Ibn Sina Food & Chemical Vs. Registrar of Trade Marks and others, 4 LNJ (2015) 757

Case No: Trade Mark Application No. 03 of 2009

Judge: Md. Rezaul Hasan,

Court: High Court Division,,

Advocate: Mr. Muhammad Muhiuddin,Mr. Md. S.R. Khoshnabish,,

Citation: 4 LNJ (2015) 757

Case Year: 2015

Appellant: Ibn Sina Food & Chemical

Respondent: Registrar of Trade Marks and others

Subject: Trade Mark,

Delivery Date: 2013-05-20


HIGH COURT DIVISION
(Statutory Original Jurisdiction)
 
Md. Rezaul Hasan, J

Judgment on
20.05.2013
  Ibn Sina Food & Chemical Industries Ltd., represented by its Managing Director, Mr. Nazrul Islam Sarker, having its office at Azad Centre, 55 Purana Palatan (6th Floor), Police Station-Paltan, Dhaka-1000
. . .Petitioner
Versus
The Registrar of Trade Marks, Trade Marks Registry, Shilpa Bahaban, 91, Motijheel Commercial Area, Police Station- Motijheel, Dhaka and others
...Opposite-Parties
 

Trade Marks Act, (XIX of 2009)
Sections 51(1) and 98(2)
The petitioner has previously filed an application for registration of trade mark ‘Ibn Sina Tang’ and their prayer was rejected, but the petitioner has suppressed these facts in their petition as well as did not seek any remedy against rejection of their previous application. Hence apparently this petitioner has not come in clean hands before this court and by their conduct in abstaining from seeking any relief against rejection of their first application they have waived their claim in respect of ‘Ibn Sina Orange’ trade mark. . . . (11)

Trade Marks Act, (XIX of 2009)
Section 6(1) (d)
There is obvious similarity between the two packets and that can create confusion in the minds of the ordinary buyers and this is a clear case of passing of. . . . (12)

25 BLD (AD) 146; 15 BLT (AD) 163; 25 BLT (AD) 2005, 146; 54 DLR 394 and 17 BLC (2012) 715 ref.

Mr. Muhammad Muhiuddin, Advocate
. . . For the petitioner

Mr. Md. S.R. Khoshnabish, Advocate
. . .For opposite party No.3

Trade Mark Application No. 03 of 2009
 
JUDGMENT
Md. Rezaul Hasan, J.
 
This is an application filed under section 51(2) read with section 98(2) of the Trade Marks Act, 2009 for rectification of Register of Trade Marks by imposing condition of disclaimer upon the Trade Mark No. 25566 in Class-32.
It has been stated in the petition, amongst other that the petitioner company, Ibn Sina Food & Chemical Industries Ltd, was registered as a private limited company on 22.6.1998 obtaining Incorporation Certificates NO.C-35655(2421)/98. Since incorporation, the petitioner adopted a good number of trademarks consisting of the work IBN SINA alongwith other descriptive or non-descriptive words.

That, the petitioner chose the word TANG, means flavour, a fully descriptive word for soft drinks after the words Ibn Sina Orange to form the Trademark Ibn Sina Orange TANG. Due to superior quality, wide range of publicity and extensive use, the trademark Ibn Sina Orange TANG earned unparalleled popularity and became distinctive of the products of the petitioner and of nobody else. The petitioner acquired exclusive proprietary right over the trademark Ibn Sina Orange TANG for its soft drink powder. To protect its right over the trademark Ibn Sina Orange Tang, the petitioner applied for registration of its trademark Ibn Sina Orange TANG in class-32 for which serial No.109102 was allocated. It also applied for BSTI  Licence in the year 2003 for producing and marketing its produce soft drink and obtained CM Licence No.5174/G-5/2003, dated 22.11.2003 which was applied for renewal on 30.6.2009.

That M/s. Sajeeb Corporation, represented by its proprietor shamima Haider Chowdhury and having its registered office at No.2, Tejturi Bazar (Indira Road), Tejgaon, Dhaka as sole Distributor of KRAFT General Foods of USA for Bangladesh market in respect of their products under registered Trade Mark Brand –‘TANG’ as the plaintiff instituted the Title Suit NO.27 of 2009 in the Court of the District Judge.
  1. A decree declaring that the C.M. Certificate issued by the defendant No.2 under licence NO.5174/G-5/2006, dated 02.11.2006 in favour of defendant No.3 is violative and infringement of plaintiff’s Trade Mark and C.M. Certificate in respect of Soft drink product brand “TANG” issued by defendant No.5 and 2 are illegal, void, inoperative and without any lawful authority.
  2. A decree of permanent injunction restraining the defendant Nos. 3-4 from manufacturing, distributing and/or selling soft drink product under brand name “Ibn Sina Orange TANG” shown in schedule-B in any form using paper containers and packets or bottles in Bangladesh.
  3. A decree in mandatory form directing the defendant Nos.3-4 to withdraw or call back the soft drink products with brand name “Ibn Sina Orange TANG” as shown in Schedule-B from all markets in Bangladesh.
The opposite parties, (plaintiff) in the said Title Suit, have also filed petition for temporary injunction and the court below has passed ad-interim injunction restraining the petitioner from manufacturing or selling or marketing soft drink under the name Ibn Sina Orange Tang. That, the very registration of the trademark TANG in respect of soft drink powder, in class-32 under No.25566, having a direct reference to the character or quality of the goods, is violative of the section 6(a)(d) of the Trade Marks Act, 1940 as well as Trade Marks Act, 2009.

That, while making examination of the application No.25566 in class-32 in respect of Soft Drink Powder, the provision of law was not adhered to. A  highly descriptive word like TANG does not qualify for registration under section 6(1)(d) of the Trade Marks Act, 1940 as well as Trade Marks Act, 2009 since the mark is not distinctive per se as the same is objectionable under section 6(1)(e) of both the Trade Marks Act, 1940 & 2009.

On the other hand the opposite party Nos. 2 and 3 and appeared in this matter and filed two separate affidavit- in-opposition denying all materials allegations made in the petition.

The learned Advocate Mr. Muhammad Muhiuddin, appearing for the petitioner, having placed the petition alongwith the supplementary affidavit submits that registration of word ‘Tang’ in the name of the opposite parties as soft drink, in Class 32 under No. 25566, having direct reference to character being descriptive in nature, the very registration itself is not legal accordingly to section 6(1) (d) of the Trade Marks Act, 2009. He further submits that the Trade Marks has been obtained, fraudulently or otherwise by managing the concerned authorities. Hence registration of trade mark ‘Tang’ in the name of the opposite parties is not valid. He further submits that in respect of other food items there is a provision for imposing disclaimer, thereby meaning that trade mark is not to be exclusively used by other manufactures, but by other parties manufacturing and marketing similar products. Accordingly he has prayed for imposing of disclaimer in respect of Trade Mark Tang in Class 32 Registered  under No. 25566, in the name of the petitioner.

The learned Advocate Mr. Md. S.R. Khoshnabish, representing both opposite party Nos.2 and 3, having placed the affidavit-in-opposition, on the other hand submits that this petition under section 51(2) and 98(2) has been filed by suppressing the material facts from the knowledge of the court. Referring to a letter dated 14.9.2009, addressed to the officer-in-charge Fatullah Model P.S by the Examiner of the Patent, Design and Trade Marks Directorate (Annexure-C) to affidavit-in-opposition filed on behalf of the opposite party No.2, submits that a previous application was rejected by the concern authority by suppressing this facts they have filed this application. Referring to the statements made in paragraph No.1 of the petition, the learned Advocate for the opposite parties submits that admittedly Ibn Sina Food Chemical Industries limited  was registered on 21.6.1998, but the petitioner obtained registration of the Trade Mark in respect of word Tang on 2.7.1987 i.e long before incorporation of the petitioner. Then referring to 15 BLT(AD) 163, the learned Advocate submits that the commodities of the opposite parties are already in market and has become popular among the people and has obtained the registration of the Trade Mark on 2.7.1987 i.e long before the product of the petitioner was incorporated or started manufacturing its product and as such the petitioner is not entitled to file application for rectification of the registration entry or for imposing disclaimer. Thereafter, referring to another decision reported in 25 BLT(AD) 2005 page-146, the learned Advocate submits that the mark ‘Tang’ registered in favour of the opposite parties in Bangladesh and the mark is in the use for the said product through out the word. The opposite parties have already corned good name, good will and reputation in this country in respect of TANG, and therefore if the condition of disclaimer is allowed, there is likely hood of deception and confusion to arise in the mind of the buyers of the products of the opposite parties. For this reason as well this petition is liable to be rejected. Next, referring to another decision reported in 54 DLR 394, the learned advocate submits that the subsequent application for registration of Trade Mark is not maintainable, while the products of the opposite parties are in the market about 11/12 years before the products of the petitioner was manufactured. As such, the concerned authority has rightly rejected the prayer of the petitioner to register it’s Trade Mark  being ‘Ibn Sina Orange Tang’. Referring to another decision reported in 17 BLC (2012) 715, the learned advocate for the opposite parties submits that this petition is liable to be rejected for the reasons that the obvious similarity between the two marks is bound to create confusion in the minds of the public (who are mostly not able read English) and that this comes with the ambit of passing of. Hence their application was rightly rejected by the directorate of the Trade Marks and the present application is liable to be rejected as it has no merit and this is clearly contradictory to the laws settled by the apex court in the meantime.

I have heard the learned Advocates appearing for both sides, perused the application alongwith supplementary affidavit filed by the petitioner as well as the affidavits in opposition filed by the opposite party Nos. 2 and 3 along with the materials on record.

It appears that the petitioner has previously filed an application for registration of trade mark ‘Ibn Sina Tang’ and their prayer was rejected, as it evident from a letter No.15387/09 dated 14.9.2009 (Annexure-C2) to the affidavit in opposition of O.P No.2. But the petitioner has suppressed this facts in their petition as well as did not seek any remedy against rejection of their previous application. Hence apparently this petitioner has not come in clean hands before this court and by their conduct in abstaining from seeking any relief against rejection of their first application they have waived their claim in respect of ‘Ibn Sina Orange’ trade mark.

Besides, not only the trade mark sought to be registered, I have compared, I have also compared the products of the petitioner and that of the opposite  in packeted condition in which their products are being marketed. I find there is obvious similarity between the two packets and that can create confusion in the minds of the ordinary buyers and this is a clear case of passing of. Besides I also find that the petitioner company was registered on 21.6.1998 as admitted in paragraph No.1 of the petition, whereas the opposite parties got registration of their Mark Tang on 2.7.1987 i.e before the petitioner has started manufacturing and marketing their products in almost in similar name design, size and colour of packet. I find no grounds to allow the prayer for disclaimer as because it will deceive the buyers of the products of the petitioner, which is in the market since 1987 and has earned popularity amongst the buyers.

In this factual background I am of the view that the decision of the apex court reported in 15 BLT(AD) 163: Diptee  Industries Ltd and others Vs. Government of Bangladesh;  25 BLD(AD) 146: Sunil Kumar Das Vs. Canon Kavushiki  Kaisha and another Registered of Trade Mark Government of Bangladesh are squarely applicable to the facts and circumstances of the case. Similarly the judgment reported in 54 DLR 294: Abdul Mannan Mia Vs. Md. Solimullah Mia and the decision reported in17 BLC 715 of this Division are also applicable to the facts and circumstance of this case.

In view of the law declared by the apex court, I am also of the view that this petition is not maintainable and has no merit. Besides it has been admitted in the petition itself that there is a pending Title Suit filed by the opposite party (as plaintiff), in which the petitioner was restrained by an order of ad-interim injunction from manufacturing and marketing their products under the marks ‘Ibn Sina Tang’ and that suit is still pending. The petitioner, if he has any grievance,  can seek remedy in appropriate forum as against the order passed by the court below. This court cannot allow multiplicity of proceedings in respect of a similar disputes between the same parties. 

On this ground as well, I consider that this petition as an abuse of process of the court and is liable to be rejected.

In view of the deliberation made above this petition is dismissed without any order as to cots.

Ed.