INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018
M.P.No.32/2010
in
OA/15/2010/TM/CH AND OA/15/2010/TM/CH
FRIDAY, THIS THE 18th DAY OF MAY, 2012
Hon’ble Smt. Justice Prabha Sridevan … Chairman
Hon’ble Ms.S. Usha … Vice-Chairman
M/s. Three-N-Products Pvt. Ltd.
2/12 West Patel Nagar
New Delhi-110008. … Appellant
(By Advocate: Shri Gopal Trivedhi)
Vs
1. M/s. Alex Resorts and Hotels Pvt. Ltd.
21/1, Rest House Road,
Bangalore,
Karnataka.
2. Deputy Registrar of Trade Marks
Trade Marks Registry
Intellectual Property Building
G.S.T. Road
Guindy
Chennai-600032. … Respondents
(By Advocate: Shri K. Subbu Ranga Bharathi)
ORDER(No.118/2012)
Hon’ble Smt. Justice Prabha Sridevan, Chairman:
This appeal is against the impugned order granting registration of the trade mark “AYURTHEERAM” for the services “Ayurveda Hospital and Resorts” included in class 42 subject to confining the services in the States of Kerala and Karnataka.
2. The respondent is the applicant who succeeded before the Registry. They claimed user from 1.6.2005. Their application No.1384396 was made on 12.9.2005. It was advertised before acceptance in the Journal No.1349 dated 1.8.2006.
3. The appellants filed their notice of opposition. According to them they are a reputed company engaged in the business of manufacturing/marketing, bleaching preparations, cleansing, soaps, cosmetics and a variety of such products. They have been in the market since 1984. They adopted the mark “AYUR” openly, continuously and extensively. They are the registered proprietors of the mark in several classes. They have also obtained foreign registrations. They have obtained copyright registration for the particular design of the label “AYUR”. They opposed the impugned mark on the ground that it was dishonest and intended to trade upon the goodwill and reputation of the appellants.
4. The respondent’s case was that they had adopted the mark in 2005 and they are engaged in service industry and running Ayurvedic clinics in Kerala. They gave proof of their established reputation.
5. After hearing both sides the Learned Registrar was of the opinion that “AYUR” is a generic word and no one can claim exclusive right to the said word and that there is no evidence of confusion.
6. The learned Counsel for the appellant submitted that the respondent is not consistent about the date of user and is not certain whether they started using the mark from 1999 or 2005. The learned Registrar did not consider the effect of Section 11 of the Trade Marks Act, 1999. The appellant’s mark was already registered on the date of the respondent’s application. The time between the alleged date of user, that is, 1.6.2005 and the date of application was not enough to establish distinctiveness. The explanation given for adoption of the name is not acceptable. The appellant also has Class 42 registration and outlets in Delhi and “AYURGRAM” registration from 2003. He relied on 2010 (43) PTC 311(Del) – Three-N-Products Pvt. Ltd., Plaintiff Vs. Holistic Health Care Pvt. Ltd., Defendant, 2001 (2) CTMR 514 (Del) – Three-N-Products Pvt. Ltd., Plaintiff Vs. Yashwant and others, Defendants, 2009(40) PTC 275 (IPAB) – Three-N-Products Private Limited, Applicant Vs. Amalco Herbal Products, Respondent, 141(2007) Delhi Law Times 609 – Ayurherbs Pharmaceuticals Pvt. Ltd., Petitioner Vs. Three-N-Products Private Ltd., Respondent, 2007 (34) PTC 515(Cal) – Three-N-Products Private Ltd., Petitioner Vs. Karnataka Soaps & Detergents Ltd. & Another, Respondents.
7. The learned Counsel for the respondent submitted that “AYURTHEERAM” is a full fledged Ayurvedic hospital and has been awarded Green Leaf classification in Kerala. They coined the word from “Ayu” which means “life” and “Theeram” land. “AYURTHEERAM” mark is a mark that is known overseas too. It was adopted bonafide. The sales turnover is huge. ‘Ayur’ is a generic word. In 2004 (28) PTC 59 (Bom) – Ayushakti Ayurved Pvt. Ltd. Vs. Hindustan Lever Limited, it was held that Ayush and Ayurshakti were not similar. He relied on A.P.O. No.248 of 2008 in C.S. No.204 of 2007 – Three-N-Productrs Private Limited Vs. Emami Limited a judgment of the Division Bench of the Hon’ble Calcutta High Court.
8. The word “Ayur” means “life”. It is a generic word. It can not be appropriated by anyone excluding all.
9. In 2001 (2) CTMR 514 (Del) (cited supra), Ayur was held to be a meaningless invented word and on the basis of priority an order of injunction was granted to the respondent. In 2010 (43) PTC 311(Del) (cited supra) the appellant got interim relief on the basis of priority of user. In 2009 (40)PTC 275(IPAB) (cited supra) the IPAB held that a dictionary word can not be allowed registration unless distinctiveness is proved and that “AYUR” is a generic word. Having held so, the IPAB removed Ayurgreen. In Delhi Law Times 609 (cited supra) “Ayur herbs” was removed at the instance of the appellant herein. In 2007 (34) PTC 515(Cal( (cited supra) the appellant used seniority of user and obtained injunction.
10. But as against all these judgments we have the judgment of the Division Bench of the Calcutta High Court (cited supra). The Learned Judges held that “the word “Ayu” or “Ayur” cannot be said to be the particular invented words”. They held that the appellant cannot claim exclusive right over those words because “Ayu” means longevity and “Ayur” denotes Ayurveda. They felt that “the plaintiff cannot legitimately claim that those words should in “no case” be used by any other person…” and a small variation should be sufficient to avoid confusion. The judgment of the Division Bench of the Hon’ble Calcutta High Court, guides us.
11. In the present case there is no proof of confusion. The respondent has acquired a great degree of reputation for providing such services. The State has in fact honoured the respondent.
12. No one will mistake “AYUR” and “AYURTHEERAM” as identical or even deceptively similar. The letter enclosing the “Green Leaf” classification to the respondent shows that Ayurveda has been elevated as USP of Kerala Tourism. The respondent is a full-fledged resort in the Kerala backwaters. They claim to have therapy rooms. The respondent has shown in its balance sheet expenditure under the head “Ayurvedic expenses” or “Ayurvedic Centre” expenses. In the balance sheet as on 31.3.2002, secured loan on the landed property at Komarakom Village is shown According to tradition, Ayurveda is the “science of life”.
13. It is true that the appellant has obtained registration for “AYUR” for a variety of class of goods. Their user may be from 1984.
14. But we have decided today that the appellants herein is not entitled to claim proprietorship over the mark “AYUR” and we have ordered removal of the mark in TRA/138/2004/TM/DEL, TRA/139/2004/TM/DEL and TRA/116 to 118/2004/TM/DEL. We have held that “AYUR” is generic which has a dictionary meaning and is not an invented word and the appellant cannot appropriate “AYUR” excluding everyone else from using it legally as a mark. In view of the above and the decision of the judgment of the Hon’ble Calcutta High Court we will not interfere with the impugned order.
15. Appeal OA/15/TM/CH/2010 is dismissed with costs of Rs.10,000/-. Miscellaneous Petition No.32/2010 is dismissed as infructuous.
(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.)
