INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai,
Teynampet, Chennai-600018
*****
(CIRCUIT BENCH SITTING AT AHMEDABAD)
ORA/200/2007/TM/AMD
MONDAY THIS THE 16TH DAY OF JULY, 2012
HON’BLE MS. S. USHA … VICE CHAIRMAN
HON’BLE SHRI V.RAVI … TECHNICAL MEMBER
Delux Bearings Limited
A company incorporated under the Companies Act,
Having its office at : “Paritosh Building” 6th Floor,
Near Darpana Academy, Usmanpura,
AHMEDABAD - 380 013.
and also at :
31-A/32, Ideal Industrial Estate,
Mathuradas Mill Compound,
134 – N.M. Joshi Marg, Lower Parel,
MUMBAI - 400 013. … Applicant
(Represented by Advocate: Shri Y.J. Jasani)
Versus
1. Bharatbhai Khushalbhai Patel
trading as Harikrishna Industries,
at Plot No.15/2, Jitan Udhyognagar,
SURENDRANAGAR -363 001 (Gujarat). Respondent
2. The Asst. Registrar of Trade Marks,
The Trade Marks Registry branch at:
National Chambers, 1st Floor,
Near City Gold Cinema, Ashram Road,
AHMEDABAD 380 009.
3. The Controller General of Trade Marks & Patents,
Boudhik Sampada Bhavan,
Nr. Antop Hill Head Post Office, S.M.Road,
MUMBAI – 400 037.
(Represented by Advocate: Shri Harshit S Tolia)
ORDER (No. 185/2012)
HON’BLE SHRI V. RAVI , TECHNICAL MEMBER
This is a case where the owner of a registered trade mark DELUX BEARINGS LIMITED’ under no.1019185 in Class 7 are seeking to expunge from the register a rival trade mark SUPER DELUX under No.942022. The competing marks are depicted below:-
Impugned Trade Mark
Applicants Trade Mark
The case, contentions and allegations of the applicant for rectification is summarized as follows:
2. One Dilipbhai Jethubhai Rathod ex- CMD of the applicant company started business in auto accessories under the trade mark DELUX in 1957. Later he formed a partnership firm by name M/s Vidyut Motors. In 1963 M/s Bharat Corporation, Ahmedabad was appointed the sole distributor for sale of DELUX product in Gujarat. M/s Upper India Trading Co(P) Ltd., Delhi was later appointed as resident representative for DELUX products in Orissa and Bihar. Subsequently, in view of expanding business another partnership firm styled DELUX AUTO ACCESSORIES was formed in 1969. In 1974 Vidyut Motors was converted to Vidyut Motors (P) Ltd. This company as also DELUX AUTO ACCESSORIES was owned and managed by Dilipbhai Jhethubhai Rathod and his family. In 1987, the name DELUX AUTO ACCESSORIES was changed to DELUX BEARING COMPANY which was later converted in 2000 to M/s Delux Bearing Ltd. the appellant herein. Further, the ongoing business of Vidyut Motor(P) was amalgamated with the applicant company vide order dated 06.06.2003 passed by Hon’ble Bombay High Court. Thus from 1957 onwards the applicant through aforesaid predecessors have been using the trade mark DELUX BEARINGS. They also state that many sub-brands are also being used them along with their main mark. The applicant applied for the registration of DELUX BEARINGS LIMITED under no.1019185 in class 7. The TM-1 dated 21.06.2001 inadverdantly failed to state date of user of the mark for which a corrigendum was filed later in form TM-16. However, the registry published the mark as proposed to be used. The registration is valid and subsisting. The founder of the applicant company Jethubhai Rathod also created an artistic work titled “Delux means Driving Delight” and secured its registration in 1973 under the Copyright Act, 1957. In 2003 he secured copyright for the artistic work DELUX BEARINGS. The applicant have also given wide newspaper publicity for their trade mark.
3. The applicant came to know that one Poonam Engineering Works, Surendranagar, Gujarat was selling SUPER DELUX BEARINGS in identical box packings as that of the applicant company. The applicant therefore filed a Civil Suit No. 1832 in 2007 before City Civil Court, Ahmedabad. It then came to their knowledge that Poonam Engineerings was purchasing bearings in loose from M/s Harkrishna Industries. Poonam Engineering Works was injuncted from manufacturing and selling bearing under the trade mark SUPER DELUX BEARINGS. On further investigation the applicant realised that Harikrishna Industries had secured the registration of the trade mark SUPER DELUX BEARINGS under 942022 as on 24.07.2000 for certain goods falling under class 12 including Water Pump Bearing and clutch bearing which was published in TM Journal. This application had escaped the notice of the applicant. The registered proprietor of the impugned mark has claimed use since 15.09.1995 in his application and this has been disputed. It is the contention of the applicant that the respondent has never used the impugned label mark SUPER DELUX BEARINGS. It is also alleged that the impugned registration has been obtained without any bona fide intention to use and in fact there has never been any bona fide use upto a date 3 months before the date of the subject rectification application.
4. Objection to the registered trade mark of the respondent has been raised u/s 2(1)(zb), 9(2), 11(1), 11(2), 11(3), 11(10), 12 and 18(1) of the Act The prayer is that the impugned registered trade mark no 942022 be removed from the register in terms of section 47(1) and 57(1) and (2) of the Act.
5. The case of the registered proprietor is as follows. They have been using a label mark SUPER DELUX since 1995 in respect of apparatus for locomotion for land, air or water, water pump bearing, clutch bearing and automobile parts falling in Class 12. Their sale under this brand name during 1996-97 was over Rs. 10 lakhs and has gone up to over Rs. 50 lakhs by 2006-07. The registered proprietor specifically state that the applicant’s adoption and user of their mark since 1957 is neither established nor proved by them through unimpeachable documentary evidence. The statement of sales since 1973 of the applicant is with respect to Delux Auto Accessories and no devolution of title from predecessor to successors in title and ultimately to present applicant company has been established and exaggerated claim of use of the mark since 1957 is not supported by cogent and valid documents. Further, the trade literature and price list filed by applicant are from 1988 and even these do not relate to the present applicant and the legality of these are questionable. The applicants mark DELUX BEARING LIMITED was published as a proposed mark. The word BEARING is generic. LIMITED is public Juris. Copies of TM-16 purportedly filed before the Registrar to ante date user has not been furnished. The applicants use of various sub-brands is irrelevant. The averments concerning various copyright registration is not relevant and assignment deed in favour of the applicant has not been furnished. Similarly, the copyright obtained in 2003 is in the name of one Vikrant.S. Gandhi who was an employee of M/s Yatra Graphics and no assignment document to support the claim has been tendered. The reference to the Civil Suit No. 1832/2007 is between Delux Bearing Co. and M/s Poonam Engineering Works and the present respondent is not a party to the proceedings. Further, the order in the Civil Suit is of interlocutory nature and not a final decree and does not help their case herein. The respondent have also questioned the applicants claim to the word ‘DELUX’ as Section 28 dealing with rights conferred by registration has a caveat at the beginning “Subject to the provisions of this Act”. Section 17 deals with the effect of registration of parts of a mark. This section is attracted and the word DELUX has not been separately registered by the applicant and in any event no one can claim a monopoly on a misspelling of deluxe as it is common to trade and is a purely laudatory expression.
6. The evidence in support of the rectification petition is an affidavit of Viplav Vora, Zonal manager of the applicant company. The evidence in support of registration is an affidavit of Bharatbhai Kushalbhai Patel sole proprietor of Harikrishna Industries. Shir Viplav Vora has also filed affidavit in reply.
7. The matter was listed before us on 10th April, 2012. We have heard the arguments of both counsel gone through the pleadings and the various case laws relied on by both parties.
8. The present rectification is sought under Section 47 and 57 and is based on Section 9,11,12 and 18(1) of the Act. We will deal with each in the light of pleadings and records before us.
9. Section 47 provides for removal of a trade mark from the register on either of the two grounds : that is
(a) The trade mark was registered without any bone fide intention by the applicant for registration to be used in relation those goods and that there has in fact been no bona fide use of the mark upto a date 3 months before the date of application for removal of the mark
O R
(b) upto a date of 3 months before date of filing of rectification petition, a continuous period of 5 years from the date on which the trade mark is actually entered in the register or longer has elapsed during which there was no bona fide use thereof in relation to those goods.
10. Of course, the proviso to section 47(1) provides for two exception which are not applicable to this proceeding. Most of the bills of the registered proprietor are in Gujarati. However, invoices dated 25.09.1995, 13.10.1995, 02.11.1995, 13.11.1995 and many others bear the name “Super Delux Water Pump”. Hundreds of bill upto 2005 have been furnished. The respondent have also furnished trading account particular from 2004 upto 2007. In the light of various bills and invoices there is no doubt that the impugned mark has been used in the market by the registered proprietor. Rightly or wrongly there has been genuine use of the trade SUPER DELUX by the respondent in Class 12. Therefore, section 47 (1) cannot come to the rescue of the applicant.
11. The object of rectification is purifying the register which is public purpose. Section 57(1) may be invoked by any person aggrieved. On this issue both the applicant and registered proprietor are in the same trade. The applicant has a direct and substantial interest in having the mark removed. The applicants business under his trade mark would be sufficiently harmed and have a standing to prosecute an appellate remedy. The applicants commerce are likely to be harmed by the presence of the respondents trade mark in the register. Law permits the affected applicant to seek the cancellation of the impugned trade mark. We, therefore, hold the applicant as ‘Person Aggrieved’.
12. We shall review the various case laws relied by the applicant and the registered proprietor.
Applicant
(a) Mahomad Oomer Mahomed Noorulla Sahib V/s Nooruddin. S.M. {Chagla CJ AND Desai J] AIR 1956 Bombay, 76.
Held – There is no absolute right for anyone to obtain the registration of a trade mark. The effect of Section 8,10 and 14 (1940 Act) is that if Section 8 and 10 is applicable, the Registrar has no discretion at all; he must refuse registration. This decision was relied on to support the claim that if Section 9 and 11 of the Act is a bar to the continued registration of the impugned mark, it should be expunged from the register
(b) Ciba Ltd. V. Ramalingam AIR 1958 Bom 56 (Chagla CJ) where at para 8 His Lordship observed:” but if the resemblance between the two mark is clear and obvious, then it is the duty of the court to remove from the register a mark which is likely to cause deception. Mr. Justice Chitty In re. Hills Trade Mark (1893) 10 RPC 113 B), emphatically stated “I state my opinion that directly it is apparent that if any part of a trade mark is calculated to deceive, it is the duty of the ‘Court to order it to be removed.” This was relied in support of objection under Section 11.
(c) Next case relied on was M/s Jain Electronics Vs Cobra Cables (P)Ltd. – This was an IPAB ruling. There the ratio was if the bills/invoices do not mention the brand, then it is not proof of use of the mark. But in this case there has been user of the respondents’ trade mark as reflected in some of the invoices.
(d) Suresh Kumar Jain Vs Union of India and another (Acting Chief Justice A.K. Sikri & Rajiv Sahai Endlaw, J. 2012 (49) PTC 287 (Del) DB – where it was held that the mark was generic and IPAB had correctly held that registration was on the basis of false statement and fraud. This case was relied to cast doubts on many dubious bill of the registered proprietor with no mark on the invoice.
Respondent
(a) Chunni Lal Vs Bharat Lal (Rajasthan HC) V.G. Pal Shikar J.
The trade mark held by plaintiff is for manufacture and sale of goods other than vehicles whereas defendant used it for vehicles – Held – neither comparative merit nor balance of convenience is in favour of plaintiff – injunction refused. This case was relied as the proprietor of the impugned mark is mainly engaged in manufacture of water pumps falling in Class 12.
(b) Vishnudas Trading V/s Vazir Sultan Tobacco Co. Ltd (SC) AIR (1996) SC 2275 – to show manufacturer cannot enjoy monopoly in respect of all goods in a class under international classification. This case was relied on by the respondent in support of his contention that at least for water pump the mark should not be removed.
(c) The Anglo Thai Corporation Ltd. Vs Mahendar Kumar Maneklal Shah & Ors.
The respondent had applied for MANHAR GRIPE WATER. The opponent/appellant were registered proprietors of three trade mark including WOODWARD CELEBERATED GRIPE WATER for medicinal preparation for the treatment of gripes. The appeal was dismissed as the marks were held dis-similar and GRIPE WATER was descriptive. The respondent wanted the same principle to be applied to this case.
(d) Next decision relied was a PRIVY Council case reversing the decision of Supreme Court of New Zealand by Justice BEATTIE (known as SOLAVOID Trade Mark) and ordering the rectification of New Zealand register of trade mark. Briefly, the applicants case relates to sale of about 7,50,000 sunglasses over 21 years under the trade mark ‘ Poloroid’. Respondent registered SOLAVOID for sunglasses, Rectification sought on the main ground – likely to deceive or cause confusion and otherwise dis-entitled to protection. Before registration, the advice of Commissioner of Trade Mark was obtained as to whether ‘Solavoid’ was eligible for registration and whether any existing marks on the register would be a hindrance. There was no evidence of actual confusion or deception. The trial Judge held that great weight is to be given to advice of Commissioner. It was held that the standard of proof required for rectification was the same as that for registration and applicant must show reasonable probability of confusion or deception. Rectification was refused. On appeal, the New Zealand, Court of Appeal reversed the decision of trial judge on the ground there was a real, tangible danger of confusion between the two marks. The respondent appealed to the Privy Council. Lord Fraser of Tullybelton held (reminder of the Board concurring) the period of use of respondents registered trade mark was a relevant consideration in exercising courts discretion against expunging the mark. Held, also the idea behind the two marks are different. Also ruled there was no substantial risk of confusion and so mark did not wrongly remain on the register. The contesting respondent rely on the above decisions for its co-existence on the register.
e) Another citation relied on was Cadila Healthcare Vs Speciality Meditech (P) Ltd. Gujarat High Court. Our attention was drawn to para 8.1 where the Learned Judge held for the purpose of settling the rights and privileges under the Trade Marks Act, such a trade Mark is to be registered in the name of assignee under Section 45. It was also held DOMOCIS is not deceptively similar to OCID. This decision was in support of the contention that the chain of title to the trade mark of the applicant have not been established by cogent documentary evidence.
f) The last case relied on was M/s Anant Oil Industries Vs M/s New Nandi Seeds Corporation Gujarat High Court(Appeal 351 of 2008). In this the appeal was from the order passed by Chamber Judge, City Civil Court, Ahmedabad in Civil Suit No. 977 of 2008 by which learned Judge allowed Notice of Motion taken out by the respondent (original plaintiff) by granting interim injunction restraining the appellant (original defendant) from marketing and selling CATTLE FEED/ CATTLE FOOD containing NANDI brand and /or device of BULL. The Hon’ble Gujarat High Court held the registered trade mark NANDI and device of sitting Bull was in with respect to ‘Seeds’ falling Class 31 of the Schedule and not for other goods/item in Class 31 particularly CATTLE FEED in respect of this there was no registered trade mark. The Learned Chamber Judge has committed an error in bringing the case within Section 29(4) of the Act in the absence of All India reputation. Hence, the order was questioned/set aside. The respondent relied on the above principle against rectification of the registered trade mark.
13. We shall now examine whether the impugned trade mark is prohibited under Section 9. As can be seen from the record the respondent application was made on 24th July, 2000 claiming user since 1995 in respect of vehicles, apparatus for locomotion by land, air or water, water pump bearing, clutch bearing, automobiles and parts thereof in Class 12. Random dictionary states DELUXE (the impugned mark is SUPER DELUX) was originally a French word for luxury. The English meaning of the word is opulent, rich, special, splendid and superior in quality such as DELUX car with rich finishing etc. Phonetically, the pronunciation of DELUX and DELUXE is one and the same. The word ‘SUPER’ means beyond compare, surpassing all others, superior quality. ‘SUPER DELUX’ in combination is a laudatory expression eulogizing the quality of the products as something as out of the ordinary. Such words cannot function as a trade mark. Such laudatory expression are property of all consumers and producers. It is reflective of the superlative qualities of the goods and how it was registered is a matter of debate. Five years user or even 100 years such use cannot make it distinctive. It is incapable of functioning as a trade mark with any length of use. Section 9(1) is, therefore, an absolute bar and the impugned marks needs to be removed on this ground alone. However, we may add that it does not lie in the mouth of the applicant to attack the impugned mark on ground of distinctiveness. We take note of applicant’s effort to cherry pick what suits their interest overlooking the fragility of their own mark.
1 4. We next look at objections raised under Section 11(1). The applicants trade mark is DELUX BEARINGS LIMITED and the impugned registered trade mark is SUPER DELUX. The test of whether the impugned mark is deceptively similar to the applicants mark is simple. Will customers of the goods bearing applicants mark procure and accept the products of the respondents bearing the trade mark SUPER DELUX?. We think they undoubtedly will. Both the competing marks though registered are largely descriptive and laudatory. The nature of the goods are the same. The class of purchaser are similar. The mode of purchase of goods for placing of orders overlap.
15. In Redimix Pharma Pvt. Ltd., v/s Savita Pharmaceutical(P) Ltd. & Anr. 2006 (33) PTC 157, the Apex Court had laid down “the principle being that word must be compared as a whole and while comparing the marks, greater regard should be paid to the uncommon element in the two marks and upon such comparison, if it is found that the uncommon elements are so dis-similar as cannot be confused with each other, then the conclusion would be the marks are not deceptively similar” Let us apply the test to the case on hand. The competing marks here are DELUX BEARINGS LIMITED and SUPER DELUX. BEARNING is the product itself. LIMITED is public juris. SUPER is an unregistrable laudatory expression. Product confusion will be essentially due to the common feature DELUX. If a customer is misled into buying the goods of the contesting respondent it will be on the misconceived notion that respondents goods are superior, better or an improved version of the applicants goods. Market confusion and commotion is not merely likely but inevitable, given that the majority of customers for both goods will be the unthinking mass of traders, dealers and auto mechanics. Section 11 further speaks of “likelihood of confusion on the part of the public which includes the likelihood of association with the earlier trade mark”. This terminology apparently factors elements other than commercial confusion. In trade mark parlance, this refers to a prohibition of use of a mark that dilutes the distinctiveness of the mark or tarnish the association evoked by the mark. This ‘Watering down’ of the trade mark is also a legitimate ground for objection and such disputes cannot be dismissed as mere ‘contrived conflict’. We would have upheld the applicants arguments on this grounds too but leave the matter open and undecided for two good reasons:-
(1) The applicant have not established the chain of title to the ownership of the mark since inception from 1957 beyond all reasonable doubt. There are obvious legal infirmities.
(2) The strength of the applicants own mark DELUX BEARING LIMITED is also open to question after discounting BEARING LIMITED.
Despite this, we are clear in our stand section 11(1) is an absolute bar to the registration of the impugned trade mark.
16. We now consider the objection raised under Section 12 that the respondent/registered proprietor is not entitled to honest concurrent use. It must be remembered that Section 12 relates to registration of trade mark by third party and is an exception to the general rule of registration. The applicant has raised a plea that impugned trade mark cannot be allowed to co-exist on the register. The applicants trade mark DELUX BEARING LIMITED was advertised in the TM Journal in November, 2003 and entered in the register in 2004. The impugned trade mark SUPER DELUX was applied for in 2000 and the applicant filed their application much later in June, 2001. Even though the applicant secured the registration earlier than the respondent herein the latter has proved user of the mark since 1995. In normal course of event they would have got the benefit of honest concurrent user. However, since we have already come to a conclusion that the Section 9 is an absolute bar to the registration of the impugned trade, the objection raised under Section 12 will also have to be upheld.
17. Lastly, removal of the impugned trade mark is sought on the ground that the respondent/registered proprietor cannot be owner of the impugned trade mark under Section 18(1). It was on that basis that it was accepted and published in the TM journal for registration. We agree to the extent that no one can be owner of the word either SUPER or DELUX either separately or in conjunction. Conferring monopoly right on such laudatory expressions makes a mockery of the trade marks law. Section 18(1) is a bar to the continued registration of the impugned mark not because it is copied from the applicants trade mark, but for the reason these are inherently incapable of functioning as a trade mark and has no source origin capabilities.
18. We have already taken a stand that impugned trade mark SUPER DELUX BEARINGS has been registered contrary to the provision of the trade mark law. The purity of the register is of great importance to the trade in general quite apart from the merits or demerits of particular litigant. On equitable principle the applicant has no superior claim on expressions like “Delux Bearings” of which they are the registered proprietor and which is the basis to seek cancellation of the impugned trade mark “SUPER DELUX BEARINGS”. We are distressed to note this type of trade mark being put on register and it does undoubtedly create distortion in the trade. The idea of justice and fairness in the adjudication process compels us to record these observation wearing the robe of office we hold.
19. Nevertheless, in terms of corrective justice, we allow the rectification application. Registered trade marks No. 942022 in Class 12 for the trade mark SUPER DELUX BEARINGS is removed from the register. ORA/200/2007/TM/AMD is consequently allowed. There is no order as to cost.
(V.RAVI) (S.USHA)
Technical Member Vice Chairman
(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)
