Raghbir Singh, Vice-Chairman

1. C.O. No. 11/96 has been transferred to this Board from the High Court of Delhi in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TRA/104/2004.

2. Application for rectification of the Register under Sections 107, 46 and 56 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the) has been filed by the petitioner M/s Jindal Rolling Mills Limited against respondent No. 1 Shree Ganesh Rolling Mills and respondent No. 3 M/s Shree Ganesh Rolling Mills Limited, both of Hissar. According to the petitioner it had been manufacturing and selling girders, joists and rolling iron and steel products since 1972 under the trade mark JINDAL CO. and Y.R. JINDAL. Respondent No. 3 filed Suit No. 979 of 1996 before the High Court of Delhi for infringement of its registered trade mark, passing-off and rendition of accounts of profits etc. against the petitioner. Respondent No. 3 claimed to be the registered owner and proprietor of the Trade Mark No. 375928. The present petition is with a view to rectify the Register by removing the said trade mark therefrom. The petitioner claims to be an aggrieved person within the meaning of Section 56 of thein view of the infringement and passing-off suit filed by respondent No. 3 against it in the High Court of Delhi.

3. Petitioner claims that the impugned Trade Mark No. 375928 in class 6 was obtained by respondent No. 1 by concealing material facts and making false statements and misrepresentations and the same is in contravention of the provisions of the Trade and Merchandise Marks Act, 1958. It was wrongly registered and wrongly remains on the Register of Trade Marks and is liable to be cancelled. There had not been any bona fide use thereof by the registered proprietor over a period of five years and one month upto the date of filing of the present petition. Respondents are not the proprietors or owners of the trade mark. They committed fraud upon the Trade Marks Registry in securing the registration of the marks in question. They concealed material facts and made misleading averments to secure the impugned registration. The registration was in contravention of the provisions of Sections 9, 11, and 18 of the. The mark was not distinctive of the goods of respondent No. 1 at the time of registration and thus its registration was made in contravention of the provisions of Section 9 of the. The mark is not distinctive on the date of commencement of the present proceedings. The cause of action for filing the present petition arose in May, 1996 when Suit No. 979/96 was filed against the petitioner by Shree Ganesh Rolling Mills Limited in the High Court of Delhi. Respondents No. 1 and 3 in their reply filed before the High Court of Delhi on 17.12.1996 denied the averments of the petitioner generally and specifically mentioned that the petitioners are the pirators of the trade mark JINDAL of the respondents in respect of girders, joists, rolling iron and steel products and thus they have no right to initiate rectification proceedings. The said mark is being used by the respondents since 1.1.1974 openly and continuously. The petitioner is otherwise also not maintainable as the registration of impugned mark has been renewed. The petitioner in his rejoinder dated 21.2.1997 denied the averments of the respondents No. 1 and 3 in their reply.

4. The case came up for hearing before the Board on 12.8.2004 in its sitting held at New Delhi. Learned counsel Shri A.K. Goel appeared for the petitioner and learned counsel Shri R.K. Aggarwal appeared for respondents No. 1 and 3.

5. Learned counsel for the petitioner argued that the respondents are not the proprietors of the mark since registration of the mark was not distinctive of their products. It was deceptively similar to the mark of the petitioner and the trading style of the petitioner and thus was violative of the provisions of Section 11(a) of the. Petitioners are prior users of the mark in relation to the same products and thus the impugned mark does not qualify under Section 12(1) of thealso. Since the mark was not distinctive and does not meet the requirements of Section 9 of theand did not muster the scrutiny of Sections 11(a) and 12(1) of the Act, respondent were not qualified to be the proprietors of the mark under Section 18(1) of the.

6. Learned counsel for the petitioner argued that under the impugned mark user claimed is as from 1974, whereas there is nothing on record to indicate that the mark has been used from that date. The certificate of registration was granted from 14th May, 1981. He drew our attention to the certificate of the Chartered Accountant of the respondent and placed at p. 3 of file III wherein certain sales having been made on 18.12.1975 and 19.12.1975 to the respondent by some other concern have been certified. The sales are for an insignificant amount. Learned counsel brought to our notice the copy of an agreement dated 25.1.1996 between respondent No. 3 and the petitioner indicating that the petitioner had been doing conversion of ingots/billets to girders works for the respondent.

7. Learned counsel for the respondents vehemently opposed the contentions of the petitioner. They claimed that they are using the trade mark for the products since, 1974. They drew our attention to the copy of their registration certificate placed at page 59 of file No. 3. The Trade Mark No. 375928 certificate was issued on 31.7.1985 effective from 14.5.1981 for the registration of mark JINDAL for sale in the States of Haryana, Rajasthan and Uttar Pradesh. He drew our attention to the certificate of their Chartered Accountant, Shri Onkar Mal, Gurera Chowk, Siwani Mandi, Distt. Hissar (Haryana) for the products sold by M/s Goel Steel Industries to the respondent. He drew our attention to the provisions of Sections 46(1)(a) and (b), 9(2) and 18(1) of the and argued that the respondents are in strict compliance of these provisions.

8. Learned counsel for the petitioner has miserably failed to establish his case for rectification. Onus of proof lay upon him. The petitioner miserably failed to make out any ground for rectification except making some vague averment which are insufficient to consider the claim of the petitioner. There is nothing wrong in the registration of word Jindal per se. Application for registration was considered after giving opportunity of opposition. Petitioner and the respondents belong to the same town. Petitioner could have opted to file the opposition. The present application is nothing but a counter blast action for the suit of infringement filed by the respondent against the petitioner.

9. In view of the above, we dismiss the application with no order as to costs.