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Monday, December 24, 2012

Arkansas Game and Fish Commission (Commission)= Petitioner, Arkansas Game and Fish Commission (Commission), owns and manages the Dave Donaldson Black River Wildlife Management Area (Management Area or Area), which comprises 23,000 acres along the Black River that are forested with multiple hardwood oak species and serve as a venue for recreation and hunting. In 1948, the U. S. Army Corps of Engineers (Corps) constructed the Clearwater Dam (Dam) upstream from the Management Area and adopted a plan known as the Water Control Manual (Manual), which sets seasonally varying rates for the release of water from the Dam. Periodically from 1993 until 2000, the Corps, at the request of farmers, authorized deviations from the Manual that extended flooding into the Management Area’s peak timber growing season. The Commission objected to the deviations on the ground that they adversely impacted the Management Area, and opposed the Corps’ proposal to make the temporary deviations part of the Manual’s permanent water-release plan. After testing the effect of the deviations, the Corps abandoned the proposed Manual revision and ceased its temporary deviations. The Commission sued the United States, alleging that the temporary deviations constituted a taking of property that entitled the Commission to compensation. = The Commission had been deprived of the customary use of the Management Area as a forest and wildlife preserve, as the bottomland hardwood forest turned, over time, into a “headwater swamp.” 87 Fed. Cl., at 610 (internal quotation marks omitted); see supra, at 5.2 The Government, however, challenged several of the trial court’s factfindings, including those relating to causation, foreseeability, substantiality, and the amount of damages. Because the Federal Circuit rested its decision entirely on the temporary duration of the flooding, it did not address those challenges. As earlier noted, see supra, at 13, preserved issues remain open for consideration on remand. * * * The Commission is endeavoring to reclaim the land through a restoration program. The prospect of reclamation, however, does not disqualify a landowner from receipt of just compensation for a taking.


 
 
(Slip Opinion)  OCTOBER TERM, 2012  1
Syllabus
NOTE: Where it is feasible, a syllabus (headnote) will be released, as is
being done in connection with this case, at the time the opinion is issued.
The syllabus constitutes no part of the opinion of the Court but has been
prepared by the Reporter of Decisions for the convenience of the reader.
See United States v. Detroit Timber & Lumber Co., 200 U. S. 321, 337.
SUPREME COURT OF THE UNITED STATES
Syllabus
ARKANSAS GAME AND FISH COMMISSION v.
UNITED STATES

CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
No. 11–597. Argued October 3, 2012—Decided December 4, 2012
Petitioner, Arkansas Game and Fish Commission (Commission), owns 
and manages the Dave Donaldson Black River Wildlife Management 
Area (Management Area or Area), which comprises 23,000 acres 
along the Black River that are forested with multiple hardwood oak 
species and serve as a venue for recreation and hunting.
In 1948, the 
U. S. Army Corps of Engineers (Corps) constructed the Clearwater 
Dam (Dam) upstream from the Management Area and adopted a 
plan known as the Water Control Manual (Manual), which sets seasonally varying rates for the release of water from the Dam.  Periodically from 1993 until 2000, the Corps, at the request of farmers, authorized deviations from the Manual that extended flooding into the
Management Area’s peak timber growing season.  
The Commission 
objected to the deviations on the ground that they adversely impacted
the Management Area, and opposed the Corps’ proposal to make the
temporary deviations part of the Manual’s permanent water-release 
plan. After testing the effect of the deviations, the Corps abandoned 
the proposed Manual revision and ceased its temporary deviations.
The Commission sued the United States, 
alleging that the temporary deviations constituted a taking of property that entitled the
Commission to compensation.  
The Commission maintained that the 
deviations caused sustained flooding during tree-growing season, and
that the cumulative impact of the flooding caused the destruction of
timber in the Area and a substantial change in the character of the 
terrain, necessitating costly reclamation measures.
The Court of 
Federal Claims’ judgment in favor of the Commission was reversed 
by the Federal Circuit.  The Court of Appeals acknowledged that 
temporary government action may give rise to a takings claim if  
 
 
2  ARKANSAS GAME AND FISH COMM’N v. UNITED STATES
Syllabus
permanent action of the same character would constitute a taking.  It 
held, however, that government-induced flooding can give rise to a 
taking claim only if the flooding is “permanent or inevitably recurring.”
The Federal Circuit understood this conclusion to be dictated
by Sanguinetti v. United States, 264 U. S. 146, 150, and United States
v. Cress, 243 U. S. 316, 328.
Held: Government-induced flooding temporary in duration gains no
automatic exemption from Takings Clause inspection.  Pp. 6–15.
(a) No magic formula enables a court to judge, in every case, 
whether a given government interference with property is a taking.
This Court has drawn some bright lines, but in the main, takings
claims turn on situation-specific factual inquiries.  
See Penn Central 
Transp. Co. v. New York City, 438 U. S. 104, 124. 
As to the question whether temporary flooding can ever give rise to
a takings claim, this Court has ruled that government-induced flooding, Pumpelly v. Green Bay Co., 13 Wall. 166, and seasonally recurring flooding,  Cress, 243 U. S., at 328, can constitute takings.  The 
Court has also ruled that takings temporary in duration can be compensable.   E.g., United States v.  Causby, 328 U. S. 256, 266.  This 
Court’s precedent thus indicates that government-induced flooding of 
limited duration may be compensable.  None of the Court’s decisions 
authorizes a blanket temporary-flooding exception to the Court’s Takings Clause jurisprudence, and the Court declines to create such an
exception in this case.  Pp. 6–9.
(b) In advocating a temporary-flooding exception, the Government 
relies primarily on  Sanguinetti, 264 U. S. 146, which held that no 
taking occurred when a government-constructed canal overflowed onto the claimant’s land.  In its  opinion, the Court summarized prior
flooding cases as standing for the proposition that “in order to create
an enforceable liability against the Government, it is, at least, necessary that the overflow be the direct result of the structure, and constitute an actual, permanent invasion of the land.”  Id., at 149.  The 
Government urges the Court to extract from the quoted words a definitive rule that there can be no temporary taking caused by floods.
But the Court does not read the passing reference to permanence in 
Sanguinetti as having done so much work.  Sanguinetti was decided 
in 1924, well before the World War II-era cases and  First English 
Evangelical Lutheran Church of Glendale v. County of Los Angeles, 
482 U. S. 304, in which the Court first homed in on the matter of 
compensation for temporary takings.  There is no suggestion in Sanguinetti that flooding cases should be set apart from the mine run of
takings claims. 
The Court thus finds no solid grounding in precedent for setting 
flooding apart from other government intrusions on property.   And   
  
Cite as: 568 U. S. ____ (2012)  3 
Syllabus 
the Government has presented no other persuasive reason to do so. 
Its primary argument is that reversing the Federal Circuit’s decision
risks disrupting public works dedicated to flood control.  While the 
public interests here are important, they are not categorically different from the interests at stake in myriad other Takings Clause cases
in which this Court has rejected similar arguments when deployed to 
urge blanket exemptions from the Fifth Amendment’s instruction. 
The Government argues in the alternative that damage to downstream property, however foreseeable, is collateral or incidental; it is
not aimed at any particular landowner and therefore is not compensable under the Takings Clause.  The Court expresses no opinion on
this claim, which was first tendered at oral argument and not aired 
in the courts below.  For the same reason, the Court declines to address the bearing, if any, of Arkansas water-rights law on this case.
Pp. 9–13.
(c) When regulation or temporary physical invasion by government
interferes with private property, time is a factor in determining the 
existence vel non of a compensable taking.  See, e.g., Loretto v. Teleprompter Manhattan CATV Corp., 458 U. S. 419, 435, n. 12.  Also relevant to the takings inquiry is the degree to which the invasion is intended or is the foreseeable result of authorized government action. 
See,  e.g., John Horstmann Co. v. United States, 257 U. S. 138, 146. 
So, too, are the character of the land at issue and the owner’s “reasonable investment-backed expectations” regarding the land’s use, 
Palazzolo v. Rhode Island, 533 U. S. 606, 618, as well as the severity 
of the interference, see, e.g., Penn Central, 438 U. S., at 130–131.  In 
concluding that the flooding was foreseeable in this case, the Court of
Federal Claims noted the Commission’s repeated complaints to the
Corps about the destructive impact of the successive planned deviations and determined that the interference with the Commission’s 
property was severe. The Government, however, challenged several 
of the trial court’s factfindings, including those relating to causation, 
foreseeability, substantiality, and the amount of damages.  Because 
the Federal Circuit rested its decision entirely on the temporary duration of the flooding, it did not address those challenges, which remain open for consideration on remand.  Pp. 14–15. 
637 F. 3d 1366, reversed and remanded. 
GINSBURG, J., delivered the opinion of the Court, in which all other
Members joined, except KAGAN, J., who took no part in the consideration or decision of the case.  
 
_________________
_________________
Cite as: 568 U. S. ____ (2012)  1
Opinion of the Court
NOTICE: This opinion is subject to formal revision before publication in the
preliminary print of the United States Reports. Readers are requested to
notify the Reporter of Decisions, Supreme Court of the United States, Washington, D. C. 20543, of any typographical or other formal errors, in order
that corrections may be made before the preliminary print goes to press.
SUPREME COURT OF THE UNITED STATES
No. 11–597
ARKANSAS GAME AND FISH COMMISSION,
PETITIONER v. UNITED STATES

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT

[December 4, 2012]
 JUSTICE GINSBURG delivered the opinion of the Court.
Periodically from 1993 until 2000, the U. S. Army Corps
of Engineers (Corps) authorized flooding that extended
into the peak growing season for timber on forest land
owned and managed by petitioner, Arkansas Game and
Fish Commission (Commission).  Cumulative in effect, the
repeated flooding damaged or destroyed more than 18
million board feet of timber and disrupted the ordinary
use and enjoyment of the Commission’s property.  The
Commission sought compensation from the United States
pursuant to the Fifth Amendment’s instruction: “[N]or
shall private property be taken for public use, without
just compensation.” The question presented is whether a
taking may occur, within the meaning of the Takings
Clause, when government-induced flood invasions, although repetitive, are temporary.
Ordinarily, this Court’s decisions confirm, if government
action would qualify as a taking when permanently continued, temporary actions of the same character may also
qualify as a taking.  In the instant case, the parties and  
2  ARKANSAS GAME AND FISH COMM’N v. UNITED STATES
Opinion of the Court
the courts below divided on the appropriate classification
of temporary flooding. Reversing the judgment of the
Court of Federal Claims, which awarded compensation to
the Commission, the Federal Circuit held, 2 to 1, that
compensation may be sought only when flooding is “a per-
manent or inevitably recurring condition, rather than an
inherently temporary situation.”  637 F. 3d 1366, 1378
(2011). We disagree and conclude that recurrent floodings, even if of finite duration, are not categorically exempt from Takings Clause liability.
I
A
The Commission owns the Dave Donaldson Black River
Wildlife Management Area (Management Area or Area),
which comprises 23,000 acres along both banks of the
Black River in northeast Arkansas.  The Management
Area is forested with multiple hardwood timber species
that support a variety of wildlife habitats.  The Commission operates the Management Area as a wildlife and
hunting preserve, and also uses it as a timber resource,
conducting regular harvests of timber as part of its forestmanagement efforts. Three types of hardwood oak species—nuttall, overcup, and willow—account for 80 percent
of the trees in the Management Area.  The presence of
these hardwood oaks is essential to the Area’s character as
a habitat for migratory birds and as a venue for recreation
and hunting.
The Clearwater Dam (Dam) is located 115 miles upstream from the Management Area.  The Corps constructed
the Dam in 1948, and shortly thereafter adopted a plan
known as the Water Control Manual (Manual) to determine the rates at which water would be released from the
Dam. The Manual sets seasonally varying release rates,
but permits planned deviations from the prescribed rates
for agricultural, recreational, and other purposes.  
Cite as: 568 U. S. ____ (2012)  3
Opinion of the Court
In 1993, the Corps approved a planned deviation in
response to requests from farmers. From September to
December 1993, the Corps released water from the Dam at
a slower rate than usual, providing downstream farmers
with a longer harvest time. As a result, more water than
usual accumulated in Clearwater Lake behind the Dam.
To reduce the accumulation, the Corps extended the pe-
riod in which a high amount of water would be released.
The Commission maintained this extension yielded downstream flooding in the Management Area, above historical
norms, during the tree-growing season, which runs from
April to October.  If the  Corps had released the water
more rapidly in the fall of 1993, in accordance with the
Manual and with past practice, there would have been
short-term waves of flooding which would have receded
quickly. The lower rate of release in the fall, however,
extended the period of flooding well into the following
spring and summer.  While the deviation benefited farmers, it interfered with the Management Area’s treegrowing season.
The Corps adopted similar deviations each year from
1994 through 2000. The record indicates that the decision
to deviate from the Manual was made independently in
each year and that the amount of deviation varied over the
span of years. Nevertheless, the result was an unbroken
string of annual deviations from the Manual.  Each deviation lowered the rate at which water was released during
the fall, which necessitated extension of the release period
into the following spring and summer.  During this span of
years the Corps proposed Manual revisions that would
have made its temporary deviations part of the permanent
water-release plan.  On multiple occasions between 1993
and 2000, the Commission objected to the temporary
deviations and opposed any  permanent revision to the
Manual, on the ground that the departures from the traditional water-release plan adversely impacted the Man-  
 
4  ARKANSAS GAME AND FISH COMM’N v. UNITED STATES
Opinion of the Court
agement Area.  Ultimately, the Corps tested the effect of
the deviations on the Management Area. It thereupon
abandoned the proposal to permanently revise the Manual
and, in 2001, ceased its temporary deviations.
B
In 2005, the Commission filed the instant lawsuit
against the United States, claiming that the temporary
deviations from the Manual constituted a taking of property that entitled the Commission to compensation.  The
Commission maintained that the deviations caused sustained flooding of its land during the tree-growing season.
The cumulative impact of this flooding over a six-year
period between 1993 and 1999, the Commission alleged,
resulted in the destruction of timber in the Management
Area and a substantial change in the character of the
terrain, which necessitated costly reclamation measures.
Following a trial, the Court of Federal Claims ruled in
favor of the Commission and issued an opinion and order
containing detailed findings of fact.  87 Fed. Cl. 594
(2009).
The Court of Federal Claims found that the forests in
the Management Area were healthy and flourishing before
the flooding that occurred in the 1990’s, and that the
forests had been sustainably managed for decades under
the water-release plan contained in the Manual.   Id., at
631.  It further found that the Commission repeatedly
objected to the deviations from the Manual and alerted the
Corps to the detrimental effect the longer period of flooding would have on the hardwood timber in the Management Area.  Id., at 604.
As found by the Court of Federal Claims, the flooding
caused by the deviations contrasted markedly with historical flooding patterns.  Between 1949 and 1992, the river
level near the Management Area reached six feet an average of 64.7 days per year during the growing season; the
number of such days had been even lower on average Cite as: 568 U. S. ____ (2012)  5
Opinion of the Court
before the Clearwater Dam was built.  Between 1993 and
1999, however, the river reached the same level an average of 91.14 days per year, an increase of more than 40
percent over the historic average. Although the Management Area lies in a floodplain, in no previously recorded
time span did comparable flooding patterns occur.  Id., at
607–608. Evidence at trial indicated that half of the nuttall oaks in the Management Area were saturated with
water when the river level was at six feet, id., at 608; the
evidence further indicated that the saturation of the soil
around the trees’ root systems could persist for weeks even
after the flooding had receded.  Id., at 627.
The court concluded that the Corps’ deviations caused
six consecutive years of substantially increased flooding,
which constituted an appropriation of the Commission’s
property, albeit a temporary rather than a permanent
one.  Important to this conclusion, the court emphasized
the deviations’ cumulative effect.  The trees were subject
to prolonged periods of flooding year after year, which
reduced the oxygen level in the soil and considerably weak-
ened the trees’ root systems. The repeated annual flooding for six years altered the character of the property to
a much greater extent than would have been shown if
the harm caused by one year of flooding were simply multiplied by six. When a moderate drought occurred in 1999
and 2000, the trees did not have the root systems necessary to sustain themselves; the result, in the court’s
words, was “catastrophic mortality.”   Id., at 632. More
than 18 million board feet of timber were destroyed or
degraded.  Id., at 638–640.
This damage altered the character of the Management
Area. The destruction of the trees led to the invasion of
undesirable plant species, making natural regeneration of
the forests improbable in the absence of reclamation efforts.  Id., at 643. To determine the measure of just
compensation, the Court of Federal Claims calculated the  
 
6  ARKANSAS GAME AND FISH COMM’N v. UNITED STATES
Opinion of the Court
value of the lost timber and the projected cost of the reclamation and awarded the Commission $5.7 million.
The Federal Circuit reversed. It acknowledged that in
general, temporary government action may give rise to a
takings claim if permanent action of the same character
would constitute a taking.  But it held that “cases involving flooding and [flowage] easements are different.” 637
F. 3d, at 1374. Government-induced flooding can give rise
to a taking claim, the Federal Circuit concluded, only if
the flooding is “permanent or inevitably recurring.”   Id.,
at 1378. The Court of Appeals understood this conclusion
to be dictated by this Court’s decisions in Sanguinetti v.
United States, 264 U. S. 146, 150 (1924), and  United
States v.  Cress, 243 U. S. 316, 328 (1917).  We granted
certiorari to resolve the question whether government
actions that cause repeated floodings must be permanent
or inevitably recurring to constitute a taking of property.
566 U. S. ___ (2012).
II
The Takings Clause is “designed to bar Government
from forcing some people alone to bear public burdens
which, in all fairness and justice, should be borne by the
public as a whole.”  Armstrong v. United States, 364 U. S.
40, 49 (1960).  See also First English Evangelical Lutheran
Church of Glendale v.  County of Los Angeles, 482 U. S.
304, 318–319 (1987);  Penn Central Transp. Co. v.  New
York City, 438 U. S. 104, 123–125 (1978).  And “[w]hen the
government physically takes possession of an interest in
property for some public purpose, it has a categorical duty
to compensate the former owner.”  Tahoe-Sierra Preservation Council, Inc. v.  Tahoe Regional Planning Agency,
535 U. S. 302, 322 (2002) (citing  United States v.  Pewee
Coal Co., 341 U. S. 114, 115 (1951)).  These guides are
fundamental in our Takings Clause jurisprudence.  We have
recognized, however, that no magic formula enables a  
Cite as: 568 U. S. ____ (2012)  7
Opinion of the Court
court to judge, in every case, whether a given government
interference with property is a taking.  In view of the
nearly infinite variety of ways in which government actions or regulations can affect property interests, the
Court has recognized few invariable rules in this area.
True, we have drawn some bright lines, notably, the
rule that a permanent physical occupation of property
authorized by government is a taking.   Loretto v.  Teleprompter Manhattan CATV Corp., 458 U. S. 419, 426
(1982). So, too, is a regulation that permanently requires
a property owner to sacrifice  all economically beneficial
uses of his or her land.  Lucas v. South Carolina Coastal
Council, 505 U. S. 1003, 1019 (1992).  But aside from the
cases attended by rules of this order, most takings claims
turn on situation-specific factual inquiries.  See  Penn
Central, 438 U. S., at 124.  With this in mind, we turn to
the question presented here—whether temporary flooding
can ever give rise to a takings claim.
The Court first ruled that government-induced flooding
can constitute a taking in Pumpelly v. Green Bay Co., 13
Wall. 166 (1872). The Wisconsin Legislature had authorized the defendant to build a dam which led to the creation
of a lake, permanently submerging the plaintiff’s land.
The defendant argued that the land had not been taken
because the government did not exercise the right of eminent domain to acquire title to the affected property.
Moreover, the defendant urged, the damage was merely
“a consequential result” of the dam’s construction near the
plaintiff’s property.  Id., at 177. Rejecting that crabbed
reading of the Takings Clause, the Court held that “where
real estate is actually invaded by superinduced additions
of water, earth, sand, or other material . . . so as to effectually destroy or impair its usefulness, it is a taking,
within the meaning of the Constitution.”  Id., at 181.
Following Pumpelly, the Court recognized that season-
ally recurring flooding could constitute a taking.  United  
8  ARKANSAS GAME AND FISH COMM’N v. UNITED STATES
Opinion of the Court
States v.  Cress, 243 U. S. 316 (1917), involved the Government’s construction of a lock and dam, which subjected
the plaintiff’s land to “intermittent but inevitably recurring overflows.”  Id., at 328. The Court held that the
regularly recurring flooding gave rise to a takings claim
no less valid than the claim of an owner whose land was
continuously kept under water.  Id., at 328–329.
Furthermore, our decisions confirm that takings temporary in duration can be compensable.  This principle
was solidly established in the World War II era, when
“[c]ondemnation for indefinite periods of occupancy [took
hold as] a practical response to the uncertainties of the
Government’s needs in wartime.”  United States v. Westinghouse Elec. & Mfg. Co., 339 U. S. 261, 267 (1950).  In
support of the war effort, the Government took temporary
possession of many properties.  These exercises of government authority, the Court recognized, qualified as
compensable temporary takings.  See Pewee Coal Co., 341
U. S. 114; Kimball Laundry Co. v. United States, 338 U. S.
1 (1949); United States v. General Motors Corp., 323 U. S.
373 (1945). Notably in relation to the question before us,
the takings claims approved in these cases were not confined to instances in which the Government took outright
physical possession of the property involved. A temporary
takings claim could be maintained as well when government action occurring outside the property gave rise to “a
direct and immediate interference with the enjoyment and
use of the land.”  United States v.  Causby, 328 U. S.
256, 266 (1946) (frequent overflights from a nearby airport
resulted in a taking, for the flights deprived the property
owner of the customary use of his property as a chicken
farm); cf.  United States v.  Dickinson, 331 U. S. 745, 751
(1947) (flooding of claimant’s land was a taking even
though claimant successfully “reclaimed most of his land
which the Government originally took by flooding”).
Ever since, we have rejected the argument that govern-
 
Cite as: 568 U. S. ____ (2012)  9
Opinion of the Court
ment action must be permanent to qualify as a taking.
Once the government’s actions have worked a taking of
property, “no subsequent action by the government can re-
lieve it of the duty to provide compensation for the period during which the taking was effective.”  First English,
482 U. S., at 321.  See also Tahoe-Sierra, 535 U. S., at 337
(“[W]e do not hold that the temporary nature of a land-use
restriction precludes finding that it effects a taking; we
simply recognize that it should not be given exclusive
significance one way or the other.”).
Because government-induced flooding can constitute a
taking of property, and because a taking need not be
permanent to be compensable, our precedent indicates
that government-induced flooding of limited duration may
be compensable. No decision of this Court authorizes
a blanket temporary-flooding exception to our Takings
Clause jurisprudence, and we decline to create such an
exception in this case.
III
In advocating a temporary-flooding exception, the Government relies primarily on  Sanguinetti, 264 U. S. 146.
That case involved a canal constructed by the Government
connecting a slough and a river.  The claimant’s land was
positioned between the slough and the river above the
canal. The year after the canal’s construction, a “flood of
unprecedented severity” caused the canal to overflow onto
the claimant’s land; less severe flooding and overflow
occurred in later years.  Id., at 147.
The Court held there was no taking on these facts.  This
outcome rested on settled principles of foreseeability and
causation. The Court emphasized that the Government
did not intend to flood the land or have “any reason to
expect that such [a] result would follow” from construction
of the canal.  Id.,  at 148.  Moreover, the property was
subject to seasonal flooding prior to the construction of the  
 
10 ARKANSAS GAME AND FISH COMM’N v. UNITED STATES
Opinion of the Court
canal, and the landowner failed to show a causal connection between the canal and the increased flooding, which
may well have been occasioned by changes in weather
patterns. See id., at 149 (characterizing the causal relationship asserted by the landowner as “purely conjectural”). These case-specific features were more than
sufficient to dispose of the property owner’s claim.
In the course of the Sanguinetti  decision, however, the
Court summarized prior flooding cases as standing for the
proposition that “in order to create an enforceable liability
against the Government, it is, at least, necessary that the
overflow be the direct result of the structure, and constitute an actual, permanent invasion of the land.”   Ibid.
The Government would have us extract from this statement a definitive rule that there can be no temporary
taking caused by floods.
We do not read so much into the word “permanent” as it
appears in a nondispositive sentence in Sanguinetti. That
case, we note, was decided in 1924, well before the World
War II-era cases and  First English, in which the Court
first homed in on the matter of compensation for temporary takings.  That time factor, we think, renders understandable the Court’s passing reference to permanence.  If
the Court indeed meant to express a general limitation on
the Takings Clause, that limitation has been superseded
by subsequent developments in our jurisprudence.
There is certainly no suggestion in  Sanguinetti that
flooding cases should be set apart from the mine run of
takings claims.  The sentence in question was composed to
summarize the flooding cases the Court had encountered
up to that point, which had unexceptionally involved
permanent, rather than temporary, government-induced
flooding. 264 U. S., at 149.  See Cress, 243 U. S., at 328;
United States v. Lynah, 188 U. S. 445, 469 (1903).  But as
just explained, no distinction between permanent and
temporary flooding was material to the result in  San-
 
Cite as: 568 U. S. ____ (2012)  11
Opinion of the Court
guinetti. We resist reading a single sentence unnecessary
to the decision as having done so much work.  In this regard, we recall Chief Justice Marshall’s sage observation
that “general expressions, in every opinion, are to be taken
in connection with the case in which those expressions are
used. If they go beyond the case, they may be respected,
but ought not to control the judgment in a subsequent suit
when the very point is presented for decision.”  Cohens v.
Virginia, 6 Wheat. 264, 399 (1821).
The Government also asserts that the Court in Loretto
interpreted Sanguinetti the same way the Federal Circuit
did in this case. That assertion bears careful inspection.
A section of the Court’s opinion in  Loretto discussing
permanent physical occupations parenthetically quotes
Sanguinetti’s statement that flooding is a taking if it
constitutes an “actual, permanent invasion of the land.”
458 U. S., at 428.  But the first rule of case law as well as
statutory interpretation is:  Read on.  Later in the Loretto
opinion, the Court clarified that it scarcely intended to
adopt a “flooding-is-different” rule by the obscure means of
quoting parenthetically a fragment from a 1924 opinion.
The Court distinguished permanent physical occupations
from temporary invasions of property, expressly including
flooding cases, and said that “temporary limitations are
subject to a more complex balancing process to determine
whether they are a taking.”  Id., at 435, n. 12.
There is thus no solid grounding in precedent for set-
ting flooding apart from all other government intrusions on
property. And the Government has presented no other
persuasive reason to do so. Its primary argument is of the
in for a penny, in for a pound genre: reversing the decision
below, the Government worries, risks disruption of public works dedicated to flood  control.  “[E]very passing
flood attributable to the government’s operation of a floodcontrol project, no matter  how brief,” the Government
hypothesizes, might qualify as a compensable taking.  
12 ARKANSAS GAME AND FISH COMM’N v. UNITED STATES
Opinion of the Court
Brief for United States 29.  To reject a categorical bar to
temporary-flooding takings claims, however, is scarcely
to credit all, or even many, such claims. It is of course in-
cumbent on courts to weigh carefully the relevant factors
and circumstances in each case, as instructed by our decisions. See infra, at 14.
The slippery slope argument, we note, is hardly novel or
unique to flooding cases.  Time and again in Takings
Clause cases, the Court has heard the prophecy that recognizing a just compensation claim would unduly impede
the government’s ability to act in the public interest.
Causby, 328 U. S., at 275 (Black, J., dissenting); Loretto,
458 U. S., at 455 (Blackmun, J., dissenting).  We have
rejected this argument when  deployed to urge blanket
exemptions from the Fifth Amendment’s instruction.
While we recognize the importance of the public interests
the Government advances in this case, we do not see them
as categorically different from the interests at stake in
myriad other Takings Clause cases.  The sky did not fall
after Causby, and today’s modest decision augurs no deluge of takings liability.
Tellingly, the Government qualifies its defense of the
Federal Circuit’s exclusion of flood invasions from temporary takings analysis.  It sensibly acknowledges that a
taking might be found where there is a “sufficiently prolonged series of nominally  temporary but substantively
identical deviations.” Brief for United States 21. This
concession is in some tension with the categorical rule
adopted by the Court of Appeals.  Indeed, once it is recognized that at least some repeated nonpermanent flooding
can amount to a taking of property, the question presented
to us has been essentially answered.  Flooding cases, like
other takings cases, should be assessed with reference
to the “particular circumstances of each case,” and not by
resorting to blanket exclusionary rules.  United States v.
Central Eureka Mining Co., 357 U. S. 155, 168 (1958)  
Cite as: 568 U. S. ____ (2012)  13
Opinion of the Court
(citing Pennsylvania Coal Co. v. Mahon, 260 U. S. 393, 416
(1922)). See Penn Central, 438 U. S., at 124.  
At oral argument, the Government tendered a different
justification for the Federal Circuit’s judgment, one not
aired in the courts below, and barely hinted at in the brief
the Government filed in this Court: Whether the damage
is permanent or temporary, damage to downstream property, however foreseeable, is collateral or incidental; it is
not aimed at any particular landowner and therefore does
not qualify as an occupation compensable under the Takings Clause. Tr. of Oral Arg. 30–39; Brief for United
States 26–27. “[M]indful that we are a court of review,
not of first view,”  Cutter v.  Wilkinson, 544 U. S. 709,
718, n. 7 (2005), we express no opinion on the proposed
upstream/downstream distinction and confine our opinion
to the issue explored and decided by the Federal Circuit.
For the same reason, we are not equipped to address the
bearing, if any, of Arkansas water-rights law on this case.1
The determination whether a taking has occurred includes
consideration of the property owner’s distinct investmentbacked expectations, a matter often informed by the law in
force in the State in which the property is located.  Lucas,
505 U. S., at 1027–1029;  Phillips v.  Washington Legal
Foundation, 524 U. S. 156, 164 (1998).  But Arkansas law
was not examined by the Federal Circuit, and therefore is
not properly pursued in this Court.  Whether arguments
for an upstream/downstream distinction and on the relevance of Arkansas law have  been preserved and, if so,
whether they have merit, are questions appropriately
addressed to the Court of Appeals on remand. See Glover
v. United States, 531 U. S. 198, 205 (2001).
——————
1
Arkansas water law is barely discussed in the parties’ briefs, see
Brief for United States 43, but has been urged at length in a brief
amicus curiae filed by Professors of Law Teaching in the Property Law
and Water Rights Fields.  
14 ARKANSAS GAME AND FISH COMM’N v. UNITED STATES
Opinion of the Court
IV
We rule today, simply and only, that governmentinduced flooding temporary in duration gains no automatic exemption from Takings Clause inspection.  When
regulation or temporary physical invasion by government
interferes with private property, our decisions recognize,
time is indeed a factor in determining the existence
vel non of a compensable taking.  See Loretto, 458 U. S.,
at 435, n. 12 (temporary physical invasions should be as-
sessed by case-specific factual inquiry); Tahoe-Sierra, 535
U. S., at 342 (duration of regulatory restriction is a factor
for court to consider);  National Bd. of YMCA v.  United
States, 395 U. S. 85, 93 (1969) (“temporary, unplanned
occupation” of building by troops under exigent circumstances is not a taking).  
Also relevant to the takings inquiry is the degree to
which the invasion is intended or is the foreseeable result
of authorized government action.  See  supra, at 9; John
Horstmann Co. v. United States, 257 U. S. 138, 146 (1921)
(no takings liability when damage caused by government
action could not have been foreseen).  See also Ridge Line,
Inc. v. United States, 346 F. 3d 1346, 1355–1356 (CA Fed.
2003); In re Chicago, Milwaukee, St. Paul & Pacific R. Co.,
799 F. 2d 317, 325–326 (CA7 1986).  So, too, are the character of the land at issue and the owner’s “reasonable
investment-backed expectations” regarding the land’s use.
Palazzolo v. Rhode Island, 533 U. S. 606, 618 (2001).  For
example, the Management Area lies in a floodplain below
a dam, and had experienced flooding in the past.  But the
trial court found the Area had not been exposed to flooding
comparable to the 1990’s accumulations in any other time
span either prior to or after the construction of the Dam.
See supra, at 4–5. Severity of the interference figures in
the calculus as well. See Penn Central, 438 U. S., at 130–
131;  Portsmouth Harbor Land & Hotel Co. v.  United
States, 260 U. S. 327, 329–330 (1922) (“[W]hile a single act  
 
Cite as: 568 U. S. ____ (2012)  15
Opinion of the Court
may not be enough, a continuance of them in sufficient
number and for a sufficient time may prove [a taking].
Every successive trespass adds to the force of the
evidence.”).
The Court of Federal Claims found that the flooding the
Commission assails was foreseeable.  In this regard, the
court noted the Commission’s repeated complaints to
the Corps about the destructive impact of the successive
planned deviations from the Water Control Manual.
Further, the court determined that the interference with
the Commission’s property  was severe:
The Commission 
had been deprived of the customary use of the Management Area 
as a forest and wildlife preserve, as the bottomland hardwood forest turned, over time, into a “headwater swamp.” 87 Fed. Cl., at 610 (internal quotation marks
omitted); see supra, at 5.2
The Government, however, challenged several of the 
trial court’s factfindings, including those relating to causation, 
foreseeability, substantiality, and the amount of
damages. 
Because the Federal Circuit rested its decision 
entirely on the temporary duration of the flooding, it did 
not address those challenges. As earlier noted, see supra,
at 13, preserved issues remain open for consideration on 
remand. 
* * *
For the reasons stated, the judgment of the Court of
Appeals for the Federal Circuit is reversed, and the case is
remanded for further proceedings consistent with this 
opinion. 
It is so ordered. 
——————
2
The Commission is endeavoring to reclaim the land through a restoration program. 
 The prospect of  reclamation, however, does not disqualify a landowner from receipt of just compensation for a taking. 
United States v. Dickinson, 331 U. S. 745, 751 (1947).  
16 ARKANSAS GAME AND FISH COMM’N v. UNITED STATES
Opinion of the Court
JUSTICE  KAGAN took no part in the consideration or
decision of this case.

State courts rather than federal courts are most fre­ quently called upon to apply the Federal Arbitration Act (FAA), 9 U. S. C. §1 et seq., including the Act’s national policy favoring arbitration. It is a matter of great im­ portance, therefore, that state supreme courts adhere to a correct interpretation of the legislation. Here, the Okla­homa Supreme Court failed to do so. By declaring the noncompetition agreements in two employment contracts null and void, rather than leaving that determination to the arbitrator in the first instance, the state court ignored a basic tenet of the Act’s substantive arbitration law. The decision must be vacatedThe judgment of the Supreme Court of Oklaho­ ma is vacated, and the case is remanded for proceedings not inconsistent with this opinion. It is so ordered. .


 
Cite as: 568 U. S. ____ (2012)  1
Per Curiam
SUPREME COURT OF THE UNITED STATES
NITRO-LIFT TECHNOLOGIES, L. L. C. v. EDDIE LEE
HOWARD ET AL.
ON PETITION FOR WRIT OF CERTIORARI TO THE SUPREME
COURT OF OKLAHOMA

No. 11–1377. Decided November 26, 2012
 PER CURIAM.
State courts rather than federal courts are most fre­
quently called upon to apply the Federal Arbitration Act
(FAA), 9 U. S. C. §1  et seq., including the Act’s national
policy favoring arbitration. 
 It is a matter of great im­
portance, therefore, that state supreme courts adhere to a 
correct interpretation of the legislation. 
Here, 
the Okla­homa Supreme Court failed to do so. 
By declaring the
noncompetition agreements in two employment contracts
null and void, rather than leaving that determination to
the arbitrator in the first instance, the state court ignored 
a basic tenet of the Act’s substantive arbitration law.  
The 
decision must be vacated. 
* * *
This dispute arises from a contract between petitioner
Nitro-Lift Technologies, L. L. C., and two of its former
employees.
Nitro-Lift contracts with operators of oil and 
gas wells to provide services that enhance production. 
Respondents Eddie Lee Howard and Shane D. Schneider 
entered a confidentiality and noncompetition agreement 
with Nitro-Lift that contained the following arbitration
clause:
“‘Any dispute, difference or unresolved question be­
tween Nitro-Lift and the Employee (collectively the
“Disputing Parties”) shall be settled by arbitration by 
a single arbitrator mutually agreeable to the Disput­
ing Parties in an arbitration proceeding conducted in    
  
2  NITRO-LIFT TECHNOLOGIES, L. L. C. v. HOWARD
Per Curiam
Houston, Texas in accordance with the rules existing 
at the date hereof of the American Arbitration Associ­
ation.’” Pet. for Cert. 5.
After working for Nitro-Lift on wells in Oklahoma, Texas,
and Arkansas, respondents quit and began working for
one of Nitro-Lift’s competitors.
Claiming that respondents
had breached their noncompetition agreements, Nitro-Lift
served them with a demand for arbitration. 
 Respondents
then filed suit in the District Court of Johnston County,
Oklahoma, asking the court to declare the noncompetition 
agreements null and void and to enjoin their enforcement.
The court dismissed the complaint, finding that the con­
tracts contained valid arbitration clauses under which an 
arbitrator, and not the court, must settle the parties’ 
disagreement.
The Oklahoma Supreme Court retained respondents’
appeal and ordered the parties to show cause why the
matter should not be resolved by application of Okla.
Stat., Tit. 15, §219A (West 2011), which limits the en­
forceability of noncompetition agreements.
Nitro-Lift
argued that any dispute as to the contracts’ enforceability
was a question for the arbitrator.
It relied for support—
as it had done before the trial court—upon several of this
Court’s cases interpreting the FAA, and noted that under
Buckeye Check Cashing, Inc. v. Cardegna, 546 U. S. 440,
446 (2006), “this arbitration law applies in both state and
federal courts.” Record in No. 109,003 (Okla.), p. 273.
The Oklahoma Supreme Court was not persuaded. 
 It 
held that despite the “[U. S.] Supreme Court cases on
which the employers rely,” the “existence of an arbitration 
agreement in an employment contract does not prohibit
judicial review of the underlying agreement.”  
2011 OK 98, 
¶15, n. 20, ¶16, 273 P. 3d 20, 26, n. 20, 27.
For that prop­osition,
the court relied on the “exhaustive overview of
the United States Supreme Court decisions construing the
Federal Arbitration Act” in  Bruner  v. Timberlane Manor Cite as: 568 U. S. ____ (2012)  3
Per Curiam
Ltd. Partnership, 2006 OK 90, 155 P. 3d 16, which found
Supreme Court jurisprudence
“not to inhibit our review of the underlying contract’s validity.” 273 P. 3d, at 26. 
Finding the arbitration clauses no obstacle to its review,
the court held that the noncompetition agreements were
“void and unenforceable as against Oklahoma’s public 
policy,” expressed in Okla. Stat., Tit. 15, §219A.  273 P. 3d,
at 27.
The Oklahoma Supreme Court declared that its decision
rests on adequate and independent state grounds.  Id., at
23–24, n. 5.  If that were so, we would have no jurisdiction
over this case. See  Michigan v.  Long, 463 U. S. 1032,
1037–1044 (1983). It is not so, however, because the
court’s reliance on Oklahoma law was not “independent”—
it necessarily depended upon a rejection of the federal
claim, which was both “‘properly presented to’” and “‘ad­
dressed by’” the state court.   Howell v.  Mississippi, 543
U. S. 440, 443 (2005) (per curiam)  (quoting  Adams v.
Robertson, 520 U. S. 83, 86 (1997) (per curiam)).
NitroLift claimed that the arbitrator should decide the con­
tract’s validity, and raised a federal-law basis for that
claim by relying on Supreme Court cases construing the
FAA. “‘[A] litigant wishing to raise a federal issue can
easily indicate the federal law basis for his claim in a
state-court petition or brief . . . by citing in conjunction
with the claim the federal source of law on which he relies
or a case deciding such a claim on federal grounds . . . .’”
Howell, supra, at 444 (quoting Baldwin v. Reese, 541 U. S.
27, 32 (2004); emphasis added).
The Oklahoma Supreme
Court acknowledged the cases on which Nitro-Lift relied,
as well as their relevant holdings, but chose to discount
these controlling decisions.  Its conclusion that, despite
this Court’s jurisprudence, the underlying contract’s valid­
ity is purely a matter of state law for state-court deter­
mination is all the more reason for this Court to assert
jurisdiction.  
 
 
4  NITRO-LIFT TECHNOLOGIES, L. L. C. v. HOWARD
Per Curiam
The Oklahoma Supreme Court’s decision disregards this 
Court’s precedents on the FAA.
That Act, which “de­clare[s] a national policy favoring arbitration,”
Southland Corp. v.  Keating, 465 U. S. 1, 10 (1984), provides that a
“written provision in . . . a contract evidencing a transac­
tion involving commerce to settle by arbitration a contro­
versy thereafter arising out of such contract or transaction
. . . shall be valid, irrevocable, and enforceable, save upon
such grounds as exist at law or in equity for the revocation 
of any contract.”  9 U. S. C. §2.  
It is well settled that 
“the substantive law the Act created [is] applicable in state
and federal courts.”  Southland Corp.,  supra, at 12; see 
also Buckeye, supra, at 446. And when parties commit to 
arbitrate contractual disputes, it is a mainstay of the Act’s
substantive law that attacks on the validity of the con­
tract, as distinct from attacks on the validity of the arbi­
tration clause itself, are to be resolved “by the arbitrator
in the first instance, not by a federal or state court.” 
Preston v. Ferrer, 552 U. S. 346, 349 (2008); see also Prima
Paint Corp. v.  Flood & Conklin Mfg. Co., 388 U. S. 395
(1967). For these purposes, an “arbitration provision is
severable from the remainder of the contract,”  Buckeye,
supra, at 445, and its validity is subject to initial court
determination; but the validity of the remainder of the
contract (if the arbitration provision is valid) is for the
arbitrator to decide.
This principle requires that the decision below be va­
cated.
The trial court found that the contract contained a 
valid arbitration clause, and the Oklahoma Supreme 
Court did not hold otherwise. 
 It nonetheless assumed the
arbitrator’s role by declaring the noncompetition agree­
ments null and void. The state court insisted that its
“[own] jurisprudence controls this issue” and permits
review of a “contract submitted to arbitration where one
party assert[s] that the underlying agreement [is] void and
unenforceable.” 273 P. 3d, at 26.  But the Oklahoma  
Cite as: 568 U. S. ____ (2012)  5
Per Curiam
Supreme Court must abide by the FAA, which is “the
supreme Law of the Land,” U. S. Const., Art. VI, cl. 2, and
by the opinions of this Court interpreting that law.  “It
is this Court’s responsibility to say what a statute means,
and once the Court has spoken, it is the duty of other
courts to respect that understanding of the governing rule
of law.”  Rivers v.  Roadway Express, Inc., 511 U. S. 298,
312 (1994). Our cases hold that the FAA forecloses pre­
cisely this type of “judicial hostility towards arbitration.”
AT&T Mobility LLC  v.  Concepcion, 563 U. S. ___, ___
(2011) (slip op., at 8).
The state court reasoned that Oklahoma’s statute “ad­
dressing the validity of covenants not to compete, must
govern over the more general statute favoring arbitration.”
273 P. 3d, at 26, n. 21.  But the ancient interpretive prin­
ciple that the specific governs the general (generalia specialibus non derogant) applies only to conflict between
laws of equivalent dignity.
Where a specific statute, for 
example, conflicts with a general constitutional provision, 
the latter governs.
And the same is true where a specific
state statute conflicts with a general federal statute.
There is no general-specific exception to the Supremacy
Clause, U. S. Const. Art. VI, cl. 2.
“‘[W]hen state law prohibits outright the arbitration of a particular type of
claim, the analysis is straightforward: The conflicting rule
is displaced by the FAA.’”  Marmet Health Care Center,
Inc. v. Brown, 565 U. S. ___, ___–___ (2012) (per curiam)
(slip op., at 3–4) (quoting  AT&T Mobility LLC, supra, at
___–___ (slip op., at 6–7)).
Hence, it is for the arbitrator to 
decide in the first instance whether the covenants not to 
compete are valid as a matter of applicable state law.  See
Buckeye, 546 U. S., at 445–446.
For the foregoing reasons, the petition for certiorari is
granted. The judgment of the Supreme Court of Oklaho­
ma is vacated, and the case is remanded for proceedings
not inconsistent with this opinion. 
It is so ordered. 

The entry relating to the trade mark Prompton is wrongly remaining on the register as it is identical to the applicant’s trade mark Crompton Greaves / Crompton.= The applicants mark is Crompton / Cropmton Greaves. The applicants trading style / corporate name is Crompton Greaves. The respondents mark is Prompton. The rival marks are deceptively similar. Except for the first letter, the marks are identical. The marks are phonetically similar. The applicants are into this business since 1937 using the trade mark Crompton. The respondents have claimed use of the mark only since 1993 which is definitely subsequent to that of the applicants.- We find that an identical trade mark for identical goods ie. Prompton for goods falling in class 9 has been filed as early as 1996 and pending on the date of this impugned order. This Board has already removed that trade mark Prompton registered under No.714516 in class 9. We are forced to express our dissatisfaction in the way the Trade Marks Registry is functioning. When an identical prior trade mark is pending it would not be correct to register a subsequent application for the same goods/services made by another applicant till the earlier application is effectively disposed or the subsequent application is based on superior claim of proved use of the mark. We also suggest the registry should as far as possible maintain seniority in disposal of pending cases unless the prior applicant has defaulted in compliance of official requirements. 20. Having considered and decided all the issues in favour of the applicant we do not think it fit to allow the mark to continue on the register. Consequently the application for rectification is allowed with a direction to the Registrar to cancel the trade mark Prompton under No.867573 in Class 9. No order as to costs.



INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018
CIRCUIT BENCH SITTING AT MUMBAI
ORA/7/2008/TM/MUM
MONDAY, THIS THE 26TH DAY OF NOVEMBER, 2012
Hon'ble  Ms. S. Usha                                             … Vice-Chairman
Hon'ble Shri. V. Ravi                                             … Technical Member

Crompton Greaves Limited,
CG House, 6th Floor,
Dr. Annie Besant Road,
Worli,
Mumbai – 400 030.                                                                 … Applicant
                       
(By Advocate – Ms. Subha Shainey)
                                              
Vs.

1.         The Registrar of Trade Marks,
Office of the Trade Marks Registry,
Boudhik Sampada Bhavan,
Near Antop Hill Head PO
S.M. Road, Antop Hill,
Mumbai – 400 037.

2.         Vijay Pransukhlal Soni,
            Trading as Metallica Industries,
            2nd Floor, Navjeevan Industrial Estate,
            Oshiwara Bridge,
            Jogeshwari (W)
            Mumbai                                                                       … Respondents
                                               
(None represented)

ORDER  (No.267 of 2012)

Hon’ble Ms. S. Usha, Vice-Chairman:

            The applicant is a market leader in a number of product groups in the electrical sector.  They are dealing in three principal businesses that is the Industrial Systems, the Power Systems and the Consumer Products.  Industrial system includes the state of the art Alternators, Railway transportation and Signaling products that cater to the needs of the Indian Railways and the Stampings which cater to a wide range of motors, fans, alternators, generators and pumps.   The Power system includes manufacture and sale of all types of Power and Distribution Transformers, a wide range of Switchgears besides offering customized turn-key solutions for power quality and engineering projects that cater to larger need of OEMs.  The Consumer Products includes all types of appliances, fans, geysers, luminaries and light sources for all types of indoor and outdoor environments and pumps for our agricultural sectors.  The applicant’s turnover runs to Crores of Rupees.

2.         The applicants conceived and adopted the trade mark Crompton which was duly coined by Col. R.E. Crompton together with Mr. Frank Parkinson whose company Crompton Parkinson Works Ltd. was the first user of the said mark in India.  All rights were transferred to the applicants who became the sole proprietor.  The first user dates back to 1937 when the mark was first coined.  The said trade mark has been used both in India and outside in respect of various electrical goods.  On account of said longstanding use with effect from 1937 the said mark has now come to be associated with the applicants only.  The applicants have also adopted the trade mark Crompton Greaves and had been using the same since 1966.

3.         By virtue of extensive, long and continuous use the trade mark Crompton Greaves has become distinctive and is identified with the applicants products.  The applicant is also using Crompton Greaves as its trading style for more than 40 years.  The have applied for and obtained trade mark registrations in classes 7 & 11.   They have applied for registration in classes 8, 9 & 12 which are pending.

4.         The 2nd respondent herein has copied the applicants well known  and registered trade mark as well as applicants corporate name namely Crompton Greaves.  The 2ndrespondent has adopted the trade mark Prompton impugned herein which closely resembles the applicant’s trade mark Crompton visually, structurally and phonetically.  The impugned registration in class 9 in respect of electronic and technical apparatus etc. is causing confusion and deception among the trade and public.  The goodwill and reputation enjoyed by the applicants trade mark Crompton / Crompton Greaves is getting diluted by the use and registration of the identical trade mark Prompton in the 2nd respondents name.  The impugned registration is against the public interest and purity of the register of Trade Marks.  The registration is without any sufficient cause and is thus wrongly remaining on the register and therefore ought to be removed.

5.         The class of customers and trade channels of the applicants and the respondent are identical.  The use of the almost identical trade mark Prompton by the 2nd respondent is causing deception and confusion amongst the trade and public.  The registration of the trade mark “Prompton” in the name of the 2nd respondent is contrary to the provisions of Sections 11(1)(a) & 11(1)(b) of the Act.

6.         The applicants trade mark Crompton / Crompton Greaves is a well known trade mark which is used and registered since 1937/1966 respectively.  The applicants trade mark enjoys great reputation and goodwill.  The registration of almost identical trade mark Prompton is thus bad in law as it is wrongfully adopted in bad faith with a view to take unfair advantage of and be determental to the applicants well known trade mark and is thus contrary to the provisions of Section 11(2) of the Act.  In fact, use of the identical trade mark amounts to passing off of the respondents goods as and for the applicants goods and is contrary to the provisions of Section 11(3)(a) of the Act.

7.         The applicant is the registered proprietor of the Copyright in the word Crompton Greaves and the respondent is therefore legally prohibited from using the registered trade mark.  Any such registration is contrary to the provisions of Section 11(3)(b) of the Act.  The respondent has not used the impugned trade mark in respect of electrical goods and parts thereof for a continuous period of 3 months or longer prior to the date of filing of the application for rectification and therefore ought to be removed under Section 47(1)(b) of the Act.

8.         The entry relating to the trade mark Prompton is wrongly remaining on the register as it is identical to the applicant’s trade mark Crompton Greaves / Crompton.  The respondents adoption is malafide per se, bad in law, in bad faith and dishonest and as such is contrary to the provisions of Section 57 (2) of the Act.

9.         The trade mark “Prompton” is remaining registered without sufficient cause and ought to be removed under Section 58(2) of the Act.  In the interest of maintaining the purity of the register, it is imperative that the said trade mark be expunged.

10.       The notices which were sent to the 2nd respondent were returned unserved.  The Board directed the applicant’s counsel to file a miscellaneous petition for substituted service.  The applicants filed miscellaneous petition for substituted service as directed.  Publication was effected and the respondent did not appear and were therefore set ex-parte.  The counsel Ms. Subha Shainey advanced her arguments on behalf of the applicants.

11.       The learned counsel submitted that the applicants adopted and used the trade mark Crompton since 1937 and since 1966 Crompton Greaves.  The respondents had applied for registration of the trade mark Prompton on 23.-7.1999 claiming user since 01.01.1993.  The registration certificate was issued on 16.01.2004.  The applicants are prior in adoption, use and registration.  The impugned trade mark is in contravention of the provisions of Section 11, 47 & 57 of the Act.

12.       The counsel also submitted that the mark has not been renewed after 2009 as seen from computer generated application status reports.  In this regard the counsel relied on the Boards Judgments and submitted that the respondents have not appeared and denied the ground of non use and therefore the ground of non use stands.  The counsel also relied on judgment in ORA/61/2008 where the trade mark Prompton was cancelled considering the fact that the applicants are prior in adoption and use.  The counsel therefore prayed that the impugned trade mark Prompton may be cancelled.

13.       We have considered the arguments and have gone through the pleadings and documents.

14.       Both the applicants and the respondents are carrying on business of electrical goods. The applicants mark is Crompton / Cropmton Greaves.  The applicants trading style / corporate name is Crompton Greaves.  The respondents mark is Prompton.  The rival marks are deceptively similar.  Except for the first letter, the marks are identical.  The marks are phonetically similar.  The applicants are into this business since 1937 using the trade mark Crompton.  The respondents have claimed use of the mark only since 1993 which is definitely subsequent to that of the applicants.

15.       The use of the trade mark Prompton by the respondents will injure or affect the applicants business.  When a persons business is affected by the mark on the register that person is said to be a person aggrieved.  The applicant herein is thus a person aggrieved.

16.       Adoption of a deceptively similar trade mark is that the respondents are passing off their goods as of the applicants goods.  The respondents are not before use to give any reasons for their adoption and use of an identical mark.

17.       When the mark is considered to be in contravention of the provisions of the Act, then the trade mark is wrongly remaining on the register without sufficient cause.  The impugned trade therefore shall be removed.

18.       We do not accept the applicant’s ground of non user under Section 47(1)(b) of the Act.  The impugned trade mark was applied for registration on 23.07.1999 claiming user since 01.01.1993.  The mark was entered in the register on 16.01.2004.  The non user of 5 years is to calculated from the date on which it is entered in the register.  Here the mark was registered only in 2004.  The applicant i.e. the respondent herein had time till 2009 to start using the mark.  The application for rectification has been filed on 27.12.2007.  Therefore the ground of non user has not been satisfied and is rejected.

19.       We find that an identical trade mark for identical goods ie. Prompton for goods falling in class 9 has been filed as early as 1996 and pending on the date of this impugned order.  This Board has already removed that trade mark Prompton registered under No.714516 in class 9.  We are forced to express our dissatisfaction in the way the Trade Marks Registry is functioning. When an identical prior trade mark is pending it would not be correct to register a subsequent application for the same goods/services made by another applicant till the earlier application is effectively disposed or the subsequent application is based on superior claim of proved use of the mark.  We also suggest the registry should as far as possible maintain seniority in disposal of pending cases unless the prior applicant has defaulted in compliance of official requirements.

20.       Having considered and decided all the issues in favour of the applicant we do not think it fit to allow the mark to continue on the register.  Consequently the application for rectification is allowed with a direction to the Registrar to cancel the trade mark Prompton under No.867573 in Class 9.  No order as to costs.
           

(V. Ravi)                                                                 (S. Usha)
Technical Member                                              Vice-Chairman




(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)

The applicant company and its trade name “Creative Travel” was created in the year 1977. The company has acquired a unique name and association with the name “Creative Travel” which had acquired substantial goodwill and reputation in the travels and tourism industry.- In May 2006, the applicants came to know that the 1st respondent herein had adopted the trade name “Creative Tours and Travels (I) Private limited” and is using the same in relation to tours and travels business. - The impugned trade mark may be removed on the grounds given under:- (a) The applicants are the prior adopters, users and registered proprietors of the trade mark “Creative”. The use by any person of an identical/similar trade mark would amount to infringement of trade mark. The 1st respondents adoption cannot be justified. (b) The applicants trade mark has acquired tremendous goodwill and therefore the use of the trade mark “Creative” by the 1st respondent is likely to cause confusion and deception. Therefore, the impugned registration is in contravention of Section 9(2)(a) of the Act. (c) The impugned trade mark is identical and is registered in relation to the goods which are admittedly identical. There exists likelihood or confusion and association of the trade mark and the business of the applicant and therefore is in contravention of the provisions of Section 11(1) of the Act. (d) The adoption and use of the impugned trade mark is without justification and can never be considered as bonafide. The 1st respondent had adopted and used the trade mark “Creative” merely to trade upon the goodwill and reputation of the applicants. The impugned trade mark registration is in contravention of section 11(3)(a) of the Act and therefore liable to be expunged. (e) The impugned registration is wrongly entered in the Register and is remaining on the Register without sufficient cause being in contravention of the provisions of Sections 9(2), 11(1), 11(2), 11(3)(a) of the Act. (f) The impugned trade mark is liable to be cancelled and expunged under Section 57(2) of the Act. 9. It is therefore, prayed that the impugned trade mark “Creative” be rectified.-To conclude, the application for rectification is allowed for the reasons stated below:- (a) the applicant is a person aggrieved; (b) the applicant has satisfied the case of confusion; (c) the applicants are prior users; and (d) the respondents have not satisfied us as to the use as claimed in the application for registration. 60. The impugned trade mark is therefore directed to be expunged. The respondents shall pay a sum of Rs. 10,000/- towards costs to the applicants. The Miscellaneous Petition Nos. 232/2012 and 233/2012 are disposed of.


 

INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex, Annexe-I, 2nd Floor, 443, Anna Salai,
Teynampet, Chennai – 600 018

Miscellaneous Petition Nos. 232/2012 & 233/2012
in ORA/56/2007/TM/MUM and
ORA/56/2007/TM/MUM

MONDAY  THIS, THE 26th  DAY OF NOVEMBER,  2012


Hon’ble Ms. S. Usha                                              --  Vice Chairman
Hon’ble Shri V. Ravi                                               --  Technical Member


CREATIVE TRAVEL PRIVATE LIMITED
30, CREATIVE PLAZA                                            --       Applicants
NANAKPURA, MOTI BAGH
NEW DELHI

(By Advocates Ms. Prathiba Singh & Shri Sandeep Chatterjee)

Vs.

1. CREATIVE TOURS AND TRAVELS (I) PVT. LTD.
FIRST FLOOR, KAPADIA CHAMBERS
M.G. ROAD, NEXT TO METRO CINEMA
DHOBI TALAO

2. THE REGISTRAR OF TRADE MARKS
THE TRADE MARKS REGISTRY                          --  Respondents
NEW DELHI

 

(By Advocates Shri A.A. Mohan, Shri Arun C. Mohan and

Shri Ram Prasad for R-1)



ORDER (No. 268 of 2012)



HON’BLE MS. S. USHA, VICE-CHAIRMAN


            Original rectification application has been filed for removal of the trade mark registered under No. 1280212 in class 39 under the provisions of the Trade Marks Act, 1999.

2.         The brief facts of the case is:-

            The applicant company is engaged in tours, travels, destination management, corporate package, conferences, meetings, ticketing and other related and allied business activities. Their annual turnover of the year 2000-2001 increased from Rs. 17.10 crores to Rs. 48.61 crores in the year 2005-2006.  The company was established with many aims and objectives. The applicant company has made a wide spread global work in the field of tours and travels industry, destination management, corporate packages, conferences and meetings. They are members of various esteemed organizations.

3.         The applicant company was founded by Shri Ram Kohli who is considered as the goodwill Ambassador in the field of Tourism. Shri Ram Kohli has played prominent role in the field of development of Indian Tourism in Germany and United States. He created new Markets in United States, Germany and other European countries for India as a destination. He promoted the first charters from America in 1972.  After returning to India, Shri Ram Kohli founded the petitioner company “Creative Travel” in 1977 as one of the most quality conscious companies in the field of Tours and Travel. 
Shri Ram Kohli in the capacity of Chairman or “Creative Travel” has been involved with various Indian & International Travel Organizations. He is the founder President of Indian Association of Tour Operators (IATO), a national body of Tour Operator in India.  Shri Kohli held fiver terms as President IATO and today the success of this Association can be attributed to the vision of Shri Ram Kohli.  
In 1999 as the Chairman of the petitioner company, Shri Ram Kohli was awarded PATA Chairman’s Achievement Award in the presence of the Crown Prince of Japan. In 2003, he has been honoured as the “International Travel Agent of the year” by the American Society of Travel Agents (ASTA). 
Shri Ram Kohli took over as Chairman of PATA Worldwide in the year 2004 as the 53rd Pacific Asia Travels Association Annual Conference held in South Korea for the period 2004-2005.  It is also submitted that Mr. Ram Kohli is the only 2nd Indian from the private sector in the history of the Organisation to get elected as the Chairman.

4.         The applicant company and its trade name “Creative Travel” was created in the year 1977. The company has acquired a unique name and association with the name “Creative Travel” which had acquired substantial goodwill and reputation in the travels and tourism industry. The company became a well known company on accounts of its wide advertisement. The applicant is clearly recognised by the Department of Tourism and has won several national and international awards. The applicant was awarded the Friend of Nepal by the King of Nepal and Indian Airlines Trophy for excellence in International Marketing.

5.         The applicant is the registered proprietor of the trade mark “Creative Travel” under No. 1073370 in class 12 as of 11/01/2002; No. 1239864 in class 39 as of 26/09/2003 and No. 1334239 in class 16 as of 25/01/2005.  The said registrations are valid and subsisting.

6.         In May 2006, the applicants came to know that the 1st respondent herein had adopted the trade name “Creative Tours and Travels (I) Private limited” and is using the same in relation to tours and travels business. 
The applicant therefore, initiated a civil suit against the 1st respondent in July 2006.  The Hon'ble Delhi High Court was pleased to grant an order of interim injunction which subsequently came to be vacated. The applicant has preferred an appeal against the said order of vacation which is pending adjudication.

7.         The applicant came to know about the impugned registration which the 1st respondent had disclosed in the written statement filed in the civil suit. The applicant submits that the impugned trade mark is registered without sufficient cause and is wrongly remaining in the Register and is liable to be removed. The impugned registration is in contravention of the provisions of Sections 9(2)(a), 11(1), 11(3), 11(10), 18 and 57 of the Act.

8.         The impugned trade mark may be removed on the grounds given under:-

(a)               The applicants are the prior adopters, users and registered proprietors of the trade mark “Creative”.  The use by any person of an identical/similar trade mark would amount to infringement of trade mark.  The 1st respondents adoption cannot be justified.

(b)               The applicants trade mark has acquired tremendous goodwill and therefore the use of the trade mark “Creative” by the 1st respondent is likely to cause confusion and deception.  Therefore, the impugned registration is in contravention of Section 9(2)(a) of the Act.

(c)               The impugned trade mark is identical and is registered in relation to the goods which are admittedly identical. There exists likelihood or confusion and association of the trade mark and the business of the applicant and therefore is in contravention of the provisions of Section 11(1) of the Act.

(d)               The adoption and use of the impugned trade mark is without justification and can never be considered as bonafide. The 1st respondent had adopted and used the trade mark “Creative” merely to trade upon the goodwill and reputation of the applicants. The impugned trade mark registration is in contravention of section 11(3)(a) of the Act and therefore liable to be expunged.

(e)               The impugned registration is wrongly entered in the Register and is remaining on the Register without sufficient cause being in contravention of the provisions of Sections 9(2), 11(1), 11(2), 11(3)(a) of the Act.

(f)                 The impugned trade mark is liable to be cancelled and expunged under Section 57(2) of the Act. 

9.         It is therefore, prayed that the impugned trade mark “Creative” be rectified.

10.       The 1st respondent herein filed their counter statement stating that they were established as a proprietary concern in the name of “Creative Enterprises” in the year 1979.  The 1st respondent’s principal business was travel consultant.  In 1993, the 1st respondent obtained International Air Transport Association Passenger Sales Agency Accredition. They were operating the business “Creative Travels & Tours” as a division of “Creative Enterprises” for the year 1993 upto the year 1997.  In 1997, it was incorporated as a Private Limited Company under the name and style of “Creative Tours and Travels (India) Private Limited”, with effect from November 1997, it was approved by IATA.

11.       The 1st respondent is an established name in the business and is known as one of the leading travel agencies of the country. It had received various prestigious awards in the airline travel industry and had received significant and consistent accreditations and Certificates of Appreciation from various Airlines and Aircraft Carriers. For the last more than ten years, the 1st respondent has also been amongst the top ten sales agencies for Air India.  The 1st respondent is registered with and is an active member of TAAI (Travel Agents Association of India), TAFI (Travel Agents Federation of India) and IATO (Indian Association of Tour Operators).  They are also an agent for Haj Operators duly approved by the Government of India. They are approved agent of MTDC (Maharashtra Tourism Development Corporation).

12.       Their annual turnover for the year 2005-2006 alone is Rs. 100 crores. It is a matter of fact that the business turnover of the 1st respondent is more than double of business generated by the applicant.

13.       The 1st respondent is the registered proprietor of the trade mark under No. 1280212 in class 39 for the mark “Creative Tours & Travels (India) Pvt. Ltd.” with a distinct colour scheme and style. The mark is registered and is subsisting. By virtue of continuous and extensive use, the 1st respondents trade mark has acquired immense reputation and goodwill from the trade and public.

14.       Both the applicant and the 1st respondent are members of the trade organizations namely TAAI and IATO.

15.       The 1st respondent was surprised to receive a cease and desist notice dated 22/05/2006. The 1st respondent has been carrying on business under the name “Creative” since last 27 years and to claim that they recently came to know about the respondents use is totally a false statement.

16.       The Hon'ble High Court of Delhi granted an ex parte order of injunction and subsequently vacated the same. The applicant preferred an appeal against the said order which was dismissed by the Division Bench. The order passed by the Division Bench has become final as no appeal has been preferred.

17.       The rest of the averments made in the application were denied.

18.       We heard the learned counsel Ms. Prathiba Singh for the applicant and learned counsel Shri A.A. Mohan for the 1st respondent.

19.       The learned counsel for the applicant submitted that the application was for removal of the trade mark registered under No. 1280212 in class 39.  The applicants had adopted the trade mark “Creative” as early as 1977 and were using the same continuously without any interruption. At page 318 of the respondents typed set was the impugned trade mark and at page 319 was the Trade Mark Journal Advertisement of the impugned trade mark. The impugned trade mark application was filed on 22/04/2004 claiming user since 12/08/1997.  It is seen that the respondents had used it since 1997 after twenty years of the applicants use. The applicant company was incorporated in the year 1977.  In 2006, the applicants came to know about the respondents use and therefore issued a cease and desist notice.

20.       The mark and the goods (services) are identical and there is every possibility of confusion.  The confusion was inevitable. The applicants are therefore aggrieved persons. Their sales turnover runs to several crores of rupees. The learned counsel reiterated the awards received by the applicants and their memberships in various organizations as was stated in the application for rectification.

21.       At page 23 is the sales figures statement certified by their Chartered Accountant.  A few membership registration certificates were also placed before us. Various awards received by the applicants are filed along with the application. The brochures along with write ups are filed. All these show the reputation earned by the applicants.

22.       The applicants further stated that the respondents case is that in the year 1979, they were “Creative Enterprises”. They were well known in India and their sales turnover runs to Rs. 100 crores. The application for rectification is delayed application. The word “Creative” is descriptive. As per the respondents documents, they were registered under the Bombay, Shops and Establishments Act, only in the year 1980. It was also pointed out that their business was for recruiting travels agents as seen from the documents at page 4 and 5 of the typed set of papers filed by the respondents. According to the applicants, there is no delay.

23.       At page 17 of the typed set filed by the respondents, it is seen that IATA (International Air Transport Authority) has approved the passenger sales agency only in 1993.  The letter is addressed to “Creative Enterprises” which was recruiting agents. The travel agent is “Creative Travels & Tours”. This is not clear as to when “Creative Travels & Tours” was incorporated.  To book a ticket, the agency must be a member of IATA.  The respondent was incorporated in the year 1997.  Then approval letter by IATA of the year 1993 cannot be a valid document.

24.       The Registrar of Companies rejected the name. The amount in the income tax returns does not tally with the sales turnover furnished by the respondents. There was confusion in the name of the company as seen from the annual returns of the company filed before the Registrar of Companies. At page 107, the annual return of 1997-1998, it is stated as “Creative Travel & Tours (India) Pvt. Ltd.”  The certificate of Appointment (Passenger) at page 210 is of the year 1996, while the respondent was incorporated in the year 1997, how this certificate could have been issued in the year 1996.

25.       On 22/05/2006, a legal notice to cease and desist was issued to the respondents. The respondents in the evidence deposed before the Hon'ble High Court of Delhi in the suit had admitted that there are only two companies namely the applicant and the respondent using the trade mark “Creative” but now have produced several extracts of websites of different companies.

26.       The applicants produced certain documents which was objected to by the respondents as they were filed during the course of arguments and also that no application was made for taking on record those documents.

27.       The applicants produced the letter dated 02/07/1997 sent by the Registrar of Companies to the respondent suggesting that some other name be adopted, as “Creative” was not available now that it was already used by some other company. The respondent replied and wished  to use the same. The respondents have not objected to the applicants averment that they had been using the same since 1977.  As per the provisions of sections 11(1)(3), (4) and (10), the impugned registration is contravention to the provisions of the Act.

28.       The applicants also relied on a e-mail sent by Alliance Hotels & Restaurants dated 16/06/2007 to the applicants where the respondents bills were also mentioned. The applicants therefore, stated that the confusion was certain and there was a mistake.

29.       The use of an identical mark for identical services leads to passing off and is therefore, prohibited under section 11(3) of the Act.  The Air ticket is booked through internet and so confusion is definite.

30.       The applicants finally relied on few judgments:-

(1)               2003 (4) SCC 341 – Modi Entertainment Network & Another Vs. W.S.G. Cricket Pte. Ltd. – Any order passed at the stage of interim order would not bind much less they bind the appellate court or the parties. The order passed by the civil court at the interim stage is therefore not binding this Board or the parties.

(2)               u AIR 1994 (Del) 239 – Daimler Benz Aktiegesellschaft & Anr. Vs. Hybo Hindustan & v 2006 (32) PTC 682 (Del) – Aktiebolaget Volvo & Ors. Vs. A.K. Bhuva & Ors. – A well known trade mark if used by any third party would definitely lead to passing off resulting in confusion.

(3)               u 2005 (30) PTC 3 (SC) – Time Incorporated Vs. Lokesh Srivastava;  v 2007 (34) PTC 370 (Del) – Ishi Khosla Vs. Anil Aggarwal and Anr.; w (1972) 1 SCC 618 – Parle Products (P) Ltd. Vs. J.P. And Co.;  (1997) 6 SCC 37 – K. Shantharaj and Anr. Vs. M.L. Nagaraj and Ors.;  2009 (40) PTC 417 (Del) (DB) – Amar Singh Chawal Wala Vs. Shree Vardhman Rice and Genl. Mills;  (2007) 6 SCC 1 – Heinz Italia and Anr. Vs. Dabur India Ltd.; &   98 (2002) DLT 499 – Info Edge (India) Pvr. Ltd. & Anr. Vs. Shailesh Gupta & Anr. – A descriptive trade mark is entitled to protection if it has assumed a secondary meaning identifying it with a particular product.  “Creative” is not descriptive mark.  Assuming it is descriptive, it is entitled to protection as it has been in use for several years.

(4)               u 2008 (38) PTC 49 (Del) (DB) – Pankaj Goel Vs. Dabur India Ltd.  & v (2004) 28 PTC 121 – Midas Hygiene Industries Pvt. Ltd. & Anr. Vs. Sudhir Bhatia & Ors. -- Mere advertisement in the same magazine does not mean that the applicants were aware of the respondents use.  Delay will not be a reason to reject an application for rectification.

(5)               u 1999 PTC (19) 81 – Automatic Electric Limited Vs. R.K. Dhawan; & v 2001 PTC 363 – Rainforest Cafe, Inc. Vs. Rainforest Café & Ors. – A person claiming an exclusive right over a trade mark cannot challenge that the same is generic.

31.       In reply, the learned counsel for the 1st respondent submitted that the documents filed on the hearing date ought not to be considered. The sales figures given in the statement of case is only from the year 2000-2001 whereas the applicants claim user since 1977 for which no evidence has been produced. The mark of the applicants was proposed to be used in respect of class 16 goods in the year 2005.

32.       The respondent was a proprietary concern in the year 1979.  Their business was restricted only to Bombay and had not spread to Delhi or other places. The annual sales turnover runs to Rs. 100 crores which is supported by the Chartered Accounts certificate filed at page 281 of the typed set of papers.

33.       The learned counsel also pointed out the discrepancy at pages 210 and 211 of the typed set. The learned counsel submitted that in the certificate of appointment issued by Indian Airlines in the English version it is wrongly mentioned as 1996 whereas the correct date is 16/02/1998.  This clarified the doubt of the applicant as to how a certificate can be given to a company in 1996 when the company was incorporated in 1997.

34.       The respondents relied on the observation of the Division Bench in the civil suit between these parties where it was held that there is no dishonesty on the part of the respondents. Relying on the provisions of Section 17 of the Act, the learned counsel submitted that the marks are to be compared as a whole. The applicants mark is a word mark whereas the impugned trade mark is a label mark, where the marks are structurally different.

35.       Pointing to the applicants brochure, the respondent submitted that “Creative” is descriptive – the wordings were “Being Creative since 1977”.  The applicant, the founder of Indian Association of Tour Operators has not objected to the respondents admission as member of IATO in 2002.  This shows that being aware of the respondents existence as early as 2002 has not taken any action against the respondent.  The word “Creative” is generic in respect of travel/tour business and used by many entities and the applicant cannot claim monopoly over the said word.

36.       The respondent further submitted that their name is seen in the Members Directory of IATO as early as 2002 and the applicants were aware of the respondents mark in existence as well as the use.  This was the reason the Division Bench held that “the plaintiff is guilty of latches”  in the suit.

37.       The applicants though claim user of the trade mark since 1977, no proof whatsoever has been produced. All the awards filed by the applicant are in the name of the individual and not in the name of the applicant company. The assessment orders are relied on by the respondents to prove their business whereas the applicants have produced only brochures without date and the Chartered Accountants Certificate. The respondents have filed the Certificate of Membership from the Travel Agents Association since 2002.

38.       The respondents placed before us few judgments:-

(1)      63 RPC 39 HL – Office Clearing Services Ltd. Vs. Westminster Window and General Cleaners Ltd.  – Use by a trader as part of his trade name of descriptive words already used by another person as part of his trade name is likely to cause confusion cannot be accepted.

(2)      AIR 1974 AP 274 – Teju Singh Vs. Shanta Devi – Class of customers are to be considered and the marks are to be seen as a whole.
(3)      Rhizome Distilleries Pvt. Ltd. Vs. Union of India – An unreported judgment of the Division Bench of Hon'ble High Court of Madras. Order passed in the interim stage cannot be said to have no application and also that sections 9 and 11 are to be dealt by the Registrar at the time of registration.

(4)      AIR 1939 MAS 555 – Asiatic Govt. Security Life Assurance Co. Ltd. Vs. New Asiatic Insurance Co. Ltd. – If confusion or deception not satisfied, no relief can be granted.

(5)      1999 PTC (19) 431 – Bharathiya Coffee Workers Catering Vs. Indian Coffee Workers Coop. Society – A party is not entitled to any relief if no proof of confusion placed.

(6)      1999 PTC (19) 449 – Lloyd Insulation India Ltd. Vs. Punj Lloyd Insulations India Ltd. – In case of descriptive words small differences will be taken to be sufficient in between the trade names of both the applicant and the respondent.

(7)      2011 (4) LW 55 – Aravind Laboratories Vs. Medicare – When common English words are used as part of a trade mark, then the protection available to the proprietor of such mark is likely to get diluted.

(8)      AIR 1960 SC 142 – Corn Products Refining Co. Vs. Shangrila Food Products Ltd. – The presence of a mark on the Register does not prove its use.

(9)      2008 (37) PTC 413 – Khoday Distilleries Ltd. Vs. Scotch Whisky Association and Others – When the class of customers are educated, the test to be applied would be different. Here, only literate people purchase tickets online and therefore confusion would not arise.

(10)   The order passed by the Hon'ble Supreme Court in S.L. Petition between the parties on appeal against the Division Bench order in the civil suit.

39.       The learned counsel also relied on section 12 of the Act and prayed that the impugned trade mark may be continued as special circumstances.

40.       In rejoinder, the learned counsel for the applicant submitted that they are aggrieved persons under section 57 of the Act.  The judgments relied on by the respondents were distinguished. The applicants have produced evidence of use since 1996 as the respondents use is only since 1997.

41.       The provisions of section 12 is not applicable as the adoption is not honest. The Balance Sheet does not reflect Rs. 100 crores.

42.       After hearing both the parties on 17/05/2012, orders were reserved.  At the hearing, the applicants filed certain documents namely letter from the Registrar of Companies etc, which were public documents. The learned counsel for the respondent objected to these documents as they were not filed along with the application. We therefore, directed the applicant to file an application. The applicants therefore filed a formal application on 18/05/2012 which was numbered as M.P. No. 233/2012.

43.       On 14/06/2012, the respondents filed documents – R1 to R84 running to 320 pages and prayed that those documents may be taken on file as additional documents.  On 22/06/2012, the respondents filed sur. rejoinder to the rejoinder filed on 04/06/2012 by the applicants.  Again on 25/07/2012, the respondents filed another Miscellaneous Petition to take on record another set of documents (36 pages).

44.       On 06/08/2012, we directed the Registry to post the matter for hearing the Miscellaneous Petition.  We could have kept it aside without considering these documents as they were filed after the orders were reserved, but we considered it necessary that the original application was to be heard as a suit we granted an opportunity of hearing to both the parties. The learned counsel advanced their arguments only in respect of the documents on 03/09/2012.

45.       The learned counsel for the applicant objected to the documents filed as R1 to R77 as they were various awards, Membership Certificates, advertisements etc. which were in their possession and had been filed as after thought.  R78 to R82 were the examination recordings in the civil suit to which the applicant had no objection.

46.       In reply, the respondents relied on those documents and submitted that the examination proceedings are to be considered for deciding the application for rectification.

47.       We have considered the arguments of both parties and have gone through the pleadings and documents.

48.       The applicants claim to be using the trade mark since 1977 whereas the applicants claim of user in the application for registration of the impugned trade mark is 12/08/1997.  The respondents, but, in their counter statement state that their user is since 1977 and therefore on they coming to know of the respondents use have filed a suit for infringement and passing off. The applicants main ground of attack is that the marks are identical for identical services and there is triple identity. The possibility of confusion is inevitable and therefore the suit.  A person who is engaged in the same trade, is a person aggrieved and has the locus standi to file an application for rectification.

49.       It is also that the locus standi has to be decided on principles of public interest, than between the applicant and the registered proprietor. In this case on hand, the marks and the services are identical and therefore the possibility of confusion is certain. The purpose of an application for rectification is to purify the Register.  The applicants are person aggrieved and have the locus standi to file their application for rectification.

50.       The applicant who is a prior user of the trade mark is a person aggrieved. Both the applicant and the respondents have relied on the awards received by them in respect of appreciation of their business to prove their use. The applicants have filed the certificate of award given by Department of Tourism, Government of India for securing first place in foreign exchange earnings in the year 1979 whereas the respondents certificate of award issued by Saudi Arabian Airlines is of the year 1999. Considering these facts, we are of the view that the applicants are prior in use and registration.

51.       The applicants, if claims that the impugned trade mark is wrongly entered in the Register for the reason that he is already using the trade mark for identical goods then the applicant is a person aggrieved.

52.       Now, coming to the use of onus of proof, in an application for rectification, the onus is always on the applicant for rectification. In an opposition proceedings, the onus is on the applicant for registration to prove that the registration if granted would not lead to confusion. The onus is on the applicant herein to satisfy that there is confusion and would cause confusion if the mark is allowed to continue on the register.

53.       The applicants had placed reliance on a e-mail demanding payment addressed to them by Alliance Hotels & Resorts to prove the case of confusion. Though the e-mail was addressed to the applicants, the respondents bill was also included. The applicants submission as to confusion was therefore satisfied.

54.       When a mark is likely to cause confusion, then the mark is an entry made without sufficient cause and is wrongly remaining on the Register and therefore the mark deserves to be expunged.

55.       The letter dated 02/07/1997 sent by the Registrar of Companies was that suggesting to the respondents to choose some other name as “Creative” was already registered in favour of other company.  Filing of this document was in general objected to by the respondents but no reason or explanation was given nor was it denied. We therefore, are to accept the contents of this letter.

56.       The respondents claim to have used the trade mark since 12/08/1997.  The documents filed in support of this contention is the assessment orders, income tax returns, advertisements, awards etc.  The 1st assessment order is of the year 1998 which is in the name of the individual person and not in the name of the company. The certificate of appreciation again is of the year 1998.  There is no evidence of the year 1997.

57.       In cases where there has been such wrong statement, the Board has remanded the mark from the Register (u IPAB Order No. 224/2011 in M/s. Khushi Ram Behari Lal Vs. M/s. New Bharat Rice Mills and Others & v IAPB Order No. 91/2012 in M/s. Times Publishing House Ltd. Vs. M/s. The Financial Times Ltd. and Others). Applying the same principle, the impugned trade mark deserves to be removed.

58.       We shall now deal with the documents filed by both the parties. As regards the applicants documents filed on the hearing date, we are not looking into the deposition and other documents. The respondents have filed a set of voluminous documents running to 320 pages which are of the year 2000 and thereafter. We are of the considered opinion that these documents will be of no help to the respondents to prove their case. They will have to satisfy us as to the claimed date of use. Even though we have taken on record those documents applying the principles of natural justice as observed earlier, we think it necessary and just to impose a cost of Rs. 10,000/- for such delayed filing that too after hearing both the parties at length and orders were reserved.

59.       To conclude, the application for rectification is allowed for the reasons stated below:-

(a)               the applicant is a person aggrieved;

(b)               the applicant has satisfied the case of confusion;

(c)               the applicants are prior users; and

(d)               the respondents have not satisfied us as to the use as claimed in the application for registration.

60.       The impugned trade mark is therefore directed to be expunged.   The respondents shall pay a sum of Rs. 10,000/- towards costs to the applicants.  The Miscellaneous Petition Nos. 232/2012 and 233/2012 are disposed of.


(V. RAVI)                                                                   (S. USHA)
Technical Member                                                    Vice-Chairman



(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)