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The IPAB on April 26, 2013 ordered for the removal of trademark registration made in favour of Kolkata based – Haldiram Bhujiawala. This order ended a long standing family dispute over the use of the trademark Haldiram Bhujiawala. (for IPAB order see here).
Factual Matrix
The trademark ‘Haldiram Bhujiawala’ was coined in the year 1941 by Mr. Ganga Bishan (whose nickname was Haldiram), for his business - the manufacture and sale of sweets, papads etc. Initially, the firm was a sole proprietorship. But in the year 1956, Mr. Bishan made his sons Mr. Rameshwar Lal (whose heirs are the respondents), Mr. Moolchand and Mr. Das partners in the firm trading as Haldiram Bhujiawala. In 1958, Mr. Rameshwar Lal retired from the firm and shifted to Kolkata. His father, out of love and affection, permitted him to use the trademark ‘Haldiram Bhujiawala’ only in Kolkata. In 1969, Mrs. Kamala Devi, wife of Mr. Rameshwar Lal, joined the partnership firm Haldiram Bhujiawala.
In 1965, a trademark ‘Haldiram Bhujiawala HRB (logo)’ as represented in a ‘V’ shape was conceived by Mr. Ganga Bishan. In 1972, an application for registration of the said trademark was filed by the said firm under No.285062 for the whole of India. Use was claimed since 1965. The said mark was opposed by a third party and subsequently the application proceeded to registration with a territorial restriction to read as ‘for sale in India except for the State of West Bengal’. Therefore, the said mark was in the name of the four partners i.e.., Mr. Ganga Bishan, Mr. Moolchand, Mrs. Kamala Devi and Mr.Shiv Kishan.
In 1974, the firm Haldiram Bhujiawala dissolved. On dissolution, Mr. Moolchand acquired the exclusive right to use the trademark ‘Haldiram Bhujiawala’ for the entire country except Kolkata. Mrs. Kamala Devi was given permission to carry on business at Kolkata alone. Thereafter, Mr. Bishan and Mr. Moolchand died and in 1985 Haldiram Bhujiawala was converted to a private limited company.
Meanwhile, Mr. Rameshwar Lal was carrying on business under the trademark Haldiram Bhujiawala at Kolkata. In 1977, Mr. Rameshwar Lal and Mr.Prabhu Shankar Aggarwal (son of Mr. Lal) filed an application (this is being challenged) for registration of ‘Haldiram Bhujiawala’ claiming use since 1958. This impugned trademark No.330375 is identical to the applicants trademark No.285062. The mark was registered in 1980.
Issues
The applicants (legal heirs of Mr. Moolchand) primarily contended that the registration of trademark No. 330375 was wrongly made as it has been made by fraud, on a claim of false proprietorship and on a false claim of use since 1958. It was contented that Mr. Rameshwar Lal had been a partner in the firm Haldiram Bhujiawala and hence was aware of the existence of the trademark ‘Haldiram Bhujiawala’ but had still gone ahead to obtain registration for an identical mark which is nothing but non-disclosure of material facts. Moreover, the advocate who was also aware of the entire facts – adoption of the mark of the applicants since 1941 and the V shaped logo since 1965, had suppressed and concealed these material facts before the Registrar.
The respondents, however, refuted these allegations. According to the respondents, Mr. Rameshwar Lal had adopted the trademark Haldiram Bhujiawala with the V-shape logo in the year 1958 and had been using the same in the course of trade. They also contended that due to extensive, continuous and uninterrupted use all over India, the said trademark had become very popular. In order to obtain statutory rights over this mark, Mr. Rameshwar and his son Mr. Prabhu applied for the registration of the trademark under No.330375 in Class 30 claiming use since 1958.
IPAB
The IPAB dismissed the contentions of the respondents.
The Board held that Mr. Rameshwar was only a permitted user and could not be the proprietor of the said mark. This was because Mr. Bishan who was the proprietor of the mark had, out of love and affection, only permitted Mr. Rameshwar to continue using the mark in Kolkata. Therefore, Mr. Rameshwar being a permissive user could not claim to be the proprietor of the mark. It was also noted that Mr. Rameshwar had knowledge of the fact that it was Mr. Bishan who had first coined the name ‘Haldiram Bhujiawala’. Therefore, Mr.Rameshwar Lal who had admitted that Haldiram is the nickname of Mr. Ganga Bishan and that Mr. Ganga Bishan is the one who adopted and came up with the trademark cannot claim to be the inventor and adopter himself. Thus, he cannot claim to be the proprietor of the trademark.
On the point of date of use, the IPAB held that the date of user (1958) claimed by the respondents was not substantiated by cogent evidence. Also, the Board observed that the date mentioned was based on a false statement as the respondents were aware that Mr. Bishan’s mark, which was identical, claimed use since 1965.
Moreover, the trademark was found to be neither distinctive, nor capable of being distinguished as on the date of registration and therefore, the registration was held to be in violation of the Trademark Act.
On the point of registration of the impugned mark, the IPAB observed that the Registrar had raised an objection to the registration of the said trademark on the ground that an earlier application under No.285062 i.e., a conflicting mark was already pending. However, the respondents deceived the Registrar by suppressing information and falsely stating that they were the only firm that was run under the name Haldiram Bhujiawala and no other similar application was pending. The application was therefore accepted on false representation and concealment of facts. The IPAB remarked – “We would also like to observe that the Registrar is duty bound to look into the Register before granting a registration. In fact, if the Registrar had verified and looked into the earlier application, this mistake would not have occurred. The marks under Nos.285062 and 330375 are identical for identical goods”
On the basis on this reasoning, the IPAB held that the registration of the respondent’s mark was invalid.
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