SC upholds Concurrent Use of ‘Kohinoor’ rice by Rival Proprietor in the State of Uttar Pradesh

Satnam Overseas v. Sant Ram and Co & Ors. [Civil Appeal No. 10528 Of 2013]

The dispute was regarding the territorial use of the trademark ‘Kohinoor’ on rice. The SC dismissed the appeal by Satnam Overseas( Indian rice exporter major) to restrict its rival Sant Ram’s use of the trademark Kohinoor to only six cities in Uttar Pradesh(UP), because that would create a lot of complications and litigation as to the exact boundary of a particular or district. The Court allowed Sant Ram to use the trademark throughout UP.

The judgment was delivered by Justice K S Radhakrishnan of the Supreme Court. The applicant had initially filed a rectification application with the Registrar to alter the entry for the trademark “Kohinoor” on the ground of continuous non-usage of the mark for more than than five years. The application was allowed and the entry in respect of registered trademark was amended to restrict the respondent’s use of the trademark to only a few cities of UP, on the grounds of honest and concurrent use( S 12(3) of the 1958 Act). Later, the Single Judge of the Delhi HC in review allowed the use of the trademark to the entire State of UP. The appellant approached the SC in by way of Special Leave to Appeal, contending that the HC was unjustified in extending the use of the trademark to the entire state, as against the Registrar’s order. It must be noted that the HC had allowed the respondent’s concurrent use in UP due to ample evidence produced in the form of invoices showing sale all over UP. The SC discussed the interpretation of S 46 of the Trademarks Act, 1958(Removal from register and imposition of limitations on ground of non- use). To justify removal either the registration must have been made without intention to use followed by non-use OR the non-use must have been for a continuous period of five years( S 46(1)(b)). Further, the onus to prove non-use rests upon the applicant who has filed the application for rectification. The Court revisited a couple of landmark judgments on this provision:

In Hardie Trading Ltd. & Anr. V. Addisons Paint and Chemicals Ltd.[(2003) 11 SCC 92], the Court took the view that where the evidence on record does not show absolute non-use of trademark during the period of 5 years and one month prior to the application for rectification, and it was not economically possible for the owner of the registered trademark to put its goods manufactured abroad immediately due to restrictions imposed by the Import Trade Control Policies for the relevant years, the application for rectification could not be allowed on the ground of alleged non-user as the case is covered under the term “special circumstances”.

In Cycle Corporation of India Ltd. v. T.I. Raleigh Industries Pvt. Ltd. [(1996) 9 SCC 430], this Court held that the initial burden is on the applicant seeking rectification to show that the registered owner has no intention to use the trademark during the relevant period and, in fact, has failed to do so.

In this particular case, the Registrar had found that there was definite use of the trademark ‘KOHINOOR” in respect of rice in class 30 for five years and one month prior to the application of rectification. According to Justice K S Radhakrishnan , the HC had cogent reasons for extending the use of the trademark to whole of UP. “Restricting the use to a few cities would create a lot of complications and litigation as to the exact boundary of a particular city or District. It will also be impossible for the respondents to ensure that its products are not sold to retailers outside the six cities. Putting geographical restrictions was rightly held to be unjust.”

Thus, the Court held that the appeal lacked merit and dismissed it with no order as to costs.