M.P. No. 147 of 2012 and R.P. No. 1 of 2013 in ORA/14/2004/TM/KOL and ORA/14/2004/TM/KOL. Case: M/s. Haldiram (India) Pvt. Ltd. and Ors. Vs The Registrar of Trade Marks and Ors.. Intellectual Propery Appellate Board Cases
| Case Number | M.P. No. 147 of 2012 and R.P. No. 1 of 2013 in ORA/14/2004/TM/KOL and ORA/14/2004/TM/KOL |
| Counsel | For Appellant: Mr. Amarjit Singh and Mr. Mahendra Rana and For Respondents: Mr. Satish Parasaran, Mr. H.P. Shukla & Ms. Pushpa Menon for R3 to R6 |
| Judges | S. Usha, Vice Chairman and V. Ravi, Member (T) (Trademarks) |
| Issue | Trade Marks Act, 1999 (47 of 1999) - Sections 107(1), 11(1)(a), 11(1)(b), 18, 24, 30(1)(d), 46, 47(1)(b), 56, 83, 84, 84(2), 84(4), 84(5), 92 |
| Judgement Date | April 26, 2013 |
| Court | Intellectual Propery Appellate Board Cases |
Order:
S. Usha, Vice Chairman
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This original rectification application is to expunge and remove the trademark registered under No. 330375 in Class 30 under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as 'the Act'). The brief facts of the case are -
The trademark 'Haldiram Bhujiawala' was invented in the year 1941 which was adopted by Mr. Ganga Bishan, in respect of his business for the manufacture and sale of sweets, papads and saltish articles. On account of the quality of the products, the trademark 'Haldiram Bhujiawala' acquired popularity in a short span of time. Mr. Ganga Bishan expanded his business to other cities including Kolkata.
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In 1956, Mr. Ganga Bishan took his sons, Moolchand, Rameshwar Lal and Sati Das as partners in the firm, Haldiram Bhujiawala, also trading as M/s. Chandmal Ganga Bishan. The trademark, 'Haldiram Bhujiawala' in the course of trade became an asset of the partnership firm. With effect from 10.11.1958, Mr. Rameswar Lal retired from the firm leaving all assets and liabilities of the firm including goodwill in the hands of the continuing partners. Mr. Shiv Kishan, grandson of Mr. Ganga Bishan was admitted to the partnership firm by a deed of partnership dated 02.01.1959. After retirement, Mr. Rameshwar Lal shifted to Kolkata and was permitted to use the trademark 'Haldiram Bhujiawala' in Kolkata only by Mr. Ganga Bishan.
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Mr. Sati Das retired from the partnership firm leaving all assets and liabilities of the firm including the goodwill in the hands of the continuing partners and the partnership was reconstituted vide partnership deed dated 31.10.1969 whereby Mrs. Kamala Devi wife of Mr. Rameshwar Lal was included as a partner in the said firm. Mr. Ganga Bishan, Mr. Moolchand, Mr. Shiv Kishan and Mrs. Kamala Devi thus became partners in the firm known as Haldiram Bhujiawala also trading as 'Chandmal Ganga Bishan' with effect from 31.10.1969.
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In 1965, a trademark 'Haldiram Bhujiawala HRB (logo)' as represented in 'V' Shape was conceived by Mr. Ganga Bishan. On 29.12.1972 an application for registration of the said trademark was filed by the said firm under No. 285062 for the whole of India.
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In 1973, Mr. Rameshwar Lal claiming to be the partner of Haldiram Bhujiawala filed a Civil Suit in S. No. 1540 of 1973 before the City Civil Court, Kolkata against M/s. Haldiram Madanlal. In the said suit, Rameshwar Lal admitted that Haldiram was his father's nick name. In the said suit, Mr. Ganga Bishan (father of Rameshwar Lal) the proprietor of the trademark, 'Haldiram Bhujiawala' had stated that he permitted Mr. Rameshwar Lal to use his nick name Haldiram for his firm in Kolkata.
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The trademark Haldiram Bhujiawala as well as the 'V' shape HRB logo was continuously used by Mr. Ganga Bishan and then by the partnership firm Haldiram Bhujiawala also trading as M/s. Chandmal Ganga Bishan since 1941. Therefore, the firm is the prior adopter and user of the trademark Haldiram Bhujiawala/ Haldiram Bhujiawala - HRD logo in V-shape device.
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In November, 1974, the partnership firm between Mr. Ganga Bishan, Mr. Moolchand, Mr. Shiv Kishan and Mrs. Kamala Devi was dissolved. On dissolution, Mr. Moolchand acquired the exclusive right to use the trademark, Haldiram Bhujiawala in any manner for the entire country except the State of West Bengal. Mrs. Kamala Devi was given the right to use the trademark, Haldiram Bhujiawala in respect of the territory of West Bengal since Mr. Rameshwar Lal expressed his desire to settle down in Kolkata and to look after his business of Haldiram Bhujiawala.
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In view of the family understanding/arrangement, Mr. Rameshwar Lal was to take over the business at Kolkata leaving the entire country to the exclusive use of Mr. Moolchand. On dissolution of the firm, Mr. Ganga Bishan and Mr. Shiv Kishan retired, Mrs. Kamala Devi was left with no right, title or interest in the business of the firm as per the family arrangement.
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In 1964, Mr. Rameshwar Lal entered into a partnership with Mr. Ram Kishan Aggarwal and Mr. Pragdas Aggarwal under the name and style of M/s. Rameshwar Lal Ram Kishan. The terms were recorded in the deed of partnership dated 30.03.1965. The said firm was subsequently changed and Mr. Shiv Rattan Aggarwal was included as a partner in the firm Rameshwar Lal Ram Kishan by deed dated 03.04.1968. On retirement of Mr. Ram Kishan, the firm name was changed to M/s. Rameshwar Lal Shiv Rattan. This firm continued till 05.11.1995.
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On dissolution of the firm M/s. Haldiram Bhujiawala a family arrangement was entered into where Mrs. Kamala Devi wife of Mr. Rameswar Lal was to carry on business under the trademark Haldiram Bhujiawala only in West Bengal. Therefore, Mr. Shiv Ratan retired from M/s. Rameswar Lal Shiv Ratan where it was decided that Mr. Shiv Ratan shall not carry on any business under the trademark "Haldiram Bhujiawala" at Kolkata. This arrangement of Mr. Moolchand carrying on business in all the territories except West Bengal and Mrs. Kamala Devi in West Bengal continued from 1974 to 1999.
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In June/July, 1999, Mrs. Kamala Devi for the first time dishonestly and mala fidely raised a dispute about her cessation of partner, in the civil suit No. 635 of 1992 before the Hon'ble High Court of Delhi. In fact, the registered proprietors of the impugned trademark i.e., Mrs. Prabhu Shankar, Mr. Ashok Kumar, Mr. Mahesh Kumar, Mr. Sharad Kumar (Minor) represented through his mother and natural guardian Mrs. Sobha Aggarwal have admitted the retirement of Mrs. Kamala Devi and the consequential dissolution of the firm Haldiram Bhujiawala also trading as M/s. Chandmal Ganga Bishan in various proceedings.
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Subsequent to the dissolution of the firm and the declaration made by Mr. Rameswar Lal in November, 1974, an application for registration of the trademark "Haldiram Bhujiawala" represented in an identical V-shape logo device as was used by the firm, was fraudulently made by Mr. Rameshwar Lal and Mr. Prabhu Shankar trading as Haldiram Bhujiawala under No. 330375 in Class 30. The material fact that Mr. Rameshwar Lal was permitted to use the trademark Haldiram Bhujiawala only in the State of West Bengal was concealed, suppressed and not disclosed before the Registrar of Trade Marks at the time of registration.
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The impugned application for registration was filed by Mr. R.N. Prabhakar, advocate who is also the advocate-on-record for the applicant who filed the application under No. 285062. At the time of filing the instant application for registration, Mr. Rameshwar Lal and Mr. Prabhu Shankar were aware of the applicants registration and their use since 1941. The advocate Mr. R.N. Prabhakar was also aware of the use and registration and also about the territorial restriction. Therefore, there was fraud played by the respondents to obtain registration. The registration has been obtained by stating wrong date of user as 1958 whereas the mark Haldiram Bhujiawala with the device of HRB logo as represented in V-shape device was conceived and designed only in the year 1965 by Haldiram Bhujiawala trading as Chandmal Ganga Bishan. The said mark was neither distinctive, nor capable of being distinguished and therefore, was not registerable. The respondents were not the proprietors of the trademark.
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During examination of the application, the conflicting mark under No. 285062 was cited by the Registrar. Mr. R.N. Prabhakar, advocate replied to the Registrar that no application was pending except for this present application. In order to overcome the objection, a false representation was made to the Registrar that the applicant was the only firm trading under the name of Haldiram Bhujiawala at Calcutta. All material facts were suppressed before the Registrar. As a matter of fact, on the date of filing of the application, the mark was not used by Mr. Rameshwar Lal and Mr. Prabhu Shankar and therefore, the date of user claimed in the application as 1958 is a false statement.
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The evidence filed by M/s. Haldiram Bhujiawala also trading as M/s. Chandmal Ganga Bishan in support of application No. 285062 was produced before the Registrar in support of application No. 330375. It is a matter of record that the application under No. 285062 was filed in the year 1972 for the whole of India, but later amended excluding the State of West Bengal as per the family arrangement.
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The impugned application was filed on 02.11.1977 claiming false date of user as since 1958. The registration is likely to cause confusion and deception and is thus violative of Section 11(1)(a) of the Act.
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Ms. Ganga Bishan died in the year 1980. In the year 1983, the applicants Mr. Manoharlal Aggarwal, Mr. Shiv Ratan Aggarwal and Mr. Madu Sudhan Aggarwal trading as Haldiram Bhujiawala expanded their business by opening a retail showroom at Chandini Chowk, Delhi under the said trademark. The family members namely, Mr. Rameshwar Lal, Mrs. Kamala Devi and Mr. Prabhu Shankar were present in the inaugural function.
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In the year 1985, Mr. Moolchand who acquired the exclusive right to use the trademark died leaving behind the applicants 2 to 5, the legal heirs who acquired the exclusive right to use the trademark. The legal heirs applied to the Registrar of Trade Marks to record their names as subsequent proprietors of trademark No. 285062. The request for change was filed by Mr. R.N. Prabhakar, advocate who was acting for Mr. Rameshwar Lal and Mr. Prabhu Shankar in connection with the impugned trademark No. 330375. The said recordal was allowed in the year 1987.
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Subsequently, the four sons of Mr. Moolchand, the applicants 2 to 5 herein incorporated a company viz., M/s. Haldiram India Pvt. Ltd. They filed a further request for recordal of the name of the 1st applicant as subsequent proprietor of the trademark No. 285062.
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It is pertinent to mention that Mr. Prabhu Shankar ceased to be a partner in the firm, Haldiram Bhujiawala at Kolkata, post registration of the mark No...
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