INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018
THURSDAY, THIS THE 12TH DAY OF SEPTEMBER, 2011
Hon’ble Smt. Justice Prabha Sridevan … Chairman
Hon’ble Ms. S. Usha … Vice-Chairman
Siyaram Kasturi Devi Educational Society,
182, Shankar Market,
Which owns and conducts the affairs
of the Master School of Management
situated at F-17, Shastri Nagar,
Meerut – 250 005 … Applicant
(By Advocate – Shri. Vinod Bhagat)
1. The ICFAIAN Foundation,
Road No.3, Banjara Hills,
Hyderabad – 500 034
and also at Plot No.52,
Hyderabad – 500 082. (AP)
2. The Registrar of Trade Marks
Trade Marks Registry,
IPR Building, GST Road,
Chennai – 600 032. …Respondents
(By Advocate – None)
ORDER (No. 137/2011)
HON’BLE MS. S. USHA, VICE-CHAIRMAN:
The above three original rectification applications are filed for removal of the trade mark “The MSM Program” registered under Nos.934636 in Class 9, 934648 in Class 16 and 1374454 in Class 41 respectively under the provisions of the Trade Marks Act, 1999 (in short the Act).
2. The applicants are an old established non-profit organization engaged in imparting knowledge through the system of education thereby creating a meaningful, vibrant and responsive atmosphere of mutual trust leading to personality development of its students since the year 1995. The applicant’s society consists of committed professionals, academicians, reputed administrators and social workers who continuously provide innovative management education with a gobal perspective. The society is well recognized as a philanthropic, social organization which aims at institutional development and imparting holistic education for all round personality development of its students.
3. Education is offered by the applicants through its Institutes which conduct specialized course in various branches of academics. With the opening of the economic skies, there has been a demand and need to nurture and educate students who are highly skilled and professionally trained managers who can run business operations effectively. Master School of Management, which is also known by its abbreviated name MSM, is one such Institute located at Meerut in uttar Praesh which imparts Business Management Education since the academic year 1996-97. Master School of Management offers a 2 years full time Post Graduate Diploma in Business Management (PGDBM). The PGDBM course offers specialization in Finance, Marketing, Operations and Human Resource Management.
4. Since the year 1996-97 Master School of Management for short referred to as MSM, functions as a distinct Management Institution seeking to develop managers with global perspective and to equip them with requisite skills in management, control and decision making. The applicants submit that they are the first adopters and the rightful proprietors of the name MSM, being the name of their Institute viz. Master School of Management, offering highly specialized Business Management studies. The PGDBM course offered by the applicants in its Master School of Management is symbolic of and is commonly known by the students, the academicians, the faculty and the people in the trade as MSM, MSM has an edge over the other business schools as it has been primarily established to provide innovative, pragmatic and flexible learning programmes to students by a highly qualified and committed faculty. By virtue of offering such specialized training since the year 1996-97, MSM has come to be identified as a trade mark in the course of business. The applicants submit that MSM is a distinctive indicia of the services offered by their Institute and the same has all the trappings of an invented trade mark distinctive off the applicants. The said services under the trade mark MSM are offered by the applicants and imparted unto its students through use thereof on recorded computer software, computers, literatures, teaching materials, manuals, books, instructional and educative materials and brochures. All of which bear the trade mark MSM. By virtue of such continuous use since the year 1996-97, the trade mark MSM has become synonymous with and has come to be identified with the educational programme offered by the applicants in their Institute. The applicant’s MSM programme has been widely used and extensively promoted over the years. This valuable common law rights have come to vest in the said trade mark MSM which is associated exclusively with the applicants.
5. In relation to the aforementioned services, the applicants are the owners and proprietors of the trade mark MSM which was honestly, independently conceived, adopted and has been used by the applicants continuously and uninterruptedly since December 1996. MSM has received a lot of name and fame and enormous goodwill and reputation has come to vest in the said trade mark and name. So much so that Master School of Management which was in the year 1996-97 duly approved to conduct MSM-PGDBM courses in its Institute with an annual student capacity of 60, has swelled in number and presently for the academic years 2009-10 it has recorded an annual student capacity of 180 students. MSM course has been duly approved by the All India Council for Technical Education, Ministry of HRD, Govt. of India, New Delhi. The applicants own and operate websites on the internet viz.http://www.msmindia.org and www.masterindia.com which are fully functional websites.
6. Owing to long, continuous, bonafide and extensive use, immense goodwill and reputation has been generated in the said trade mark MSM which has come to be exclusively associated with the applicants and none else. That the use of the mark MSM, in any manner whatsoever, in the trade connotes and denotes to the applicants and their services and goods. Thus by virtue of honest and independent adoption, prior continuous use since December 1996, the applicants are the bonafide uses and the rightful proprietors of the trade mark MSM having regard to the provisions of Section 18 of the Act.
7. The respondent No.1 had registered the trade mark “The MSM Programme” in classes 9, 16 & 41. Based on these registrations, the respondent No.1 had filed a civil suit for infringement and passing off against the applicant’s institute, (Master School of Management) before the District Court at Hyderabad in OS No.123 of 2009. The applicants and the respondent are using the identical trade mark for the same goods/services. In fact, the applicants are prior users of the said trade mark. The applicants are thus aggrieved persons and are therefore entitled to file the present application for rectification on the following grounds:-
a. that the respondent No.1 is not the actual owner of the said trade mark;
b. that the respondent No.1 is the subsequent user of the impugned trade mark;
c. that the impugned trade mark is neither distinctive nor capable of being distinguished of the goods/services of the respondents and therefore offends the provisions of Section 9(1)(a) of the Act;
d. that the trade mark MSM is totally associated with the applicants services among the public, the use of the impugned trade mark is likely to deceive the public and results in confusion in the minds of the public and therefore is in contravention of Section 9(2)(a) of the Act;
e. The impugned trade mark and the services of the respondent are identical to the applicants earlier user and therefore there are is likelihood of association with the applicant’s prior used trade mark and consequently prohibited registration under Section 11(1)(a) of the Act;
f. that the applicants prior used mark is a well known trade mark and therefore in contravention of Section 11(2) of the Act;
g. that the impugned trade mark is prohibited under section 11(3) of the Act as the use of the impugned trade mark would result in passing off the goods and services of the respondents as and for those of the applicants;
h. that the respondent cannot have the benefit of section 11(11) & 12 of the Act to claim, honest and concurrent use as they were aware of the applicants use;
i. that the impugned registration is in contravention of the provisions of section 18 of the Act;
j. that the impugned registration has been obtained without any bonafide intention to use the same;
k. that the impugned registration is wrongly remaining on the register without sufficient cause;
8. In view of the above, the applicants pray that the impugned trade mark registered under classes 9, 16 and 41 is liable to be removed.
9. The respondent No.1 though had entered appearances through a counsel in November 2009, had not filed their counter statement till the date of hearing. On the date of hearing the respondents counsel reported no instructions and therefore we set the respondent exparte and heard the applicants counsel.
10. Learned counsel for the applicant Mr. Vinod Bhagath reiterated what was stated in the rectification application. During the course of arguments, the counsel referred to the copy of the plaint filed in OS No.123 of 2009 before the City Civil Court at Hyderabad and submitted that it is the respondent No.1’s own admission that they had been using the trade mark since the year 1999 which is subsequent to the applicants use since the year 1996-97.
11. We have heard and considered the arguments of the counsel for the applicant and have gone through the pleadings and documents.
12. The applicant herein is a person aggrieved as a Civil suit has been filed against the applicant by the respondent No.1 based on the registration granted. The applicant who is the prior user and adopter of the trade mark is a person aggrieved in our view. Being aggrieved by the filing of the civil suit and also as a prior adopter and user of the trade mark, the applicant has the locus standi to file and maintain an application for rectification.
13. The impugned trade mark is MSM programme which is an abbreviation of Master of School Management. The respondent has not filed their counter statement to state the reason for the adoption of the trade mark. The applicants though do not claim that MSM is their trade mark but have submitted that the Master School of Management (MSM) functions as a distinct management institution to develop managers with global perspective and to equip them with requisite skills in management, control and decision making since the year 1996-97. The respondent No.1 admission is that they adopted and used the trade mark in the year 1999 who are definitely the subsequent users. The respondent therefore cannot claim to be proprietor of the trade mark impugned.
14. In view of the above, we are of the opinion that the impugned trade mark “The MSM Program” registered under Nos.934636 in class 9, 934638 in class 16 and 1374454 in class 41 deserves to be expunged from the register of trade marks. Accordingly, the original rectification applications are allowed with a direction to the Registrar of Trade Marks for necessary action.
(S. Usha) (Justice Prabha Sridevan)
(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)