SHRI CHANDER MOHAN
KAPOOR T/a BRITISH HERBAL COSMETICS :::::::::::::::::::::::::::: APPELANT
AMIN CHAVANIA T/a JASKAR ENTERPRISES :::::::::::::::::::::: RESPONDENT
J U D G M E N T:
The brief facts of the matter are that the Respondents on the24th March, 2004 filed an application to register the mark Eldena as cosmetics under part A class 3 of the Trade Mark Act. The mark was advertised in the Uganda Gazette on the 19th March 2004. A company called M/s Euro Kent then wrote to the Registrar expressing their intention to oppose the registration of the mark but did not formally pursue the matter as required by the Act. The mark was then registered on the 28th July 2004.
Shortly thereafter in a related matter a Civil Suit No. 271 of 2005 was filed in the Commercial Division of The High Court under the names;
Jaskar Enterprises……………………………. Plaintiffs
1. Aruu Rastogi
2. Anand Goel both T/a Duvon Impex …………………. Defendants
It is this application before the Registrar that this appeal liesfrom. The Appellant in this appeal is Shri Chander Mohan Kapur T/a as M/s British Herbal Cosmetics of India. The Appellant applied to the Registrar under Section 34 of the Trademark Act for orders for the removal of the Trademark No. 26496 “Eldena” from the Register or the rectification of the said register by removing the name Jaskar Enterprises Ltd as proprietor and inserting British Herbal Cosmetics Ltd. The main ground among others is that the current Appellant was the manufacturer of the product “Eldena” in India for which it had a pending mark for registration again in India. It is significant to note that the 2nd defendant in HCCS 271 of 2005 was the one who prosecuted the application before the Registrar for removal by virtue of Power of Attorney given to him by M/s British Herbal Cosmetics.
The Registrar on the 19th August 2005 dismissed the application thus leaving the Respondent as the registered proprietor of the mark. The Appellant has now raised 13 grounds of appeal as follows;
The grounds of Appeal, I must point out were quite many and in some respects did over lap each other. The first set of grounds relate to procedural matters while the second set relate more to matters of substantive law. In order to better focus my findings I shall first begin by laying out what is required to be successful under S. 34 of the Trade Mark Act. Section 34 (i) of the Trade Mark Act provides;
I shall now make my findings in light of the above background to the application before the Registrar.
Ground 1 and 2 raise procedural issues as to how an applicant can raise a claim of fraud in a S. 34 (1) proceedings for rectification before a Registrar and the use of statutory declarations in such proceedings. I shall handle these two grounds together since they deal with procedure. Counsel for the Appellant submitted that the learned Registrar erred in law when she found that the Appellant could not succeed in the claim of fraud because it had not been specifically pleaded. He in particular referred me to pages 8 – 9 of ruling. I shall just refer to her findings in conclusion on the matter where she found.
Counsel for the Respondent agreed with the findings of the Registrar that fraud had not been pleaded and that it should havebeen done “with the utmost particularity”. Counsel for the Respondent further submitted that all allegations in the Appellant’ statutory declarations were denied. In any event counsel for Respondent submitted the Appellants had admitted the fact of the registration of the mark and therefore were estopped from denying it.
Flowing from the above submissions and arguments is ground No.2. Counsel for the Appellant submitted that the learned Registrar failed to take into account the evidence of the Appellant as adduced by affidavit and yet evidence under the Trade Mark Act in the absence of directions to the contrary by the Registrar (in this case) is by way of statutory declaration. Counsel for the Appellant then goes on to list what he considers to be vital evidence by his client way of statutory declaration that in his view were not challenged by the Respondent and which the Registrar for that reason had no reason to disbelieve. This evidence inter alia was to the effect that the Appellant coined the mark “Eldena”, had manufactured it in India since 1995 and imported it into the market in Uganda.
Counsel for the Respondent disputes that the learned Registrar did not consider the evidence as alleged. With particular reference to evidence of prior dealing in goods the subject of the mark “Eldena” counsel for the Respondent submitted that the evidence showed that a third party called “M/s Roopa Enterprises Ltd” and not the Appellant dealt in goods after the mark had been registered. He therefore submitted that there was no evidence that the Appellant dealt with goods prior to the registration of the mark and so the claim was misconceived.
I have perused the record below and before me and also addressed myself to the submissions of both counsel. The procedure to be followed under a S.34 (1) rectification is to be found in The Trade Mark Rules statutory instrument 217 – 1.
Rule 82 of the Trade Mark Rules provided that applications to the Registrar under S. 34 of the Act shall be made on Form TM 25 accompanied by a statutory declaration stating the applicant’s interest and the facts upon which he intends to rely. Rule 83 then for purposes of further procedure, imports mutatis mutandis rule 49 and 50 which allows for evidence also to be adduced by way of statutory declaration. The rules also provide time lines within which all this is to be done. I have not addressed my mind to the technicalities as to whether or not these time lines were followed. I however find that in the main, the parties did follow this procedure. It is my view and finding that the documentation referred to in the said rules would therefore form both the pleadings and evidence before the Registrar.
Now let me address the issue of whether the claim before the Registrar was inter alia founded on fraud. I agree with the position of the Registrar that for a claim before to be found on fraud then it has to be pleaded with particulars. This is the only way the Registrar can properly investigate the allegation. It appears to me looking at the form TM 25 and the statutory declarations the appellant did clearly inter alia base his claim upon fraud. Of course he was limited by the format provided for in the rules which do not necessarily provide for the detail that would be found in say a plaint in a normal suit. That not withstanding I am of the view that the Appellant provided sufficient particulars of his claim of fraud by virtue of form TM 25 and the statutory declarations for the learned Registrar to make the necessary inquiries. In fact that is in my view what the learned Registrar went on to do at page 5 -7 of her ruling while answering the issue
“whether the Applicant is the proprietor of the unregistered mark in India?’
I therefore with regard to grounds No.1 and 2 agree with counsel for the Appellant and find that his client could rely on the claim of fraud and in fact did give the necessary particulars of the said fraud in the various statutory declarations. As to whether the Appellant discharged the standard of proof in proving the fraud however, that is another matter that would have been handled at the hearing.
On ground No. 3, it is the case for the appellant that the learned Registrar erred when she rejected the manufacturing licence presented to her at the hearing contrary to rule 112 and 113 of the Trade Mark Rules. The Appellant referred me to page 6 of the learned Registrar’s ruling on this point. Looking at page 6 of the said ruling under the head
Counsel for the Respondent submits that evidence cannot be brought after submissions have been made. In the alternative he also disputes the licence as a manufacturing licence but says that it looks like a trading licence instead.
I shall now address these legal arguments. To my mind the issue is not whether the Appellant could rely on rules 112 and 113 of the Trade Mark Rules to adduce evidence of the said licence. It appears to me that the legal argument is at what stage during the proceedings can this evidence be adduced? Counsel for the Appellant seems to suggest that this can be done at any time including after the submissions have closed; in any event the evidence had already been deponed to.
With the greatest of respect I cannot see how the learned Registrar can continue to receive evidence after submissions have been made to her. The Registrar is in a quasi Judicial Status and must apply her mind judiciously with regard to due process fairness and equity. The onus was on the Applicant/Appellant to produce all the evidence he/it sought to rely on during the hearing and not after the submissions. In this regard the learned Registrar found properly with due regard to the law and practice at hearings. In any event rule 53 (imported by rule 83) of the Trade Mark Rules and in particular rule 53 (2) specifically provides;
On ground number 4 it is the case for the Appellants that the Registrar erred in law when she rejected the packaging of Eldena when it had been described in the statutory declaration of Anand Goel with a photocopy of it attached as annex ‘C’. Counsel for the Appellant refers me to the Registrar’s ruling at para (b) of the page 6 on this ground. A look at the ruling shows as in the case of the licence that the packaging was not attached as evidence with the pleading but was sent after submissions were closed.
Counsel for the Appellant does not agree but states that a photocopy of the packaging was attached as annex ‘C’ to the statutory declaration. He further argues that the purpose of presenting the packaging during submissions was to enable the Registrar to compare the physical get up of the product with the get up of the registered mark on file.
Counsel for the Respondent denies that Registrar erred as alleged and further submitted that adducing the packaging of the product does not prove its ownership.
These are clearly similar legal issues in ground 4 as they are in ground 3. I have already found that evidence must be presented during the hearing and not at submissions. The only difference in this respect is that a photocopy of the packaging did form part of the statutory evidence which was not the case of the licence.
Rule 53 of the Trade Mark Rules provides how exhibits should be handled. Whereas rule 53(1) does allow for copies and impressions to be used as exhibits to declarations, rule 53(2) also provides that the original exhibits shall be produced at the hearing unless the Registrar otherwise directs.
It is not clear whether the parties and or Registrar addressed themselves to this rule. However, what is clear is that the record does not show that the Registrar gave directions that the parties could rely on the photocopy of the packaging and/or that the actual packaging could be sent later i.e. during submissions. That being the case rule 53(2) was not complied with so the Registrar is correct to insist that the original packaging was not brought at the time of the hearing. I therefore find that the ground too should fail.
As the ground 5 it is the case for the Appellant that the learned Registrar erred when she rejected the Power of Attorney given to Mr. Anand Goel by the Appellant. The Registrar in her ruling found with respect to the Power of Attorney;
registration of Eldena, which is the subject of this application. In addition it does not provide any useful information for the issue at hand…”
Counsel for the Respondent also agreed with the Registrar that the Power of Attorney was irrelevant.
Looking at the Power of Attorney I find that the learned Registrar made an over statement in this regard. Whereas the said power does not state much other than appoint Mr. Anand Goel as the agent of the Appellant I find that she went too far in finding that this was irrelevant to the matter before her. I do not place much on the said appointment being after the mark in question being registered as it seeks to appoint Mr. Anand Goel as an agent which inter alia is important for these rectification proceedings. In this regard the Power of Attorney was relevant in defining who the parties to the proceedings were.
Moving away from procedural issues, grounds 6, 7, 8, 9, 10, 11 and 12 all revolve around the substantive issue of who is entitled to be registered as owner of the Trade Mark Eldena. Looking at the grounds together, it is the case of the Appellant that the Respondent did not coin the name or manufacture the Eldena products. It is the case for the Appellant that it coined the name and manufactures the Eldena products in India and so the Respondent should have sought the prior consent of the Appellant in order to register the mark in Uganda. Counsel for the Respondent submits that the said mark was only registered by default as an initial attempt by M/s Eurokent to oppose it was not effectively done.
Counsel for the Appellant also submitted that the Respondent only asserts ownership of the mark by reason of its registration in Uganda. He further submits that the Respondent does not assert that it coined the word or manufactures the product Eldena. He also submits that there is evidence that other persons were dealing in goods under the mark Eldena in Uganda like
M/S INC3 International
M/S Roopa Enterprises
which is sufficient cause for the Respondent not to have exclusive rights to the mark.
Counsel for the Respondent in general agreed with the findings of the learned Registrar. He submitted that the Appellants had not proved ownership of the mark as alleged. Counsel for the Respondent further submitted that the Respondent properly registered the mark according to the law.
The said grounds raised the legal question as to who is entitled to be registered as a trade mark owner. Section 19 of the Trade Mark Act (cap 217) provides
According to Halsbury’s Laws of England 3rd Ed Vol. 38 para 909 lists inter alia the following persons as entitled or / not entitled to apply.
As to proprietorship of the mark by the Appellant, the Appellant claims to be the manufacturer of the product Eldena with an application pending for its registration in India since 1995 (annex A1). A receipt of a search in the Government of India Trade Marks Registry dated 29th November 2004 shows three pending applications for the registration of the mark Eldena as a cosmetic under class 3 namely;
Mehendroo Enclave, GT Karnal Road, Delhi – 110009 (the applicant in these proceedings who states the application has been pending since 1995).
However, looking at the evidence as a whole it is reasonable to reach the finding that the Appellant and not the Respondent is the manufacturer of the said Eldena products.
Under the law broadly therefore, both the Respondent as a trader/Importer and the Appellant as a manufacturer are both entitled to claim proprietorship of the mark and register it. As to the test of having “…have(ing) used the Trade Mark or have(ing) a bona fide present and definite intention to use it …” (emphasis mine), in Uganda in my view would revolve around how one would interpret the term “use” or “used”. Even though the Respondent did not properly fill in the application form TM 2 in this respect, there is evidence that he had used the product, albeit for a short time, by way of importing it into Uganda.
The Appellant on the other hand of course did not import the goods into Uganda nor directly export them either. (The evidence shows that third parties in India like INC 3 International and Savachem Surfactants (P) Ltd were the direct exporters but they in turn also got the products from the Appellant). Can it therefore be said for those reasons the appellant has not used the goods in Uganda? I think in trade matters such as these you cannot afford to give such a narrow interpretation to the term “use”. I think the Appellant can rightly claim that its products Eldena are used in Uganda, and therefore can also claim to be an aggrieved person within the meaning of S.34 of the Act.
So the real question is, whether it therefore boils down to which of the two entitled person registers the mark first i.e. first come first register. The law allows under S.21 of the Trade Mark Act for a mark which has been applied for but
b) Opposed but decided in favour of the Applicant
However that does not mean that the mark will necessarily stand, after the said registration.Registration can subsequently be challenged by an application for rectification. Halsbury’s Law of England Vol 38 (supra) at para 951 states
In these circumstances the court is enjoined under S.34 of the Trade Mark Act to make such orders as it may think fit. I interpret this to mean that court is to make such orders as it thinks are “just and equitable”.
Halsbury’s Law of England Vol. 38 (supra) at para 967 states
“Hearing of application for rectification
The last ground No. 13 that the learned Registrar did not deliver her ruling within the 60 days as directed by this court was abandoned.
That being the case and taking my findings into account I hereby order that the register with respect to trade mark No. 26496“Eldena” be rectified by canceling the present registration but allowing its re-registration by its proprietor who is the manufacturer i.e. M/S British Herbal Cosmetics.
I further order, pursuant to Section 34(4) of the Trade Mark Act (cap 217) that a notice of this order of rectification be served on The Registrar of Trade Marks to rectify the register accordingly.
Since the Appellant has been successful I grant the costs of the app