INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018
CIRCUIT SITTING AT DELHI
TA/133/2003/TM/DEL
CM(M) 47/97
TUESDAY, THIS THE 12th DAY OF JUNE, 2012
Hon’ble Smt. Justice Prabha Sridevan … Chairman
Hon’ble Shri V. Ravi … Technical Member (Trade Marks)
Prahalad Rai Agarwala
Ghanshyam Prasad Agarwala
Kunjbehari Agarwala and
Smt. Chhoti Devi Agarwala
trading as BINOD HOSIERY
31, Shibtala Street
Calcutta-700007. … Appellant
(By Advocate: Shri Neeraj Krishan Kaul, Sr. Advocate
Dr. Alok M. Saha, Mr. Darpan Wadhwa
Ms. Jaishree Shukla)
Vs.
1. Gopi Chand Kukreja and Anil Kumar Kukreja
trading as KUKREJA ENTERPRISES
4425, Gali Bahuji, Pahari Dhiraj,
Sadar Bazar,
DELHI-110006.
2. The Deputy Registrar of Trade Marks
Office of the Trade Marks Registry
Okhla Industrial Estate
NEW DELHI-110020. … Respondents
(By Advocate: None)
ORDER(No.163/2012)
Hon’ble Shri V. Ravi, Technical Member:
In this matter, the respondent M/s. Kukreja Enterprises, Delhi had filed an application under No.492040 on 1st June, 1988 containing the word “RUPA” (per se) for registration as a Trade Mark in respect of ‘brassieres and panties’ (the specification of goods as amended) in Class 25 claiming through an amended user since 1980.
2. The application was opposed by BINOD HOSIERY, 31, Shibtala Street, Calcutta 700007. The opponents claim that they have been using the trade mark “RUPA” since 1968 in respect of hosiery products including brassieres, panties, vests, under wears etc.
3. In due course, on completion of evidence, the matter was heard by the Deputy Registrar of Trade Marks, New Delhi who by his order dated 17.12.1996 dismissed opposition No.DEL 8641 and permitted application No.494020 in Class 25 to proceed to registration.
4. This order was challenged before the Hon’ble Delhi High Court and subsequently the case was transferred to IPAB. By Order No.171 dated 25.10.2004, IPAB upheld the findings of the Deputy Registrar and dismissed the appellant’s appeal and allowed the respondent’s application to proceed for registration.
5. This was challenged by the appellant before the Hon’ble Supreme Court through a Special Leave Petition and by Order dated 18.11.2010, the Apex Court set aside the order of IPAB (Order No.171/2004) dated 25.10.2004 and remanded the matter for consideration afresh. The Supreme Court also granted leave to the appellant to file additional documents/evidence particularly the subsequent registration granted in favour of the appellant for the trade mark “RUPA” and variant thereof. The Apex Court had observed that additional registrations have been effected in the appellant’s favour for the same trade mark “RUPA” with different sub-title in respect of a variety of goods including ladies brassieres and panties. These materials were not placed before the IPAB while hearing the appeal against the order of Deputy Registrar. It is therefore, in the fitness of things that the matter should be considered afresh by the IPAB in the light of subsequent registration of the same trade mark in favour of the appellant in respect of the very same goods.
6. Accordingly, the matter was listed for hearing on 8.7.2011 and again on 8.9.2011 and once again on 17.10.2011 and then again on 15.12.2011 when on all occasions, the respondents were not present. The Board had commented adversely on the conduct of the respondents and had ordered that the matter will be heard ex parte at a next date of hearing and if the respondent wants to be heard it will be on payment of Rs.50,000. The matter was again listed on 11.1.2012 and once again the respondent was absent. However, the appellant’s Counsel being unwell had filed Form-5 and sought adjournment. The matter finally came up before us on 29.3.2012 when the matter was heard ex parte.
7. To get a sense of the protracted litigation between the parties herein, it is necessary to briefly examine/summarise the order of the Deputy Registrar refusing the appellant’s opposition, the findings of IPAB (vide order No.171 of 2004), the additional documents now tendered by the appellant as per Apex Court direction and arguments advanced in support of the appeal petition and in that order.
8. In his ruling the Deputy Registrar observed that the main dispute between both the parties is whether the term ‘hosiery’ included ‘brassieres and panties’. He also noted that the applicant (respondent herein) had filed five rectification petitions pending in Hon’ble Calcutta High Court in respect of registered TM No.281505, 281506, 339057, 339058 and 339059. The applicant/respondent had adduced evidence of user since 11.2.1980. He further ruled that the opponents have falsely stated that they were using the trade mark ‘RUPA’ in respect of brassieres, panties and undergarments since 1968. He held that the applicant/respondent are prior adopter and user of RUPA at least in respect of brassieres and panties. It was only in Registered TM 487449 filed on 16.3.1988 where for the first time the opponents (appellant herein) sought specific protection inter alia for ‘brassieres and panties’ under the trade mark ‘RUPA Ribline’. He concluded that the applicant (respondent herein) have been using their mark since 1980 whereas the appellant/opponents started marketing brassiere only from 1988. He also ruled that the goods covered under the rival marks are different. He took a stand that the presence of a mark in the register does not prove its user at all. He commented that the previously registered trade mark of appellant/opponent are in respect of different specification of goods and the user claimed in respect of ‘brassieres and panties’ is subsequent to 1980. He then stated that opponents have not adduced adequate and sufficient evidence of user in respect of all their trade marks whether registered or pending. He further observed that “there has been no complaint from any quarter of public as to whether the impugned trade mark used or applied on ‘brassieres and panties’ causes tangible apprehension of confusion or deception”. He pointedly noted (at page 25) that the applicant’s goods are not used as substitute or alternate to those of the opponents. His conclusion was the opponent having miserably and prima facie failed to establish the grounds of opposition and the application was ordered to proceed to registration giving rise to this appeal.
9. IPAB (vide Order No.171/2004 dated 25.10.2004) had upheld the order of the Deputy Registrar. Suitable extracts are reproduced below for easy understanding. The Board has in its ruling commented adversely regarding ante-dating user and substitution of goods and observed -
“….The Deputy Registrar has simply stated that the first respondent is using the impugned mark since 1980 in respect of their goods ‘brassieres and panties’ just on the basis of amendment sought for. He has totally failed to consider the material available on record in respect of this issue. Hence the findings of the Deputy Registrar are not on the basis of any available evidence.”
“….Until 1988 the appellant has not claimed use of the trade mark ‘RUPA’ in respect of brassieres and panties. All the earlier trade marks are pertaining to hosiery including ganjis and jangias. When the general term hosiery includes different species of goods, persons will be entitled for the benefit of registration only in respect of the goods for which the registration had been obtained. In that principle till 1988 the appellant is entitled only to the goods ‘ganjis and jangias’…”
“Hence there is no dispute so far as the appellants are concerned that they have been using the trade mark in respect of panties and brassieres only from 1988. In respect of other goods we are not concerned. Merely because the appellant obtained the registration in respect of goods hosiery including ganjis and jangias, it cannot be said that the registration is in respect of all the species falling within the general term “hosieries”…”
“In the absence of any evidence in respect of the use of the same trade mark by the appellant or in other words on the failure of the appellant to discharge its burden of proof of their entitlement, we are of the view that the Deputy Registrar has rightly allowed the registration in favour of the first respondent…”
“…Even in respect of the criminal proceedings the learned Magistrate while dealing with the question of sentence clearly stated that mere application for trade mark does not entitle any one to declare that he is the holder of the trade mark. Hence it is clear that the first respondent seems to have claimed that he is the proprietor of the trade mark as his application was pending. On the date of the order the appellant was also not the registered proprietor of the said trade mark in respect of the goods under dispute viz. brassieres and panties…”
“…The principle governing the granting of interim injunction of the question of passing off is at times different from the issues under consideration for registration. In this registration proceedings, we are concerned whether the first respondent is entitled for registration of the impugned mark on the basis of discharge of burden of proof by the appellant in respect of their opposition. When the appellant failed to discharge the burden of proof in respect of their opposition and having totally failed to prove the use of the mark in respect of the goods, ‘brassieres and panties’ since 1988, or even at any earlier point of time, the first respondent is entitled for registration of the impugned mark. When the appellant claim to be the earlier user, it is for them to establish the same. When they failed to establish the user, mere registration alone may not be of any use to claim right. Only on these principles we also agree with the findings of the Deputy Registrar. For the reasons stated above we dismiss the appeal. There will be no order as to costs.”
10. The Hon’ble Supreme Court had directed this Board to examine afresh the appeal in the light of subsequent registration of the same trade mark for the same goods by the appellant/opponent in respect of 27 new trade marks by the appellant/opponent.
11. We have heard the Counsel for the appellant, perused the records and the citation relied on in support of the appeal and refuse the impugned application of the respondent for reasons indicated herein below.
12. The case of the appellant/opponent is briefly summarized as follows. The appellant have been using the trade mark “RUPA” in respect of hosiery goods since 1968. It was argued that the order of the Deputy Registrar was contrary to law and judicial propriety. The respondent’s application under No.492040 in Class 25 was allowed registration in respect of ‘brassieres and panties’ despite the fact that he had been restrained from using the trade mark ‘RUPA’ in respect of these goods by an order of the Hon’ble Additional District Judge, Patna which order has been confirmed by the Appellate Court and further confirmed by the Division Bench of Patna High Court. The Additional District Judge at Patna vide order dated 29th May, 1993 had held inter alia -
‘The defendants (respondent herein) have been convicted under Section 81 and 88 of the Act and even the Appellate Court directed to release the seized articles on their undertaking that they would not use the word RUPA.’
13. The Hon’ble Single Judge of the Patna High Court had inter alia held -
‘It is not disputed that the defendants-appellants have got no registered trade mark ‘Rupa’; rather their prayer for registration of such a trade mark ‘Rupa’ has already been refused by the competent authority. It is also not disputed that for use of such a trade mark ‘Rupa’ by the defendants-appellants who has already been convicted and they further undertook not to use the mark ‘Rupa’ in respect of their hosiery products in future in course of the release of the seized goods. Ex facie, the trade mark ‘Rupa’ registered for the hosiery goods manufactured by the plaintiff-respondent (appellant/opponent herein) and the mark ‘Rupa’ used by the defendants/appellants (respondent herein) are one and the same. Therefore, there is no doubt that the trade mark ‘Rupa’ used by the defendants/appellants is deceptively similar and identical and is likely to deceive the general public. Thus, in view of the aforesaid facts, a prima facie case is made out in favour of the plaintiff-respondents.’
14. The respondent herein had also applied for registration of the trade mark RUPA in respect of “brassieres and panties” vide an earlier application being Application No.405859 dated May 23, 1983. The said application was refused registration after a hearing in the matter vide an order of the Hearing Officer dated 5.3.1990. The Hearing Officer inter alia held:
‘the Applicant’s user of their trade mark cannot be taken to be honest in view of their conviction under Section 81 of the Act, by the Metropolitan Magistrate Delhi, vide his order dated 4.8.1989, hence, they are not entitled for registration under Section 12(3) of the Act. The application is, therefore, barred by Section 12(1) of the Act, hence, refused.’
15. The respondents thereafter preferred an appeal to the Hon’ble Delhi High Court which is pending.
16. It is established law that only those marks should be allowed for registration, where there is no doubt whatsoever that there is no likelihood of confusion or deception. The Hon’ble Supreme Court in Amritdhara Pharmacy, Appellant Vs. Satya Deo Gupta, Respondent (AIR 1963 SC 449)has laid down the law as under:
‘…the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause confusion. In cases in which the Tribunal considers that there is doubt as to whether deception is likely, the application should be refused.’
Despite the refusal of the prior application under No.405859 of the respondent, the Deputy Registrar permitted the respondent to convert the specification of goods of a subsequent application (Application No.492040) from “socks” to “brassieres and panties” neglecting the previous refusal Order and permitted this application to be Advertised Before Acceptance. Curiously this was done after the Appellants filed their Notice of Opposition to the said application. He first permitted ante-dating date of user from “1st January 1988” to “11.2.1980”, and that too at a time when the entire evidence in the opposition matter had been completed. In effect, when an identical trade mark had been refused registration by one Officer of the Trade Marks Registry, and an appeal in respect of that was pending, this mark was allowed to proceed to registration under the garb of another subsequent application for identical goods and under identical circumstances. This is abuse of process of law. It must be discouraged. The Registry should take steps to ensure that the system is proof against such abuse. For example, a database may be created which will show up the history of identical marks. Further, he ought to have considered that the respondent has been giving conflicting dates of user for brassieres and panties. This is established clearly as in the previous application (405859) where the respondent had given the date of user of ‘RUPA’ as “1983”.
17. The objections of the appellants under Section 11(e) of the Act was wrongly disallowed. Section 11(e) clearly sets out that “A mark which would otherwise be disentitled to protection in a Court, shall not be registered as a trade mark”. In the facts of the present case, the Hon’ble Division Bench of the Patna High Court has passed an order injuncting the respondent from using the trade mark RUPA in respect of their goods, from which it is clear that the mark of the respondent is disentitled to protection in a Court. The decision of the Deputy Registrar is therefore contrary to the order of the Hon’ble Patna High Court.
18. With regard to the objections under Section 12(1), an earlier trade mark of the appellants under No.487449 specifically mentions ‘brassieres and panties’ and predates the application of the respondents. In this application the appellants have specifically claimed user since 1968 of the trade mark RUPA and that too specifically in respect of brassieres and panties. This registration itself bars the application of the respondent under the provisions of Section 12(1) of the Act.
19. The Deputy Registrar also fell in error in overruling the objections of the Appellant under Section 18(1) of the Act. He has wrongly held that the respondent has proved user of his mark since 1980, and that they are proprietors of the mark as observed by IPAB in the earlier ruling.
20. Even with regard to the use of RUPA by the appellants in respect of hosiery goods including ganjis and jangias, despite holding that brassieres and panties are sold over the same counter, no reason has been given why there is no likelihood of confusion. This is contrary to numerous decisions of various Hon’ble High Courts, in particular, the decision of a Division Bench of Delhi High Court in the case of Dalip Chand Vs. Escorts Ltd. (AIR 1981 DELHI 150) wherein it was held that even if the goods sold by appellants were different, it would not be taken out of prohibition of Section 11. It was further held that “if the Court is in any doubt that whether the mark will cause confusion, registration will be refused.” Likewise, in the case ofJugmug Electric & Radio Co., Apppellant Vs. Telerad Private Ltd., Respondent (1977 IPLR 73), another Division Bench of the Hon’ble High Court it was held that if the rival goods are sold through the same trade channels or through the same shops, then there is likelihood of confusion. Further, the annual Sales figures of the appellants were erroneously rejected. This completely overlooks the fact that the annexures are part and parcel of the affidavit and the appellant has stated on oath that the sales figures and advertisement figures relate to the trade mark RUPA. These sales figures were duly certified by the auditors of the appellant. Also, the supporting bills filed by the appellants clearly corroborated the fact of extensive use of RUPA by the appellants.
21. The Deputy Registrar also erred in his finding that the appellants/opponent have not discharged the initial onus of proving reputation and goodwill. Not only is this finding erroneous on facts, but is also erroneous on the principles of Law. The Deputy Registrar has completely disregarded the dicta of a Division Bench of the Hon’ble Calcutta High Court in Prem Nath Mayer, Appellant Vs. Registrar of Trade Marks and Another, Respondents (AIR 1972 CALCUTTA 261) wherein it has been held:
“As I read the Rules, I see nothing therein to justify the conclusion that the onus shifts from the applicant to the opponent at any stage. On the contrary, the indication in Rule 54 is clear, that the onus lies upon the applicant because that Rule says that even if the opponent does not file any affidavit to adduce evidence in support of the opposition, the applicant has to file within two months from the receipt of copies of the affidavits in support of the opposition, such evidence by way of affidavits, as he desires to adduce in support of his application…………The rules therefore do not enjoin a shifting of the onus from the applicant to the opponent at any stage of the proceedings. The onus of proving, that the mark, if registered, will not lead to confusion or deception, is squarely upon the applicant.” (emphasis supplied)
22. Another mitigating factor in favour of the appellant/opponent is that further 27 trade marks bearing the primary word ‘RUPA’ have been registered by them since 1993 every one of which includes ‘brassieres and panties’. This materially alters the situation in favour of the appellant. It also goes to show that the original registration by Kukreja Enterprises, Delhi also in respect of ‘brassieres and panties’ for the same trade mark ‘RUPA’ was improper.
23. The Board had already recorded its displeasure on the conduct of the respondent in these proceedings (see para 6). For the foregoing reasons we refuse the impugned application. Consequently TA/133/2003/TM/DEL is allowed and application No.492040 in Class 25 for the trade mark ‘RUPA’ is refused registration. The respondent is directed to pay a sum of Rs.10,000/- as costs of these proceedings to the appellant.
(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.)
