In a recent Rectification Petition, the IPAB passed an order for the removal of the Trademark Tiger Brand label (application no. 1330146 under class 34) from the Register of Trademarks. The order was passed mainly on the grounds of wrongly claimed date of first use of the trademark.
The Applicant (Shiv Prasad Aggarwal) claimed that, in the year 1955, the Applicant’s predecessor, M/s. Jagan Nath & Sons had adopted the trademarks Tiger (label) and Tiger (device) for its products. Subsequently, the marks were registered and since then, the marks were continuously used until 1973. However, due to some differences between the partners, the assets & liabilities of the firm were divided and all the rights and liabilities in the trademarks came to the share of one Partner, Shiv Prasad Aggarwal. Later, he started a firm with the name ‘Shiva Tobacco Company’ from the year 1973 and the change in proprietorship was recorded before the Registrar of Trademarks.
The Applicants filed the rectification on the grounds that the registration of the trademark Tiger Brand label had been wrongly made and that the Respondent was not the proprietor of the trademark on the date of application for registration as per section 18 of the Trade Marks Act, 1999 (the “Act”). The Respondent, in its counter statement denied all allegations made by the Applicant and stated that it had adopted the trademark Tiger (label) through its predecessor i.e. Respondent’s father. The Respondent’s trademark was initially registered (trademark application no. 320131 under class 34) in the name of the Respondent’s father, Md. Azeemuddin, in the year 1976. However, this registration lapsed because of non renewal and on the death of the father, in April, 1994, the Respondent took over the business by way of family understanding and arrangement. The Respondent then applied for new registration (trademark application in question).
The counsel for the Applicant argued that the Respondent had obtained the registration by fraud by firstly giving the wrong date of first use and then that there was no record found regarding mutual family understanding and arrangement between the legal heirs. The Respondent in its counter statement in the opposition proceedings in application no. 1495476, has admitted that the use was limited to the States of Karnataka, Andhra Pradesh and Tamil Nadu. The first registration under no. 320131 was therefore granted only on territorial basis. The learned counsel for the Respondent then submitted that the onus to prove the case always lay on the Applicant.
The IPAB noted that the Respondent claimed the use of the trademark since January 1, 1962 through its predecessors. However, there was no material on record to prove that it acquired the right to the trademark under a family undertaking and arrangement. The registration was, therefore, found to be in contravention to section 18 of the Trademarks Act. Further, the IPAB pointed out that the Respondent’s statement claimed it had been using the trademark since 1994, after the death of his father. Therefore, the IPAB held that the impugned trademark deserved to be rectified from the Register of Trademarks.
In view of this decision by the IPAB it becomes imperative for an Applicant to submit a correct date of first use at the time of filing of the Trademark application.