Writ Petition No.2669 of 2011

3rd April, 2012

Petitioner Counsel: Mr.JANAK DWARKADAS with Mr.VINOD BHAGAT and Mr.DHIREN KARANIA, Mr.G.S.HEGDE & Mr.V.A.BHAGAT
Respondent Counsel: Mr.VIRAG TULZAPURKAR, Mr.AMIT JAMSANDEKAR, Mr.S.N.NAIR

Cases Cited:
Consolidated Foods Corporation Vs. Brandon & Co. Pvt. Ltd., AIR 1965 Bom. 35 [Para 4,19,28,29]
Mohan Goldwater Breweries (Private) Limited Vs. Khoday Distilleries Private Limited & another, 1977 IPLR 83 [Para 21,34]
Sunder Parmanand Lalwani and others Vs. Caltex (India) Ltd., AIR 1969 Bom. 24 [Para 21,30]
Meghraj Biscuits Industries Ltd. Vs. Commissioner of Central Excise, U.P., (2007) 3 SCC 780 [Para 21,29,30,31,32,33]
Hardie Trading Limited Vs. Addisons Paints & Chemicals Limited, (2003) 11 SCC 92 [Para 21,41]

JUDGMENT

D. D. SINHA, J. :- Heard Mr.Dwarkadas, the learned Senior Advocate for the petitioner and Mr.Tulzapurkar, the learned Senior Advocate for the respondent no.1.

2. This Writ Petition is directed against the order dated 29.5.2009 passed by the Intellectual Property Appellate Board (for short "IPAB") whereby the petitioner's rectification application seeking expunction of entry made in the Register of Trade Marks of the trade mark "ROFOL" registered in the name of the respondent no.1 came to be dismissed. Similarly, the order dated 10.8.2010 passed by the IPAB whereby the petitioner's clarificatory application seeking review of the order dated 29.5.2009 came to be dismissed.

3. The facts which have given rise to the filing of the present petition are as follows:-

(i) The Respondent no.1 made an application for registration of the trade mark "ROFOL" on 19.10.1992. The said trade mark was registered with effect from 19.10.1992. The respondent no.1 started using the mark "ROFOL" with effect from 16.10.2004.

(ii) The petitioner filed a civil suit for passing off before the City Civil Court, Ahmedabad, on 19.7.2005 on the basis that the mark "ROFOL" used by the respondent no.1 is deceptively similar to the mark "PROFOL" used by the petitioner. The petitioner has claimed use of the mark "PROFOL" since April 1998.

(iii) The petitioner has claimed proprietorship of the mark "PROFOL" on the basis that they are the first user of the mark "PROFOL". The respondent no.1 has also filed a suit before this Court on the basis that the mark "PROFOL" used by the petitioner is deceptively similar to the mark "ROFOL" registered in the name of the respondent no.1.

(iv) It is the stand of the petitioner that its predecessor made an application for registration of mark "PROFOL" in class 05 of Fourth Schedule to the Trade Marks Rules, 2002, vide application no.803692 and the same is still pending. The respondent no.1 has filed an opposition to the said application of the petitioner. The mark "PROFOL" has not been registered.

(v) The petitioner obtained an ex parte order against the respondent no.1 on 20.7.2005 in Suit No.1244 of 2005 filed before the City Civil Court, Ahmedabad. On 17.10.2005 the said ex parte order is confirmed by the City Civil Court, the respondent no.1 is injuncted from using the mark "ROFOL". The respondent no.1 filed an appeal against the order dated 17.10.2005 which came to be dismissed by the Gujarat High Court vide order dated 19.12.2005. The respondent no.1 challenged the order of the Gujarat High Court dated 19.12.2005 before the Hon'ble Supreme Court by filing Special Leave Petition on 16.1.2006. The same was admitted by the Apex Court on 30.1.2006. The said order of the Apex Court reads thus:-

ORDER

"Special Leave granted.

No interim order except that the respondents shall maintain accounts.

Liberty to mention for early date of hearing.

We make it clear that so far as the parties are concerned, whatever rights they have in law may be urged in proceedings pending before the other Courts."

(vi) The petitioner on 25.2.2006 filed rectification application under sections 47, 57 and 127 of the Trade Marks Act, 1999 (hereinafter referred to as the "Act"). The respondent no.1 filed its counter statement to the rectification application on 17.6.2006. On 7.5.2008 the petitioner filed its reply to the counter statement of the respondent no.1. Rectification application was dismissed by the IPAB vide order dated 29.5.2009 and the clarificatory application of the petitioner seeking review of the said order also came to be dismissed by the IPAB vide order dated 10.8.2010. The petitioner being aggrieved has filed the present Writ Petition under Articles 226 and 227 of the Constitution of India for setting aside the said orders passed by the IPAB.

4. Mr.Dwarkadas, the learned Senior Advocate appearing for the petitioner, has contended that the petitioner acquired the right in the trade mark by virtue of: (i) its use in relation to vendible goods; (b) its registration either for goods or for services; and (c) its acquisition through an assignment from its predecessors. The rights acquired through prior use are however superior to rights acquired through registration, as registration does not confer any additional right. It is contended that in other words, the common law rights are superior to statutory rights. In order to substantiate his contention, reliance is placed on the decision of this Court in Consolidated Foods Corporation v. Brandon & Co. Pvt. Ltd. (AIR 1965 Bombay 35). It is, therefore, contended that as between the two competitors who are desirous of adopting such a mark, it is entirely a question of who gets there first. It is the case of the petitioner that the petitioner is the prior user of the mark "PROFOL" and, therefore, has acquired common law rights to use the mark which is superior to the rights acquired by the respondent no.1 by registration of the mark in the year 1992. The contention of the learned counsel for the petitioner, therefore, is that the petitioner is the proprietor of the mark "PROFOL".

5. Mr.Dwarkadas has submitted that section 28 of the Act though gives the registered proprietor of the trade mark exclusive right to use the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of trade mark, however, such right is subject to other provisions of the Act as can be seen from the words of section 28(1) of the Act. It is submitted that on the other hand, common law right under section 27(2) of the Act remains wholly unaffected as is evident from the starting words "Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof." It is contended that the Act was enacted for the purpose of saving vested rights and was not enacted to throw away the common law rights acquired by one in the rightful use of its trade mark.

6. Mr.Dwarkadas has contended that the respondent no.1 has registered its trade mark "ROFOL" under no.583227 dated 19.10.1992 in class 05 which was duly entered in the Register of Trade Marks on 14.9.2011 whereas the petitioner commenced use of its trade mark "PROFOL" since April 1998 through its predecessor, Haematal Biologicals Ltd. It is contended that the said predecessor of the petitioner had conceived and adopted the trade mark "PROFOL" independently and honestly from the ingredient molecule Propofol. Therefore, such adoption of the trade mark by the petitioner's predecessor was honest, independent and was not with any knowledge of the respondent no.1's trade mark "ROFOL". It is contended that the petitioner's said predecessor used to get its medicinal and pharmaceutical preparations manufactured under the trade mark "PROFOL" on a loan license basis from its common law licensee, Core Laboratories Ltd. Core Laboratories had accordingly on 22.4.1998 applied to Food & Drug authorities for grant of manufacturing license for its formulation, propofol injection I.V. and had thus been manufacturing and marketing the said goods under the trade mark "PROFOL" since the years 1998 as licensee of the petitioner's predecessor, Haematal Biologicals Ltd. Vide a licence agreement dated 1.4.1999, the petitioner's predecessor licensed the use of its trade mark "PROFOL" to Claris Lifesciences Ltd. On 17.2.2000 the running business of the petitioner's predecessor, Haematal Biologicals Ltd., was amalgamated with the petitioner and all properties, assets, rights including intellectual property rights in the trade mark "PROFOL" amongst others came to be transferred and vested in the petitioner, viz., Medical Technologies Ltd. On 1.11.2001 the petitioner had issued necessary licence in favour of Claris Lifesciences Ltd. for use of its trade mark "PROFOL". The petitioner through its predecessor is the rightful owner and lawful proprietor of the said trade mark "PROFOL" by virtue of its use since April 1998. The petitioner's trade mark "PROFOL" is duly registered in Columbia, Sri Lanka, Kazakhistan, Uzbekistan and Vietnam. In India, however, the trade mark "PROFOL" is pending for registration. It is contended that the petitioner's predecessor has sold its goods under the trade mark "PROFOL" in excess of Rs.325 crores. Such goodwill and reputation has been acquired by the petitioner in the said trade mark "PROFOL" which has become distinctive from the petitioner's goods and has further come to be identified in the trade and in the minds of the public with the petitioner and none else. Thus, valuable common law rights have come to vest in the trade mark "PROFOL" of the petitioner.

7. Mr.Dwarkadas, the learned Senior Advocate for the petitioner, has further contended that in July 2005, the petitioners learnt of misuse of its trade mark "PROFOL" by the respondent no.1, hence filed a suit before the City Civil Court, Ahmedabad. Vide ex parte order dated 28.7.2005 the respondent no.1 was restrained from using the mark "ROFOL" The respondent no.1 resisted the said injunction order by relying heavily on its registration and pointed out that such registration gave it the exclusive rights conferred under section 28(1) of the Act. However, the order of injunction came to be confirmed. The appeal filed by the respondent no.1 also came to be dismissed by the Gujarat High Court on 19.12.2005. Thus, it is contended by the counsel for the petitioner that the proposition of common law rights acquired through use are superior to statutory rights acquired through prior registration. The respondent no.1 filed a civil suit for infringement and passing off against the petitioner in this Court where no ad-interim or interim orders are passed in favour of the respondent no.1. Mr.Dwarkadas, therefore, contended that in the instant case, it is absolutely clear that from the year 1998, it is the petitioner's trade mark which is in use and the respondent no.1 has been rightfully restrained from using the impugned mark "ROFOL". Thus, it is the petitioner who is the true and rightful owner and lawful proprietor of the trade mark "PROFOL".

8. The counsel for the petitioner has submitted that the IPAB has erred in dismissing the rectification application and has wrongly held that the petitioner has not been using the said trade mark "PROFOL" by itself but through the licensee. It is well-settled position in law that use of the trade mark by the licensee amounts to and enures to the benefit of the licensor. In the present case, the respondent no.1 had not used the trade mark for 12 long years since its registration. It dishonestly commenced such use only upon getting to know that the trade mark "PROFOL" of the petitioner had acquired tremendous goodwill and reputation. Mr.Dwarkadas further submitted that the Board did not decide other ground for rectification, viz., section 57 of the Act, the impugned registration is granted without sufficient cause and the entry thereof wrongly remains on the register. This issue though pleaded has not been decided upon by the Board which has caused great prejudice to the petitioner.

9. It is further submitted by the counsel for the petitioner that the Board has given contrary finding on the issue of the petitioner being the "aggrieved person". The Board also did not decide the issue regrading grant of injunction order passed by the City Civil Court, Ahmedabad, against the respondent no.1 and the use of "ROFOL" by the respondent no.1 would amount to causing confusion and deception leading to passing off the appellant's goods sold under the mark "PROFOL". It is, therefore, contended that the orders passed by the Board impugned in the present Writ Petition are not sustainable in law and deserves to be quashed and set aside.

10. Mr.Dwarkadas has submitted that the adoption of the trade mark by the petitioner is bona fide and has been undertaken without any knowledge of the respondent no.1's mark "ROFOL". The petitioner has been extensively using the trade mark "PROFOL". The respondent no.1, on the other hand, has been under an injunction and has been restrained from using its trade mark "ROFOL", while the petitioner's trade mark "PROFOL" is in continuous use since 1998. The mark "ROFOL" by the respondent no.1 has not been in use till 2004. It is contended that apart from having applied for registration, the respondent no.1 had never used the mark at any time prior to the use thereof by the petitioner. The respondent no.1 upon realising the fact that immense goodwill and reputation has been earned by the petitioner in its trade mark "PROFOL" and, therefore, mischievously commenced use of the mark "ROFOL". Immediately the petitioner instituted a civil suit and obtained injunction order in July 2005 which is in operation and the said injunction is operating till today.

11. Mr.Dwarkadas further submitted that even if it is presumed that the mark of the respondent no.1 is not liable to be removed under section 47 of the Act, even then this Court may consider whether: (a) the mark is liable to be removed on account of it being wrongly remaining on the Register or; (b) on the ground of having been registered without sufficient cause under section 57 of the Act. It is contended that where common law user (like the petitioner) has on account of prior honest adoption and use, acquired proprietorship over the mark during the period when the application for registration of the respondent no.1 was pending since 1992, the respondent no.1, the registered proprietor of the mark, has done nothing for 12 long years and introduced its goods only after the common law mark of the petitioner has acquired tremendous goodwill in its mark.

12. It is further contended by the counsel for the petitioner that the impugned registration of mark "ROFOL" wrongly remains on the Register of Trade Marks without any sufficient cause, especially when the respondent no.1 has been restrained from using the said trade mark. If the said registration continues to remain on the Register, it would cause undue harm to the petitioner who has used the mark "PROFOL", but cannot get on the register in view of the said entry wrongly remaining thereon. Mr.Dwarkadas, therefore, contended that in these circumstances, the impugned registration ought to have been rectified and cancelled by the Board.

13. Mr.Tulzapurkar, the learned counsel for the respondent no.1, has submitted that most of the contentions canvassed by the leaned counsel for the petitioner are not material to the issue which was raised by the petitioner before the Board by filing the rectification application under section 47 of the Act because, the rectification application was based only on the ground of the alleged non-use of the trade mark "ROFOL" by the respondent no.1. The scope of rectification application of the petitioner was limited to the provisions of section 47 of the Act and, therefore, the only question the Board was required to decide was whether or not the petitioner has proved the terms and conditions of section 47 of the Act before taking over the registered trade mark of the respondent no.1. It is submitted that the petitioner has miserably failed to satisfy the requirements of section 47 of the Act. On the other hand, the petitioner has, in fact, admitted that the mark "ROFOL" has been used by the respondent no.1 in the year 2004 and, therefore, the petitioner filed a civil suit for passing off against the respondent no.1. It is, therefore, contended that the Board was justified in dismissing the rectification application of the petitioner.

14. The counsel for the respondent no.1 has submitted that the argument of the petitioner that the Board has erred in recording contrary finding as far as maintainability of the rectification application on the ground that the petitioner is not an aggrieved party within the meaning of section 47 of the Act is completely erroneous and incorrect. The Board has expressly held that the petitioner is an aggrieved party and has locus and is entitled to file the rectification application.

15. It is further contended by the counsel for the respondent no.1 that the finding of the Board that the petitioner has not used the mark since its adoption till now and, therefore, it cannot be a person aggrieved to institute the proceedings and had no locus to be heard in respect of the contention that the mark "PROFOL" has been used by the petitioner's predecessor in title since 1998 as a licensee of the petitioner. The finding is recorded by the Board to that effect because the petitioner has failed to prove any licence as alleged and the Board on the basis of the evidence on record held that there is no registered user and there is no connection in the course of trade between the petitioner and the licensee. Mr.Tulzapurkar has contended that the said finding is on a completely different point and cannot be confused with the petitioner's locus as an aggrieved party to seek rectification. It is submitted that the contention of the petitioner that the Board has not considered the licensee arrangement between the petitioner and its licensee and use of mark by the petitioner through its licensee since 1998 is incorrect. The Board, after considering the evidence on record, has held in paragraph 23 of the judgement which reads thus:-

"From the documents here before referred, it is abundantly clear that the applicant is, since adoption of the mark PROFOL, neither using itself the mark nor used through a registered user. There is nothing to show real trade connection between the applicant and the goods under the trade mark PROFOL. The proposition of law appears to be that that trade mark cannot be got registered and held by persons as 'investors' only and with no intention whatsoever to use the same in connection with any goods and services [see para 19 in Sun Pharmaceuticals Industries Limited vs. Cipla Limited, MIPR 2008 (3) 0384]. The applicant cannot claim user as it has no product in the market which can be claimed to be originated from it and whatever vendible product under the name Profol is available originates from the licensee that is manufactured, marketed, sold and advertised are by the licensee and the product has no trade connection or association with the applicant since 1998. There is nothing in the pleadings to show that the licensee is a registered user and the applicant has no control or supervision on the quality or manufacturing of the medicinal product."

The counsel for the respondent no.1, therefore, submitted that the petitioner has failed to prove that there is a valid licensing arrangement as alleged by the petitioner. The finding of the Board is based on evidence produced by the petitioner and, therefore, it is not correct to say that the Board has not considered the use of the mark by the petitioner since 1998 through its licensee.

16. Mr.Tulzapurkar further argued that, in any event, even if it is presumed in the petitioner's favour that the use of the trade mark began from the year 1998, this makes no difference as admittedly the respondent no.1's registration is of 19.10.1992. On that date, the petitioner's mark "PROFOL" was not even in existence. Thus, on the question of proprietorship, the use of the trade mark "PROFOL" by the petitioner from April 1998 is of no avail. The counsel for the respondent no.1 has submitted that from the rectification application filed by the petitioner, it is clear that the petitioner sought rectification of the respondent no.1's mark only on the ground of the alleged non-use of the mark by the respondent no.1. It is vaguely mentioned in paragraph 12 of the application for rectification by the petitioner that the entry in respect of mark is made without due cause and wrongly remaining on the register because the mark is not used by the respondent no.1. Thus, all the grounds taken by the petitioner even in respect of section 47 in the rectification application are in respect of the alleged non-use of the mark by the respondent no.1. Hence, the Board has considered this aspect and rejected the claim of the petitioner on the basis of the material before it, keeping in view the admitted position that the respondent no.1 did use the mark "PROFOL" from October 2004.

17. The learned counsel for the respondent no.1 has submitted that the grounds raised by the petitioner in the rectification application basically refers to non-use of the trade mark by the respondent no.1 and, therefore, the petitioner sought rectification of the register under section 47 of the Act. Reference to section 57 of the Act in the cause title of the rectification application is only to allege non-use of the trade mark and to seek rectification under section 47 of the Act. This is evident from the grounds taken in paragraph 12 of the rectification application. There is no separate ground taken by the petitioner in the rectification application under section 57 of the Act, but the allegations made regarding 'entry without sufficient cause', 'wrong entry' and 'bona fide intention to use' are related only to the alleged non-use of the mark by the respondent no.1.

18. Mr.Tulzapurkar, the learned Senior Advocate for the respondent no.1, has submitted that a bare reading of the grounds and comparing them with the provisions of section 47(1) of the Act, it is ex facie clear that the requirements of section 47 are not satisfied at all. The non-use alleged by the petitioner is not upto three months prior to the date of the rectification application. The rectification application was filed on 1.3.2006. Admittedly, the respondent no.1's use began in October 2004. Hence, the fact of non-use in view of section 47(1) has not been proved. It is further contended that there is no evidence placed by the petitioner to prove that the entry of the trade mark registered in respect of the respondent no.1 is made without any sufficient cause and remaining wrongly on the register and, therefore, the contentions canvassed by the learned counsel for the petitioner are liable to be rejected.

19. Mr.Tulzapaurkar has submitted that the claim made by the petitioner of the proprietorship of the mark by virtue of prior use of the mark is completely incorrect and untenable. The proposition of law advanced on behalf of the petitioner that the common law rights are superior to the rights acquired by the registration of the mark on the basis of decision of this Court in Consolidated Foods Corporation (supra) is wrong and contrary to the statutory provisions as well as the law declared on the issue by this Court and the Supreme Court. The respondent no.1 submitted that the alleged use by the petitioner is admittedly much subsequent to the acquisition of the proprietary rights in the trade mark "ROFOL" by the respondent no.1 and also subsequent to the claim and/or constructive use by the respondent no.1 of the mark "ROFOL". It is, therefore, contended that the petitioner cannot claim any common law rights on the basis of the alleged use over the statutory rights of the respondent no.1. The rights of proprietorship in the mark "ROFOL" solely vests in the respondent no.1 by virtue of registration of mark in the name of the respondent no.1 and also by virtue of the deemed and/or constructive use of the mark prior to the adoption and use of the mark "ROFOL" by the petitioner. It is contended that once the mark of the respondent no.1 is registered, even if not used, the respondent no.1 is entitled to an exclusive right under the Trade and Merchandise Marks Act, 1958 which shall be from the date of the application which may be much prior to the use of the mark. The counsel for the respondent no.1, therefore, contended that the petitioner cannot claim proprietary right in the mark by subsequent use and destroy the statutory right of proprietorship of the respondent no.1. It is contended that in view of the prior claim of the proprietorship of the mark by way of an application to the Trade Mark Registry by the respondent no.1, even though the claim is made as "proposed use" in the application, the rival trader (petitioner) cannot claim common law rights in the mark by commencing use of the same subsequent to the statutory claim by the applicant. It is contended that the proprietorship in the trade mark can be acquired by: (i) making an application for registration or, (ii) by actually using the mark in respect of the goods or, (iii) by way of an assignment.

20. Mr.Tulzapurkar has submitted that the application for registration of the mark is made by the petitioner under the provisions of section 18 of the Act which expressly provides that any person claiming to be the proprietor of a trade mark used or proposed to be used by him can make an application for registration of the mark. Therefore, for claim or proprietorship of the mark, it is not necessary for the applicant to actually use the same and the proprietorship in the mark can be acquired by making an application to the Registrar of Trade Marks under section 18 of the Act and having the trade mark registered. It is submitted that if the rival trader has not started using the mark in respect of the goods prior to the date of application by the applicant for the registration of the mark, then the actual use of the mark by the rival trader is of no consequence and he cannot make any claim of proprietorship.

21. In order to substantiate his contentions, Mr.Tulzapurkar placed reliance on the decision of the Madras High Court in Mohan Goldwater Breweries (Private) Limited v. Khoday Distilleries Private Limited & another, reported in 1977 IPLR 83, the decision of this Court in Sunder Parmanand Lalwani and others v. Caltex (India) Ltd., reported in AIR 1969 Bombay 24, the decision of the Supreme Court in Meghraj Biscuits Industries Ltd. v. Commissioner of Central Excise, U.P., reported in (2007) 3 SCC 780 and the decision of the Supreme Court in Hardie Trading Limited v. Addisons Paints & Chemicals Limited (2003) 11 SCC 92 (paragraphs 26 and 27).

22. Mr.Tulzapurkar has further submitted that the reliance placed by the petitioner on the provisions of section 27 of the Act shows that the issue involved in the petition is a complex question of law in view of the non obstante clause in section 27 which saves the common law rights also deserves to be rejected. It is contended that section 27 saves the right of a person who already has a common law right to institute an action in passing off. In the present case, the petitioner is claiming common law rights after the respondent no.1 acquired the statutory rights. If the petitioner seeks protection under section 27, then the petitioner first has to prove that the petitioner is the proprietor of the mark, which in the present case in view of the acquisition of the proprietary right prior to the petitioner by the respondent no.1 is not possible. Mr.Tulzapurkar has submitted that it is well-settled principles of law relating to trade mark that there can be only one mark, one source and one proprietor. It cannot have two origins.

23. Mr.Tulzapurkar has submitted that the Board has considered the issue involved in proceedings under section 47 of the Act and has rightly passed the orders which are sustainable in law. On the basis of material on record and on a full and proper consideration thereof, the orders are passed in accordance with the well-settled principles of trade mark law. There is no arbitrariness, violation of natural justice or irregularity in the proceedings and, therefore, are sustainable in law and the petition is liable to be dismissed.

24. We have given our anxious thoughts to the rival contentions canvassed by the respective counsel for the parties, considered the facts involved and the decisions cited. We would like to reiterate some of the basic facts which are more or less not in dispute. Those are as follows:-

The application for registration of the trade mark "ROFOL" was made by the respondent no.1 on 19.10.1992 and the mark was registered with effect from 19.10.1992. The Respondent no.1 has started using the mark "ROFOL" with effect from 16.10.2004. The petitioner has claimed the use of the mark "PROFOL" since April 1998. The respondent no.1 claimed proprietorship of the mark "ROFOL" with effect from 19.10.1992. The petitioner filed a civil suit for passing off before the City Civil Court, Ahmedabad, on the basis that the mark "ROFOL" used by the respondent no.1 is deceptively similar to the mark "PROFOL" used by the petitioner. The respondent no.1 has also filed a civil suit before this Court on the basis that the mark "PROFOL" used by the petitioner is deceptively similar to the mark "ROFOL" registered in the name of the respondent no.1. The petitioner on 25.2.2006 filed rectification application which shows that the same is filed under sections 47, 57 read with section 125 of the Act. The Board dismissed the rectification application vide order dated 29.5.2009. The clarificatory application of the petitioner seeking review of the said order was also dismissed by the Board by order dated 10.8.2010. The said orders passed by the Board have been impugned in the present Writ Petition.

25. Mr.Dwarkadas, the learned counsel for the petitioner, has contended that the petitioner is a person aggrieved who is entitled to file rectification application under section 47 of the Act, however, the Board has recorded contrary finding on the issue of "person aggrieved". The contention of the petitioner does not hold water in view of the factual findings recorded by the Board in this regard in paragraph 20 of the impugned order, the relevant portion thereof reads thus:-

"Person aggrieved includes rivals in the same trade who are aggrieved by the entry of rival's mark in the register of trade marks or persons who are in some way or the other substantially interested in having the mark removed from the register or persons who would be substantially damaged if the mark remained on the register. Though the application does not contain any specific averment that both parties are in the same trade, but it could be inferred from the pleadings that the applicant is in the same trade as that of the registered proprietor and the registered trade mark of the registered proprietor/respondent no.1 limits the rights of the applicant to carry on the business of manufacturing and market pharmaceutical and medicinal preparation and as such the applicant is prima facie aggrieved by the entry of the rival's mark on the register of trade mark. The applicant is in one way or the other substantially interested in having the mark of respondent no.1 removed from the register. The applicant, in our opinion, is prima facie the person aggrieved. As has been held that where a person shows himself to be a person aggrieved by making necessary statements in the application for rectification in that behalf, such person would obviously have the locus or purpose of making an application for rectification (see Ciba Ltd. v. M. Ramlingam, AIR 1958 Bom. 56), so is the applicant herein has locus standi to file and maintain the present application."

The above referred finding recorded by the Board clearly demonstrates that the petitioner is held to be "person aggrieved" for the purpose of invoking the provisions of section 47 as well as section 57 of the Act and, therefore, the contention canvassed by Mr.Dwarkadas in this regard cannot be accepted.

26. It is true that in paragraph 23 of the order, the Board has observed thus:-

"............................ The applicant cannot claim user as it has no product in the market which can be claimed to be originated from it and whatever vendible product under the name Profol is available originates from the licensee that is manufactured, marketed, sold and advertised are by the licensee and the product has no trade connection or association with the applicant since 1998. There is nothing in the pleadings to show that the licensee is a registered user and the applicant has no control or supervision on the quality of manufacturing of the medicinal product. When the applicant has not used the mark since its adoption till now, it cannot be a person aggrieved to institute this proceeding and no locus to be heard."

The above referred finding of the Board needs to be considered in its right perspective. The said finding is in respect of a different issue i.e. the petitioner has not used the trade mark from its adoption till now nor there is evidence to show that the licensee was a registered user and, therefore, cannot be a person aggrieved to institute proceedings and has no locus to be heard in respect of the contention of the petitioner that the mark "PROFOL" has been used by the petitioner's predecessor in title since 1998 as a licensee of the petitioner. The contention of the petitioner based on the above referred finding of the Board that the Board has held that the petitioner cannot be an aggrieved person and has no locus to file an application under section 47 is incorrect and cannot be sustained in view of the specific finding given by the Board in paragraph 20 of the judgement whereby the petitioner is not only held to be a person aggrieved but also a person who had a locus for making an application for rectification.

27. The contention of the petitioner that the Board has not considered the use of mark "PROFOL" since 1998 and the use of the mark by the licensee is the use of mark by the petitioner is also not sustainable in law in view of the finding recorded by the Board in paragraph 23 of the judgement, the relevant observations are as follows:-

"From the documents here before referred, it is abundantly clear that the applicant is, since adoption of the mark PROFOL, neither using itself the mark nor used through a registered user. There is nothing to show real trade connection between the applicant and the goods under the trade mark PROFOL. The proposition of law appears to be that that trade mark cannot be got registered and held by persons as 'investors' only and with no intention whatsoever to use the same in connection with any goods and services (see para 19 in Sun Pharmaceuticals Industries Limited vs. Cipla Limited, MIPR 2008 (3) 0384]."

28. Mr.Dwarkadas vehemently argued that the petitioner is the prior user of the mark "PROFOL" and has acquired common law rights to use the mark which is superior to the rights acquired by the respondent no.1 by registration of the mark in the year 1992. Hence, the petitioner as the proprietor of the mark "PROFOL" is concerned, the same is based on the decision of this Court in Consolidated Foods Corporation (supra).

29. The decision of this Court in Consolidated Foods Corporation (supra) has been considered by the Apex Court in Meghraj Biscuits Industries Ltd. v. Commissioner of Central Excise, U.P. wherein in paragraphs 17, it has been observed as under:-

"17. The Trade Marks Act, 1999 has been enacted to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks and for prevention of the use of fraudulent marks. Under Section 28 of the Trade Marks Act, 1999, registration gives to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by the Trade Marks Act. It is correct to say that the Registrar, Trade Marks, can issue registration certificate under Section 28 of the Trade Marks Act with retrospective effect. The question before us is : What is the effect of issuance of registration certificate with retrospective effect? This question has been decided by the Bombay High Court in the case of Sunder Parmanand Lalwani v. Caltex (India) Ltd. in which it has been held vide paras '32' and '38' as follows: (AIR pp. 31 & 33-34)

"32. A proprietary right in a mark can be obtained in a number of ways. The mark can be originated by a person, or it can be subsequently acquired by him from somebody else. Our Trade Marks law is based on the English Trade Marks law and the English Acts. The first Trade Marks Act in England was passed in 1875. Even prior thereto, it was firmly established in England that a trader acquired a right of property in a distinctive mark merely by using it upon or in connection with goods irrespective of the length of such user and the extent of his trade, and that he was entitled to protect such right of property by appropriate proceedings by way of injunction in a Court of law. Then came the English Trade Marks Act of 1875, which was substituted later by later Acts. The English Acts enabled registration of a new mark not till then used with the like consequences which a distinctive mark had prior to the passing of the Acts. The effect of the relevant provision of the English Acts was that registration of a trade mark would be deemed to be equivalent to public user of such mark. Prior to the Acts, one could become a proprietor of a trade mark only by user, but after the passing of the Act of 1875, one could become a proprietor either by user or by registering the mark even prior to its user. He could do the latter after complying with the other requirements of the Act, including the filing of a declaration of his intention to use such mark. See observations of Llyod Jacob J. in Vitamins Ltd.'s Application for Trade Mark, RPC at p.12, and particularly the following:

"A proprietary right in a mark sought to be registered can be obtained in a number of ways. The mark can be originated by a person or can be acquired, but in all cases it is necessary that the person putting forward the application should be in possession of some proprietary right which, if questioned, can be substantiated".

Law in India under our present Act is similar.

38. A person may become a proprietor of a trade mark in diverse ways. The particular mode of acquisition of proprietorship relied upon by the applicant in this case is of his user for the first time in India in connection with watches and allied goods mentioned by him of the mark "Caltex", which at the material time was a foreign mark belonging to Degoumois & Co. of Switzerland and used by them in respect of watches in Switzerland. Before the Deputy Registrar and before Mr. Justice Shah, proprietorship was claimed on the basis that the applicant was entitled to it as an importer's mark. Several authorities were cited and were considered and principles deduced and relied upon in that behalf. In our opinion, it is not necessary in this case to go into details about facts in the various decided cases dealing with importer's marks. In many of those cases, the dispute was between a foreign trader using a foreign mark in a foreign country on goods which were subsequently imported by Indian importers and sold by them in this country under that very mark. In short it was a competition between a foreign trader and the Indian importer for the proprietorship of that mark in this country. We have already reached a conclusion that so far as this country is concerned, Degoumois & Co. have totally disclaimed any interest in the proprietorship of that mark for watches etc. In India, the mark 'Caltex' was a totally new mark for watches and allied goods. The applicant was the originator of that mark so far as that class of goods is concerned, and so far as this country is concerned. He in fact used it in respect of watches. There is no evidence that that mark was used by anyone else in this country before the applicant, in connection with that class of goods. Unquestionably, the applicant's user was not large, but that fact makes no difference, because so far as this country is concerned, the mark was a new mark in respect of the class of goods in respect of which the applicant used it. We therefore, hold that the applicant is the proprietor of that mark." [emphasis supplied]

30. The Apex Court in view of the above referred findings recorded by this Court in paragraphs 32 and 38 in the case of Sunder Parmanand Lalwani v. Caltex (India) Ltd. (as observed hereinabove) made the following observations in paragraph 18 of the judgement in the case of Meghraj Biscuits Industries Ltd., the relevant portion of which is as under:-

"On reading the above quoted paragraphs from the above judgment, with which we agree, it is clear that the effect of making the registration certificate applicable from retrospective date is based on the principle of deemed equivalence to public user of such mark. This deeming fiction cannot be extended to the Excise Law. It is confined to the provisions of the Trade Marks Act."

31. The Apex Court in paragraph 19 of the judgement in the case of Meghraj Biscuits Industries Ltd. has observed thus:-

"In Consolidated Foods Corpn. v. Brandon and Co., Pvt. Ltd. it has been held vide paras 27 and 30 that the Trade Marks Act merely facilitates the mode of proof. Instead of compelling the holder of a trade mark in every case to prove his proprietary right, the Act provides a procedure whereby on registration the owner gets certain facilities in the mode of proving his title."

32. The law laid down by the Apex Court in the case of Meghraj Biscuits Industries Ltd. clearly demonstrates that the Act has been enacted to consolidate the law relating to trade marks, to provide for registration and better protection of trade marks and for preventing the use of fraudulent marks. Similarly, under section 28 of the Act, registration gives to the registered proprietor of the trade marks the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by the Act. Similarly, the Registrar, Trade Marks, can issue registration certificate under section 28 of the Act with retrospective effect. Similarly, it is evident from the decision of the Apex Court in Meghraj Biscuits Industries Ltd.'s case that the effect of making registration certificate applicable from retrospective date is based on the principle of deemed equivalence to public user of such mark. This deeming fiction is confined to the provisions of the Trade Marks Act.

33. In view of the law declared by the Apex Court in Meghraj Biscuits Industries Ltd.'s case, it is further evident that the common law principle that the proprietary rights acquired by use of marks and the first user of the mark is the proprietor will not hold water, particularly where the claim to the proprietorship of a mark is made by another trader by way of an application under the provisions of the Act for registration of the mark prior to the use of the mark by another trader.

34. The Madras High Court in the case of Mohan Goldwater Breweries (Private) Limited, considering the decision of this Court in Consolidated Foods Corporation has observed thus:-

"The learned counsel for the appellants relied on the decision of Shah J. (as he then was) in Consolidated Foods Corporation v. Brandon & Co., A.I.R. 1965 Bombay 35 in support of his contention that by virtue of their user the appellants are entitled to resist the application for registration. In that case an applicant filed an application for registration of a mark consisting of the word "Monarch" on 23-1-1957. This application was opposed by the opponents on the ground that they had been using the word "Monarch" even prior to 1951, that the use of the said word by the applicants was likely to deceive or cause confusion that the registration would be contrary to Section 11(a) of the Act, and that the adoption and use of the proposed mark by the applicants was not bonafide. It was found that the opponents had been using the mark with the word "Monarch" long before 1951 in respect of food products manufactured by them and that, therefore, the application for registration of the mark could not be ordered. The reasoning of the learned Judge was that as between the two users of the marks: Monarch" in this country, the opponents had a priority both in adoption of the mark and in user thereof and, therefore, the applicant company was not entitled to claim the mark as a proprietor and apply for registration thereof. In that case the opponents had established prior user of the mark which was sought to be registered by another and, therefore, the registration was rightly refused. But the facts of this case are different. Here the user pleaded by the opponents is subsequent to the date of application for registration. The appellants cannot, therefore, seek any support from the said decision."

The above referred observations made by the Madras High Court clearly demonstrate that prior user of the mark which is sought to be registered by another can be a ground for refusal to register the trade mark sought to be registered by rival trader. However, in the instant case, the respondent no.1 applied for registration on 19.10.1992 and was granted registration on 19.10.1992 whereas the petitioner is claiming common law rights based on user of the mark from 1998 and, therefore, the decision of this Court in Consolidated Foods Corporation does not further the case of the petitioner. The Madras High Court has also observed in the judgement in the case of Mohan Goldwater Breweries Pvt. Ltd., which reads thus:-

"It is no doubt true that it is incumbent on an applicant for registration of a trade mark to establish that he is the proprietor of the trade mark and that he has either used or proposed to use the same. As the opponents in this case have not made an assertion of earlier proprietorship, and they claim to have acquired a proprietory interest in the mark only by subsequent user, the claim of the applicants for registration cannot in any sense, be said to be not well founded. If the rights of parties have to be decided with reference to the date of the application for registration, then the subsequent adoption and user by the opponents is of no consequence. It is true, as pointed out by a Full bench in Gaw Ken Lye v. Saw Kyone Saing A.I.R. 1939 Rangoon 343, as between two competitors who are each desirous of adopting a mark which is distinctive in character, it is, to use the familiar language, entirely a question of who gets there first and the one who started using the mark first should be protected. But that principle will not apply to cases of registration of trade marks under Section 18 which permits a person claiming proprietary interest and proposing to use the mark, without actually using the same. If the principle of "who enters the field first" is adopted for purpose of registration, then Section 18 enabling a person proposing to use a trade mark to apply for registration will be meaningless, as any person using that mark subsequently can easily defeat the earlier application for such registration".

35. In other words, the law declared by the Madras High Court clearly establishes that it is the date of registration which is the decisive date and the rival contender though started using the mark first, but subsequent to the date of registration cannot be protected on the basis of the principle of who entered the field first based on common law principle that the proprietary right can be acquired by use of mark and the first user of the mark is the proprietor.

36. The contention of Mr.Dwarkadas that the common law rights under section 27(2) of the Act remains wholly unaffected as can be seen from the starting words "Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof" and, therefore, the Act was not enacted to throw away a common law right acquired by one in the rightful use of its trade mark is concerned also does not further the case of the petitioner. So far as section 27 is concerned, the provisions of this section are attracted in altogether different situation and, therefore, needs to be understood in the right perspective.

37. Section 27 of the Act deals with the effect of registration and sub-section (2) thereof contemplates that nothing in this section shall be deemed to affect the rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof. The common law rights of the trade mark owner to take action is only against any person for passing off goods as goods of another person recognised by this section. Whereas section 28 of the Act deals with rights conferred by registration and it gives the registered proprietor of the trade mark the exclusive right to use trade mark in relation to goods in respect of which the trade mark is registered and to take action in respect of infringement of trade mark in the manner provided by the Act. As already observed hereinabove, the Apex Court in the case of Meghraj Biscuits Industries Ltd. has held that the effect of making registration certificate applicable from retrospective date is based on principle of deemed equivalence to public user of such mark. In the instant case, it is not in dispute that the respondent no.1 made an application for registration with effect from 19.10.1992 itself, though the respondent no.1 has started using the mark "ROFOL" with effect from 16.10.2004. However, in view of the principle of deemed equivalence to public user of such mark by the respondent no.1, it will have to be construed that the respondent no.1 had started the use of the mark "ROFOL" with effect from 19.10.1992 as per the deeming fiction and claimed proprietorship of the said mark with effect from 1992 whereas the petitioner has claimed the use of the mark "PROFOL" since April 1998. It is in view of these undisputed facts as well as the law declared by the Apex Court in the case of Meghraj Biscuits industries Ltd. and by the Madras High Court in the case of Mohan Goldwater Breweries (Private) Limited, the petitioner though started using the mark "PROFOL" first, but subsequent to the date of registration of the mark "ROFOL" of the respondent no.1, the petitioner, in the facts and circumstances of the present case, therefore, cannot claim superior rights based on the common law principles on the ground that the petitioner started the use of the mark "PROFOL" first with effect from April 1998 i.e. prior to the use of the mark "ROFOL" by the respondent no.1, since the same is subsequent to the date of registration of the respondent no.1's mark "ROFOL" and, therefore, the contention canvassed by Mr.Dwarkadas in this regard is devoid of merit and, therefore, rejected.

38. In the instant case, the contention canvassed by the counsel for the respondent no.1 that in view of prior claim of proprietorship of the mark by way of application to trade mark registry by the respondent no.1, even though the claim is made as "proposed user" in the application, the petitioner cannot claim superiority of right based on common law principles in the mark by commencing the use of the same subsequent to the date of registration of the respondent no.1's mark "ROFOL", has merit and is sustainable in law in view of the finding recorded in the foregoing paragraphs of this judgement.

39. It is no doubt true that the application for removal of trade mark from the register or rectification application by the petitioner is under sections 47, 57 and 125 of the Act. However, the grounds raised by the petitioner and reflected in paragraphs 12, 13, 14 and 15 would show that the primary ground of the petitioner seeking removal of trade mark of the respondent no.1 from the register is that the mark which was registered in the name of the respondent no.1 in respect of the goods pharmaceutical preparation, which is registered on the application by the respondent no.1 was without any bona fide intention to use the mark in the year 1992 and the respondent no.1 did not use the mark till the year 2004 and this clearly establishes that there is no intention to use the mark by the respondent no.1 on the date of the application. Section 47 of the Act provides for removal from register and imposition of limitations on the ground of non-use. Sub-section (1) contemplates that registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the Registrar or the Appellate Board by any person aggrieved on the ground either:

(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him or, in a case to which the provisions of section 46 apply, by the company concerned or the registered user, as the case may be, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application; or

(b) that upto a date three moths before the date of the applciation, a continuous period of five years from the date on which the trade mark is actually entered in the register 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 or services by any proprietor thereof for the time being.

In the instant case, the Board considered this aspect and the relevant observations in paragraph 27 of the order read thus:-

"In this case, the grounds mentioned in clause (a) of sub-section (1) of section 47 of the Act do not cumulatively exist. The applicant has averred at paragraph 12 of the application "that the mark which was registered in the name of respondent no.1 in respect of the goods pharmaceutical preparation,which is registered on the application made by the respondent without any intention to use the mark in the year 1992 and have not used the mark till the year 2004". The respondent has by filing certain specimen copies of invoices from 30.10.2004 to 6.6.2005 proved that they have been suing the mark since 2004 (before the date of filing of present application) till injunction was granted against them by the court. The respondent No.1 has also filed specimen of promotional and advertising material, proof of publicizing their trade mark in CIMS, Indian Journal of Anesthesia and statement of sales of products with brand name ROFOL for the periods October 2004 to March 2005 and April 2006 to June 2006 (sic 2005), though the statement of sales of is not certified by the Chartered Accountant. Though the respondent No.1 has not proved user for certain period and have not given any explanation for such non-user yet the allegation that the respondent No.1 has obtained registration of impugned mark without any bona fide intention to use is unsustainable because if the respondent No.1 has developed a drug and applied for registration of trade mark and got the mark renewed, as such renewal is evident from the Exhibit C-4, it is difficult to agree or believe that there was no bona fide intention to use the impugned mark, more so when it is not the case of the applicant that the respondent no.1 has abandoned the impugned mark. Further, the use of the impugned mark by the respondent No.1 since 2004 negates the allegation of the applicant. Even if for the sake of argument we assume that the respondent has no bona fide intention to use, no provision has been brought to our notice which empowers this Appellate Board to remove the mark on such ground without having regard to the statutory period specified under section 47 of the Act. The cumulative existence of both the grounds of clause (a) of sub-section (1) of section 47, referred to above, are not found in this case, hence, the alternative ground under clause (a) is not applicable in this case. It is undisputed that the respondent has got the impugned mark registered as on 19.10.1992 and the same was registered on 14.9.2001. It is settled that the expression 'trade mark was registered' occurring in clause (b) of sub-section (1) of section 47 of the Act would mean that the trade mark was actually put on the register, having regard to the definition of "registered trade mark" in section 2(1)(w) of the Act. Thus the statutory period of 5 years and three months would be computed from the date on which the trade mark was actually entered in the register. In this case, the impugned mark was entered in the register on 14.9.2001 and the statutory period of 5 years three months would complete on 15.12.2006. The present application has been filed on 1.3.2006 that is say the present application was filed about 9 months before the completion of the statutory period specified under the Act. Thus the application is premature. Even the respondent No.1 has proved the use of the impugned mark since 2004 till the injunction was granted by the court. Hence, no relief can also be granted under clause (b) of sub-section (1) of section 47 of the Act."

The above referred observations made by the Board are based on factual aspect of the matter which clearly shows that the respondent no.1 got the mark registered on 19.10.1992 and the same was re-registered on 14.9.2001. The petitioner submitted application for rectification on 1.3.2006. It is, therefore, clear that the statutory period of five years and three months was not elapsed prior to the date on which the application for rectification was made by the petitioner. The statutory period of five years and three months prior to the date of the application would have completed on 15.12.2006. However, the petitioner filed the application for rectification on 1.3.2006 i.e. nine months before completion of the statutory period specified under the Act. Similarly, it is not in dispute that the respondent no.1 started use of the mark "ROFOL" in the year 2004 and the application of the petitioner for rectification was submitted on 1.3.2006 which clearly shows that non-use of the trade mark by the respondent no.1 upto three months prior to the date of rectification application is not proved by the petitioner as required by the provisions of section 47(1) of the Act. In the circumstances, the findings recorded by the Board in this regard, in our view, are sustainable in law.

40. The contention of Mr.Dwarkadas that the Board did not consider the grounds raised by the petitioner in the rectification application in respect of section 57 of the Act is concerned, it is necessary to consider the provisions of section 57 of the Act as well as the grounds raised in the rectification application by the petitioner. Section 57 provides the power to cancel or vary registration and to rectify the register. Sub-section (1) contemplates that application made in the prescribed manner, Appellate Board or to the Registrar by any person aggrieved, the Tribunal may make such order as it may think fit for cancelling or varying the registered trade mark on the ground of any contravention, or failure to observe the condition entered on the register in relation thereto. Perusal of the rectification application does not show any ground raised by the petitioner in order to demonstrate that the respondent no.1 committed contravention or failed to observe a condition entered in the register in relation thereto. Similarly, sub-section (2) of section 57 contemplates that any person aggrieved by the absence or omission from the register of any entry made in the register without sufficient cause or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit. Perusal of the rectification application would show that in paragraphs 14 and 15 of the said application, the petitioner has merely stated that the registration obtained by the respondent no.1 and the entry made in the register is without any sufficient cause and, therefore, the same is defective as the registered proprietor has not used the mark and has no intention to use the mark even after registration for a sufficiently long period. Similar grounds are raised in paragraphs 15 and 16 of the application. In the instant case, the respondent no.1 though got the mark "ROFOL" registered on 19.10.1992, the same was re-registered on 14.9.2001 and also started use of the said mark with effect from 16.10.2004 and, therefore, the impugned order passed by the Board is sustainable in law. The relevant observations made by the Board in paragraph 26 read thus:-

"26. The allegation of the applicant that the entry of impugned mark was made on the register without any sufficient cause and the same is wrongly remaining on the register has been not substantiated. Likewise, the allegation that the respondent No.1 has obtained by making false statement regarding their intention to use the mark before the Trade Marks Registry remains unsubstantiated either by production of copy of Registrar's order whereby registration was allowed or any other cogent order. We have already stated that the use of mark commenced in the year 2004 by the respondent No.1 negates that allegation."

41. The learned counsel for the respondent no.1 has cited the decision of the Apex Court in Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd. (2003) 11 SCC 92) in order to demonstrate the conditions to be proved by the applicant before the Registrar directs removal of registered trade mark. The relevant observations are in paragraphs 26 and 27 of the said decision which read thus:-

"26. Thus before the High Court or the Registrar directs the removal of the registered trade marks they must be satisfied in respect of the following:

(1) that the application is by a "person aggrieved";

(2) that the trade mark has not been used by the proprietor for a continuous period of at least five years and one month prior to the date of the application;

(3) there were no special circumstances which affected the use of the trade mark during this period by the proprietor.

27. The onus to establish the first two conditions obviously lies with the applicant, whereas the burden of proving the existence of special circumstances is on the proprietor of the trade marks. These conditions are not to be cumulatively proved but established seriatim. There is no question of the third condition being established unless the second one has already been proved and there is no question of the second one even being considered unless the High Court or the Registrar is satisfied as to the locus standi of the applicant."

The above referred observations clearly demonstrate that the aggrieved person such as the petitioner who had applied for rectification has to prove that the respondent no.1 has not used the trade mark "ROFOL" for a continuous period of at least five years and three months prior to the date of the application. In the instant case, the Board has rightly held that this condition has not been proved by the petitioner and in the absence thereof, establishing the third condition by the proprietor of the trade mark does not arise. In these circumstances, the findings recorded by the Board in this regard, in our view, are sustainable in law.

42. For the reasons stated hereinabove, the impugned orders passed by the Board are just, proper and are sustainable in law. The petition suffers from lack of merit and the same is dismissed. No order as to costs.

Petition dismissed.