Name of the case- Anubhav Jain v. Satish Kumar Jain
This case revolves around the dispute over the ownership of the trademark “JAIN SHIKANJI.”
The parties to the dispute belong to the same family. The Original suit was filed in 2008 by Swadesh Kumar Jain on the allegations that their father Parmatma Sharan Jain was carrying on the business of selling ‘Jain Shikanji’ and ‘Shikanji Powder’ for more than three decades under the name of “Jain Shikanji" near Police Station Modi Nagar District Ghaziabad. With time the brand "Jain Shikanji" became very popular and gained goodwill in the market.
It was contended that several registrations were made by Satish Kumar Jain between 1996 and 2008 over the use of trademarks. Satish, in 2021, found that 'Jain Shikanji Private Ltd’ incorporated in 2019 was carrying similar business with the mark registered by him.
Mr. Satish Kumar Jain- Plaintiff/ Respondent
Mr. Anubhav Jain- Defendant/ Petitioner
FACTS OF THE CASE
On 23rd September 2021, Satish Kumar Jain (Plaintiff/Respondent, hereinafter) filed a commercial suit before the learned Commercial Court, Karkardooma, Delhi (“the learned Trial Court”, hereinafter) against Anubhav Jain (Defendant/ Petitioner, hereinafter), alleging that the way the mark “JAIN SHIKANJI” was being used by the defendant was same as the plaintiff’s registered mark “JAIN SHIKANJI”. Thereafter, in the same suit under Order XXXIX Rules 1 and 2 of the Civil Procedure Code, 1908.
On 5th November 2022, the learned Trial Court allowed the Respondent's application and passed an interlocutory injunction against the plaintiff. Aggrieved by the decision, the petitioner challenged the decision of the Trial Court.
The petitioner, thereafter, instituted a petition under Section 57 of the Trademarks Act, seeking cancellation of the registration granted to the trademark of the respondent and, consequent rectification of the trademark register.
QUESTION ON MAINTAINABILITY OF THE PETITION
The Respondent contended that the present petition is not maintainable as per Section 124 of the Trademarks Act, 1999.
Section 124- Stay of proceedings where the validity of registration of the trademark is questioned, etc
The above section applies in two cases- (1) where the validity of registration of the trademark is in question (2) a Suit alleging infringement of the trademark is pending before the Civil Court.
Respondent contended that according to Section 124 if a suit for infringement is filed and the defendant raises the plea of invalidity of the plaintiff’s mark then the defendant loses the right to independently invoke Section 57 of the Act to seek cancellation of registration and consequent rectification of the trade mark register.
Petitioner contended that for Section 124(1)(a) to be applicable, it is paramount for the petitioner to have pleaded in the suit the invalidity of the trademark of the plaintiff.
High Court observed that clause (ii) in Section 124 (1) states that if no proceedings for rectification of the register concerning the trademark of either of the parties in the suit are pending before the Registrar of Trademarks, and the trial court is satisfied that the plea related to the invalidity of the registration, as raised in the suit is, prima facie, tenable, then:
- The Court shall raise an issue regarding the validity of the contested trade mark; and
- The Court shall adjourn the case for three months to enable the party assailing the validity of the contested trademark to apply to the High Court for rectification of the register.
Therefore, Section 124 will be applicable only in the instances enumerated below:
- Plaintiff filed a suit against the defendant alleging infringement of the plaintiff's trademark;
- Defendant raised a plea, of invalidity of the plaintiff’s trademark, in the same suit;
- No proceedings, at that time, should be pending for rectification; and
- The Trial court should be prima facie satisfied that the plea of invalidity is tenable.
Therefore, the High Court opined that the right under Section 124 is independent and should be available in addition to the right conferred by Section 57 and shall not be read in abrogation of Section 57 of the Act.
The High Court held that the petition is maintainable and that the rights to seek cancellation of a mark and rectification of the register, conferred by Sections 57 and 124(1)(ii), are independent of each other.
CONTENTION OF THE PETITIONER- Section 57 (Trade Marks Act, 1999)
The Petitioner contended that the impugned mark is liable to be taken off the Registrar of Trade Marks under section 57(1) and (2) read with Clause (a) of Section 9(1) of the Trade Marks Act, 1999, as the mark “Jain Shikanji” was merely a combination of common Hindu surname and a reference to the drink, and therefore, is not distinctive in nature.
The mark is a device mark
FINDINGS OF THE HIGH COURT
The High Court rejected the contention of the mark not being distinctive as the entitlement of a trademark to registration must be examined by viewing the mark as a whole.
The court held that the mark “JAIN SHIKANJI,” when seen as a whole, cannot be said to lack distinctiveness. The Court further stated that it is not common usage that the Hindu surname is used as a prefix in a trademark used for a drink.
Therefore, the plea of the petitioner, considering Section 9(1)(a) of the Trade Marks Act cannot sustain.
CONTENTION OF THE PETITIONER- Rule 25 (Trade Mark Rules, 2017)
The counsel of the petitioner abandon Section 57 completely and now, relied upon the technical deficiencies in the grant of registration to the respondent's impugned mark.
The Petitioner pointed out two contentions:
- The Registrar accepted the plea of a user while granting registration of the impugned mark, with effect from 14th June 1996 to the respondent.
- The registration granted by the Trade Mark Registry to the impugned mark also certifies its user since 14th June 1996.
Petitioner relied on Rule 25 of the Trade Marks Rules, 2017, according to which it is mandatory to require a user affidavit to be filed with every application seeking registration of a trademark, along with documents.
It was contended that the respondent did not file a user affidavit along with the application seeking registration of the impugned mark. It was noted that the same was filed only in response to the First Examination Report (FER) dated 17th December 2008. Also, no document was filed with the affidavit except a certificate of Chartered Account, certifying user, with effect from 2004.
FINDINGS OF THE HIGH COURT
The objection may not have substance as the application was filed in May 2008, and at that time the rules under Trade Mark Rules, 2002 were in force. It was noted that Rule 158 of the Trademark Rules, 2017 saves all the action taken under Trade Mark Rules 2002, before its enactment. Therefore, the respondent is not at fault for not having a user affidavit with his application.
CONTENTION OF THE PETITIONER- Certificate issued by Zila Parishad
The document of the Zila Parishad which was filed by the respondent is a mere receipt of money received from “Jain Shikanji, Kadrabad". Therefore, a such document cannot be taken as evidence user of the impugned mark from 1996.
FINDINGS OF THE HIGH COURT
The date of a user is an important aspect of any trademark registration especially, given Section 34 of the Trade Mark Act which accords precedence to the priority of the user. The Court was perplexed as to how the Registrar has, while granting registration of the impugned mark to the respondent, accepted the respondent's claim of the user since 14th June 1996. Further, the Court stated that discrepancy in user claim was itself a matter which warranted further inquiry.
CONTENTION OF THE PETITIONER- Section 11 of Trade Marks Act,1999
In the First Examination Report, dated 17th December 2008, a certain objection under Section 11 of the Trade Marks Act,1999, was raised on the ground that the mark for which the registration is sought is deceptively like pre-existing marks. It was noted that no reply was filed by the respondent and filed merely a user affidavit.
FINDINGS OF THE HIGH COURT
Re-examination by the learned Registrar on two counts:
- the objections raised under Section 11 of the Trade Mark Act, 1999, in the First Examination Report (FER) dated 17th December 2008, and
- the date of a user of the impugned mark by the respondent
Till a decision is taken by the learned Registrar, the respondent shall be entitled to continue to use the registered trademark as granted to him but shall not exceed such right to any judicial proceedings which may be pending.
INTERIM ORDER PLEA DISMISSED
The Delhi High Court dismissed a plea against Trial Court’s interim order. The division bench of Justice Manmohan and Justice Saurabh Banerjee was hearing an appeal moved by Jain Shikanji Private Ltd, challenging November 2022 interim order.
High Court dismissed the appeal and held,
"Discernment of an appeal at the appellate stage given the settled position of law…of the CPC leads us to conclude that the appellant has been unable to make out a case for interference by this Court. Hence, taking into consideration the overall factual and legal aspects involved herein and the overall conduct of the appellant, this court finds no merit in the present appeal.”
Lastly, the High Court stated that at the "end of the day what has been appealed is an interim order" of the trial court and not a final order, and unless there is some "arbitrariness, perversity or capriciousness" in the interim order the scope of interference by the appellate forum is "extremely minimal".
TIMELINE – JAIN SHIKANJI TRADEMARK INFRINGEMENT CASE
S.NO
|
DOCUMENT NAME
|
DOCUMENT DATE
|
DOCUMENT DESCRIPTION
|
1
|
User Detail
|
14/06/1996
|
-
|
2
|
TM-1
|
20/09/2004
|
Application made for registration in the register of the accompanying Trade Mark in Class 32
“JAIN SHIKANJI” (Label)
In the name of M/s. Jian Shikanji Restaurant. GZB.U.P.
Trademark to be advertised before acceptance- U/S 20 of The Trade Marks Act, 1999
No exclusive rights for the word ‘Shikanji’
|
3
|
Reply to Exam Report (MIS-R)
|
23/05/2008
|
Application No: 1690989 in Class: 42 Application No: 1690990 in Class: 32 Application No: 1690991 in Class: 16 Application No: 1690992 in Class: 29
Enclose herewith is a photocopy of Form TM -48 in favor of Sh. Gaurav Barathi, Advocate, GLA Law Offices, and a request on Form TM-16 for correction of clerical error/amendment in the subject applications together with the prescribed fee.
|
4
|
Date of Application
|
26/05/2008
|
|
5
|
Publication details
|
01/05/2009
|
|
6
|
Opposition
|
15/05/2009
|
In pursuance of section 21(3) of the Trade Marks Act 1999, I am directed by the Registrar of Trade Marks to send herewith a copy of the counterstatement filed in the above matter and to invite your attention to rule 45 of the Trade Marks Rules 2017. If no evidence in support of the opposition is left at this Registry, or if no intimation that the opponents do not desire to adduce any evidence is sent to this Registry, and the applicants, within two months from the receipts hereof by you, The opposition will be deemed to have been abandoned vide Rule 45(2).
|
7
|
Correspondence
|
01/10/2009
|
Re: Trade Mark Application No. 1690990 in class 32 for the Trade Mark "JAIN SHIKANJI" WITH LABLE
From the website of your office we came to know that opposition has been filed vide no. 744995, entry date 15.05.2009. To date, we have not received any notice, nor a copy of the opposition filed. We request you to kindly look into the matter and furnish us a copy of the opposition filed, and do the needful.
|
8
|
Correspondence
|
19/11/2010
|
Re: Trade Mark Application No. 1690990 in class 32 for the Trade Mark "JAIN SHIKANJI" WITH LABLE
As per your website, we came to know that opposition has been against the above-said application, but to date, we have not received any notice of opposition from your esteemed office. You are requested to send us a copy of the opposition along with a notice
|
9
|
Correspondence
|
17/08/2011
|
Re: The second reminder in the Trade Mark Application No. 1690990 in class 32 for the Trade Mark "JAIN SHIKANJI" WITH LABEL
As per your website, we came to know that an opposition has been filed against the abovesaid application, but to date, we have not received any notice of opposition from your esteemed office.
|
10
|
Correspondence
|
26/09/2011
|
Re: The third reminder in the Trade Mark Application No. 1690990 in class 32 for the Trade Mark “JAIN SHIKANJI” WITH LABEL
As per your website, we came to know that an opposition has been filed against the abovesaid application, but to date, we have not received any notice of opposition from your esteemed office.
|
11
|
Reply to Exam Report (MIS-R)
|
01/03/2012
|
Re: The fourth reminder in the Trade Mark Application No. 1690990 in class 32 for the Trade Mark “JAIN SHIKANJI” WITH LABEL
As per your website, we came to know that an opposition has been filed against the abovesaid application, but to date, we have not received any notice of opposition from your esteemed office.
|
12
|
Correspondence
|
31/05/2012
|
Re: The fifth reminder in the Trade Mark Application No. 1690990 in class 32 for the Trade Mark “JAIN SHIKANJI” WITH LABEL
As per your website, we came to know that an opposition has been filed against the abovesaid application, but to date, we have not received any notice of opposition from your esteemed office.
|
13
|
Correspondence
|
05/09/2012
|
Re: The fifth reminder in the Trade Mark Application No. 1690990 in class 32 for the Trade Mark "JAIN SHIKANJI" WITH LABEL
As per your website, we came to know that an opposition has been filed against the abovesaid application, but to date, we have not received any notice of opposition from your esteemed office.
|
14
|
Correspondence
|
05/02/2013
|
Sub: Opposition No. 74495 to Application No. 1690990 in Class 32 in the name of Satish Jain
The letter of Opposition was sent to the address.
W.S. Kane & Co. was not representing Satish Jain. They returned a copy of the Notice of Opposition enclosed with the referred letter.
|
15
|
Power of Attorney
|
22/04/2013
|
Change of Agent
TM 48 was filed on 29.08.2008 along with Form TM-16 for change of agent on behalf of the applicant.
|
16
|
TM-6
|
28/06/2013
|
Form of Counter-Statement
(Sections 21(2), 47, 57, 59 (2); Rules 49, 93, 99 and 101)
|
17
|
Opposite Counter Statement
|
03/07/2017
|
|
18
|
Letters related to PRAS
|
29/01/2018
|
-
|
19
|
Letters related to TOP
|
07/08/2018
|
Subject: Request for Hearing Notice under Rule 45 (2) in TradeMark Application Number 1690990 in Class 32
We would like to draw your attention to the above-mentioned pending Application. That there was opposition to the above-mentioned pending Application. However, the opposition to the said Application was not followed by the Opponents, and under Rule 45(2) of the Trade Marks Act, 2017 the said Opposition should be treated as abandoned.
|
20
|
RTI
|
23/02/2021
|
Sub: Reference to a request under RTI Act, 2005
The matter has been fixed for hearing on 23/03/2021
|
21
|
Hearing Notice
|
03/03/2021
|
The matter has been fixed for hearing on 23/03/2021
If fail to attend the hearing on the above day and time, the matter shall proceed further as per the provision of the Trade Marks Act, 1999, and Rule
|
22
|
Note Sheet
|
16/04/2021
|
TM-6 within time may be taken on record.
|
23
|
Order
|
|
The case was taken up for hearing through video conferencing
The applicant's request for an extension of time is not under Rule 50 (2) of the Trade Mark Rules, 2017. Moreover, it doesn't give any cogent reason for not filing the evidence in support of the opposition to date.
The instant opposition is treated as abandoned. The instant application is accepted and shall proceed further as per law.
|
24
|
RTI
|
06/06/2021
|
Application for obtaining Information under the Right To Information Act, 2005
|
25
|
Journal Copy
|
18/06/2021
|
Advertised before Acceptance under section 20(1) Proviso 1690990 26/05/2008
SATISH JAIN, trading as JAIN SHIKANII RESTAURANT VIKAS NAGAR COLONY. KADRABAD, DELHI-MEERUT ROAD, MODINAGAR. DISTT. GHAZIABAD. U.P. MANUFACTURER & TRADER Used Since 14/06/1996 DELHI MINERAL AND AERATED WATERS, ALL TYPES OF NONALCOHOLIC DRINKS, FRUITS DRINKS, AND FRUIT JUICES. SHIKANJI, NIMBU PANI, SODA. SOFT DRINKS, LEMONADES, SYRUPS, AND OTHER PREPARATIONS FOR MAKING BEVERAGES. THE APPLICANT HAS NO EXCLUSIVE RIGHT TO THE WORD SHIKANJI.
|
26
|
Certificate
|
18/06/2021
|
Certificate of Registration of Trade Mark, Section 23 (2), Rule 56 (1)
|
27
|
TM-R (RENEWAL OF TRADEMARK)
|
23/06/2021
|
Form TM-R
|
28
|
RENEWAL INTIMATION LETTER
|
26/062021
|
Subject: Renewal of registration of Trade Mark No 1690990 Class 32
Renewed for 10 years
|
29
|
TM-M (DUPLICATE REGISTRATION CERTIFICATE)
|
14/07/2021
|
Application/Request for any miscellaneous function in respect of a Trademark Application /Opposition/Rectification under the Trade Marks Act
|
30
|
TM-M (CERTIFICATE OF REGISTER (U/S 137/ CERTIFIED COPY OF A DOCUMENT)
|
14/07/2021
|
Application/Request for any miscellaneous function in respect of a Trademark Application /Opposition/Rectification under the Trade Marks Act
|
31
|
TM-O (RECITATION/ CANCELLATION A TRADEMARK)
|
29/11/2022
|
Cancellation Petition under Section 57 and Rule 97 of Trade Marks Rule, 2017
The present cancellation petition has been filed by JAIN SHIKANJI RESTAURANT PRIVATE LIMITED
The grounds for Cancellation were mentioned.
|
32
|
TM-M (EXTENSION OF TIME)
|
10/02/2023
|
Vide order dated 08.02.2023 passed by the Hon'ble Delhi High Court in C.O. (COMM. IPD-TM) 55 of 2021, the parties have been directed to appear before the Registrar of Trade Marks on 15.02.2023. The Applicant wishes to file an appeal against the aforesaid order. However, since the said order has not been uploaded yet and is not available; the Applicant seeks an extension of 5 days, to file an Appeal against the order dated 08.02.2023. Hence the date of 15.02.2023 be extended till 20.02.2023
|
33
|
RECTIFICATION COUNTER STATEMENT
|
24/02/23
|
In pursuance of Rule 98 of the Trade Marks Rules,2017. I am directed by the Register of Trade mark to send herewith a copy of the counter statement filed by the Registered Proprietor in the above matter and to invite your attention to the said Rule as well as Rule 45 of the Trade Marks Rules,2017.
|
34
|
RECTIFICATION NOTICE
|
21/12/2022
|
In pursuance of Rule 97 of the Trade Marks Rules.2017. I am directed by the Registrar of Trade Marks to send herewith a copy of an application for rectification on form TM-O(RECTIFICATION/CANCELLATION A TRADE MARK) together with a statement of the case for the rectification of the Register in respect of the aforesaid Registered Trade Mark. I am also to invite your attention to Rule 98 of the Trade Marks Rules 2017 under which the reply on behalf of the Registered Proprietor should be filed on form TM-6/TM-O(COUNTER STATEMENT) within two months from the date of receipt of this notice by you
|
As of Date : 04/03/2023
|
View Registration Certificate
|
Status: Rectification Filed
|
View TM Application | View Examination Report
|
TM Application No.
|
1690990
|
Class
|
32
|
Date of Application
|
26/05/2008
|
Appropriate Office
|
DELHI
|
State
|
DELHI
|
Country
|
India
|
Filing Mode
|
Branch Office
|
TM Applied For
|
Jain SHIKANJI with label
|
TM Category
|
TRADE MARK
|
Trade Mark Type
|
DEVICE
|
User Detail
|
14/06/1996
|
Certificate Detail
|
Certificate No. 2772286 Dated: 18/06/2021
Notified in Journal No: 2006
|
Valid upto/ Renewed upto
|
26/05/2028
|
Proprietor name
|
(1) SATISH JAIN,
Trading As: Jain Shikanii Restaurant
Single Firm
|
Proprietor Address
|
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