The Judgment of the Court was delivered by
Prabir Kumar Majumdar, J.:— This is an application under Section 46 of the Trade and Merchandise Marks Act, 1958 for removal of the trade mark “Vinto” registered formerly under the name of J.N Nichols & Co. Ltd. and now under the name of the respondent No. 1 J.N Nichols (Vimto) Ltd. the successor-in-interest. The petitioner also prays for stay of further proceedings in the application for registration of the trade mark “Wimto” now pending before the Registrar of Trade Marks until the disposal of this application for cancellation of the Trade Mark “Vinto”.
2. The case of the petitioner is that the petitioner carries on business as a bottler of non-alcoholic drinks or beverages under the trade mark “Wim-to” and has been marketing and selling the same in India, particularly, in and around the town of Calcutta since more than last 15 years. In or about January, 1978 the petitioner made an application in this Court under Section 46 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the said Act) being Rose & Thistle v. J.N Nichols & Co. Ltd. . Matter No. 156 of 1978. for an order that the trade mark ‘Vinto’ (Word or device) registered in the name of J.N Nichols & Co. Ltd. under No. 7060, 170440 and 170441 be removed from and or taken off for cancellation from the Register of Trade Marks on the ground that the Trade Marks “Vinto” has remained on the trade mark register in India without any bonafide intention on the part of the owner there of that it should be used in relation to the said gods and for a continuous period of more than 5 years prior to the making of the said application the said trade mark “Vimto” was not in bonafide use and the owner there of had no intention to use the same.
3. This matter was contested and disposed of by an order dated 30th November, 1978 where by an order was made for cancellation of the said registered trade mark “Vimto” and the same was directed to be removed or taken off the Register of Trade Marks as prayed for by the petitioner.
4. It is the claim of the petitioner that the petitioner's trade mark “Wim-to” has been in extensive use in India, in particular, in and around Calcutta. It is also claimed that the said trade mark commands a considerable sale and has acquired distinctiveness as to the goods of the petitioner due to extensive user since more than last 15 years.
5. The petitioner applied for the registration of its trade mark “Wim-to” with the appropriate authority, being the second respondent herein. The respondent No. 1 opposed the petitioner's said application on the ground that the respondent No. 1 is the owner of the registered trade mark “Vinto” and the petitioner's mark “Wim-to” was likely to be deceptively similar to the said registered trade mark “Vinto”.
6. It is contention of the petitioner in the said proceedings for registration of the petitioner's trade mark “Wim-to” that the said mark “Wimto” has a long and extensive user and the respondent's said mark “Vinto” has never been used iit India and certainly not for more than 5 years and one month prior to the date of the petitioner's application for registration. It is also contended that the respondent No. 1 had never any intention to use the said mark “Vinto”. It is also the contention of the petitioner that by the said order dated 30th November, 1978 the trade mark of the respondent No. 1 “Vinto” had been cancelled and was directed to be removed from the Register of the Trade Marks.
7. Now the petitioner is making this instant application for cancellation of the said trade mark “Vinto”. This application has also been made with this object that only there has been an order for removal of the mark “Vinto” from the Register of Trade Marks and consequently the petitioner's application now pending before the Registrar of Trade Marks for registration of the petitioner's mark “Wim-to” cannot be disposed of.
8. The respondent No. 1 has used an affidavit in this proceedings in opposition to the petitioner's application. The case of the respondent No. 1 in short is that the respondent has been registered proprietor of the several trade marks under several registration No. as set out below:—
Sl. No.
Trade Mark
Registration No.
Date
Nature of Goods
1.
VIMTO (word)
7060
29.10.1942
Non-alcoholic beverages and syrups and other preparations for making non-alcoholic beverages.
2.
Vinto (word)
7061
29.10.1942
— Do—
3.
VIMTO (word)
120232
22.3.1946
Dyes and colours suitable for beverages.
4.
VIMTO (Label)
170440
18.8.1955
Non-alcoholic drinks and preparations for making such drinks.
5.
VIMTO (Label)
170441
18.8.1955
Non-alcoholic fruit flavour cord-ials.
9. It is also the case of the respondent No. 1 that in or about 1956/1957 the respondent No. 1 entered into an agreement with various parties including the petitioner giving them licence to prepare and bottle and to sell and distribute the beverages in bottles under the trade mark “Vimto” in the respective territories specified in the respective agreements. The agreement dated 1st July, 1956 between respondents No. 1 and the petitioner lapsed in or about July, 1957. Thereafter on or about 13th August, 1963 the respondent No. 1 entered into the agreement with Rogers & Co. Pvt. Ltd. Bombay, conferring right on Rogers to use the said trade mark in India as a registered user and subject to and upon the terms and conditions mentioned in the agreement. During the period of the agreement the said Rogers was recorded as a registered user of the respondent's said trade “Vinto”.
10. It is the case of the respondent No. 1 that the respondent No. 1 became aware of the illegal use of the trade mark “Wim-to” by the petitioner and immediately thereafter respondent No. 1 called upon the petitioner to cease and desist from manufacturing and selling or offering for sale non-alcoholic beverages under the said trade name, “Wim-to” is likely to be deceptively similar to the trade mark of the respondent No. 1.
11. It is further case of the respondent No. 1 that being apprehensive of the interlocutory proceedings being commenced by the respondent No. 1, the petitioner made the said application under Section 46 of the said Act being Matter No. 156 of 1978 to this Court, inter alia, praying for cancellation or removal of the trade mark “Vinto” registered under the name of the respondent No. 1 under No. 7060, 170440 and 170441. The respondent filed an affidavit in opposition to the said application.
12. It is the case of the respondent No. 1 that due to some mistaken instruction the respondent's Advocate on Record submitted before the Court that he had no instruction to oppose the Application. Accordingly, the petitioner's said application being Matter No. 156 of 1978 was allowed and the said trade mark was directed to be removed from the Register of Trade Marks. The case of the respondent No. 1 is that thereafter in or about September. 1977 it applied for “Vimto” compound from Manchester in England but this had to be discontinued due to restriction on import imposed by the Government of India. According to the respondent No. 1, such restrictions are still in force and have not been withdrawn. It is also the claim of the respondent No. 1 that the trade marks of the respondent No. 1 are associated trade marks and it is not competent for the petitioner to make any application, either the application for registration of this mark or this instant application for cancellation or removal of the marks of the respondent No. 1.
13. It is also the case of the respondent No. 1 that it has entered into the agreement dated 25th February, 1987 with one Shrifam Pharmaceuticals and Chemicals Pvt. Ltd. Bombay for preparation and bottling Vinto beverage as a cordial drink for distribution and sale in the States of Punjab, Haryana. Rajasthan, Gujarat, Maharastra, Karnataka, Kerala, Tamil Nadu and a portion of the Madhya Pradesh. It is the further case of the respondent No. 1 that on the basis of some relaxation granted by the Government of India the said Shrifam Pharmaceutical and Chemicals Pvt. Ltd. had been able to bring the components of said Vinto.
14. There was also some supporting affidavits in this proceedings. One such affidavit is by Jehangir Phirozshaw Dubash, a Director of Rogers & Co. Ltd., Bombay. It is stated in the said affidavit that registration of Rogers as a registered user of the trade marks of respondent No. 1 was approved by the Central Government upto 22nd September. 1984. There are also some other affidavit used in this proceeding, the affidavit of Kasim Naruddin, affidavit of Mohammed Yunus Ansari and affidavit of Awadh Bihari Mishra more or less supporting the petitioner. The respondent No. 1 has however, denied and disputed the allegations contained in the said affidavits.
15. Mr. S.N Mukherjee the learned counsel for the petitioner submits that the said agreement dated 1st July, 1956 made between the petitioner and the predecessor of the respondent No. 1 that is J.N Nichols & Co. Ltd. whereby the petitioner was allowed to prepare bottles and distribute beverages in bottles under the trade mark Vimto lapsed on 1st July, 1957. Which is admitted by the respondent No. 1. On 30th November, 1978 this court made an order on the earlier application of the petitioner directing the trade mark Vimto registered in the name of the respondent No. 1 bearing No. 7060, 170440 and 170441 be removed from the Register, The respondent No. 1 has not filed any appeal from the said order and this order has become final.
16. Mr. Mukherjee also submits that the trade mark Vimto has never been used by the respondent No. 1. The respondent No. 1 has been using the mark “Vinto” for bottling which has been cancelled or directed to be removed by the said order of this Court dated 30th November. 1978, He also submits that in the instant case the petitioner has aduced evidence in the form of the affidavits affirmed by various persons mentioned in paragraph 12 of the petition who have disclosed the fact that during the last 10 to 15 years, the trade marks Vinto or Vimto had not been used by the respondent No. 1 and the trade mark “Wim-to” used by the petitioner was well-known in the market for beverage and soft drinks for the last 16 years or more.
17. Mr. Mukherjee has also submitted that by way of defence the respondent No. 1 has contended that there was actual user of trade mark of Vimto during the relevant period, that there was use of the registered associated trade mark of Vinto or the identical trade mark Vinto during the relevant period. The respondent No. 1 has also submitted that if there was any non-user it was due to certain special circumstances as contemplated in Section 46 of the said Act. In reply to its contention Mr. Mukherjee has submitted that the respondent No. 1 has not been able to substantiate its case as to use of the said trade marks during the relevant period. Mr. Mukherjee submits that the documents such as bill of lading dated 17th October, 1987 or invoice dated 17th October, 1987 cannot be taken as evidence of actual’ user of trade mark “Vinto” since those documents do not show the user in India; the word “Vinto” does not appear in the said document and also the acknowledgement of the documents as annexed to the affidavit in opposition is dated 28th October, 1987 which is long after the date of 5 years and one month before the date of the instant application made by the petitioner which is dated 19th November, 1987 and this document cannot be relied upon by the respondent No. 1 considering section 46(1)(b) of the said Act. It is also the submission of Mr. Mukherjee that the said document contemplated in any event the proposed user of “Vinto” in India but is not the evidence of actual user there of in India or elsewhere.
18. Mr. Mukherjee has also submitted that in its affidavit in opposition the respondent No. 1 seeks to makes a case that the use of a registered associated trade mark of Vimto would amount to actual user of Vinto and the respondent No. 1 has made a reference to the provision of Section 54 of the said Act. Mr. Mukherjee submits in reply that by an order dated 30th November, 1978 passed by this Court, the said trade mark Vinto under the registration Marks 7060, 170440 and 170441 was directed to be removed from the Register. Therefore, according to Mr. Mukherjee, there could have been no use of the registered associated trade marks with effect from 30th November, 1978. It is also stated in the affidavit of the respondent No. 1 that thereafter there has been renewal of the said Trade Mark. Mr. Mukherjee's answer is that such renewal has been made in contravention of the order of this Court and such renewal has been made of a non-existent mark. Therefore, this renewal is void.
19. Mr. Mukherjee has also contended that in another case which the respondent No. 1 seeks to make in its affidavit about the permitted user, the respondent No. 1 has sought to reply on the provisions of Section 48(2), Section 54 and Section 2(m) of the Act and on the affidavit affirmed on behalf of M/s. Rogers & Co. Pvt. Ltd. to show that there was permitted use of the trade marks “Vimto” during the relevant period Mr. Mukherjee submits this contention with regard to the permitted use because Rogers & Co. Pvt. Ltd. was recorded as registered user of the registered trade mark Vimto under No. 7060, 120232 and 170440 and the registered trade mark Vinto 706 till 26th September, 1984.
20. Mr. Mukherjee submits that this trade marks “Vimto” bearing No. 7060 and 170440 ceased to be a registered trade marks in view of the said order passed by this Court dated 30th November, 1978. Therefore, according to Mr. Mukherjee, from the said date the Rogers could not be registered user in respect thereof.
21. Mr. Mukherjee has also submitted that the user if there is any cannot be the permitted use as Vimto ceased to be a registered mark from 30th November, 1978. Mr. Mukherjee has also referred to case reported in 1982 Patent & Trade Mark Cases Volume 2 page 137 which indicates that use of a licensee of any trade mark does not amount to permitted use.
22. With regard to the case of the special circumstances, the argument of Mr. Mukherjee is that the restriction if any, was with regard to the mark “Vimto”. The respondent No. 1 has pointed out that such import restriction shall also be with regard to the components of “Vinto” and as such Vinto could not be in use in India.
23. Mr. Sudipto Sarkar submits that the present application is for removal of mark bearing No. 7061 on the ground of non-user of the mark for five years and one month as contemplated under Section 46(b) of the said Act. He submits that this application is made on 19th November, 1987 and consequently the Court will have to decide whether there was no bonafide use of the marks for five years and one month before that date i.e, the five years before 19th October, 1987. Mr. Sarkar also submits that by reason of restriction imposed in respect of the soft drinks by the Government, no supplies could be made by the respondent in India. It is also the submission of Mr. Sarkar that sometime in October, 1987 the respondent was able to ship Bombay some quantity of consentrate Vimto to a Bombay Company which had been permitted by the Government, and thereafter a contract had been entered into dated 25th February, 1987 between the Bombay Company one Shrifam Pharmaceuticals & Chemicals Pvt. Ltd. and the respondent for preparation and bottling of Vinto. Mr. Sarkar has also referred to certain averments in the affidavits to show that pursuant to the said agreement some quantity of Vimto was sold on 7th October, 1987. Mr. Sarkar has also placed reliance on the affidavit of Rogers & Co. in support of the respondent's case that there has been user of mark Vinto upto 1987. Therefore, there was a bonafide user of the mark Vinto within the stipulated period. Mr. Sarkar has submitted that one bonafide user is sufficient and in support he referred to a decision in (71) R.P.C 23.
24. Mr. Sarkar has also submitted that marks Vinto and Vimto being associated trade marks user of the mark Vimto should be accepted as user under Section 54(1) of the Act. He also contends that such user should be taken into account by this Court. Mr. Sarkar has referred to a decision in the case of (1977)3 IPLR 177 and 1951 (68) RPC 55, 131 the first relating to the user of Lifebuoy being taken as user of “Life” and the second user of Morny in different form as user of capital letters. Therefore, according to Mr. Sarkar the user of Vimto in the Circumstances of the Case, may be taken as also user of the Vinto.
25. Mr. Sarkar has also argued that assuming that there was non-user of the mark then such non-user was only by reason of some special circumstances as contemplated under Section 46(3) of the Act, as, for example, import restriction and not because of any intention to abandon or not use the trade mark. Mr. Sarkar in this connection has referred to a decision of this Court in 1988 (1) C.L.J 337, AIR 1986, Delhi 145 and 66 R.P.C 71 at 79.
26. Mr. Sarkar submits that the import restriction imposed by the Government amounts to special circumstances in the trade.
27. These are the respective submissions of the petitioner and the respondent No. 1. There are a few facts which are not in dispute. The respondent No. 1 or its predecessor in interest had been using the mark Vimto under the registration No. 7060, 170440 and 170441. The petitioner made an application to this Court under Section 46 of the Act for removal of the said marks from the Register or cancellation thereof. By an order dated 30th November, 1978 this Court made an order directing the removal of the said mark under the said registration No. 7060, 170440 and 170441. Therefore, even if there is any user of the said Mark Vimto after the said order dated 30th November, 1978 from which no appeal has been preferred the user cannot be taken as user of Vimto or in any event cannot be taken as user of Vinto as well. The respondent No. 1 has however, contended that after the said order dated 30th November, 1978 there was renewal of the use of the said mark Vimto. If those marks are not in the Register or directed to be removed from the Register by the order dated 30th November, 1978 passed by this Court, then there cannot be any question of renewal and if there was any renewal such renewal cannot be taken as a fact of the user of the said mark Vinto. It also appears that there may be several affidavits in the proceedings made by certain other concerns mentioned in the petition supporting the petitioner's contention. It will appear that there has been some positive evidence as to non-user of the marks Vinto of which the respondent No. 1 claims to be registered proprietor. Even the affidavit filed by Rogers & Co. will not support the case of the use of the mark Vinto of the respondent No. 1. At best such affidavit may be taken as an evidence of the use of the marks Vimto. But that again after the order of Court directing the removal of the marks from the Register of Trade Marks.
28. Mr. Mukherjee has cited a decision of the Supreme Court reported in AIR 1960 S.C 142 to contend that the presence of a mark in the register does not prove its user. It may be possible to conclude that the mark has been registered but from this no inference can be made that the said mark has also been in use. From the affidavit filed in this proceeding there is no positive evidence as to the user of Vinto by the respondent No. 1 in India. It is true that the respondent No. 1 has referred to certain documentary evidence but even those documents do not indicate whether there has been any use of such marks Vinto in India. I have referred to Mr. Mukherjee's contention with regard to the documents and I accept his contention.
29. It is also the case of the respondent No. 1 that there are some special circumstances due to which the respondent No. 1 could not make use of the mark Vinto during the relevant period. Special Circumstances, according to the respondent No. 1 were certain import restrictions. Even if there are certain import restrictions, it is not clear whether such import restrictions are also in respect of the mark Vinto. It is also not certain whether those restrictions are still in operation or they have been lifted or there could be any likely circumstances of the use of mark Vinto of the respondent No. 1.
30. There is also no evidence on record to show that the respondent No. 1 had not abandoned its intention to use the marks as contemplated under Section 46 of the said Act. I find some justification in the argument as sought to be made out by the petitioner from the facts of the case that registered trade marks Vinto registered formerly under the name of J.N Nichols & Co. Ltd., and now under the name of the respondent No. 1, J.N Nichols (Vimto) Ltd. under registration No. 7061 dated 29th October, 1942 should be removed and taken off or cancelled from the Register of Trade Marks.
31. For the reasons aforesaid, this application succeeds. There will be order in terms of prayer (a) of the petition. The petitioner will now be at liberty to proceed with its application for registration of the Mark Wim-to now pending before the appropriate authority under the said Act. There will be not order as to costs.