ORDER (No. 53 of 2014)

Transcription

1 INTELLECTUAL PROPERTY APPELLATE BOARD Guna Complex, Annexe-I, 2 nd Floor, 443, Anna Salai, Teynampet, Chennai (CIRCUIT BENCH SITTING AT DELHI) ORA/23/2011/TM/DEL WEDNESDAY THIS THE 23 RD DAY OF APRIL, Hon'ble Ms. S. Usha Hon'ble Mr. Sanjeev Kumar Chaswal Network Solutions Private Limited, AT 32, Grape Garden, 6 th Block, 17 th Main Road, Koramangala, Bangalore Vice -Chairman Technical Member (Trademarks) Applicant (Represented by Mr. Hemant Singh and Mr. Shashi P. Ojha) 1. Network Solutions LLC, Sunrise Valley Drive, Suite 300, Herndon, Virginia 20171, USA. Vs. 2. The Registrar of Trade Marks, Trade Marks Registry, Baudhik Sampada Bhavan, Sector 14, Dwarka, New Delhi Respondents. (Represented by Mr. C.M. Lall and Ms. Nancy Roy) ORDER (No. 53 of 2014) Hon ble Ms. S. Usha, Vice-Chairman The original rectification application for removal of the trade mark Network Solutions registered under No in class 38 and 42 under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act). 2. The applicant is India s leading IT infrastructure solutions integrator. Since October, 1993, the applicant has continuously been offering a range of IT infrastructure solutions, services and software of enterprise customers under its trademark. The name Network Solutions is derived from and indicative of applicant s field of activity which includes IT infrastructure solutions. The applicants became a wholly owned subsidiary of IBM South Asia Holdings

2 2 Limited which was part of the IBM group of companies in The applicant is a bonafide and honest adopter of the trademark Network Solutions and Netsol in India since The applicant has been using the said trade mark continuously and extensively in respect of the aforementioned services. In order to secure statutory right in the said trade mark the applicant filed applications under the Trade Marks Act under No in class 42 and under No in class 38 and the said applications are pending registrations. The applicant is registered proprietor of the trade mark Netsol under registration No in class 9 based on the use since 18/10/1993. The said registration is valid and subsisting. 3. The applicant has a name, recognition, goodwill and business and has thus been awarded with various excellence awards and certification awards. 4. The applicant s trade mark Network Solutions also forms a prominent part of its corporative name and trading style. Since its inception in 1993, the applicant has built an enviable reputation of having designed, deployed and managed many of Indias mission critical networks. With the largest team of certified professionals located in applicants offices at. Bangalore, Kolkata, Chennai, Hyderabad, Mumbai, Pune and Delhi the applicant has requisite expertise and experience to craft unique solutions that leverage IT to produce business results for its customers. By virtue of long and extensive use in India, the applicant s trade mark has acquired immense reputation and goodwill. 5. The applicant is an incorporated company that has existed since the year 1993 and has carried on a substantial business both in terms of business activities and turnover in India for over 17 years. 6. The respondent namely Network Solutions LLC is a corporation organized and existing under the Laws of USA. The respondent is involved in the business of providing networking solutions of computers for communication and data

3 3 management, providing internet services, offering domain name registrations, website design and hosting services, online marketing and digital security services etc. 7. The respondent herein filed an application for registration on 02/12/2003 for the trade mark Network Solutions in India under No in class 38 and 42 on a proposed to be used basis for all goods and services pertaining to providing networking solutions for computers for communications and data management including providing internet services. 8. The Registrar had raised objection under section 9 of the Act and more specifically vide examination report dated 05/01/2004 under section 11 of the Act. 9. Since the Network Solutions is a descriptive mark when used in relation to respondent s goods and services, it is not a registrable trade mark except upon evidence of acquired distinctiveness, which must be established on the date of application for registration by the respondent. Since the mark was proposed to be used on the date of application the issue of establishing distinctiveness does not arise. Therefore, the respondent s application was not registrable and was in contravention of the provisions of section 9 of the Act. 10. The respondent filed its response to the Registrar s objection stating that the trademark Network Solutions being a composite mark, is distinctive interalia on account of use. The respondent also filed an applications in form TM-16 dated 05/03/2004 to amend the basis of the application from proposed to be used to use since 1993 for services falling in class 38 and use since the year 1998 for the services falling in class 42.

4 4 11. The Registrar vide order dated 23/09/2004 ordered the unamended impugned application to be advertised before acceptance. As of the date of the order, respondent s application on Form TM-16 was pending. 12. The Registrar advertised the impugned application in Trade Marks Journal No.1328 (S-V) dated 30/3/2005. However, because the application was ordered to be advertised before acceptance the application was advertised in March, 2005 without such condition, as if it has been accepted. The application was advertised with such condition in Trade Mark Journal No.1370 dated 16/6/2007. In both the advertisements, the application was advertised as proposed to be used. 13. The date of use claimed in trade mark application is crucial since from its implication under section 9, affecting its registerability, the date also determines the right conferred by the registration and is subject to the right of prior user. The registered proprietor cannot interfere with the use of trade mark, even the registered trade mark by another person who is the prior user of the said trade mark. Hence the date as claimed in trade mark application is a critical and material fact. 14. Since the date of first use as claimed in any trade mark application directly impacts the right of the third parties, any amendment by an applicant and in particular one pertaining to use claimed in the application would have far reaching implications qua rights of third parties. Hence no registration may be granted without giving members of the public and most importantly prior users of the mark, the opportunity to oppose or not to oppose whenever a previously advertised date of use is amended by an applicant or whenever an applicant amends its application basis from proposed use to actual use. In such circumstances, the Registrar must exercise his descretion and re-advertise the application inviting opposition.

5 5 15. In August 2007, the respondent filed a civil suit titled Network Solutions incorporation Vs. Network Solutions Private Limited in C.S. (O.S.) No.1444/2007 before the Hon ble High Court of Delhi against the applicant on the basis of the unregistered trade mark for passing off seeking an injunction restraining the applicant from using the trade mark Network Solutions. The suit is being contested and till date no interim order/injunction has been granted by the Hon ble High Court of Delhi. It is pertinent to note that the plaint contained averments to the effect that the respondent s trade mark has been applied for registration on the basis of proposed to be used. The applicant herein have filed their written statement on 04/10/ In the meanwhile on 08/01/2008 the respondent filed a RTI application in order to enquire about the status of the impugned application. The Registrar in response to the RTI application informed vide letter dated 09/01/2008 that the order allowing advertisement of the impugned application dated 23/09/2004 had been withdrawn and the impugned application is sent for hearing again. The respondent thereafter filed a writ petition before the Hon ble High Court of Delhi being WP(C) No.1160/2008 on 13/02/2008 seeking issuance of a writ of mandamus to the Registrar for grant of registration certificate on the grounds that there has been no notice of opposition filed by any person. The respondent further prayed that the effect and operation of the communication dated 09/01/2008 also be stayed. It is pertinent to note that the applicant was not made party to the said writ petition. Vide notice dated 15/04/2008 the Registrar called upon the respondent to show cause as to why the order dated 23/09/2004 should not be withdrawn. The writ petition was dismissed as withdrawn with a direction to complete all proceedings expeditiously and preferably within two months. 17. Pursuant to the order dated 15/05/2008 a hearing was held on 07/10/2008 before the Registrar. The Registrar vide order dated 15/10/2008 ordered withdrawal of the order allowing advertisement dated 23/09/2004.

6 6 18. The respondent once again filed a writ petition being WP(C) No.8237/2008 on 20/10/2008 before the Hon ble High Court of Delhi seeking to quash the order dated 15/10/2008 of the Registrar and requesting to issue a writ of mandamus to the Registrar for grant of registration certificate. Again the applicant was not made a party to the writ petition. The Hon ble High Court of Delhi by order dated 21/11/2008 directed the Registrar to hear the impugned application along with the respondent s application for amendment of use before 18/12/2008. Pursuant to the hearing held before the Registrar on 25/11/2008 and vide order dated 17/12/2008 the Registrar allowed the TM-16 for amendment thus permitted the amendment of the date of use. The impugned application then proceeded to registration with a condition that the respondent can claim no rights to trade mark Network and Solutions separately. The applicant came to know of the amendment applied for by the respondent only when an application for amendment of the plaint was filed by the respondent in CS (OS) No.1444/2007 pending before the Hon ble High Court of Delhi where the applicant is the defendant. The respondent inter-alia sought to amend the plaint to pre-date the date of use in the application for registration of the trade mark, subject matter of the present proceedings. 19. When the applicant learnt that the respondent sought to amend the impugned application of the date of use, the applicant represented to the Registrar vide representation dated 09/01/2009 and reminder dated 19/01/2009 that if such amendment of the use claimed in the respondent s impugned application were allowed the said application must be re-advertised pursuant to the provisions of the section 20(2) of the Act. 20. The Registrar was also informed that the issue is subjudice before the Hon ble High Court of Delhi and the applicant would like to oppose the grant of registration since the user claimed by the respondent is not only false and misleading but is also prejudicial to the applicant. The applicant also stated that

7 7 the grant of registration certificate would be used against the applicant in the pending suit. It is also essential that the certificate is granted only after affording an opportunity to the applicant to oppose it. 21. On inspection of the file, the applicant came to know that the amendment as to the date of use has been allowed by the Registrar and the Registrar has decided to proceed with the grant of registration certificate without re-advertising the said application in the Trade Mark Journal and without giving an opportunity to the public to oppose such grant defeating the very purpose and objective of the Act. The applicant has a basis for challenging both the amended claims of use by the respondent as the said claims are fraudulent, false and have been made merely to overcome and take away the applicant s statutory defence in the suit and also to overcome the objection to registrability of the mark under section 9 of the Act. The amendments completely change the nature of the rights affecting the registrability of the mark and the very dispute between the parties in the suit. Though in the amended plaint the respondent has stated that they had filed the writ challenging the re-advertisement of its application before acceptance, the said writ does not pertain to the issues raised by the applicant nor does it deal with the third parties rights being affected on account of such amendment. 22. The Registrar refused to act on the representations submitted by the applicant and in fact reiterated his decision of proceeding with the grant of registration. Therefore, being aggrieved the applicant filed a writ of mandamus and also for the directions to the Registrar to re-advertise the application. 23. No reply was filed by the Registrar in the proceedings justifying their decision to proceed with the grant of registration certificate without readvertisement of the amended application. Despite the aforementioned writ petition being subjudice before the Hon ble High Court of Delhi, the Registrar proceeded to issue the registration certificate on 21/01/2010. The impugned

8 8 registration is invalid and void ab initio being in breach of principles of natural justice. The amendment not only materially alerts the nature of the application but also affects the rights of the third parties. The members of the public who were and are the prior users are deprived. 24. The amendment not merely of the date of use of the trade mark but of the basis of the application from proposed to use which also has the potential effect of converting an unregistrable trade mark to a registerable trade mark substantially alters the application and renders the prior advertisement without amendment incorrect and false. 25. Since the registration certificate has been issued, the parties of the writ petition were advised for redress of the issue subject to respondent not using the registration certificate to press for interim injunction against the applicant herein. Accordingly the parties recorded the settlement and the writ petition was disposed of vide order dated 30/09/ As per the memo of settlement, the applicant filed an application under section 124 of the Act seeking permission from the Civil Court where the suit was pending and also seeking to frame the additional issue qua invalidity of the trade mark in question in order to enable the applicant to apply to this Board for rectification of the trade mark. The application was allowed and the applicant filed the present rectification proceedings. 27. The applicant is a person aggrieved since the respondent has sought to misuse the improperly granted registration certificate by immediately enforcing it against the applicant by incorporating the plea of infringement and relief for injunction against the applicant. The respondent is also seeking an injunction against the applicant based on respondent s registration.

9 9 28. In view of the above said facts the applicant herein has filed this rectification application on the following grounds (a) The impugned trade mark Network Solutions is a non registerable descriptive mark which pertains to or describes a field of activities and services related to IT infrastructure and computer networks. (b) In view of office objection under sections 9 and 11, the respondent had filed a request on form TM-16 for amending the date of use of the trade mark. (c) Since the grant of registration certificate could be utilized against the applicant in the pending suit it is essential that the certificate is granted only after giving an opportunity to the applicant to oppose it. (d) The registration granted is in contravention of section 9 of the Act. (e) The impugned registration is invalid and voids the issues being in breach of the principles of Natural Justice. (f) The registration has been granted without correcting the misrepresentation in the advertisement. (g) The decision of the Registrar to proceed with the grant without any readvertisement of the impugned application and without affording opportunity to the applicant to oppose the application is a glaring example of arbitrariness in the exercise of discretion by the Registrar defeating the very purpose and objective of the Act. The Registrar is duty bound to maintain the purity of the register.

10 The impugned registration is liable to be cancelled under provisions of the Trade Marks Act. 30. The respondent herein filed their counter statement denying the various allegations made in the rectification application. The respondent s Network Solutions Corporation is organized and existing under the laws of USA. Respondent is a leading provider of internet services offering other things, a full range of services including domain name registration, website design and hosting, services, online marketing etc. 31. The present action concerns dishonest attempt to cancel the trade mark Network Solutions one of the most well recognized and well known trade mark in the field of computer and technology services. Since its inception in 1979, respondent has continuously used this mark and has the prominent part of its trading name. The present cancellation petition has been filed in response to the suit filed by the respondent against the applicant concerning inter alia misuse of the respondent s corporate name and trade mark Network Solutions. 32. The respondent started as a technology consulting company with a focus on application development. With the proliferation of the internet in 1993 the respondent s company was awarded exclusive contract from the US National Science Foundation to register for.com,.net,.org top level domain names. As a result of this Network Solutions trade mark has acquired immense reputation and goodwill throughout the world including India. 33. The Domain Name Server systems is an internet protocol and distribution data base that provides the mapping between domain addresses and internet protocol addresses. 34. During the six year period between 1993 and 1999 the respondent registered more than fourteen million domain names. The respondent is a

11 11 registrant of domain name Network Solutions.com, Network Solutions.net, which were registered as far back on 27/4/1998 and 04/10/1996 respectively. Upon acquiring the exclusive contract for domain name registrations in 1993 the respondent provided its customers with many value added service, one of the most widely known services is the whole service which provided prospective registrants with search capability to look for available domain names. The domain name yahoo.com is registered in the respondent s favour with Network Solutions incorporation since 18/01/ For well over a decade the respondent has been the leader in the field of internet and domain related services are expanded over time and include, but are not limited to, registration of domain names web hosting, services, online marketing and digital security. Because the respondent was the first to develop internet domain names services, today the respondent company is one of the most trusted names in the internet business known in India and globally. 36. The respondent s trade mark Network Solutions and Netsole are registered / pending registration in various jurisdictions around the world including India. 37. Instruction to file this application for registration was communicated to the respondent counsel in India as far back as in April, 2003 but at that time service mark trade mark applications could not be filed. The application has been filed no sooner when the Trade mark Act, 1999 was officially notified hence the filing was delayed. The aforesaid multi class application was therefore filed and advertised in the Trade Mark Journal on 30/03/2005 which was made available to the public on 03/06/2005. The opposition period expired and no opposition was filed. Shockingly, instead of proceeding with registration the application was readvertised vide No.1370 dated 16/06/2007. Once again no opposition was filed during the statutory period. The respondent filed writ petition before Hon ble

12 12 Delhi High Court seeking writ of mandamus to be issued against the Registrar. The writ petition was disposed of on 15/05/ The above application was by mistake filed on proposed to be used basis despite instructions to file convention application in which the date of use was claimed to be on 01/01/1993 and use in commerce since Subsequently appropriate application to amend the date of use was filed by the respondent. 39. The respondent came to know that the applicants are also carrying on business under the trading style Network Solutions. The respondent also came to know about the application for registration of the trade mark VOLP Network Solutions in class 9 bearing application No and in class 16 bearing application No The respondent also came to know that the applicants were not only using Network Solutions as a trade mark but were also using as trade style. The respondent immediately initiated opposition proceedings against the said application for registration. The applicant did not file their counter statement and therefore the application was treated as abandoned. Thereafter the suit was also initiated by the respondent against the applicant. 40. The respondent had further stated the facts which have been narrated in the application for rectification. The respondent has denied various contentions made in the application for rectification. 41. Learned Counsel for the applicant Mr. Hemant Singh submitted that the impugned application for registration was filed on 02/12/2003 proposing to use under No in class 38 and 42. The Registrar had issued an examination report on 05/01/2004 stating that the mark was non distinctive and therefore prohibited under section 9 of the Act and the mark was prohibited under section 11 of the Act as there were conflicting marks on the register. The respondents had replied on 05/03/2004 along with a request on Form TM-16 to amend the date of use. This request was made as the mark on the date of application was

13 13 proposed to be used. The mark was advertised before acceptance in the Trade Marks Journal dated 30/05/2005. The mark was re-advertised in the Trade Marks Journal dated 16/06/ On 23/09/2004, the Registrar ordered the application to be advertised before acceptance and the same was recalled by the Registrar. The respondent had preferred a Writ Petition challenging the said order. The Hon ble High Court directed the Registrar to hear the request on Form TM-16 for amending the date of use. 43. On 17/12/2008, the Registrar allowed the amendment with an observation that by this the nature of the application has materially changed. In May,2008, the respondents filed an application under Or VI Rule 17 CPC for amending the pleadings ie. to amend the date of user to read as used since 1993 and 1998 respectively instead of proposed to be used. 44. On 09/01/2009 and on 19/01/2009, the applicant had written to the Registrar for re-advertisement. The applicant thereafter filed a Writ Petition for a direction for re-advertisement. Both the parties arrived at a settlement and based on the same, the Writ Petition was disposed of on 30/09/2010. The Certificate of registration was issued o 21/01/2010 and therefore it was agreed that the parties will settle the dispute before this Board. 45. Ex A4 at page 9 and 10 of the application is the impugned trade mark application in class 38 and 42. The examination report issued by the Registrar clearly states that the mark refers to quality of goods and therefore section 9 is a bar. On the date of application, distinctiveness was not proved. He then relied on section 32 of the Act. The examination report along with the search report was sent to the respondents stating that the registration was in contravention of section 11 of the Act as conflicting marks were available on the register.

14 The other documents are the website downloads of network trade mark and also the network trading names. The counsel then relied and referred to the reply to the examination report. He pointed out to the averment -- We further submit that the only common element between the cited marks and Applicant s mark is the word NETWORK which is of such a nature that it would be required by traders for bonafide use. Thus no one can have a monopoly over the word and the word as such does not have any trade mark significance. Thus when taken in entirety the Applicant s composite mark NETWORK SOLUTIONS is arbitrary and visually, phonetically and conceptually completely distinct from the cited marks. 47. The counsel further submitted that on the date of application for registration ie. on 02/12/2003 the respondent had proposed to use the mark. Thereafter in the year 2004 along with the reply to the examination report they had claimed to be using the trade mark since 1993 and 1998 respectively. Whereas in the year 2007 when the suit was filed the respondents have stated their user since On 15/04/2008 a show cause notice for withdrawal under section 19 read with Rule 42 was issued and an order dated 15/10/2008 was passed withdrawing the order of advertised before acceptance. 49. The counsel further submitted that there were several proceedings pending and on 21/01/2010 the certificates of registration was issued. Therefore, a direction was issued by the Hon ble High Court of Delhi in the Writ Petition to file a cancellation petition. The counsel also relied on the provisions of section 20 of the Act and submitted that the procedures were not followed as per section 20 of the Act.

15 The counsel further submitted in the order of acceptance, the Registrar has admitted that there has been material alteration made to the application as the date of user has been amended. If that be the case, necessary readvertisement has to be made. The counsel also relied on section 34 of the Act. 51. The counsel relied on the following judgements -- (A) Violation of principles of natural justice. Arbitrary exercise of discretion Mark must be re-advertised. (1) AIR 1965 SC 1767 Lala Shri Bhagwan and another Vs. Ram Chand and another. (2) AIR 1993 SC 935 Mahesh Chandra Vs. Regional Manager, U.P. Financial Corporation and others. (3) 1993 (13) PTC 1 DB Gopal Krishan Vs.M/s. Mex Switchgear(P) Ltd. and another. (4) 2000 PTC 161 Ashoka Dresses Vs. Bonn s shirts and another. (5) 2007 (34) PTC 346 Titan Industries Limited Vs. Registrar of Trade Marks and another. (6) MANU/IC/0003/2009 Raj Rani Aggarwal Proprietor of Bios Laboratory Vs. Parul Homeo Laboratory (P) Limited and the Registrar of Trade Marks. (B) Descriptive marks not registrable without cogent evidence of acquired distinctiveness. (1) 2010 (44) PTC 736 (Del) DB Marico Ltd. Vs. Agro Tech Foods Ltd. (2) AIR 1968 Cal 582 Impetial Tobacco Co. of India Ltd. Vs. Registrar of Trade Marks and another. (3) AIR 1977 Cal 413 The Imperial Tobacco Co. of India Ltd. Vs. The Registrar of Trade Marks and another. (4) 2001 PTC 513 The Gillette Company and Others Vs. A.K. Stationery and Others. (5) 2011 (48) PTC 235 Bhole Baba Milk Food Industries Ltd. Vs. Parul Food Specialties Pvt. Ltd. (6) 1996 RPC 281 British Sugar PLC Vs. James Robertson & Sons Ltd. (7) 2013 (55) PTC 605 (IPAB) M/s Britannia Industries Limited Vs. PepsiCo Inc. and The Deputy Registrar of Trade Marks. (8) 2012 (52) PTC 384 (IPAB) Hindustan Unilever Limited Vs. M/s. Three-N-Products (P) Ltd. (C) Transborder reputation Must be established. (1) AIR 1969 Cal 43 (DB) Aktiebolaget Jonkoping Vulcan Vs. V.S.V. Palanichamy Nadar and others.

16 16 (2) MANU/DE/2040/2010 Roca Sanitario S.A. Vs. Naresh Kumar Gupta and Anr. (3) 1997 PTC 669 Rob Mathys India Pvt. Ltd. Vs. Synthes Ag Chur (4) 1999 PTC 775 M/s. Smithkline Beecham Plc. & Ors. Vs. M/s. Hindustan Lever Limited & Ors. (5) 2009 (41) PTC 234 (Mad) UAS Pharmaceuticals Pty. Ltd. & Anr. Vs. Ajantha Pharma Ltd. (6) 2009 (41) PTC 248 (DB) UAS Pharmaceuticals Pty. Ltd. & Anr. Vs. Ajantha Pharma Limited. 52. In reply learned counsel for the respondent Mr. Chander Lal contended that it was not for the applicant to argue the stage initial stage to the registration as not pleaded or prayed for. 53. The prayer in the Writ Petition was for re-advertisement but the same has not been pleaded in this cancellation petition. The counsel pointed out to the observation made in the Writ Petition. There is no disclaimer mentioned. The applicants were aware of the application for registration and publication and therefore have no right now to seek for a cancellation. 54. The counsel further referred to the various proceedings between the parties ie. the Civil Suit, the Writ Petition etc. The counsel referred to sections 17 and 35 of the Act. 55. Finally the counsel submitted that various amendments were allowed and the same was notified in the Trade Marks Journal No.1432 dated 16/01/ The counsel relied on the following judgements. (1) 2007 (34) PTC 370 Ishi Khosla Vs. Anil Aggarwal and Another -- The concept of Whole food by the plaintiff with adoption of this trade mark is different from the meaning of the Whole Foods as per the English dictionary. It therefore cannot be said that strictly the products marketed by the plaintiff are descriptive of the

17 17 meaning of English words Whole Foods. (2) 2008 (36) PTC 113 Acl Education Centre Private Limited and Another Vs. Americans Centre for Languages and Another When there is no proper explanation for adoption, it cannot be said to be honest. (3) 2010 (42) PTC 108 Foodworld Vs. Foodworld Hospitality Private Limited No proof of actual damage by the plaintiff that has resulted in the defendants use and therefore the prayer for damages rejected. (4) 2006 (33) PTC 352 Association For Investment Management and Research and Anr. Vs. Institute of Chartered Financial Analysts of India and Anr. The list only indicated that there are several organizations using/adopting the trade mark which does not prove the case that the marks are genuine and distinctive. (5) AIR 1978 DEL 250 Century Traders Vs. Roshan Lal Duggar and Company The user of a trade mark prior in point of time acquires a better right and title. (6) 2010 (42) PTC 469 Ozone Spa Private Limited Vs. Ozone Club It does not lie in the mouth of the defendant to contend now that the mark is a generic mark, in fact the defendant is debarred from raising such a plea in view of his own conduct. (7) 2009 Indlaw DEL 1952 Superbrands Limited and Others Vs. Superbrand Home Care Products Private Limited and Others The defendants having themselves applied for grant of registration of the trade mark, cannot be heard to challenge the distinctiveness of

18 18 the Plaintiffs registered trade mark. (8) 2005 (3) PTC 1 Godfrey Philips India Limited Vs. Girnar Food and Beverages Private Limited A descriptive trade mark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or as being from a particular source. (9) 2011 Indlaw MUM 542 Ultra Tech Cement Limited Vs. Alaknanda Cement Private Limited and another Defendants who have admittedly applied for registration of the impugned mark containing the word Ultratuff are estopped from contending that the plaintiffs mark containing the word Ultratech is descriptive or common to the trade and therefore cannot be registered. (10) 2013 (54) PTC 178 Keshav Kumar Aggarwal Vs. NIIT Limited Fact that the trade mark is used by various others as seen from the register of trade marks will not help unless actual use is proved. (11) 2011 Indlaw IPAB 46 Prestige Avenues Limited, Hyderabad Vs. Prestige Estate Projects Private Limited, Bangalore To acquire secondary meaning it is not necessary that the product is in the market for number of years. If a new idea is fascinating and appeals to the customers it can become a hit overnight. (12) 2011 (47) PTC 575 Liberty Footwear Company, Haryana and another Vs. Force Footwear Company, Agra and others When the trade mark has been adopted from the trading style then the adoption cannot be said to be dishonest.

19 19 (13) 2013 Indlaw IPAB 67 Gillette India Limited, Rajasthan Vs. Harbans Lal Malhotra and Sons Private Limited, Kolkata and another The trade mark prima facie be a laudatory expression but can qualify for registration. (14) 2002 (25) PTC 61 Living Media India Limited Vs. Jitender V. Jain and Anr. Onus on the applicant to satisfy descriptiveness. (15) 2008 (36) PTC 168 Cadila Healthcare Limited Vs. Gujarat Co- Operative Milk Marketing Federation Limited and Others Use of a descriptive expression as a trade mark by a trader, irrespective of the said trade mark having acquired a secondary meaning and distinctiveness in relation to the traders products does not entitle such trader from precluding other traders for using the said expression for the purpose of describing the characteristic features of their products. 57. The counsel further submitted search was conducted before the application was filed. The documents at Annexure H are the articles in Indian Press for several decades. Annexure I are the international Press Journals where their services were advertised. Annexure L is the affidavit of use filed before the Registrar of Trade Marks at the registration stage. 58. In rejoinder, the counsel for the applicant submitted that all the judgement relied on by the respondent are pertaining to interim orders and so has no relevance to the case on hand. The counsel relied on sections 31 and 32 of the Act. The counsel further submitted that the Assistant Registrar of Trade Marks had passed an order dated 17/12/ Shri Lall also addressed an argument that in case of acceptance, the mark shall not be advertised, as the order of advertisement has been withdrawn and not the advertisement which in any case has been advertised twice though inadvertently.

20 20 I uphold the arguments of Shri Lal, that mark had already been advertised and no opposition has been filed. It is therefore, ordered that requests on TM-16 dated 05/03/2004 and 18/06/20078 are allowed and application is ordered to proceed for registration with condition that there shall be no right for network and solutions separately. 59. The counsel submitted when there has been a material alteration in the date of use allowing the request on TM-16, the mark ought to have been readvertised. 60. The respondent s use has been only outside India and no use in India and therefore the Annexure G and H are not relevant to this case. The counsel admits that there is no prayer for re-advertisement but in the grounds E, F and H of the application for rectification it is clearly stated that there has been a material alteration by change in the date of use and also that a registration cannot be granted without correcting the misrepresentation in the advertisement. In fact, the respondents have not replied to the grounds of the rectification. 61. We have carefully considered the arguments of both the counsel and have gone through the pleadings and documents. 62. The impugned trade mark application has been filed on 02/12/2003 on a proposed to be used basis. Thereafter when an objection under sections 9 and 11 of the Act was raised by the Registrar of Trade Marks the respondent has replied to the objection and had filed a request for change in the date of user. The date of user has been changed to since 1993 for goods falling in class 38 and since 1998 for goods falling class 42 from proposed to be used as on 02/12/2003. This request has been filed on 05/03/2004. On 23/09/2004 an order as to advertisement before acceptance was passed. The trade mark was advertised in the Trade Mark Journal No.1328 Suppl.(5) dated 30/03/2005. The

21 21 mark was advertised as accepted and till such date no order on the TM 16 for amending the date of user was passed and therefore the mark was advertised as proposed to be used as claimed in their application for registration. On 16/06/2007 the trade mark was advertised before acceptance in the Trade Marks Journal No.1370 where again it is seen that the mark was proposed to be used and therefore no order concerning the date of amendment was passed. 63. Thereafter it is seen from the records that the order directing advertisements was withdrawn and other events took place. On 21/11/2008 the High Court of Delhi in WP(C) No.8237 of 2008 directed the Registrar of Trade Marks to hear and dispose of the application along with the amendment application. The Registrar therefore, passed an order on 17/12/2008, thereby allowed the amendment application and the application was to proceed for registration. 64. On perusal of the records it is seen that there has been number of requests for amendments and the same has been allowed. It is pertinent to give below the various requests -- (1) TM-16 dated 19/12/2008 to amend to read as Network Solution LLC instead of Network Solution Inc. (2) TM-16 dated 18/06/2007 to amend the address of the applicant to read as Sunrise Valley Drive, Sinte 300, Harinder Virginia USA instead of 21355, Ridgetop Circle Mailstop LS3-3-4, Dullas, Virginia 20166, USA. (3) TM-16 dated 19/12/2008 to amend the address for service of agent of the applicant to read as Zeusip instead of Anand and Anand (4) TM-16 dated 05/03/2004 to amend the statement of user to read as since January 1993 in class 38 instead of proposed to be used as on 02/12/2003. (5) TM-16 dated 05/03/2004 to amend the statement of user to read as

22 22 since January 1998 in class 42 instead of proposed to be used as on 02/12/2003. (6) TM-16 dated 20/03/2009 to amend to include the following wording immediately before the claim of use in class 38 who claims to be the proprietor, thereof and by whom their predecessor in title the said mark has been continuously used. (7) TM-16 dated 20/03/2009 to amend to include the following wording immediately before the claim of use in class 42 who claims to be the proprietor thereof and by whom their predecessor in title the said mark has been continuously used. 65. All these changes have been allowed and the same has been notified by issuance of a corrigendum in Trade Marks Journal No.1432 dated 16/01/2010 and the certificate of registration has been issued on 21/01/ The purpose of the Trade Marks Journal advertisement is to afford an opportunity to the public to oppose the grant of registration if they are aggrieved by such registration. Therefore, it is necessary that a clear and full information should be provided in the Trade Marks Journal advertisement to the public. As observed in Ashoka Dresses case (Supra) If an advertisement gives an incomplete information in respect of the particulars of the trade mark advertised or gives an incorrect information regarding any material particular a prospective opponent is deprived of the opportunity of getting full information regarding the trade mark and also is deprived of the opportunity of filing an effective opposition. Therefore, an incorrect advertisement which amounted to misrepresentation is required to be cancelled. 67. This observation squarely applies to this case on hand. The advertisements dated 30/03/2005 and 16/06/2007 does not contain complete and full information as regards the application. There is no mention about the amended date of use. The change in the date of use is a material alteration

23 23 made in the application and deserves to be brought to the notice of the public. The other two amendments as regards the change of address and agent also are to be published. The other material change is that the use was by their predecessor which was also not mentioned. All these are to be brought to the knowledge of the public for effective opposition. 68. We also find that the Trade Marks Registry has not advertised instead has issued a corrigendum which is just a notification. Only when a trade mark is advertised the mark can be opposed. When a notification (Corrigendum) is issued the question of opposition does not arise. The corrigendum has been made in the Trade Marks Journal No.1432 dated 16/01/2010 and the certificate has been issued on 21/01/2010. In our considered view the certificate of registration ought not to have been issued without re-advertisement. 69. The counsel for respondent forcefully argued that there was no prayer for re-advertisement and the same shall not be considered. As observed earlier in Ashoka Dress s case (Supra) an incorrect advertisement is required to be cancelled. Here we think it fit to remand the matter back to the Trade Marks Registry to deal with the application in accordance with law. 70. Section 57(4) deals with the powers of the tribunal to cancel or vary registration and to rectify the register. Section 2(1) (Ze) defines Tribunal means the Registrar or as the case may be, the Appellate Board, before which the proceedings concerned is pending. The same power is vested with this Board. The Registrar/Board has the discretion to grant the relief in an application of rectification on its own motion or on an application by any third party. Public interest is a highly important consideration in exercising the discretion. In such circumstances, we are of the opinion in the interest of the public, the application for registration has to re-advertised for fresh consideration.

24 We, therefore, remand the matter back to the Registrar of Trade Marks to re-advertise the application for registration of the Trade Mark Network Solutions in class 38 and 42 under No and to deal with the application in accordance with law. 72. Consequently the application for rectification is disposed of on the above terms. No order as to costs. (SANJEEV KUMAR CHASWAL) TECHNICAL MEMBER (S. USHA) VICE-CHAIRMAN Reportable : Yes / No