Cannon Kabushiki Kaisha Vs Ms. Alka Gupta Trading As Guide Men Tape Industries,

Equivalent citations: 2008 143 CompCas 485 NULL

Bench: M Ansari, S Usha

Cannon Kabushiki Kaisha (A Corporation Duly Organized Under The Laws Of Japan)
vs Ms. Alka Gupta Trading As Guide Men Tape Industries, Bhagirath Prasad And
Company And Assistant Registrar Of Trade Marks on 22/2/2008

ORDER

M.H.S. Ansari, J. (Chairman)

1. Instant appeal is directed against the order dated 12.9.2006 passed by the
Assistant Registrar of Trade Marks in the matter of opposition No. DEL−9199
against application No. 508643.





By the impugned order dated 12.9.2006, respondent No. 3 has allowed the
application of respondent No. 1 for registration of the mark ’CANON’ label in
class 9. The opposition of the appellant was disallowed.

1. Opponent before the learned Registrar is the appellant herein. Respondent
   No. 1 claims to be the subsequent proprietor of the trade mark in question
   whereas respondent No. 2 is the applicant who filed the initial application for
   registration of the label mark in question.
   




3. It is the case of the appellant that it adopted ’CANON’ as a part of its
company name as early as the year 1947. It manufactures products of various
kinds including office imaging products, computer peripherals, business
information products, cameras, optical products amongst others. Appellant has
averred that its net sales of products is around $31,815 million and has its
presence around the globe through 200 subsidiaries employing around 1,15,583
employees. It is asserted that the appellant has the distinction of being ranked
overall 35^th in the Best Global Brands by Business Week. The Fortune magazine
has ranked the appellant 154^th in total sales and 96^th in profits for the
fiscal year 2004. The appellant also features in Financial Times FT Global 500
for the year 2005 and has been globally ranked 106^th in the category of market
capitalization for the year 2005. In the top 10 corporations receiving U.S.
patents in 2005 the appellant ranked second with 1,828 patents. The further case
of the appellant is that it is the proprietor of the trade mark ’CANON’ and is
now registered in more than 180 countries and regions worldwide. In India the
appellant is registered proprietor of the trade mark ’CANON’ in various classes,
details whereof are given in para 5 of the appeal. There are about 34 such
registrations in India of the trade mark ’CANON’ registered since 17.1.1983 in
respect of various classes of goods, scientific and electrical apparatus and
instruments, computer and computer software, yarns and threads in, lace and
embroidery ribands, pins and needles. Thus the appellant asserts that its trade
mark ’CANON’ is a household name in India and around the world. It is further
asserted that the mark through extensive sale and propogation has won the
distinction of being a famous mark. The appellant sponsored the world press
photo contest and was an official sponsor of the world cup French soccer
championship. In the year 1982, the photographic equipment manufactured by the
appellant was designated as the official equipment of the IX Asian Games 1982.
Signboards depicting ’CANON OFFICIAL CAMERA’ in the Asiad were also displayed in
the main stadium for the games as well as the Asiad Games villages. The Asian
Games were viewed by millions of Indians and the mark became engraved in the
memories of Indian public. The mark has been extensively advertised around the
world and in India through the print and electronic media as well as through the
internet. It is, therefore, the appellant’s case that the mark ’CANON’, due to
decades of use and advertisement has become synonymous with the appellant and
the public associates the word ’CANON’ with the appellant alone and none else.
This is coupled with the fact that the word ’CANON’ is a vital and memorable
part of the appellants company name since as early as the year 1947. It is,therefore, contended that the mark is entitled to protection from usurpation for
different goods.



The grievance of the appellant is with respect to the trade mark
application No. 508643 filed in the name of Mr. Satyapal and Mr. Virender Kumar
trading as M/s Bhagirath Prasad & Company respondent No. 2 herein. The said
application was filed on 13.4.1989 for registration of CANON label for the goods
Tailor’s tape (measuring tape) in class 9. The same was advertised before
acceptance in Trade Marks Journal No. 1086 dated 08.09.1994. The appellant filed
its notice of opposition based, inter alia on the ground that the mark sought to
be registered is identical with the mark ’CANON’ of which the appellant is the
registered proprietor. Objections were raised under Sections 9, 11(a), 12(1) and
18 of the Act.





However, it transpires that a Form TM−16 dated 25.2.1995 was allowed vide
order dated 19.2.1997 without giving any opportunity to the appellant for filing
its objections and before filing of counter statement of respondent No. 1





Respondent No. 1 subsequently filed its counter statement on 10.4.1997. it
also filed documentary evidence under Rule 54 vide affidavit dated 5.1.1998. The
appellant vide their letter dated 25.7.1997 stated that they were not filing any
affidavit evidence in support of opposition and relied on facts stated in notice
of opposition. However, appellant filed affidavit evidence dated 21.10.1998
under Rule 55 enclosing documentary evidence in the form of invoice, publicity
material, annual reports, sales and publicity expenses from the year 1979 etc.





An interlocutory petition dated 28.4.1999 was filed by the appellant on
3.5.1999 raising serious objections to Form TM−16 filed by respondent No. 1 for
bringing itself on record as subsequent applicant of the impugned mark by virtue
of deed of assignment. By order dated 21.10.1999 the respondents herein were
directed to provide their statement on affidavit pertaining to the assignment
dated 1.10.1992 apart from furnishing other particulars. It is the case of the
appellant that the information was supplied piece meal. Serious objections have
been raised with regard to deed of assignment in the context of the objections
under Section 18(1) of the Act with respect to the proprietorship in the mark
’CANON’.





It must be stated here that there was an application No. 460087 for
registration of the trade mark ’CANON’ (word per se) pending in class 9 in the
name of M/s Bhagirath Prasad and Company, respondent No. 2 herein in respect
whereof the appellant was the opponent and the opposition was bearing No.
Del−6861.





Instant appeal arises out of application No. 508643 label mark dated
13.4.1989 in the matter of opposition Del−9199, whereas the application No.
460087 was in respect of mark ’CANON’ (word per se). The opponent in both the
applications was the same, appellant herein. Respondent No. 1 had in both the
applications filed request on Form TM−16 for coming on record as subsequent
proprietor of the mark applied for.





With regard to Application No. 460087 in the matter of opposition No.
Del−6861, learned Registrar has allowed the opposition of the appellant herein
and refused the application for registration No. 460087 to proceed for
registration in class 9. A copy of the order dated 12.9.2006 of the learned
Assistant Registrar has been filed as annexure ’O’ of the evidence of the
appellant. By the said order learned Assistant Registrar held that there is an
inordinate delay in filing the request on Form TM−16 and there is no explanation
for the delay and in that view rejected the request on Form TM−16. Significantly
the objection of the opponent as to proprietorship of the applicant under
Section 18 of the Act was upheld. It was further held that in the absence of
evidence filed on behalf of the applicant the opponent’s objection under Section
12 of the Act was sustained. As regards the exercise of discretion it was held

in the said order that:

I have given careful consideration of the pleading and evidence placed on
record by both the parties. There is no reason for me to exercise the discretion
in favour of the applicants.

Ms. Sheetal Vohra learned Counsel for the appellant contended that the
same learned Assistant Registrar has allowed the application for registration of
composite label mark which consists of the word ’CANON’ device of a tailor in
respect of Tailor’s Tape (measure tape) included in class 9. It was submitted
that the predominant feature in the label mark is the word ’CANON’ being a part
of the corporate name of the appellant besides being registered trade mark of
the appellant in various classes in India and various countries of the world.
Learned Assistant Registrar could not have taken a diametrically opposite view,
it was contended. Ms. Sheetal Vohra has referred us to the pleadings and
material on record. Our attention was drawn to the order of the learned
Assistant Registrar dated 12.9.2006 passed in application No. 460087 B and more
particularly to page 437 where at the Form TM−16 was disallowed in that case on
the ground of inordinate delay. It was contended by Ms. Sheetal Vohra that in
the notice of opposition specific objections have been raised with regard to the
alleged assignment. In the order under appeal there is no consideration
whatsoever to the objections raised in the opposition. Reference was made to
Annexure G at page 310 being the interlocutory petition filed by the opponent
before the learned Registrar for hearing of Form TM−16 which was allowed even
before filing of counter statement and without opportunity of hearing the
opponent. By the order under appeal the interlocutory application was disallowed
without assigning any reasons. The only reference to Form TM−16 in the order
under appeal is that the hearing was fixed in the matter on 19.12.1997 and TM−16
was allowed. Learned Counsel referred us to annexure H at page 313 of the
typeset of papers being the order of the learned Assistant Registrar directing
the applicant to provide statements on affidavits for consideration of the
actual facts pertaining to assignment of the mark. Learned Counsel also assailed
the conclusions and findings arrived at by the learned registrar in the order
under appeal rejecting the objections based on Sections 9, 11 and 18(1) of the
Act. Learned Counsel has also relied upon several judgments.





In reply Shri Ajay Amitabh Suman learned Counsel submitted that notices
were issued three times on Form TM−16. Learned Counsel relied upon exhibit A
(colly) filled at page 1, 2 and 3 of the typeset of documents filed by the
respondent as evidence on its behalf along with reply. Exhibit A fixes the date
of hearing of the opposition No. DEL−9199 to application No. 509643 to
19.2.1997. The notice of hearing also bears an endorsement in manuscript "TM−16
allowed". Learned Counsel for the respondent has not been able to explain the
endorsement nor has been able to place any order passed by the learned Assistant
Registrar allowing Form TM−16 nor it is established before us that any order was
passed on Form TM−16 after having afforded an opportunity of hearing.





Shri Ajay Amitabh Suman learned Counsel next contended that the opponent
ought to have incorporated the challenge by amending the opposition or the only
other remedy to the opponent was to file review or appeal against the order
allowing the assignment in Form TM−16. It was further contended that in the deed
of assignment the issue with regard to the person Virender Kumar or his
signatures cannot be raised by the opponent, being a third party to the
assignment. In other words it was contended that only parties to the assignment
can object to the assignment or defects in the deed of assignment and not any
third party. Learned Counsel has also relied upon several judgments in support
of his contentions on the merits of the matter.





We heard Ms. Sheetal Vohra learned advocate for the appellant and Shri
Ajay Amitabh Suman learned advocate for the respondent at the sitting of the
Bench at Delhi on 7.2.2008.





In the order under appeal the objection under Section 9 of the Act was
rejected on the ground that the impugned mark has been used for over a period of
atleast 10 years from the date of application. The objection of the appellant
raised under Section 11 of the Act which prohibits registration of the mark
where there is identity of mark or similarity of 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.
Learned Assistant Registrar in the impugned order, however, erroneously
considered the objection under the repealed Act, 1958 whereas the Trade Marks
Act, 1999 had come into force and effect from 15.9.2003.





As regards the objection under Section 18 it was observed that the trade
mark which consists of several characteristics including the word ’CANON’ which
is not invented but a dictionary word and that the same has been adopted
honestly and bonafidely. It was, therefore, held that the owner cannot prohibit
the use by others of such mark in connection with goods of totally different
characteristics. Discretion under Section 18(4) was exercised in favour of the
applicants on the ground that:

I do not find any reason to exercise my discretion adversely to the
applicants.

It was finally concluded:

I have given careful consideration to the pleadings and evidence placed on
record by both the parties. The interlocutory petition filed by the opponents is
disallowed.

"As a result the opposition No. Del−9199 is dismissed and it is hereby
ordered that the application No. 508643 in class 09 shall proceed to
registration."

In view of the diametrically opposite stands taken by the learned
Assistant Registrar in the two applications filed in respect of identical marks
applied for registration with the predominant feature of the word ’CANON’, we
are of the view that instead of going into the merits of the matter, we should
remand it back for consideration afresh by the Registrar to hear out the
application on Form TM−16 afresh and in accordance with law after affording the
opponents opportunity of filing its objections and thereafter affording an
opportunity of being heard in the matter.





18. Although elaborate arguments have been advanced before us on merits by
both the learned Counsel, we are of the view that as the main question, namely,
about the respondent No. 1 coming on record as the subsequent proprietor of the
mark by virtue of alleged deed of assignment and request on form TM−16 having
been filed, the same was required to be disposed of before considering the
matter on merits. Unless the subsequent proprietor was brought on record,
question of disposal of the application for registration and opposition thereto
on merits does not arise. The evidence of user filed on behalf of subsequent
proprietor cannot be a matter of consideration in the application filed for
registration of the mark by the alleged owner/adopter of the mark. We also find
that the learned Assistant Registrar in the order under appeal has chosen to
proceed with the merits of the matter without considering the question with
regard to request in Form TM−16. No formal orders appear to have been passed
thereon nor have been placed before us with regard to the request made on Form
TM−16. We are to infer from the order under appeal that request on Form TM−16
was allowed in favour of respondent No. 1 as it is mentioned in the order under
appeal that the TM−16 was allowed. The notices referred to by Shri Ajay Amitabh
Suman do not show that the said notices have been issued in respect of hearing
fixed for TM−16. As a matter of fact there is no mention or reference to TM−16
at all in those notices, except the manuscript endorsement "TM−16 allowed" at
page 1 of exhibit A (colly). The question of the opponents filing any appeal or





review against a non existent order does not arise. We are clearly of the view
that the opponent was denied opportunity of being heard before the TM−16 was
allowed.



Learned Assistant Registrar under Section 22 of the Act has been
conferred the power to permit an amendment of the application for registration
filed under Section 18, corresponding Rule 41 prescribes that an application for
amendment of the application is to be made in Form TM−16. Once an application
for registration is under consideration and opposition thereto has been filed,
amendment to the application for registration, notice thereof is required to be
given to the opponent in compliance with principles of natural justice. No
amendment, in our view can be allowed or made to the application for
registration during the pendency of opposition proceedings without affording an
opportunity of hearing to the opponent. It is the opponent in the opposition
proceedings that is vitally affected by any orders of amendment to the original
application for registration and, therefore, should be afforded an opportunity
of being heard in the matter before an application for amendment of the original
application for registration is allowed. As regards the contention of Shri Suman
that no third party in the assignment can raise objections to the assignment, we
are of the view that it is not for us to consider the said contention. We are,
accordingly, leaving it open for being raised and considered by the learned
Registrar. In the instant case, no opportunity was afforded to the opponent to
either file its objections or an opportunity of being heard in the matter before
amendment in Form TM−16 was allowed. From the order under appeal it would appear
that Form TM−16 was allowed without giving particulars of the date on which the
same was allowed. Although it is stated in the order under appeal that the
bearing was fixed in the matter on 19.2.1997, the notice annexure ’A’ filed on
behalf of the respondent shows that it bears a manuscript endorsement showing
that Form TM−16 was allowed. It has not been established before us that any
hearing was fixed or that any formal order was passed on Form TM−16 on
19.2.1997. The reasons based on which the request on Form TM−16 was allowed is
also not known.





In the absence of any formal order passed on request on Form TM−16
bringing on record subsequent proprietor, we are not inclined to consider the
impugned order as having been validly passed. This is for the reason that unless
the request on Form TM−16 is formally allowed the application for registration
cannot proceed in the name of the alleged assignee.





For the reasons aforesaid, we set aside the impugned order. We however
remand the matter and direct that the learned Registrar of Trade Marks shall
consider the application filed by respondent No. 1 in Form TM−16 in accordance
with law and after affording an opportunity of hearing to the appellant and such
other parties as are considered necessary and thereafter dispose of the same by
a reasoned speaking order which shall be communicated to the appearing parties
and thereafter depending upon the result thereof, it shall be open to the
learned Assistant Registrar to dispose of application No. 508643 on its own
merits. In the facts and circumstances of the cases there shall be no order as
to costs.