INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018
(CIRCUIT SITTING AT DELHI)
OA/31/2007/TM/DEL
FRIDAY, THIS THE 18th DAY OF MAY, 2012
Hon’ble Smt. Justice Prabha Sridevan … Chairman
Hon’ble Shri V. Ravi … Technical Member (Trade Marks)
M/s. Kaya Kalyan Industries (AYUR)
acting through its Sole Proprietor
Sri Bhartinder Kumar Malhotra
Motibagh
FAIZABAD-224001. … Appellant
(By Advocate: Shri Vijay Verma)
Vs
1. M/s. Three-N-Products Pvt. Ltd.,
2/12, West Patel Nagar
New Delhi.
acting through its Director Shri Manminder Singh
2. Deputy Registrar of Trade Marks
New Delhi. … Respondents
(By Advocate: Shri Shailen Bhatia, Ms. Jubli Momalia)
ORDER(No.119/2012)
Hon’ble Smt. Justice Prabha Sridevan, Chairman:
The appeal is against the refusal of registration of the mark “KAYA KALYAN TEL” under No.823144 in Class 5. The appellant claims that he is using KAYA KALYAN TEL from 1977. He is the first and prior user of the trade mark KAYA KALYAN TEL. They claimed that the word KAYA KALYAN INDUSTRIES (AYUR) will not amount to confusion and deception as stated by the respondent herein. They stated that “AYUR” is not an invented word, it is the short form of Ayurveda.
2. The respondent claims that they are the bonafide owners of business in ayurvedic medicinal preparations. The trade mark 504095 in Class 5 was registered in respect of face pack kit for skin treatment and several applications. They claim that they have extensive sales. KAYA KALYAN INDUSTRIES (AYUR) is similar to their renowned trade mark “AYUR”. Their trade mark “AYUR” is registered in Classes 3,5,7,10,11,13,14,15,16,18,20,21,27 to 34, 41 and 42. The mark is associated with the goods manufactured and marketed.
3. The Deputy Registrar gave a finding that though the applicants have stated that they have been using the mark from 1977, no sales figures have been filed. The certificate of sales tax also do not reveal user and it is also noted that the applicant has used the word “AYUR” prominently along with his trade mark KAYA KALYAN TEL. Therefore according to the Registrar, the objection raised under Section 9 of the Trade Marks Act, 1999 (in short ‘Act’) is maintainable and also the objection under Section 11 of the Act as regards the use of the word “AYUR” along with applicant’s trading style. Applying (1993) IPLR 63 at p.597 – Apple Computer vs. Apple Leasing and Industries the Registrar held that the adoption of “AYUR” as trading style is dishonest.
4. The learned Counsel for the appellant submitted that the marks are not similar and that there is no likelihood of causing confusion and that the appeal should be allowed.
5. The learned Counsel for the respondent submitted that the order of the Deputy Registrar shall not be interfered with.
6. The evidence filed by the appellant are advertisements in newspapers showing the sale of KAYA KALYAN TEL in 1999. It is also seen that they had obtained a search report which shows that there was no trade mark identical with or deceptively similar to the mark applied for. There is a copyright registration of the year 2001 which clearly shows that the mark along with trading style, had been adopted in the year 1978. The enclosure 14 is a sales tax order of the year 1978-79, enclosure 15 is for the year 1984-85. Enclosure 16 is dated 1.4.1983. This is another document issued by the Sales Tax authority which is of the year 1984. In these documents the appellant is described as “SARVASHRI KAYA KALYAN INDUSTRIES AYURVEDIC” in devanagiri script or “SARVASHRI KAYA KALYAN INDUSTRIES AYUR”. There is reference to KAYA KALYAN and this is of the year 1984-85.
7. The respondent has enclosed several documents. Exhibit ‘A1’ is the registration of “AYUR” for cosmetics. The application is dated 14.5.1984. There are advertisements for cosmetics and for ayurvedic medicinal preparations as claimed in the opposition which come under Class 5 whereas the documents filed from Exhibit A1 to A13 are Class 3 registrations and A14 is face pack kit but not ayurvedic preparation. We do not see any registration of the mark for goods which are ayurvedic medicinal preparation. Numerous documents have been filed to show the registration. For a medicinal preparation the applicant also needs to produce license from the Drug Controller. The sales which are marked as ‘B1’ are from 9.5.1984. They have also filed documents to show their advertisements which are in the year 2000. We are not concerned with that. They relied on -
(i) 2002 24 PTC 518 (Del) – Three-n-Products Pvt. Ltd., Petitioner Vs. Yashwant and Ors., Respondents - Here the learned Judge has granted injunction in favour of ‘AYUR’.
(ii) AIR 1977 Calcutta 413 – The Imperial Tobacco Co. of India Ltd., Appellant Vs. The Registrar of Trade Marks and another, Respondents to show that evidence on subsequent events not admissible and that the appellants will not rely on new evidence.
(iii) They also relied on 1996 PTC (16) - First Computers (formerly known as ‘Brilliant’s Computers Centre’), Petitioner Vs. A. Guruprasad, Respondents - Here it is held that mere sales tax assessment is not sufficient to prove user.
8. We have considered the matter. The respondents claim of user is from 1983, whereas we find that right from 1977 and definitely from 1984-85 the appellants had got the “KAYA KALYAN INDUSTRIES AYUR” or “KAYA KALYAN AYURVEDIC”. Therefore the appellant is entitled to use the name and trading style and when the respondent has also commenced user only in 1984, there is no question of dishonesty on the part of the appellant. The appellant has not called his product “AYUR”. The product is “KAYA KALYAN AYUR”. The company is “KAYA KALYAN INDUSTRIES AYURVEDIC”.
9. The marks have to be seen as a whole. There is no deceptive similarity. Any one looking at the label will think it is the product of the appellant. It is clear from the label that “AYUR” is called “KAYA KALYAN AYUR” and the manufacturer “KAYA KALYAN INDUSTRIES AYUR”. The Registrar grievously erred in overlooking this aspect. Even the judgment cited by the respondent is actually in favour of the appellant as in AIR 1977 Calcutta 413 (cited supra) where an appeal was filed against the refusal to register the word “Simla” for tobacco. The Division Bench held that “Simla” is well known in the country and abroad and is inherently neither distinctive nor adapted to distinguish nor capable of distinguishing the goods of the appellant. We are of the opinion that “AYUR” is well known as a short form for “AYURVEDA” in this country and abroad and cannot be adapted to distinguish nor distinguish the goods of the respondent nor is it inherently distinctive. Therefore on the basis of such a mark the respondent’s opposition ought not to have been allowed. In the same judgment it was held that “…no trade mark should be allowed to be registered which may hamper or embarrass the traders or trade now or in future in respect of the place or country which is proposed to be registered….” Of course in that case it was held that registration could be allowed without causing interference to or infringing upon reasonable trading rights of other manufacturers.
10. We are aware that we are not deciding the validity of the respondent’s mark. But the respondent’s mark is so obviously unregistrable that we do not think the opposition ought to have been allowed. It ought to have been dismissed and the Registrar should have assessed for himself whether the mark of the appellant deserves to be taken on the register.
11. In 1996 PTC (16) (cited supra), the mark was the “First Computers”. The plaintiff started the business in the name and style of “First Computers”. The defendant had been incorporated under the name and style of “First Computer Pvt. Ltd.” The Division Bench considered the question of honesty and on facts, the Bench found that the appellant had not changed the name with dishonest motive and they also took into account the question of sales tax assessment.
12. In this case no actual tax assessment is given. It is true that sales tax figures alone may not by themselves prove anything but in the present case the order of assessment shows that the assessee’s name is “KAYA KALYAN INDUSTRIES AYURVEDIC” and the order related to first sales of KAYA KALYAN AYUR. This is sufficient for the purpose of proof of use. The honesty in adoption is shown from the search report which the appellant has filed. The mention of AYUR in the name of the Company of the appellant can in no way be said to lead to confusion. In any event, “AYUR” is a generic word. It is not an invented word. It cannot belong to any one exclusively. Everyone in India is entitled to use the word “AYUR” whether it is short or long form, in conjunction with other words to indicate their use. In fact we have to search for the word “AYUR” on the label that is now attacked by the respondent. The opposition is clearly motivated by malafides.
13. Incidentally the marks of the respondent have been removed in TRA/138/2004/TM/DEL, TRA/139/2004/TM/DEL and TRA/116 to 118/2004/TM/DEL today by our order.
14. Appeal OA/31/2007/TM/DEL is allowed with costs of Rs.10,000/- and the appellant’s mark shall proceed to registration in accordance with law.
(V. Ravi) (Justice Prabha Sridevan)
Technical Member (Trade Marks) Chairman
(This order is being published for present information and should not be taken as a certified copy issued by the Board.)
