INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex, Annexe-I, 2nd Floor, 443, Anna Salai,
Teynampet, Chennai – 600 018

ORA/138 & 139/2010/TM/CH
FRIDAY THIS THE 4TH DAY OF APRIL, 2014.
Hon'ble Ms. S. Usha
Hon'ble Mr. Sanjeev Kumar Chaswal
S. SUDHAKAR,
No. 84, M.C. ROAD,
OLD WASHERMENPET,
CHENNAI – 600 021
…Vice -Chairman
…Technical Member
(Trademarks)
… Applicant
(Represented by – Mr. Madan Babu)
Vs.
1. M/S “GRB” DAIRY FOOD PVT. LTD.
NO.10, III PHASE,
SIDCO INDUSTRIAL ESTATE,
HOSUR -635 126.
2. The ASSISTANT REGISTRAR OF TRADEMARKS,
TRADEMARKS REGISTRY,
CHENNAI.
…Respondents.
(Represented by – Mr. S. Balachandran)
ORDER (No.44 of 2014)
Hon’ble Ms. S. Usha, Vice-Chairman
The two rectification applications are for removal of the trademarks
“Udhayam” and “GRB’s Udhayam” registered under Nos.785124 and 1077180 in
class 29 respectively under the provisions of section 57 of the Act.
2.
The facts of the case are one and the same and the issues, therefore the
matters were heard together and a common order is being passed.
3.
The applicant is the joint proprietor of the trademark / label “Udhaiyam”
and is carrying on business through Shri Lakshmi Agro Foods Pvt. Ltd. The said
company is engaged in the business of marketing food and allied products under
the said trademark “Udhaiyam”.
The company is inter-alia engaged in the
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manufacture and / or marketing activity of Dhall under the trademark / label
“Udhaiyam”.
4.
The applicant through its group entities are the traders of all types of food
and allied products such as Dhall, Atta, Rawa, Maida, Salt, Rice, Spices, Fried
Gram Appalam, Idli batter etc.
The applicant’s goods are sold under the
trademark “Udhaiyam” in the state of Tamil Nadu and in other states of India.
5.
The trademark “Udhaiyam” was honestly conceived and adopted by the
applicant’s predecessors in the year 1940.
The applicant’s grandfather
conceived the trademark “Udhaiyam”. The said business was later carried on
under the trademark “Udhaiyam” by the applicant’s father in partnership, M/s
Karuppiah Nadar.
The said firm continued to purchase and sell the same
exclusively through Shri Lakshmi Agro Foods Pvt. Ltd.
6.
In order to cater to the increasing retail demand, another partnership
under the name of Shri Lakshmi Agro Foods was constituted in the year 1993.
After the constitution of this firm, M/s Karuppiah Nadar & Sons discontinued the
sale. The entire dhall was sold to Shri Lakshmi Agro Foods which in turn sold
Dhall under the trademark “Udhaiyam” in retail quantities. M/s Karuppiah Nadar
& Sons and M/s Shri Lakshmi Agro Foods function like a single group.
7.
The applicants trademark “Udhaiyam” had gained immense reputation and
good will among the public. The applicants have obtained registration of their
trademark “Udhaiyam” under No.595393B in class 30.
The applicants have
obtained various registrations. The applicants have continuously, uninterruptedly
and extensively used their trademark since 1940. They have spent substantial
amounts towards advertisement of the goods bearing the trademark “Udhaiyam”.
It has acquired distinctiveness among the public. Their sales turn over runs to
several lakhs of rupees.
Due to extensive sales and advertisement, their
trademark “Udhaiyam” has become a well known mark and commands high
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reputation in India. The applicants are entitled to protection of their trademark
and that no other person can claim any right in respect of the trademark.
8.
In March 2010, the applicants filed a civil suit for infringement and passing
off against the respondent.
The applicant then came to know that the
respondents are the registered proprietors of the trademark impugned herein.
9.
In 2008, the applicants were informed about the respondent’s goods
bearing the trademark “Udhayam”. The respondents marketed ghee outside the
state of Tamil Nadu with the trademark “GRB Ghee” and inside the state of Tamil
Nadu as “GRB’s Udhayam Ghee.” The trademark “GRB” was used in a very
insignificant manner and the mark “Udhayam” was predominantly used.
Realizing the immense reputation held by the applicants well known trademark
“Udhaiyam”, which has been assiduously built by the applicants over the years,
the respondent had consciously adopted the trademark “Udhayam” identical to
the applicants trademark. Thus the conduct of the respondents clearly evidences
the dishonest intent.
10.
In order to amicably resolve the issue, the applicant had approached Mr.
G. R. Balasubramaniam, the founder and Chairman of the respondent.
He
undertook to desist from using the trademark “Udhayam” and however requested
for time to exhaust the existing stock. In fact he had changed the website and
had shown only “GRB” ghee as its product.
11.
Recently, the applicant came to know that the respondent continued to
surreptitiously use the trademark “GRB’s Udhayam”. The applicant had therefore
instituted a civil suit before the Hon’ble High Court of Madras for infringement
and passing off and the same is pending.
12.
The adoption of the trademark “Udhayam” by the respondent in respect of
ghee is fraudulent and dishonest. The trademark adopted by the respondent is
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identical and / or deceptively similar to that of the applicants trademark and there
is a likelihood of confusion and deception among the public. The goods dealt
with by the applicants and the respondent is purchased by both literate and
illiterate consumers, who will certainly be deceived and confused.
13.
In such circumstances, it is respectfully submitted that the very registration
is without just cause and contrary to the provisions of the Act. The mark is liable
to be struck off on the following grounds that -(1) the adoption of the trademark “GRB’s Udhayam” by the respondent
is tainted with malafide intentions;
(2) the impugned trademark is identical with the applicant’s registered
trademark “Udhaiyam”;
(3) the applicants are the prior users and registered proprietors of the
identical trademark “Udhaiyam” in respect of allied and cognate goods;
(4) the impugned trademark had no reputation with regard to the
respondents goods for which the registration was obtained;
(5) the impugned trademark “GRB’s Udhayam” is devoid of
distinctive character and not capable of distinguishing the goods from
that of the applicants;
(6) the impugned trademark “GRB’s Udhayam” would create confusion
among the public and deceive the public into believing the goods
emanate from the applicants;
(7) the impugned trademark, adoption and use by the respondent would
constitute infringement of the applicant’s trademark;
(8) the adoption by the respondent is with malafide intention to make
illegal gains out of the reputation built by the applicants;
(9) the use of the impugned trademark “GRB’s Udhayam” would result
in the dilution of the applicants trademark “Udhaiyam”;
(10) the impugned trademark wrongly remains on the register without
sufficient cause and
(11) the registration is in contravention of the provisions of the Act.
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14.
The respondent herein filed the counter statement stating that the
applicant Mr. S. Sudhakar has no locus standi to file the present application since
the application for trademark was registered in the name of the partnership firm.
The present application cannot be entertained since it is filed by the applicant
who is not the sole and exclusive owner of the mark.
He is not a person
aggrieved within the meaning of the provisions of the Act.
15.
The respondent is carrying on business of manufacturing and marketing
the highest quality of Agmark certified dairy products that constantly delights the
customers with the promise of taste and purity.
16.
Mr. G.R. Balasubramaniam, the Managing Director of the respondent has
been in the ghee business for several decades. The firm Udhayam Dairy Farm is
in existence since 1984. The brand “GRB” was started in the year 1990. They
are manufacturing ghee under the subject brand “Udhayam” in respect of ghee
as a sole proprietary firm G.R. Balasubramaniam and Co. since the year 1993
and subsequently under the trademarks “GRB” & “Udhayam.” The trade marks
were assigned to “GRB” Dairy Foods from 20/01/1999. On 26/03/2001 “GRB”
Dairy Foods was taken over by “GRB” Dairy Foods Private Limited.
The
company has grown with a multi crore turn over.
17.
The
trademarks namely “Udhayam” under No.785124 was applied for
registration in the year 1998 and obtained registration in the year 2006. The
trade mark GRB’s Udhayam under No.1077180 was applied in the year 2002
and registered in the year 2005..
A regular search was conducted in the
Trademarks Registry before adopting the trademarks.
18.
The said trademark has become a synonym of quality, reliability and
authenticity and has become synonymous with the products sold there under.
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With such continuous and extensive use, the mark has acquired immense
goodwill and valuable reputation for the goods sold.
19.
The respondents are the owner of the copyright of the artistic work cow
device embedded in the trademark label and there has been an ever increasing
demand for the products bearing the said trademarks “GRB” “Udhayam”.
20.
The subject trademark was honestly adopted to mark a distinction
between the superior products manufactured by the respondents and the similar
products.
21.
Gem of India Award and Best Ghee Award were received by the
respondents. This was flashed in the Newspapers and therefore the applicants
were aware of the respondent’s adoption and use. The respondents are the
registered proprietors of the trademark “GRB” in various labels and are also the
owners of the Copyright in the Trademark. The sales turnover and the expenses
for advertisement for the trademarks “GRB”, “Udhayam Ghee” and “GRB’s
Udhayam Ghee” are several lakhs of rupees. The subject trademarks are well
known within the meaning of sections 11 (6) to (9) of the Act.
22.
The respondents are the true bonafide proprietors of the trademark which
is not identical or similar to the applicant’s trademark.
The respondent’s
trademark has acquired secondary meaning and is capable of distinguishing the
goods manufactured by their firm. There is no confusion or deception. The
applicants have not adopted the trademark in the year 1940 as there is no
evidence for the same. The applicant’s predecessor was established in the year
1976 therefore the user claimed since 1940 is denied. The applicant when they
applied for registration is claimed to have been proposing to use in the year 1993
whereas the respondents have used it since 01/04/1993.
applicants averments were denied by the respondents.
The rest of the
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23.
We heard Mr. Madan Babu, the learned counsel for the applicant.
The
learned counsel for the applicant submitted that the two marks are identical. The
applicant’s trademark is “Udhaiyam” and the respondent’s trademark is
“Udhayam”.
24.
On coming to know of the respondent’s use of the trademark “Udhayam”
the applicants filed a civil suit for infringement where an order of interim
injunction was granted and was later suspended. The respondents also filed a
civil suit against the applicant. The respondents have not filed any rectification
against the applicant’s registration till date. The applicants have locus standi to
file this instant rectification application and relied on the judgement reported in
2008 (36) PTC 150 – S. Sudhakar and another vs. S.S.P. Durairaj -Any one of the joint trademark holders can file the suit to protect the
registered trademark.
The applicant ie. Mr. Sudhakar is a joint proprietor of the trademark “Udhaiyam”
and has an interest to protect the said mark.
(2003 11) SCC 92 – Hardie Trading Ltd. vs. Addison Paints & Chemicals
Ltd. -- Aggrieved person – a person against whom a civil suit is filed
based on the registered trademark is a person aggrieved.
Settled preposition is that no two persons can use the same trademarks.
1994 (2) SCC448 – Power Control Appliances vs. Sumeeth Machines
25.
The applicants’ trademark is “Udhaiyam” and the same has been used by
the applicant and his predecessors since the year 1940. The applicants have
produced evidence of use of the trademark “Udhaiyam” since 1990. They are
the registered proprietors of the trademark “Udhaiyam” as of 23/04/1993. The
applicant’s sales turn over by sale of their products under the trademark runs to
approx. Rs. 178.50 crores.
26.
Few judgements were relied on in this regard --
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(1) AIR1965 SC 980 – Durga Dutt Sharma Vs. Navaratna
Pharmaceuticals -- “If the essential features of the trademark have
been adopted by the other, the fact that the get up, packing and
other writing or marks on the goods or on the packets in which he
offers his goods for sale show marked differences would be
immaterial.”
(2) 2001 (5) SCC 73 --- Cadila Health Care Vs. Cadila Pharmaceuticals
(3) 2000(4) CTC 222 --- R. Gopalakrishnan Vs. M/s Venkateswara
Camphor Works.
27.
The applicant’s predecessors had honestly conceived and adopted the
trademark “Udhaiyam” in respect of Dhall as early as in 1940. The applicants
predecessor M/s Karuppiah Nadar and Sons have been trading in Dhall under
the trademark “Udhaiyam” alone and generated sales turn over of Rs. 3.16
crores as early as 1997. The applicants have placed the chartered accountants
certificate in proof of the same.
28.
MANU/DE/0740/2010 – Marico Limited and another Vs. Madhu Gupta --
The applicant’s statement that they are using since 2002 is plausible for the
reason that they have pleaded as well there is a mention of the sales turn over
since 2003-04.
29.
The respondent is the subsequent user of the trademark “Udhayam” in
respect of ghee. The respondents adopted the trademark “Udhayam” only in the
year 1993 and the 1st document is dated 30/04/1993. Their sales turn over for
the sale of ghee under the trademarks “GRB” & “Udhayam” is only Rs.4.49 lakhs.
The use of the trademark “Udhayam” by the firm Udhayam Diary Farms is only of
the year 1991.
The applicants are therefore prior user of the trademark
“Udhaiyam” and therefore the respondents cannot claim any right over the
trademark “Udhayam”.
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2004(6) SCC 145 – Sathyam Infoway Ltd. Vs. Sifynet Solutions Pvt. Ltd.-If two rivals claim to have individually invented same trademark then the trader
who is able to establish prior user will succeed.
30.
The applicant had applied for registration of the trademark “Udhaiyam” in
April 1993 long prior to the respondents application for registration of the
trademark “Udhayam” in January, 1998. If a search had been conducted, the
applicants mark would have been reflected. In 1994 a search was conducted
and the existence of the trademark was on the register and so the adoption
cannot be said to be honest. The counsel relied on the judgement AIR 1991
Bom 76 – M/s National Chemicals Vs. Reckitt and Colman.
31.
The respondents have no reason for the adoption of the mark “Udhayam”
in respect of ghee. The respondents were only using the trademark “GRB”.
They had not applied for registration in the year 1994 when the search was
made. The trademark “Udhayam” was not used till the year 1993. They had
abandoned the trademark “Udhayam” in the year 1985. The respondents have
stated so in the plaint filed before the Madras High Court in a civil suit against the
applicant.
Having not explained the reason for adoption, the adoption is
presumed to be dishonest – AIR1998 Bom 312 – M/s Lupin Laboratories Vs. M/s
Jain Products & 2004 (3) SCC 90 Midas Hygiene.
32.
The dishonest intention of the respondent in adopting the trademark in
respect of ghee is evident from the following –
1. Ghee under identical label is marketed simultaneously under the
trademarks “GRB”, “GRB Udhayam” and “Udhayam”;
2. There is no difference in either the character or quality of the ghee sold
under various trademarks and
3. The first registration was in respect of ghee under the mark “GRB”
restricting the sale in the state of Karnataka only.
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33.
Absence of fraudulent intention in adopting a trademark is no defence –
2002 (3) SCC 65 – Laxmi Kant V. Patel Vs. Chetanbhai Shah.
34.
The trademark “Udhayam” is not distinctive of the respondent’s goods.
According to the respondent the proprietary concern Udhayam Dairy Farm was
changed to a partnership firm G.R. Baladubramaniam and Brothers. The name
was thereafter changed to GRB Dairy Foods and later to GRB Dairy Farms
Private Limited. Earliest use of the trademark “Udhayam” by the respondent was
in 1993. It is ought to be inferred that the name “Udhayam” was discontinued
from 1985 when G.R. Balasubramaniam and Brothers came into existence.
1962 (1) WLR 380 – Norman Kark Publication Ltd. Vs. Odhams Press Ltd.
1981 WLR 193 – Cadbury-Schweppes PTY.Ltd. Vs. Pub Squash Co. Pvt.
Ltd.
35.
Alleged use of the name Udhayam Dairy Farm by the respondent’s
predecessors does not amount to use in trademark sense.
36.
Even assuming the respondent’s predecessor had adopted the name
Udhayam Dairy Farm in respect of the proprietary concern the same does not
amount to use of “Udhayam” in the trademark sense. Trademark is different from
property mark and the alleged use of the name Udhayam Dairy Farm by the
respondent’s predecessor is only a property mark and not a trademark.
1973 (1) SCC 56 — Sumat Prasad Jain Vs. Sheojanam Prasad
1977 IPLR 161—Pan American World Airways Vs. Registrar
MANU/MH/0119/2007 : 2007 (35) PTC 334 – Raymond Limited Vs.
Raymond Pharmaceuticals Pvt. Ltd.
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37.
The use of a deceptively similar trademark in respect of different class of
goods is immaterial.
5 USPQ 2d 1944 – Wynn Oil Co. Vs. Thomas
38 USPQ 2d 1161 – Champions Golf Club Vs. The Champions Golf Club
MANU/MH/0076/1997 – Aktiebolaget Volvo Vs. Volvo Steels
2009(39)PTC 149 – Ford Motor Company Vs. Ford Service Centre
38.
In reply the counsel for the respondent submitted that the applicant has no
locus standi to file the present application since there is a variance in the names
of the partners.
39.
The respondents are dealing in Agmark dairy products from 1984 through
M/s G.R. Balasubramaniam and Brothers as also Udhayam Dairy Farm.
An
application was filed for the brand “Udhayam” in respect of ghee and butter in the
name of G.R. Balasubramaniam and company in 1998 with a claim of use of the
trademark “Udhayam” from 01/04/1993. On 20/01/1999 the business of G.R.
Balasubramaniam & Company, including the trademark “Udhayam” was
assigned to “GRB” Dairy Foods and thereafter on 26/03/2001 the goodwill
including the trademark was taken over by M/S GRB Dairy Foods Pvt. Ltd. in the
terms of the agreement.
40.
The search report of the year 1994 shows the honesty of the respondent
in adopting and the filing of the application for the trademark “Udhayam”.
41.
The respondent’s reputation is across the country and also outside India.
The products bearing the trademark “Udhayam” are available with hundreds of
distributors and dealers. The products bearing the trademark “Udhayam” and
“GRBs Udhayam” have ever increasing demand and are advertised through
various medias.
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42.
Besides the trademark “Udhayam” registration, the respondent is the
registered proprietor of the trademark “GRB” and device of cow.
43.
The respondent denied the applicants claims that they are the registered
proprietor and prior user.
The goods are different which fall under different
classes ie. 30 and 29 respectively. The applicant’s goods have no reputation as
no evidence is filed to prove the same. There is no instance of confusion or
deception. The applicants claim use as proposed to be used on 23/04/1993
whereas the respondents use is since 01/04/1993 which is definitely prior to the
applicants.
44.
The applicant is not a person aggrieved and has no locus to file the
present rectification application. The falsity in the hollow claim of the applicant to
have found the registration of the respondent in 2010, after filing of suit is
manifest. The respondents are carrying on business for two decades under the
trademark “Udhayam” and “GRB’s Udhayam” and the proceedings initiated by
the applicant is only out of malafides and trade jealousy.
45.
The respondents have filed sufficient documents since the year 1985.
This also proves the existence of M/s Udhayam Dairy Farm and the use of the
expression “Udhayam” as early as 1984.
From 1993, the respondents
advertisements are produced which would have been in the knowledge of the
applicants. In the year 1994, a search was conducted and the search report is a
proof of their use of the trademark “Udhayam”. They have received several
certificates appreciating their quality goods. All the above averments have been
supported by necessary documents.
46.
We have heard both the counsel and have carefully considered their
arguments and have gone through the pleadings and documents.
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47,
The matters relate to two trademarks namely “Udhayam” ghee (label
mark) under No.785124 in class 29 and “GRB Udhayam” ghee (label mark)
under No.1077180 in class 29.
48.
The application under No.785124 in class 29 was filed on 06/01/1998
claiming user since 01/04/1993 for the trademark “Udhayam” ghee.
For the
trademark “GRB Udhayam” ghee the application under No.1077181 in class 29
was made on 31/01/2002 claiming user since 01/04/1993.
49.
We shall first decide the issue, whether the applicant is a person
aggrieved and has a locus to file an application for rectification. In this instant
case, there are two civil suits filed by the applicant against the respondent as well
the respondent has filed a civil suit against the applicant. Both the suits are
pending. The applicant as a person affected by the respondents use has filed a
suit as well the applicant is aggrieved because of the suit filed by respondent
based on the impugned registration.
That apart the other contention of the
respondent is that the applicant Mr. Sudhakar is not the sole proprietor of the
trademark and has no locus to file this application and therefore not materiable.
We are not able to accept this contention as the respondents themselves have
filed the suit against M/s Shri Lakshmi Agro Foods Pvt. Ltd. represented by its
Director Mr. S. Sudhakar. We do not find any reason to accept the respondent’s
objection. The applicant is therefore a person aggrieved and has a locus standi
to file and maintain an application for rectification.
50.
Next we will deal with the applications. The application under No.785124
for the trade mark Udhayam Ghee was filed on 06/01/1998 claiming user since
01/04/1993.
The 1st invoice is dated 21/12/2001 and not earlier.
The
respondents forcefully argued that they had been using the name Udhayam as
their trading style at least since 30/04/1993 and therefore they have proved their
use as claimed in the application. The other document is the issuance of Agmark
Certificate issued by the concerned authorities which is dated 05/06/1998. This
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is subsequent to the date of user claimed. There are various advertisements.
The various advertisement evidence will not prove the use. Use means actual
use/commercial use and not advertisement which will not evidence the
respondent’s use.
51.
The respondents have failed to prove the use as claimed in their
application for registration. The respondents that apart has filed few labels of the
impugned trade marks. We do not find any label mark used by the respondents.
It is further necessary to mention that this Board has not allowed the trade mark
to continue in the register for mentioning wrong date of use. The impugned trade
mark therefore deserves to be removed.
52.
The other application under No.1077180 is for the trade mark “GRB’s
Udhayam” in class 29. This is also a label mark with the device of cow. The
letters GRB is written in a small font and the mark Udhayam is in a bigger font.
The application has been made on 31/01/2002 claiming user since 01/04/1993.
There are few advertisement receipts issued by the marketing companies which
is of the year 2004. This receipt will not prove use of the mark. Even if we are to
consider those receipts that is only of the year 2004 and not earlier ie. of the year
1993 as claimed in the application for registration. Therefore there is no proof of
their use since 01/04/1993 as claimed.
53.
The respondents have not given any reason for their adoption of the trade
mark “Udhayam” except that they had been carrying on business under the
trading style Udhayam Dairy Farm. On perusal of the records, it is seen that the
respondents had been carrying on business under the name Udhayam Dairy
Farm between the period 1991-1993. Thereafter it has been under the name
G.R. Balasubramaniam and Brothers, G.R. Balasubramaniam and Co., G.R.
Balasubramaniam, GRB Dairy Foods, GRB Dairy Foods Pvt. Ltd. When that is
the case, the respondent’s statement that they have adopted the trade mark
“Udhayam” from the trading style cannot be accepted.
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54.
The other contention of the respondent was that the goods are different.
In our considered opinion the trade channels are the same when that is so then
the class of customers are to be considered. The customers who purchase the
goods of the applicants and the respondents belong to all class ie. literate and
illiterate. Therefore, there is every possibility that there may be confusion among
the public. The respondent’s contention does not hold good.
55.
Considering the fact that the respondents have not satisfied the Registrar
as regards the date of use, the mark deserves to be removed for wrong date of
user. This Board has taken this view in a number of judgements and the same
applies to this case too.
In view of the above, we allow the rectification
application with a direction to the Registrar to cancel the trade marks registered
under No.785124 and 1077180 in class 29. There shall be no order as to costs.
(SANJEEV KUMAR CHASWAL)
TECHNICAL MEMBER
Reportable : YES / NO
(S. USHA)
VICE-CHAIRMAN
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