INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex, Annexe-1, 2nd Floor, 443 Anna Salai, Teynampet,
Chennai–600018
(Circuit Bench Sitting at Delhi)
OA/76/2004/TM/DEL
WEDNESDAY, THIS THE 14TH DAY OF SEPTEMBER, 2011
Hon’ble Smt. Justice Prabha Sridevan … Chairman
Hon’ble Ms. S. Usha … Vice Chairman
M/s Mazda Motor Corporation
3-1, Shinchi, Fuchu-Cho,
Aki-Gun, Hiroshima-Ken,
Japan. ... Appellant
(By Advocate: Shri Saurabh Banerjee)
Vs.
1. The Assistant Registrar of Trade Marks,
Baudhik Sampada Bhawan,
Plot No. 32, Sector 14, Dwarka,
New Delhi – 110 075.
2. The Registrar of Trade Marks,
Baudhik Sampada Bhawan,
Plot No. 32, Sector 14, Dwarka,
New Delhi – 110 075.
3. M/s Sahu Sewing Machine Co.,
Maya Bazar, Gorakpur,
Uttar Pradesh. … Respondent
(By Advocate: Shri Saurabh Kapoor for R3)
ORDER (No.136/2011)
Hon’ble Justice Prabha Sridevan, Chairman:
The appellant is a Japanese Company manufacturing passenger cars and commercial vehicles. The respondent is a proprietorship concern manufacturing and marketing sewing machines and its spare parts. The appellant has registered the trade mark MAZDA under No:537370 on 21.09.1990 in Class 12, and under No:438860 on 11.07.1985 in class 9, and under No:169342 in class 12 on 02.06.1955, and they are valid and subsisting. The respondent applied for registration under No: 590865 in Class 7. The appellant opposed it. The Registrar ordered the respondent’s mark to proceed to registration and disallowed the opposition. Against that order this appeal has been filed.
2. The matter came up before us at the Circuit Bench Sitting at Delhi on 03.08.2011. Learned counsel Shri Saurab Banerjee appeared for the appellant and Shri Saurab Kapoor, learned counsel appeared for the respondent No.3.
3. The case of the appellant is that their mark is well-known. The appellant was founded in 1920 and began automobile production in 1931. Their trademark is represented in a typical design with a small ‘m’ followed by a small ‘a’ followed by a capital Z and then a capital D and finally a small “a”. It is not an ordinary word but taken from Ahura Mazda the name of a deity in Zoroastrianism. The appellant exported three wheeled lorries to India from 1933 and after an interregnum due to World war resumed supply in 1949. In 1985 there was a joint venture which is Swaraj mazda, manufacturing trucks and lorries in Chandigarh. The trademark and trade name represents dependability and reliability and there is a great good will and reputation. Its product are available over the world. Any user of Mazda by others will lead to confusion and deception. The appellant came to know of the respondent’s application from the Trade Mark Journal dated May 16 2000, and opposed it.
4. The case of the respondent is that they adopted the trademark from 1.4.97.and have been continuously using it. The respondent’s business is an extensive one, and the goods are supplied to the major parts in the country. The mark has become distinctive and associated with their goods. The respondents have extensively advertised their goods and they are the proprietors because of their honest adoption and user. The appellant has not proved user.
5. The Registrar held that the appellant had not proved user, and that the respondent had adopted it honestly and bonafide, and was therefore entitled to register the mark.
6. The learned Counsel for the appellant submitted that the appellant’s mark was registered, and that there was evidence to show the reputation of the joint venture Swaraj Mazda, that the mark was registered in several countries. He referred to the September edition of Mazda in brief (Exhibit-C), which was proof of the formidable reputation of the appellant, he also referred to the annual report of Swaraj Mazda (Exhibit-D), to Exhibit–E etc. which referred to Swaraj Mazda ambulance etc. The learned counsel submitted that when there is no explanation from the respondent for adopting the mark MAZDA with lettering identical to the appellant, the adoption is clearly malafide. When the adoption is dishonest no right can flow from it.
7. The learned counsel for the respondent submitted that the word MAZDA is a dictionary word , and anyone can adopt it, he referred to the evidence to show their sales, their invoices from 1998 and the advertising in Doordarshan even from1998, so their user was established, while the appellant may show brochures of Mazda , but no sales. The fact that Swaraj Mazda was sold in India is neither here nor there. According to the learned counsel for the respondent the impugned order was correct and must be confirmed.
8. Both the counsel also relied on several decisions.
9. We have considered the submissions.
10. We just reproduce the mark used by the appellant and the respondent.
Trade Mark of the Appellant Trade Mark of the Respondent
It is really a case of res ipsa loquitor. The word is Mazda, the use of small ‘m’, then small ‘a’ then capital Z written in a particular manner with the break where the horizontal lines meet the oblique one, capital D and small ‘a’ again.
11. The appellant adopted the name MAZDA in 1920 though not in India. The word is taken from the name of the Zoroastrian deity Ahura Mazda. The respondent does not specifically deny the reputation built by the appellants for their products on an international level except for a mere denial in the counter statement. The respondent cannot and does not deny that the appellant has a global presence. The activities of the joint venture Swaraj Mazda cannot be denied either. The case of the respondent is that the appellant has not proved the user of the mark “Mazda”, in India. It must be admitted that there is no evidence of sale of goods under the mark “Mazda’ by the appellant. But is it necessary? There is no explanation why and how this respondent in Gorakhpur adopted the mark “Mazda”. We may find the word ‘Ahura Mazda’ in the dictionary word, but that does not make it a dictionary word. A dictionary word is a common-place word which can strike the mind of any person when he wants to choose a name for his goods. Ordinary words like names of flowers or animals or attributes, like Modern, Lion, Robin used in isolation may be defended as dictionary words, but is the choice of the word Mazda from Ahura Mazda honest? It begs the question. Then is the choice of the letters too coincidental? When someone chooses a mark where the copying is not even camouflaged, we may as well give him the credit for his endeavour. The adoption of the word Mazda is blatantly dishonest. There is not a doubt about the intent to ride on the wave of the appellant’s reputation.
12. When this dishonesty is so apparent, we need not look any further. However we will just refer to the decision.
13. In TA/183/2003/TM/DEL Shri Parshotam Rai vs The Assistant Registrar of Trade Marks and anr., the mark SONY was adopted by a maker of brief cases. This Board held that the adoption of the mark was only to unlawfully gain the profit from the good will earned “by SONY Corporation. This applies to the case on hand
14. In TA/321/2004/TM/DEL Philips Electronics NV and anr., vs. Smt. Kanta Arora and anr., the word PHILIPS was adopted by manufacturers of time pieces and wall clocks. This was not accepted by this Board. This applies to this case
15. In TA/321/2004/TM/DEL (supra) in the second round again the board held that the adoption of the mark ‘PHILIP’ was manifestly dishonest.
16. In AIR 1994 Del 239 Daimler Benz Aktiegesellschaft and anr., vs. Hybo Hindustan, the mark was BENZ. . The adoption was held to be dishonest. This is very similar to this case, for there the foreign company had collaborated with TATA. The learned judge held that no one can plead ignorance of the mark “BENZ”
17. In 2003 (26) PTC 1 (Del) Honda Motors Co., Ltd., vs. Mr. Charanjit Singh and Ors., the mark adopted was HONDA. An attempt was made that it was the name of Honda Singh. The learned judges rejected this contention and held that the adoption was not honest but intended to create a subtle connection with the plaintiff which had a global reputation.
18. In MIPR 2009 (2) 125 Sony Kabushiki Kaisha vs. M/S. Mahaluxmi Textile Mills the Full Bench of the Hon’ble Calcutta High Court held “that similarity of the goods…..this factor.” There again the mark was SONY.
19. In AIR 1969 Bombay 24 Sunder Parmanand Lalwani and Ors., vs. Caltex (India) Ltd., the mark was Caltex , the Division Bench held “On the facts of this case, we have no hesitation in holding that a large number of persons, if they see or hear about the mark “Caltex” in connection with watches, would be led to think that the watches were in some way connected with the opponents, or they would at least wonder whether they were in any way connected with the opponents. Persons seeing the mark attached to watches, which is a new class of goods, would assume, or are most likely to assume, that they originated from the proprietor of the mark, namely, the opponents”.
20. In Vazir Sultan case the Hon’ble Supreme Court held that in the case of two proprietors of the same mark, the orders of the Registrar limiting the registration to particular goods, was not unjustified. The respondent cannot take advantage of this decision since we find that the adoption of the mark is tainted.
21. There is a common thread in almost all the above cases. The adopted mark has a global reputation and there is a modest manufacturer who had adopted the mark allegedly honestly. It is a matter of regret that the small manufacturers appear to think that they can hijack any famous mark for their goods, which are or may be unconnected with the goods manufactured bearing the globally known mark. They do not seem to understand that honesty can neither be qualified nor compromised. And when the complainant is a foreign company, one feels that in some way the national prestige has been tarnished in the global arena.
22. The respondent may have established user from 1998, by producing invoices etc, and the appellant has show no evidence of the user of the Mark, but there is no getting away from the fact that there is no honest adoption of the mark by the respondent. There is no explanation either for the choice of the word Mazda, or for the choice of the font.
23. The appellant succeeds. The appeal is allowed. No order as to costs.
(S. USHA) (JUSTICE PRABHA SRIDEVAN)
VICE-CHAIRMAN CHAIRMAN
PSN
(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)
