INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018
M.P. No.125/2010 in OA/26/2010/TM/CH
AND OA/26/2010/TM/CH
WEDNESDAY, THIS THE 4th DAY OF APRIL, 2012
Hon’ble Smt. Justice Prabha Sridevan … Chairman
Hon’ble Ms.S. Usha … Vice-Chairman
Shalimar Chemical Works Limited,
an Indian Public Limited Company
of 92E, Alipore Road,
KOLKATA-700027.
INDIA.
(Represented by M/s. Trade Mark Registration
Bureau. 1, Netaji Subhas Road, Kolkata-700001,
India). … Appellant
(By Advocate: Dr. Alok M. Saha)
Vs
1. The Deputy Registrar of Trade Marks
Trade Marks Registry at Chennai,
Intellectual Property Building,
G.S.T. Road, Guindy,
Chennai-600032.
2. The Registrar of Trade Marks
Trade Marks Registry at Chennai,
Intellectual Property Building,
G.S.T. Road, Guindy,
Chennai-600032.
3. Magaraj Bhandari Jain trading as
MAARAJ THE HOME MAKER SHOPEE,
28-1-42, Eluru Road,
Vijaywada,
Andhra Pradesh. … Respondents
(By Advocate: Shri P.C.N. Raghupathi)
ORDER(No.74/2012)
Hon’ble Ms.S. Usha, Vice-Chairman:
Appeal arising out of the order dated 15.1.2010 passed by the Deputy Registrar of Trade Marks dismissing the opposition – (a) No.MAS-739124 to application No.1574350 in Class 30, (b) No.MAS-739125 to application No.1574351 in Class 21, (c) MAS 739126 to application No.1574349 in Class 32 allowing the applications for registration of a trade mark containing the words “The Chef” and the device of “CHEF” with the word “MAARAJ” to proceed to registration.
2. The appellant herein is one of the leading and most reputed company in India and dealing in all goods of manufacturing and marketing quality edible oil, toiletries, coconut oil, cosmetic products, masala, spices of various kinds, butter, ghee, milk and dairy products and goods allied thereto. In the year 1941 they adopted the trade mark “SHALIMAR” from the initial of their trading style and has been using continuously in respect of wide range of goods and services. The said name “SHALIMAR” is the appellant’s house mark.
3. The appellant with a view to diversify and expand its business, originated and adopted various other trade marks for use in relation to different products manufactured by them. One such trade mark is “CHEF” which was adopted by the appellant in the year 1994 and have been using the same for various goods particularly spices, edible oils, edible products culinary preparations, ready-to-eat products which are directly and indirectly used in the household kitchens, restaurants, hotels etc. Enormous goodwill and reputation has been achieved by the appellant on the trade mark CHEFowing to the continuous and extensive use since 1994. They have also promoted and popularized the said trade mark by widespread advertisement and publicity in various modes. They have spent a substantial amount for making such sales promotional campaign during the last sixteen years.
4. The consuming public exclusively identified the trade mark “CHEF” in relation to various edible products, edible oils, spices, husk(edible), confectionaries and allied goods having direct nexus with products as emanating from the appellant’s business. The trade mark “CHEF” has acquired a special distinctiveness by way of such large and widespread sale promotional activity. The mark has also acquired a secondary meaning and is understood in an arbitrary sense by the consumers when used in relation to the appellant’s goods. The appellant has been using the trade mark “CHEF” either in conjunction with its house mark “SHALIMAR’S” or severally in the course of its business.
5. The appellant has been vigilant in action against various infringers and has also been successful in the last several years. The appellants have duly registered their trade mark “CHEF” word per se in various classes, namely, Class 29, 32,31 and 30. The appellants have also registered their trade mark “CHEF” with the device of “CHEF” in different classification of goods.
6. The appellant had applied for and obtained registration of its various labels/pouches/wrappers under the Copyrights Act.
7. The said respondents herein have applied for registration of the trade mark containing the expression “The Chef” with the device of “CHEF” and the word “MAARAJ” on 29.6.2007 in three different classes, namely, Class 30, 32 and 21 under Application Nos.1574350, 1574349 and 1574351 respectively. The applications have been claimed as “proposed to be used” mark. The said applications were advertised in the Trade Marks Journal No.1404 dated 16.11.2008 in pages No,.3385, 4195 and 4571 respectively. The appellants herein opposed the above applications on the ground that the mark was not distinctive nor capable of distinguishing the goods of the respondent as on the date of application or on the date of hearing of the oppositions. The mark was “proposed to be used” which is identical/deceptively similar with the appellant’s established, well-recognized and registered trade mark “CHEF” with the device of “CHEF/SHALIMAR’S CHEF” in respect of same/similar description of goods.
8. The expression “MAARAJ” was intentionally given in the impugned trade marks to camouflage the applications for registration and under the garb of the expression “MAARAJ” is not and cannot be entitled to usurp the appellant’s established right in the trade mark. The impugned trade mark as applied for is constructionally, visually and thematically identical with the appellant’s prior adoption, use and registered trade mark. The use and registration of the impugned trade mark by the respondent would cause deception and confusion amongst the ordinary consumers who are acquainted with the appellant’s trade mark “CHEF” used for several years. The very adoption of the impugned trade mark was unfair and malafide in order to gain profits out of the goodwill earned by the appellant. The impugned trade mark was not used on the date of application, that is, on 29.6.2007. In fact in the Counter Statement filed before the Registrar respondents have claimed that they adopted the impugned trade mark in the year 2005 after carrying out a search in the records of the Trade Marks Registry. The third respondent has not filed any evidence therein in support of the impugned trade mark either from 2005 or 2001 or thereafter. There was no attempt made by the respondent to amend the date of user. The respondent tried to take shelter of the registration of the expression but the same was not logical and the registration for the mark “MAARAJ” is in different classifications and for different items of goods which cannot be equated with the impugned applications in Classes 30, 32 and 21. Evidence produced by the third respondent does not mention the impugned trade mark. On the contrary, it clearly reveals the fact that the third respondent was a dealer making “second sales” of the goods manufactured by others.
9. The third respondent contended in the oppositions that the word and device of “CHEF” is common to the trade and could be subject of appropriation by all since no exclusive right in the word or device of “CHEF” was vested with the appellant. The respondent had not produced any single document or evidence to prove the same except for a bare statement that the word “CHEF” and the device “CHEF” are common to the trade. The 1st respondent had passed the impugned order with the finding that the trade mark “CHEF” and/or the device of “CHEF” is common to trade, the opponents mark in respect of the goods falling in Class 30 are highly descriptive and therefore cannot be distinctive. While comparing the rival marks, the appellants mark consists of the words “Shalimar” which is prominently written along with the device of “CHEF” and the word “CHEF” whereas the respondents trade mark consists of the word “Maaraj” prominently written along with the word “CHEF” and device of “CHEF”. Based on these, it is clear that the marks are totally different. The respondents trade mark has been in use since 2007 and the appellants has not proved any confusion or deception and therefore the appellants cannot claim any exclusive right over the word and the device of “CHEF”. Consequently, the oppositions were disallowed and the applications were allowed to proceed for registration.
10. Aggrieved by the said order, the appellant filed the appeal on various grounds. The appellants prayed that the instant appeal arising out of the order dated 15.1.2010 be dismissed and the application be refused registration.
11. The third respondent filed their counter statement. A preliminary objection raised by the third respondent was that a certificate has already been issued and the present appeal is not maintainable and that the present appeal is not filed within the limitation period.
12. The third respondent stated that they are the proprietors of M/s. MAHARAJ the Home Makers Shopee during the year 2001. The third respondent started the business and was engaged in the business of marketing and selling domestic appliances used for lighting, heating, steam generating, cooking etc. They are also trading in Namkeens, potato chips, biscuit etc. They have resources and intend to diversify into other business activities. In or about 2001 in order to distinguish their goods they adopted the trade mark “MAARAJ” by deleting letter ‘G’ from his personal name and substituting ‘A’ in its place. The trade mark “MAARAJ” is a coined, new mark and is fanciful having no obvious meaning and is a distinctive trade mark.
13. The respondent is a prior adopter and user of the trade mark. As they adopted and immediately started using the trade mark and have been continuously and extensively using the trade mark in relation to the goods mentioned above and as a consequence of such use the trade mark “MAARAJ” is associated with the respondent and has acquired distinctiveness. They are also the registered proprietors of the trade mark “MAARAJ” in Classes 9,7 and 11. The respondents are the exclusive proprietors to the trade mark “MAARAJ”. The trade mark “MAARAJ” has become a well known trade mark.
14. In or about 2005 the respondent coined and adopted the composite label mark having the word “MAARAJ” as main and prominent feature with the fanciful expression “CHEF” and the device of “CHEF”. Before adopting the trade mark the respondent had taken abundant precautions to see if the mark was registered or pending. It is only after being satisfied that there is no similar trade mark either pending or registered the respondent had commenced use of the impugned trade mark. By virtue of such use the said trade mark has become distinctive and is capable of being distinguished. The respondent has placed evidence before the Registrar to support large scale of use and also to prove their sales promotion activities. The rest of the contentions made in the memo of appeal were denied by the respondent.
15. The appellant herein filed their reply denying the averments made in the Counter Statement.
16. We have heard Dr.Alok M. Saha, the learned Counsel for the appellant and Shri P.C.N. Raghupathi, the learned Counsel for the respondent on 9.12.2011.
17. The learned Counsel for the appellant submitted that the application made by the respondent was for the mark “MAARAJ” along with the words “CHEF” and device of “CHEF”. The appellant have been using the mark “CHEF” with the device of “CHEF” since 1994. The Counsel also submitted that the mark “CHEF” had acquired distinctiveness owing to the long and continuous use since 1994. The mark had also acquired a secondary meaning and is associated with the appellant’s goods amongst the public. The Counsel also drew our attention to the notice of opposition at para 17 where it is stated that the appellant’s trade mark “CHEF” with the device of “CHEF” or without the device of “CHEF” has acquired immense reputation that it is not only restricted to the goods manufactured by the appellant company but such goodwill extends to goods which are cognate and/or allied in nature and goods of the same description and the goods which are substantially purchased by the same class of people and used for similar purpose. The Counsel also pointed out that the fact that the respondent’s trade mark was “MAARAJ” for which they have obtained registration was also brought to the notice of the Trade Marks Registry. The Counsel further submitted that the respondent did not make any search before applying for the impugned registration. If the respondents had really made a search the appellant’s mark would have been available as a conflicting mark on the register.
18. The appellant’s Counsel has produced the trade mark caution notices right from the year 1997 which have been filed as Annexure ‘A’ up to the year 2007. The appellants have also filed various invoices based on advertisement cuttings since the year 1996 which are marked as Annexure ‘B’ and ‘C’. The appellants have given a list of the registrations along with the certificates which are marked as Annexure ‘E’. They have also given a list of oppositions filed by the appellant against various third parties. The same is marked as Annexure ‘F’. Annexure ‘G’ are the various orders passed by the Trade Marks Registry in the opposition proceedings with the third parties. Annexure ‘H’ are the copy right registration certificates. The Counsel then pointed out the evidence in support of application filed by the respondent at para 13 wherein the respondent has stated that by oversight the date was claimed as “proposed to be used”. In fact they have been using since the year 2001 for which there is no evidence. That apart, the respondents have not taken out any steps to get the date amended as per their claim. The respondents have given sales figures along with their evidence in support of application where the sales figures are from the year 2005 and not earlier and they have not given any reason or explanation as to why the evidence from the year 2001 has not been given which only goes to show that if at all they have used it, it is only after the date of application and not prior to that, i.e., after 29.6.2007. The Counsel also pointed out that in the impugned order the Deputy Registrar has referred to the word “CHEF” as common to the trade but that was not offered by the respondent either in the Counter Statement or in his evidence in affidavit. The Counsel then referred to Section 28 of the Act. The Counsel then referred to the trade marks registration obtained by the appellant as regards Class 33 and Class 31. The Counsel then relied on various judgments:
(i) (1907) 24 RPC 697 – Boord & Son v. Thom and Cameron Ld. – Thom and Cameron Ld. V. Boord & Son
(ii) AIR 1969 Mad 126 – The Andhra Perfumery Works Joint …Vs. Karupakula Suryanarayaniah
(iii) 2005 (30) PTC 1 (SC) – Godfrey Philips India Ltd., Appellant Vs. Girnar Food & Beverages (P) Ltd., Respondent
(iv) AIR 1974 MADRAS 7 (V 61 C 5) – K.R. Chinnikrishna Chitty, Appellant Vs. K. Venkatesa Mudaliar and another
(v) 2005 (31) PTC 330 (IPAB) – Jain Electronics, Appellant Vs. Cobra Cables (P) Ltd. & Anr., Respondents
(vi) 2010 (44) PTC 448 (Cal.) – R.R. Proteins and Agro Limited, Appellant Vs. Hari Shankar Singhania and Anr., Respondents
(vii) AIR 1955 SC 558 – Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd.
(viii) AIR 1958 Bom 56 – Ciba Ltd. Vs. M. Ramalingam and S. Subramaniam
19. In reply, the Counsel for the respondent contended that the impugned mark was with regard to the “MAARAJ” and “The Chef” with the device of “CHEF”. The word “The Chef” was small in letters and the device is also not that prominent. The appellant though applied for registration of the word “CHEF” for various goods have not used the same. In reply to the appellant’s arguments that the words “CHEF” were not common to the trade concerned, the respondent submitted that the list of various oppositions filed by the appellants against various third parties as a proof thereof. Though the appellants have applied and obtained registration in Class 21, 30 and 32, the appellants have not used the mark in respect of Class 21 and Class 32. Even in Class 30 the appellant has used it for “Masala” and not for “Butter” as claimed in their application for registration. The Counsel finally contended that the appellant had no objection to the registration of the mark “MAARAJ” and had objected to the registration of the word and device of “CHEF”. So the registration should not be refused as the word and device of “CHEF” are not a prominent feature in the label applied for registration.
20. In the rejoinder to the reply, the Counsel for the appellant submitted that the 77 oppositions does not prove that the mark “CHEF” is common to the trade and therefore that the mark “CHEF” is common to the trade passed by the Registrar in the impugned order is neither pleaded by the respondent nor substantiated by any cogent evidence. Therefore the mark deserves to be refused allowing the appeal.
21. We have heard both the Counsel and considered their arguments and have gone through the pleadings and documents.
22. The impugned trade mark applications are given hereunder:
23. It appears from the labels seen above, the application for registration has been filed on 29.6.2007 as proposed to be used. The marks therefore cannot be said to have acquired distinctiveness. The respondents have no explanation for the adoption. The only reason given by them is that the word “MAARAJ” was adopted as the mark “MAARAJ” is phonetically similar to their applicants/respondents name “MAGARAJ”. As regards the use of the trade mark “MAARAJ” the appellants have themselves admitted that they have no objection for the respondents using the trade mark “MAARAJ” except the word “CHEF” and the device of “CHEF”. When there is no reason for the adoption for the word and device of “CHEF”, then it would be only to trade upon the goodwill earned by the appellants. The respondents have not produced any evidence to prove their user as to the present mark. Even if we are to accept the respondents contention that they had been using the trade mark since 2001 and by oversight it was stated as proposed to be used in the impugned application, the respondents have not filed any evidence in support thereof.
24. The issue of common to trade was not pleaded by the respondent though had been dealt with by the Registrar in the impugned order was the other contention of the applicant. We have gone through the pleadings before the Registrar in the opposition proceedings and find no such plea raised by the respondent. When it is not pleaded by a party the Registrar could not have dealt with. The Registrar ought to have granted an opportunity to the parties to advance their arguments and then decided the issue of common to trade. Therefore the finding that the word and device of “CHEF” is common to trade does not sustain.
25. In an opposition proceedings, the onus is on the applicant for registration to prove his case. The respondent herein who is the applicant for registration has failed to satisfy that the registration if granted would not cause any confusion or deception.
26. The respondent’s adoption in our considered opinion is not honest. When the adoption is dishonest, the respondent cannot be said to be the proprietor of the trade mark. It is also stated that when the adoption is dishonest any amount of user will be of no use. The respondents when are not the proprietors of the trade mark the registration would then be in contravention of Section 18 of the Act.
27. The class of customers are to be considered while deciding the question of similarity. The word and device of “CHEF” is the feature which is likely to cause confusion among the public. The class of customers in the instant case would be both literate and illiterate people who would go by the overall artistic work. Therefore there is every possibility of confusion being caused among the public.
28. For the above reasons, we are of the view that the impugned trade marks cannot be granted registration. Consequently, the appeal OA/26/2010/TM/CH is allowed and the impugned order is set aside. No order as to costs. Miscellaneous Petition No.125/2010 in OA/26/2010/TM/CH is closed.
(S. Usha) (Justice Prabha Sridevan)
Vice-Chairman Chairman
(This order is being published for present information and should not be taken as a certified copy issued by the Board.)
