ORDER

S. Usha, Technical Member

1. The application has been filed for rectification of the registered trade mark '1 2 3 4' registered under No. 906318 in class 03 by expunging the entry made in the Register of Trade Marks.

2. The applicant is claimed to the registered proprietor of the trade mark No. 895629 in class 03 for the trade mark '1 2 3 4' in respect of agarbathies (incense sticks) and the same is existing on the Register. The applicant, a proprietary concern under the name Shakunthala Agarbathi company started the business of manufacturing and selling agarbathies, incense sticks and dhoop sticks and had adopted the trade mark '1 2 3 4' in July, 1986. Ever since 1986 the applicant has been continuously using the trade mark without any interruption over twenty years. The proprietary concern was converted into a partnership firm in the year 2000 under the name Shakunthala Agarbathi Company.

3. It is stated that the applicant's mark has acquired distinctiveness as a result of its unique and invented nature. As a result of uninterrupted continuous use for a period of 20 years, the trade mark has acquired a secondary meaning to denote the goods emanate from the applicant only and from none else. The total sales turnover of the goods runs to several crores of rupees since the year 1999-2006. The applicant has spent huge amounts for promotion of the sales of goods by advertisement in various media. The applicant is the proprietor of the artistic work label and the same is registered under the Copyright Act, 1957. The use of the mark by any person would definitely lead to confusion as the goods is of such a nature which is being purchased by any person both literate and illiterate.

4. It is averred that the applicant being the original adopter, prior user and proprietor of the trade mark '1 2 3 4 ' is entitled to the exclusive use of the trade mark. During August, 2006, the applicant came across several infringers and had issued legal notices and had subsequently initiated legal proceedings. The applicant had also issued caution notices in various leading newspapers. The applicant's proprietary right was being affected by the impugned trade mark on the Register. The applicant had made a search in the Trade Marks Registry to verify if any of the infringers had filed an application for registration and found that the first respondent had made an application and was registered which is the impugned registered trade mark. The first respondent had also applied for registration of the word per se 'Temple 1 2 3 4" under No. 852351 and the application number was given in the impugned trade mark carton which shows the malafide intention of the first respondent.

5. The applicant has prayed that the impugned trade mark be expunged from the Register of Trade Marks on the grounds namely;

(a) the first respondent has obtained registration without any bonafide intention to use the impugned trade mark in relation to the goods for which it is registered.

(b) The first respondent was very much aware of the applicant's use of an identical mark and that has been the reason to accept the condition imposed by the Registrar of Trade Marks during registration i.e., registration restricted to the sale of goods in the State of Kerala. Moreover, the first respondent being aware of the applicant's mark has adopted an identical mark to trade upon the goodwill and reputation earned by the applicant.

(c) The first respondent's use since 1.6.1997 was not bonafide as it was tainted with fraud, dishonesty and bad faith. The adoption by the first respondent was only to earn illegal profit by using an identical trade mark of the applicant.

(d) On perusal of the impugned trade mark under No. 906318, it bears a registered mark No. 852351, which is in contravention to the condition of registration. The very act of the first respondent is fraud played to obtain registration.

(e) The impugned mark is wrongly remaining on the Register without any sufficient cause and the registration is in contravention of the provisions of Sections 9(1)(a), 9(2)a, 11(1)(a) & (b) and 11(3)(a) & (b), 18(1), 27, 28 and 29 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

(f) The impugned trade mark is devoid of any distinctive character and as such cannot distinguish the goods of the first respondent and the registration is in contravention of Section 9(1)(a) of the Act.

(g) The registration is in contravention of Section 9(2)(a) as the marks are identical and there is every possibility of confusion being caused.

(h) Registration of the mark is in contravention of Sections 11(1)(a) and (b) and 29 of the Act. As the marks are identical, confusion and deception is inevitable.

(i) The goods and the marks being identical, there is every possibility of confusion and deception being caused and the first respondent may pass off of his goods as that of the applicants. The registration is in contravention of Section 11(3)(a) of the Act.

(j) The applicant's use being prior in point of time is entitled to the exclusive right of the mark and the mark is to be removed from the Register on this ground alone.

6. We have heard Shri Sivaraman Vaidyanathan learned Counsel for the applicant and none appeared for the respondent even after service by way of substituted service on 21.1.2008 at Chennai and orders were reserved. Certain clarifications were required to be made and the Board suo moto reopened the matter and posted the matter on 26.2.2008 for hearing. The learned Counsel for the applicant had clarified the queries of the Board and orders were reserved.

7. The learned Counsel for the applicant submitted that the applicant's trade mark was registered under No. 895629 in respect of agarbathies in class 3. Learned Counsel for the applicant submitted that both the marks were identical and use by the first respondent would definitely cause confusion and as such the applicant was an aggrieved person if the mark was on the Register. The applicant's counsel drew our attention to the annexures A & B namely the applicant's registration certificate under No. 852629 and the first respondent's registration certificate under No. 906318 respectively.

8. Learned Counsel for the applicant submitted that the applicant had been carrying on the business of manufacturing agarbathies under the trade mark '1 2 3 4' since July, 1986 and brought to our notice the certificate of registration issued by the Commercial Tax Department, Karnataka and the certificate of registration as a permanent small scale industrial unit issued by the Government of Karnataka, Directorate of Industries and Commerce filed as annexure C along with the petition.

9. Counsel for the applicant further contended that the applicant's trade mark had acquired distinctiveness by user for a continuous and uninterrupted period of 20 years. The applicant's counsel also pointed out to the sales turnover mentioned in the application for rectification and submitted that their goods bearing the trade mark '1 2 3 4' had acquired good reputation among the public. He further submitted that their trade mark with the artistic work was registered under the Copyright Act.

10. The counsel submitted that they had taken necessary steps against several infringers by issuing legal notices and initiating legal proceedings. The counsel for the applicant drew our attention to the trade mark registration No. 852351 given in the impugned trade marks registration certificate and submitted that the first respondent had committed fraud by such misrepresentation.

11. The counsel for applicant concluded stating that as the marks and the goods were identical, the applicants were aggrieved by the impugned trade mark on the Register of Trade Marks.

12. We have carefully gone through the pleadings and documents filed by the applicant and considered the arguments of the applicant.

13. An application for rectification can be filed only by an aggrieved person. The test is that where a person is in some way or the other substantially interested in having the mark removed from the Register is a person aggrieved. The applicant by trading in the same class of goods as that of the registered trade mark will not make him an aggrieved person. The applicant must establish that he may be damaged or injured if the trade mark is allowed to continue on the Register to show that he is an aggrieved person. Here, in the instant case, we find that the rival marks and the goods are identical, we are of the view that the applicant is an aggrieved person. Moreover, even though we did not have the benefit of hearing the first respondent, on perusal of the impugned registration certificate the use of the trade mark by the first respondent is since 1.6.1997 which is subsequent to that of the applicant. It is well settled principle of law that priority prevails over a registered proprietor. The applicant's trade mark being in use prior to that of the first respondent is entitled for protection and the applicant is thus an aggrieved person.

14. The next ground for rectification was misrepresentation and fraud committed by the first respondent to obtain registration. The mark may be expunged if its registration was obtained by an untrue statement to the Registrar regarding any material facts. Here, it is seen in the impugned registration certificate which bears the first respondent's trade mark label the earlier No. 852351 is mentioned, whereas in the certificate for use in legal proceedings no association has been mentioned. We find that there has been a misrepresentation of fact before the Registrar and on this ground the trade mark has got to be removed.

15. The other ground is that there will be every possibility of confusion and deception as the marks are identical. In an application for rectification, the onus will always lie on the applicant for registration to prove that if the mark is allowed to continue on the Register there will be no confusion or deception. As the marks are identical and apart from that the first respondent has not appeared before us to prove the same, we are of the view that there is every possibility being caused among the public as the goods is being purchased by any person i.e. both literate and illiterate.

16. Having answered in favour of the applicant herein, we accordingly allow the application for expunging the trade mark from the Register.

17. We therefore, direct the Registrar of Trade Marks to remove the trade mark registered under No. 906318 from the Register of Trade Marks. As the main rectification application has been disposed of M.P. No. 95/2007 does not survive. There shall be no order as to costs.