INTELLECTUAL PROPERTYAPPELLATE BOARD
(Circuit Bench sitting at Kolkata)
THURSDAY, THIS THE 1st DAY OF MARCH, 2012
HON’BLE Smt. JUSTICE PRABHA SRIDEVAN … CHAIRMAN
HON’BLE Shri V. RAVI … TECHNICAL MEMBER
M/s Paramount Agencies,
5801/2, Chawla Bazar,
Delhi – 110 006. … Applicant
(Represented by Advocate: Mr. Pankaj Kumar)
Mr. Harshad Mehta,
Trading as M/s Sunny International,
114, Rabindra Sarani,
Ground Floor, Room No. 12,
Kolkata – 700 007. … Respondents
(Represented by Advocate: Shri Tinkari Jana)
Hon’ble Smt. Justice Prabha Sridevan, Chairman:
The applicant has filed this rectification petition for removal of the trade mark “WHITE CRANE” registered under No. 1683147 in class 7. Pending hearing of the ORA he has moved a miscellaneous petition.
2. The learned counsel appearing for the applicant raised the following grounds for grant of interim injunction:
(i) The applicant has applied for the mark on 14.12.2007 for registering the mark “WHITE CRANE” in respect of sewing machine needles claiming user from 01.11.2006. The respondent is a subsequent applicant who applied for registration on 02.05.2008 for the same mark “WHITE CRANE” in respect of sewing machine and their spare parts and the registration was granted on 01.04.2010. The learned counsel submitted that the respondent claimed user from 01.04.2005. The learned counsel submitted that though the applicant’s application is earlier, their application has not been granted registration while the respondent’s application has secured registration.
(ii) Next the learned counsel submitted that the claim of user from 01.04.2005 is not free from doubt since in the bunch of invoices that have been filed some carry the words WBST No. at the bottom and some invoices do not. So it is doubtful if they are genuine invoices or they are produced for the purpose of securing registration.
(iii) Thirdly, the learned counsel submitted that they had filed S.18(4) petition on 29.07.2009 and without disposing of the same or granting an opportunity to the applicant, this registration has been granted. The learned counsel read out S.18(4) and submitted that even if the applicant had failed to file the notice of opposition within time, the principles of natural justice required that an opportunity should be granted when applications under S.18(4) are filed and the Registrar himself exercises his jurisdiction. The learned counsel submitted that if orders are passed with regard to legal position in this, the rights of the parties will be more secure. The learned counsel, therefore, submitted that this was the case where stay should be granted.
3. The learned counsel appearing for the respondent submitted that it is clear from the evidence that the advertisement was before acceptance which would show that the Registrar was not convinced about the registrability of the mark.
4. The learned counsel appearing for the respondent submitted that the claim of user from the year 2005 has been clearly proved by the many packs, invoices and the fact that in one or two invoices there is some discrepancy would not destroy the weight of this evidence and all the invoices clearly show the word “WHITE CRANE” whereas none of the bills produced by the applicant bear the trade mark. The learned counsel next submitted that the partnership deed copy which has been enclosed in the paper book would show that it came into existence only in 2007 when the claimed user of 2006 cannot be believed. Next he submitted that as regards the right to be heard in an application under S.18(4), it is clear that the applicant has failed to avail of his right to file the notice of opposition and not having done that in time, he cannot claim any right indirectly.
5. We have considered the rival submissions and gone through the documents produced by them. Prima facie we find that the respondent has been using the mark from the year 2005 and the applicant admittedly is a subsequent user. The legal position regarding the right to be heard in application under S.18(4) though no notice of opposition was filed, may be decided at the time of final disposal. The learned counsel for the applicant also pointed out that the invoices produced by them carry the words “WC” which indicate “WHITE CRANE”. The relevance of the documents and the extent to which they prove the user by both the parties and the duration of user will all be tested at the time of final hearing.
6. For the purpose of this application we are of the opinion that there is prima facie evidence of prior user by the respondent and therefore we do not think the petitioner is entitled to an order of stay. All the questions raised by the learned counsel for the applicant shall be tested at the time of final disposal. This is only a prima facieexpression with regard to user for the purpose of granting interim order.
6. M.P.No.182/2010 is dismissed. No order as to costs.
(V. RAVI) (JUSTICE PRABHA SRIDEVAN)
TECHNICAL MEMBER CHAIRMAN
(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)