Z.S. Negi, Vice-Chairman

1. This petition/application had been filed by the petitioner/applicant in the High Court of Delhi for cancellation/ removal of the trade mark registered under Nos. 173564, 210282 and 262427 all in class 3 which are registered in the name of respondent No. 1. The High Court of Delhi has, in pursuance of Section 100 of the Trade Marks Act, 1999, transferred the same to the Intellectual Property Appellate Board which has been numbered by this Board as TRA/l/2005/TM/DEL.

2. The respondent corporation which is incorporated under the laws of New York, United States of America has obtained registration of the above mentioned trade marks PONDS with descriptive words Dream flower talc subject to disclaimer, in the case of No. 173564 that registration of this Trade Mark shall give no right to the exclusive use of the floral design and in the case of No. 262427 that registration of this Trade Mark shall give no right to the exclusive use of the device of a container. In compliance with the requirements of the provisions of the Foreign Exchange Regulation Act, 1973 and order of the Reserve Bank of India, the respondent corporation formed a company on 5.5.1977 under the Companies Act, 1956, namely Ponds (India) Private Limited, [now converted to Pond(India) Limited] and that company is user of the trade marks in India as a registered user (though application for registration of registered user is pending registration).

3. The applicant at the outset has described his business activities and the reputation which he has established since 1970 in marketing his goods talcum powder under the trade mark PANAMA with descriptive words Bloom Flower Talc/Deluxe Talc and decorative, floral design with pink colour back ground and the distinguishing feature of his container is a twig of rose flower with the device of a blooming rose in an oval shape. The applicant holds copyright registrations Nos. A-29525 and A-21494, both of 1978 under the Copyright Act, 1957 with regard to the artistic designs of his containers. The applicant claims to be an aggrieved person in view of a case filed by the respondent No. 1 which is pending in the High Court of Delhi as Suit No. 1271 of 1981 and seeks cancellation/removal of trade marks of the respondent from the register on the grounds that the registration of the impugned trade marks are descriptive and laudatory with regard to talcum powder and as such are contrary to the provisions of Section 9 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the) on the date of their registration and on the date of filing the rectification application. Further, the trade marks are in non-use in respect of goods in India, the respondent has no bona fide intention to use the marks in India at the time of registration and even till date and in any case the use of the trade marks by the Ponds (India) Limited can not constitute the use by the registered proprietor in India. The respondent corporation has neither made any bona fide use of the trade mark in India nor has used for more than five years and one month as on the date of filing of this application and that the respondent was neither the proprietor of the trade mark on the date of its registration nor it is so till date and thus the registrations were made in contravention of the provisions of Section 18(1) of theand are wrongly remaining on the register. It is also stated that the registration of the impugned trade marks were made subject to disclaimer of the floral design and the device of the container, as these were and still are common to trade, but the respondent is making extravagant and unauthorized claims on the score of the said registration and, therefore, the applicant in particular and other traders in general are embarrassed by the said registrations reaming on the register.

4. Respondent No. 1 filed reply to the petition/application and thereafter petitioner/applicant filed replication to reply filed by the respondent No. 1. Lastly affidavit by way of evidence affirmed on 31.8.1998 by constituted attorney of respondent No. 1 was filed. The application came up for hearing, when Shri R.N. Prabhakar, Advocate represented the applicant and Shri Sanjay Jain, Senior Advocate alongwith Ms. Krishna Arora represented respondent No. 1.

5. The learned Counsel for the applicant during the course of hearing mainly contended that the applicant is a person aggrieved within the meaning of Section 46 of theas he is in the same trade and deal in the same goods. He submitted that the word PONDS in its ordinary signification is the name of a particular herb which is used for manufacture of cosmetics and talcum powder and the use of this word conveys a specific meaning to the general public that the particular herb has been used for manufacturing the goods whereas it is not so and which thus amounts to a false trade description also apart from the other contraventions of law. The trade mark PANAMA-Bloom flower talc or Deluxe Talc with its prominent, distinctive and essential features, the twig of rose flower with the device of a Blooming Red Rose in an oval shape is absolutely different and distinct from the trade mark PONDS Dream flower Talc of the respondent No. 1 but the respondent in contravention or failure to observe the condition of his registrations has filed suit alleging infringement and passing off of his registered trade mark on the ground that the floral design appearing on the container of the applicant is deceptively similar to the registered design in the name of the respondent No. 1. The learned Counsel further contended that the license document should not be accepted as evidence in the absence of approval from the Registrar of Trade Marks or the Central Government. Also the respondent is not adhering to condition of disclaimer imposed at the time of the registration and it goes on changing the design and shape of the container. He contended that not even a single bill from the registered proprietor to show the use of the trade mark has been produced.

6. The learned Counsel for respondent No. 1 argued that he denies that the applicant is a person aggrieved and contends that the word PONDS is not descriptive and laudatory in relation to talcum powder but it is an invented word coined by the respondent No. 1 and it has no significance or reference to herbs. The learned Counsel further contends that the impugned registration is not subject to disclaimer with regard to floral design of the device of a container but has a valid registration for the floral design. He is the registered proprietor of trade marks PONDSs with floral design under other registrant Nos. 173564, 262427 and 96629 all in class 3. He denies the contention of the opposite side that the trade mark PONDS are in non-use in respect of goods in India and the contrary it is contended that the impugned trade marks have in fact been extensively used by the respondent No. 1 and continue to be so used by their licensees in India under the strict supervision and control of respondent No. 1.

7. We will first set to find as to whether the applicant is a person aggrieved which is the statutory requirement for filing application for rectification. Courts of law in the United Kingdom have given very liberal interpretation to the words person aggrieved. Any trader who is in any way injured or restrained in his business or embarrassed by the registration of the mark will be a person aggrieved. In Powells Trade Marks (1894) 11 R.P.C. at 7, Lord Herschell stated as follows:

Whether it can be shown, as here, that the Applicant is in the same trade as the person who has registered the Trade Marks, and wherever the Trade Mark, 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, it appears to me has a locus standi to be heard as a person aggrieved." In the same case Lord Watson stated as follows:

In my opinion, any trader is, in the sense of the statute, aggrieved whenever the registration of a particular trade mark operates in restraint of what would otherwise have been his legal rights. Whatever benefit is gained by registration must entail a corresponding disadvantage upon a trader who might possibly have had occasion to use the mark in the course of his business.

Obviously, a defendant in an infringement or passing off action is a person aggrieved. So also a person who has used a mark from a period before the commencement of use of the mark by the registered proprietor or a person who is threatened with an infringement action [See Shavaksha on The Trade and Merchandise Marks Act, 1958, Third Edition].

In this matter at hand the applicant is in the same trade as the respondent No. (registered trade mark owner) and the respondent No. 1 has filled a suit against the applicant for infringement and passing off, Having applied the foregoing, we find that the applicant is a person aggrieved. The learned Counsel for respondent No. 1 relied upon the Shalimar Agarbatti Co. v. N. Ranga Rao & Sons 2004 (29) PTC 247 (IPAB) and Wright Crossley & Co.s Tms. (1898) 15 R.P.C. 131 which are not applicable to the facts of this case. Now coming to the next issue of entitlement to protection of Court of law to disclaimer with regard to the floral design or the device of container of respondent No. 1 under Section 11(e) of the Act, we could have no opportunity of scrutinising the records of the Registry of Trade Marks due to its non-availability but even if records were available it would, for obvious reasons, not be appropriate at that stage to give any finding thereon in view of the fact that a suit for infringement and passing off is pending before the High Court of Delhi against the applicant.

8. The applicant has failed to prove either by making oral submission during the course of hearing or by producing any document that the registration is contravention of the provisions of Sections 9, 11 and 18 of theand obtained the same by committing fraud upon the Registrar of Trade Marks. The applicant has also failed to substantiate in any way that the mark has a direct reference to the character or quality of the goods, even the name of the herb is not named. In paragraph 9 of the application, the applicant has averred as "That trade mark PANAMA-Bloom flower talc or Deluxe Talc with its prominent, distinctive and essential features the twig of rose flower with the device of a Blooming Red Rose in an oval shape is distinct from the trade mark PONDS Dream flower talc of the respondent....The respondents trade mark PONDS is not in use in respect of the goods in India." In paragraph 6 of the reply affidavit of Shri A.A. Mohan, Constituted Attorney of respondent No. 1, it is stated that from 1947 to 1978, the respondent No. 1 had an established place of business in India and itself used the said marks PONDS, etc. in India through its branch office. Since 1978 Ponds (India) Ltd. has been using the said marks as licensees of respondent No. 1 and their record as registered user is pending. The Ponds (India) Ltd. Is authorized to manufacture and market a wide range of products bearing the trade marks PONDS & PONDS Dream Flower Talc with floral design. The products are manufactured by Bonds (India) Ltd. Under the strict supervision and control of the respondent No. 1 Shri V. B. Mehrish, one of the Constituted Attorney of respondent No. 1 has filed affidavit by way of evidence a certified copy of user agreement dated 23.6.1977. sample invoices of R1 in respect of PONDS talcum power in India (1983-88), sample invoices of Hindustan Thompson Associates Ltd. for publicity (1983)-88). As per preamble C of the agreement dated the 23rd June, 1977, the users, in addition to the contractual relationship under and by virtue of these presents, are a wholly owned subsidiary of the proprietors. These documents, in our view are sufficient to reject the contention of non-use of mark. It has been held that a subsidiary company can fairly be construed as use of the mark by the holding company in Fatima Tile Works and Ors. v. Sudharshan Trading Co. Ltd. and Anr. 1992 (12) PTC 117 (Del)

9. In view of the above, we see no merit in the rectification application. Accordingly, the application is dismissed. No order as costs.