NAVTAJ-the respondents are not the proprietor of the impugned mark within the meaning of Section 18(1) of the Act. There can be no equity for a dishonest person. In our view the respondent’s adoption and use of the impugned mark is questionable. It deprives the applicants the exclusive statutory right to his mark for the same goods by the use and registration of a colourably similar trade mark. The respondents had knowingly and willfully adopted a closely resembling trade mark. This amounts to aggravated piracy or misdemeanor. The registration of the impugned trade mark is bad in law and diminishes the sanctity of the register leading to associated damages such as proliferation of litigation. The proprietor of a registered trade mark crave for certainty and simplicity in the administration of the Act and not be constantly on the lookout for potential pirates. The collateral consequence is that the impugned mark needs to be expunged from the register as the respondent cannot be considered as the true, lawful and the legitimate owner and proprietor of the impugned trade mark. 11. In the result, ORA/14/2008/TM/AMD is allowed and registered trade mark NAVTAJ (LABEL) under No. 1202611 in class 3 is removed from the register. The respondent is directed to pay a sum of Rs.5,000/- as cost of these proceedings to the applicant.

                     INTELLECTUAL PROPERTY APPELLATE BOARD

                     Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai,

                  Teynampet, Chennai-600018

*****

                    (CIRCUIT BENCH SITTING AT AHMEDABAD)

                 

          ORA/14/2008/TM/AMD

                    MONDAY THIS  THE 16^th DAY  OF  JULY,  2012

HON’BLE MS. S. USHA                                                      …  VICE CHAIRMAN

HON’BLE SHRI V. RAVI                                                    …  TECHNICAL MEMBER

M/s Mehtachem Industries,

a Regd. Partnership firm, doing business at

Amrutmanthan House Sadar,

RAJKOT -360 001

and factory at :

G-525, GIDC Lodhika,

P.O.:METODA (Dist. Rajkot), Gujarat.                                     … Applicants

(Represented by Advocate: Shri Y.J. Jasani)

                                                                        Versus

1.M/s Dhanvantary Pharmacy,

   a partnership firm, having address:

   C-14, M.P. Shah Industrial Estate,

   JAMNAGAR (Gujarat)-361 002.                                          … Respondent

2.The Asst. Registrar of Trade Marks,

   The Trade Marks Registry Branch at:

   National Chambers, 1^st Floor,

   Near City Gold Cinema,

   Ashram Road,

   AHMEDABAD – 380 009.                                                                       

(Represented by None)

           

 3.The Controller General of Trade Marks & Patents,

    Boudhik Smapada Bhavan,

    Nr. Antop Hill Head Post Office,

    S.M. Road, MUMBAI 400 037.     

 ORDER (No. 184/2012)

HON’BLE SHRI V.RAVI, TECHNICAL MEMBER:

            The applicant are seeking removal of the registered trade mark NAVTAJ under No.1202611 in class 5.  The grounds for rectification are briefly mentioned below:-   

            a) The applicants are engaged in the business of manufacturing, marketing and selling various ayurvedic, medicinal and pharmaceutical preparations since 1974 under   the name & style of  M/s Mehtachem Industries at Rajkot. 

           

            b) To distinguish their products from others in the market they have coined the trade mark SARTAJ in respect of  ayurvedic, medicinal and pharmaceutical preparations including the Hair Oil since February, 1994.  They have also coined the word SARTAJ AMLA hair Oil in 1996 and SARTAJ THANDA hair oil in 2000 along with a different combination word “Gunkari Thanda Ayurvedic Tel ”  in Hindi script.  The trade mark label & artistic work for SARTAJ THANDA hair oil is printed in red coloured background with SARTAJ in Hindi as well as in English together with a device of CROWN thereon and also a device of Saint/Rishi in green coloured leaf at the centre.  They have also secured license for manufacturing & selling ayurvedic preparations.      

           

            c) The applicant have registered the trade mark SARTAJ (word per se) under No. 648492 in respect of “Ayurvedic, medicinal and pharmaceutical preparations” in Class 5.  The application  was made in December, 1994 and is currently valid and duly renewed upto December, 2014.  They had subsequently slightly amended the trade mark label and also secured the registration in Class 3 & 5 under No. 933257 and 933258 as of June, 2000.  They have further secured copyright on the artistic work for the trade mark label titled SARTAJ under the Copyright Act, 1957. 

2.         In May, 2004, the applicant came to know from the market that the respondent in collusion with some unscrupulous traders have been using an  identical / deceptively similar trade mark NAVTAJ in identical lettering style, lay-out, get-up with identical/confusingly similar device of CROWN at the top and also confusingly similar device of  Saint/Rishi at the Centre on red coloured background having green border.  The applicant  were constrained to issue a Cease and Desist Notice to the respondent who sent an evasive and misconceived reply.  It was later found that the respondent had surruptiously secured registration for NAVTAJ under No. 1202611 in Class -5.  In response to the Notice, the respondent/registered proprietor pointed out that the two labels are distinguishable as the word  RAJ DHANVANTARY had been added  in Hindi & English language. 

3.         However, as a diversionary tactic, after the third and final cease and desist Notice, the respondent temporarily refrained from using the impugned mark NAVTAJ label but quietly  obtained its registration from the trade mark registry claiming false and fictious use since 1^st April, 2003.  The respondent had filed their application on 30^th May, 2003.   The applicant were completely taken aback and state in view of the foregoing,  the impugned mark  in the name of respondent is based on fraud and misrepresentation. The evidence in respect of the application for rectification is an affidavit of one Gautambhai H. Mehta, the partner of M/s Mehtachem Industries.  The applicant therefore, pray that the impugned mark be removed from the register as it is in contravention of Section 2(1)(zb)(ii), 9, 11, 12 and 18(1) of the Trade Marks Act, 1999.     

4.       The case of the answering respondent is as follows:-

            The respondent is the owner & partner of the  firm M/s Dhanvantary Pharmacy.  They are engaged in the business of manufacturing & marketing of different types of ayurvedic, pharmaceutical and medicinal preparations.   They started a  sole proprietory concern in September, 2004 under the trading style RAJ DHANVANTRY.  In order to distinguish its products from others they coined the trade mark NAVTAJ and started using it since April, 2003.  The trade mark NAVTAJ in the form of a label consist of an imaginary drawing of Rishi(Saint) writing on a leaf with a pen in respect of ‘Ayurvedic Oil’.  This label contains the  House mark “RAJ DHANVANTRY” which has been coined based on the belief that nine relief can be obtained by the use of said  ayurvedic Oil.  The nine relief’s are described on the packaging material in Gujarati language.  The suffix TAJ is a fanciful word in respect of head of the human body as the oil is applied on the head and the novel word NAVTAJ has been coined by the respondent/registered proprietor.  The respondent had applied for the registration of the impugned trade mark under No. 1202611 in Class 5 on 30.05.2003 and the registration certificate after due process has been granted by the Registrar.  The respondent state  that the rival marks are totally different and no case for removal of the registered trade mark has been made out by the applicant. The evidence in support of the registration was an affidavit filed by one Shri Rajanbhai Jayantilal Bhagyodaya, a partner of Dhanvantri Pharmacy.

5.         The matter was listed for hearing on 09.04.2012 and adjourned to the following date.  None represented for the respondent.  Shri Y.J. Jasani appeared on behalf of the applicant.   We heard the counsel for the applicant  and gone through the pleadings before deciding the matter.    

6.       On the issue of ‘Person Aggrieved’  the applicant being in the same trade and a prior registered proprietor for the same goods namely ‘hair oil’  have a grievance that a deceptively/closely similar mark cannot be allowed to co-exist in the register as it would lead to public mischief.   As the applicant’s trade are being hampered, we rule that the applicant has a locus standi  to be heard as a person aggrieved.

7.         Objection has been raised u/s 2(1) 2(zb) (ii) by the applicant.  That part of the section further elaborates what is a trade mark. Section 2(1)(zb) subsumes two essential ingredients.  A trade mark should be represented graphically (that is in paper form).  The second requirement it should be capable of distinguishing goods/services of one person from others. Sub-clause (ii) then states that the mark should indicate a connection in the course of trade between the goods and the proprietor to establish source or origin of the goods or services.   It is the applicants case that the impugned mark is incapable of distinguishing the goods of the respondent and so do not qualify as a trade mark.  Seeing is believing.  The two marks are shown below:-

Applicants registered Trade Mark  

Respondents registered Trade Mark

Let us get a good fix on the rival labels.  One look is enough to conclude that the competing marks are deceptively similar and confusion in the market is inevitable.  The answering respondent have in their counter – statement justified the adoption of the impugned mark through laboured sterile and contrived  arguments.  The respondents say in para 7 therein that ‘red and green are natural colours’ and it is common to trade for hair oil.  Also the device of Rishi/Saint and background of snow white mountain are also common to trade.  The label contains an imaginary picture of a saint with a pen and a leaf in hand.  All this does not however explain why meddle with the business of a rival in the market for 20 years?,  What is the compulsion to copy a similar mark other than trade on the goodwill and reputation of the applicant.  We are satisfied that the impugned mark which is blatant copy of the applicant’s mark with minor difference cannot be regarded as capable of distinguishing the goods of the respondent.   Now, can it serve as a source indicator of the respondent.  We, therefore, rule that section 2(1) (zb)(ii) is a bar that prohibits the registration of the impugned mark.

8.         We next look at the objection raised under section 11 on relative grounds.  It is unwise to indulge in a minute analysis of the label.  Unwary customers of average intelligence and imperfect recollection will see the similarity of the idea of the competing mark and are reasonably likely to be deceived by the confusion between the rival goods.  When compared side by side (which is a wrong test) there may be minor differences as was harped to by the respondent in the Counter Statement.   But the respondent have not discharged with any conviction, the heavy onus cast on them to establish there is no possibility of confusion.  The class of persons who will buy the goods and manner of trade etc. leads us to believe that there will be confusion as to origin.  The two marks are sufficiently similar to confuse the public that both the competing products emanates  from the same source or are closely connected.  The dominant components of the two mark i.e. device of Rishi/Saint with confusingly similar colour combination leads us to the conclusion that the rival marks are conceptually similar.  Even the  word ‘Navtaj’ is deceptively similar to ‘Sartaj’ as it is embossed with the device of crown in both labels.  The reach and import of section 11(1) is wide enough to prohibit registration of the impugned trade mark.  The demand for ‘hair oil’ will be largely based on the pictorial image of the saint on the label.  The consumer being a common man cannot be expected to make fine distinction between the two labels. What burns in the memory is the picture of saint with confusingly similar colour combination.  In short, we uphold the objection raised under section 11(1) by the applicant. 

9.         Objection have also raised under Section 12 that the respondents impugned mark do not deserve to co-exist in the register.   The impugned mark was born 10 years after the applicant.  By then the applicant had established and built up their brand in the market.  Both the applicant and respondent are from Gujarat.  Adoption of a closely resembling mark for the same goods raises the question of bone fide as the essential features of the applicants trade mark has been copied and camouflaged by the respondent which excites suspicion.   The applicant took immediate legal steps to stop the respondents use of the impugned mark as evidenced by successive Cease and Desist Notice with great promptitude.  The burden lies on the applicant to prove commercial honesty of adoption and use of the mark.  Mere concurrent use is not sufficient in law.  It must be honest.  It is the duty of the respondent to satisfy the conscience of the Board that the user was honest.  Alleging many producers in the trade use device of Saint or similar colour combination is an escapist and evasive response.  Both the applicant and the general public will be put to tremendous hardship.  Since the applicants marks is put to peril, we also uphold the objection raised under Section 12 of the Act.

10.       The last of the grounds on which the cancellation from the register of the impugned mark is sought is based on the allegation that the respondents are not the proprietor of the impugned mark within the meaning of Section 18(1) of the Act.  There can be no equity for a dishonest person.   In our view the respondent’s adoption and use of the impugned mark is questionable.  It deprives the applicants the exclusive statutory right to his mark for the same goods by the use and registration of a colourably similar trade mark.  The respondents had knowingly and willfully adopted a closely resembling trade mark.  This amounts to aggravated piracy or misdemeanor. The registration of the impugned trade mark is bad in law and diminishes the sanctity of the register leading to associated damages such as proliferation of litigation.  The proprietor of a registered trade mark crave for certainty and simplicity in the administration of the Act and not be constantly on the lookout for potential pirates.  The collateral consequence is that the impugned mark needs to be expunged from the register as the respondent cannot be considered as the true,  lawful and the legitimate owner and proprietor of the impugned  trade mark.

11.       In the result, ORA/14/2008/TM/AMD is allowed and registered trade mark NAVTAJ (LABEL) under No. 1202611 in class 3 is removed from the register.  The respondent is directed to pay a sum of Rs.5,000/- as cost of these proceedings to the applicant. 

(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.)

impugned trade mark SUPER DELUX BEARINGS has been registered contrary to the provision of the trade mark law. The purity of the register is of great importance to the trade in general quite apart from the merits or demerits of particular litigant. On equitable principle the applicant has no superior claim on expressions like “Delux Bearings” of which they are the registered proprietor and which is the basis to seek cancellation of the impugned trade mark “SUPER DELUX BEARINGS”. We are distressed to note this type of trade mark being put on register and it does undoubtedly create distortion in the trade. The idea of justice and fairness in the adjudication process compels us to record these observation wearing the robe of office we hold. 19. Nevertheless, in terms of corrective justice, we allow the rectification application. Registered trade marks No. 942022 in Class 12 for the trade mark SUPER DELUX BEARINGS is removed from the register. ORA/200/2007/TM/AMD is consequently allowed. There is no order as to cost.

      INTELLECTUAL PROPERTY APPELLATE BOARD

                     Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai,

                  Teynampet, Chennai-600018

*****

                    (CIRCUIT BENCH SITTING AT AHMEDABAD)

                   ORA/200/2007/TM/AMD

             MONDAY THIS  THE 16^TH DAY  OF  JULY,  2012

HON’BLE MS. S. USHA                                              …   VICE CHAIRMAN

HON’BLE SHRI V.RAVI                                               …   TECHNICAL MEMBER

Delux Bearings Limited

A company incorporated under the Companies Act,

Having its office at : “Paritosh Building” 6^th Floor,

Near Darpana Academy, Usmanpura,

AHMEDABAD - 380 013.

and also at :

31-A/32, Ideal Industrial Estate,

Mathuradas Mill Compound,

134 – N.M. Joshi Marg, Lower Parel,

MUMBAI - 400 013.                                                                      … Applicant

(Represented by Advocate:  Shri Y.J. Jasani)

Versus

1. Bharatbhai Khushalbhai Patel                              

    trading as Harikrishna Industries,

    at Plot No.15/2, Jitan Udhyognagar,

    SURENDRANAGAR -363 001 (Gujarat).                        Respondent

2. The Asst. Registrar of Trade Marks,

    The Trade Marks Registry branch at: 

     National Chambers, 1^st Floor,

     Near City Gold Cinema, Ashram Road,

     AHMEDABAD 380 009.

3. The Controller General of Trade Marks & Patents,        

     Boudhik Sampada Bhavan,

     Nr. Antop Hill Head Post Office, S.M.Road,

     MUMBAI – 400 037.

(Represented by Advocate: Shri  Harshit S Tolia)

  

ORDER (No. 185/2012)

HON’BLE SHRI V. RAVI , TECHNICAL MEMBER

            This is a case where the owner of a registered  trade mark DELUX BEARINGS LIMITED’ under no.1019185 in Class 7 are seeking to expunge from the register a rival trade mark SUPER DELUX under No.942022.  The competing marks are depicted below:-

Impugned  Trade Mark

Applicants Trade Mark

          The case,  contentions and allegations of the applicant for rectification is summarized as follows:

 2.     One Dilipbhai Jethubhai Rathod ex- CMD of the applicant company started business in auto accessories under the trade mark DELUX in 1957.  Later he formed a partnership firm by name M/s Vidyut Motors.  In 1963 M/s Bharat Corporation, Ahmedabad was appointed the sole distributor for sale of DELUX product in Gujarat.   M/s Upper India Trading Co(P) Ltd., Delhi was later appointed as resident representative for DELUX products in Orissa and Bihar.  Subsequently, in view of expanding business another partnership firm styled DELUX AUTO ACCESSORIES was formed in 1969.  In 1974  Vidyut Motors was converted to Vidyut Motors (P) Ltd.   This company as also DELUX AUTO ACCESSORIES was owned and managed by  Dilipbhai Jhethubhai Rathod and his family.  In 1987, the name DELUX AUTO ACCESSORIES was changed to DELUX BEARING COMPANY which was later converted in 2000 to M/s Delux Bearing Ltd. the appellant herein. Further, the ongoing business of Vidyut Motor(P) was amalgamated with the applicant company vide order dated 06.06.2003 passed by  Hon’ble Bombay High Court.  Thus from 1957 onwards the applicant through aforesaid predecessors have been using the trade mark DELUX BEARINGS.  They also state that many sub-brands are also being used them along with their main mark.   The applicant applied for the registration of DELUX BEARINGS LIMITED under no.1019185 in class 7.  The TM-1 dated 21.06.2001 inadverdantly failed to state date of user of the mark for which a corrigendum was filed later in form TM-16.  However, the registry published the mark as proposed to be used.  The registration is valid and subsisting.  The founder of the applicant company Jethubhai Rathod also created an artistic work titled “Delux means Driving Delight”  and secured its registration in 1973 under the Copyright Act, 1957.  In 2003 he secured copyright for the artistic work DELUX BEARINGS.   The applicant have also given wide newspaper publicity for their trade mark. 

3.      The applicant came to know that one Poonam Engineering Works, Surendranagar, Gujarat was selling SUPER DELUX BEARINGS in identical box packings as that of the applicant company.  The applicant therefore filed a Civil Suit No. 1832 in 2007 before City Civil Court, Ahmedabad.  It then came to their knowledge that Poonam Engineerings was purchasing bearings in loose from M/s Harkrishna Industries. Poonam Engineering Works was injuncted from manufacturing and selling bearing under the trade mark SUPER DELUX BEARINGS.         On further investigation the applicant realised that Harikrishna Industries had secured the registration of the trade mark SUPER DELUX BEARINGS under 942022 as on 24.07.2000 for certain goods falling under class 12 including Water Pump Bearing and clutch bearing which was published in TM Journal.  This application had escaped the notice of the applicant.  The registered proprietor of the impugned mark has claimed use since 15.09.1995 in his application and this has been disputed.  It is the contention of the applicant that the respondent has never used the impugned label mark SUPER DELUX BEARINGS.  It is also alleged that the impugned registration has been obtained without any bona fide intention to use and in fact there has never been any bona fide use upto a date 3 months before the date of the subject rectification application.  

4.      Objection to the registered trade mark of the respondent has been raised u/s 2(1)(zb), 9(2), 11(1), 11(2), 11(3), 11(10), 12 and 18(1) of the Act  The prayer is that the impugned registered trade mark no 942022  be removed from the register in terms of section 47(1) and 57(1) and (2) of the Act.

5.      The case of the registered proprietor is as follows.  They have been using a label mark SUPER DELUX since 1995 in respect of apparatus for locomotion for land, air or water,  water pump bearing, clutch bearing and automobile parts falling in Class 12.  Their sale under this brand name during 1996-97 was over Rs. 10 lakhs and has gone up to over Rs. 50 lakhs by 2006-07.  The registered proprietor specifically state that the applicant’s adoption and user of their mark since 1957 is neither established nor proved by them through unimpeachable documentary evidence.  The statement of sales since 1973 of the applicant is with respect to Delux Auto Accessories and no devolution of title from predecessor to successors in title and ultimately to present applicant company  has been established and exaggerated claim of use of the mark since 1957 is not supported by cogent and valid documents.  Further, the trade  literature and price list filed by applicant are from 1988 and even these do not relate to the present applicant and the legality of these are questionable.  The applicants mark DELUX BEARING LIMITED was published as a proposed mark.  The word BEARING is generic.  LIMITED is public Juris.  Copies of TM-16 purportedly filed before the Registrar to ante date user has not been furnished.  The applicants use of various sub-brands is irrelevant.  The averments concerning various copyright registration is not relevant and assignment deed in favour of the applicant has not been furnished.  Similarly, the copyright obtained in 2003 is in the name of one Vikrant.S. Gandhi who was an employee of M/s Yatra Graphics and no assignment document to support the claim has been tendered.  The reference to the Civil Suit No. 1832/2007 is between Delux Bearing Co. and M/s Poonam Engineering Works and the present respondent is not a party to the proceedings.  Further, the order in the Civil Suit is of interlocutory nature and not a final decree and does not help their case herein.    The respondent have also questioned the applicants claim to the word ‘DELUX’ as Section 28 dealing with rights conferred by registration has a caveat at the beginning “Subject to the provisions of this Act”.   Section 17 deals with the effect of registration of parts of a mark.  This section is attracted and the word DELUX has not been separately registered by the applicant and in any event no one can claim a monopoly on a misspelling of deluxe as it is common to trade and is a purely  laudatory expression. 

6.      The evidence in support of the rectification petition is an affidavit of Viplav Vora, Zonal manager of the applicant company.  The evidence in support of registration is an affidavit of Bharatbhai Kushalbhai Patel sole proprietor of Harikrishna Industries.  Shir Viplav Vora has also filed affidavit in reply.

7.      The matter was listed before us on 10^th April, 2012.  We have heard the arguments of both counsel gone through  the pleadings and the various case laws relied on by both parties.

8.      The present rectification is sought under Section 47 and 57  and is based on Section 9,11,12 and 18(1) of the Act.  We will deal with each in the light of pleadings and records before us.   

9.   Section 47 provides for removal of a trade mark from the register on either of the two grounds : that is

            (a)   The trade mark was registered without any bone fide intention by  the applicant for registration to be used in relation those goods and that there has in fact been no bona fide use of the mark upto a date 3 months before the date of application for removal of the mark

O R

          (b)     upto a date of 3 months before date of filing of rectification petition, a continuous period of 5 years from the date on which the trade mark is actually entered in the register or longer has elapsed during which there was no bona fide use thereof in relation to those goods. 

10.    Of course, the proviso to section 47(1) provides for two exception which are not applicable to this proceeding.  Most of the bills of the registered proprietor are in Gujarati.  However, invoices dated 25.09.1995, 13.10.1995, 02.11.1995, 13.11.1995 and many others bear the name “Super Delux Water Pump”.  Hundreds of bill upto 2005 have been furnished.  The respondent have also furnished trading account particular from 2004 upto 2007.   In the light of various bills and invoices there is no doubt that the impugned mark has been used in the market by the registered proprietor.  Rightly or wrongly there has been genuine use of the trade SUPER DELUX by the respondent in Class 12.  Therefore, section 47 (1) cannot come to the rescue of the applicant.

11.    The object of rectification is purifying the register which is public purpose.  Section 57(1) may be invoked by any person aggrieved.   On this issue both the applicant and registered proprietor are in the same trade.  The applicant has a direct and substantial interest in having the mark removed.  The applicants business under his trade mark would be sufficiently harmed and have a standing to prosecute an appellate remedy.  The applicants commerce are likely to be harmed by the presence of the respondents trade mark in the register.  Law permits the affected applicant to seek the cancellation of the impugned trade mark.  We, therefore,  hold the applicant as ‘Person Aggrieved’.  

12.     We shall review the various case laws relied by the applicant and the registered proprietor.

Applicant

          (a) Mahomad Oomer Mahomed Noorulla Sahib V/s Nooruddin.  S.M. {Chagla CJ AND Desai J] AIR 1956 Bombay, 76.

          Held – There is no absolute right for anyone to obtain the registration of a trade mark.  The effect of Section 8,10 and 14 (1940 Act) is that if Section 8 and 10 is applicable, the Registrar has no discretion at all; he must refuse registration.  This decision was relied on to support the claim that if Section 9 and 11 of the Act is a bar to the continued registration of the impugned mark, it should be expunged from the register 

          (b) Ciba Ltd. V. Ramalingam AIR 1958 Bom 56 (Chagla CJ) where at para 8 His Lordship observed:”  but if the resemblance between the two mark is clear and obvious, then it is the duty of the court  to remove from the register a mark which is likely to cause deception.    Mr. Justice Chitty  In re. Hills Trade Mark (1893) 10 RPC 113 B), emphatically stated  “I state my opinion that directly  it is apparent that if any part of a trade mark is calculated to deceive, it is the duty of the ‘Court to order it to be removed.”  This was relied in support of objection under Section 11.

          (c)     Next case relied on was M/s Jain Electronics Vs Cobra Cables (P)Ltd. – This was an IPAB ruling.  There the ratio was if the bills/invoices do not mention the brand, then it is not proof of use of the mark.  But in this case there has been user of the respondents’  trade mark as reflected in some of the invoices.

          (d)     Suresh Kumar Jain Vs Union of India and another (Acting Chief Justice A.K. Sikri & Rajiv Sahai Endlaw,  J. 2012 (49) PTC 287 (Del) DB – where it was held that the mark  was generic and IPAB had correctly held that registration was on the basis of false statement and fraud.  This case was relied to cast doubts on many dubious bill of the registered proprietor with no mark on the invoice. 

Respondent    

          (a)  Chunni Lal Vs Bharat Lal (Rajasthan HC) V.G. Pal Shikar J. 

          The trade mark held by plaintiff is for manufacture and sale of goods other than vehicles whereas defendant used it for vehicles – Held – neither comparative merit nor balance of convenience is in favour of plaintiff – injunction refused.  This case was relied as the proprietor of the impugned mark is mainly engaged in manufacture of water pumps falling in Class 12. 

          (b)     Vishnudas Trading V/s Vazir Sultan Tobacco Co. Ltd (SC) AIR (1996) SC 2275 – to show manufacturer cannot enjoy monopoly in respect of all goods in a class under international classification. This case was relied on by  the respondent in support of his contention that at least for water pump the mark should not be removed. 

          (c)     The Anglo Thai Corporation  Ltd. Vs Mahendar Kumar Maneklal Shah & Ors.

          The respondent had applied for MANHAR GRIPE WATER.  The opponent/appellant were registered proprietors of three trade mark including WOODWARD CELEBERATED GRIPE WATER for medicinal preparation for the treatment of gripes.  The appeal was dismissed as the marks were held dis-similar and GRIPE WATER was descriptive.  The respondent wanted the same principle to be applied to this case.

          (d) Next decision relied was a PRIVY Council case reversing the decision of Supreme Court of New Zealand by Justice BEATTIE (known as SOLAVOID Trade Mark) and ordering the rectification of New Zealand register of trade mark.  Briefly, the applicants case relates to sale of about 7,50,000 sunglasses over 21 years under the trade mark ‘ Poloroid’.  Respondent registered SOLAVOID for sunglasses, Rectification sought on the  main ground – likely to deceive or cause confusion and otherwise dis-entitled to protection.  Before registration, the advice of Commissioner of Trade Mark was obtained as to whether ‘Solavoid’ was eligible for registration and whether any existing marks on the register would be a hindrance.  There was no evidence of actual confusion or deception.  The trial Judge held that  great weight is to be given to advice of Commissioner.  It was held that the standard of proof required for rectification was the same as that for registration and applicant must show reasonable probability of confusion or deception.  Rectification was refused.  On appeal, the New Zealand,  Court  of Appeal reversed the decision of trial judge  on the ground there was a real, tangible danger of confusion between the two marks.  The respondent appealed to the Privy Council.   Lord Fraser of Tullybelton held (reminder of the Board concurring)  the period of use of respondents registered trade mark was a relevant consideration in exercising courts discretion against expunging the mark. Held, also the idea behind the two marks are different.  Also ruled there was no substantial risk of confusion and so mark did not wrongly remain on the register.  The contesting respondent rely on the above decisions for its co-existence on the register. 

          e)      Another citation relied on was Cadila Healthcare Vs Speciality Meditech (P) Ltd.  Gujarat High Court.  Our attention was drawn to para 8.1 where the Learned Judge held for the purpose of settling the rights and privileges under the Trade Marks Act, such a trade Mark is to be registered in the name of assignee under Section 45.  It was also held DOMOCIS is not deceptively similar to OCID.  This decision was in support of the contention that the chain of title to the trade mark of the applicant have not been established by cogent documentary evidence. 

          f)       The last case relied on was M/s Anant Oil Industries  Vs M/s New Nandi Seeds Corporation Gujarat High Court(Appeal 351 of 2008).  In this the appeal was from the order passed by Chamber Judge, City Civil Court, Ahmedabad in Civil Suit No. 977 of 2008 by which learned Judge allowed Notice of Motion taken out by the respondent (original plaintiff) by granting interim injunction restraining the appellant (original defendant) from marketing  and selling CATTLE FEED/ CATTLE FOOD containing NANDI brand and /or device of BULL.  The Hon’ble Gujarat High Court held the registered trade mark NANDI and device of sitting Bull was in with respect to ‘Seeds’ falling Class 31 of the Schedule and not for other goods/item in Class 31 particularly CATTLE FEED in respect of this there was no registered trade mark.  The Learned Chamber Judge has committed an error in bringing the case within Section 29(4) of the Act in the absence of All India reputation.  Hence, the order  was questioned/set aside. The respondent relied on the above principle against rectification of the registered trade mark.

13.    We shall now examine whether the impugned trade mark is prohibited under Section 9.    As can be seen from the record the respondent application was made on 24^th July, 2000 claiming user since 1995 in respect of vehicles, apparatus for locomotion by land, air or water, water pump bearing, clutch bearing, automobiles and parts thereof in Class 12.    Random dictionary states DELUXE (the impugned mark is SUPER DELUX) was originally a French word for luxury.  The English meaning of the word is opulent, rich, special, splendid and superior in quality such as DELUX car with rich finishing etc.  Phonetically, the pronunciation   of DELUX and  DELUXE is one and the same.  The word ‘SUPER’ means beyond compare, surpassing all others, superior quality.  ‘SUPER DELUX’ in combination is a laudatory expression eulogizing the quality of the products as  something as out of the ordinary.  Such words cannot function as a trade mark.  Such laudatory expression are property of all consumers and producers.  It is reflective of the superlative qualities of the goods and how it was registered is a matter of debate.   Five years user or even 100 years such use cannot make it distinctive.  It is incapable of functioning as a trade mark with any length of use.  Section 9(1) is, therefore,  an absolute bar and the impugned marks needs to be removed on this ground alone.  However, we may add that it does not lie in the mouth of the applicant to attack the impugned mark on ground of distinctiveness.    We take note of applicant’s effort to cherry pick what suits their interest overlooking  the fragility of their own mark. 

1 4.   We next look at objections raised under Section 11(1).  The applicants trade mark is DELUX BEARINGS LIMITED and the impugned registered trade mark is SUPER DELUX.  The test of whether the impugned mark is deceptively similar to the applicants mark is simple.  Will customers of the goods bearing applicants mark procure and accept the products of the respondents bearing the trade mark SUPER DELUX?.  We think they undoubtedly will.  Both the competing marks though registered are largely descriptive and laudatory.  The nature of the goods are the same.   The class of purchaser are similar.  The mode of purchase of goods for placing of orders overlap.

15.     In Redimix Pharma Pvt. Ltd., v/s Savita Pharmaceutical(P) Ltd. & Anr. 2006 (33) PTC 157, the Apex Court had laid down “the principle being that word must be compared as a whole and while comparing the marks, greater regard should be paid to the uncommon element in the two marks and upon such comparison, if it is found that the uncommon elements are so dis-similar as cannot be confused with each other, then the conclusion would be the marks are not deceptively similar”  Let us apply the test to the case on hand.  The competing marks here are DELUX BEARINGS LIMITED and SUPER DELUX.  BEARNING is the product itself.  LIMITED is public juris.  SUPER is an unregistrable laudatory expression.  Product confusion will be essentially due to the common feature DELUX.  If a customer is misled into buying the goods of the contesting respondent it will be on the misconceived notion that respondents goods are superior, better or an improved version of the applicants goods.  Market confusion and commotion  is not merely likely but inevitable, given that the majority of customers for both goods  will be the unthinking mass of traders, dealers and auto mechanics.   Section 11 further speaks of “likelihood of confusion on the part of the public which includes the likelihood of association with the earlier trade mark”.  This terminology apparently factors elements other than commercial confusion.  In trade mark parlance, this refers to a prohibition of use of a mark that dilutes the distinctiveness of the mark or tarnish the association evoked by the mark.  This  ‘Watering down’ of the trade mark  is also a legitimate ground for objection and such disputes cannot be dismissed as mere ‘contrived  conflict’.   We  would have upheld the applicants arguments on this grounds too but leave the matter open and undecided for two good reasons:-

          (1) The applicant have not established the chain of title to the ownership of the mark since inception from 1957 beyond all reasonable doubt.  There are obvious legal infirmities. 

          (2) The strength of the applicants own mark DELUX BEARING LIMITED is also open to question after discounting BEARING LIMITED.

          Despite this, we are clear in our stand section 11(1) is an absolute  bar  to the registration of the impugned trade mark.   

16.   We now consider the objection raised under Section 12 that the respondent/registered proprietor is not entitled to honest concurrent use.   It must be remembered that Section 12 relates to registration of trade mark by third party and is an exception to the general rule of registration.  The applicant has raised a plea that impugned trade mark cannot be allowed to co-exist on the register.  The applicants trade mark DELUX BEARING LIMITED was advertised in the TM Journal in November, 2003 and entered in the register in 2004.  The impugned trade mark SUPER DELUX was applied for in 2000 and the applicant filed their application much later in June, 2001.  Even though the applicant secured the registration earlier than the respondent herein the latter has proved user of the mark since 1995.  In normal course of event they would have got the benefit of honest concurrent user.  However, since we have already come to a conclusion that the Section 9 is an absolute bar to the registration of the impugned trade, the objection raised under Section 12 will also have to be upheld. 

17.    Lastly, removal of the impugned trade mark is sought on the ground that the respondent/registered proprietor cannot be owner of the impugned trade mark under Section 18(1).  It was on that basis that it was accepted and published in the TM journal for registration.   We agree to the extent that no one can be owner of the word either SUPER or  DELUX either separately or in conjunction.  Conferring monopoly right on such laudatory expressions makes a mockery of the trade marks law.  Section 18(1) is a bar to the continued registration of the impugned mark not because it is copied  from the applicants trade mark, but for the reason these are inherently incapable of functioning as a trade mark and has no source origin capabilities. 

18.    We have already taken a stand that impugned trade mark SUPER DELUX BEARINGS has been registered contrary to the provision of the trade mark law.  The purity of the register is of great importance to the trade in general quite apart from the merits or demerits of particular litigant.   On equitable principle the applicant has no superior claim on expressions like “Delux Bearings” of which they are the registered proprietor and which is the basis to seek cancellation of the impugned trade mark “SUPER DELUX BEARINGS”.  We are distressed to note this type of trade mark  being put on register and it does undoubtedly create distortion in the trade.  The idea of justice and fairness in the adjudication process compels us to record  these  observation wearing the robe of office we hold.

19.    Nevertheless, in terms of corrective justice, we allow the rectification application.  Registered trade marks No. 942022 in Class 12 for the trade mark SUPER DELUX BEARINGS is removed from the register.  ORA/200/2007/TM/AMD is consequently allowed.  There is no order as to cost. 

(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.)

Rule 37(2) of the Rules requires the Registrar to cause a search to be made amongst the registered trade marks and amongst the pending applications in order to ascertain whether there are identical marks or marks deceptively similar to the mark sought to be registered. Clearly this is to maintain the purity of the register. The Rule also provides that “the Registrar may cause the search to be renewed at any time before the acceptance of the application but shall not be bound to do so”. Therefore even the Rules provide for consideration of Search Report until the date of acceptance of the application for registration. Therefore the understanding of the Deputy Registrar that after the matter is set down for final hearing, the Search Reports cannot be considered is clearly erroneous. The Search Report is a document in the custody of the Registrar so we see no reason for the Registrar to say that it would cause inconvenience.

INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018

(CIRCUIT BENCH SITTING AT DELHI)

OA/30/2008/TM/DEL

FRIDAY, THIS THE 20^th DAY OF JULY, 2012

Hon’ble Smt. Justice Prabha Sridevan                   …   Chairman

Hon’ble Shri V. Ravi                                                     …   Technical Member

                                                                                                   

M/s Mulakh Raj Ramesh Kumar

4065-B, Naya Bazar,

Delhi-110006.                                                                   …   Appellant

(By Advocate:  Shri N.K. Manchanda)

Vs.

1.         M/s. Mamraj Chunnilal

5183, Naya Bazar,

Delhi-110006.                                               … Respondent No.1

2.         The Registrar of Trade Marks

            Trade Marks Registry (I.P. Bhavan)

            Plot No.32, Sector-14,

Dwarka,

NEW DELHI-110075.                                   … Respondent No.2

                                   

                                                                       

     (By Advocate:  Shri P.K. Jain)

   ORDER(No.186/2012)

Hon’ble Smt. Justice Prabha Sridevan:

This appeal is against the dismissal of the Interlocutory Petition filed by the appellant herein for entertaining the evidence filed under Rule 53 of the Trade Marks Rules, 2002 (in short ‘Rules’). The application for registration of the trade mark in Class 30 was filed by the appellant herein.  The trade mark “MOTHER’S PRIDE” was advertised in the Trade Marks Journal dated 25.8.2003. The registration was opposed by the respondent herein. The evidence that was sought to be introduced was a Search Report obtained on 16.7.2007. The Registrar felt that if the Search Report is taken on record after the matter is set down for final hearing, it will cause prejudice, inconvenience and unnecessary expenditure.

2.         Heard both the Counsel.  Rule 53 of the Rules gives the Registrar the discretion to “…give leave to either the applicant or the opponent to leave any evidence upon such terms as to costs or otherwise as he may think fit”. Therefore it is purely the Registrar’s discretion and normally the Appellate Court will not interfere unless the discretion has been perversely or arbitrarily exercised. In the present case the evidence is the Search Report. The learned Deputy Registrar appears to be under the impression that the Search Report cannot be considered after the matter is set down for final hearing. This is contrary to the Rules. Rule 37(2) of the Rules requires the Registrar to cause a search to be made amongst the registered trade marks and amongst the pending applications in order to ascertain whether there are identical marks or marks deceptively similar to the mark sought to be registered. Clearly this is to maintain the purity of the register. The Rule also provides that “the Registrar may cause the search to be renewed at any time before the acceptance of the application but shall not be bound to do so”. Therefore even the Rules provide for consideration of Search Report until the date of acceptance of the application for registration. Therefore the understanding of the Deputy Registrar that after the matter is set down for final hearing, the Search Reports cannot be considered is clearly erroneous. The Search Report is a document in the custody of the Registrar so we see no reason for the Registrar to say that it would cause inconvenience.    

3.         In these circumstances, we find that the discretion has not been exercised properly and the order has to be set aside. The appeal is allowed and the matter is remanded to the Deputy Registrar for disposing the interlocutory petition in accordance with law. The Search Report filed by the appellant shall be looked into for deciding the matter. The relevance of the entries shall be decided in accordance with law. The application for registration is made in the year 1997 and obviously has been pending for nearly 16 years. The application for registration shall be dealt with taking into account all relevant evidence and the Search Report and order shall be passed preferably within three months from the date of receipt of this Order.

(V. Ravi)                                                                       (Justice Prabha Sridevan)

Technical Member                                                     Chairman

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