TMI Blog2007 (3) TMI 5X X X X Extracts X X X X X X X X Extracts X X X X ..... themselves, and, therefore, the appellants were not eligible to the benefit of SSI Notification No. 1/93-C.E., dated 28-2-1993 as amended by Notification No. 59/94-C.E., dated 1-3-1994. The above show cause notices were issued by the Department demanding differential duty for the period April, 1994 to June, 1994 amounting to Rs. 3,74,948/- plus short paid duty for the period April, 1995 to May, 1995 amounting to Rs. 92,992. The said demand was based on an agreement detected by the Department. That agreement was between Madan Verma, Director of a company known as M/s. Kay Aar Biscuits (P) Ltd., Ghaziabad, and M/s. Rich Food Products (P) Ltd., Noida. Under the said agreement M/s. Kay Aar Biscuits (P) Ltd. was Party No. 1. Under the agreement it was declared that M/s. Kay Aar Biscuits (P) Ltd. was the owner of the registered trade mark "Meghraj". Under the agreement it was stated that M/s. Kay Aar Biscuits (P) Ltd. was using the aforestated trade mark "Meghraj" for the manufacture of biscuits. Under the agreement there was a recital under which it was stated that M/s. Rich Food Products (P) Ltd. had put up a unit for manufacture of wafers in Noida which it sought to manufacture under ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e trade name "Meghraj" in the form of a logo which was printed on the wrapper. Before the Commissioner (A), it was argued in the alternative that the logo belonged to M/s. Kay Aar Biscuits (P) Ltd.; that the same was registered SSI Unit; that M/s. Kay Aar Biscuits (P) Ltd. was lying closed since 1-3-93 and, therefore, the appellants have been using that logo of M/s. Kay Aar Biscuits (P) Ltd. who was eligible for exemption under Notification No. l/93-C.E., as amended. This contention was rejected by the Commissioner (A) on the ground that under the Notification No. 1/93-C.E., as amended, exemption was not available to the specified goods bearing brand name or trade name (registered or not) of another person. Since, the appellants herein had used the trade name "Meghraj" on their products which trade name was owned by M/s. Kay Aar Biscuits (P) Ltd. the appellants were not entitled to the benefit of exemption under Notification No. 1/93-C.E., as amended. Accordingly, the Commissioner (A) dismissed the appeals. The orders of the Commissioner (A) have been confirmed by order dated 11-4-2000 passed by CEGAT. Hence, these civil appeals. 4.To complete the chronology of events, it may be ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... goods for the purpose of indicating, or so as to indicate a connection in the course of trade between such specified goods and some person using such name or mark with or without any indication of the identity of that person." 8.Notification No. 1/93-C.E., dated 28-2-1993 was subsequently amen- ded by Notification No. 59/94, dated 1-3-94. Para '7' of Notification No. l/93-C.E. as amended read as under : "Para-7 The exemption contained in this notification shall not apply to the specified goods where a manufacturer affixes the specified goods with a brand name or trade name (registered or not) of another person, who is not eligible for the grant of exemption under this notification." 9.In the present case, as stated above M/s. Kay Aar Biscuits (P) Ltd. entered into an agreement on 22-11-89 with M/s. Rich Food Products (P) Ltd. Under that agreement the Director of M/s. Kay Aar Biscuits (P) Ltd. declared that his company was the owner of the registered trade mark "Meghraj". The name of that Director is Madan Verma. He is the Director of the appellants (company) also. Further there is no evidence to show as to whether M/s. Kay Aar Biscuits (P) Ltd. was an "eligible manufacturer" ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 3']. 12.Applying the ratio of the above judgment to the present case, it is clear that grant of registration certificate under the Trade Marks Act will not automatically provide benefit of exemption to the SSI Unit. 13.In the case of Commissioner of Central Excise, Chandigarh v. Bhalla Enterprises - 2004 (173) E.L.T. 225 (S.C.), this Court held that the assessee will not be entitled to the benefit of exemption if it uses on goods in question, same/similar brand name with intention of indicating a connection with the goods of the assessee and such other person or uses the name in such manner that it would indicate such connection. It was further held that the burden is on the assessee to satisfy the adjudicating authority that there was no such intention [See : paras 6 and 7]. 14.Applying the above test to the facts of the present case, Madan Verma is a common Director in the two companies. He has filed an affidavit enclosing the registration certificate dated 30-6-2000. However, in that affidavit he has not stated as to on what basis, in the agreement of 23-11-89 signed by him, he had declared that M/s. Kay Aar Biscuits (P) Ltd. is the owner of the registered trade mark "Megh ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s 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 and Others v. Caltex (India) Ltd. - AIR 1969 Bombay 24 in which it has been held vide paras '32' and '38' as follows : "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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... products manufactured or sold by him. Apparently, in such a case there is no question of infringement of any right of property in a trade mark for which any relief is sought, nor is there any question of passing-off, so that it might be necessary to enter into questions of nicety as regards whether there could or could not be any property in a trade mark. As already stated by me while referring to the observations of Sir John Romily, it is not really necessary for me to decide in this case as to whether there could or could not be any property in a trade mark for the purpose of deciding this case. Even if it is found to be necessary to decide this question as to property in a trade mark, I have already pointed out that the Courts of Equity in England granted relief in cases of infringement of trade marks on the basis of infringement of the right of property in the trade mark. There was no other basis on which those Courts could give any relief to the plaintiffs in such cases and for the purpose of such relief the Courts of Equity did not require the plaintiff to prove that his mark by any length of user was associated in the minds of the public with his goods. All that was necessar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... de mark provided that the trade mark was in use before 25-2-1937, and an application for registration had been made and refused." As regards the question whether there could be any property in a trade mark, the learned Judge further observed (on the same page) as follows : "Again, turning to Section 54 of the Specific Relief Act, which deals with cases when a perpetual injunction may be granted the Explanation to that section lays down that for the purpose of that section a trade mark is property. Therefore, if a person invaded or threatened to invade the other's right to, or enjoyment of, property, the Court under Section 54 had the discretion to grant a perpetual injunction, and trade mark was as much property for the purpose of Section 54 as any other kind of property. I, therefore, agree with the learned Advocate General that all that the Trade Marks Act has done is to facilitate the mode of proof. Instead of compelling the holder of a trade mark in every case to prove his proprietary right before he could ask the Court to grant him an injunction, the Trade Marks Act provides a procedure whereby by registering his trade mark the owner gets certain facilities in the mode o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Kipre and Co. Private Ltd. were only to manufacture the food products as ordered by the respondent company and that the food products so manufactured were to be bottled and packed by them for its use and benefit and that, therefore, in spite of Kipre and Co.'s name appearing on the labels, the respondent company was the true proprietor of the mark "Monarch" and that, therefore, it was entitled to apply for its registration as proprietor thereof. Now, once again turning to the provisions of Section 18 sub-section (I), it is clear that only a person claiming to be the proprietor of a trade mark used by him or proposed to be used by him could make an application to the Registrar for the registration thereof. According to this provision, not only a person should claim to be the proprietor of a trade mark but he should prove that he had used it as such proprietor on his goods. Then turning to the label as it stood at the date of the application, two names appeared on the label, one of Kipre and Co. and the other of the respondent company. If these two names had stood by themselves without any further description of either of them, it could be said that both Kipre and Co. and the respond ..... X X X X Extracts X X X X X X X X Extracts X X X X
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