INTELLECTUAL PROPERTY APPELLATE BOARD
2nd floor, Annexe-l, Guna Complex, 443, Anna Salai, Teynampet,
Chennai 600 018
(Circuit Bench Sitting at Kolkata)
ORA No.22/2004/TM/KOL
MONDAY, THIS THE 10th DAY OF JANUARY, 2005
HON'BLE SHRI JUSTICE S.JAGADEESAN ...CHAIRMAN
HON'BLE DR.RAGHBIR SINGH ...VICE CHAIRMAN
M.P.Jewellers
P-227 Ram Krishna Samadhi Road
(C.I.T.Scheme-VIM)
KOLKATA – 700 054 Applicant
(By Advocates S/Shri G.Chakravartti and Samit Talukdar)
Vs.
New M.P. Jewellers
Chawk Bazaar
HOOGHLY
Kolkata – 712 103 Respondent
(By Advocate Shri Dr.A.M.Saha)
ORDER (No.1/2005)
Hon'ble Shri Justice S.Jagadeesan. Chairman:
The applicant filed this application under section 57 of the Trade Marks Act, 1999 (hereinafter referred to as the said Act) for rectification of the Register of Trade Marks by directing the Registrar of Trade Marks to expunge and cancel the respondent’s mark ‘NEW M P JEWELLERS’ under registration No.690610 dated 14.12.1999. The case of the applicant is that it is a registered partnership firm established in or about 1945. It was registered with the Registrar of Firms. The applicant used the words ‘M.P. JEWELLERS’ and /or ‘M. P.’ as its trading names and trade mark in respect of its business to distinguish its products. The said trade marks have been popular in the field of jewellery, precious and semi precious stones together with astrological consultancy services. Apart from the registered place of business at Ramakrishna Samadhi Road, Kolkata, the applicant also has branches in other places of Kolkata. The applicant is engaged in trading and marketing of all types of jewellery made of gold, silver and other precious metals. The said jewelleries are sold and marketed under the trade name and trade mark ‘M.P. JEWELLERS’ and / or ‘M.P.’. The said trade marks were registered and some of the applications for registrations in different languages are pending. The applicant is using the said marks continuously since 1945 and their turnover for the year 1988-89 was Rs.38,46,890 and the same rose to Rs.15,91,19,615 during the period 2002-03. Similarly the advertisement expenses of the applicant which was Rs.4,36,867 in the year 1988-89 rose to Rs.1,11,00,739 during the year 2002-03. Due to the long use of the mark, the public associates the same exclusively with the applicant. The applicant also initiated legal proceedings against M/s National MP Jewellers and another M/s New MP Jewellers for using the same mark. The applicant filed yet another legal proceeding which was settled between the parties. In or about 1997 the applicant came to know that some other party was offering jewels for sale under the trade name ‘M.P. JEWELLERS’ alias ‘NEW M.P. JEWELLERS’ consisting of words M.P. JEWELLERS so as to take unlawful and illegal benefit of the goodwill existing in favour of the applicant and filed a suit which also ended in compromise. Whenever the applicant came to know about the use of the offensive mark, without fail they initiated legal proceedings to protect their mark. In 1995 the applicant came to know that the respondent herein using the trade name M/s New MP Jewellers and making unlawful gain by passing off its goods as that of the applicant. The applicant duly filed a suit 4/1996 on the file of the District Court, Hooghly for injunction restraining the respondent from passing off its goods as that of the applicant. By an order dated 7.6.1996 the District Judge restrained the respondent from using the name ‘NEW MP JEWELLERS’ or another name which includes the words ‘MP JEWELLERS’. During the pendency of the suit, in or about May, 2001 the respondent took out an application stating that they have changed the name of their business from the impugned ‘M/s NEW M.P. JEWELLERS’ to ‘M.M.P JEWELLERS’ and prayed for disposal of the suit in view of the change of name. As the change of name by the respondent gave rise to a new cause of action, the applicant filed another suit OS 12/2001 in the District Court, Hooghly alongwith an interlocutory application seeking for interim injunction. The District Judge granted the interim order restraining the respondent from using their trade name ‘MP JEWELLERS’ or another deceptively similar trade name. Irrespective of the injunction order the respondent was using both the impugned names, ‘NEW M.P. JEWELLERS and M.M.P . JEWELLERS’. Later the applicant came to know that the respondent did not change their name from ‘NEW M.P. JEWELLERS’ to ‘M.M.P. JEWELLERS’ and were continuously using the name ‘NEW MP JEWELLERS’. On 27.11.2003 the respondent’s counsel served a copy of the application under Order VI Rule 17 in OS 4/1996 to amend the written statement including the fact that the respondent is the proprietor of the registered trade mark ‘NEW MP JEWELLERS’ under No.690610 in class 14 as the same was registered under the Trade and Merchandise Marks Act, 1958. The applicant is the prior adopter and prior user of the mark ‘M.P. JEWELLERS’ and / or ‘M.P.’ in respect of jewellery and precious metals and the said marks have become distinctive of the goods of the applicant. Hence the use of the impugned trade mark by the respondent is unlawful and the impugned registration is in contravention of sections 9, 11 and 18(1) of the said Act. The trade mark of the applicant earned huge goodwill and as such the use of an identical mark by the respondent would cause deception and confusion among the public even if the impugned mark is used in respect of goods and / or services which is not similar to the goods of the applicant. Hence the remaining of the mark in the Register is in contravention of section 11(2) of the Act. The applicant came to know about the registration only by way of the amendment petition filed by the respondent and immediately this application for rectification was filed.
2. The main grounds urged by the applicant are that they are prior adopter and user of the impugned mark as such the registration granted in favour of the respondent is in contravention of provisions of sections 9,11, and 18(1) of the Act. Furthermore the impugned mark being same or identical to that of the applicant’s mark, the use of the same would cause confusion and deception in the trade as well as in the public. The respondent obtained the registration suppressing the pendency of the proceedings in the Civil Court and as such the impugned mark cannot continue to be in the register and there is no sufficient cause for the registration of the same and also for continuation of the same in the Register.
3. The respondent filed their counter statement stating that they adopted the composite mark in the year 1992 comprising the letters ‘N M P J’ interwoven with each other, making a monogram and name ‘New M.P. Jewellers’ to be used in connection with its business in relation to gold and silver ornaments. After adopting the composite trade mark the respondent had been using the same continuously to the knowledge of all concerned. In order to get the statutory protection, the respondent applied for registration of the monogram ‘N M P J’ with ‘New M.P. Jewellers’ and also obtained the registration as there was no opposition. When the respondent was using the monogram with the name honestly, they received a notice in June, 2004 from the District Court through which it came to know about the injunction order in the other suit. It had also filed an application for vacating the interim order. The respondent also filed an application for amendment of the written statement after obtaining the registration and the same was allowed. The present rectification application is vexatious, motivated and out of business rivalry. The respondent adopted the monogram written in a particular style interwoven to distinguish and to denote their product and the name ‘New M.P. Jewellers’ adopted long back in the year 1978. Apart from this plea the respondent made specific denials of the averments in each and every paragraphs of the application and further stated that the application filed to dismiss the suit OS 4/1996 on the ground of change of name into ‘M P Jewellers’ from ‘New M P Jewellers’ was not pressed as the application filed in or about 2001 was in disturbed mind as the respondent was completely frustrated and in depression. The respondent also pleaded that the use of the composite mark, monogram ‘N M P J’ with the name ‘New M. P. Jewellers’ will not cause any confusion or deception in the trade. Along with the counter statement the respondent also filed evidence in support of the registered mark by way of an affidavit of Madan Mohan Pal, the sole proprietor of the respondent’s firm wherein it is stated that the respondent honestly adopted the name ‘New M.P. Jewellers’ in the year 1978 and the name was adopted from the initial words of his name and first letters of Madan Mohan Pal. He also furnished the sales statistics for the year 1990-91 which was Rs.3,20,112 and it rose to Rs.13,19,279 during the period 1995-96.
4. The applicant filed evidence in reply and also the objections to the supplementary affidavit to the evidence in support of registration.
5. We have heard learned counsel Shri G.Chakraborty on behalf of the applicant and learned counsel Dr.A.M.Saha on behalf of the respondent.
6. Learned counsel for the applicant contented that the applicant is using the trade name ‘M.P. JEWELLERS’ since 1945. The evidence has been produced for use of the same since 1989. The applicant initiated several legal proceedings against the offenders of their trade mark as well as the trade name ‘M.P. JEWELLERS’. Against the respondent also they filed two suits OS 4/1996 as well as 12/2001 which are pending in the District Court, Hoogli. The respondent had obtained the registration of the impugned mark during the pendency of those suits and during the subsistence of the injunction order restraining the respondent from using the said marks. Further, the respondent did not deny the prior use of the applicant of their identical mark. Since the mark of the applicant and respondent are identical and same and the applicant’s mark being the earlier registered one, the impugned mark ought not to have been registered. Hence the registration of the respondent’s mark is in contravention of sections 9, 11 and 18(1) of the Act. Apart from that the suppression of the pendency of the suit as well as the order of injunction by the respondent before the Registrar of Trade Marks will amount to fraud played by the respondent and on this ground also the impugned mark is liable to be cancelled. He also relied upon the judgement of the Supreme Court in AIR 1994 SC 1837 at 1843 para 29 Satyabrata Biswas V. Kalyan Kumar Kisku as well as another judgement of the Supreme Court 1994 in (1) SCC paras 1, 2 and 6. SP Chengalvaraya Naidu Vs. Jagannath .
7. On the contrary the learned counsel for the respondent vehemently contented that their mark is a composite mark with the monogram containing ‘N M P J’ and the name ‘New M.P. Jewellers’ and their invoices and bills contains the monogram and the name. As such there cannot be any confusion in the trade. Further the composite mark cannot be separated to find out the possibility of confusion or deception. It should be taken as a single unit in order to decide the question of confusion. Further he contended that the applicant could have objected before the Registrar of Trade Marks when the application for registration was pending. In the absence of any explanation on the part of the applicant for not opposing the registration of the impugned mark, the rectification proceedings is only an after thought due to business rivalry. In support of his proposition he also relied upon the judgements of this Board reported in 2004 PTC 578 Kamaladevi Chordia V. P. Ganeshan and 2004 PTC 610 Balaji Consumer Products of India V. Chinnaswami. The applicant is having their trade within Kolkata city whereas the respondent is having their trade in the mouffisil district and as such there cannot be any confusion. He further contented that the applicant all along have been dealing with precious stones and never had any dealings in the gold jewellery prior to the adoption of the impugned mark by the respondent in respect of gold jewellery. Hence the respondent is the first one who adopted and prior user of the impugned trade mark in relation to gold jewellery. Consequently there is no valid cause for the cancellation of the impugned mark or for removal of the same from the Register of Trade Marks.
8. We have carefully considered the contentions of both the counsel. To find out the similarity of marks by comparison, it is relevant to refer to the principles laid down by the various Courts. In Parle Products (P) Ltd. Vs. J.P. and Co., Mysore AIR 1972 SC 1359 wherein the Supreme Court has laid down the underlying principles thus:-
“….. In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other it would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.”
9. A division Bench of the Bombay High Court in Hiralalal Prabhudas V. Ganesh Trading Company, AIR 1984 Bom.218, Mr.Justice Lentin speaking for a Division Bench adverted to the previous decisions of the Supreme Court on the subject and held that the Court must be guided by the following considerations:
“5. What emerges from these authorities is (a) what is the main idea or salient features, (b) marks are remembered by the general impressions or by some significant detail rather than by a photographic recollection of the whole (c) overall similarity is the touchstone, (d) marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection, (e) overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (i) the purchaser must not be put in a state of wonderment, (g) marks must be compared as a whole microscopic examination being impermissible, (h) the broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design, and (i) overall similarity is sufficient. In addition, indisputably the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances.”
10. It may also be worthwhile to refer to a passage from Kerley’s Law of Trade Marks and Trade Names 13th Edition paras 16-38 at 603:-
“When the question arises whether a mark so resembles another mark as to be likely to deceive or cause confusion, it should be determined by considering what is the leading characteristic of each. The one might contain many, even most, of the same elements as the other, and yet the leading, or it may be the only, impression left on the mind might be very different. On the other hand, a critical comparison of two marks might disclose numerous points of difference, and yet the idea which would remain with any person seeing them apart at different times might be the same. Thus it is clear that a mark is infringed if the essential features, or essential particulars of it, are taken. In the case of device marks, especially, it is helpful before comparing the marks to consider what are the essentials of the claimant’s device; with word marks, the court is apt to be more impressed by the dangers of giving the claimant what amounts to a monopoly in a large class of words.”
These are the principles governing to find out the similarity of trade marks.
11. Here we are concerned with the trade name which also turn to be the trade mark. The applicant is carrying on the business with the trade name ‘M.P.JEWELLERS’ and / or ‘M.P.’ The respondent also claims to use the same name ‘NEW M.P.JEWELLERS’. So far as the respondent’s mark is concerned, it is registered with the monogram containing the letters ‘NMPJ’ as given below:-
12. There is no dispute that both the applicant as well as the respondent are carrying on the business in jewellery falling under class 14 of the Fourth Schedule of the Rules framed under the said Act. The claim of the applicant is that they have adopted the trade name ‘M.P.JEWELLERS’ since 1945 and registered the mark under the Trade and Merchandise Marks Act, 1958. They also produced under annexure ‘A” some of the notifications for registration of the same in other languages. The registered mark of the applicant is ‘M.P’ under No. 7000542 dated 4.3.96 which is in English. The trade mark No.700543 is in Bengali and trade mark No.700544 is in Hindi. Under annexure ’B’ the applicant has produced the invoices which bears the name ‘M.P. JEWELLERS’ from 1989 to 1999 which contains about 50 invoices. The applicant has also produced under annexure ‘C’ the advertisements. Apart from these documents they have also filed the interim orders granted in the civil suit instituted against the respondent and others under TS No.2/96, 3/97. In the application the applicant has furnished the sales statistics for the period from 1988-89 to 2002-03 which reveals that the sale Rs.38,46,890 in the year 1988-89 had increased to Rs.15,91,19.615 in the year 2002-03. Hence there is sufficient evidence on the part of the applicant that they have been using the trade name as well as the mark ‘M.P. JEWELLERS’ for a considerable period which attained reputation and goodwill and also had a distinctiveness in respect of the goods of the applicant.
13. In this regard our work is lessened because the only dispute raised by the learned counsel for the respondent is that the respondent’s mark is ‘NEW M.P.JEWELLERS’ and even assuming that the name may be identical, the mark being a composite one with the monogram which contains the letters ‘NMPJ’ and the name would definitely have its own dissimilarity. It was also contended that the logo with the name and the mark being a composite one, the same cannot be separated for the purpose of comparison with the mark of the applicant. We could have appreciated the contention of the learned counsel for the respondent if the logo mark and the name is being used as a trade mark in respect of the goods of the respondent in a visible manner. Here we are concerned with the trade name with which both the traders are to be identified. The applicant has to be identified as ‘M.P.JEWELLERS’ and the respondent will be identified as ‘NEW M.P.JEWELLERS’ In such identification the logo part of the mark has no relevance at all.
14. Both the applicant and the respondent are dealing in jewellery. Perhaps the jewelleries made by them may contain their mark which cannot be easily visible. In the business field and among the customers they should be known only by the trade name which has become the trade mark also. In such circumstances the question for consideration is whether the respondent’s name ‘NEW M.P. JEWELLERS’ along with its log mark would cause confusion or deception in the trade? We do not want to extract judgements except to quote a few. The High Court of Jammu and Kashmir in the case of Mohan Meakin Ltd., V. Kashmir Dreamland Distillery and Anr. Reported in 1990 IPLR 321 held that the trade mark ‘MMB’ and ‘MBB’ for whisky are identical and granted an order of injunction in favour of the plaintiff. Similarly the learned single Judge of Madras High Court in the case of Khoday Distilleries V. Scotch Whisky Association Scotland and others reported in AIR 1999 Madras 274 held that the mark ‘Peterscott’ in relation to whisky made in India was deceptively similar to ‘scotch’ and was likely to lead the consumers of whisky into thinking the whisky manufactured in this country and sold under the trade mark ‘Peterscott’ was also scotch whisky and such trade mark was ineligible for registration. In yet another case in P.L.Anwar Basha Vs. N. Natarajan AIR 1980 Madras 56, it was held that ‘Meen Mark Beedi’ used by both the parties are likely to cause confusion and deception within the meaning of section 2(b) of the Trade and Merchandise Marks Act, 1958. The Bombay High Court in the case of Tata Tea Limited V. Suruchi Tea Company reported in 2004 PTC 83 has held that Tata Tea of the petitioner therein and Suruchi Tea of the respondent are similar and likely to cause confusion on the ground that the overall similarity of the two marks has to be regarded with reference to the essential features and that the respondent has clearly not been able to discharge the fundamental requirements under section 11(a) of the said Act. The respondent therein furnished no cogent explanation as to how he came to adopt the trade design thus striking a resemblance of the mark of the appellant.
15. With the assistance of the above principles along with the principles laid down in other cases referred to in paras 8 to 10 supra, if we look at the two marks cum trade names we have no hesitation that the word ‘NEW’ added by the respondent in their trade name has no distinctiveness in respect of their goods as contemplated under section 9. The explanation offered by the respondent to adopt the name ‘NMPJ’ is that the word was coined from the initials of first letters of his name Madan Mohan Pal. Even if the first letters of the name is to be taken it can be ‘MMP’ and it cannot be ‘NMPJ’. Even if the respondent adopted ‘MMP’ as the trade name it is also highly doubtful whether the said mark would not cause confusion in the light of the judgement of the Jammu & Kashmir High Court reported in 1990 IPLR 321.
16. The deception or confusion is a question related to the consumer. So far as the jewellery is concerned we can have a judicial notice that the ladies in rural area would walk into a jewellery shop. But the educated and the higher strata of society always have a constant connection with a particular trader depending upon the various schemes announced by them or the concessions offered to them. There is a possibility that a few may have heard about the trade name which turn out to be the mark and try to visit the particular shop. In such circumstances on comparison of both the marks, we have no hesitation to come to the conclusion that there will be a confusion in the minds of the public. As already stated the adding of the word ‘NEW’ has no significance at all in respect of the goods of the respondent or even in its trade name. At the most the word ‘NEW’ would give an impression that the applicant has commenced a new shop under the same trade name ‘M.P. Jewellers’. In such circumstances the mark adopted by the respondent certainly would amount to deception and confusion and as such is prohibited for registration under section 11 (a) of the said Act. Hence the mark cannot be permitted any longer to remain in the Register of Trade Marks.
17. It was also contended by the learned counsel for the respondent by referring to the evidence filed by the applicant along with the application that the applicant had all along been dealing with only precious stones and not with gold jewels till the respondent commenced their business. We are unable to agree with the said contention of the learned counsel for the respondent. The applicant produced annexure ‘B’ series, the bills dealing with precious stones as well as jewellery, for which the applicant has obtained the registration. When it is a connected product falling under class 14, it is not open to the respondent to raise such a plea.
18. With regard to the date of commencement of business by the respondent is concerned, there is a dispute in that also. In para 9 of the counter statement the respondent has stated that in the year 1992 he honestly adopted the composite mark comprising letters ‘NMPJ;’ and the name ‘NEW M.P. JEWELLERS” in connection with his business in relation to gold and silver ornaments. In para 4 of the same counter statement it is stated that the respondent is carrying on the business of manufacturing and selling jewelleries since 1978 with the trade name ‘NEW M.P.JEWELLERS’. In para 3 of the affidavit filed as evidence in support of the impugned mark also the respondent has stated that sometime in the year 1978 he honestly adopted the trade name ‘NEW M.P.JEWELLERS’. In para 4 and 5 of the same affidavit also the same has been reiterated. But in the affidavit he has furnished only the sales statistics for the year 1990-91 and 1991-92 stating that the documents relating to the earlier years are not readily available. In para 9 he has stated that he honestly adopted the composite mark comprising the letters ‘NMPJ’ interwoven with each other making a monogram and the word ‘NEW MP JEWELLERS’ and furnished the sales statistics for the year 1992-93 to 1995-96. The documents produced by the respondent did not establish their business since 1978. There is absolutely no iota of evidence that the respondent adopted the trade name ‘NEW M.P.JEWELLERS’ in 1978. As already stated the trade name was adopted as a combination of the letters of his name Madan Mohan Pal also cannot be accepted. In fact under exhibit ‘B’ series at page 50 of the type set along with the evidence in support of the impugned mark, the respondent has filed the application for registration under the West Bengal Shops and Establishments Act which is dated 24.7.1992 wherein the date of commencement of business is given as 2.7.92. The registration certificate was issued on 30.9.1992 as seen from page 52 of the type set. The trade licence in the name of the respondent is also dated 9.7.92 which is clear from the exhibit ‘C’ series. Apart from that the respondent has also enclosed exhibit ‘D’ series, the invitation for the first anniversary which is in April, 1993 and the second anniversary in April, 1994 which would clearly establish that the respondent has started the business only in the year 1992, much later than the applicant. When the respondent started his business subsequent to the applicant, it is for him to explain as to why and how he adopted the impugned mark as well as the trade name. We are not satisfied with the explanation offered by the respondent. Even if the cause for adoption of the name is to be accepted when the mark offends the already registered mark then the same cannot be registered. Merely because the respondent’s mark has been registered as a composite mark it cannot be said that it is distinguishable from that of the applicant’s mark. When considering the customers and the goods dealt with by both the parties, unhesitatingly we find that the respondent’s mark would cause confusion as the same is similar and identical to that of the applicant’s mark. When the traders are to be identified by their trade name, which incidentally becomes their trade mark also, the similar names would definitely cause confusion. Hence the applicant has clearly established that the impugned mark has wrongly been registered by the Registrar of Trade Marks and consequently the same is liable to be cancelled. In view of the above finding there is no need for us to elaborately discuss the judgements cited by both the parties, as the principles laid down in various judgements are to be considered with facts and circumstances of that particular case.
19. For the reasons stated above, the Original Rectification Application is allowed and we direct the Assistant Registrar of Trade Marks, Kolkata to cancel the registration of the mark No. 690610 dated 14.12.1999 and also to expunge the same from the Register of Trade Marks. However, there will be no order as to costs.
(Dr.Raghbir Singh) (Justice S.Jagadeesan)
Vice-Chairman Chairman
wrk
Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board
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advocatemmmohan
- advocatemmmohan
- since 1985 practicing as advocate in both civil & criminal laws
Monday, March 19, 2012
INTELLECTUAL PROPERTY APPELLATE BOARD 13. In this regard our work is lessened because the only dispute raised by the learned counsel for the respondent is that the respondent’s mark is ‘NEW M.P.JEWELLERS’ and even assuming that the name may be identical, the mark being a composite one with the monogram which contains the letters ‘NMPJ’ and the name would definitely have its own dissimilarity. It was also contended that the logo with the name and the mark being a composite one, the same cannot be separated for the purpose of comparison with the mark of the applicant. We could have appreciated the contention of the learned counsel for the respondent if the logo mark and the name is being used as a trade mark in respect of the goods of the respondent in a visible manner. Here we are concerned with the trade name with which both the traders are to be identified. The applicant has to be identified as ‘M.P.JEWELLERS’ and the respondent will be identified as ‘NEW M.P.JEWELLERS’ In such identification the logo part of the mark has no relevance at all.
