In a recent Judgment dated21.01.2019 passed by Hon'ble High Court of Delhi
in Writ bearing W.P.(C) 7983/2012 titled as Khushi Ram Behari Lal Vs Jaswant
Singh Balwant Singh, the Hon'ble Court has returned the finding that
Copyright Registration is no proof of user. The case of the Respondent was
rejected on the ground of its documents being suspicious in nature.
The said writ was filed by the Petitioner against refusal of its trademark
application Train Brand Labelunder no. 609141 in class 30in relation to rice
by the Ld. Registrar of Trademark.
The petitioner claimed to be partnership firm trading as M/s Khushi Ram
Behari Lal (Export Division) comprising of three partners which was
established in the year 1978 and has been carrying on the business of
processing, marketing and exporting of rice since then. The trademark Train
Brand With Device of Train was claimed to be used by the Petitioner since 1990
in relation to rice.
The Respondent filed Notice. Opposition claiming itself to be prior user and prior
registered proprietor of its trademark and Copyright Train in relation to rice.
The Petitioner also filed TM-16.learned Registrar of Trademark, vide its
order dated 12.10.2006 dismissed the Form TM-16 dated 17.02.2006 filed by the
petitioner and also allowed opposition of the respondent . Resultantly refused
the application for registration of the subject matter trademark filed by the
Petitioner for Train Brand Label under no. 609141 in Class 30.
Being aggrieved of the said order passed by the Ld. Registrar of Trademark, the
Petitioner filed the Appeal before the IPAB, bearing No. OA/05/2007/TM/DEL.
However the same was dismissed vide impugned order dated 18.5.2012passed by the
Ld. IPAB (Intellectual Property Appellate Board), even after observing
Respondent's bills to be suspicious.
The Ld. IPAB also observed "that the petitioner / appellant have raised a number
of other doubts about the credential of the opponents evidence which would lead
one to believe that the impugned mark has been willfully refused by the Assistant
Registrar. But that misses the basic flaw in the applicant‟s case. Accordingly,
it is observed by the Appellate Board that no matter how much he may canvas, the
fact of the matter is the opponents are already the registered proprietor of
another trade mark under no. 405933 in Class 30 in respect of rice since 1983."
It is clear that the Ld. IPAB observed Respondent's documents being suspect,
however dismissed the Appeal of the Petitioner mainly on the ground of its
Registration, without appreciating that the Registration is no proof of user.
The Hon,ble High Court of Delhi observed as under" perusal of the impugned order
that the learned Appellate Board has ignored the fact that the said registration
of the respondent was only for the word "TRAIN" and the same was registered as
proposed in the use. The learned Board and the Registrar ignored the fact that
the respondent tried to prove the user by forged and fabricated documents and
the petitioner had already filed rectification petition against the said
registration." Thus the Hon'ble High Court of Delhi rightly taken note of the
forged documents filed by the Respondent.
Vide it's Judgment dated 21.09.2019, the Hon'ble High Court of Delhi set aside
the order of the IPAB on the ground of inter-alia bills of the Respondent being
suspicious in nature. In the Judgment, the Hon'ble High Court has also extracted
the bills of the Respondent, where the logo of Respondent was appearing for
rice, but the goods were shown as RUSK and SUGAR.
The Hon'ble High Court of Delhi also observed that copyright registration is no
proof of user. The said observation is as under" On perusal of the documents
on record, I have no hesitation to say that the learned Appellate Board has
relied on the Copy Right Registration of respondent under No. A44877/84. The
Copy Right Registration of the art work of "TRAIN" brand is extraneous for the
purpose of proving the use subject Trade Mark".TheHon'ble High Court of Delhi
further ordered the said trademark application TRAIN BRAND Label under no.
609141 in class 30 for registration.
Thus the case of the Respondent was rejected on two counts. One that copyright
registration is no proof of user. Second that the Respondent tried to prove
prior use by filing forged and fabricated documents.
Written by: Ajay Amitabh Suman, Advocate,
Hon'ble Delhi High Court
# Delhi High Court Link: http://lobis.nic.in/ddir/dhc/SKT/judgement/24-01-2019/SKT21012019CW79832012.pdf