of the mark from the register. The Board found that the figures of turnover would not establish and prove the Petitioners assertion of honest concurrent use since 1979.44. These figures and the success at the interim stage in the Suit before High Court of Delhi are not enough to prove the above plea. Something more was required to prove honesty and concurrent user. That was not brought on record by the Petitioner. Such a conclusion is neither perverse nor vitiated by any error of law apparent on the face of the record.

Decision (1 = appeal accepted, 0 = rejected): 0

Explanation:
0[ds]25. Therefore, the opinion of the Registrar in case of honest concurrent use or existence of other special circumstances permit registration by more than one proprietor of the trade marks, which are identical or similar in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose. Thus, in the case of honest concurrent use and with which we are concerned, the opinion of the Trade Mark Registrar shall be in accordance with Section 12 and the permission envisaged thereunder is irrespective of the fact that there is any trade mark already registered or not.26. On the application, that was filed by Respondent No.3, for rectification, a copy of which is also enclosed to the Petition, the impugned order has been passed. We permitted the parties to inspect the original record so as to convince us that the registration in favour of the Petitioner, as granted by the Registrar, is vitiated or otherwise. The foundation for the Rectification Application appears to be a notice styled as "Cease and Desist Notice", copy whereof is enclosed to the Petition at Page No.`327, "AnnexureThat was addressed to both, the Petitioner and one V.S. Abdul Karim. That claims that Respondent No.3 registered as "Creative Travel Private Limited" at New Delhi is a Company established in the year 1977 as a Private Limited Company. It is duly registered under the Indian Companies Act, 1956. The Company was established amongst others with an object to deal in destination management, corporate package, conferences and meetings. During the period of three decades, the Company claims to be in the field of tours and travels and it is a trade mark in itself. The global membership and the registration of the mark under the predecessor enactment, namely, Trade and Merchandise Marks Act, 1958 is relied upon together with the goodwill and reputation. It is based on the assertions in these notices that the Petitioner was called upon to discontinue and cease from using the mark or the impugned trademark "CREATIVE".27. True it is that, thereafter the action / suit for infringement was brought and presently that suit is pending. An interim application therein was duly filed, but that was contested by the Petitioner. That application was dismissed and Dr. Saraf seeks to rely upon the findings therein. It is submitted that these findings have been approved by a Division Bench of the same High Court in dismissing aAppeal. Even the Supreme Court upheld such an order and concurrently passed. However, we are of the view that the present proceedings, being distinct in nature, have to be viewed differently. The parameters and tests that have to be applied and by the Board are undisputed. Those are to be applied in the present proceedings, which are styled as rectification proceedings.In the case before us, the Petitioner itself contested the Respondent No.3s application on the assertion that there is honest concurrent use. Once that was the assertion and the Board was obliged to consider it, then, it was incumbent upon the Petitioner to have substantiated its plea with cogent and satisfactory evidence. The material that the Petitioner produced in that behalf was found to be lacking.38. True it is that, the Board could have elaborated the reasons assigned by it and in the manner done by us, but merely because it chooses to pass a short and brief order, does not mean that it is necessarily failing to apply its mind. It has not failed to apply its mind to the relevant materials. It has rather noted them and referred to them as well. In its lengthy narration of facts, grounds, it may have reproduced the contentions of both sides, but the Tribunal is aware of the materials produced by the parties as well. Once these materials were produced, the Board was well within its powers to consider the same and come to a conclusion as to whether they are adequate and sufficient enough to establish and prove the case of honest concurrent use.39. In that regard, what the Board has found and rightly is that the materials placed by the Petitioner are not such as would establish and prove its assertion of honest concurrent use. The Board has referred to the facts and pointed out as to how the Applicant before it, namely, Respondent No.3 before us, was in identical business and even its annual turnover has increased. It also claims to be established by one Mr. Ram Kohli, who was considered as the Goodwill Ambassador in the field of Tourism. How he has created new markets in United States, Germany and other European countries for India as a destination is referred to. He promoted the first charters from America in 1972 and after returning to India, founded the Respondentwhich is styled as "Creative Travel", which offers tours and travel services. That was founded in 1977. Thereafter its achievements are noted and it is clearly the case of Respondent No.3, the Applicant before the Board, that it is a registered proprietor of the trade mark "Creative Travel". The registrations are valid and subsisting. It is in the month of May 2006, that it came to know that Respondent No.1 before the Board, namely, the Petitioner before us, has adopted the trade name "Creative Tours and Travels (India) Private Limited" and is using the same in relation to tours and travels business. The application before Respondent No.1 does not suppress the pendency of the suit and rejection of the interim relief application therein. Thereafter, the Applicant (Respondent No.3) proceeds to challenge the registration and submits that the impugned trade mark is registered without sufficient cause and is wrongly remaining in the register and ought to be removed. The various provisions of the Trade Marks Act, 1999 are relied upon. Thereafter the grounds of removal are set out, as referred to in Para 8 of the impugned Judgment and Order. The rectification of the trade mark "CREATIVE" was sought.40. In answer thereto, it is the Petitioners case that it is in identical business from 1979. Firstly, it was Sole Proprietor and later on as a Private Limited Company. It also relied upon somewhat identical achievements and awards. It also relied upon the membership of the International Organization. It also relied upon the turnover for the yearand claiming registration of a trade mark inIt has claimed that it has a distinct colour scheme and style.41. It also seeks to rely upon the honest concurrent use from 1979 and without any interruption. Thus, the Suit in the High Court at Delhi apart, the proceedings before the IPAB were contested by the Petitioner before us on essentially this case. The Petitioner also relied upon numerous documents.42. In para 27 of the impugned Judgment, the Board refers to a letter dated 2nd July 1997 produced by Respondent No.3 before it containing a suggestion by the Registrar of Companies to the Petitioner before us that some other name be adopted, as "CREATIVE" was not available now and it was already used by some other Company. Yet, the Petitioner applied and wished to use the same name. The Board then referred to the specific argument of the Applicant before it / Respondent No.3 before us, that it has been using the mark and name since 1977. After noting all the contentions and the Judgments relied upon, what is specifically noted is the argument by the Petitioner that provisions of Section 12 of the Trade Marks Act, 1999 are not applicable, as the adoption is honest. After hearing both the parties, the Board reserved its orders, but, later on, certain documents were filed. Those were public documents, including some of the communications from the Registrar of Companies. It, therefore, permitted the Applicant (Respondent No.3) before it to file the documents along with an application styled as Miscellaneous Petition No.233 of 2012. It also gave opportunity to the Petitioner to file its documents and, equally, reply and rejoinder to the Miscellaneous Petition. The Miscellaneous Petition was heard and thereafter the Board, in the interest of justice, granted opportunity to produce the documents. All these documents are, thus, referred to by the Board, from Para 48. It then proceeded to consider the rival contentions.We are in agreement with Mr. Rao that, as far as the locus standi of the Applicant / Respondent No.3 before us, it has not been disputed. What is then material and relevant to note is the evidence that the Petitioner before us produces to support its version of honest concurrent use. The burden to prove that version was entirely upon the Petitioner. The burden to prove the assertion of honest concurrent use, in the opinion of the Board, has not been discharged by the Petitioner. The Board firstly refers to thedemanding payment. That, according to the Board, is one of the supporting materials. That would indicate that both marks remaining on the register is likely to cause confusion. Then it relies upon a communication by the Registrar of Companies dated 2nd July 1997 addressed to the Petitioner before us. If the Registrar brought to the notice of the Petitioner that there was already another Company functional and in the name of Respondent No.3, then, he advised the Petitioner to choose some other name. The Petitioner has ignored that aspect. Apart therefrom, it asserted before the Board independently that it is using the trade mark since 12th August 1997. That was definitely a much later date in point of time. Before us what has been asserted is the usage is from 1979. That is admittedly not by the Petitioner and the registered Entity that it is now, namely, under a distinct Statute, the Indian Companies Act, 1956. The uninterrupted user is claimed and on the basis of the Sole Proprietors registration. However, we are concerned in this case with the two companies and it is the Companys version, which would have to be gone into and dealt with by the Board.The Board found that the Assessment Orders, Income Tax Returns, advertisement, awards etc. would not indicate that prior to 1997 or the registration, there was any user or from the registration, the use is stated to have commenced. That is, according to the Petitioner, also referable to first AssessmentHowever, that is not in the name of thebut an individual. The explanation now given for the same is that, there was no occasion for theto file Income Tax Returns in its name and as a company prior to its incorporation and registration. We are, therefore, of the clear view that this argument is an afterthought. The Petitioner went before the Board and relied upon its honest concurrent use as a Private Limited Company. When it produces the requisite materials, those are of 1998 and onwards. There is no evidence of the year 1997, much less from 1979. It is in these circumstances that the Board finds that there is no substance in the contentions raised on behalf of the Petitioner. The Board summarizes this conclusion possibly in one or two paragraphs. However, we do not find that the same is perverse or vitiated byof mind, as criticized by Dr. Saraf. Thus, when there is no consistency in the version of the Petitioner and it has changed from time to time, then, this criticism is not warranted.43. In the present case, when the two Entities are Corporate Entities, namely, Companies and registered under the Indian Companies Act, 1956, then, it was for theto have established and proved its honest concurrent use. That is not established and proved, as is demanded in law. In such circumstances, we do not think that the Board committed any error in allowing the application filed by Respondent No.3 and expunging the trade mark from the register. The Board, thus, summarizes its conclusions and rightly in Para No.59. It has also concluded, on the basis of all the materials produced and order of assessment, that Respondent No.3 is prior user and that the Petitioner before us has not satisfied the Board as to the use, as claimed in the application for registration. The Board was, therefore, justified in issuing its ultimate direction of expunging of the mark from the register. The Board found that the figures of turnover would not establish and prove the Petitioners assertion of honest concurrent use since 1979.44. These figures and the success at the interim stage in the Suit before High Court of Delhi are not enough to prove the above plea. Something more was required to prove honesty and concurrent user. That was not brought on record by the Petitioner. Such a conclusion is neither perverse nor vitiated by any error of law apparent on the face of the record.