Delhi Registry –Cum-Bench
G-62
to 67 & 196 to 204, August Kranti Bhawan, Bhikaji Cama Place,
New
Delhi – 110 066
Tele No: 011-26180613/14 Email: delhiregistryipab@gmail.com Website: http://www.ipab.gov.in
ORA/97/2009/TM/DEL
ORA/98/2009/TM/DEL
TUESDAY, THIS THE 22ND DAY OF SEPTEMBER, 2020
HON’BLE SHRI JUSTICE MANMOHAN SINGH HON’BLE
MS. LAKSHMIDEVI SOMANATH
CHAIRMAN
TECHNICAL
MEMBER (TRADEMARKS)
1.
M/S. EVEREADY INDUSTRIES INDIA LIMITED,
HAVING ITS
REGISTERED OFFICE AT, 1, MIDDLETON STREET, KOLKATA-700 071
…APPLICANT/APPELLANT
(Represented by: Mr. Ajay Sahni & Ms.
Sucheta Roy)
Versus
1. MRS. KAMLESH CHADHA TRADING AS M/S. EVEREST TOOLS INDUSTRIES, AT
D-58, BHAJANPURA, DELHI - 110 095
…RESPONDENT’s
(Represented by –Mr. Saurabh Kirpal, Mr. Sudershan
K Bansal & Mr. Ajay Amitabh Suman)
ORDER
HON’BLE SHRI JUSTICE MANMOHAN SINGH, CHAIRMAN
1.
By this order, we propose to decide the above-mentioned two
rectifications petitions filed by Eveready Industries India Limited against the
registered trademark no.439233 (word per se) and 539621 (logo mark) in Class-8.
2.
These matters are pending since 2009. The applicant’s suit being
C.S.(OS) 1422/2009 is also pending against the respondents. In view of urgency
explained to us, the above-mentioned petitions are taken up for hearing through
video-conferencing.
Page 1 of 41
3.
The following are the brief facts taken from the pleadings of the
parties and the written submissions filed by the parties. The applicant submits
as under:
a)
The Applicant (Eveready Industries India Limited) was incorporated on
20 June 1934, and is one of the most reputed FMCG Companies, engaged in the
business of manufacturing and trading in dry cell batteries (carbon zinc
batteries, alkaline and rechargeable batteries), flashlights, compact
fluorescent lamps (CFLs), general service lamps, packet tea and insect
repellants. All the products of the Applicant are manufactured and sold under
the brand name and the trade mark “EVEREADY”. The Applicant has been using the
mark EVEREADY since 28 October 1942,
and is the registered proprietor and the owner of the trade mark 'EVEREADY'
registered under various classes as per the Schedule of the Trade Marks Act,
1999 (“Act”) and all the registration certificates are duly renewed and valid
and subsisting till date.
b)
The trade mark EVEREADY also forms the prominent and dominant feature
of the corporate name of the Applicant Company i.e., EVEREADY INDUSTRIES INDIA
LIMITED and thus reinforcing the distinctiveness of the trade mark of the
Applicant. The trade mark EVEREADY and EVEREADY (DEVICE) has been used by the
Applicant exclusively, extensive and uninterruptedly in India and across the
word.
c)
The Applicant by prior adoption, extensive usage of the trade mark “EVEREADY”,
has attained immense goodwill and reputation and therefore has attained the
status of well-known trademark as defined in section 2(1)(zg) of the Act and is
exclusively associated with the Applicant and none else.
4.
As per
pleadings of the applicant, the case set up against the respondents a
Page 2 of 41
a)
In the year 1985, the Respondents had fraudulently registered an
identical trade mark 'EVEREADY' under no. 439233 and in the year 1990 the
Respondents malafidely registered the identical artistic logo /trademark 
under
No.539621 in respect of the goods viz., hand tools, screw drivers, cutting
pliers, etc. claiming a false user since 1985 not supported by any documentary
evidence and which registrations are apparently on the face of it violative of
the provisions of Section 9, Section 11 and Section 18 of the Act and are
liable to be removed from the Register.
b)
The business of the Respondents have been dishonest right from the
inception on a fraudulent basis in as much as the very adoption of the trade
name EVEREST TOOLS in respect of hand tools, etc. was as a result of copying
the name of the leader in the hand tool industry being Hindustan Everest Tools
Ltd. whose trademark EVEREST for hand tools stand registered under TM
Application No. 352193 since 07 August 1979.
c)
The alleged assignment deed dated 06 January 2009 between Smt.
Kamlesh Chadha and Sh. Sanjay Chadha vide which the aforementioned impugned
registered trademarks of the Respondents have been assigned is on the face of
it invalid as it violates the express statutory provisions of the Trade Marks
Act, 1999. The alleged deed of assignment is further not a valid document as
the earlier firm M/s. Everest Tools Industries was not even in existence in the
year 2009 when the alleged assignment deed was signed and the said trademark on
account of non-use had already been abandoned.
d)
The
renewal application filed in the year 2000 in respect of the aforementioned
Page 3 of 41
impugned
registered trademark is also invalid and beyond the provisions of law and the said
trademarks could not be renewed without following the due procedure of law and
consequently the said impugned registered trademark ought to be considered as
lapsed.
5.
It is submitted on behalf of applicant that the Respondents have
filed a false affidavit dated 12 January 2009 in opposition No.CAL-723369 to
Application No. 641191 dated 26 September 1994 in as much as (a) para 7 of the
affidavit wrongly states that the predecessor in title was using only one
trademark EVEREADY and hence all sales relates to the said trademark, whereas
the truth of the matter is that the documents filed by the Respondents
themselves in the present case clearly point out that there were several other
trademarks under which the Respondents were selling their hand tools and (b) it
is wrongly stated in para 8 of the affidavit that the Respondents have been
using the trademark EVEREADY for hand tools since the year 1979-80. In fact,
the Respondents have deliberately suppressed from this Hon’ble Tribunal that
they were using the trademark ‘AMUL’
in respect of hand tools since 01 January 2008 and in fact the Respondents are
also as of 11 November
2017 registered proprietor
of the trademark 
.(Document 5 of the Convenience Compilation)
5.1 The said
impugned trademarks of the Respondents are liable to be cancelled on their own
admission made in para 13 and 27C of the counter statement wherein it has been
submitted by the Respondents that the trademark EVEREADY has become common to
trade.
5.2 In
fact, the Applicant in 2009 filed a civil suit Eveready Industries India
Page 4 of 41
Limited vs. Mr Sanjay Chadha&Anr bearing no. CS(OS) 1422 of 2009 (now
CS(COMM) 901 of 2018) before the Hon’ble High
Court of Delhi (“Delhi
Suit”). As per the terms of the interim order
passed in the Delhi Suit, the
Respondents
were
restrained
from
using
the
Applicant’s
label
mark
“
” and
also
restrained
the
use
of
the
word
mark
“EVEREADY” for all goods apart from screw
drivers and pliers. The
evidence in the matter is complete and the
same is now pending for final
arguments.
5.3 In rejoinder, the applicant has challenged the assignment. Para
1. (a) and (b) of reply
to preliminary submissions are reproduced
below:-
(a)
Respondent No. 2 proprietor
of Eveready Tools Emporium claim to have stepped into the shoes of Respondent
No. 1 by virtue of Deed of Assignment dated 8th January, 2009. The assignment deed effective from 1st April,
2005 which gives retrospective effect to the assignment for the past 4 years is
not permissible under the Act. Hence the assignment deed is null and void and
the affidavit of Mr. Sanjay Chadha in the opposition proceedings and the
assignment deed as aforesaid is null and void on this ground only.
(b)
The Assignment Deed dated
6th January,
2009 being invalid for giving retrospective effect by the joint request of the
Respondent No.1 and the Respondent No.2 is null and void. Due to the above
reasons, Respondent No. 2 is not the assignee of the trademark registration
Nos. 539621 and 439233 for EVEREADY in Class 8. Therefore, any document filed
as evidence which is in the name of Respondent No. 2 or Eveready Tools Emporium
are not be admitted and accepted as the same may be null and void in the eyes
of law. It is also therefore clear that Respondent No.1 and Respondent No.2 are
acting in connivance in each other. In view of the above, it is submitted that
Respondent No.2 is not a subsequent proprietor of the registered trademark
539621.
6.
As per
pleadings and written submission, the case of the respondents is as under:
i)
In the year 1985, the Respondents honestly and bonafidely adopted the
trademark EVEREADY Label manufacturing and marketing of hand tools and has been
continuously been the same (except for the period injunction order was in
operation in suit bearing CS(OS) No.1422 of 2009).
Page 5 of 41
ii)
The Respondents are the honest adopter and bonafide user of trademark
EVEREADY in relation to hand tools since the year 1985. Prior to adopting the
trademark EVEREADY in relation to goods falling in class 08, the respondent
took search report from the trade mark registry on 02.06.1983. (Exhibit-X
at Page 229-230 filed along with counter statement filed in ORA/97/09/TM/DEL).
The Respondent has discharged the onus of being honest adopter. The
Respondents are entitled to protection being honest adopter and concurrent
user.
iii)
The Respondents have been using the subject matter trademark since
the year 1985. Invoices dated 14.04.1998 (Page 148), 15.04.1998 (Page
150), 24.06.1998 (Page 155), 07.09.1998 (Page 167), 26.03.1999 (Page 188),
04.07.2005 (Page 189), 01.02.2006 (Page 192),
12.10.2006 (Page 203),
07.07.2007 (Page 210), 14.09.2007 (Page 213),
02.02.2008 (Page 215),
07.03.2009 (Page 220). The Respondents are
entitled to the registration being honest adopter and concurrent user.
iv)
Theapplicant has suppressed the factum of earlier knowledge of
Respondents registrations at least since 2000. When the Petitioner, through its
attorneys, Mr. D.P. Ahuja and Co. applied to the Registrar of Trademarks for
registration of the trademark EVEREADY vide application No.641191, the
application was examined by the trademark registry and vide examination report
No.31312 dated 11th
November, 1999, it was pointed out that the mark EVEREADY was already
registered in the name of Respondents with respect to screw drivers and cutting
pliers in Class 8 vide registration No.439833 and in respect of hand tools vide
registration under no. 539621. As the Petitioner is guilty of suppression of
its’ knowledge of Respondents’ registrations since the year 2000, the
petitioner is not entitled for any of the relief as prayed for.
Page 6 of 41
The
applicant was aware of Respondent’s registration since the year 2000. However
the applicant kept sitting almost for 9 years silently and suddenly after the
gap of 9 years, the applicant filed the instant petition. The Petition is barred by virtue of
inordinate , delay, latches and
acquiescence on the part of the Petitioner.
v)
In view of afore mentioned objection raised by the Registrar of
Trademarks, the applicant vide its letter dated 25.03.2000 (agreed to amend the goods in respect of which registration was
sought by it by excluding screw driver and cutting pliers. Hence the applicant
was very much admitted the right of Respondents in the subject matters
registrations by getting its goods amended by excluding Respondents’ goods i.e.
excluding screw driver and cutting pliers. In view of afore mentioned admission
made by the applicant, the present petitions are liable to be rejected.
vi)
Even in the suit proceeding bearing CS(OS) No.1422 of 2009, pending
between the parties, the Respondent claims that the Applicant was refused
injunction by the learned single judge in this matter since they knew that the
Respondent was on the Register of Trade Marks, and they filed for amendment of
the description of goods through Form TM-16, all of which amounts to
acquiescence, further the applicant has admitted the proprietary rights of the
Respondents in its subject matter product, during the cross examination. The
Relevant portion of the admission made by the Petitioner in the cross
examination dated 17.01.2018 is reproduced as under:
Page 7 of 41
Q.Is it correct that you
have admitted in the Trademark Office that the Respondents (Respondent herein)
is the user and owner of the trademark Eveready in relation to screw drivers
and pliers? A. It is correct.
vii)
Even otherwise, it is submitted that the applicant has not filed even
a single bill/invoice in support of user of the impugned Trade Mark EVEREADYin
relation to hand tools viz: screw drivers, cutting pliers etc. The impugned
Trade Mark application of the Petitioner under No. 641191 in Class 08 was filed
as proposed to be used. The fact remains that the applicant has no user at all
of the impugned Trade Mark in relation to goods of the Respondents i.e. hand
tools , viz: screw drivers, cutting pliers etc. By way of present Petition, the
applicant is trying to create monopoly in vacuum, which amounts to monopolistic
trade practices. The same is not permissible in law.
The
applicant has no user in relation to the goods of the Respondents. The
applicant is trying to create the monopoly in vacuum. Even otherwise, it is
submitted that the goods of the Respondents (i.e. hand tools ) are quite
different and distinct from that of the applicant (i.e. batteries). Both the
goods in question are filing in different class. Both the goods are sold at
different shops. Even otherwise, the people at large recognize the said goods
and business of the Respondents with goods of the Respondents only. There is no
any question of any confusion and deception in the market vis-à-vis use of the
Respondents. Hence the instant petitions are liable to be rejected.
viii)
The applicantwas unable to prove on records the documents showing
user of its impugned trademark EVEREADY showing goodwill and reputation, during
the trial proceeding in the suit proceeding bearing CS(OS) No.1422 of
Page 8 of 41
2009, pending
between the parties before the Hon’ble High Court of Delhi. The same is
apparent from bare perusal of evidence by way of affidavit of applicant and
cross examination conducted by Respondents in the afore mentioned Suit.
ix)
The applicant was already aware of the said rights and user of the
said Trade Mark and registrations of Respondents in relation to its said goods
since the year 2000. The applicant has continuously acquiesced for continuous
period of more than 5 years of the user of the Respondents. Hence the applicant
is estopped from assailing the trade marks registrations of the Respondents.
Even otherwise, the Respondents cannot be estopped from using the said Trade
Mark EVEREADY in relation to its
said goods (i.e. hand tools) , as the Respondents are honest adoption and
continuous user of the said Trade Mark in relation to said goods. The
Respondents are the registered proprietor of the said Trade Mark/Label in
relation to hand tools for considerable period of time. There exist special
circumstances in favour of the Respondents. As the applicant itself is guilty
of approaching this Board, the same is not entitled to any of the relief as
prayed for.
x)
The Applicant has not raised any challenge to the Assignment Deed
produced by the Respondent. Page 10 Paragraph 14 of the Rectification Petition
speaks that “the Applicants came to know about the presence of the impugned
registered trademark, in the name of Kamlesh Chadha, the Respondent herein …”.
This is a palpably false statement, because since 1999 onwards, the Applicant
was aware that Ms. Kamlesh Chadha has got this trade mark registered.
xi)
The Applicant has not produced evidence to support its claim of a
well known trade mark. They have further not established any usage for hand
tools.
Page 9 of 41
7.
On many dates, we have heard Mr. Ajay Sahni, Advocate appeared on
behalf of applicant. Mr. Sudershan K Bansal appeared and also argued in part on
behalf of respondents. The main arguments are addressed by Mr. Saurabh Kirpal.
We may mention here that when the matters were already argued by the applicant
and Mr. Sudershan K Bansal, suddenly at the midst requested that the hearing be
postponed till IPAB starts physical hearing. The said request was rejected
mainly on the reason that once the matters are substantially argued by both
parties, it is not proper to adjourn the matters for awaiting the end of
COVID-19. However, we agreed to give reasonable time to argue the remaining
part. Mr. Kirpal has raised number of objections in order to satisfy us that
both petitions are liable to be rejected.
8.
We have gone through the pleadings, documents and written submissions
of the parties. From the same, we are of the view that the following issues are
emerged in order to decide the matters:-
i)
Whether the trade-mark of the applicant is a well known mark within
the meaning of Section 2(1)(zg) of the Act.
ii)
Effect of acquiescence (if any) on the part of the applicant under
Section 33 of the Act.
iii)
Effect
of non-grant of injunction in favour of applicant by the Civil Court.
iv)
Concealment (if any) by the applicant and its effect; or any
admission in the cross-examination of witness of the applicant.
v)
Whether the adoption of the same mark and logo was honest on the date
of filing of application of registration.
vi)
Validity
of assignment by the proprietor in favour of his Sanjay Chadha.
vii)
Use of
a mark in relation of goods which are not similar.
viii)
Conduct of the assignor and assignee of two marks which are under
rectification.
ix)
Concurrent
user.
Page 10 of 41
x)
If the answer to Issue No. 1 is affirmative, then whether there is dilution
of the Applicant’s well known trade mark
9.
Well-known
mark
a)
Mr Saurabh Kirpal has argued relying on various admissions made by
the Applicant in the Trade Mark Registry concerning the amendment of the
description of the goods, and giving up certain goods. However, the Applicant’s
case is simple that the mark EVEREADY is a well known Trade Mark that is being
used since 1942 for Batteries and Torches, therefore the aforementioned
admissions would not be pertinent. Mr. Saurabh Kirpal has argued that the
conditions of well-known trade mark are not satisfied by the applicant.He
argued that:
b)
There
is no sufficient evidence.
c)
There is hardly any goodwill and reputation on the relevant date of
year 1985 in order to get the protection on the basis of well-known trade mark.
d)
Since the applicant has miserably failed to produce the evidence to
fulfil the condition, the question of taking the shelter of well-known trade
mark does not arise.
e)
Once the applicant has failed on this issue, as the business
activities are different, general law will apply.
The Applicant had the task of establishing
before this Forum that its mark is a
well-known Trade Mark.
10.
Section
2(1)(zg) of the Act reads as under:
2(1)(zg) “well known trade mark”, in relation
to any goods or services, means a mark which has become so to the substantial
segment of the public which uses such goods or receives such services that the
use of such mark in relation to other goods or services would be likely to be
taken as indicating a connection in the course of trade or rendering of
services between those goods or services and a person using the mark in
relation to the first-mentioned goods or services.;
Page 11 of 41
11.
The grounds for refusal of registration under Section 11 of the Act
are mandatory being Special Act. The same are read as under:-
11. Relative grounds for refusal of registration.—
(1)
Save as provided in section 12, a trade mark shall not be registered
if, because of—
(a)
its identity with an earlier trade mark and similarity of goods or services
covered by the trade mark; or
(b)
its similarity to an earlier trade mark and the identity or
similarity of the goods or services covered by the trade mark,
there
exists a likelihood of confusion on the part of the public, which includes the
likelihood of association with the earlier trade mark.
(2) A trade mark which—
(a) is identical with or similar to an earlier
trade mark; and
(b) is to be registered for
goods or services which are not similar to those for which the earlier trade
mark is registered in the name of a different proprietor,
shall not
be registered if or to the extent the earlier trade mark is a well-known trade
mark in India and the use of the later mark without due cause would take unfair
advantage of or be detrimental to the distinctive character or repute of the
earlier trade mark.
(3)
A trade mark shall not be registered if, or to the extent that, its
use in India is liable to be prevented—
(a)
by virtue of any law in particular the law of passing off protecting
an unregistered trade mark used in the course of trade; or
(b) by virtue of law of copyright.
(4)
Nothing in this section shall prevent the registration of a trade
mark where the proprietor of the earlier trade mark or other earlier right
consents to the registration, and in such case the Registrar may register the
mark under special circumstances under section 12.
Page 12 of 41
Explanation.—For the purposes of this
section, earlier trade mark means—
(a)
a registered trade mark or an application under section 18 bearing an
earlier date of filing or an international registration referred to in section
36E or convention application referred to in section 154 which has a date of
application earlier than that of the trade mark in question, taking account,
where appropriate, of the priorities claimed in respect of the trade marks;]
(b)
a trade mark which, on the date of the application for registration
of the trade mark in question, or where appropriate, of the priority claimed in
respect of the application, was entitled to protection as a well-known trade
mark.
(5)
A trade mark shall not be refused registration on the grounds
specified in sub-sections (2) and (3), unless objection on any one or more of
those grounds is raised in opposition proceedings by the proprietor of the
earlier trade mark.
(6)
The Registrar shall, while determining whether a trade mark is a
well-known trade mark, take into account any fact which he considers relevant
for determining a trade mark as a well-known trade mark including—
(i)
the knowledge or recognition of that trade mark in the relevant
section of the public including knowledge in India obtained as a result of
promotion of the trade mark;
(ii)
(ii) the duration, extent and geographical area of any use of that
trade mark;
(iii)
the duration, extent and geographical area of any promotion of the
trade mark, including advertising or publicity and presentation, at fairs or
exhibition of the goods or services to which the trade mark applies;
(iv)
(iv) the duration and geographical area of any registration of or any
application for registration of that trade mark under this Act to the extent
that they reflect the use or recognition of the trade mark;
(v)
the record of successful enforcement of the rights in that trade
mark, in particular the extent to which the trade mark has been recognised as a
well-known trade mark by any court or Registrar under that record.
(7)
The Registrar shall, while determining as to whether a trade mark is
known or recognised in a relevant section of the public for the purposes of
sub-section (6), take into account—
(i)
the
number of actual or potential consumers of the
Page 13 of 41
(ii)
the number of persons involved in the channels of distribution of the
goods or services;
(iii)
the business circles dealing with the goods or services, to which
that trade mark applies.
(8)
Where a trade mark has been determined to be well known in at least
one relevant section of the public in India by any court or Registrar, the
Registrar shall consider that trade mark as a well-known trade mark for registration
under this Act.
(9)
The Registrar shall not require as a condition, for determining
whether a trade mark is a well-known trade mark, any of the following, namely:—
(i)
that
the trade mark has been used in India;
(ii)
that
the trade mark has been registered;
(iii)
that the application for registration of the trade mark has been
filed in India;
(iv)
that
the trade mark—
(a) is well-known in; or
b) has been registered in; or
(c) in
respect of which an application for registration has been filed in, any
jurisdiction other than India; or
(v)
that
the trade mark is well-known to the public at large in India.
(10)
While considering an application for registration of a trade mark and
opposition filed in respect thereof, the Registrar shall—
(i)
protect a well-known trade mark against the identical or similar
trade marks;
(ii)
(ii) take into consideration the bad faith involved either of the
applicant or the opponent affecting the right relating to the trade mark.
(11)
Where a trade mark has been registered in good faith disclosing the material
informations to the Registrar or where right to a trade mark has been acquired
through use in good faith before the commencement of this Act, then, nothing in
this Act shall prejudice the validity of the registration of that trade mark or
right to use that trade mark on the ground that such trade mark is identical
with or similar to a well-known trade mark.
Page 14 of 41
12.
Section-11 stipulates that subject to provision in Section-12, a
trade mark shall not be registered, there exists a likelihood of confusion on
the part of the public.Trade Mark Act is a Special Act. The provision of
Section-11 is a prohibitary provision to the registration of identical with or
similar to the earlier trade mark under Section 11(2)(b). In the present case,
it is undisputed fact, the trade mark is identical. Section 11(2) does not
mandate for similar goods. Rather it mandates that if earlier trade mark is a
well-known trade mark in India and the use of the later mark without due cause
would take unfair advantage or be detrimentalto the distinctive
character or repute of the earlier mark. Sub-section (3) ismore stringentand
mandatory. Section 11(1) (3) even mandates that no trade mark shall be
registered and is to be prevented by virtue of law of copyright. It is settled
law that while considering the mandatory provision of Section 12(1) and Section
11, it is the first duty of the Tribunal towards the public and the maintenance
of purity of Register in order to avoid likelihood to deceive and cause on
confusion in public at large.
13.
As far as prevention of copyright is concerned, there is no dispute
that the respondents have appropriate similar artistic work in logo as a whole.
No justification is given by the respondents,. The concept of well-known trade
mark covers under Section (11)(3)(b) of the Act if it is an infringement of
copyright.
14.
In the light of above, it is to be examined as to whether the trade
mark of the applicant is a well-known trade mark within the meaning of Section
2(1)(zg) and Section 11 of the Act or not and as to whether the prayer can be
allowed (if it is a well known mark) to take the unfair advantage or
detrimental or repute of earlier trade mark within the meaning of Section 11(2)
of the Act. It is admitted position that the applicant is holding registrations
since 1942 and have come to file the rectifications mainly on the two reasons
apart from others that the respondents are not the proprietor of the marks.
Page 15 of 41
15.
It is evident from the facts of present case that by
virtue of user and being coined the trademark, ‘EVEREADY’ is a distinctive
mark. It is registered in 1942. It is recognized all over India and
abroad.Public in India is aware and having knowledge about the mark by way of
user and promotion. It is also registered in other classes. It is protected by
various courts from time to time.As of today, the user is about 78 years.Sale
is in hundreds crores per annum. Further the object of Section
11(2) was to protect the reputation of certain trade marks that extended beyond
the pale of the goods or services that were being originally offered under
them, the primary factor here being the brand recollection, and not the
turnover of the company. EVEREADY is not a common name. Marks like Bajaj, Dr.
Reddy, Kirloskar, Sharp, Nirma Mahindra n Mahindra, Omega, Usha, Intel,
Aggarwal Packers n mover, Havells, Raymond and Jockey which are common surnames
and words have been declared as famous/well known/ reputed marks by the various
High Courts. If those are declared then EVEREADY stand in better footing, if
sufficient evidence is produced before us. When the word EVEREADY is heard
by layman, he has naturally under the presumption that those goods, whatever their
origin, must have been manufactured by the main company EVEREADY.
16.
It is necessary to refer certain facts as alleged by the applicant in
order to know that whether the applicant has produced sufficient material to
satisfy this Board to cross such hurdle.
a)
In para-11 of the petitions, it has come on record that the applicant
has large number of registrations in its favour. The earlier registration is
dated 28.10.1942. The details are given as annexure-C.
b)
Sale figures are given in Annexure-D. Figures are mentioned in
para-12 of the petition along with advertisement figures from the year 1981-82.
c)
Photo
copies of invoices and advertisement are filed as Annexure – D.
Page 16 of 41
d)
The Applicant had sales of around INR 229.70 Crore and made
promotional expenses of approx. INR 3 Crore in the financial year 1990-1991,
when the Respondents filed their trademark application. In view of the same,
the Respondents cannot claim to be unaware of the Applicant’s Trade Marks at
the time of the adoption of the Respondents’ Trade Marks.
e)
The Applicant has been vigilant in protecting its trademark EVEREADY
even in the year 1930, in the case of Chwan
Swee Bee v National Carbon Company reported in
MANU/RA/0071/1930. The fact that the Applicant has been using a distinctive
artistic label / banner of writing the trademark EVERADY in a pyramidal form
has also been recognized by the Hon’ble High Court of Allahabad in as early as
1953 in a case reported National Carbon
Co (India) Ltd v Rajkumar and Anr MANU/UP/0122/1954. The Hon’ble Supreme
Court also in the year 1964 has referred to the Applicant’s products EVEREADY
torches in the matter of
Chhabildas
Tribhuvandas Shah and Ors v Commissioner of Income Tax, West BengalMANU/SC/0174/1964
17.
In view
of such material, it has come on record that –
a)
Public
has a knowledge about this mark.
b)
Extent
of user more than 78 years is sufficient in India and abroad.
c)
Large
number of registrations obtained.
d)
Successful
enforcement.
e)
All conditions of Section 11(1)(6) are satisfied and also under
Section 2(1)(zg) of the Act.
18.
Thus, the applicant’s mark is a well-known mark due to their
extensive, continuous use, have gained immense goodwill and reputation and have
attained the status of a well-known mark under Section 2(1)(zg) of the Act.
Page 17 of 41
19.
Once it is a well known marks, the registration if
appropriated in bad faith even in relation to different goods, the benefit of
Section 11 and 18 must go to a party who is enjoying the well-known mark.
Adoption of mark by the respondents
20.
In the present case, the respondents have not only adopted the same
mark, but also in the year 2005 invested in the name of “EVEREADY” as dominant
part of trading style. Deliberate attempt is there to cause deception so as to
confuse the members of general public.The
comparison of both rival marks of the parties are reproduced as under:-
|
Applicant’s Trade Mark |
Respondents’ Trade Mark |
439233
6728
EVEREADY
539621
21.
Thus, the adoption of the mark "EVEREADY" and the mark
adopted by the Respondents was not honest and it must have been done with an
intention to ride over the goodwill and reputation of the Applicant and for
this reason also the impugned registration in favour of the Respondents is
liable to be taken off the record. It is settled law that in cases of a
dishonest adoption, the onus of proof is on the Defendant to prove the honesty.
[MAC Personal Care Pvt Ltd and Ors v
Laverana GMBH and Co KG and Ors 2016
(65) PTC 357 (Del)]
22.
It appears that from the year 2005, the approach of the respondents
was more aggressive who bent upon not only to use the same mark but also use
the trading style. Section 29(5) stipulates that if a trade mark is used in
trading style, it also
Page 18 of 41
amounts to
infringement of trade mark.
23.
The Applicant has been using the trademark “Eveready” since 1942..The Respondents filed their
application for the registration of the trademark “Eveready” later on. It is an
admitted fact that the Applicant is the prior user of the mark “Eveready”. [Suresh Kumar Jain v Union of India and Anr
MANU/DE/1214/2012; Pramod Kumar Vs.
Suresh Garg and Ors MANU/IC/0004/2016]
24.
It is settled law that a use of a well-known mark, even in respect of
goods or services which are not similar to those provided by the trademark
owner, though it may not cause confusion amongst the consumer as to the source
of goods or services, may cause damage to the reputation which the well-known
trademark enjoys by reducing or diluting the trademark's power to indicate the
source of goods or services. [Tata Sons Ltd v Manoj Dodia and Ors 2011
(46) PTC 244 (Del)] A well-known trademark
can be protected across all classes of goods [FordMotor CompanyvMrs. C R
Borman and Anr MANU/DE/1564/2008]
25.
As per settled law, in case of mala fide adoption, even use for a
long period cannot vest any right in the Respondents. [JolenInc v. Doctor & Company 98 (2002) DLT 76; Innovolt v Kevin Power Solutions Ltd
2015 SCC Online Del 13730 (Para 58);
Hamdard National Foundation v Abdul
Jalil 2008 (38) PTC 109 (Del)] In fact,
where the initial adoption of a mark is dishonest, no amount of subsequent use
can purge the initial dishonest conduct [Win-Medicare
Pvt Ltd v Galpha Laboratories Ltd MANU/DE/0051/2016]
26.
It was observed by Romer J In the matter of an application brought by
J.R. Parkington and Coy Ltd (1946) 63 R.P.C.-171 at 181 that the adoption of a
mark in the first instance are of considerable importance when one once comes
to consider
Page 19 of 41
whether the use of the
mark has or has not been an honest user. If the user in its inception was
tainted it would be difficult in most cases to purify it subsequently.
27.
We are of the view that the relief sought by any party on any ground,
it can only be granted or advantage of bona fide and concurrent user is given
if a party who is not guilty of a fraud.
28.
The mala fide of the Respondents can also be gathered from the fact
that initially the Respondents were conducting their business as Everest Tools
Industries but adopted the Applicant’s Trade Mark as a part of their trade name
to ride on the reputation of the Applicant. The advantage of concurrent-user
can be availed by a party if the adoption is honest because of Section 12(3) with
the governing the word honest.
Evidence produced by the respondents about user
29.
We have gone through the documents filed by the respondents which are
in the nature of Income-tax returns, invoices, price list and other connected
to the user claimed since 1985. Admittedly, the user of the respondent has been
denied by the applicants –
a)
Income-tax return and assessment orders do not show the trade mark “EVEREADY”.
b)
The
price list of the year 2006 is available on record.
c)
Few invoices of the assignee from the year 2005-2009 of Eveready
Tools Emporium are filed.
d)
Sale
figures do not show the trade mark.
e)
Few invoices for the years 1998 and 1999 are filed pertaining to the
trade mark Eveready and Champion.
Page 20 of 41
It
appears to us that there is no cogent and clear evidence of user claimed. The
respondents were using other trade marks also. The respondent’s have made the
wrong statements that they have only one trade mark. Continuous user is missing
in the matter. There is a break of user by the assignor and assignee for long
period of time. The question of long user/continuous user does not arise nor
the respondents were entitled for registration under concurrent year. The
filing of applications itself were bad as on the date of respective
applications, the respondents were not the proprietor of trade mark.
30.
Assignment
Assignment
Deed is dated 6th January 2009 effective from 1.4.2005.it is pertaining to two
registered trademark no’s 439233,539621 in class 8 in the name Smt. Kamlesh
Chadha assignor in favour of Sanjay Chadha. The assignor in the deed executed
has undertaken that the assignor shall not use the mark in any manner without
the consent of assignee and all right would be vested with assignee only. It is
evident that the said deed is effective from 1.4.2005 as per case of the
respondents.
The assignor has also executed affidavit dated 6.1.2009.
It the stand of the respondents without
prejudice is accepted, then from 1.4.2005 has
no right to
both Trademarks in whatsoever manner. In case the Sanjay Chadha is become owner
of the Marks w.e.f. 1.4.2005 then why the notice of opposition dated 28.3.2008
to the applicant mark under application number 641191 in class 8 was filed.
Sanjay
Chadha has filed an affidavit as evidence dated 12.1.2009. It appears from para
8 of the affidavit that statement of sale figures from the year 1981 -1984 and
1986-87 to 1991-1992, 2000-2001,2002-2003 to 2004-2005 are missing. It appears
Page 21 of 41
to us either
the mark was not used by the assignor or assignee during relevant period of
time or the assignment deed is anti dated/ cover up document.
There
is no procedure
in the Act
to anti date
the document.
As per the
case of the respondents that the mark was acquired by the Sanjay Chadha on
14.2005. As per Section 45 of the Act where a person becomes entitled by
assignment to a registered trademark, he has to apply for registration in the
prescribed manner for such assignment to be entered on the Register. It appears
from record that the trademark was not renewed at that point of time. Once it
was not renewed and not valid where is the question of assignment of registered
trademarks. The application for recording the assignment was filed after many
years when the said document was challenged in court. The mark was renewed in
the year 2019. Thus we are clear in our mind that it is a defective document
and contrary to law.
31.
Renewal of Trade Mark No. 439233
As per digital record of
Trade mark office is available on-line, counsel for the applicant has brought
to our notice as follows:-
a)
The Respondent applied for registration of the trade mark “Eveready”
as a word mark under Application No. 439233 on 19 June 1985. The said trade
mark was renewed in the years 1992 and 1999 for 7 years each, and stood renewed
till the year 2006. The Respondent failed to apply for renewal of its trade
mark. After the lapse of restoration period of one year as per law is liable to
be lapsed. The Respondent, in the year 2010 applied for renewal and restoration
of the said trade mark, and also applied for change of name and address of its
agent to “Delhi Registration Services”.
b)
The Respondent also filed an interlocutory petition, requesting for
restoration of the said trade mark (thereby admitting that the same was not
duly registered),
Page 22 of 41
stating that
the Applicant did not receive the prescribed renewal notice. It is pertinent to
note that in support of its this statement, Mr Sanjay Chadha filed an affidavit
stating that neither him nor his predecessor received the prescribed notice
under Section 25(3) of the TM Act.
c)
The hearing on the said interlocutory petition was only held on 20
August 2018, wherein the agent for the Respondent submitted that the requisite
notice was not delivered to them, and hence the mark could not be renewed in
time. It is submitted that the said statement is highly misleading and
incorrect, as in 2006, when the requisite notice was to be issued, the agent on
record was different, i.e. Mr Vipan Jain and no notice was to be sent to Delhi
Registration Service.
Thus,
it is evident that on the date of execution of assignment deed, the trade mark
no. 439233 in Class-8 was lapsed as it was not renewed on the relevant
date/year 2009. Even as per admission by Mr. Sudershan K Bansal that the
application was filed in 2010.
32.
Different goods
No doubt, the
goods of rival parties are different. But once the trade mark is a famous trade
mark under the mandatory provisions for different goods, the same can be
protected for different goods. Section-11 prohibits such registration. Even
otherwise, reputed trade marks are also protected for dis-similar goods
irrespective of facts whether well-known or not as per settled law,
particularly when the trade marks are invented and the party is unable to give
any justification to hit upon the trade mark under rectification. In the
present case, the respondents have failed to give any valid reason for adoption
of trade markhas hit upon them. It appears to us that it is simply a theft.
Stolen property cannot become rightful property any amount of user although in
the present case, the user claim and continuous evidence is missing. Even if
the trade mark is not a well-know trade mark and business activities are
different,
Page 23 of 41
still it can be protected
because of long user, proprietaryship right and nature of the mark in question.
a)
AIR
1969 Bombay-24 - Sunder ParmanandLalwani Versus Caltex (India) Ltd. – Para 20
20. In this case, the goods are totally
different. There is no trade connectionbetween them. There is no connection in
the course of trade, nor any common trade channels. These are factors against holding that
there would be any danger of deception or confusion. But we must consider the
factors which tend to show that there is a likelihood of creating deception or
confusion. The opponents have been using their mark on a very large scale since
1937. Their sales in 1956 exceeded Rs. 30crores. Their publicity is widespread
and large. In 1956 they spent over a
million rupees on advertisements. The goods in respect of which they use the
trade mark “Caltex” are mainly petroleum, kerosene and lubricants like greases
and oils etc. The goods in respect of which the applicant seeks registration
are mainly watches. The class of goods in respect of which the applicant seeks
registration is wider than watches and watches can be both costly and cheap. It
cannot go without notice that the goods in respect of which the applicant in
fact used the mark before he applied for registration were very cheap watches.
The goods of the opponents are used by persons all over India, in cities and
villages, in different walks of life, rich or poor, literate or illiterate. The
goods of the applicant are different in nature. But they are watches. They can
be cheap watches. The potential market for them is, therefore, similar to that
of the existing market of the opponents, in the sense that the goods of both
the parties are not special goods. They are goods which would be purchased by
the common man. Now, so far as the word “Caltex” is concerned, it is common to
the opponent's mark as also to the opponent's name. To mention the mark “Caltex”
is also to mention the name of the owner. The mark is unlike the “Lion” or the “Stag”
mark, where there would be no direct connection between the mark and the name
of its owner. The opponents are a large company known by many as having large
resources, and therefore, capable of starting any new industry or trade.
Because of that reason, there is a greater probability of the public believing
that any goods with the mark “Caltex” on them would be the goods of the
opponents. This is, in our opinion, sufficiently established by the 36
affidavits referred to above. The deponents of these 36 affidavits are from
different parts of India, and from different vocations. In this connection, it
may be stated that one of the deponents, Pujara, in his cross-examination, has
stated that he would not be confused if he found the mark “Caltex” on other
goods, like otato chips, hats, umbrellas etc. Such evidence on this particular
point is not of much assistance. A witness who says so may be more particular
or may have a sub-conscious background, whereby he makes the necessary distinction
between the mark as used on different kinds of goods. Although such evidence
would be weak, even such weak evidence has not been produced by the applicant.
There is no affidavit on behalf of the applicant of any witness who says that
he
Page 24 of 41
would not be so deceived or confused. But,
there is the evidence of Rajpal, who even in his cross-examination has stated
that he weld take all goods bearing the mark “Caltex” to have been manufactured
by the opponents. The evidence of the other deponents as contained in their
affidavits is similar. There is an additional factor to be taken into
consideration. The applicant has given no explanation why he selected the word “Caltex”.
Mr. Bhabha contended that although the applicant has not specifically stated
the reason for his selection, it can be inferred from the other statements of
the applicant on the record. He pointed out that the applicant has stated that
in about April 1955 he had gone to Switzerland: that hesaw the mark applied by
Degoumois & Co. on their watches; and that, their watches had good sales.
He says that these facts by themselves provide the reason for his making the
selection. But, unfortunately for the applicant, it is also his evidence that
Degoumois & Co. had other marks in respect of their watches. As a matter of
fact, on the first order which the applicant placed with Degoumois & Co.,
which is dated April 6, 1955, the mark originally selected by him in respect of
the categories of Avatches covered thereby was “Sandy”, which also was a mark
of Degoumois & Co. He got the mark “Sandy” changed to “Caltex” only
subsequently. Why he made the change has not been explained. It would be
legitimate to infer that he selected the mark “Caltex” to take advantage of the
reputation of that mark as used by the opponents in connection with their
goods. The applicant's selection of the mark was made, to use the words of Lord
Denning in Parker-Knoll Ld. v. Knoll International Limited, with intention to
deceive and cause confusion, and he must, therefore, be given credit for
success in his intention, and we should not hesitate to hold that the use of
that mark is likely to deceive or cause confusion. In this connection, the
following passage from the judgment in Edward Hack's case, occurring at page
106 is relevant:
“I think that a large number of persons if
they heard of laxative called ‘BlackMagic’ or saw advertisements of a laxative
called ‘Black Magic’ would be likely to think that the laxative was made by the
same firm who made the ‘Black Magic’ chocolates”.
b)
(1994) 14 PTC 0 287 - Daimler Benz Aktiegesselschaft and another versus
Hydo Hindustan (Para 13-20)
13.
There
are marks which are different from other marks. There are names which are
different from other, names. There are name and marks whichhave become household words. “Benz”
as name of a Car would be known to every family that has ever used a quality
car. The name “Benz;” as applied to a car, has a unique place in the world.
There is hardly one who is conscious of existence of the cars/automobiles, who
would not reeognize the name “Benz” used in connection with cars. Nobody can
plead in India, where “Mercedes Benz” cars are seen on roads, where “Mercedes”
have collaborated with TATAs, where there are Mercedes Benz —Tata trucks have
been on roads in very large number, (known as Mercedes Benz Trucks, so
Page 25 of 41
long as the collaboration
was there), who can plead that he is unaware of the word “Benz” as used with
reference to car or trucks.
14. In my view, the Trade Mark law is not
intended to protect a person who deliberately sets out to take the benefit of
some body else's reputation with reference to goods, especially so when the
reputation extends world wide. By no stretch of imagination can it be said that
use for any length of time of the name “Benz” should be not objected to.
15.
We must
keep in mind that the plaintiff company exists in Germany. An insignificant use
by too small a product may not justify spending large amounts needed in
litigation. It may not be worth while.
16. However, if despite legal notice, any one big
or small, continues to carry the illegitimate use of a significant world wide
renowned name/mark as is being done in this case despite notice dated
9.12.1989, these cannot be any reason for not stopping the use of a world
reputed name. None should be continued to be allowed to use a world famed name
to goods which have no connection with the type of goods which have generated
the world wide reputation.
17.
In the
instant case, “Benz” is a name given to a very high priced and extremely well
engineered product. In my view, the defendant cannot dilute that by user of the
name “Benz” with respect to a product like underwears.
18. Counsel for the defendant seeks three weeks'
time to dispose of the existing stock. In my view, Hybo Hindustan is an
established concern. It ought not to have adopted the name “Benz” with respect
to underwear. It has its own name, its own reputation and it ean very easily
and conveniently bear the loss which will have to be sustained by it by not
selling any of the underwears which it has wrongly chosen to mark “Benz”,
forthwith.
19. It is not the case of the defendant that the
defendant is only selling underwears under the trade mark “Benz”. It markets
undergarments bearing different trade names, such as “VIP” etc. In my view,
destruction of the underwears, or non-use of the said goods should send a clear
message to persons, at least of the eminence, of Hybo Hindustan, that they
should not demean other people's name and reputation by using the name like “Benz”
with reference to the goods produced by them.
20.
In my
view, it is but right that the defendant should be restrained from using the
word “Benz” with reference to any underwear which is manufactured by them, and
in my view, injunction should issue, restraining the defendant to cease and
desist from carrying on, trade in any undergarments in the name of “Benz” and “Three
Pointed Human Being in a Ring”, forthwith. So ordered. I.A. stands disposed of.
c)
(2003) 26 PTC 1 - Honda
Motors Co. Ltd. VersusCharanjit Singh &Ors. (Para 11 – 37)
11. In Bata
India Ltd. v. PyareLal and Co., AIR 1985 All. 242, it was observed asfollows:
Page 26 of 41
“Where a trader uses the name or mark or sign deceptively similar to
that of the second trader in relation to goods marketed by the former even
though it may not be the same goods or the same type of goods as produced by
the second trader, yet a question of passing off may arise. The main
consideration will be whether there is
a
misrepresentation.”
12. It is also well settled that the plaintiff in passing off action does
not have to prove that he has actually suffered damage by loss of business or
in any other way. Aprobability of damage is enough but the actual or probable
damage must be damageto him in his trade or business i.e., damage to his
goodwill in respect of that trade orbusiness. It was so observed in Bulmer v.
Bellinger, (1978) RPC 79 (CA).
13. It has further been observed in Apple Computer v. Apple Leasing, 1993
IPLR 63[1992 (1) Arb. LR. 93 (Delhi)], that it is not even necessary in the
context of the present day circumstances of free exchange of information and
advertising throughnewspapers, magazines, video, T.V. Movies, freedom of travel
between parts of the world to insist that a particular plaintiff must carry on
business in a jurisdiction where improper use of its name or mark can be
restrained by the Court. It was also observed that in a case of passing off
action, the main consideration is the likelihood of confusion and consequential
injury to the plaintiff, and the need to protect the public from deception,
deliberate or otherwise.
14. In a nutshell, in an action for passing off, the plaintiff has to
establish that hisbusiness or goods has acquired the reputation he is claiming,
by showing that, histrade name has become distinctive of his goods and the
purchasing public at largeassociates the plaintiff's name with them. The
plaintiff is, however, not required toestablish fraudulent intention on the
part of the defendant. Causing of actual confusionamongst the customers is also
not to be proved. What is required to be established isthe likelihood of
deception or confusion in the minds of the public at large. Thelikelihood or
probability of deception depends on a number of factors, whichnecessarily, is a
question of fact and varies in the circumstances of each case. Theplaintiff has
also to establish that the defendant's user of the plaintiff's marks, lettersor
other indicia with regard to his goods is likely to lead to confusion in the minds
ofpublic, and such confusion is likely to cause damage or injury to the
reputation,goodwill and fair name of the plaintiff. The plaintiff has also to
show his prior user ofthe trade mark, in point of time than the defendant. The
plaintiff, however, need notprove actual loss or damage in an action of passing
off. Also registration of the trademark is inconsequential in such an action.
15. For grant of interim injunction, what is to be seen is as to whether
the plaintiff hasa prima facie case. The mark HONDA is not only the trade mark
of the plaintiff, but it also forms part of its corporate name. With the
passage of time, the word “HONDA” has attained world wide recognition and is
associated with the plaintiff company. Theplaintiff's products specially cars
and motorcycles are known all over world for theirsuperior quality and the mark
HONDA has acquired substantial international reputationand goodwill.
16. It is contended by the learned Counsel for the plaintiff that the
plaintiff'sproducts are being imported into India since late fifties which has
made HONDA ahousehold name
Page 27 of 41
with the consumers in India. It is also
contended that the plaintiff'sgoodwill and reputation also reached India
through various advertisements, publishedby the plaintiff in many international
journals. Even the cars, manufactured by theplaintiff, are in use in India for
the last many decades. The plaintiff has placed onrecord documents to prima
facie show that the mark HONDA is of international reputeand is also being used
in India for the last about five decades. Photocopies of thejournal “Business
Week” placed on record shows the international ranking of HONDA.The photocopies
of the magazines “Asia Inc.” and “Asia Week” show some write upsabout the
plaintiff's business activities signifying its world wide reputation.
Someextracts from the magazine “National Geographic” having considerable
circulation inIndia, more particularly from some of its issues pertaining to
the period from 1971 to1979 containing advertisements of HONDA have been placed
on record. Extracts fromsome issues of Asia Inc., Asia Week and Forbes carrying
on advertisements of HONDAhave also been placed on record. All these magazines
are having circulation in India.These documents prima facie show that the name
of HONDA has been known in Indiafor the last five decades. Photocopy of the
annual report of HERO HONDA (at pages 45to 66 of the documents file) show that
the company HERO HONDA MOTORS LTD. waspromoted by the plaintiff in joint
venture with HERO CYCLES PVT. LTD., which wasprior to 1985. A document at pages
67-68 (documents file) shows that public issue ofSHRIRAM HONDA POWER EQUIPMENTS
LTD. was opened on 31st August, 1987. Notonly this, some invoices of HONDA
products showing its sales in the year 1982-1983have also been placed on
record. A list of persons owing HONDA cars in India from1965 to 1990 is also
placed on record. Some other documents like statement ofaccount and documents
pertaining to commission paid to “T.I.M. and Sales Ltd.” and“Giriraj and Associates”,
for sale promotion expenses, have been placed on record.These documents
indicate that sale promotion activities of plaintiff's products weregoing on in
India even during the period 1982-1983. Reference has also been made toa
statement mentioned in para 7 of the plaint giving the net sales of the
plaintiffbetween 1974 to 1997. The plaintiff has also placed on record the
registrationcertificate and their renewals which the plaintiff had obtained for
the trade markHONDA. Not only that, the plaintiff has also applied for
registration of trade markHONDA in all classes contained in 4th Schedule of
Trade and Merchandise Marks Rules.
17. The learned Counsel for the plaintiff brought to my notice that trade
markHONDA came for consideration by Indian Courts on suits filed by the
plaintiff forits user by other various traders for allied and cogent goods like
rubber parts, paintsetc. and some of the Courts have even passed interim orders
and some have evendecreed the suits. My attention has also been drawn to a
number of cases in whichoffending traders illegally using the plaintiff's mark
HONDA have given an undertakingthat henceforth they will not use the
plaintiff's mark after they were served with ‘ceaseand desist’ notice.
Documentary evidence has been placed on record by the plaintiff.To my mind, the
material placed on record, prima facie show that the plaintiff's markHONDA has
acquired substantial international reputation and goodwill and theconsumers in
India are aware of the same for the last several years. It is prima
facieestablished that the mark HONDA has become distinctive of the goods of the
plaintiff
Page 28 of 41
and the purchasing public at large associates the plaintiff's name
with the said mark.
18. Learned Counsel for the plaintiff contends that the defendants, have
used themark HONDA for their product ‘pressure cookers’, in order to encash
upon goodwill and reputation of the plaintiff by inducing the customers to buy
their products taking themas those of the plaintiff. The defendants are thus passing
off their goods as that of theplaintiff's. It is, therefore, urged that
defendants should be restrained from using themark HONDA for their products. It
is submitted that this user by the defendants alsodilutes the plaintiff's
reputation and goodwill, which is known for its high qualityproducts.
19. Learned Counsel for the plaintiff has further emphasized the manner
in whichthe mark HONDA is used by the defendants for their product pressure
cooker. It ispointed out that from the defendants' application for registration
of the trade markHONDA, which is available on documents filed it is apparent
that the trade markHONDA has been shown in a circular device. The added matter
is “SI PRODUCTS’perhaps indicating the name of the defendants firm “Steel India
Products”. In thisrepresentation the mark HONDA is so prominent that the added
matter “SIPRODUCTS” is likely to be over-looked by the producer and he would
purchase theproduct pressure cooker, taking it to be of the plaintiff or
associated in some mannerwith the plaintiff. In the second application for
registration of the trade mark, which ispending consideration before the
Registrar of Trade Marks, the defendants have evenremoved the added matter “SI
PRODUCTS” and the mark HONDA has been shownprominently in a circular device,
which in all respects is identical to the plaintiff'smark. Apparently the
defendants have done so with dishonest intention so as to createa deception in
the minds of the public and pass off their products as those of theplaintiff,
encashing upon its goodwill and reputation. This representation of the
markHONDA appears on page 2 of the list of documents dated 12th January, 2001
filed bythe defendants. Another label showing the mark HONDA used or intended
to be usedby the defendants has been placed on record by the defendants at page
2A of theabove stated list. This shows the mark HONDA prominently in the same
style, which isused by the plaintiff with the added matter “Steelindia” above
and “pressure cooker”below the mark HONDA. The added matter is in italics and
the font is so small that itcan hardly be noticed. The whole prominence is
taken by the mark HONDA. It issubmitted that such depiction of the mark HONDA
in the labels used by thedefendants are likelyto lead the public to believe that
the goods offered by them are the goods of theplaintiff. It is further
contended that the plaintiff is likely to suffer damage by reasonof the
erroneous belief likely to be entertained by the public, that the source of
thedefendants' goods is the same as that of the plaintiff or the defendants'
goods are insome manner associated with the plaintiffs.
20. The
main contention of the defendants is that the defendants have been usingthe
mark
HONDA
for their product pressure cooker since 1985 and the visualpresentation of the
mark of
their product is such that no confusion and
deception of any kind can arise in the minds of the purchasers. It is contented
that the impugned mark HONDA of the plaintiff is entirely for different goods,
as compared to those of thedefendants.
Page 29 of 41
21. The defendants have placed on record a
search report for the trade mark HONDA and opies of the defendants invoices
issued to their purported customers, toindicate that the defendants had been
using the trade mark HONDA for pressurecooker for many years. Learned Senior
Counsel for the plaintiff points out that theplaintiff took action against the
parties whose names and addresses are provided inthe search report. Cease and
desist notices have been served upon most of them andeven suits have been filed
against some of them. No response was received from someof them and on inquiry,
it transpired that they had already stopped the business,some gave undertaking
that they would discontinue the user of the trade markHONDA. Some instances,
against whom action is taken by the plaintiff, are shown inthe replication to
the amended written statement. Out of the 234 documentspurported to be invoices
issued by the defendants to show that they have beendealing with sale of
pressure cookers under the mark HONDA, for many years, theplaintiff has issued
64 letters to the persons/entities, to seek confirmation as towhether in fact
they have been purchasing the goods from the defendants or not. Onlya few have
responded, who have denied having any trade relation with the defendants.Only
one person has stated that he had some relation about 10 years ago. The
invoices of any case relate to the period 1988 onwards.
`
22. As discussed above,
the plaintiff has prima facie placed sufficient material onrecord to indicate
that it had been using the mark HONDA for the last about fivedecades. The
plaintiff has also placed on record prima facie evidence that its markHONDA is
of international repute and is known for its quality products. There is
alsomaterial placed on record which prima facie shows that the mark HONDA is
known, notonly internationally but even in India since late 1950's through
advertisements invarious international journals and magazines. Prima facie it
also appears that theplaintiff is using the mark HONDA prior to that of the
defendants. Though the plaintiffhas placed on record sufficient material to
prima facie show its prior user of the markHONDA, the learned Counsel for the
plaintiff submits that even otherwise the plaintiff'saction for passing off is
maintainable as the goodwill and reputation of its markHONDA is not confined to
one country, as it has travelled and spread all over theworld. Reference in
this respect is made to N.R. Dongre v. Whirlpool Corporation, AIR1995 Delhi
300, case, where it was observed that the goodwill is not limited to
aparticular country as in the presentdays the trade is spread all over the
world and the goods are transported from onecountry to another very rapidly and
on extensive scale. It was also observed that thegoodwill acquired by the
manufacturer is not necessarily limited to the country wherethe goods are
easily available because the goods though not available are widelyadvertised in
newspapers, periodicals, magazines and in other media. It also observedthat the
trade name transcends the physical boundaries of a geographical region
andacquires a trans-border or overseas or extra-territorial reputation not only
throughimport of goods but also by its advertisement. Another authority on this
proposition is1996 PTC (16) 293; Calvin Klein Inc. v. International Apparel
Syndicate.
23. Learned Counsel for the defendants contend that the plaintiffs are
dealing inautomobile products and power generated equipment, whereas the
defendantsproduct is pressure cooker and as such the two sets of goods are
neither allied norcognate, much less identical and as such there is no
likelihood of any deception orconfusion being caused in the minds of the public
to purchase the defend ants' goodsas those of the plaintiff's.
24. The case of the plaintiff is in fact based on passing off action and
not forinfringement of the trade mark. It has never been the case of the
plaintiff that the twosets of goods are identical. The concept of passing off,
which is a form of tort hasundergone changes with the course of time. The
plaintiff now does not have to be indirect competition with the defendant to
suffer injury from the use of its trade nameby the defendants.
Page 30 of 41
25. Learned Senior Counsel for the plaintiff contends that the trade mark
HONDAhas a unique goodwill and reputation all over the world and the use
thereof by thedefendants will dilute plaintiff's goodwill and reputation, as
the public whilepurchasing any product under the said trade mark would believe
that the said itemmight have come from the house of HONDA. The distinctiveness
of the mark HONDA ofthe plaintiff is likely to be eroded and debased. In
Taittinger v. Allbev Ltd.,
(1993)
FSR641 (CA), per Peter Gibson LJ, observed:
“By parity of reasoning it seems to me no
less obvious that erosion of thedistinctiveness of the name champagne in this
country is a form of damage to thegoodwill of the business of the champagne
houses.”
In the
same judgment Sir T. Bingham said that:
“Champagne” has an exclusiveness which is
impaired if it is used in relation to aproduct (particularly a potable product)
which is neither champagne nor associatedor connected with the business which
produce champagne. The impairment is agradual debasement; dilution or erosion
are not demonstrable in figures of lostsales but that they will be
incrementally damaging to goodwill is in my opinioninescapable.”
26. Learned Counsel for the plaintiff to support the proposition that in
passing offaction it is not material if the plaintiff and the defendant trade
in the same field ortrade in different products, has relied upon the following
judgments:
27. Daimler Benz Aktiegesellschaft v. Hybo Hindustan, AIR 1994 Del. 239;
Ciba-GeigyLtd. v. Surinder Singh, 1998 PTC (18) 545; Sunder ParmanandLalwani v.
Caltex(India) Ltd., AIR 1969 Bombay 24 (V 56 C 5); Lego System Aktieselskab v.
Lego M. Lemelstrich Ltd., Fleet Street Reports (1983); The Dunlop Pneumatic
Tyre Co. Ltd. v.The Dunlop Lubricant Co., 1899 (16) RPC 12; Surjit Singh v.
Alembic Glass IndustriesLtd., AIR 1987 Delhi 319; Essel Packaging Ltd. v. Essel
Tea Exports Ltd., 1999 PTC(19) 521; Banga Watch Company v. N.V. Philiphs, AIR
1983 Punjab and Haryana 418;Bata India Ltd. v. Pyare Lal and Co., AIR 1985
Allahabad 242; C.A. Shimer (M)SDNBHD, 2000 RPC 484; Harrods Ltd. v. R. Harrod
Ltd., (1924) 41 RPC 74.
28. In all the aforesaid decisions relied upon by the plaintiff,
injunction was grantedin favour of the plaintiff on the basis of an action of
passing off even though theplaintiff and defendant were trading in altogether
different products. I would deal withsome of the afore-noted decisions.
29. In Daimler Bern's case (supra), the plaintiff was using the trade
markMERCEDES BENZ in relation to vehicles, whereas the defendant had started
using thetrade mark BENZ in respect of undergarments. The Court granted
injunctionrestraining the defendant from using the trade mark BENZ as well as “three
pointedhuman being in a ring”. The judgment was upheld by the Supreme Court.
Thefollowing observations made in this judgment are worth-noting:
“There are marks which are different from
other marks. There are names which aredifferent from other names. There are
names and marks which have becomehousehold words. “Benz” as name of a car would
be known to every family that hasever used a quality car. The name “Benz” as
applied to a car, has a unique place inthe world. There is hardly one who is
conscious of existence of thecars/automobiles, who would not recognize the name
“Benz” used in connectionwith cars. Nobody can plead in India, where “Mercedes Benz”
cars are seen on
Page 31 of 41
roads, where “Mercedes” have collaborated
with TATAs, where there are Mercedes Benz-Tata trucks have been on roads in
every large number, (known as Mercedes Banz Trucks, so long as the
collaboration was there), who can plead that he isunaware of the word “Benz” as
used with reference to car or trucks.In my view, the Trade Mark law is not
intended to protect a person who deliberatelysets out to take the benefit of
somebody else's reputation with reference to goods, especially so when the
reputation extends world wide.”
30. In Ciba Geigy Ltd.'s case (supra), the plaintiff was using the mark
CIBA,CIBACA in relation to goods different than those of the defendant's. The
defendantwas using the trade mark CIBACA in relation to filters for motor
vehicles. The case ofthe defendant was that the goods in question were entirely
different and as such therewas no question of any deception being cause in the
minds of the public, when trademark CIBACA was used in relation to altogether different
goods. While coming to theconclusion that the defendant had adopted the mark
CIBACA deliberately with theintention of creating confusion in the minds of the
public soas to pass off its goods as those of the plaintiff, the Court granted
injunction restraining the defendants from using the plaintiff's trade mark by
the defendants foraltogether different goods, as the use of the trade mark
CIBACA by the defendant washeld not to be honest.
31. Again in Sunder Parmanand Lalwani v. Caltex India Ltd. case(supra),
the goodswere totally different having no trade connection between them. The
matter was inappeal before the High Court from the orders of the Registrar,
Trade Marks. Thedispute related to mark CALTEX used by the applicant for
watches for which he hadapplied for registration, whereas the defendant, Caltex
India Ltd., who used it for theirproducts like lubricants, grease, oils, etc.
filed opposition before the Registrar TradeMarks. The Registrar dismissed the
opposition holding the applicant to be theproprietor of the trade mark. Though
the competing marks were held to be identicalbut the application was rejected
on the ground that ???competing goods were entirelydifferent. Caltex (India)
Ltd. appealed to the High Court, which was allowed. One ofthe points for
decision before the High Court was as to whether the use of the markwas likely
to deceive or cause confusion i.e., whether there was any tangible danger
ofdeception or confusion being caused by the word/mark “CALTEX” in the minds of
thepurchaser. The High Court after considering the respective pleas of the
parties held asunder:
“In this case, the goods are totally
different. There is no trade connection betweenthem. There is no connection in
the course of trade, nor any common tradechannels. There are factors against
holding that there would be any danger ofdeception or confusion. But we must
consider the factors which tend to show thatthere is a likelihood of creating
deception or confusion. The opponents have beenusing their mark on a very large
scale since 1937. Their sales in 1956 exceeded Rs.30 crores. Their publicity is
wide spread and large. In 1956 they spent over amillion rupees on
advertisements. The goods in respect of which they use the trademark “Caltex”
are mainly petroleum, kerosene and lubricants like greases and oilsetc. The
goods in respect of which the applicant seeks registration are mainlywatches,
the class of goods in respect of which the applicant seeks registration iswider
than watches and watches can be both costly and cheap.”
32. In Lego's case (supra), the plaintiff was using the trade mark Lego
in respect oftoys, whereas defendant started using the trade mark LEGO in
relation to irrigationequipment. Even though the trade mark LEGO was being used
for different products,the Court granted injunction against the defendant
holding that the plaintiff hadestablished high reputation for the mark Lego
which extended beyond the field of toysand construction kits and the mark Lego
had acquired distinctiveness as the
Page 32 of 41
productsof the plaintiff. It had become a house-hold word. It was
also observed that in the lawof passing off, there was no limitation in respect
of parties field of activity.
33. In Dunlop's case (supra), the plaintiff was using the trade mark
DUNLOP inrespect of tyres whereas the defendant was using the same in respect
of oil andlubricants. On a suit for passing off action filed by the plaintiff,
defendant wasrestrained from using the mark DUNLOP for its products and for its
business name.
34. In Alembic Glass Industries Ltd.'s case (supra), the respondent used
the trademark YERA in respect of glassware including jars and bottles, whereas
the appellant Surjit Singh started using the same in respect of perfumery and
cosmetics. Theappellant lost before the Registrar of Trade Marks and filed an
appeal before the HighCourt. while dismissing the appeal it was held as under:
“Held, the word ‘YERA’ was being copied by
the petitioner in order to takeadvantage of the reputation acquired by the
trade mark. Perfumery and cosmeticsmanufactured by the petitioner are sold in
bottles and glass containers and if thetrade mark “YERA” appears on these
bottles and glass containers, there is likelihoodthat a common man who would go
to buy these perfumery and cosmetics would beled to believe that these goods
were manufactured by the opponent company. Thepetitioner was, therefore, not
entitled to registration under Section 11(a). Case lawdiscussed.”
35. In Essel Packaging Ltd. v. Essel Tea Exports Ltd. case (supra), the
High Court ofBombay after considering Kirloskar Diesel Recon Pvt. Ltd. v.
Kirloskar Proprietary Ltd.and Bajaj Electricals Pvt. Ltd. v. Metals and Allied
Projects, AIR 1988 Bombay 157,held, that common field of activity is not
conclusive for deciding whether there can bepassing off action, although at one
point of time the said test was treated asconclusive. It was held that with the
passage of time the law of requirement ofcommon field of activity in a passing
off action has undergone a radical change and assuch there was no requirement
for a common field of activity to found a claim onpassing off action, because
the real question in each of such cases is, whether there is,as a result of
misrepresentation, a real likelihood of confusion or deception of thepublic and
consequent damage to the plaintiff is likely to be caused and if that istaken
to be the test then the focus is shifted from the external objective test
ofmaking comparison of activities of the parties, to the state of mind of
public, indeciding whether it will be confused. Applying these principles the
injunction in favourof the plaintiff was granted.
36. In Banga Watch Co. v. N.V. Philliphs case (supra), the plaintiff N.V.
Philliphswas using the trade mark PHILLIPHS, which had become a household mark
and hadacquired enviable reputation in India and throughout the world dealing
in electricaland electronic goods. The defendant was using the trade mark
PHILLIPHS in respect ofwatches and clocks.
37. In Bata India Ltd.'s case (supra), the plaintiff was using the trade
mark inrespect of canvas, rubber, leather shoes, rubber footwear, etc. Whereas
the defendantstarted using the trade mark Bata and Batafoam in relation to
mattresses. The Courtafter discussing in detail the law on passing off action
granted injunction in favour ofthe plaintiff despite the fact that the same
trade mark was being used for differentgoods.
In the light of these decisions, we are clear
in our mind that the mark in
question can be protected in relation to
dis-similar goods. It is undisputed facts that
Page 33 of 41
the goods used
by both parties at present time are available in Super Market, Malls.
Thus, the arguments of the respondent are
without any force.
33.
Acquiescence under Section 33 of the Act
In the
trademark infringement suit GSK Consumer
Healthcare S.A v. EG Pharmaceuticals &Ors.,
IA No. 6749/2019 in CS (Comm) No. 238/2019, a Single Judge (R.S. Endlaw, J.) of the Delhi High Court vide his
order dated October 31, 2019 while granting the interlocutory application (for
interim injunction) has clarified that the defence of acquiescence under
Section 33(1) of the Trade Marks Act, 1999 is not available against the
proprietor of a registered trade mark. The Court has held that a registered
proprietor cannot be non-suited by a defence of statutory acquiescence since
such a defense is available only in a passing off action by an unregistered
mark. While arriving at its decision, the Court placed reliance on a judgment
of the Division Bench (M. Mudgal, J. and V.J. Mehta, J.) of the Delhi High
Court in the case of Goenka Institute of
Education & Research v Anjani Kumar Goenka & Anr., FAO (OS) No.
118/2009, wherein the Court had observed, but by way of obiter – “…Section 33 is with reference to the right of an unregistered user and a subsequent
registered user…”.
Therefore the plea of acquiescence does not
find place here.
The
Applicant further submitted that since S. 33 envisages a registered trade mark,
and at the time the Rectification Petition was filed in 2009, there was no
registered trade mark of the Respondent, the first trade mark having lapsed in
2006, therefore they cannot take up the plea of acquiescence.
Further
as the Respondents have not adopted the trademark “Eveready” in good faith,
they cannot take any benefit under Section 33 of the Trade Marks Act, 1999.
Section 33 stipulates the benefit for continuous period of five year from the
date of knowledge of earlier proprietor could be derived unless the
registration of the later mark was not applied in good faith. The lack of good
faith, or the
Page 34 of 41
Respondent’sbad
faith is evident from their slavish imitation of the EVEREADY logo of the
Applicant comprising of the visual elements and the color scheme.In this case
the Applicant is challenging the registration of the Respondent. There is no
cross petition. In case there had been cross petition filed by the Respondent,
where Respondent challenges the validity of the Applicant’s Trade Mark use from
1942 onwards, then all questions would have been opened before this Forum
including the validity of the Applicant’s Trade Mark and any act done before
the Trade Marks Office. The Respondent has to show that its registration is a
bonafide and in good faith.In the present case, we found that on the date of
applications, the adoption was tainted. There is no continuous user. The
assignment document is sham document. The provision of Section 33 is brought in
the Act in 2002. There is no cogent and clear evidence in the year 2002-2004.
The present petitions are filed in the year 2009. Thus, the respondents have
started using the mark with impunity in 2008. After the assignment in January,
2009, the suit and rectifications were filed within few months..
The
Respondents relied on various admissions made by the Applicant in the Trade
Mark Registry concerning the amendment of the description of the goods, and
giving up certain goods, construing them as acts of assent. In Hindustan Pencils Private Limited v. India Stationary Products, AIR
1990 Delhi 19,the question of delay and
acquiescence was dealt elaborately with. It was held that there should be a
positive act or an express assent on the part of the right holder to claim the
defense of acquiescence. Further in Make
My Trip (India) Private Limited v Make My Travel (India) Private Limited (CS(COMM) 889/2018), 2019 SCC OnLine Del 10638,the High
Court of Delhi has reaffirmed that
the trademark holder’s express consent to the use of a similar/identical
trademark is an essential requirement to avail of the defence of acquiescence
under Section 33 of the Trademark Act 1999. In order to prove delay and
acquiescence, the defendant should have demonstrated that the plaintiff
expressed assent and encouraged use of the impugned marks. Merely showing delay
Page 35 of 41
to sue could
not be accepted as sufficient grounds to exercise this defence.
Furthermore in
Dr. Reddy's Laboratories Ltd. vs Reddy
Pharmaceuticals Limited, 2004 (29) PTC
435 Delit was held that the owners of trademarks or copyrights cannot be expected to run after every infringer
and that the right holder can wait till the time the user of their name starts
harming their business. In the present case, although the Respondents claim a
usage from 01 June 1985, there is a gap in the usage of the Respondent from
1987 to 1997, and further from 2000 to 2006. Meanwhile the Respondent’s
trademarks had lapsed without being renewed. When the Respondent’s commence
operations after 2006, and when the Applicant felt that there was paqlpable
harm to their business, they filed the trade mark opposition on 28 March 2008.
Therefore the silence on the part of the Applicant cannot be treated as
non-action, or compliance or acquiescence of the action of the Respondent.
34.
Concealment
The present
petitions are filed before IPAB mainly on the grounds of well-known mark. If it
is a well-known mark, the similarity of goods are irrelevant. The base of the
petitions are that first trade mark of the applicant was registered in 1942. It
was a coined word. It acquired great goodwill and reputation in relation to
batteries and torches. It is the case of applicant that if any party will use
the same mark and logo even in relation to any goods, it would be a confusion
and deception. Thus, the filing of application by the applicant in class-8 has
no bearing or even amendment made thereon. The said facts have no bearing, nor
relevant facts in order to decide the real dispute between the parties.
35.
No doubt, when the applicant has filed the applicant has filed the
application in class-8, in the examiner report the mark of the respondents were
cited as conflicting mark
Page 36 of 41
and the
applicant had amended its application deleting the goods user of the
respondents. The present petitions are filed on the basis of goodwill and
reputation and user of the well-known trade mark 'EVEREADY'. The applicant is
not seeking relief merely on the basis of registration in Class-8. Thus, the
submissions are baseless.
36.
It is settled law that when there is dishonesty or fraud in the
initial adoption of a trade name, plea of laches and delay normally is
rejected. The filing of the applications by the respondent itself was
fraudulent move as the respondent must be aware of the date of filing of the
application about the goodwill, reputation and user of the trade mark
'EVEREADY' of the applicant. The respondent is taking opposing stand from time
to time. In the pleading, it is also stated that the trade mark 'EVEREADY' used
by the respondent is common trade mark and descriptive. If such admission is
accepted, then the application ought to have been rejected under Section-9 of
the Act. In the present case, it is apparent that the first registration when
applied, there was hardly any user. The second application was similar logo
mark.
37.
Experience shows that once the infringing party will try to act in
order to detriment the distinctive character of the well-known trade mark or
repute thereto by taking the unfair advantage in aggressive manner in the
commercial mark only then the party having earlier user will hit the infringing
party. In the present case, as per admission and affidavit filed, it appears to
us that from the year 1985 till 2009, there was a break of user about 15-16
years two times. It is the statement of the respondents if that is positive,
where is the question of effect of acquiescence. The arrangement of respondents
are without any force.
38.
Admission on behalf of the Applicant
The statements of the cross examination of
the Authorized Representative of the
Page 37 of 41
Applicant in
the Delhi Suit, referred to by the Respondents cannot amount to admission as
they were statements made in response to particular questions. The question
asked in the cross- examination to the Authorized Representative were asked in
context of a legal interpretation of the prosecution history of the Applicant’s
trade marks and the answer given by the Authorized Representative of the
Applicant. It is a settled law that an admission must be unambiguous and
definite admission. It would be not proper for the Court to pass a decree on
inference. [Shantez v Applause Bhansali Films Private Limited 2009
SCC OnLineBom 405]
39.
While drawing the inference from the evidence of witness, the whole
evidence of witness i.e. examination-in-chief and cross-examination is to be
considered and the Respondents cannot be permitted to read a stray line from
the cross-examination to claim that the Applicant has admitted to the case of
the Respondent. [Gandhi Ram v Raj Kumar MANU/HP/0075/2015; SaygoBai v ChueeruBajrangi MANU/SC/0963/2010;
State of Maharashtra v Mahesh KarimanTirki
and Ors MANU/OT/0001/2017]. In the present case, if entire statement of
witness is read in meaningful manner, it appears that the statement goes
against the respondent, ever otherwise deceptive similarity between two
competing marks has to be adjudicated by the Hon’ble Courts and not by a
witness. [Mahindra & Mahindra Papers
Mills Ltd v Mahindra & Mahindra
Ltd MANU/SC/0724/2001]. No-where in the
statement, it is stated that the case of applicant is not maintainable and
the respondent is entitled to use the mark. The objection raised by the
respondents are baseless and without any force.
40.
Non-grant of injunction
The said
submissions have no force. The applicant has got the relief of logo mark. The
Single Bench and Divison Bench have merely passed the orders in the interim-
Page 38 of 41
stage. The
same are not binding or have no bearing when the suit is decided after
recording the evidence. It was merely of prima facie view. IPAB is an
independent jurisdiction irrespective of the fact as to whether any interim
order is passed or not. The rectification proceedings are to be decided as per
its own merit and as per independent evidence. None of the reason given by us
after examination of evidence, facts and legal issues are discussed in the
orders when the interim orders were not granted. IPAB is deciding the petitions
as final matters. Interim stage in the present petitions are already over. The
said orders passed in Civil Suit were merely prima facie view. Even otherwise,
it is the admitted fact that evidence of the parties are recorded in the suit.
If the applicant has failed to establish its case, the applicant will face
consequences.
41.
It is settled law that interim orders either granted and refusal
shall have no bearing in the matters at the final stage. IPAB is an independent
forum and the present matter would therefore be decided, starting from the
beginning, on a clean slate, irrespective of the findings of the learned civil
court. We propose to decide the final matters.
42.
In the present case, the respondent became more
aggressive when the mark was incorporated in the dominant part of trading style
in the year 2005 knowing at that time that the mark belongs to the applicant.
Thus the adoption was tainted, user was tainted so as the conduct. It appears
to us the respondent has filed false affidavit in the Trademark Office. The
assignment deed was manipulated document. There are so many discrepancies in
the said deed which are on the face of records. Documents speak for themselves.
43.
We have asked number of times, how his client has hit
upon the said mark being not the common name. No valid explanation is given
except answers. About user of the marks applied. There is no continuous users
so as the sale and advertisements figures.
Page 39 of 41
There
is a break of user of number of years by the assignor as well as assignee.
Income tax return of number of years is shown as Nil. The respondents’ counsel
have referred number of decisions. We have gone through the same. None the
decisions applicable to the facts of present case. In the present case, the
adoption, user are dishonest. The assignment deed is a sham document. In the
affidavit as evidence many incorrect statements are made apparently.
44.
There is no doubt in our mind that burden of proof
initially always would be upon the applicant who is seeking rectification of
registered trademark. Counsel for the respondents has cited the decision of
Delhi High Court. We agree with the same. In the present case, counsel for the
applicant has referred para 14 of the petition as well as is able to establish
that the assignment deed is a manipulative document which was executed in order
to claim continuous user. But the respondents have failed to rebut arguments of
the applicant. The respondents themselves have filed have filed an affidavit
which is contrary to the statement made in the assignment deed. It would show
that there was no continuous user. Thus once these objections raised by the
applicant are valid objections, the applicant has discharged its burden.
Thereafter it has to be shifted to the respondent to discharge the same who
miserable failure to discharge. The respondents counsel has failed to give any
valid answer about the continuous user either by the assignor or assignee nor
able to give any justification to adopt and use of the well-known trademark of
the applicant.Time and again merely vague explanation was given to us which is
contrary to facts and law. In view of above the decision referred does __ help
the case of the respondents.
45.
Dilution of Applicant’s well known trade mark
We
are of the opinion that the Applicant’s trade mark EVEREADY is a well known
trade mark. Dilution of the Applicant’s trademark would therefore greatly
affect the distinctiveness of a trademark and reduce its value, since the
principle is based on the presumption that the relevant customers start
associating the trademark with a new
Page 40 of 41
and different
source of goods and services. In ITC
Limited v. Philip Morris Products S.A. &Ors.2010
(42) PTC 572 (Del), the Delhi High Court observed the following essential features are to be satisfied to
establish dilution:
•
the
impugned mark is identical or similar to the senior mark,
•
the
senior or injured mark has a reputation in India,
•
the use
of impugned mark is without due cause,
•
the use of impugned mark amounts to taking unfair advantage of, or is
detrimental to, the distinctive character or reputation of the registered
trademark.
In
the present case, the mindless imitation of the Applicant’s mark by the
Respondent dilutes the reputation of the Applicant’s trade mark and impairs or
tarnishes the distinctive quality of the trademark. Therefore as regards the
Respondent’s usage of a mark identical to that of the Applicant’s well known
mark, there is no need to establish the likelihood of confusion as to source,
association and connection, since there is dilution of the Applicant’s trade
mark by tarnishment.
46.
In the light of the above-mentioned facts and legal
law, we are of the opinion that the applicant is the aggrieved party to file
the present petitions. The marks are wrongly remaining on the Register. In
order to maintain the purity of the Register, we direct that both trademarks
bearing no. 439233 (word per se) in Class-8 and 539621(logo of Eveready) in
Class-8 are removed from the Register of Trademarks. The prayer of both the
petitions are allowed.
47.
No costs.
- Sd/-
-Sd/-
(MS. LAKSHMIDEVI SOMNATH)
(JUSTICE MANMOHAN SINGH)
TECHNICAL
MEMBER (TM)
CHAIRMAN
Disclaimer:
This order is being published for present information and should not be taken
as a certified copy issued by the Board
Page 41 of 41
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