S. Usha, Vice Chairman

ORA/275/2009/TM/KOL

1. The applicant is a company incorporated under the provisions of the Companies Act. The applicants and its sister concern, M/s. Relaxo Rubber Private Limited are together recognized as one of India's leading footwear manufacturers. Their business has grown by leaps and bounds over the years. They are the proprietors of the trademark Relaxo in respect of footwears. The trade and public recognize the goods originating from the applicants' source as goods of high quality and standard. The applicants in addition to the adoption and use of the trademark Relaxo have also had the House Mark "Relaxo" and the applicants had bonafidely and honestly adopted the trademark Spark/Sparx. They had also adopted and used the trademarks such as, Spirit, Leatherite, Relaxo School Mate, Flite, Velo, Relaxo, Magma, Sprint, etc. They had been using the marks independently or in conjunction with or without their House Mark Relaxo honestly and concurrently.

2. The applicant is the registered proprietor of the trademark Spark in respect of footwear under No. 1229602 dated 01.09.2003. The applicant has been using the trademark since the year 2003. The applicant has also adopted and used the trademark Sparx. Since the year 2002, the applicant had used the trademark Sparx continuously and honestly as an independent mark or with the House Mark 'Relaxo'. At that time, no such mark i.e., Spark/Sparx was in use by any other manufacturer in respect of footwear. The applicants trademark Sparx was continuously and extensively used and was advertised through various medias.

3. The applicants had also been exporting goods under the trademark, Sparx to various countries. The applicant is the proprietor of the trademark, Spark/Sparx in respect of footwear on account of prior and bona fide adoption, extensive use and wide publicity. The trademark Sparx has thus become very famous and well known trademark.

4. In order to secure statutory protection to the trademark Sparx the applicant filed an application for registration under No. 1315804 in class 25 on 18.10.2004 and the same is pending registration. As registered proprietor of the trademark Spark and being the common law proprietor of the trademark Sparx, the applicants have acquired an exclusive right to the use of both the trademarks Spark/Sparx in respect of the goods.

5. The trademarks spark and sparx are distinctive trademarks of the applicants. They have established large and extensive sales of their products under the trademarks spark/sparx for Rs. 150 crores and have spent over fourteen crores towards publicity.

6. The applicant's reputation acquired in the trademark sparx/spark is so immense that it not only covers the goods of its manufacture and sale, but also extends to the goods that are cognate and/or allied in nature, and/or the goods of the same description, and/or the goods which are dealt with and purchased by the same class of purchasers.

7. The adoption and/or use of the marks Spark/Sparx or any other marks which are identical and/or deceptive thereto on the part of someone else is bound to cause confusion and deception among the purchasing public and members of the trade.

8. On 17th November, 2009, it came to the applicant's knowledge that the respondents are contemplating the use of the trademark Sparx in respect of footwears. The applicants caused a search. The search report revealed that the respondent had obtained registration of the trademark sparx under No. 342264 in respect of footwears in the year 1978 without having any bona fide intention to use the same commercially or in the course of trade. The application for registration was made on 01.11.1978 with the claim of proposed to be used. The respondent had no bona fide intention to use the trademark at the time of filing of the application for registration as well till date. The applications, on the other hand, had been using the trademark sparx openly and extensively since 01.04.2002 without any interruption.

9. The entry relating to the trademark No. 342264 has been erroneously made and is wrongly remaining on the register without sufficient cause. The impugned registration was obtained in bad faith. The registration of the impugned trademark is in blatant violation and utter disregard to the principles of law, equity and good conscience.

10. The applicant is aggrieved over the illegal registration and is seeking cancellation on the following grounds:

(a) that the registration is wrongly made and is wrongly remaining on the register;

(b) that the entry was made without sufficient cause;

(c) that the respondent was not the proprietor of the trademark on the date of filing of the application for registration;

(d) that the registration has been obtained on false claim of proprietorship;

(e) that the impugned trademark was not distinctive of the goods at the time of registration;

(f) that the registration has been obtained in bad faith;

(g) that registration has been obtained by playing fraud;

(h) that the registration is in contravention of the provisions of the Act;

(i) that the registration has been obtained by concealing material facts and by making misrepresentation before the Registrar of Trade Marks;

(j) that the trademark was registered without any bona fide intention on the part of the respondent to use the said trademark in relation to footwears and that there has in fact been no bona fide use of the trademark Sparx on the part of the respondent in relation to footwears as a proprietor for the time being upto a date three months before the filing of the present rectification application and therefore liable to be expunged in view of the provisions of section 47(1)(a) of the Act;

(k) that upto a date three months before the date of filing the present application for rectification a continuous period of five years from the date on which the impugned trademark Sparx was actually entered on the register or longer had elapsed during which period the trademark was registered and during which period there was no bona fide use in relation to the footwears and as such, the entry relating to the impugned trademark is liable to be rectified in view of the provisions of section 47(1)(b) of the Act;

(l) that the respondent abandoned the claim of proposed use of the impugned trademark by not using the trademark for a continuous period of 21 years;

(m) that the threat of the respondent to invade the applicants' legal rights on account of impugned registration is in bad faith and with a view to trade upon the reputation built by the applicant in the past few years and also having spent large amounts on the publicity; and

(n) that the business of the applicant is hampered or is likely to be hampered on account of the continuation of the impugned registration and therefore, the applicant is a person aggrieved within the meaning of Section 57 of the Act.

11. The respondents herein filed their counter statement denying the various material averments and allegations made in the application for rectification. The respondents stated that it is the largest retailer and leading manufacturer of footwear in India and is a part of the Bata Shoe Organization. The registered proprietor was incorporated in India as Bata Shoe Company in the year 1931. In 1973, it changed its name to Bata India Limited and became a public company. The respondent has five factories in India where world class footwear is manufactured and it also owns tanneries. Globally, the Bata group runs 40 production facilities across 26 countries and manages a retail presence in over 50 countries. The respondent has been conferred various prestigious awards.

12. The respondent has established itself as India's largest footwear retailer and has blended the global reputation of the Bata group with its unique India identity. The respondent owns various other brands like, Bata, Marie Claire, Sparx, Hush Puppies, Dr. Scholl's, North Star, Power, Bubblegummers, etc. The trademark Sparx was honestly conceived and adopted by the respondent as early as 1978. The trademark Sparx is registered under No. 342264 in class 25 with effect from 01.11.1978. The said registration is subsisting and duly renewed from time to time. The respondent has used the trademark Sparx in India and also used the said trademark Sparx in various other countries worldwide.

13. The public in India are aware of the various brands introduced by the respondent including Sparx. They have invested a great deal to build its brand reputation by consistently promoting its trademarks which have become well known and are attributed to the respondent by the public. They have advertised their products under the brand Sparx through various media worldwide.

14. The sales of the respondents goods bearing the house mark Bata and its various sub brands run into several crores of rupees annually. The respondents have voluminous sales for their goods under various trademarks in India. In addition, they have huge volume of sales in other countries outside India. The respondents are the registered proprietors of the trademark Sparx in India and abroad.

15. As regards the averments made in the application for rectification, the respondents state that the applicants had not bona fidely adopted the trademark Sparx/Spark. The registration of the trademark spark in favour of the applicant is irrelevant to the facts of the case on hand. The respondents have filed an application for rectification against the said registration of the trademark "Spark".

16. The adoption of the trademark Spark/Sparx by the applicant is mala fide and calculated to misappropriate the respondents' trademark Sparx. The applicant has sought to mislead and deceive consumers by using the trademark Sparx. The user claimed by the applicant is subsequent to the adoption and the use by the respondents. It is not correct to state that on the date of adoption of the trademark Sparx, there was no one using the trademark Sparx. It is an accepted practice of business to make a search and then, adopt a trademark in order to avoid any dispute among traders. The applicant who is in the same trade cannot plead ignorance.

17. The applicant has not used the trademark Sparx continuously. The applicant is not the prior adopter and bona fide user of the trademark. The applicant who is the registered proprietor of the trademark Spark had not used the trademark Spark, but had used the trademark Sparx subsequent to the applicant's Sparx use only to trade upon the goodwill and reputation earned by the respondent. The applicants claim of user since 2002 whereas the respondents have used the impugned trademark since 1978 and therefore, prior in use of the trademark Sparx. The respondent has been using the trademark Sparx and has continuing intention to use the same.

18. The word, Sparx is not a word in the English dictionary and is an arbitrary trademark for footwear and is thus, vested with inherent distinctiveness as an invented word. The registration has been granted in conformity with the provisions of the Act. An Ex-Officer of the respondent joined the services of the applicant and thereafter the applicant was aware of the respondents' use of the trademark Sparx. The registration has been obtained in good faith and not on misrepresentation.

19. The application is liable to be dismissed as the applicant is not a "person aggrieved". The ground of non-use is not correct as the applicant is in the same trade and is deemed to have had knowledge of the respondents' use and also that the Ex-Officer of the respondents is in service of the applicant.

20. In reply to the counter statement, the applicants filed their reply denying the various averments made therein.

ORA/92/10/TM/DEL

21. This original rectification application is filed for removal of the trademark Spark registered under No. 1229602 in class 25. The application has been filed by the respondent in ORA/275/09/TM/KOL against the applicant therein. The applicant herein has filed M.P. No. 82 of 2011 for impleading the Registrar of Trade Marks, New Delhi as respondent in the rectification petition for which the respondent has no objection. Accordingly, M.P. No. 82 of 2011 is ordered.

22. The applicant herein has filed this application (after stating various facts stated in the counter statement in ORA/275/09/TM/KOL) on the following grounds:

(a) that the applicant herein is the prior adopter and user of the trademark Sparx;

(b) that the applicant adopted the trademark Sparx in 1978;

(c) that the applicant is the registered proprietor of the trademark Sparx under No. 342264 in Class 25 as of 01.11.1978;

(d) that the applicant also holds registration outside India;

(e) that the respondent herein has adopted an identical/similar trademark Spark only to trade upon and earn good profit on the reputation earned by the applicant;

(f) that the adoption and use of the trademark Spark by the respondent is deceptively and confusingly similar to the applicant's trademark Sparx;

(g) that the use of the trademark Spark by the respondent is likely to cause confusion and deception among the public;

(h) that the respondent is not the proprietor of the trademark Spark and the registration is in contention of the provisions of Section 18 of the Act;

(i) that the impugned trademark is phonetically and visually identical to the applicant's trademark and therefore the registration is contrary to the provisions of Section 11(1) of the Act;

(j) that the adoption of the impugned trademark by the respondent is dishonest and subsequent and therefore the respondent cannot seek any benefit under section 12 of the Act;

(k) that the impugned trademark is likely to offend the provisions of section 11(3) of the Act as the use of the impugned trademark is liable to be prevented in the Court of law under the law of passing off and unfair trade competition;

(l) that the applicant is the prior adopter and user of the trademark Sparx, the respondent has subsequently adopted the impugned trademark dishonestly for identical goods to trade upon the reputation of the applicant and therefore, the application is the person aggrieved;

(m) that the entry in the register is wrongly remaining on the register within the meaning of Section 57 of the Act;

(n) that the adoption by the respondent is dishonest as the respondent had knowledge of the applicant's use of the trademark Sparx through an Ex-Officer of the applicant who joined the service of the respondent;

(o) that the registration is in contravention of the provisions of Sections 9, 11 (1), 11(3)(a), 12, 18(1) and 57 of the Act;

(p) that the registration has been obtained in bad faith; and

(q) that in the interest of public, the impugned registration ought to be removed.

23. The respondent herein filed their counter statement. The present application is liable to be dismissed on the ground of non-Joinder of necessary parties. The trademark registration exists in the names of Relaxo Rubber Limited and Relaxo Footwears Limited trading as Relaxo Rubber Limited. The applicant has impleaded only Relaxo Rubber Limited and not Relaxo Footwears Limited. Therefore, the application is liable to be dismissed for non-Joinder of necessary parties. Relaxo Rubber Pvt. Limited and Relaxo Footwears are sister concerns which are controlled and managed by the members of the same family vide a deed of assignment dated 06.12.2006. By the deed of assignment, Relaxo Rubber Ltd. assigned its entire ownership, right, title and interest in the said registered trademark to Relaxo Footwears Limited. A request in Form TM 23 has been filed to bring on record the change and the same is pending before the Registrar of Trade Marks.

24. The applicant is not a "person aggrieved". The present application has been filed as a counter blast to the rectification filed by the respondent in ORA/275/09/TM/KOL The registration has been obtained rightly and is rightly remaining on the register and is not liable to be removed. The trademark Spark was distinctive with the goods of the registered proprietor on the date of application for registration. The registration was made with sufficient cause. The trademark is used in a bona fide manner. The impugned registration is not causing any prejudice to the public.

25. The application has been filed with dishonest and mala fide intention. The applicant has no right, title or interest in the trademark Sparx as it was never used by the applicant in the course of trade and has abandoned the same. Having abandoned their trade mark, the applicant cannot now object the adoption and use by the respondent. The applicant acquiesced the use of the trademark Sparx by the respondent. The application is liable to be dismissed as not maintainable as the applicant did not oppose the registration at the time of publication. The applicant has not complied with the provisions of section 124 of the Act and therefore, the application is liable to be dismissed.

26. The trademark Spark has been used since 01.08.2000. In addition, the respondents have adopted and used the trademark Sparx. The trademarks Spark and Sparx are widely used by the respondent. The respondents have filed an application for registration of the trademark Sparx under No. 1315804 in class 25 which is pending registration. The respondents are the prior user of the trademarks Spark and Sparx. The trademarks have thus acquired distinctiveness.

27. In reply to the allegation that an Ex-Officer had joined the services of the respondent and thus the respondent had the knowledge of the applicant's adoption and use of the mark, the respondent stated that one Mr. J.K. Sharma left the applicant in the year 1995 and joined various other organisations and later joined the respondent in 2004. Mr. J.K. Sharma was not aware of the filing of the application for registration of the trademark Sparx.

28. The rest of the averments were denied by the respondent.

29. On completion of the pleadings, both the matters were heard together, though the matters pertain to two different jurisdictions namely, Kolkata and Delhi, common arguments were advanced, as the parties were the same and issues were also common.

30. The learned counsel Mr. Amarjit Singh for the applicant submitted his arguments first in ORA/275/09/TM/KOL. The counsel submitted that the rectification application was filed on 30.11.2009. The respondent filed suit for infringement before the Hon'ble Delhi High Court on 03.12.2009. The applicants herein filed their written statement to the suit as well as a counter claim was filed on 15.12.2009. The respondents filed a rectification application in ORA/92/10/TM/DEL before this Board on 04.05.2010 for removal of the trademark Spark registered under No. 1229602 in class 25.

31. The impugned trademark (Sparx) application was filed under No. 342264 in Class 25 in respect of footwears on 01.11.1978 as proposed to be used and the registration certificate was issued on 30.11.1981. The application for rectification is based on three grounds; (i) non-use-no bona fide intention to use under Section 47(1)(a) of the Act; (ii) non-use-no use of the mark for a period of five years and three months under Section 47(1)(b) of the Act; and (iii) under section 57 -wrongly registered without sufficient cause and is wrongly remaining on the register. The registration is in contravention of the provisions of section 11 of the Act. The mark was not distinctive and the use of the impugned trademark is likely to cause confusion and deception.

32. The impugned application was filed on 01.11.1978 and till 1988-89, there is no evidence of use. In 1988-89, some evidence in the form of gate pass reflecting intra-company transfer of goods from factory to warehouse is filed. From 1990 to 2009 again no evidence of use is filed. In Annexure-A1, there are 38 documents from June 1, 2009 to August 30, 2009 which are alleged to be manufactured and fabricated for this case and which are not of commercial use.

33. The applicants filed an application for registration of the trademark Spark under No. 1229602 in class 25 on 01.09.2003 claiming user since 01.08.2000 which is the subject matter of the original rectification application in ORA/92/10/TM/DEL The same was registered on 17.10.2005 which is at page 25 of the application in ORA/275/09/TM/KOL The applicants had also filed an application for registration of the trademark "Sparx" under No. 1315804 on 18.10.2004 in clause 25 claiming user since 01.04.2002. The said application is pending as it is opposed by a third party. The applicants have given their sales figures at page 28 of the application which runs to several lakhs of rupees since the year 2005-06. The applicants trademark was duly advertised. Annexure-C (from pages 29 to 909) are various invoices which are proof of use of the applicants' trademark. At page 910, the applicants have filed their advertisements in various leading newspapers upto 1997. Annexure-F is of the year 1998 containing copies of invoices for export. The counsel also submitted that the registration relied on by the respondent cannot be relied on as there was no use of the mark. Pages 184-237 of the respondents' documents filed along with the counter statement, are the excise gate passes of the year 1989-90 which are from the factory and not the evidence of commercial use in the course of trade and therefore, cannot be relied on. The respondent's mark is not used as a trademark. No sales figures are mentioned in the pleadings, nor a certificate issued by the Chartered Accountant from 1978 till date is filed. No promotional expenses are given. In the historical records of the respondents' company at pages 86-108, since the year 1925, there is no material in respect of the trademark Sparx. At pages 109-112, there are various awards received by the respondents. At pages 113-124, there are various brands of the respondents mentioned. The documents at pages 128-154 are only pictures of the shoes which bear the trademark Sparx which will not in any manner prove the use of the mark. The cartons at pages 155 & 156 are for sale outside India and even that sale is only in Malaysia and not in other places. The pictures at pages 157-165 also do not prove use or sale. Pages 166 & 241 are the internet extracts. The promotional material at page 168 is of the year 2002 which is again not relevant or of any help to the respondent to prove user. Pages 174-237 are the inter-companies transfer invoices which do not prove use of the trademark. The Business Times report at pages 239-240 is only showing their reputation outside India which is again only of the year 2001. The other documents, viz., balance sheet and the annual reports do not prove user. The sales figures and the promotional expenses at pages 313-315 are not certified by any Chartered Accountant, nor signed by any person and this document will not be of any help to the respondents.

34. There are number of invoices at pages 316-412. Only four invoices are of the year 1988. The documents at pages 334-371 are all fabricated as there are two different dates found in each invoice. The computerized documents are to be supported by affidavits as per Section 65B of the Evidence Act. This has not been complied with and they cannot be relied on as evidence in the eye of law. The tax invoices at pages 372-381 are post-cancellation documents which are irrelevant. The copies of purchase orders do not tally with the originals. The documents i.e., invoices for transactions outside India are irrelevant. The registration of the trademark outside India is also not relevant.

35. The counsel continued his arguments on 26.09.2012. He submitted that the miscellaneous petition in M.P. No. 133/12 for taking on record additional documents ought to be dismissed as there is no reason given for the delay in filing those documents The counsel relied on the judgment reported in Asia Pacific Breweries v. Superior Industries [2009 (4) PTC 108] for his submission. In that case, the application was dismissed as there were no grounds made out as to why the documents were not filed along with the plaint. The counsel further submitted that in the Google search for the word Sparx, the applicants company name i.e., Relaxo was only seen and not the respondents company, viz., Bata.

36. The respondents have stated in the suit that they are relaunching their products under the mark Spark. The suit is dated 03.12.2009. There is no use of the trademark from 1978 to 2009 and therefore, the adoption cannot be said to be dishonest.

37. On 11.10.2012, learned counsel for the applicants continued with his arguments. The applicants' counsel relied on the following judgments:

(i) Corn Products v. Shangrila Food Products [AIR 1960 SC 142 ] - Mark on the register does not prove user.

(ii) London Rubber Co. v. Durex Products Inc. [AIR 1963 SC 1882 ] - The quantum of use was always relevant and it decides the issue of honest concurrent use.

(iii) Century Traders v. Roshan Lal Duggar & Co. [AIR 1978 Delhi 250] - Casual intermittent experimental use is not sufficient.

(iv) Floris Trade Mark [(2001) RPC 19 329] - In the case of revocation on the ground of non-user, the onus is on the registered proprietor to prove use extensively.

(v) Jabbar Ahmed v. Prince Industries [2003 (26) PTC 576 (Del)] - Income-tax assessment orders do not prove use of the trademark on the products.

(vi) Yonex Kabushiki Kaisha v. Phillips International & Anr. [2007 (35) PTC 345 (Del.)] - Free distribution of samples does not constitute commercial use of the trademark.

(vii) Cernivet Trade Mark [(2002) RPC 30 585] - Mention of the trademark in letters or Government notifications will not amount to genuine use.

(viii) Veerumal Praveen Kumar v. Needle Industries (India) Ltd. [2001 PTC 889 (Del) (DB)] - Registration of the trademark without any use in the course of trade will be of no help to the proprietor.

(ix) L.D. Malhotra Industries v. Ropi Industries [PTC (Suppl) (2) 564 (Del)] - The property in a trademark can be acquired only by use.

(x) Pepsico, Inc. & Ors. V. Pure Water Beverages & Ors. [2011 (47) PTC 147 (Del.)] -The onus to prove honest and concurrent use is on the person who claims it and that evidence must be clear and cogent.

(xi) National Bell Co. v. Metal Goods Mfg. Co. [AIR 1971 SC 898 ] - The fact that mark is not distinctive must exist on the date of filing rectification application and not on the date of registration.

(xii) AJ. Vulcan v. V.S. V. Palanichamy [AIR 1969 Cal. 43 ] - Use of the trademark outside India will be of no assistance to establish use in India.

(xiii) Kabushiki Kaisha Toshiba (Toshiba Corporation) v. Toshiba Appliances Co. & Others [1994 PTC 53] - Use and advertisement and registration outside India are not relevant for prior use in India.

(xiv) Indian Association of Thermometry v. Hicks [1981 RLR 646] -When a registered trade mark is abandoned, any person is entitled to adopt the same.

(xv) Rana Steels v. Ran India Steels Pvt. Ltd. [2008 (37) PTC 24 (Del)] - When the documents are fabricated and forged, no relief as claimed is available.

(xvi) LT Foods Ltd. & Anr. V. Sunstar Overseas Ltd. & Anr. [2012 (50) PTC 27 (Del)] -Documents when fabricated and created can not be relied on.

(xvii) American Home Products Corporation v. Mac Laboratories Pvt. Ltd. and another [AIR 1986 SC 137 ] - Intention to use is to be on the date of application.

38. In reply, the learned counsel Mr. Bharat for the respondents submitted that on the date of adoption i.e., on 01.11.1978, there was no mark either Spark or Sparx on the register or in existence in the market in class 25 in respect of footwear. The adoption therefore was honest. The provisions of section 11 read with section 57 of the Act do not apply as the respondent has been using the trademark since the date of application for registration. The documents, post cancellation proceedings are to be considered. Branded goods are charged with excise duty and therefore the use of the mark is proved from excise assessment orders The four invoices at pages 316-320 prove use since 1988.

39. In reply to 38 documents (invoices) being fabricated, the respondents' counsel submitted that the cash invoices are electronically generated, centrally collated and maintained on the company's computer. The photocopies are the reprints of the cash invoices. They were reprinted to be produced for this case on a different date after the sale on a prior different date. As regards the allegation that the respondents could not have sold the goods on 15th August which happens to be the National holiday in view of the Independence day, the respondent submitted that the business can be carried on that day under the provisions of the concerned State Shops and Establishments Act and placed before us the notifications under the West Bengal Shops and Establishments Act, 1963 as an illustration. The tax invoices were filed to prove the bona fide intention to use

40. The applicant filed an application for registration of the trademark, Spark under No. 1229602 in class 25 on 01.09.2003 claiming user since 01.08.2000. The mark was advertised in the Trade Marks Journal on 13.12.2004 and the mark was registered on 17.10.2005.

41. The applicant has given sales figures in Annexure-C which also will be of no help as the same is not certified by any Chartered Accountant. The invoices relied on by the applicant at pages 29-909 of the application are sales only to retailers and not customers. The applicant though claim user since 2002, the earliest document is of 31.08.2005. It is not clear as to whether Relaxo Footwears is using the trademark or it is Relaxo Rubber, as it only mentions Relaxo. The trademark spark has been registered as of 17.10.2005. The sales figures are from the year 2005 onwards.

42. The counsel further submitted that the invoices were both retail invoices and tax invoices. Tax invoices are for sales within Delhi and the retail invoices are for sales outside Delhi. Though the trademark Spark was registered all the invoices were pertaining to the trademark Sparx. The invoices at pages 226, 227 and 230 are on the same date to the same party In all the invoices only one brand is mentioned.

43. The respondents counsel continued his arguments on 12.10.2012. The counsel submitted that the receipt at page 910 had a different date mentioned. In the cash memo issued by the advertising agency the trademark Sparx was handwritten. In the advertisement which was of the year 2006, it is mentioned as 'introducing Sparx go for it' and therefore, the mark Sparx was introduced and used only since 2006 and not earlier.

44. The counsel submitted that the applicant had made a search to find out whether identical mark, if any, was available after the application for registration was filed. The search report at page 2173 is dated 18.11.2009. The applicant had filed an application for registration of the trademark Spark in the year 2003 claiming user since 2000, whereas they had made a search only after six years after filing the application for registration.

45. The marks, the goods and the trade channels are identical. The provisions of sections 9 and 11 do not apply to the case on hand. The applicants have not filed any search report prior to their adoption or filing of the application for registration, nor have they filed any market survey or have they taken any legal opinion. It is seen that the respondents are prior in adoption, use, promotion, registration, reputation and goodwill.

46. The applicants use of the trademark Sparx is only since 2005 and since 2009 with respect to the trademark Spark. The onus to prove non-use which is the only ground on which the applicants have based their case for rectification has not been discharged by the applicants. The applicants have themselves accepted in the counter claim in C.S. (OS) No. 2301 of 2009 at para 39 filed before the Delhi High Court,

39.... the plaintiff are in power and possession of huge stocks of the footwear bearing the impugned mark and all such materials are liable to be destroyed under an order passed by this Hon'ble Court. The respondent/ plaintiff is also liable to furnish an inventory of such goods and materials in its power and possession before this Hon'ble Court.
This has been filed in the year 2009 when the application for rectification was filed.

47. The applicants have not placed any evidence to prove their statement that no one else had used the trademark Sparx. The invoices at pages 29-909 are computer print-outs/electronic data. The deed of assignment of trademark is along with the goodwill of the business for a consideration of Rs. 5000/- which cannot be a valid assignment. At page 111, a mark Spark is seen in the invoice and it is not clear how that invoice is relevant to this case. Some of the invoices are post cancellation proceedings and cannot be relied on. Pages 238-264 are for the trademark Sparx. Pages 265-314 are export invoices which are printed data.

48. In the invoices at pages 321-363 along with counter statement in ORA/92/2010/TM/DEL which is for rectification of the trademark Spark, the goods mentioned therein is for some other mark and therefore, are not relevant. The sales figures are not certified by a Chartered Accountant. The applicant had knowledge of the respondents' trademark and so adoption by the applicant is dishonest. The provisions of section 47(1)(a) and (b) are not attracted. The onus is on the applicant to prove the case for rectification.

49. The respondents relied on the following judgments:

(i) Law of Trade Marks and Passing Off by P. Narayanan (Sixth Edition) at 21.104 -Burden of proving non-use during the relevant period is on the applicant for rectification. Since non-user is a negative fact, it can be proved only by affidavit evidence.

(ii) Revlon Inc., USA v. Rajendrakumar Dhawan & Anr. [(1995) AIPC 30] - Non-user is to be proved by the applicant.

(iii) Order of this Board in ORA/216-217/2008/TM/CH (Kamat Hotels (India) Ltd. v. Royal Orchid Hotels Ltd.) dated 4.10.2011 - The plea of user in the suit is a tacit admission of use.

(iv) Neutrogena Trade mark [1984 (26) RPC 563] - Absence of evidence of intention to abandon; rectification dismissed.

(v) Order of this Board in ORA/205/2006/TM/DEL (Shri Kanishk Gupta v. M/s. Liberty Footwear Company) dated 22.2.2008 - The use and launch admitted by which the applicant failed to discharge the onus of non-user.

In this case, the applicant had filed a counter claim in the civil suit filed by the respondent against the applicant where the applicant has admitted the respondent's use and therefore, the ground of non-user fails.

(vi) Revue Trade Mark [(1979) RPC (2) 27] - Non-user is not established; then the application for rectification also fails.

(vii) Order of this Board in TRA/25-27/2003/TM/CH (Jupiter Infosys Ltd. v. Infosys Technologies Ltd.) dated 19.9.2011 - Onus to prove non-use not discharged; application for rectification dismissed.

(viii) Bali Trade Mark [(1968) RPC 426] - Even if there is a possibility or likelihood of confusion the discretion is with the Registrar to expunge or not and it is whether there is evidence of absence of confusion between the date of application for rectification and the date of hearing, that is relevant for deciding the same.

(ix) American Home Products Corpn. V. Mac Labs. Pvt. Ltd. [(1986) 1 SCC 465] - To decide the issue of non-use the facts and circumstances of use and promotion subsequent to the date of registration and events up to the date of application and events between the date of application for registration and the date of application for rectification are to be considered.

(x) Hardie Trading Ltd. v. Additions Paint & Chemicals Ltd. [(2003) 11 SCC 92] -Intention to abandon has to be statutorily proved.

(xi) Express Bottlers Service Private ltd. v. Pepsico Inc. & Others [1988 IPLR 99] -Mere grounds of non-production and non-user and abandonment of the mark cannot be inferred.

(xii) Pfizer Products Inc. v. Rajesh Chopra & Ors. [MIPR 2007 (2) 0323] - International use in international magazines and newspapers would amount to use under section 47 of the Act.

(xiii) Bon Matin Trade Mark [(1989) RPC (18) 537] - Extent of substantial use together with the benefit of commercial use would amount to use and the mark shall not be expunged.

(xiv) Medical Technologies Ltd. v. Neon Laboratories Pvt. Ltd. [2009 (49) PTC 576 (IPAB)] - If the applicant had caused a search, it would have known that a similar mark was already on the register. The applicant having adopted a similar mark subsequently cannot claim the respondents' adoption to be dishonest.

(xv) Neon Laboratories Ltd. v. Medical Technologies Ltd. [2012 (50) PTC 346 (Bom.)] -(for the same proposition)

50. The counsel further submitted that the applicant had acquiesced and therefore was not entitled for any relief. The counsel concluded his arguments by stating that the trademarks are similar and it is an admitted fact that goods are same, the respondents are prior in use (1989) whereas the applications are subsequent in use (2005 - Sparx and 2009 - Spark), the trademarks are the same, the applicants have admitted the respondents' use and adoption and in the year 2005 it is stated that they were introducing sparx whereas in 2008 they stated "new arrival of the shoes bearing the trademark Sparx" and the invoices are reprinted and there is no fabrication and the applicants have no explanation for the adoption and that the applicants had knowledge of the respondents' adoption and use.

51. The learned counsel for the applicant Mr. Singh in rejoinder distinguished the judgments relied on by the respondents' counsel Mr. Bharath. The excise gate pass was not a bona fide proof for the use and therefore there was no proof for genuine use. The issue of prior use is not relevant in the case non-use. It may be relevant in a case under section 57 of the Act. The counsel relied on a passage from Trade Marks by P. Narayanan and submitted that when evidence has been led then the question of onus ceased to be that important and bona fide intention on the part of the applicant for registration under section 47(1)(a) would mean at the date when such applicant makes his application for registration. On the date of application, the respondent has no bona fide intention to use the trademark.

52. The counsel also relied on:

Trade Marks by P. Narayanan (page 504) - Use under section 47 means the use in India. De-Smet (India) Pvt. Ltd. v. B.P. Industrial Corpn. [AIR 1980 All. 253 ] - Positive evidence is necessary for the plaintiff to prove his case.

S.T. Trading Co. v. Union of India [AIR 1966 Guj. 116 ] - Onus to prove negative and positive facts distinguished.

M.M.B. Catholicos v. T. Paulo Avira [AIR 1959 SC 31 ] - Based on the evidence/materials placed, onus is to be decided.

Raghunathi v. Raju Ramappa Shetty [AIR 1991 SC 1040 ] - Once the parties are permitted to produce evidence in support of their case and it is not their grievance that any evidence was shut out, the question of burden of proof loses significance and remains only academic.

Ramji Dayawala & Sons (P.) Ltd. v. Invest Import [AIR 1981 SC 2085 ] - When both the parties have led in evidence, the burden of proof would assume secondary meaning. Gopal Krishnaji v. Mohd. Haji Latif [AIR 1968 SC 1413 ] - Even if the burden of proof does not lie on a party, the court may draw an adverse inference if he withholds important documents in his possession which can throw light on the facts at issue.

Krishna Kisor De v. Nagendrabala Chaudhurani [1921 Law Suit (Cal) 114] - The question of onus of proof arises only where there is no evidence one way or the other which will enable the Judge to come to a conclusion upon the question of fact to be determined, but where the evidence has been adduced by both the parties and the relevant facts are before the Court, the question of burden of proof becomes immaterial and importance should not be attached to the question on whom the initial onus lays and in such circumstances the question is really not pertinent.

Hem Chandra v. Amiyabala [1925 Cal. 61] - The question of burden of proof loses its importance when evidence has been adduced on both sides.

Durga Prasad v. Ghanshiam Das [AIR (35) 1948 Privy Council 210] - Question of onus as a determining factor of the whole case only arises if the court finds the evidence so evenly balanced that it can come to no definite conclusion.

53. The counsel further continued arguments on 15.11.2012 and submitted that the respondent had not proved their case by any sale. The use abroad will be good in an infringement/passing off action and not for rectification application.

54. The cases relied on by the respondents were distinguished. The counsel in reply to the issue raised by the respondent as regards the assignment deed submitted that the respondents cannot raise or challenge the validity of the assignment deed. In reply to the applicants' argument that the bill was placed for the sale on 15th August, the respondent had submitted that under the State Shops and Establishments Act, the shops could work on a National holiday with prior permission. The applicants contended that this was not pleaded in the counter statement and therefore cannot be accepted.

55. The plea of acquiescence was not pleaded and so, cannot be raised in the arguments. The counsel submitted that they had filed the counter claim subsequent to the filing of the rectification application and therefore, admission of use cannot be accepted. The views given in English Law will not be of any effect if the law in India is settled.

56. The counsel Mr. Amarjit Singh continued his arguments on 16.11.2012 in reply to ORA/92/10/TM/DEL and submitted that the ground on which the rectification application has been filed is that the mark is wrongly remaining on the register and not wrongly made. The preliminary objection was that Relaxo Footwears Ltd. was not made a party and therefore, the rectification application ought to be dismissed for non-joinder of parties. The Registrar who is the custodian of the register has also not been impleaded as a necessary party. The counsel also submitted that even after raising this plea of non-joinder, an application was filed only to implead the Registrar and not Relaxo Footwears Ltd. and therefore the application ought to be dismissed.

57. The counsel further submitted that the applicant had not complied with the provisions of section 124 of the Act. Registration without use does not help. The registration outside India is of no use to the respondent. Though pleaded entry was wrongly made, yet it was not defended. Since 1990 to 2009, there was no use and it is not clear as to how user since 2002 has been claimed. The mark therefore deserves to be removed from the register and the application for rectification ought to be allowed.

58. In rejoinder, the counsel Mr. Bharath submitted that the application for rectification has been filed against Relaxo Rubber Ltd. as that was given in the Trade Marks Journal. There is no question of non-joinder as the counter statement has been filed by both the parties namely, Relaxo Footwear and Relaxo Rubber Ltd. The defect is curable at any stage.

59. The respondents are prior in use. The applicants' adoption is dishonest. The applicants have admitted triple identity. On account of this, confusion and deception is certain.

60. M.P. No. 177 of 2011 has been filed by the applicant in ORA/92/10/TM/DEL for consolidating the proceedings in both the cases. The respondents have no objection for the same and hence, the said MP is ordered. Both the rectification applications i.e., ORA/275/09/TM/KOL and ORA/92/10/TM/DEL were heard together as Relaxo Footwears in ORA/275/09/TM/KOL who are the applicants therein are the respondents in ORA/92/10/TM/DEL The respondents in ORA/275/09/TM/KOL i.e., Bata India are the applicants in ORA/92/10/TM/DEL The parties are the same and the issues are also the same in both the matters. We shall deal with the applications separately.

ORA/275/09/TM/KOL

61. The application is for removal of the trademark "Sparx" registered under no. 342264 in class 25. The application for registration was filed on 01.11.1978 with the claim of proposing to use. The mark was registered on 30.11.1981. The mark has been subsequently renewed and is valid and subsisting.

62. The application for rectification has been mainly based on two grounds. The grounds are, the applicant is a person aggrieved and the respondent, though obtained registration, had no bona fide intention to use the trademark in relation to the goods and in fact, has no bona fide use of the trademark in relation to the goods for the time being up to three months before the date of application and also up to a date of three months before the date of application, a continuous period of five years from the date on which the trademark is actually entered in the register or longer had elapsed during which the trademark was registered and during which there was no bona fide use thereof. The rectification application has been filed under section 47 of the Act.

63. We shall first deal with the issue of aggrieved person. An application for rectification can be filed only a person aggrieved. The classic case is Powells TM [(1894] 11 RPC 4] wherein it is held, "whenever it can be shown that the applicant is in the same trade as the person who has registered the trademark, and whenever the trademark, if remaining on the register, would or might limit the legal rights of the applicant, so that by reason of the existence of the entry on the register, he could not lawfully do that which, but for the existence of the mark upon the register, he could lawfully do, he has a locus standi to be heard as a person aggrieved".

64. The mere fact that the trader deals with the same class of goods and could not use the impugned mark is, prima facie sufficient evidence of his being aggrieved.

65. As has been held in Hardie Trading Ltd case (supra), the phrase 'aggrieved person' is used in different sense under sections 47 and 57 of the Act. Under section 57, it is not only in the interest of the person carrying on the same business, but also in the interest of the public. As held in Powells case (supra) by Lord Herschell, if a person is not able to carry on his business lawfully as for the existence of the mark on the register, then that person is said to be a person aggrieved.

66. Under section 47, the non-user does not by itself render the entry incorrect, but it gives a right to a person whose interest is affected to apply for removal. An applicant must show that in some possible way he may be damaged or injured if the trademark is allowed to stand, as held by Romer, J. in Wright Case [(1898) 15 RPC 131]. It is not a sufficient reason that they are at loggerheads with the respondents or desire in some way to injure them.

67. We shall now look into the facts of the case. The respondents i.e., Bata had filed a suit on 03.12.2009 whereas the applicants i.e., Relaxo had filed the rectification application on 30.11.2009 prior to the respondents filing an application for rectification. The onus is always on the applicants for rectification to satisfy and prove their case.

68. As per section 57, it is for the applicants for rectification to prove that they are not able to carry on the business on account of the respondents mark remaining on the register. By the impugned trademark on the register, the applicants have to satisfy that they are not able to carry on their business which they are lawfully entitled to. The applicants contention was that the mark was wrongfully made without any sufficient cause. The counsel also tried to distinguish the phrase that the application being made and is remaining wrongly on the register without sufficient cause. When it is said to be made it could be that the mark was registered wrongly and when it is wrongly remaining on the register, it would mean that after registration, it was wrongly registered without any cause.

69. The reason or the fact that the applicant is carrying on or dealing with the same business will not be considered to treat the applicant as an aggrieved person. Under Section 57, it is not an application between two parties and it is one of public interest.

70. Under Section 47, the applicant must show that because of the presence of the mark on the register, it could not do a thing lawfully which it could otherwise do. In this case on hand, the applicants claim use of the trademark Spark/Sparx from 2000 and 2002 respectively whereas the respondents had filed the impugned application for registration in 1978 proposing to use the trademark and the mark was registered in 1981. There are few documents i.e., few gate passes reflecting transfer of goods since 1988-1989. According to the applicants, it is not a valid use or commercial use. In reply, the respondent submitted that branded products are charged with excise duties and therefore, they are valid documents. In our considered opinion, the excise gate pass cannot be relevant to prove use. Commercial and genuine use must be one which is some benefit or profit to the person. In the excise gate pass, the value of the goods/footwears are mentioned which is not of any profit to the respondent. We therefore cannot consider it to be a use.

71. The facts to be established under Section 47 are that the mark was registered without any bona fide intention to use by the applicant and that there has in fact been no bona fide use of the mark upto a date three months prior to the date of application or for a continuous period of at least five years prior to three months before the date of application, there was no bona fide use of the mark in relation to the goods. The application can be filed only by a person aggrieved.

72. The documents relied on by the respondent/registered proprietor are the excise gate pass for the year 1988-1989 and invoices of the year 2009. Section 47(1)(a) is that the mark was registered without any bona fide intention to use and that there was in fact no bona fide use upto three months prior to the date of application. The mark was registered in the year 1981 and the application for rectification has been filed in 2009. The period here is more than five years and three months and therefore, the excise gate pass which is of the year 1988-1989 is of no assistance, even if we are to consider that to be a genuine one (what we are not considering).

73. The trademark, though registered in the year 1981 had not been put to use till 1988-1989. According to the respondents' own admission, there is nothing to prove use of the trademark till 1988-1989. The evidence filed by the respondents is only the excise gate pass. We are unable to accept how the gate pass which is only for internal transfer could be considered to be a proof for valid commercial sale. Even if it is considered to be a sale, it is after nearly seven years after registration that the mark has been put to use, according to the respondents. Therefore, we are of the opinion that the trademark deserves to be expunged under section 47(1)(a) of the Act.

74. As regards few invoices, we are not going into the validity of those invoices. Those invoices are from June, 2009. The rectification application has been filed in November, 2009. The respondents have not used the trademark since 1990 to 2009 though obtained registration as early as 1981. There is no dispute by the respondents that they have filed documents only from 2009. We are not able to appreciate the documents filed in the year 2009. Those invoices are manufactured and created for the purpose of this case, was the forceful argument of the applicants. As stated above, we are not going into that issue, but there is nothing to prove use since 1990 to 2009. The only doubt that arises in our mind is, if the respondents had been really using the mark in their business, they could have filed few more invoices to prove their use and not only from June, 2009. We therefore are not able to consider those documents as valid to support the case of the respondents.

75. The purchase orders are also of the year 2009. We have in fact looked into the originals of those purchase orders. In our considered view, we think there is no discrepancy in those documents. Those purchase orders also do not help the respondents to prove their use which is again of the year 2009 and not earlier.

76. The applicants are persons aggrieved and they are to satisfy that the mark may be expunged for non-use. In this case, the mark has been registered as early as 1981 and not put to use till 2009. The mark has not been used for more than five years from the date of registration and therefore, deserves to be rectified. According to the respondents, the mark was used three months prior to the date of application for rectification, and even if we are to accept that admission, when we are of the view that the applicant is a person aggrieved and the mark has to be expunged for non-use for a period of five years, the use of three months prior to the date of application will not hold good. In fact, it may not be considered bona fide even under section 47 of the Act.

77. We have considered the judgments relied on by both the parties. Each case has to be decided depending on the facts of that case on hand. We therefore are not going into the judgments and have decided the matter on the facts of this case.

78. To restate the law on the subject, under clause (a) of Section 47(1), where there had been a bona fide intention to use the trademark in respect of which registration was sought, merely because the trademark had not been used for a period shorter than five years from the date of registration will not entitle any person to have the trademark removed from the Register. Under clause (b) of section 47(1), if the period of five years has elapsed and during that period, there has been no bona fide use of the trademark, the fact that the registered proprietor had a bona fide intention to use the trademark on the date of application for registration becomes immaterial and the trademark is liable to be removed from the Register.

79. In the case on hand, the invoices are from 25.06.2009 which are more than three months prior to the date of application for rectification. The applicants have filed certain gate passes for the period from 1988-1989 which cannot be considered to be a valid/commercial sale that took place after five years from the date of registration. The mark has not been used since 1981 upto 1988-1989 (if at all any use, it is only since 1988-1989 as per the respondent's own admission which, according to us, is not a genuine commercial use). The mark therefore deserves to be removed. Even assuming that the mark was proposed to be used on the date of application, for its merchandise it would require some time to prepare for manufacture and sale. The mark was not put to use for almost seven years. The mark therefore deserves to be rectified. As per clause (b) of section 47(1) of the Act, the period of five years had lapsed and there was no use of the trademark, the bona fide intention to use is immaterial and the mark is therefore to be rectified.

ORA/92/10/TM/DEL

80. This application is filed by the respondents therein for removal of the trademark Spark in the name of the applicants therein. The respondents therein will be referred to as Bata and the applicants will be referred to as Relaxo.

81. Bata had filed a civil suit against the Relaxo before the Hon'ble Delhi High Court. Relaxo had filed a counter claim along with their written statement to the civil suit. Relaxo had claimed to be the registered proprietor of the trademark Spark in their counter claim and written statement.

82. Bata had been carrying on identical business. Their claim was also that the marks are deceptively similar. Relaxo's mark on the register would definitely affect Bata's trade.

83. Bata had been carrying on business of manufacturing and selling footwears for several decades. They had been carrying on business under various brands. Aggrieved by the mark Spark being used by Relaxo, Bata had filed a civil suit. The marks Sparx and Spark are deceptively and phonetically similar which was their main grievance. Based on these grounds they had filed the rectification application. As laid down in Powells case, if a person is not able to carry on his business lawfully due to the existence of another mark, then that person is aggrieved by the presence of the mark in the Register. In such circumstances, we think the applicant is a 'person aggrieved'.

84. In both the cases, we think the applicants are aggrieved as cross-suits are filed between the parties and the applicants have the locus to file and maintain the application for rectification.

85. The next issue would be regarding the maintainability of the application for non-joinder of necessary parties. Originally, the applicant i.e., Bata impleaded Relaxo Rubber only. Bata had impleaded Relaxo Rubber Ltd. as that was the name given in the Trade Marks Journal. As on the date of this application, the trademark was in the name of Relaxo Rubber and it is also the admitted case of Relaxo that the recordal for change is pending. We think until the change is brought on record, the mark continues to be in the name of Relaxo Rubber. In case of an assignment, the assignee steps into the shoes of the assignor for various other purposes namely, to take action or to defend the trademark. As on the date of filing of the application for rectification, the trademark Spark was in the name of Relaxo Rubber. Bata during the course of arguments submitted that it is a curable defect and on this ground the application shall not be dismissed. The applicant has also filed M.P. No. 326 of 2012 for amending the memo of parties to include Relaxo Footwears Ltd. as the joint proprietor of trademark Spark. As the respondent has filed the counter statement in both the names, we think it fit to allow the application impleading Relaxo Footwears Ltd. We do not think it to dismiss the main application for this reason which can be rectified by impleading. Accordingly, M.P. No. 326 of 2012 is ordered.

86. The impugned trademark was applied for registration on 01.09.2003 claiming user since 01.08.2003. On perusal of the records, we find that the first invoice/bill is dated 10.10.2009. There are various other invoices/bills from the year 2005 and the first one is dated 31.08.2005. There are various invoices (numbering from 29-909) filed along with the application for rectification in ORA/275/09/TM/KOL. There are different trademarks mentioned i.e., SPRK, SPK, SPAX, etc. We do not think, those invoices are relevant for this case on hand.

87. The invoice at page 163 filed along with the counter statement in ORA/92/10/TM/DEL is dated 10.10.2009 for the trademark Spark. The user if at all is only from 10.10.2009 and not earlier as seen from the documents.

88. As regards user, this Board has already held in few matters that the trademark shall be removed/expunged for wrong date of user {M/s. Times Publishing House Ltd. v. M/s. Financial Times Limited and Anr. [2012 (50) PTC 283 (IPAB)] and M/s. Khushiram Beharilal v. M/s. Jaswant Singh & Anr. [2012 (50) PTC 538 (IPAB)] }. In this case also we are of the view that the trademark, Spark shall be removed for wrong statement of use.

89. The impugned trademark was adopted by Relaxo subsequent to the registration obtained by Bata. The adoption cannot therefore be said to be honest. The search report relied on by Relaxo cannot be said to be a valid document. The search has been made only after the filing of the other rectification application. Search if any, ought to have been made prior to the adoption and use and not after. Therefore, we think the adoption cannot be said to be honest.

90. The other ground for rectification is that the trademark Spark is deceptively similar to Bata's trademark Sparx. Only if the mark is put to use, the issue of confusion and deception arises. In ORA/275/09/TM/KOL, we have held that the trademark Sparx is not put to use though registered and therefore, directed the removal of the mark. In view of that observation, the issue of deception does not sustain.

91. For the various reasons stated above, we are of the opinion that the impugned trademark deserves to be expunged from the register. Both the rectification applications are ordered accordingly. No costs. M.P. Nos. 32 & 33 of 2012 are filed for taking documents on record. Since the documents have been considered in this order, those MPs are ordered. M.P. Nos. 177 & 178 of 2011 filed for early hearing have become infructuous and hence, they are dismissed.