INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex, Annexe-I, 2nd Floor, 443, Anna Salai,
Teynampet, Chennai – 600 018
* * * * * *
(CIRCUIT BENCH SITTING AT DELHI)
OA/49/2008/TM/DEL and
M.P. No. 162/2012 in OA/49/2008/TM/DEL
TUESDAY THIS, THE 12th DAY OF JUNE, 2012
Hon’ble Smt. Justice Prabha Sridevan -- Chairman
Hon’ble Shri V. Ravi -- Technical Member
M/S. FERROMATIC MILLACRON INDIA LTD.
(Formerly known as CINCINATI MILACRON LTD.)
Having Office at: 53, MADHUBAN
(NEAR) MADALPUR UNDERBRIDGE
ELLISBRIDGE -- Appellant
AHMEDABAD – 380 006
(By Advocate Shri Nakul J. Sharedalal)
Vs.
1. M/S. BUSH SEWING MACHINE ENTERPRISE
158/104, GANGA PRASAD ROAD
MAULVI GANJ, LUCKNOW, UTTAR PRADESH -- Respondents
2. THE REGISTRAR OF TRADE MARKS
TRADE MARKS REGISTRY, ‘BHOUDHIK SAMPADA BHAWAN’
SECTOR-14, PLOT NO. 32, DWARKA
NEW DELHI – 110 075.
(By Advocate Shri S.K. Bansal & Shri Saurabh Kapoor for R-1)
ORDER (No. 165 of 2012)
HON’BLE SMT. JUSTICE PRABHA SRIDEVAN, CHAIRMAN:
This appeal has been filed against the order directing registration of the trade mark OMEGA in Application No. 1002452 in class 7 for sewing machines and their spare parts. The mark was ‘proposed to be used’ mark. The application is dated 10.4.2001. The appellant opposed this. The opposition was disallowed and therefore this appeal has been filed.
2. In 1999, the appellant adopted the mark OMEGA as a device mark with the device OMEGA with various numerals namely OMEGA 250, OMEGA 350, OMEGA 80W, OMEGA 200W, OMEGA 660W and so on. The mark is used in connection with injection moulding machines having capacity of various tonnes and parts thereof in class 7. The appellant has about 14 applications for registration of their marks in class 7. According to them they have obtained a reputation and goodwill and consistently excellent sales increase. Their mark is a well known mark and identified with their goods. According to them, the members of the public would purchase the goods of the respondent thinking them to be the goods of the appellant. It would cause confusion and deception. The mark lacks distinctiveness and therefore registration should not be granted. The appellant also filed evidence. The respondent filed counter statement but no evidence.
3. The learned Deputy Registrar after hearing the parties held that the trade mark was distinctive and is not liable to give rise to confusion and ordered.
4. The learned counsel for the appellant submitted that the respondent has not proved any user even in the years subsequent to the date of registration till 2005. When there is no proof of user, there is no reason why the mark should be remained in the Register. There are contradictions in the order where after recording that the respondent has not proved user, the impugned order mentions use. The learned counsel submitted that their goodwill since 1999 would be diluted if the registration is not set aside. The learned counsel for the appellant relied on several judgments.
5. The learned counsel for the respondent submitted that the impugned order records reasons for the decision and unless the reasons are arbitrary or perverse, the Board must not interfere. The learned counsel submitted that OMEGA though not an invented word is an arbitrary mark for sewing machines and it can be registered without proof of distinctiveness. The learned counsel submitted that the goods though in the same class are totally different, their trading channels are different, their prices are different, the customers are different. Therefore the registration of this mark will not prejudice the public interest. The learned counsel submitted that only those in the specific industry would purchase the machines manufactured by the appellant whereas any one can go to the market and by sewing machines regardless of the class or gender of the customers. The learned counsel submitted that when the mark is ‘proposed to be used’ mark, non use is not a criterion for refusing the registration. Non use can only be taken as a ground in rectifications proceedings. The learned counsel also relied on several judgments to support his case.
6. The mark was applied for as “proposed to be used” mark and therefore even if the respondent had not filed any proof of evidence of use, the position can be examined to see whether the conclusion arrived at is sustainable.
7. Now we will look at the various decisions relied on by both the sides to support their claims. The learned counsel for the appellant relied on the following judgments:-
u 2007 (34) PTC 147 (IPAB) in Raj Lakshmi Knitting Company Vs. Ascot (S&F) International Limited & Others – The opponent was using the mark from 1966 and the applicant was using it from 1977. The Board held that the marks were identical and S.11 disqualification was accepted because the consumers were the same and the same trade channels and same trade outlets for both the products. “In that case the goods and trade channels were the same.” But in this case the huge machines belonging to the appellant are not sold in the market.”
v 2004 (28) PTC 180 (IPAB) in Laxmi Engineering Works Vs. Laxmi Industrials & Another – Here, both the marks were LAXMI. One was in respect of jet pumps and monoblocs and the other related to diesel engines monoblocs pumps etc. This Board upheld the opposition. “But in that case, the Board felt that jet pumps do not fall into a totally different category but the pumps mentioned in the registered trade mark of the appellant. Here, sewing machines and injection moulding machines are un-connected to each other.
w 2011 (45) PTC 433 (SC) in T.V. Venugopal Vs. Ushodaya Enterprises Ltd. & Another – In this case, ‘Eenadu’ Newspaper attack use of the word ‘Eenadu’ for Aggarbatti products. The learned counsel for the appellant relied on this for the reason that even though the goods falling in to different classes, the Hon'ble Supreme Court upheld ‘Eenadu’ Newspaper’s case because the appellant who have used it for Aggarbattis was a different user. “In the ‘Eenadu’ case, the appellant has used the same artistic script, font and method of writing the name which obviously cannot be a co-incidence. This was deception. Further, the general public buys both newspapers and aggarbattis. Therefore because of confusion is highly probable. But in the present case, sewing machines are bought from sales room who enters a shop. It is also within the economic capacity of even middle class people but the customers of the appellant, sewing machines are a different genre altogether.
2005 (2) G.L.H. 585 in Bhavnesh Mohanlal Amin Vs. Nirma Chemical Works Ltd. – In this case, the Hon'ble Gujarat High Court held that the registration is converted in case of class of goods and not in case of a particular goods. In an action of passing off, it is immaterial whether the goods of the parties are different, their trade channels are different or that the prices are different. Therefore, the owners of the mark NIRMA stopped the manufacture of NIMA Flour Mills. The owners of NIRMA also had registration for NIMA. This order was passed in an interim application and in fact the learned Judge observed that the cause available to the defendants to move a rectification application. “We have to examine the goods before us on the basis of grounds to be considered in opposition proceedings.”
OA/18/2010/TM/CH of IPAB in M/s. Kaveri Piping Systems Pvt. Ltd. Vs. Sri Vinod Industries & another – This case was relied on by the learned counsel for the appellant to support his case even though the respondents’ mark has been registered if the appeal is allowed but the mark shall be removed.
8. The following judgments were relied upon by the learned counsel for the respondent:-
u 537 F.2d 4 – 189 U.S.P.Q. 759, 189 U.S.P.Q. 769 – ABERCROMBIE & FITCH COMPANY Vs. HUNTING WORLD, INCORPORATED – In this case, the mark was ‘Safari’. Before the Federal Court it was relied on that whether ‘Ivory’ would be generic when used to describe a product made from the tusks of elephants but arbitrary as applied to soap. “According to the respondent, the word OMEGA is an ordinary dictionary word when used for sewing machines would be arbitrary. Therefore, objections under section 9 will not arise.”
v 71 F.3d 996 : Knitwaves, Inc. Vs. Lollytogs Ltd. – This case involves the evaluation of “substantial similarity” and inherent distinctiveness of trade dress. While “arbitrary”, ‘Fanciful”, or “suggestive” packaging of a product may be presumed to serve this source-identifying function, and thus may be deemed per se distinctive of the source, the same presumption may not be made with regard to product features or designs whose primary purposes are likely to be functional or aesthetic.
w 2008 (36) PTC 193 (Del.) in Ahmed Oomerbhoy & Another Vs. Gautam Tank & Ors. – This case relates to the use of the mark SUPER POSTMAN for sale of edible groundnut oil. The conflict was between POSTMAN and SUPER POSTMAN. The defendants wee registered for selling SUPER POSTMAN groundnut oil, being the subsequent users. In fact in that case the opponents produced evidence of huge sales. In that case both POSTMAN and SUPER POSTMAN were used for edible oils and therefore likelihood of confusion in the minds of customers could not be ruled out.
2001 PTC 541 (SC) in Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd. – In this case, the marks were FALCITAB and FALCIGO. The Hon'ble Supreme Court laid down the following factors for deciding the question of deceptive similarity:-
(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea,
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods.
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
1988 PTC 258 in S.M. Chopra & Sons Vs. Rajendra Prosad Srivastava – In this case, the competing marks were RAJA and MAHARAJA. Both were registered for rice hullers and parts. The Hon'ble Calcutta High Court held that MAHARAJA could not affect RAJA.
z 1996 PTC (16) in Kellogg Company Vs. Pravin Kumar Bhadabhai – This was a case of visual similarity.
9. Though in the impugned order, the Deputy Registrar had referred to the fact that no evidence was filed by the appellants, it was noted that the trade mark was proposed to be used in respect of sewing machines and though it is a well known dictionary word when it is used in respect of sewing machines and moulding machines will not create any confusion or deception “as the goods are of different description”. The Deputy Registrar also found that there was no evidence of confusion and the purpose and channels of trade were different.
10. We cannot brush aside the submissions made by the learned counsel for the respondent that OMEGA is arbitrary when used in connection with sewing machines and therefore distinctive. According to the impugned order, there is no likelihood of confusion because the goods are totally different and those who purchase will also be different unless as in the case of ‘Eenadu’, ‘Postman’ etc. These reasons had weighed with the Deputy Registrar and we do not think the approach is perverse or arbitrary. As regards the failure to use, the mark was “proposed to be used” mark and therefore, the Deputy Registrar was justified if he felt that in the present case, there is no likelihood of confusion.
11. Above all, in the case of assessing the relative value and registerability of the trade mark which compete with, while we are always guided by the principles laid down by the Hon'ble High Court and Hon'ble Supreme Court, the actual decision will depend on the facts. OMEGA, though a dictionary word is arbitrary when used in connection with sewing machines. Sewing Machines are bought from show room of the shelf. They are definitely not in the same league as the huge machines that are not bought off shelf by any odd customer. The appellants’ customers know their product and the demand for the appellants product OMEGA model machines will be restricted to such people in the trade who use these injection moulding machines. They are not likely to be deceived that OMEGA sewing machines of the respondent and the injection machines come from the same source. It is also to be remembered that the respondent has applied as a word mark unlike ‘Eenadu Aggarbattis’ where the font was copied.
12. For all these reasons we dismiss the appeal.
(V. RAVI) (JUSTICE PRABHA SRIDEVAN)
Technical Member Chairman
(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)
