1. This will dispose of an application for rectification filed on 26-8-1983 by M.J Exports Private Ltd., 113, Jolly Makers Chambers No. 2, 11th Floor, Nariman Point, Bombay-400 021 (hereinafter referred to as “the applicants”) to rectify the Register by expunging therefrom the entry relating to Trade Mark No. 141962 registered in the name of Sunkist Growers Ins., 707, West Fifth Street, in the city of Los Angeles, State of California, United States of America (hereinafter referred to as “the registered proprietors”).
2. The grounds of application for rectification are the same as contained in Sections 46(1)(a) and (b) of the Act which briefly, are as follows:
(1) That on or about 27th day of October, 1980, the applicants have applied for registration of their trade mark “Sunkist” under Application No. 378383 in Class 29 in respect of canned or bottled fruit juices, syrups, jams, marmaladas and preserves and since then they have been using the said trade mark on their various products. The applicants are, therefore, aggrieved persons to make this application.
(2) That the trade mark “Sunkist” was registered without any bona fide intention on the part of registered proprietors that should be used in relation to those goods by them and that there has in fact been no bona fide use of the trade mark in relation to those goods by any proprietors thereof for the time being up to a date one month before the date of application; or
(3) That up to a date one month before the date of the application, a continuous period of five years or longer had elapsed during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being.
(4) That to the best of the applicants' knowledge, the registered proprietors have not sold or not selling any goods under the said trade mark and there is clear intention on the part of registered proprietors to abandon or not to use the said trade mark “Sunkist” in relation to the goods to which the said trade mark is registered.
3. On 11-2-1985, the registered proprietors filed a counter-statement denying the allegations of the applicants. They have also stated that the applicants are not aggrieved persons. The evidence in support of application for rectification is filed by way of an affidavit dated 19-9-1985 by R.C Chakravarty, Director of applicants' company.
4. The evidence in support of registration has been filed by way of an affidavit dated 7-2-1986 by Mr. William G. Anderson, Assistant Secretary of the registered proprietors' company along with Annexures A and B. Annexure A is consisted of copies of some invoices, orders, letters in support of sale figures as given in Para 4 of the said affidavit and Annexure B is consisted of a few copies of pamphlets and copies of the annual reports of registered proprietors' company for the years 1981, 1982 and 1983.
5. No evidence in reply has been filed.
6. On completion of evidence the matter was set down for hearing.
7. The matter came up for hearing before me on 3-12-1990 when Mr Rajendra Kumar, advocate instructed by M/s Remfry & Sagar, Delhi appeared for the registered proprietors and none appeared for the applicants.
8. I may mention here that prior to this date, a hearing in this matter was fixed on 22-2-1990 before the Deputy Registrar of Trade Marks, Shri C.S Rao, who has already retired from service on 31-7-1990. It appears that both the parties appeared before him on that day. As there was likelihood of compromise between the parties, Mr. C.S Rao could not pass order and thereafter he retired on 31-7-1990. Hence, fresh hearing before me in the matter was fixed on 31-12-1990 and both the parties were duly informed. That is how the case came up for hearing before me on 3-12-1990.
9. At the hearing before me on 3-12-1990, Mr. Rajendra Kumar, advocate submitted that the registered proprietors were a large company and they are dealing in varieties of goods falling in Class 29, hence question of deleting certain goods from its specification of goods to accommodate the applicants as desired by them did not arise. The registered proprietors have already intimated by their agents' letter dated 13-3-1990, that they did not agree to rectify the mark as suggested by the applicants. As the matter is not likely to be compromised, I have no alternative, but to decide the matter on the basis of evidence on record and on the basis of arguments advanced as the hearing before me.
10. An application for rectification of the register can be filed only by a “person aggrieved”. It has been held that “persons who are aggrieved, are persons who are in some way of the other substantially interested in having the mark removed from the register, or person who would be substantially damaged if the mark remains”, and that it is very difficult to frame a nearer definition than that Powells trade mark (1892) 10 RPC 195. It is also well settled that the person aggrieved must manufacture or deal with the same class of goods to which the registered trade mark relates and that there shall be a reasonable possibility of his finding occasion to use it.
11. In the instant case before me, the applicants have filed an affidavit by R.C Chakravarty dated 19-9-1985 in support of application for rectification. In Para 6 of the said affidavit the applicants have stated that their company is carrying on established business as exporters, importers and manufacturers of various goods including canned and bottled fruit juices, syrups, jams, marmaladas, preserves, etc. In Para 8 of the said affidavit they have stated that their application for registration of trade mark “Sunkist” is pending registration under Application No. 378383 fur the aforesaid goods falling in Class 29. In Para 9 of the said affidavit they have stated that they are using the said trade mark since 1981 in course of trade.
12. From the facts stated above, it is clear that the applicants are dealing in similar goods as of registered proprietors and their marks are identical and further due to presence of the impugned mark on the register, their application for registration is pending registration. Hence, there is no doubt that the applicants are “persons aggrieved” and are qualified to initiate the rectification proceedings.
13. As seen from the grounds of rectification, the application have mainly sought to rectify the mark on the grounds mentioned in Sections 46(1)(a) and (b) of the Act vide paras 2 and 3 of the grounds of rectification mentioned above.
14. Firstly I shall deal with applicant's grounds taken by them under Section 46(1)(b) of the Act.
15. The five-year period of non-use as mentioned in Section 46(1)(b) of the Act should be counted backwards from one month prior to the date of application for rectification.
16. The Applicants in this case have filed their application for rectification on 26-8-1983. Thus the relevant period of none-use in this case is 26-7-1978 to 26-8-1983 and not the earlier period. Thus if there was any use of the impugned mark between 26-7-1978 to 26-8-1983, then the mark stands and cannot be removed on the grounds mentioned under Section 46(1)(b) of the Act.
(i) Trade Mark of James Green, In re (1921) 38 RPC 155:
In the said case, on 3-3-1920 (p. 156, line 20) applicants took out a notice of motion for removal of respondents' mark, Alladin on ground of non-user of such mark after 1904 (p. 156, line 10).
“Now it is admitted that the material period of five years from the purpose of that section is in this case the period from 3-3-1915 to 2-3-1920, which was the date of notice of motion to rectify….” Mr. Justice Sargant p. 161 line 36.
(ii) Nodoz Trade Mark 1962 RPC 1:
In this case, on 4-12-1957 an Australian firm made an application for the removal of mark “Nodoz” registered in the name of an American firm on the ground of non-use of the mark since its registration in October 1950. P. 2, lines 9 to 19. (1st para of judgment of the Registrar, Dr. R.G Atkinson).
“The mark was registered in 1950 so that there were more than 5 years between the date of registration and the date of application and it was necessary, therefore, for the applicant to show that for a period of 5 years or 5 years and one month, before the date of filing of the application, which was in December 1957 there was no bona fide use of the mark in relation to goods by any proprietor for the time being.”
(iii) Hermes Trade Mark 1982 RPC 425:
“The application to rectify is made under Section 26(1)(b) of the Trade Marks Act [our Section 46(1)(b] on the ground of non-user by their registered proprietor in the five years immediately preceding one month before the date of application. The application for rectification was dated 18-4-1977, therefore the relevant five years period is five years from 19-3-1972 to 18-3-1977.”
17. The five-year period in Section 46(1)(b) is a span of time and any time and any bona fide use of the mark, large or small in course thereof would save the mark from its removal from the register.
18. In Halsbury's Laws of England, it is stated “Whether there has been bona fide use sufficient to prevent a trade mark from being taken off the register depends, first on whether there has been use and secondly whether that use was bona fide. The better view seems to be that even a single act of sale properly proved, will suffice to constitute use.” 47 Halsbury's Laws of England, 4th Edn., Para 111 at p. 80 and the cases cited in support thereof are Nodoz Trade Mark 1962 RPC 1 and Revue Trade Mark 1979 RPC 27.
19. In “Nodoz” Trade Mark mentioned above, it is stated “it may well be, of course, that in a suitable case, one single act of user of the trade mark may be sufficient. I am not saying for a moment that this is not so, but in a case where one single act is relied on, it does seem to me that the single act ought to be established, if not by conclusive proof, any rate, by overwhelmingly, convining proof” 1962 RPC p. 1 at p. 7. Wilberforce, J. (as he then was) p. 7 lines 37 to 40.
20. It is settled that bona fide is not used in contradiction to “mala fide”. The use must be genuine, as judged by commercial standards, [Electrolux v. Electrox (1954) 71 RPC 23. If the primary purpose is not to trade under the mark but merely to validate the registration, the use is not bona fide.
21. Use of the mark in Section 46(1)(b) means the use thereof in course of trade but the section does not stipulate that such trade should take place in any particular place in any particular market or trade in such market should be open, free or unrestricted to the public at large. Sale of goods in restricted, limited and/or controlled market is nevertheless sale AIR 1968 SC 478, (1972) 1 SCC 23 , AIR 1972 SC 87, (1978) 1 SCC 520 , AIR 1978 SC 449, AIR 1986 SC 1960.
22. While applying the aforesaid principles and observation to the facts of this case, I find that the registered proprietors have filed an affidavit dated 7-12-1986 in support of registration. Mr Rajendra Kumar, the learned advocate appearing for the registered proprietors invited my attention to Paras 4 and 5 of said affidavit. They are reproduced as under:
“(4) Goods bearing my Company's trade mark and corporate name SUNKIST have been sold throughout India for many years although the volume of goods sold has been restricted as the import of fresh, frozen and canned food items (except for research purposes) into India is prohibited and has been for many years.
I set out below the sale figures of my company's goods in India under the trade mark and corporate name SUNKIST during the period 1977-1978 and 1981-1982.
Year Value in US$ 1977-1978 1,16,275.23 1978-1979 1,28,470.77 1979-1980 10,418.50 1980-1981 1,15,944.90 1981-1982 1,30,952.00
I annex hereto collectively marked as Exhibit A copies of some invoices and order letters in support of the sales figures mentioned above.
(5) My company's goods sold under the said trade mark/corporate name have been advertised in India.
I annex hereto collectively marked as Exhibit B a few copies of pamphlets and copies of the annual reports of my company for the years 1981, 1982 and 1983.”
23. From the aforesaid statement made in Paras 4 and 5 of the said affidavit and documents filed, it is established that the registered proprietors have used the impugned mark during the relevant period of 5 years in course of trade, in whatsoever market was available to them. Further, the sale figures shown in Para 4 of the said affidavit is not just to validate registration but they bad bona fide and genuine sale.
24. Mr Rajendra Kumar, learned advocate for the registered proprietors further submitted that during the relevant period the government policy was not to allow import of foreign goods relating to all consumer items howsoever described, of industrial, agricultural or animal origin and he produced list of banned items under Import and Export Policy of Government of India relating to the years 1979 to 1988, and he invited my attention to item “consumer goods” which was listed in banned items throughout all the period. He further submitted that some of their goods which were not banned, could not be sold in India as tariff duty was so high that it was impracticable to send those goods into India and in this connection he produced few latest pamphlets on Customs Tarriffs (Budget Edition) of Government of India for my perusal. Thus, Mr. Rajendra Kumar, the learned advocate submitted that due to import policy and import control and high tariff duty of Government of India the registered proprietors could not sell most of their goods in India which creates special circumstances under Section 46(1)(3) of the Act.
25. Under Section 46(1)(3) the non-use of mark should be due to special circumstances and “not to any intention to abandon or not to use the mark at the relevant time”.
26. In Bali Trade Mark 1966 RPC 387 Ungead Thomas J. cited and followed the observation of Evershed, L.J (as he then was) in the celebrated Manus case at 404/405 as follows:
“The phrase special circumstances in the trade” was considered in Aktiebolaget Manus v. R.J Fullweed and Bland Ltd. (1949) 66 RPC 71, where Evershed, L.J delivered a judgment in which Lord Greene and Somervell L.J concerned. On p. 79 he stated:
“…it is not, in my view, necessary that the “special circumstances” should be such as to afflict all traders equally or, indeed, to afflict all of them at all. It is important to my mind to note that (he relevant phrase is used in contrast to that which immediately follows — “and not to any intention not to use or to abandon the trade mark”. In that context it seems to me (without attempting any precise definition) that the words must be taken to refer to circumstances which are “special” in the sense of being peculiar or abnormal and which are experienced by persons engaged in a particular trade as the result of the working of some external forces as distinct from the voluntary acts of any individual trader. According to such a test no less than (in my view) the ordinary and common sense meaning of the words, the impact of war condition making impracticable the ordinary usages of international trade would amount to special circumstance in the trade: and if the non-user of his mark by a particular trader was in fact due to the effect upon bis business of those conditions, then be would, in my view, be within the protection of sub-section (3).”
27. In A.J Vulcan v. V.S.V Palanichamy Nadar AIR 1969 Cal 43 P.B Mukherjee, J. (as he then was) see paras 11, 12, 14 and 19.
“…the non-use must be due to certain external forces such as the war or prohibitive tariff and not due to any voluntary act or ommission on the part of the trader.”
28. In Bombay case AIR 1979 Bom 191 where Kantawala, J. held that import restrictions by the Government constitute special circumstances within the meaning of Section 46(1)(3) justifying non-use of the trade mark. See head note and para 7.
29. In Philip Morris Belgium S.A… v. Golden Tobacco Co. Ltd.…. AIR 1986 Del 145 where Jagdish Chandra, J. held where non-use of trade mark due to import restriction imposed by the Government of India on cigarettes, would constitute special circumstances, see head note A and para 6.
30. Furthermore, non-use of a mark during the statutory period is not necessarily abandonment of the mark by the owner thereof for the owner may not use his mark when there is no demand for his goods. Chitty, J. in Mouson & Co. v. Boehm LR (1884) 36 Ch. D. 398 at p. 406 had this in mind when he said:—
“A man who has a trade mark may properly have regard to the state of the market and the demand for the goods; it would be absurd to suppose he lost his trade mark by not putting more goods on the market when it was glutted.”
31. From the facts mentioned above and evidence filed in this case by the registered proprietors, I am satisfied that the non-use of the impugned mark in relation to most of items of consumer goods was due to special circumstances such as import policy of consumer goods, import control and tariff duty of Government of India and not the voluntary act on the part of registered proprietors.
32. If import policy, import control, licensing policy or tariff duty make it impracticable or unviable in the commercial sense for the owner of the mark to use the mark in the country concerned, then such policy, licence or duty would constitute special circumstances for non-use of the mark. I, therefore, hold that the registered proprietors in this case are entitled to claim protection under Section 46(1)(3) of the Act specially when the applicants failed to make out a case that the non-use if any was international and voluntary act on the part of registered proprietors in this case. In view of above reasons, applicants' objections under Section 46(1)(b) are not sustained.
33. Now, 1 shall examine the grounds of rectification stated in paras 2 and 4 of the grounds of rectification together. The registered proprietors have already filed sufficient evidence to show that they have used the mark in India in whatever markets were open and available to them. They have further stated that due to import policy of Government of India and tariff duty imposed on consumer goods by the Government of India made it impracticable to send their goods in India for sale. In view of above circumstances, it is impossible to infer that the impugned mark was registered without any bona fide intention on the part of registered proprietors that it should be used in relation to those goods by them and that there has, in fact, been no bona fide use of the impugned mark in relation to those goods by them.
34. When the question of abandonment arises, the intention to abandon by the proprietor of the mark must be proved by cogent evidence.
35. Intention cannot be inferred merely from the fact of non-user of a long period of time. Non-user may be due to special circumstances or due to situation of the common market. After all, business is done for earning. Further, the applicants failed to make out their case under these grounds for expunging the trade mark from the register. Hence, applicants for rectification's objections for expunging the impugned mark from the register under these grounds also are not sustained.
36. As the registered proprietors are found protected under Section 46(1)(3) and further they have used the mark for certain goods in whatever market in place open and available to them, question for exercising Registrar's discretion to rectify the mark from the register does not arise.
37. In the facts and circumstances as stated above, I hereby dismiss the application for Rectification No. CAL-426. I further order that the said applicants for rectification, M.J Exports Private Ltd. shall forthwith pay to the said registered proprietors, Sunkist Growers Inc., a sum of Rs 120 (Rupees one hundred twenty only) as costs of these rectification proceedings.
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