SATNAM OVERSEASversusSANT RAM & CO. & ANR.

                   [2013] 14 S.C.R. 947                  947


                   SATNAM OVERSEAS                               A
                              v.
                SANT RAM & CO. & ANR.
             (Civil Appeal No.10528 of 2013)
                   NOVEMBER 22, 2013
                                                                 B
     [K.S. RADHAKRISHNAN AND A.K. SIKRI, JJ.)

     Trade and Merchandise Marks Act, 1958 - s. 46(1)(b) -
Rectification of entry in respect of trademark - On the ground
of non-user of the trademark - Limiting the use of trademark     C
in six cities of the State of Uttar Pradesh - High Court
permitted the use of trademark to the entire State of Uttar
Pradesh - Held: Cogent reasons were given for extending the
trademark to the whole of State of Uttar Pradesh - Hence
order cannot be said to be perverse or arbitrary.                D
     The entry in respect of registered trademark
'KOHINOOR' in class 30, registered in the name of
respondent No.1 was rectified at the behest of the
appellant, on the ground of non-user for a period in
excess of five years. By the modification, the respondent        E
was allowed to use the trademark 'KOHINOOR' in five
cities in the State of Uttar Pradesh. The reviewing
authority allowed respondent No.1 to use the trademark
in six cities of Uttar Pradesh.
                                                                 F
     Respondent No.1 approached High Court
challenging the orders restricting him to use the
trademark only in few cities. He further challenged the
order granting trademark registration of all kinds of rice
for the purpose of export in favour of the appellant; and        G
also challenged the order granting the trademark
registration in favour of the appellant, throughout India.
Single Judge of High Court permitted the respondent to
use the trademark for the entire State of Uttar Pradesh.
                            947                                  H
    948      SUPREME COURT REPORTS             (2013) 14 S.C.R.


A Division Bench of High Court upheld the findings
  recorded by the Single Judge. Hence, the present
  appeals.

          Dismissing the appeals, the Court

B       HELD: 1. Section 46(1 )(b) of Trade and Merchandise
    Marks Act, 1958 provides that up to a date, one month
    before the date of the application, a continuous period of
    five years or longer had elapsed during which the
    trademark was registered and during which there was no
c   bonafide use thereof in relation to the goods for which it
    was registered by the proprietor for the registered
    trademark. Onus to prove non-use rests upon the
    applicant who has filed the application for rectification.
    Once it is prima facie shown, then the onus shifts to the
o   registered proprietor to prove the use of the trademark
    during the relevant period. [Para 11] [954-G-H, 955-B]

       Hardie Trading Ltd. and Anr. vs. Addisons Paint and
  Chemicals Ltd. (2003) 11 SCC 92: 2003 (3) Suppl. SCR
  686; Cycle Corporation of India Ltd. vs. T.I. Raleigh Industries
E Pvt. Ltd. (1996) 9 sec 430: 1996 (2) Suppl. SCR 820 -
  relied on.

       2. In the facts of the present case, the Assistant
  Registrar of Trademarks, after perusing the various
F documents found that there was no non-user of the
  trademark 'KOHINOOR" in respect of rice in class 30 for
  five years and one month prior to the date of the
  rectification application. That finding is purely a question
  of fact, which was affirmed by the Single Judge as well
G as the Division Bench of High Court. The Division Bench
  has also found no error in the inclusion of another District
  also for selling the rice and later extending the benefit of
  the trademark to the respondents to the whole State of
  Uttar Pradesh. Cogent reasons have been stated for
H extending the trademark so far as the respondents are
     SATNAM OVERSEAS v. SANT RAM & CO.                     949


concerned in the whole of the State of Uttar Pradesh. It A ·
was pointed out that restricting the trademark to few
cities would create lot of complications and litigations as
to the exact boundary of a particular city or District. It
will also be impossible for the respondents to ensure that
its products are not sold to retailers outside the six cities. B
Putting geographical restrictions was rightly held to be
unjust. The reasons cannot be said to be arbitrary or
perverse calling for interference by this Court under
Article 136 of the Constitution of India. [Para 13] [955-F-
H; 956-A-C]                                                    C
                     Case Law Reference:
    2003 (3) Suppl. SCR 686         relied on        Para 12
    1996 (2) Suppl. SCR 820         relied on        Para 12
                                                                  D
    CIVIL APPELLATE JURISDICTION : Civil Appeal No.
10528 of 2013.

    From the Judgment & Order dated 15.05.2007 of the High
Court of Delhi at New Delhi in OCJ No. 6. 2003.                   E
                            WITH

    C.A. No. 10529 and 10530 of 2013.

    Shantanu Kumar for the Appellant.                             F
    Pratibha, M. Singh, Sushant Singh, P.C. Arya, Geetika
Kapur, Saya Choudhary, Rupesk K. Pandey, V.K. Shukla,
Gaurav Sharma, S.K. Verma (for Sant Ram & Co.) Shalini
Kumar and D.S. Mahra for the Respondents.
                                                                  G
    The Judgment of the Court was delivered by

    K.S. RADHAKRISHNAN, J. 1. Leave granted.

    2. The appellant herein preferred an application before the
                                                                  H
    950     SUPREME COURT REPORTS               [2013] 14 S.C.R.


A   Assistant Registrar of Trade Marks, Delhi for rectification of
    entry in respect of Registered Trade Mark "KOHINOOR" in
    Class 30 registered in the name of Respondent No.1 on the
    ground of non-usage for a period in excess of five years. The
    application was allowed by the Registrar vide order dated
B   18.6.1992 and the entry in respect of registered trademark
    274006 in Class 30 registered in the names of Respondent
    No.1 was modified by amending the specification of goods to
    read as "Rice for sale in the cities of Faizabad, Maunath
    Bhanjan, Jaunpur, Shahganj and Agra in the State of Uttar
c   Pradesh". Respondent No.1 therein then filed an application for
    review of the order dated 18.. 6.1992 which was partly allowed
    vide order dated 15.02.1993 1by Assistant Registrar, adding the
    town of Saharanpur in the State of Uttar Pradesh, in which
    Respondent No.1 was allowed to use his trademark.
D   Consequently Respondent No.1 was allowed to use the
    trademark "KOHINOOR" in six cities in the State of Uttar
    Pradesh.

         3. Respondent No.1 then filed CMM No.303 of 2003 before
    Delhi High Court against the rectification and review order
E   dated 18.06.1992 and 15.2.1993 respectively passed by the
    Assistant Registrar of trademarks restricting the use of
    trademark only in few cities of the State of Uttar Pradesh.
    Respondent No.1 also filed CMM No.313 of 1996 against the
    grant of trademark registration of all kinds of rice for the
F   purpose of export in favour of the appellant. Respondent No.1
    also preferred CMM No.327 of 1993 against the grant of
    trademark registration in favour of the appellant throughout
    India.

G        4. All the above-mentioned applications were clubbed
    together and an order was passed by the learned Single Judge
    on 11.09.2003 whereby CMM No.303 of 1993 was allowed to
    the extent of permitting the Respondent to use trademark for
    the entire state of Uttar Pradesh. CMM No.313 of 1996 was
H   also partly allowed. CMM No.327 of 1993 was dismissed.
      SATNAM OVERSEAS v. SANT RAM & CO.                      951
            [K.S. RADHAKRISHNAN, J.]

     5. The appellant then preferred OCJA No.5 of 2003 before        A
the Division Bench against the order of the learned Single
Judge passed in CMM No.313 of 1996 and OCJA No.6 was
preferred against the order of the learned Single Judge passed
in CMM No.303 of 1993. The appellant, alleging violation of the
order passed by the Division Bench on 10.11.2003, staying the        B
operation of the order passed by the learned Single Judge,
filed a Contempt Application No.928 of 2006. The Division
Bench of the Delhi High Court passed a common order on
15.05.2007 upholding all the findin_gs recorded by the learned
Single Judge.                                                        c
     6. Appellant herein then preferred three Special Leave
Petitions. SLP (C) N0.15496 of 2007 was preferred against
the order in OCJA No.6 of 2003, SLP(C) No.18213 of 2007
was preferred against the order in OCJA No.5 of 2003 and
SLP(C) No.18212 of 2007 was preferred against the order in           D
Contempt Application No.928 of 2006.

      7. The appellant has urged in the appeal that the High
Court has committed an error in permitting the second
respondent to use the trademark "KOHINOOR" in the entire             E
State of Uttar Pradesh, especially in the wake of the registration
of trade mark in favour of the appellant under Section 12(3) read
with Section 46(2) of the Trademark Act. Further, it was also
pointed out that the High Court was not justified in applying the
geographical limitations thereby permitting the second               F
respondent to use the trademark "KOHINOOR" in the entire
State of Uttar Pradesh, while the Assistant Registrar of
Trademark permitted to use the trademark only in six cities,
which was later on extended to another District, entertaining the
review petition filed by the respondents. Further, it was also
                                                                     G
pointed out that under the provisions of Section 12(3) of the
Trade and Merchandise Marks Act, 1958, the honest and
concurrent use is permissible and the Deputy Registrar of
Trademark has rightly allowed the Appellant to use concurrently
the registered trademark No.274996 KOHINOOR in the entire
                                                                     H
   952      SUPREME COURT REPORTS                 [2013] 14 S.C.R.


A State of Uttar Pradesh for sale except the six cities mentioned
  above.

        8. Learned counsel appearing for the respondent
   submitted that the High Court was right in holding the second
8 respondent is entitled to benefit of Sub-section (3) of Section
   12 of the Trade and Merchandise Act since there is ample
   evidence on record to show that the second respondent
   bonafide and honestly adopted the word "KOHINOOR" as its
   trademark. The High Court has rightly held that the invoices
   produced in evidence by the respondent showing sale of rice
C to distributors and dealers in various cities in the State of Uttar
   Pradesh and they in turn were making deliveries to retailers in
   smaller towns, would clearly indicate user of the trademark by
   the respondent. Learned counsel also pointed out that the
   geographical limitations incorporated by way of an amendment
0 are based. on practical consideration of facts and trade
   practices. The impugned order was passed by the High Court
   noticing that the respondent has been using the trademark
   "KOHINOOR" since the year 1961 and had obtained the
  ·registration thereof in the year 1971 and that the appellant got
E registration only subsequently on 24.2.1981.

        9. We notice, the appellant herein applied for registration
  of trademark "KOHINOOR" only in July, 1985. The application
  was allowed and the trademark was advertised in Trademark
F Journal in 1985. Yet another application was filed by the
  appellant for registration of trademark "KOHINOOR" in respect
  of rice for export included in class 30 on 3rd July, 1985. The
  said trademark was published in the Trademark Journal on 11th
  October, 1989. The appellant filed rectification application for
G deregistration of trademark "KOHINOOR" in favour of the
  respondent in respect of rice in class 30 on the plea that the
  respondent had got the trademark "KOHINOOR" registered
  without bonafide intention to use it and there was no bonafide
  use of the trademark by the respondent for a period of 5 years
H and 1 month preceding the date of filing of the application for
  rectification.
     SATNAM OVERSEAS v. SANT RAM & CO.                       953
           [K.S. RADHAKRISHNAN, J.]

     10. We are, in this case, primarily concerned with the A
interpretation of provisions of Section 46( 1) and 46(2) of the
Act, which are reproduced hereinbelow :-

    46(1). Subject to the provisions of section 47, a registered
    trade mark may be taken off the register in respect of any       B
    of the goods in respect of which it is registered on
    application made in the prescribed manner to a High Court
    or to the Registrar by any person aggrieved on the ground
    either-

     .(fil   that the trade mark was registered without any          C
             bonafide intention on the part of the applicant for
             registration that it should be used in relation to
             those goods by him or, in a case to which the
             provisions of section 45 apply, by the company
             concerned, and that there has, in fact, been no bona    D
             fide use of the trade mark in relation to those goods
             by any proprietor thereof for the time being up to a
             date one month before the date of the application;
             or
                                                                     E
             that up to a date one month before the date of the
             application, a continuous period of five years or
             longer had elapsed during which the trade mark
             was registered and during which there was no bona
             fide use thereof in relation to those goods by any      F
             proprietor thereof for the time being:

    Provided that, except where the applicant has been
    permitted under sub- section (3) of section 12 to register
    an identical or nearly resembling trade mark in respect of
    the goods in question or where the tribunal is of opinion G
    that he might properly be permitted so to register such a
    trade mark, the tribunal may refuse an application under
    clause (a) or clause (b) tn relation to any goods, if it is
    shown that there has been, before the relevant date or
    during the relevant period, as the case may be, bona fide f-:i-
                                                               .,,
    954          SUPREME COURT REPORTS               [2013) 14 S.C.R.


A         use of the trade mark by any proprietor thereof for the time
          being in relation to goods of the same description, being
          goods in respect of which the trade mark is registered.

          (2) Where in relation to any goods in respect of which a
          trade mark is registered-
B
           (a)     the circumstances referred to in clause (b) of sub-
                   section (1) are shown to exist so far as regards non-
                   use of the trade mark in relation to goods to be sold,
                   or otherwise traded in, in a particular place in India
c                  (otherwise than for export from India), or in relation
                   to goods to be exported to a particular market
                   outside India; and

           (b)     a person has been permitted under sub- section (3)
D                  of section 12 to register an identical or nearly
                   resembling trade mark in respect of those goods
                   under a registration extending to use in relation to
                   goods under to be sold, or otherwise traded in, or
                   in relation to goods to be so exported, or the
                   tribunal is of opinion that he might properly be
E
                   permitted so to register such a trade mark;

          on application by that person in the prescribed manner to
          a High Court or to the Registrar, the tribunal may impose
          on the registration of the first- mentioned trade mark such
F         limitations as it thinks proper for securing that registration
          shall cease to extend to such use."

          11. Section 46( 1)(b) provides that that up to a date one
    month before the date of the application, a continuous period
G   of five years or longer had elapsed during which the trademark
    was registered and during which there was no bonafide use
    thereof in relation to the goods for which it was registered by
    the proprietor for the registered trademark. Onus to prove non-
    use rests upon the applicant who has filed the application for
H   rectification. Of course, it is sufficient that the applicant who has
      SATNAM OVERSEAS v. SANT RAM & CO.                        955
            [K.S. RADHAKRISHNAN, J.]

filed the application for rectification to give prima facie evidence   A
for non-use of the mark during the relevant period of five years
from the date of one month before the date of the application
for rectification. Once it is prima facie shown, then the onus
shifts to the registered proprietor to prove the use of the
trademark daring the relevant period.                                  B

      12. The scope of the above-mentioned provision came up
for consideration before this Court in Hardie Trading Ltd. & Anr.
V. Addisons Paint and Chemicals Ltd. [(2003) 11 SCC 92],
wherein in the Court has taken the view that where the evidence        C
on record does not show absolute non-user of trademark during
the period of 5 years and one month prior to the application
for rectification and it was not economically possible for the
owner of the registered trademark to put its goods
manufactured abroad immediately due to restrictions imposed
by the Import Trade Control Policies for the relevant years, the       D
application for rectification could not be allowed on the ground
of alleged non-user as the case is covered under the term
"special circumstances". Reference may also be made to the
judgment of this Court in Cycle Corporation of India Ltd. v. Tl.
Raleigh Industries Pvt. Ltd. [(1996) 9 SCC 430], wherein this          E
Court held that the initial burden is on the applicant seeking
rectification to show that the registered owner has no intention
to use the trademark during the relevant period and, in fact, has
failed to do so.
                                                                       F
      13. We find, in this case on facts, the Assistant Registrar
of Trademarks, after perusing the various documents found that
there was no non-user of the trademark 'KOHINOOR" in respect
of rice in class 30 for five years and one month prior to the date
of the rectification application. That finding is purely a question    G
of fact, which was affirmed by the learned Single Judge as well
as the Division Bench. The Division Bench has also found no
error in the inclusion of another District also for selling the rice
and later extending the benefit of the trademark to ttie
respondents to the whole State of Uttar Pradesh. Cogent
                                                                       H
    956      SUPREME COURT REPORTS               [2013] 14 S.C.R.


A reasons have been stated for extending the trademark so far
  as thEi ·espondents are concerned in the whole of the State of
  Uttar Pradesh. It was pointed out that restricting the trademark
  to few .cities would create lot of complications and litigations
  as to the exact boundary of a particular city or District. It will
B also be impossible for the respondents to ensure that its
  products are not sold to retailers outside the six cities. Putting
  geographical restrictions was rightly held to be unjust. In our
  view, reasons stated above cannot be said to be arbitrary or
  perverse calling for interference by this Court under Article 136
c of the Constitution of India.
         14. In the cii'cumstances, we find no error in the order
    passed by the Division Bench of the High Court. Appeals lack
    merit and are dismissed with no order as to costs.
D Kalpana K. Tripathy                             Appeals dismissed.