Le Shark Apparel Limited v. Anil Shah

(x) The Petitioner’s predecessor obtained registration of the trademark in the years 1999-2001 in UK in Class 3, Class 8, Class 9, Class 14, Class 16, Class 18, Class 20, Class 21, Class 24, Class 25, Class 26, Class 27, Class 28, Class 30, Class 35, and Class 36.

(xi) Respondent No. 1’s mark registered under Application No. 466001 has since 13th January 1987 been removed from the register in India for non-renewal. It is the Petitioner’s case that this trademark is a device mark identical to the shark device registered by the Petitioner’s predecessor in the Benelux countries.

(xii) In October 2013, the Petitioner, a joint venture company between S.R.G. Apparel Plc and Grabal Alok (UK) Limited (earlier known as Hamsard 2353 Ltd.) was incorporated under the laws of United Kingdom. It is pertinent to note that by virtue of assignment by Grabal Alok, the Petitioner is a registered proprietor of the trademarks ‘ ’ and.

(xiii) The Petitioner officially relaunched the 'LE SHARK'

(xiv) The Petitioner has a global presence with worldwide sales reaching over 5 million (Rs. 44 crore) with sales on several websites such as ASOS.com, www.tkmaxx.com, Leading Label, Tokyo Laundry, The Hut, Amazon, Studio.co.uk, Jeansfield etc. in the year 2014-17.

(xv) The Petitioner has promoted its products under the brand ‘Leshark’ by attending exhibition and trade shows in different countries such as China, Berlin in the year 2014-17.

(xvi) The Petitioner filed Application No. 2904714 for registration of its mark in India in Class 25 for Clothing, Footwear, Headgear on 17th February 2015.

(xvii) Respondent No. 3 sent a copy of Examination

Report along with the search Report intimating the Petitioner about the existence of the Respondents’ trademark on 16th April 2016.

(xviii) The Petitioner filed a Reply to the Examination

Report issued by Respondent No. 3 for Trademark Application No. 2904714 on 21st May 2016 requesting for a date of hearing.

(xix) LLP Agreement dated 1st October 2016 executed between Anil Shah, Kiran Shah and Damji Sadiwala forming Respondent No. 2 was executed on 7th March 2017.

(xx) Respondent No. 1 assigned the impugned trademark to Respondent No. 2 on 6th December

2017.

(xxi) Respondent No. 3 renewed the impugned trademark with effect from 13th January 2018 for another ten years on 22nd December 2017.

(xxii) Respondent No. 2 applied to Respondent No. 3 to have its name recorded as the proprietor of the impugned trademark on 11th January 2018.

(xxiii) The Petitioner filed the present Petition under

(xxiv) Respondent No. 2 was entered as the subsequent proprietor of the impugned registered trademark of LE SHARK on 22nd September 2018.

(xxv) The present Rectification Petition was admitted by the IPAB on 8th October 2018.

(xxvi) On 4th April 2021 pursuant to the Tribunal Reform

(xxvii) The Petitioner’s Application No. 2904714 for registration of mark was refused on 7th April 2021 despite the present Rectification Petition.

(xxviii) The Petitioner filed a Review Petition No. 1201255 before the Respondent No. 3 against Respondent No. 3’s order of 7th April 2021. On 7th May 2021, the Review Petition was heard, but the order is pending.

3. Mr. Rohan Kadam, the learned Counsel for the Petitioner has submitted that the impugned mark of Respondent Nos. 1 and 2 (referred to collectively as “Respondents”) deserves to be expunged under Section 47(1)(a) of the Act for want of bonafide intention to use the impugned mark. He has submitted that there is a lack of bonafide use upto a period of three months before the date of the Rectification Petition. He has submitted that the absence of a bonafide intention to use the impugned mark is borne out from the fact that it is a mere dishonest copy and adoption of trademarks that were registered prior in time by the Applicant’s predecessor in interest in the United Kingdom, France and the Benelux countries and now subsist in the name of the Petitioner.

4. Mr. Kadam has further submitted that the impugned mark deserves to be expunged under Section 47(1)(b) of the Act for want of bonafide use for over five years since the sole proof of user are fabricated invoices, which are even otherwise unsupported by corroborating materials.

5. Mr. Kadam has submitted that the impugned mark is liable to be expunged under Section 57 of the Act since it has been fraudulently adopted and is therefore, an entry wrongly made and is wrongly remaining on the register “without sufficient cause”.

6. Mr. Kadam has referred to Section 47 of the Act and has submitted that it is a fit case for invoking powers for expunging the trademark under that provision. He has submitted that Section 47(1) speaks of two situations for rectification: (i) under Section 47(1)(a), a trademark may be rectified if there has been no bonafide intention to use the mark and no bonafide use of the mark for a period upto three months before the date of the Rectification Application / Petition OR (ii) under Section 47(1)(b), a trademark may be rectified if there has been no bonafide use during a continuous period of five years upto a date of three months before the date of the Rectification Application / Petition. He has submitted that in the present case both requirements are satisfied.

7. Mr. Kadam has submitted that the absence of bonafide intention to use is borne out from the fact that the impugned trademark is an identical copy of Trademark No. UK00001250917 registered in the UK by the Petitioner’s predecessor in interest in 1985 for the same goods. The ‘Shark’ graphic in the impugned trademark is also identical to the pictorial depiction registered by Petitioner’s predecessor in title in France and the Benelux countries.

8. Mr. Kadam has submitted that in the absence of a plausible explanation given by a party for adopting an identical mark which is inherently distinctive and unique, the Court may presume a dishonest intention to use the impugned mark. He has placed reliance on Aktiebolaget Volvo of Sweden Vs. Volvo Steels Ltd. of and judgment of the Calcutta High Court in Bengal Immunity Co. Ltd. Vs. Denver Chemicals Manufacturing Co.2.

9. Mr. Kadam has submitted that the ratio in Volvo (supra) applies in the present case. The Respondents have not pleaded any explanation (plausible or otherwise) for having adopted an identical 1 1997 SCC OnLine Bom 578 at paras 41 and 43 2 AIR 1959 Cal 636 at paras 15 and 16 mark with identical text, shark logo and placement which was registered by the Petitioner’s predecessor abroad. He has submitted that no alternate case of having got this artistic logo created has also been pleaded. It is therefore ex-facie evident that the Respondents’ intentions behind obtaining registration of the same was dishonest.

10. Mr. Kadam has submitted that the Respondent No. 1 on its website has admitted to having supplied Aldgate Warehouse, who is the Petitioner’s predecessor in interest’s affiliate through whom the clothes were sourced.

11. Mr. Kadam has submitted that the Respondents have absolutely no explanation (plausible or otherwise) for having adopted the impugned mark. Hence, it is evident that there is no bonafide intention to use the said mark.

12. Mr. Kadam has submitted that the Respondents have pleaded a case that they have built a thriving business under the impugned mark for over 37 years. They have pleaded that since 1987, they have used the impugned mark and have generated enormous goodwill therein. They also claim that substantial sums have been spent on advertising and enormous sums earned through sales. He has in particular referred to the pleaded case of the Respondents at paragraphs 7 and 10 on pages 6-7 of the counterstatement.

13. Mr. Kadam has submitted that there is no material to corroborate these grandiose and sweeping claims of the Respondents. They have not produced any certified sales figures; advertising figures; assessment orders; and/or any promotional materials.

14. Mr. Kadam has submitted that there is nothing brought on record by the Respondents to corroborate their claim that they have an uninterrupted running business. This alone demolishes their claim of having used the marks, bonafide or otherwise. The Respondents have only produced a smattering of invoices at Annexure D / page 80 of the counterstatement. The Respondents have impressed upon the Court to believe that these invoices are genuine since they have deposed to them on oath. He has submitted that these invoices are wholly suspect and incapable of being treated as reliable evidence. None of these invoices employ the impugned mark as registered. Further, none of these invoices are corroborated by delivery notes / challans pursuant thereto and/or proof of receipt of sales proceeds et al. He has submitted that these invoices are fabricated. To illustrate, the invoices purportedly have been issued on 13th February 2006 and 19th February 2006 and made out to one ‘Isha Crafts Private Limited’. Isha Crafts Private Limited was incorporated only in the year 2009. It is therefore, inconceivable that any genuine invoice could have been issued three years earlier in

2006. He has accordingly, submitted that these invoices at pages 80- 81 of the counterstatement are ex-facie fabricated.

15. Mr. Kadam has submitted that fabricated invoices raise a doubt on the authenticity and genuineness of the other invoices produced, which are not corroborated by any evidence. That apart, it is well settled that a litigant having relied on fabricated documents, is entitled to be summarily thrown out by the Court at any stage of the litigation. He has placed reliance on the judgment of this Court in Jayant Industries Vs. Indian Tobacco Company[3].

16. Mr. Kadam has submitted that apart from the present case being a fit case for expunging the registered trademark and 3 2022 SCC Online Bom 64 paras 28-29 rectifying the Register under both Sections 47(1)(a) and 47(1)(b) of the Act, this is also a fit case for exercising powers under Section 57 of the Act.

17. Mr. Kadam has referred to Section 57 of the Act, which empowers the Court to take marks off the Register for ‘sufficient cause’. He has submitted that the object of this Act is to inter alia prevent the dishonest and fraudulent registration of marks. He has submitted that in the present case, adoption and registration of the impugned mark is tainted with dishonesty, since it is an identical copy of trademarks that were registered by Petitioner’s predecessor in title in Europe and the Respondents appear to have been suppliers thereto.

18. Mr. Kadam has submitted that the circumstances of adoption of the Respondents’ impugned marks point to the real motive i.e. to traffic in the impugned mark and to leverage the same for illicit gain. He has submitted that this alone affords sufficient basis for expunging the marks. He has placed reliance upon The Matter of the Registered Trade Marks of J. Batt and Co. and In The Matter of Carter’s Application for a Trade Mark[4].

19. Mr. Kadam has submitted that the Respondents have only challenged the Petitioner’s locus as an ‘aggrieved person’. They have further alleged that the Rectification Petition ought to be dismissed for delay.

20. Mr. Kadam has referred to the law relating to ‘aggrieved person’ for the purposes of either Section 47 or Section 57 of the Act. The law is that a person, “whose interest is affected in some possible way; it must not be a fanciful suggestion of grievance. A likelihood of some injury or damage to the applicant by such trademark remaining on the register may meet the test of locus standi.”. He has in this context, relied upon the judgment of the Supreme Court in Infosys Technologies Limited Vs. Jupiter Infosys Limited and Anr.5.

21. Mr. Kadam has submitted that the Petitioner’s interest are clearly affected, and it has in fact suffered a legal injury. He has submitted that the Petitioner sells goods under the same Le Shark 4 15 RPC 262 at Line 11, Pg. 266-267 5 (2011) 1 SCC 125 at paras 28-29 mark all over the world. It desires to enter the Indian market. In anticipation of starting business in India, the Petitioner applied for trademark registration of its LE SHARK mark in India in Class 25 for clothing, footwear and headgear under Application No. 2904714, which was refused by the Registrar citing the impugned mark.

22. Mr. Kadam has submitted that the Petitioner’s business interests are affected by the impugned mark remaining on the Register and it has also suffered injury by virtue of its trademark Application having been refused due to the citation of the impugned mark.

23. Mr. Kadam has submitted that a fortiori, the Petitioner is a ‘person aggrieved’ for maintaining this Rectification Petition.

24. Mr. Kadam has submitted that the Respondents’ second defence of delay is also frivolous. Neither Sections 47 nor 57 raise any time bar for filing a Rectification Petition. Furthermore, non-use of a mark is a continuing cause of action, which cannot be time barred. He has placed reliance on the judgment of the Delhi High Court in Fedders Lloyd Corporation Ltd. and Lloyd Sales Corporation Pvt.Ltd. Vs. Fedders Corporation and the Registrar of Trade Marks[6].

25. Mr. Kadam has submitted that it is settled law that delay is a defense in equity. The principle behind the doctrine is that rights which may have accrued to a party should not be disturbed unless there is a reasonable explanation for the delay. He has in this context relied upon the judgment of the Supreme Court in M/s. Dehri Rohtas Light Railway Company Limited Vs. District Board, Bhojpur[7].

26. Mr. Kadam has submitted that in the present case, no rights have accrued to the Respondents since their original adoption is itself dishonest and that apart they have not produced reliable evidence of any actual use of the marks. Instead, they have relied on ex-facie fabricated invoices, which disentitles them from seeking any equities. He has placed reliance upon the judgment of the Delhi High Court in Hindustan Pencils Vs. India Stationary Products and Anr..[8]

27. Mr. Kadam has submitted that the Petitioner was wholly unaware of the Respondents’ registration until they applied for 6 2005 ILR 1 Del 478 paras 45-47, (MANU/DE/0501/2005)

8 ILR 1989 1 Delhi 115 paras 30, 31, 35, 37 and 38 registration of their impugned mark in India and the impugned mark was cited in the Examination Report. Therefore, the Rectification Petition has been promptly filed.

28. Mr. Kadam has submitted that in view of the Respondents having no bonafide intention to use the impugned mark nor having proved actual use, the adoption of the mark being dishonest merits removal under Sections 47(1)(a), 47(1)(b) as well as under Section 57 of the Act for sufficient cause. For these reasons, the Petitioner has prayed that this Court allow the Rectification Petition and expunge the Respondents’ registered Trademark NO. 466002 in Class 25 from the Register.

29. Mr. Lakshyaved R. Odhekar, the learned Counsel for the Respondent Nos. 1 and 2 (referred to as “Respondents”), has submitted that the Petitioner has no presence in India at the time of filing of the Rectification Petition and even as on date, they do not have any presence in India, which can be seen based on the documents filed by the Petitioner. He has submitted that the Petitioner has not claimed any trans-border reputation or goodwill having spilled over in the Indian Jurisdiction / markets in India anywhere in its pleadings. As against this, the trademark of the Respondents is registered and subsisting, and as on date, the said trademark is registered for over 37 years.

30. Mr. Odhekar has submitted that the Petitioner’s alleged mark was not used prior to December 2014. The Petitioner claims that it is a joint venture company between one S.R.G. Apparel Plc (S.R.G. Apparel) and one Grabal Alok (UK) Limited. He has referred to the pleadings, in particular paragraph 9(iii) of the Petition, wherein it is pleaded that in the year 2013, the said Grabal Alok and S.R.G. Apparel decided to refresh their decades old brand with update for modern consumers, and therefore, in the year October 2013, the Petitioner company was incorporated. This is an unequivocal pleading on behalf of the Petitioner that their alleged mark/ brand was not used up until 2013 by the Petitioner.

31. Mr. Odhekar has submitted that the Petitioner has not produced any document before this Court to establish that the Petitioner has been given the authority to file the present proceedings on behalf of the so called joint owner and a licensee, S.R.G. Apparel, of the alleged trademark LE SHARK. It is a pleading of the Petitioner in Paragraph 9(iv) of the Rectification Petition that S.R.G. Apparel is both joint owner and a Licensee of the Petitioner’s alleged mark Le Shark. He has submitted that the Petitioner has attached invoices to establish its alleged use of the trademark Le Shark. However, the said invoices are that of SRG Apparel, an independent entity. The said invoices do not mention the trademark under which the products are sold through the said invoices.

32. Mr. Odhekar has submitted that the Petitioner in paragraph 9(x) of the Rectification Petition has submitted that they have been selling their range of products under their alleged Trademark Le Shark since December 2014. He has submitted that from a bare reading of paragraph 9(iii) and 9(x) of the Petition, it can be seen that in the year 2013, the Petitioner decided to use the alleged trademark for the first time and in December 2014, the Petitioner started selling their products under the alleged trademark clearly outside India.

33. Mr. Odhekar has submitted that the Petitioner has in paragraph 9(xii) of the Rectification Petition referred to the alleged worldwide wholesale of their product from December 2014 to September 2017. He has submitted that the Petitioner has further made a statement in paragraph 9 (xiv) of the Petition that the Le Shark products have been sold through www.tkmaxx.com from January 2015. The paragraph 9 (xv) of the Petition refers to various E-Commerce websites on which allegedly Petitioner’s products are sold and all of them are after January 2015. He has submitted that on the basis of the averments made by the Petitioner in the Petition, it is crystal clear that the Petitioner started using the alleged trademark in December 2014 and not prior to that outside India and they have not been using the same prior to December 2014.

34. Mr. Odhekar has submitted that the maintainability of the Rectification Petition filed by one Mr. Abhijit Chatterjee on behalf of Applicant is an issue which arises. The Applicant has not placed anything on record that it has authorized Mr. Abhijit Chatterjee to file the present proceedings on behalf of joint-owner and Licensee – S.R.G. Apparel. He has submitted that the Petitioner is clearly not an entity formed or governed under the Indian Law and is a foreign entity and therefore, in order to file any litigation in India, as per Section 83 of CPC, 1908, they need to follow due process of law. He has submitted that the Petitioner has not placed on record such document equivalent to a Board Resolution / Power of Attorney for such person, who has affirmed the Rectification Petition, being the authorised signatory of the Petitioner. The person ought to have affirmed the Petition accordingly.

35. Mr. Odhekar has submitted that the Petitioner has filed additional Affidavit on 22nd November 2023 to bring on record the suppressed fact about refusal of their trademark application bearing No. 2904714. He has submitted that in the said additional Affidavit, the Petitioner has referred to a Review Application filed before the learned Registrar of Trademarks. In the Review Application, there appears to be a Power of Attorney dated 30th November 2016 in favour of Mr. Abhijeet Chatterje and Mr. Debesh Bose of a Law Firm,

36. Mr. Odhekar has submitted that the alleged power of attorney is part of pleadings in different trademark and not before the IPAB and/or for this Court. He has submitted that this Court in Oil And Natural Gas Commission Vs. Offshore Enterprises Inc.[9] has 9 1993 Mh LJ 243 held that an Advocate is not entitled to act in a professional capacity as well as constituted attorney of a party in the same matter or cause. This Court has further in paragraph 15 held that the Prothonotary & Senior Master of the High Court shall not accept any vakalatnama in favour of a firm of advocates where one or the other partner of the same firm also holds a power of attorney of the Plaintiff or the Defendant or any other suitor before the Court in the same cause.

37. Mr. Odhekar has submitted that as aforementioned the Petitioner has absolutely no presence in India. He has submitted that the Petitioner is claiming to have used the alleged mark outside India since and that too only after December 2014. He has submitted that in none of the pleadings, the Petitioner has referred to the presence of their products in India. On the other hand, the Respondents in India have registered their mark and used it since 1987 and have attached invoices to that effect. He has referred to the invoices which have been filed by the Petitioner. These invoices are only in respect of the United Kingdom and the United Arab Emirates and they are issued in December 2014 and October 2016 respectively. He has accordingly, submitted that the Petitioner has miserably failed to establish use of their alleged mark prior to December 2014 even outside of India. He has submitted that the Petitioner has filed the present Rectification Petition only in order to enter the Indian market, which is established by the pleadings of the Petitioner, which states that the Respondents’ registered trademark acts as hindrance to launch the Petitioner’s business in India.

38. Mr. Odhekar has submitted that the Petitioner’s Application for registration of its Trademark No. 2904714, was objected under Section 11 of the Act, where the Respondents’ trademark was cited as the conflicting mark. The said Trademark Application came to be rejected / refused by the learned Registrar by order dated 7th April 2021. The Petitioner was allowed to place this fact on record by way of additional pleadings upon an opportunity given to the Respondents to reply to the same. Under the garb of urgency and in order to wriggle out of the fact that on 7th April 2021 their Trademark Application was refused and the said fact was not brought before this Court in the present proceedings, the Petitioner took the shelter of COVID-2019 and simply attached the said order to the additional Affidavit dated 22nd November 2023.

39. Mr. Odhekar has submitted that the learned Registrar has refused the said Trademark Application of the Petitioner, even otherwise on merits by giving a detailed reasoning relying on the Judgment of the Supreme Court in Cadila Healthcare Vs. Cadila Pharmaceuticals10. He has submitted that the Applicant immediately filed a review against the said order of the learned Registrar on 7th May 2021, but failed to bring the said fact before this Court at the relevant time. He has submitted that the Review Application has been pending since May 2021 and the Petitioner is taking adjournments under the garb of pendency of the present proceedings. He has submitted that the Petitioner is clearly not interested in properly prosecuting their own Application and they are doing so only to harass the Respondents.

40. Mr. Odhekar has submitted that no case has been made out in terms of Sections 47 and 57 of the Act. He has submitted that the Petitioner has failed to establish anything to showcase or even make an averment with respect to alleged “bad faith” as contemplated under the relevant section. He has submitted that the Petitioner has referred to the Respondents’ website to contend that the Respondents misspelled Aldgate as Algate. This has been denied by the Respondents in its counterstatement and the same is entirely based on conjecture and surmise. The reference is made by the Petitioner to the Respondents’ website purportedly to establish a connection between themselves and the Respondents by referring to Aldgate Warehouse Limited as an affiliate of the Petitioner and that Aldgate was sourcing products from the Respondents.

41. Mr. Odhekar has submitted that the Petitioner has failed to produce the evidence to show that the Respondents were in business with the alleged Aldgate prior to applying for registration of their mark i.e. prior to 31st January 1987. The documents in order to establish Petitioner’s association with the said Aldgate Warehouse Ltd. only shows that the some directors of the said two entities were common.

42. Mr. Odhekar has submitted that the registered trademark Le Shark has been used by the Respondents since the year 1987. The Respondents’ mark is valid and subsisting, till date. The Respondents have not received any objection, challenge or notice with respect to their trademark. The Respondents being registered proprietor are continuously using the said trademark Le Shark and have attached specimen invoices at Exhibit D to its counterstatement, where it is evident that its earliest invoice attached is of 3rd March 1990 and the latest invoice attached is of 18th August 2015. Although the Petitioner had stated that they wish to inspect the invoices and documents of the Respondents, they never asked for the said inspection.

43. Mr. Odhekar has submitted that the Petitioner has in paragraph 9 (xxi) of the Rectification Petition stated that the Respondents were aware of the use and reputation of the Petitioner and therefore, it cannot be a coincidence that the Respondents conceived and adopted an identical or deceptive identical trademark. In any event, it is clear that the Petitioner started using their alleged trademark in some other countries and that too after December,

2014. He has submitted that even as on date, the Petitioner has absolutely no presence in India.

44. Mr. Odhekar has submitted that the Petitioner has failed to prove non-use in terms of Section 47 of the Act. He has submitted that the Petitioner has merely made cosmetic averments in some of the paragraphs of the Rectification Petition. He has submitted apart from pleading merely non-use or non-intention of bona fide use, the Petitioner has not made any factual statements / pleadings nor has the Petitioner lead any evidence to establish their case.

45. Mr. Odhekar has submitted that the intention behind Section 47 of the Act is to prevent hoarding of trademarks. Removal of trademark duly registered has serious implications and therefore, the standard of proof in such matters are much higher than that of an interim application seeking relief of a temporary injunction in matters of passing off or infringement of the trademarks. In cases of rectification of a registered trademark, the Petitioner must discharge its burden of proof by leading unimpeachable evidence. He has placed reliance upon the judgment of this Court in Eagle Potteries Private Ltd. Vs. Eagle Flask Industries Private Ltd.11. This Court has held that the burden of proving non-user will always be on the party making the averments in the Petition. No other evidence either by way of Affidavits from dealers and traders or oral evidence has been lead to show that there has been non-use by the Respondent therein or that there are no goods of the same description. The Court held that merely making an averment is not sufficient.

46. Mr. Odhekar has submitted that since non-user is a negative fact, it is required to be proved by Affidavit of Evidence. It is only upon the non-user being substantially proved, then only the onus can shift on the Respondents. He has relied upon the judgment of IPAB in Shell Transource Limited Vs. Shell International Petroleum in this context.

47. Mr. Odhekar has submitted that the Petitioner has not pleaded trans-border reputation or the registration of the Respondents’ mark is an act of Trademark Squatting. He has submitted that the same cannot be argued at the stage of final hearing of the Petition. He has placed reliance upon the judgment of the Supreme Court in Bachhaj Nahar Vs. Nilima Mandal & Anr.13, which has held that if the question did not arise from the pleadings and/or was not the subject matter of the issue, it cannot be decided by the Court. The Court should confine its decision to the questions raised in pleadings.

48. Mr. Odhekar has relied upon the judgments of the

Supreme Court and other High Courts, which have considered the issue of Trans-border Reputation. These are as under:a. Hypnos Limited Vs. Hosur Coir Foam Pvt. Ltd. & Ors.:: 2015 SSC online IPAB 213:: paragraphs 88 to 107 b. Toyota Jidosha Kabushiki Kaisha Vs. Prius Auto Industries Limited:: (2018) 2 SCC 1:: Paragraphs 38, 39 & 40 c. Toyota Jidosha Kabushiki Kaisha Vs. Tech Square Engineering Pvt. Ltd.:: 2023 SSC onLine Del 583:: Paragraphs 13 to 27 d. Daiwa Pharmaceuticals Co. Ltd. Vs. Daiwa Pharmaceuticals Pvt Ltd.:: 2024 SCC OnLine Bom 1078:: Paragraph 83 e. Lupin Limited Vs. Eris Lifesciences Pvt. Ltd.:: 2015 SCC OnLine Bom 6807:: Paragraph 19

49. Mr. Odhekar has submitted that the Supreme Court in Milmet Oftho Industries & Ors. Vs. Allergan Inc.14 reproduced in Paragraph 99 of the Hypnos Limited Vs. Hosur Coir Foam Pvt. Ltd. (supra) has held that the multinational corporations, who have no intentions of coming to India or introducing their product in India, should not be allowed to throttle an Indian Company by not permitting it to sell their product in India, if the Indian company has genuinely adopted a mark.

50. Mr. Odhekar has submitted that the Delhi High Court has addressed the issue of trademarks squatting while dealing with a case of Rectification in BPI Sports LLC Vs. Sourabh Gulati and Anr.15. It has been held that in order to bring a case of trademark squatting, the prior knowledge and awareness of the Applicant’s trademarks and its reputation is taken into consideration.

51. Mr. Odhekar has submitted that in the present case, the Respondents’ trademark was applied for on 31st January 1987 and the pleadings of the Petitioner nowhere suggests use of the Petitioner’s alleged trademark prior to 2014-15. The Petitioner’s contention that the Respondents had prior knowledge of the Petitioner’s trademark is not supported by any documentary proof for establishing the same. 15 2023 SCC Online Delhi 2424 paras 23 to 25 and paras 45/52 onwards

52. Mr. Odhekar has dealt with the contention of the Petitioner that the Respondents’ trademark was obtained by fraud. He has submitted that the Petitioner has nowhere pleaded that the registration of the Respondents’ trademarks was by fraud and this is a new argument of the Petitioner in oral arguments and written submissions. He has submitted that this allegation needs to be factually substantiated, if the Petitioner wishes to rely upon the same.

53. Mr. Odhekar has submitted that if the Petitioner attempts to make out a case that the Respondents have obtained their registration malafidely, then the Petitioner must specifically prove a connection between the Petitioner and the Respondents prior to 1987 to establish the fact that the Respondents saw the Petitioner’s trademark and then copied the same. The Petitioner has failed to establish the same and hence the Petitioner cannot make such claim without any pleadings.

54. Mr. Odhekar has submitted that the Respondents in a Rectification Petition need not give any reason for adoption of their trademark. However, in the present case, the Respondents have stated that their predecessor has coined the term “Le Shark” in the 1980s.

55. Mr. Odhekar has submitted that it has been held in Lupin Limited Vs. Eris Lifesciences Pvt. Ltd. (supra) at paragraph 20 that “when the mark is registered and the entry is made in the Register, the Plaintiff discharges the burden that the mark is a distinctive mark and satisfies the criteria of ‘trademark’ within the definition of the trademark and the requirements of Sections 9 and 11 of the Act.”. He has submitted that this judgment is apposite in the present case, as the Respondents have registered their mark and thereby has discharged the burden of proving that the mark is a distinctive mark.

56. Mr. Odhekar has submitted that the Petitioner for countering the Respondents’ contention on maintainability of the Rectification Petition has not relied on any material to establish that it had authorised the filing of the present Rectification Petition. The Petitioner has submitted that absence of the Rectification Application signed by the Constituted Attorney, is a merely technicality and a curable defect by relying upon decisions of the Supreme Court and this Court. He has submitted that this fails to meet the contention of the Respondents that the person given the Power of Attorney is an employee of a law firm, who has filed the Petition and it has been held in Oil And Natural Gas Commission (supra) that an Advocate is not entitled to act in a professional capacity as well as Constituted Attorney of a party in the same matter or cause. He has submitted that the Applicant to meet this contention, for the first time, has orally stated that the said Mr. Abhijit Chatterjee is merely working for gain in the said law firm and is not an advocate.

57. Mr. Odhekar has submitted that the fault of the said Power of Attorney is that it has been notarized for Focus International Limited and not for Le Shark Apparel Limited. This defect is not a curable defect. He has submitted that the Petitioner’s proceedings are vitiated for want of specific and proper power of attorney.

58. Mr. Odhekar has dealt with the judgments relied upon by the Petitioner viz. Milmet Oftho Industries (supra) and Fedders Lloyd Corporation Ltd. (supra). In the first of the said cases, the Plaintiff had obtained an injunction against the Defendants, which was vacated by the Division Bench of the High Court and the same was not reversed by the Supreme Court. He has submitted that this case in fact supports the Respondents. The Petitioner has relied upon the second case to counter the argument of delay in filling the present Rectification Application. He has submitted that the said case at hand deals with the argument of the Respondents therein, who admits non-use and then states that the Application for Rectification has been filed after three years of non-use. This argument was rejected by the Delhi High Court.

59. Mr. Odhekar has also dealt with the judgment relied upon by the Petitioner viz. La Societe Anonyme Des Parfums Le Galion Vs. Jean Patou, Inc.16 in support of their contention that minimal sales by registered proprietor are insufficient to establish the trade mark rights. He has submitted that in that case, it was held that individuals who obtain a trademark registration through false or fraudulent means are liable for damages sustained by anyone injured by that registration. In the present case, the Petitioner has not at all specifically pleaded any facts to substantiate false of fraudulent registration. Hence, this judgment is not applicable to the present case. 16 1974 U.S. APP. Lexis 9252

60. Mr. Odhekar has submitted that there is no merit in the Rectification Petition and accordingly, the Rectification Petition of the Petitioner be dismissed with costs.

61. Having considered the submissions, the issue that arises in the present Rectification Petition is whether the impugned trademark of the Respondents, ought to remain in the register under Sections 47 and 57 of the Act. The issues that arise are as under:i) Whether the Respondents had a bonafide intention to use the impugned mark for the purposes of Section 47 (1) (a) of the Act? ii) Whether it has bonafide used the impugned registered trademark for the purposes of either Section 47 (1) (a) or (b) of the Act? iii) Whether the impugned trademark is liable to be expunged for sufficient cause under Section 57 of the Act for having been conceived in dishonest/fraudulent circumstances?

62. Under Section 47(1)(a) of the Act, the Court is required to assess whether there was a ‘bonafide’ intention to use and ‘bonafide’ use by the proprietor of the impugned mark within three months of the date of the Rectification Application. Further, under Section 47(1)(b) of the Act, the Court is required to assess whether there has been ‘bonafide’ use for a continuous period of five years upto three months of the date of the Rectification Petition.

63. Having perused the record, the absence of ‘bonafide” intention to use the impugned trademark is writ large in this case. The impugned trademark is a virtual copy and/or deceptively similar to the trademark registrations (including the Petitioner’s trademark registration) obtained prior in time in Europe in 1985. The Respondents have not seriously contested that the use of their trademark was prior to the use of the Petitioner’s predecessor’s trademark. The impugned mark comprises of the words ‘Le Shark’ and a distinctive shark pictorial logo. The words ‘Le Shark’ by themselves are fanciful and arbitrary in relation to clothes. The fraudulent adoption of the impugned trademark of the Respondents is evident in view of an identical shark graphic logo to that of the Petitioner’s predecessor’s marks in 1985 Europe registrations. Thus, it is prima facie established that the impugned trademark is the fruit of fraud and is borne out of dishonest intentions. It is well settled that when a mark is borne out of fraud, it is difficult to purify its use subsequently.

64. I further find from the invoices, which have been relied upon by the Respondents that these invoices prima facie appear to be fabricated as they have been made out to one Isha Craft Private Limited, a company that was incorporated much later in time. The Petitioner had pleaded the fabrication of the invoices in its Rejoinder filed in 2019. However, the Respondents failed to file pleadings countering this position and/or lead evidence to prove the authenticity of the documents through witnesses. The fabrication of these invoices is evident, as these invoices are purportedly issued on 13th February 2006 and 19th February 2006, and made out to “Isha Crafts Private Limited”, whereas Isha Crafts Private Limited was incorporated only in the year 2009.

65. Having considered the invoices relied upon by the Respondents, which have been made out in the name of Isha Crafts Private Limited to be fabricated, results in a rejection of the other invoices submitted by the Respondents. Prima facie it appears that the Respondents are relying upon these invoices with an attempt to evade the legal consequences that accrue, when a litigant relies on fabricated materials.

66. It has been held by this Court in Jayant Industries Vs. Indian Tobacco Company (supra) and S.P. Chengalvaraya Naidu (Dead) By LRs Vs. Jagannath (Dead) By LRs & Ors.17 as well as in Indian Council For Enviro Legal Action Vs. Union of India18, that submission of fabricated documents by a party attracts serious consequences in law and the Court is summarily obligated to throw out that party and deny the relief.

67. From the aforementioned judgments, it is well settled that when the Respondents have submitted fabricated documents, the Court is entitled to be skeptical and disbelieving of their pleaded case and the materials relied on in support. An adverse inference of non-genuineness from false proof having been tendered is required to be drawn.

68. The contention of the Respondents that the impugned trademark was used on the Respondents’ webpage, which is sufficient to sustain the validity of its registration is misconceived. The legislature being conscious that a trademark registration affords a statutory monopoly under Sections 28 and 29 of the Act, under Section 47 has granted a remedy to rectify a mark for want of ‘bonafide’ use. If use is shown to be not ‘bonafide’, it is vulnerable to rectification under Section 47.

69. It has been held by the U.S. Second Circuit Court in La Societe Anonyme Des Parfums Le Galion (supra) that de minimis and/or sporadic use does not necessarily constitute ‘bonafide use’. It has been held by the U.S. Second Circuit Court that to prove bona fide usage, the proponent of the trademark must demonstrate that his use of the mark has been deliberate and continuous, not sporadic, casual or transitory. It is evident that Respondents’ use of the impugned trademark on the webpage (and even invoices) is sporadic and casual use of the mark. Further, it is not ‘bonafide’ for the purpose of sustaining the statutory monopoly afforded to the mark under the auspices of the Act.

70. I am of the view that the Respondents’ reliance on the judgments of this Court in Eagle Potteries Private Ltd. (supra) and Shell Transource Limited (supra) is misconceived. There is no dispute with the proposition enunciated in those judgments that the burden of proving non-use first lies on the Petitioner seeking rectification. These judgments will not apply in the present case, as the Respondents though filing pleadings affirming that it has used the mark, relies on fabricated documents to sustain their case. Having prima facie found the material relied upon by the Respondents to be ex facie fabricated, the Respondents cannot escape the consequences by arguing that the burden continues to remain on the Petitioner to lead evidence of non-use of the impugned registered mark.

71. Further, the Supreme Court in Milmet Oftho Industries (supra), has held that although multinational corporations having no intentions of coming to India or introducing their product in India, should not be allowed to throttle an Indian Company by not permitting it to sell their product in India, this is provided that the the Indian company has genuinely adopted the mark and developed the product and is first in the market. The genuine adoption of a trademark is a basic underpinning of trademark law since it seeks to protect the honest trader’s efforts to stand by his wares and warrant their quality. When this is absent as in the present case, there lies sufficient cause for expunging a trademark.

72. The Respondents assailing the authority of the Constituted Attorney to file the present rectification proceeding on the premise that it was originally filed through the law firm S. Majumdar & Co, and that the Constituted Attorney was an advocate of the firm, which is in the teeth of the judgment of this Court in Oil And Natural Gas Commission (supra), is misconceived. The said judgment is inapplicable in the present case. This objection has not been pleaded and was only urged across the bar. Hence, no countenance of the same can be taken. In any event, the allegation that no Power of Attorney was filed, is incorrect. The Rectification Petition was originally filed in the IPAB and the procedure followed was of filing the Petition and the Power of Attorney under a covering letter enclosing the Petition. The Power of Attorney did not form part of the Petition itself. This entire file has been thereafter, transferred to this Court and the said Power of Attorney forms part of the record along with the said covering letter. The reference to ‘Focus International’ is not in the Power of Attorney, but has been erroneously mentioned in the separate notarial certification given by the UK notary. Thus, this would not have any bearing and/or impact on the Power of Attorney itself which is duly affirmed by the Director of the Petitioner. Further, from the record, the Constituted Attorney is not even an Advocate. It appears that the Petitioner has authorised Advocate Ms. Suvarna Joshi to prosecute this Petition before this Court. She is an independent practitioner. Thus, the role of Constituted Attorney and Advocate on record are consequently being performed by two separate distinct persons. In that view of the matter, the judgment relied upon by the Respondents, namely Oil And Natural Gas Commission (supra) has no application, as there is no conflict of interest.

73. I find much merit in the submission of the Petitioner that defects in power of attorney and/or authority to file pleadings are wholly curable and do not go to the root of the matter and/or render the same a nullity. This cannot be a ground to dismiss a just case and/or cannot be used to defeat a substantive right. This Court can at any time, direct the Petitioner to cure the alleged defects. This has been held in Western India Theatres Ltd. Vs. Ishwarbhai Somabhai Patel19, United Bank of India Vs. Naresh Kumar20 and The Bank of 19 1958 SCC Online Bom 99 para 20 20 (1996)6 SCC 660 Paras 9-11 Nova Scotia Vs. RPG Transmission Limited21. Thus, I find the objection taken by the Respondents on the maintainability of the Rectification Petition on this ground to be without substance and frivolous.

74. The contention of the Respondents that their trademark was registered under the Trade and Merchandise Marks Act, 1958 and that its validity was conclusive in terms of Section 32 of that Act is beyond the pleadings and is in any event, misconceived. The impugned trademark had been admittedly renewed under the present Act. The rights enjoyed by the Respondents and conferred by registration are now under Section 28(1) of the Act, which is qualified with the words, ‘subject to the provisions of this Act’. A fortiori, the registration is subject to the provisions of the Act which include Sections 47 and 57 of the Act. Thus, the registration of the trademark of the Respondents is consequently vulnerable to challenge under Section 47 as well as 57 of the Act, particularly since there was no bonafide use and the impugned trademark has been obtained by fraud. This contention of the Respondents is therefore, without merit. 21 (2003) 66 DRJ 24 Para 4

75. The argument of the Respondents that the Petitioner had only proved use of its trademark from 2014 onwards and that too outside India and that the Petitioner has no trans-border reputation would have no relevance to the present enquiry. This, in view of the present proceedings being for rectification of the impugned trademark and not in respect of trademark infringement and/or passing off where such issues are relevant. The only enquiry before this Court would be whether the impugned registered trademark is liable to be rectified under Sections 47(1)(a) or 47(1)(b) of the Act and/or for ‘sufficient cause’ under Section 57 of the Act.

76. Having arrived at a prima facie finding that the impugned registered trademark is liable to be rectified under Section 47 for having been borne out of the fraudulent adoption and not having been bonafidely used, the use by the Petitioner of its trademark from 2014 onwards and that too outside India is of no consequence. Thus, the judgments relied upon by the Respondents in support of their contention have no application to the facts of the present case.

77. The further reliance of the Respondents on the 2904714 by Order dated 7th April 2021 and the factum of the Review Application pending against the same is misplaced as these facts are wholly irrelevant and beyond the aforementioned enquiry in these proceedings.

78. The locus of the Petitioner for maintaining this Petition is established, as there is a likelihood of some injury or damage to the Petitioner by the impugned trademark remaining on the register and the Petitioner’s interest is affected in some possible way. The judgment of the Supreme Court in Infosys Technologies Limited (supra) is apposite. In the present case, the Petition for Rectification was filed on the basis of the Petitioner being desirous of launching goods in India under its Le Shark label mark which were otherwise available worldwide. Thus, the Petitioner has a commercial interest in having the impugned registered trademark rectified and/or expunged.

79. The reliance placed by the Petitioner on the order of the Application on the basis of conflict with the Respondents’ impugned trademark had only been cited to further augment the Petitioner’s locus standi to maintain the present proceeding. This Order is not under challenge in these proceedings. Further, the contention of the Respondents on disclosure of the pendency of the Review Application is misconceived. This fact is only disclosed by the Petitioner for the purpose of completeness of record. The Petitioner’s mark can only proceed for registration pursuant to the impugned mark being expunged.

80. The Respondents’ contention insofar as the present Rectification Petition being vexed by delay is of no merit. It is settled law that delay is a defense in equity. The principle behind the doctrine is that rights which may have accrued to a party should not be disturbed unless there is a reasonable explanation for the delay. This has been held in M/s. Dehri Rohtas Light Railway Company Limited (supra). Given the aforesaid prima facie finding that the Respondents’ original adoption of the impugned trademark is itself dishonest and they have not been able to produce reliable evidence of any actual use of the impugned trademarks as well as having relied on ex-facie fabricated invoices, disentitles the Respondents from claiming any equities. Thus, any delay in filing of the Rectification Petition would be immaterial.

81. In any event, the Petitioner was wholly unaware of the Respondents’ registration until they applied for registration of their mark in India and when the impugned mark was cited in the Examination Report. Thus, the Rectification Petition has been promptly filed thereafter.

82. Section 57 of the Act confers discretion upon the Court to maintain purity of the Register. Having prima facie held that there is fraudulent adoption of the impugned trademark by the Respondents, the impugned trademark merits removal from the Register for sufficient cause.

83. Accordingly, the Commercial Miscellaneous Petition is made absolute. The entry relating to Trademark No. 466002 in Class 25 shall be removed/expunged from the Register of Trade Marks.

84. The Commercial Miscellaneous Petition is disposed of in the above terms. There shall be no order as to costs. [R.I. CHAGLA J.]