LexSATNAM OVERSEAS versus SANT RAM & CO. & ANR.
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[2013] 14 S.C.R. 947 SATNAM OVERSEAS v. SANT RAM & CO. & ANR. (Civil Appeal No.10528 of 2013) NOVEMBER 22, 2013 [K.S. RADHAKRISHNAN AND A.K. SIKRI, JJ.) 947 Trade and Merchandise Marks Act, 1958 - s. 46(1)(b) - Rectification of entry in respect of trademark - On the ground A B 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. 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 F 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 1996 (2) Suppl. SCR 820 relied on relied on Para 12 Para 12 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. WITH C.A. No. 10529 and 10530 of 2013. Shantanu Kumar for the Appellant. Pratibha, M. Singh, Sushant Singh, P.C
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