Case: Himalya Industries, Pune Vs Rajasthan Asbestos Cement Co., etc. Jaipur. Trademark Tribunal

CounselFor Appellant: Mr. H.W. Kane, Advocate and For Respondents: Mr. K.B. Marwaha, Advocate
JudgesU. S. Sharma, SETM
IssueTrade and Merchandise Marks Act, 1958 - Sections 9, 11, 18(1), 46, 56
Judgement DateMay 22, 1990
CourtTrademark Tribunal


U. S. Sharma, SETM

1.Proceedings herein relate to rectification of registered trade mark 'HIMALAYAN' registered under No. 229371 in Class 19. The impugned trade mark stands registered in Part A of the register as from 5th June, 1965 in the name M/s Rajasthan Asbestos Cement Co. also trading as Himalaya Asbestos Cement Products, Jaipur, Rajasthan (hereinafter referred to as 'Registered Proprietor). The mark was registered in respect of Asbestos cement pipes and their fittings included in class 19 and the registered proprietors have claimed user of the mark since 15th March 1965.

On 9th November, 1984, M/s Himalaya Industries, Survey No. 69-a/A-3, Industrial Area, Wanawadi, Pune (hereinafter referred to as Applicants) filed an application for rectification seeking expunction of the aforementioned registered trade mark No. 229371 or in the alternative imposing the territorial limitation to exclude the State of Maharashtra, Karnataka and Goa from the area of operation of the registration of the aforementioned registered trade mark. In the application for rectification and the statement of case filed there with the grounds for rectification of the said trade mark are inter alia;

1. That the impugned trade mark was wrongly registered and also wrongly remaining on the Register in contravention of Sections 9, 11, 12 and 18 of the Trade and Merchandise Marks Act (hereinafter referred to 'Act').

2. That the Registered proprietors have obtained the registration by fraud and by misleading the Registrar of Trade Marks.

3. That the Registered proprietors have never used the impugned trade mark.

4. That the registered trade mark was never used in the States of Maharashtra, Karnataka and Goa and in any case it was never so used for a period of five years one month before the date of the application of rectification.

5. That the applicants and their predecessor in title in business have been honestly and concurrently using the trade mark inter-alia containing the word HIMALAYA in the States of Maharashtra, Karnataka and Goa in respect of the same goods since 1973 and as such they are entitled for concurrent registration of the said trade mark for sale in the aforesaid states.

6. That the existence of the entry on the Register of the said registered trade mark is a wrongful restraint on the applicant's right in their trade mark for their goods for sale in the States in Maharashtra, Karnataka and Goa.

3. The registered proprietor filed a counter-statement denying all the material averments in the application for rectification and contended that the applicants started using the trade mark HIMALAYA, belonging to the registered proprietors, surreptitiously and deceitfully. The registered proprietors further stated in their counter-statement that as soon as they came to know the aforesaid use of the trademark HIMALAYA by the applicants they served them with a notice dated 23rd October 1981 and also initiated a complaint in the Court of Metropolitan Magistrate Bombay.

4. Applicants filed affidavit of Shri Prabhakar Dinkarrao Shinde as evidence in support of rectification. Registered proprietor filed an affidavit of Shri Naval Kishore Sonkhiya partner of the registered proprietor's firm and two more affidavits-one of M/s Himalaya Agencies, Jaipur and other of M/s R. S. Agencies Jaipur both being the Selling Agents of the registered proprietors. The applicants filed five affidavits of (i) Shri Jayantibhai N. Padia proprietor M/s H.N. Padia, Bombay (2) Shri Jayant R. Vera partner M/s Maharashtra Trading Company Bombay (3) Shri Manikant Pratrai Shah proprietor M/s P. Tribhuvandas Bijapur (Karnataka). (4) Mohindra Kumar Chiman Lal Parekh partner M/s C. Ambalal and Co. Badhawar Peth, Pune and (5) Shri G. S. Pathan, Manager M/s Mistriji Traders Kolhapur, as further evidence with the leave of the tribunal under Rule 56 of the Trade and Merchandise Marks Rules, 1959. In rebuttal to the above stated further evidence the registered proprietor filed an affidavit of Shri Ganwarmal, Accountant for their company enclosing therewith six bills as Exhibit I L. 1 to Exhibit I L.6. The case was then set down for hearing. Before the hearing in the matter could have been materialised, the applicants filed another Interlocutory Petition on 12th April 1988 praying therein for (i) taking the applicants affidavit...

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