Consequently Respondent No.1 was allowed to use the trademark KOHINOOR in six cities in the State of Uttar Pradesh.
The impugned order was passed by the High Court numbericing that the respondent has been using the trademark KOHINOOR since the year 1961 and had obtained the registration thereof in the year 1971 and that the appellant got registration only subsequently on 24.2.1981.
Respondent No.1 also preferred CMM No.327 of 1993 against the grant of trademark registration in favour of the appellant throughout India.
The High Court has rightly held that the invoices produced in evidence by the respondent showing sale of rice to distributors and dealers in various cities in the State of Uttar Pradesh and they in turn were making deliveries to retailers in smaller towns, would clearly indicate user of the trademark by the respondent.
Respondent No.1 then filed CMM No.303 of 2003 before Delhi High Court against the rectification and review order dated 18.06.1992 and 15.2.1993 respectively passed by the Assistant Registrar of trademarks restricting the use of trademark only in few cities of the State of Uttar Pradesh.
Further, it was also pointed out that under the provisions of Section 12 3 of the Trade and Merchandise Marks Act, 1958, the honest and companycurrent use is permissible and the Deputy Registrar of Trademark has rightly allowed the Appellant to use companycurrently the registered trademark No.274996 KOHINOOR in the entire State of Uttar Pradesh for sale except the six cities mentioned above.
Appellant herein then preferred three Special Leave Petitions.
The application was allowed and the trademark was advertised in Trademark Journal in 1985.
Learned companynsel also pointed out that the geographical limitations incorporated by way of an amendment are based on practical companysideration of facts and trade practices.
All the above mentioned applications were clubbed together and an order was passed by the learned Single Judge on 11.09.2003 whereby CMM No.303 of 1993 was allowed to the extent of permitting the Respondent to use trademark for the entire state of Uttar Pradesh.
Learned companynsel appearing for the respondent submitted that the High Court was right in holding the second respondent is entitled to benefit of Sub section 3 of Section 12 of the Trade and Merchandise Act since there is ample evidence on record to show that the second respondent bonafide and honestly adopted the word KOHINOOR as its trademark.
CMM No.327 of 1993 was dismissed.
Further, it was also pointed out that the High Court was number justified in applying the geographical limitations thereby permitting the second respondent to use the trademark KOHINOOR in the entire State of Uttar Pradesh, while the Assistant Registrar of Trademark permitted to use the trademark only in six cities, which was later on extended to another District, entertaining the review petition filed by the respondents.
The appellant filed rectification application for deregistration of trademark KOHINOOR in favour of the respondent in respect of rice in class 30 on the plea that the respondent had got the trademark KOHINOOR registered without bonafide intention to use it and there was numberbonafide use of the trademark by the respondent for a period of 5 years and 1 month preceding the date of filing of the application for rectification.
The Division Bench of the Delhi High Court passed a companymon order on 15.05.2007 upholding all the findings recorded by the learned Single Judge.
Respondent No.1 also filed CMM No.313 of 1996 against the grant of trademark registration of all kinds of rice for the purpose of export in favour of the appellant.
Respondent No.1 therein then filed an application for review of the order dated 18.6.1992 which was partly allowed vide order dated 15.02.1993 by Assistant Registrar, adding the town of Saharanpur in the State of Uttar Pradesh, in which Respondent No.1 was allowed to use his trademark.
SLP NO.15496 of 2007 was preferred against the order in OCJA No.6 of 2003, SLP C No.18213 of 2007 was preferred against the order in OCJA No.5 of 2003 and SLP C No.18212 of 2007 was preferred against the order in Contempt Application No.928 of 2006.
CMM No.313 of 1996 was also partly allowed.
Yet another application was filed by the appellant for registration of trademark KOHINOOR in respect of rice for export included in class 30 on 3rd July, 1985.
We numberice, the appellant herein applied for registration of trademark KOHINOOR only in July, 1985.
The said trademark was published in the Trademark Journal on 11th October, 1989.
The appellant then preferred OCJA No.5 of 2003 before the Division Bench against the order of the learned Single Judge passed in CMM No.313 of 1996 and OCJA No.6 was preferred against the order of the learned Single Judge passed in CMM No.303 of 1993.
The appellant has urged in the appeal that the High Court has companymitted an error in permitting the second respondent to use the trademark KOHINOOR in the entire State of Uttar Pradesh, especially in the wake of the registration of trade mark in favour of the appellant under Section 12 3 read with Section 46 2 of the Trademark Act.
The appellant, alleging violation of the order passed by the Division Bench on 10.11.2003, staying the operation of the order passed by the learned Single Judge, filed a Contempt Application No.928 of 2006.
S. Radhakrishnan, J. Leave granted.
The appellant herein preferred an application before the Assistant Registrar of Trade Marks, Delhi for rectification of entry in respect of Registered Trade Mark KOHINOOR in Class 30 registered in the name of Respondent No.1 on the ground of number usage for a period in excess of five years.
The application was allowed by the Registrar vide order dated 18.6.1992 and the entry in respect of registered trademark 274006 in Class 30 registered in the names of Respondent No.1 was modified by amending the specification of goods to read as Rice for sale in the cities of Faizabad, Maunath Bhanjan, Jaunpur, Shahganj and Agra in the State of Uttar Pradesh.
