2011(46)PTC61(Del)
IN THE HIGH COURT OF DELHI
Decided On: 05.10.2010
Appellants: Smt.
Raj Wadhwa
Vs.
Respondent: Glaxo India Ltd. and Ors.
Judges/Coram:
Dr. S. Muralidhar , J.
Counsels:
For Appellant/Petitioner/Plaintiff: Ajay Amitabh Suman and
Santosh Kumar, Advs.
For Respondents/Defendant: Anuradha
Salhotra, Sumit Wadhwa and Doyel
Sen Gupta, Advs.
ORDER
1. Aggrieved by an order dated 9th
March 2005 passed by the Intellectual Property Appellate Board
("IPAB") dismissing her appeal, the Petitioner has filed the present
writ petition.
2. The Petitioner filed an Application
No. 429975 on 20th November 1984 for registration of the trade mark in the form
of label consisting of the word "GOLDCON-D" in respect of infant
foods including glucose in class 5 of the I Vth Schedule to the Rules framed
under the Trade and Merchandise Marks Act, 1958 ("TM Act, 1958")
claiming user since 27th May 1984. The application was advertised in the Trade
Marks Journal No. 935 dated 16th May 1988 at page 195. Respondent No. 1 Glaxo
India Ltd. ("Glaxo") gave notice of their intention to oppose the
registration of the impugned mark on 14th July 1988 on the ground that it was
violative of the provisions of the TM Act, 1958. On 20th March 1989, the
Petitioner filed her counter statement and grounds in rebuttal to the
objections of Glaxo. On 28th August 1989, Glaxo filed its evidence in support
of the opposition. The Petitioner also filed evidence in support of the
application.
3. The Assistant Registrar of Trade
Marks rejected the Petitioner's application on the ground that the impugned
mark of the Petitioner i.e. "GOLDCON-D" is similar to the registered
mark of Glaxo i.e. "GLUCON-D". After discussing the evidence filed by
the parties, the Assistant Registrar concluded that "the use of the mark
applied for is likely to deceive and cause confusion in the minds of the
consumers in respect of the trade source. Hence registration of the mark
applied for is prohibited by operation of Section 11(a) of the TM Act,
1958."
4. As regards the user of the mark, the
Assistant Registrar noticed that the Petitioners had claimed user since 27th
May 1984 but had not adduced evidence in support of such claim. Consequently,
the claim of the Petitioner to be the proprietor of the mark in terms of
Section 18(1) of the Act was negatived.
5. Before the IPAB it was contended by
the Petitioner that GOLDCON-D is part of Petitioner's trading style, M/s.
Goldcon Products. Further it was submitted that both visually and phonetically
there was a lot of difference between "GOLDCON" and
"GLUCON". Thirdly, it was contended that the suit filed by Glaxo
against the Petitioner in the civil court at Dehradun was dismissed for default
on 17th May 1988 and Glaxo did not take any steps for restoration of the suit.
This implied that Glazo did not have any case. It was further submitted by the
Petitioner that no documents were produced by Glaxo to demonstrate the user of
the mark prior to the Petitioner. Glaxo had only filed affidavits.
6. On comparing the marks, the IPAB
concluded that GOLDCON-D was likely to cause confusion in the minds of the
average consumer and deceive him into thinking that he was buying GLUCON-D. It
was noticed that when goods are of the same description, Courts are expected to
be careful in finding similarity and minute differences cannot be taken into
account to find out the distinction between the two marks. The Petitioner's
goods were infant foods including glucose whereas the Glaxo's registered trade
mark was in respect of Glucose (for food), flour and preparation made from
cereals, bread, biscuits, etc. The goods were of the same nature, composition
and functions. The trade channel was also the same. The IPAB concluded that the
prohibition under Section 12(1) of the Act was also attracted. As regards the
claim of the Petitioner that the word "GOLDCON" is part of their
trading style, the IPAB observed that there was no explanation for adding the
letter "D" along with the mark.
7. Before this Court, Mr. Ajay Amitabh
Suman learned Counsel for the Petitioner reiterated the submissions made before
the IPAB. In addition, he urged that the dismissal of the suit filed by Glaxo
against the Petitioner in the civil court in Dehradun followed by Glaxo's
failure to have the suit restored, tantamounted to acquiescence by Glaxo in the
use by the Petitioner of the impugned mark. Secondly it is submitted that in
response to a legal notice issued to it by Glaxo, the Petitioner had replied in
1984 denying any infringement. For three years thereafter no action was taken
by Glaxo. It was only in 1987 that a suit was filed. The suit was dismissed for
default in 1996 and not restored. It is submitted that all the ingredients of
what would constitute 'acquiescence' within the meaning of Section 33 of the
Trade Marks Act, 1999 (TM Act, 1999'), stood attracted.
8. This Court is unable to agree with
the above contention of the Petitioner. The mere dismissal of a suit for
infringement in 1996 cannot per se mean that Glaxo acquiesced to the use by the
Petitioner of the trade mark in question. At the first available opportunity
after the Petitioner's application was advertised for acceptance in the Trade
Marks Journal on 16th May 1998, Glaxo filed its opposition on 14th July 1998.
That opposition was upheld concurrently both by Assistant Registrar as well as
the IPAB. It cannot be said in the circumstances that Glaxo acquiesced in the
claim of the Petitioner as to use of the trade mark.
9. It is next contended that the
Assistant Registrar as well as the IPAB erred in upholding the opposition of
Glaxo that 'GOLDCON-D' was similar to Glaxo's registered trade mark 'GLUCON-D'
and was likely to cause confusion when viewed from the standpoint of a man of
average intelligence and imperfect recollection. It is submitted that in order
to substantiate its opposition with reference to Section 11(a) it was incumbent
on Glaxo to have filed documents by way of evidence. It is submitted that even
the registration certificate was not produced. Further, learned Counsel for the
Petitioner submitted that the registration was granted to Glaxo of 'GLUCON-D'
with a disclaimer as regards the letter 'D'. Therefore the comparison had to be
made of only the words 'GOLDCON' and 'GLUCON', by omitting the letter 'D'. When
so compared there was, according to the Petitioner, neither phonetic nor visual
similarity. He relied upon the judgments in J.R. Kapoor v. Micronix India, MANU/SC/1166/1994
: 1994 (14) PTC 260 (SC), F. Hoffmann-La Roche and Co. Ltd. v. Geoffrey Manners
and Co. Pvt. Ltd., PTC (Supp) (1) 88 (SC) and
Hindustan Pencils Private Ltd. v. Universal Trading Co., 2000 PTC
(20) 561(Del) (DB).
10. This Court is not impressed by the
submission that there is no visual or phonetic similarity when the Petitioner's
impugned mark 'GOLDCON-D' is compared with Glaxo's registered mark 'GLUCON-D'.
The structural similarity of a word followed by a hyphen and alphabet 'D' in
both marks is unmistakable. The Petitioner is also not correct about having to
leave out the disclaimed part of the mark for the purposes of comparison. The
marks have to be compared as a whole and cannot be dissected to leave out the
disclaimed part. Recently in Takkar (India) Tea Co. v. Soongachi Tea Industries
Pvt. Ltd. 2010 VII AD (Del) 104 this Court had
occasion to deal with a similar contention. The following passage in Granada
Trade Mark (1979) 13 RPC 303 at page 308 was taken
note of:
I do not think, therefore,
that a disclaimer per se effects the question of whether or not confusion of
the public is likely when that question is for determination under Section
12(1), a context other than one that is concerned solely with the exclusive rights
of a proprietor. As Lloyd-Jacob, J. put it in Ford-Works Application (1955)
72 R.P.C. 191 lines 30 to 38, a disclaimer does not affect the
significance which a mark conveys to others when used in the course of trade. Disclaimers
do not go into the market place, and the public generally has no notice of
them. In my opinion matter which is disclaimed is not necessarily disregarded
when question of possible confusion or deception of the public, as distinct
from the extent of a proprietors exclusive rights, are to be determined. In
making the comparison under Section 12(1) therefore 1 consider that I must
have regard to the whole of the opponents mark, including the disclaimed
matter, and must assume use of it in a normal and fair manner for, inter alia,
the applicants goods. The applicants are very well known as manufacturers
of motor cars. The opponents are registered as merchants of their goods.
Although the opponents are not manufacturers of motor cars I do not think that
this difference in the parties activities should lead me to make the required
comparison on any basis other than that, so far as identical goods are
concerned, the normal and fair manner of use of the marks would also be
identical.
(emphasis
supplied)
11. Even if one were to take up only
"GOLDCON" and "GLUCON" for comparison, it is not possible
to accept the contention of the Petitioner that they are dissimilar and are
unlikely to cause confusion in the mind of the average consumer with imperfect
recollection. The IPAB was right in observing that the nature of the goods in
respect of which the marks are used as well as the trade channel were similar.
12. It was never the Petitioner's case
either before the Assistant Registrar or the IPAB that Glaxo's mark was not
registered. Even before this Court, the Petitioner contended that the
registration for GLUCON-D was granted with a 'disclaimer as to the letter 'D'.
As against the registered mark of Glaxo, the burden was on the Petitioner to
show that for the purposes of Section 11(a), its impugned mark 'GOLDCON-D' bore
no similarity with the registered mark 'GLUCON-D' of Glaxo. In the considered
view of this Court, the Petitioner has not been able to discharge the burden.
This Court affirms the concurrent views expressed both by the Assistant Registrar
as well as the IPAB that Section 11(a) of the TM Act, 1999 stood attracted in
the present case and that the registration of the mark applied for ought to be
refused to the Petitioner.
13. Learned Counsel for the Petitioner
submitted that the Petitioner's use of 'GOLDCON-D' was both honest and
concurrent. In order to substantiate the claim of honest user, it was suggested
that 'GOLDCON' was part of the Petitioner's own trading style since its
proprietary concern was M/s. Goldcon Products. The letter 'D', according to
learned Counsel for the Petitioner, referred to a place, in this case
'Dehradun', from where the Petitioner was operating. In the considered view of
this Court, the above explanation is hardly convincing. It does appear to this
Court that the Petitioner has not been able to show that its user of the mark
'GOLDCON-D' was honest.
14. In that view of the matter, this
Court finds no error in the order of either the Assistant Registrar or of the
IPAB that calls for any interference. The writ petition is dismissed.
