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Agha Hyder Hussain And Another v. Omar Khayyam Minertes (Pte.) Ltd., And Another
Factual and Procedural Background
These two related appeals arise from an order of Gokulakrishnan, J. who declined to interfere with a common order of the Assistant Registrar of Trade Marks in M.A.S. Nos. 127 and 128.
The first appellant had a trade mark registered on 1 January 1970 in the name and style "Omar Khayyam Hotel Restaurant and Bar". The respondent, who used the mark "Omar Khayyam Wineries (P.) Ltd.", was invited by the Assistant Registrar to file objections to that registration but did not do so. On 10 January 1970 the respondent applied under S. 46 of the Trade and Merchandise Marks Act, 1958 for rectification (removal) of the first appellant's registered trade mark. The Assistant Registrar allowed the respondent's application; the first appellant resisted and sought relief in the High Court, but Gokulakrishnan, J. declined to interfere. These appeals challenge that decision.
Relevant antecedent facts include a Deccan Chronicle advertisement dated 16 November 1965 by "Omar Khayyam Hotel Restaurent and Bar" asserting adoption and user of the name and style for a catering business and asserting that "Omar Khayyam" formed a principal feature of a trade mark covering bakery, biscuits, pastry, tea, coffee, beer, ale and porter, mineral and aerated waters and other non-alcoholic drinks, wines, spirits and liquors falling under Clauses 30, 32 and 33 of the Fourth Schedule to the Trade and Merchandise Marks Rules 1959. Earlier, on 15 December 1965, the first appellant's assignor applied for registration under Clause 33 for wines, spirits and liquors, claiming continuous use since 1 April 1964.
Legal Issues Presented
- Whether the respondent's application for removal of the registered trade mark, made within a month of registration, was incompetent or premature.
- Whether the respondent qualified as a "person aggrieved" under S. 46(1)(a) of the Trade and Merchandise Marks Act, 1958.
- Whether the court (or Assistant Registrar) should exercise the discretionary relief under S. 46(1) in favour of the first appellant because the respondent began using the trade mark after the first appellant's registration.
- Whether the two cumulative limbs of S. 46(1)(a) were satisfied: (a) that the trade mark was registered without any bona fide intention by the registrant to use it in relation to the goods, and (b) that there had been no bona fide use of the trade mark in relation to those goods up to a date one month before the date of the application.
Arguments of the Parties
Appellant's Arguments
- The respondent's application for removal, being made within a month of the registration, was incompetent or premature.
- The respondent was not a "person aggrieved" within the meaning of S. 46 and therefore had no locus to apply for removal.
- The relief under S. 46(1) is discretionary (the provision uses the word "may"), and because the respondent used the trade mark after the first appellant's registration, the discretion should be exercised in favour of the first appellant.
Respondent's Arguments
- The respondent applied under S. 46 asserting that the first appellant's registration should be removed on the ground that the mark had been registered without bona fide intention to use it for the goods and that there had been no bona fide use of the trade mark in relation to those goods up to the relevant date. An affidavit by the respondent asserted that the first appellant had never used the trade mark in relation to alcoholic or non-alcoholic liquors or goods.
Table of Precedents Cited
No precedents were cited in the provided opinion.
Court's Reasoning and Analysis
The court's analysis proceeds from the statutory provisions and the factual record presented to the Assistant Registrar:
- Statutory framework: The court set out the relevant statutory definitions and effects: the definition of "trade mark" in S. 2(v), the effect of registration in S. 28(1) (exclusive right to use a registered trade mark in relation to the goods for which it is registered), and S. 46(1)(a) which permits removal from the register where (1) the mark was registered without any bona fide intention on the part of the applicant to use it for those goods and (2) there has in fact been no bona fide use of the trade mark in relation to those goods by any proprietor up to a date one month before the application.
- Construction of S. 46(1)(a): The court emphasised that the two limbs in Cl. (a) are cumulative — one limb relates to the registrant's intention (mental factor) and the other to factual use. The section "looks to the past" up to a date one month before the application; therefore an application for removal need not await the passage of one month from the date of registration to be competent. If, at the relevant past date, the registrant had not used the mark in relation to the goods, the second limb is satisfied.
- Application to facts — non-use (second limb): It was not disputed and was supported by affidavit that the first appellant had never used the trade mark in relation to any alcoholic or non-alcoholic liquor or goods in trade or business. The court concluded the second limb of Cl. (a) of S. 46(1) was satisfied.
- Application to facts — lack of bona fide intention (first limb): The appellants asserted a bona fide intention to use the mark for alcoholic and non-alcoholic beverages, but the court found this not substantiated. The 16 November 1965 advertisement related to the hotel, restaurant and bar and did not show stocking or sale of beverages under the "Omar Khayyam" name. The December 1965 application by the assignor for registration under Clause 33 did not affirmatively state that alcoholic or non-alcoholic beverages were being sold under "Omar Khayyam"; it merely applied for registration and claimed continuous use. On this basis the court concluded there was no evidence of a bona fide intention by the first appellant to use "Omar Khayyam" for the relevant goods. Consequently, both limbs of S. 46(1)(a) were held to be proved.
- Person aggrieved: The court analysed whether the respondent was a "person aggrieved". For goods covered by Clause 33 (wines, spirits and liquors) the respondent was properly a person aggrieved because it had been manufacturing and selling Clause 33 goods under the name Omar Khayyam Wineries (P) Ltd. However, for goods covered by Clause 32, the respondent was not engaged in their manufacture or use and therefore could not be regarded as a person aggrieved as regards Clause 32 goods. The court explained this follows the policy of S. 46(1)(a) which is aimed at competition between parties dealing in the same kinds of goods.
- Discretion under S. 46(1): Addressing the appellants' argument that discretion should be exercised in favour of the first appellant because the respondent began using the mark after registration, the court found little substance to this ground. The purported earlier use by the first appellant was not substantiated factually, and therefore did not persuade the court to deny the statutory relief.
Holding and Implications
Holding: The court allowed L.P.A. 2 of 1973 and dismissed the other related appeal. No costs were awarded in either appeal.
Implications:
- Direct effect: The effect of the decision is that the first appellant's registration (so far as challenged in L.P.A. 2 of 1973) is set aside in favour of the respondent's S. 46(1)(a) challenge as analysed by the court; conversely the respondent did not succeed in the other appeal where the finding on "person aggrieved" affected the result. The opinion expressly divides the outcome by the Clauses of the Fourth Schedule: the respondent is a person aggrieved in relation to Clause 33 goods but not in relation to Clause 32 goods.
- No broader precedent announced: The opinion does not claim to establish a new general principle beyond the application of S. 46(1)(a) to the facts; it applies statutory text and established statutory policy (competition in the same goods) to conclude the statutory grounds were made out and that discretion need not be exercised to deny relief.
VCS.
The Chief Justice:
1. These two related appeals arise from an order of Gokulakrishnan, J. who declined to interfere with a common order of the Assistant Registrar of Trade Marks in M.A.S Nos. 127 and 128.
2. The first appellant had registered on 1st January 1970 a trade mark under the name and style of ‘Omar Khayyam Hotel Restaurant and Bar’. The respondent was called on by the Assistant Registrar to file any objections to the application of the first appellant since the respondent was using the mark “Omar Khayyam Wineries (P.) Ltd.” But no objections were filed. The respondent, however, on 10th January, 1970, applied to the Assistant Registrar under S. 46 of the Trade and Merchandise Marks Act, 1958, for rectification of the trade mark of the first appellant, registered and notified in the Trade Mark Journal on the date aforesaid. This application was resisted by the first appellant, but all the same was allowed by the Assistant Registrar. Gokulakrishnan, J. declined to interfere.
3. The facts briefly are these: On 16th November, 1965, there was an advertisement in the Deccan Chronicle by the Omar Khayyam Hotel Restaurent and Bar. This notice said that this name and style had been used by the first appellant for his catering business, at Hyderabad and that the expression ‘Omar Khayyam’ he was using also has a principal feature in his trade mark for the bakery, biscuits, pastry, tea, coffee, beer, ale and porter for mineral and aerated waters and other non-alcoholic drinks, wines, spirits and liquors falling under Clauses 30, 32 and 33 of the Fourth Schedule to the Trade and Merchandise Marks Rules 1959, framed under the Act. The notice further announced that Omar Khayyam Hotel, Restaurant and Bar alone was entitled to use the name and style by virtue of adoption, invention and user as provided under the Act. It warned that any person or persons either initating or in any manner making a colourable limitation of the aforesaid trading style or trade mark would make himself or themselves liable for both civil and criminal actions. Earlier on 15th December, 1965, the first appellant's assignor of the trade mark had applied through its authorised agent one R.D Sinha for registration of a trade mark under Cl. 33 of the Fourth Schedule to the Rules under the Act in respect of wines, spirits, and liquors, in the name of Agha Hyder Hussain National, manufacturer and trader, trading as Omar Khayyam Hotel Restaurant and Bar. It was said there that this mark had been continuously used since 1st April, 1964, in respect of the said goods.
4. S. 46(1)(a) of the Trade and Merchandise Marks Act, 1958, reads—
“(1) Subject to the provisions of S. 47, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application made in the prescribed manner to a High Court or the Registrar by any person aggrieved on the ground either (a) that the trade mark was registered without any bona fide intention on the part of the appellant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of S. 45 apply, by the company concerned, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or
Cl. (b) the proviso and the rest of Section are not necessary to notice for our present purpose.
5. A ‘Trade mark’ as defined in S. 2(v) means a Registered trade mark or a mark usep in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use the mark; and in relation to the other provisions of the Act, except Chapter X, a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to include a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person.
6. Chapter III deals with the procedure for and duration of registration. One of the effects of registering a trade mark is as mentioned in S. 28(1). The Registration of a trade mark in Part A or Part B of the register shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by the Act.
7. Once, therefore, a person gets a particular style registered as his trade mark, he gets exclusive right to the use of the trade mark in relation to the goods, in respect of which it has been registered. Under S. 46 which provides for removal from register and imposition of limitations on ground of non-use, it is open to an aggrieved person to have the trade mark of any person who has registered it, removed from the register on the ground mentioned in Cl. (a) of sub-S. (1) of that section. The two factor constituting that ground, which are cumulative are (1) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him; and (2) that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being upto a date one month before the date of the application. The first limb is a mental factor, the bona fide intention to use the goods covered by the trade mark, and the other relates to factual user of such goods covered by the trade mark registered. So, in order to succeed, the applicant should show (1) that he is an aggrieved person; and (2) that the ground under Cl. (a) of S. 46(1) exista.
8. We may at once state that there is no contraversy before us that the first appellant is never used the trade mark in relation to any alcoholic or non-alcoholic liquor or goods in trade or business under the name and style of ‘Omar Khayyam’ or even ‘Omar Khayyam hotel restaurant and Bar’. There is also an affidavit filed by the respondent to the effect. There can, the both be no dispute that the second limb of Cl. (a) of S. 46(1) has been satisfied by the applicant before the Assistant Registrar of Trade Marks.
9. Before us, in support of the appeal, three grounds are urged-(1) the application for removal of the registered trade mark by the respondent made within a month of the registration is incompetent; (2) the respondent is not a person aggrieved; and (3) in the circumstances, since the opening paragraph of S. 46(1) uses the word ‘may’, the relief of removal is discretionary and since the respondent had used the trade mark after the 1st appellant had his trade mark registered, the discretion should not be exercised in favour of the applicant.
10. As to the first ground, we are of the opinion that S. 46(1) addresses itself to a state of affairs upto a date one month before the date of the application. It, therefore, looks to the past. If the first appellant had not used the trade mark in relation to the goods as its proprietor at any time upto a date one month before the date of the application then, the second limb of Cl. (a) of S. 46(1) is satisfied. The application for removal from the register need not have to wait until one month from the date of registration. There is no justification for such interpretation. Since as we said it is not in dispute that as a matter of fact, the first appellant had not used ‘Omar Khayyam’ as a trade mark in connection with any goods covered by such trade mark at any time prior to 1st January, 1970, obviously, he is hit by the second limb of Cl. (a) of S. 46(1).
11. It is strenuously argued for the appellants that the first part of Cl. (a)of S. 46(1) has not been satisfied for according to the first appellant, he had always intended to use the trade mark in connection with both alcoholic and non alcoholic beverage. But this is not made out. As we said, the advertisement in the Deccan Chronicle dated 16th November 1965 related to Omar Khayyam Hotel restaurant and Bar, and it did not mention any stocking or sale of alcoholic or non-alcoholic beverage under the name and style of ‘Omar Khayyam’. We are not concerned with the question at the moment whether the first appellant can continue to use the expression ‘Omar Khayyam Hotel restaurant” and say that “Omar Khayyam Hotel Restaurant and Bar’ was either manufacturing or selling such beverage under the name and style of ‘Omar Khayyam’. Even the application dated 15th December 1965 to the Assistant Registrar of Trade Marks made by the assignor of the first appellant did not say that he was selling alcoholic or non-alcoholic beverage under the name and style of ‘Omar Khayyam’. All that was mentioned in the application was that he applied for a trade mark in Clause 33 in respect of wines, spirits and liquors in the name of Agha Hyder Hussain. Indian National, Manufacturer and Trader, trading as Omar Khayyam Hotel restaurant and Bar whose address was in Hyderabad and who claimed to be the proprietor thereof and by whom the said mark had been continuously used since 1st April 1964 in respect of the said goods. So it is clear that there was no bona fide intention or otherise on the part of the first appellant that the expression ‘Omar Khayyam’ would be used by him. We are of the opinion therefore that both the limbs of Cl. (a) of S. 46(1) were proved to have been satisfied by the respondent.
12. The second ground of the first appellants is that the respondent was not a person aggrieved. So far as his trade mark registered under Clause 33 is concerned, there is no doubt that he is a person aggrieved. This is because under the name and style of Omar Khayyam Wineries (P) Ltd., since obtaining licence therefor the has been manufacturing and selling goods covered by Clause 33 relating to alcoholic beverage in the fourth schedule to the Rules under the Act. But so far as the goods covered by Clause 32 of that schedule are concerned, we are of the opinion that the respondent cannot be regarded as a person aggrieved. This is because it is not engaged in manufacturing or using of the goods covered by clause 32 in the fourth Schedule to the Rules under the Act. The policy behind S. 46 (1)(a) is that in competition with dealing in the same kinds of goods, the person hit by Cl. (a) should not be regarded as a person aggrieved. This is for the obvious reason that such a person has nothing to do with such goods as in the case of the respondent here.
13. The effect of this finding is that the, appellants will succeed in L.P.A 2 of 1973; But the ground does not affect the respondent in the other appeal.
14. There remains for consideration the last ground. We think that there is not much substance in this ground. The only ground on which it is said that the discretion of the Assistant Registrar should be used in favour of the first appellant is that he used the mark much earlier But as we held, this has not been substantiated factually.
15. Hence L.P.A 2 of 1973 is allowed and the other appeal is dismissed. No costs in either.
VCS.
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