TMI Blog2001 (5) TMI 975X X X X Extracts X X X X X X X X Extracts X X X X ..... world; that the said goods are sold with the trade marks UNIPLY, UNIBOARD, and UNIWUD and so on the basis of which, it claims to have acquired a very high reputation amongst the Plywood and Wood Product Traders, Architects, Interior Decorators, Carpenters and users of plywood, boards and laminates; that it pays a very high tax both on the sale tax side and on the income tax side; that it has the registered office at Tamil Nadu and branch offices at Kerala, Karnataka and Andhra Pradesh and has distributors and agents in Maharashtra, Gujarat, Delhi and Calcutta. The appellant claims to be the proprietor of the trade marks UNIPLY and UNIBOARD and has extensively advertised the same in various media. In July 1999 the appellant came to know tha ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e as Commercial Plywoods and the brand name has not been furnished. On the other hand, the invoices and bills produced on the side of the Plaintiff (appellant), in most of the documents the brand name finds a place. The first Defendant (respondent) has obtained excise registration only in 1997 and the trade mark application filed by him is only with reference to class 20. On the other hand, the trade mark application filed by the plaintiff (appellant) dated 14.1.96 and it relates to the goods covered under Class 19. The Plaintiff (appellant) had also filed the turnover of the business for number of years and the plaintiff (appellant) has contributed ₹ 282.53 lakhs towards sales tax and also ₹ 58.85 lakhs towards income tax. I am ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... eginning of 1994. On the question of carrying on business in the State of Kerala it was noticed that in two Malayalam daily newspapers and in two souvenirs or brochures, advertisements have been made in the years 1993 and 1995 and the appellant had not placed any material to show that inspite of the fact that such advertisements had been made in those respective years the said trade marks had not been used till the appellant started using the same. The High Court also relied upon certain invoices and declarations filed before the excise authorities and certain letters from dealers. The High Court held that the advertisement of the respondents was only in relation to furniture and it could not be said that the trade mark was being used by th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... concurrently held in favour of the respondents and the same should not be disturbed. The respondents having advertised their goods with trade mark in question since 1993 and produced invoices for the period 14.12.1993 to 17.8.1999 it is clear that ample material was placed before the court to establish the claim of prima facie case of entitlement to trade mark and infringement of the same would definitely damage his reputation in business and that the rule of prior user applied in this case is justified. Considering the nature of pleadings in the two suits filed by the parties, it is clear that there is common field of activity between two parties in respect of goods and trade marks sought to be used by either are identical. Hence the d ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... espondents have applied for registration of their respective trade marks before the Registrar under the Trade and Merchandise Marks Act, 1958 and the respective rights of the parties will have to be investigated by the Registrar and appropriate registration granted to either of them or both of them, as the case may be, bearing in mind the provisions of Section 12(3) of the Trade and Merchandise Marks Act, 1958. There are many precedents to the effect that for inherently distinctive marks ownership is governed by the priority of use of such marks. The first user in the sale of goods or service is the owner and senior user. These marks are given legal protection against infringement immediately upon adoption and use in trade if two companies ..... X X X X Extracts X X X X X X X X Extracts X X X X
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