2005(31)PTC693(IPAB)
Transferred Appeal No.
218/2004/TM/DEL (CM (M) 464/97
S. Jagadeesan, Chairman and Raghbir Singh, Vice-Chairman
Counsels:
For Appellant/Petitioner/Plaintiff:S.K. Bansal and Ajay
Amitabh Suman, Advs.
For Respondents/Defendant:Amarjit
Singh, Adv.
Subject:Intellectual Property Rights
Acts/Rules/Orders:
Appeal Dismissed
Raghbir Singh, Vice-Chairman
7. Learned
counsel for the appellant argued that the trade mark registrations No. 379531
and 460288 for the word 'MILTON' held by the respondent are only in relation to
the small domestic containers. Respondent had no where in his opposition in
TM-5 filed before the Registrar had made a mention that he is using the mark
for electric food warmers being manufactured by them. It is only in the order
of the Assistant Registrar that a reference as to the use of the mark 'MILTON'
in relation to electric food warmers is given. Thus, in view of the conflict
between the pleadings and the evidence, the
benefits thereof should not accrue to the respondent. The learned Assistant
Registrar could have only relied upon whatever was there in the pleadings. He
has put his reliance upon a plea which was not in the pleadings. Learned
counsel put his reliance upon the observation of the Supreme Court in M/s.
Trojan and Co. v. N.N. Nagappa Chettiar, MANU/SC/0005/1953 para 2 where the
Apex Court had held that a decision of the case cannot be based on grounds
outside the pleadings of the parties and it is the case pleaded that has to be
found. Without an amendment of the plaint the Court was not entitled to grant
the relief not asked for. He further put his reliance upon the Gramophone Co.
of India Limited v. Mars Recording Pvt. Ltd. and Anr., 2001 PTC 681 (SC), para
10 wherein the Apex Court held that in absence of any pleadings is any record,
the Court cannot decide the matter on that score. In view of that, proper
amendment of the pleadings in necessary. We have carefully examined the above
objections raised by the learned Counsel for the appellant with regard to the
procedural aspect of the case. In both the cases referred to above the issues
relate to strict observance of the provisions of Code of Civil Procedure since
the matters involved related to Civil Courts down below. The Supreme Court has
rightly made its observation for strict adherence of the rules of pleadings
contained in the Code of Civil Procedure. The Registrar of Trade Marks being a
quasi-judicial institution created under the Trade and Merchandise Marks Act,
1958, is not strictly bound by the technical rules of the Code of Civil
Procedure. Thus, if something which comes in arguments to the notice of the
Registrar, we find that there is nothing wrong in his relying upon the same in
his order in the larger interest of furthering the principles of natural
justice. While arguing the case on merits, the learned Counsel for the
appellant observed that there are no trade connections between the goods for
which the impugned trade mark is to be used and the goods for which the respondent
is holding its registrations. He relied upon the following case in support of
his arguments. Vishnudas trading as Vishnudas Kishendas v. Vazir Sultan Tobacco
Co. Ltd., 1996 PTC (16) SC 512. The issue in this case relates to rectification
of the Register where the respondent company was only manufacturing cigarettes
and was holding registration in broad classification relating to tobacco. It is
worthwhile to take note of the concluding observations of the Court wherein
they have made it clear that they have not expressed any opinion on the claim
of registration of the trade mark 'CHARMINAR' in favour of the appellant for
zarda and quiwam being manufactured by them. The issues involved in that case
are not relevant in the instant matter.
Learned
counsel for the appellant tried to take support from The Procter and Gamble Co.
v. Satish Patel, 1996 PTC (16) DEL 646 case which related to passing of action
wherein an injunction was sought against user of trade mark 'SAFEGUARD' since
1984 and an injunction through that suit was sought in 1995. The petitioner did
not raise any objection for full 11 years. Injunction was refused on this ground.
We feel this case is of no hold to the appellant where user is hardly little
more than one year prior to the filing of application for registration. Learned
counsel tried to rely upon Hindustan Pencils Pvt. Ltd. v. Prem Chand Gupta,
1985 PTC 33 DEL where the petitioner and the respondent both were having
registrations in relation to specific items of stationery and the petitioner
filed rectification application
against the respondent for removal of his registration from the Register. The
issues involved in that case are not of much relevance in the instant matter.
9. We
have carefully considered the contentions of both the counsel and find that
with a view to qualify for registration for the purpose of section 9 of the Act
the mark should be distinctive of the goods of the proprietor or if it is not
distinctive it should be capable of distinguishing the goods of the proprietor from
the other proprietor. It is sufficient to conclude that the use of hardly for
20 months prior to the filing of application for registration of the mark has
no capacity to acquire distinctiveness. Further, the mark being a name or
surname, is inherently non-distinctive and is thus not capable of
distinguishing the goods of its proprietor from that of the goods of the other
proprietor. It has to acquire distinctiveness over a long use with a view to be
capable of distinguishing the goods. Whereas the respondent's mark 'MILTON' is
in abundant use since 1971. Thus, the appellant miserably fails in his claim
under Section 9 of the Act. In matter of scrutiny under Section 11(a) of the
Act, the learned Counsel for the appellant marshalled many instances in
supporting his claim. However, we find that much of them are either not
relatable to the issues or in some of them, looking into the very character and
nature of the marks and the description of goods for which they are being used,
it has been held that the goods belong to different description and thus there
is no likelihood of any confusion. The Vazir Sultan case is a land mark case in
relation to rectification of the Register where simply for the non-user of the
mark for certain specific goods the rectification of the Register was done.
However, while passing orders on this score, the Supreme Court has very clearly
spelled out that they have not gone into the merits of the registration
application of the plaintiff in relation to the products which they have ordered
to be excluded from purview of category of tobacco for which the registration
was held. Hence, the said judgment is of no hold to the appellant in the
present case. To the contrary, there is a strong case to reach the conclusion
that the requisite parameters required for qualifying under Section 9 of the
Act are grossly lacking in view of the user of the mark being for a very
limited period of 20 months and that too confined to a specific item relating
to electrical goods, that is, electric iron. Similarly, there being the same
consumers, same trade channels and same selling outlets for both the products
and there being closer similarity amongst the goods, there is every likelihood
of causing confusion to attract disqualification under Section 11(a) of the
Act. Since the very distinctiveness-acquired or potential-is in jeopardy under
Section 9 of the Act, the right of proprietorship under Section 18 of the Act
cannot be made available. The honest concurrent use under Section 12(3) of the
Act needs the use surely which has to be honest and concurrently but over a
long period which is patently lacking in the present case.
10. In view of the above we feel that
the Assistant Registrar of Trade Marks has rightly disallowed the registration
and accepted the opposition. Hence, the appeal is dismissed with no order as to
costs.
BEFORE THE INTELLECTUAL
PROPERTY APPELLATE BOARD, CHENNAI
CIRCUIT BENCH AT NEW DELHI
CIRCUIT BENCH AT NEW DELHI
Decided On: 03.12.2004
Appellants: Brij
Mohan Sharma
Vs.
Respondent:Milton Plastics
Judges/Coram:Vs.
Respondent:
Counsels:
For Appellant/Petitioner/Plaintiff:
For Respondents/Defendant:
Subject:
Acts/Rules/Orders:
· Trade
Marks Act, 1999 - Section 100;
· Trade
and Merchandise Marks Act, 1958 - Sections 9, 11, 12(3), 18 and 18(1);
· Code
of Civil Procedure (CPC)
Cases Referred:
· Trojan
and Co. v. N.N. Nagappa Chettiar, AIR 1953 SC 235;
· Gramophone
Co. of India Limited v. Mars Recording Pvt. Ltd. and Anr., 2001 PTC 681 (SC);
· Vishnudas
Kishendas v. Vazir Sultan Tobacco Co. Ltd., 1996 PTC (16) SC 512;
· United
Brothers v. United Traders 1997 PTC (17) DEL PG. 603;
· Roshan
Lal Oil Mills Ltd. v. Assam Company Limited, 1996 PTC (16) DEL 699;
· Procter
and Gamble Co. v. Satish Patel, 1996 PTC (16) DEL 646;
· Hindustan
Pencils Pvt. Ltd. v. Prem Chand Gupta, 1985 PTC 33 DEL;
· Corn
Products Refining Co. v. Shangrila Foods, AIR 1960 SC 142;
· SIA
Gems and Jewellery Pvt. Ltd. v. SIA Fashion, 2003 (27) PTC 227 (Bom);
· Shamlal
v. Parley Products, AIR 1967 Madras 117;
· Kumar
Electric Works v. Anuj Electronics, 1990 PTC 26 DEL
Disposition:
JUDGMENT
1. CM (M) No. 464/97 has been
transferred to this Board in terms of section 100 of the Trade Marks Act, 1999
from the High Court of Delhi and has been numbered as TA/218/04/TM/DEL.
2. The appellant Shri Brij Mohan
Sharma, Proprietor, Arun Electricals, appellant herein filed an application No.
483050-B for registration of trade mark 'MILTON' in respect of goods being
parts of electrical fittings, including electric switches, coil holders, plugs,
coil adopters, electric connectors, electric testers, electric bells and
buzzers, iron and voltage stabilizers included in class 9. The same was ordered
to be advertised before acceptance and was accordingly advertised in Trade
Marks Journal No. 1068 dated 1.12.1993 at page 954. The respondent herein M/s
Milton Plastics gave notice of their intention to oppose the registration on
1.3.1994. The appellant filed his counter statement on 8.9.1994.
3. The learned Assistant Registrar of
Trade Marks held the hearing on 3.4.1997 and came to the following conclusion.
He found that the matter mainly related to Sections 9, 11(a) and 18(1) of the
Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The
learned Assistant Registrar was of the view that the impugned word 'MILTON' is
a known surname and is inherently non-distinctive and also incapable of
distinguishing the goods of its proprietor from that of the goods of the other
proprietors. In matter of acquired distinctiveness or the acquired capability
of distinguishing by user, he came to the conclusion that in the light of
evidence submitted by the appellant, the mark is not qualified for
registration. The appellant in his affidavit has claimed that they had adopted
the mark since 1.1.1985. The sale figures given in their affidavit are from the
year 1986-87 to 1994-95. The earliest of the four photocopies of sale invoices
submitted relate to 19.4.1986, the date of application being 21.12.1987. Such a
short period was taken to be not sufficient for imparting either the
distinctiveness or capability of distinguishing to the goods.
4. In matter of his examination under
Section 11(a) of the Act the Assistant Registrar came to the conclusion that
the respondent's goods, namely, domestic containers and the appellant's goods
like electric bell, buzzers, electric iron are having trade connections.
Relying upon the dictum of the Hon'ble Supreme Court in Corn Products case,
MANU/SC/0115/1959, he came to the conclusion that the impugned word 'MILTON' is
likely to deceive or cause confusion amongst the consumers in view of the
earlier use and reputation of the respondent. In view of the mark having not
qualified under Sections 9 and 11(a) of the Act, he came to the conclusion that
the right of proprietorship under Section 18(1) of the Act also fails. In view
of the insufficient user of the appellant he found that the impugned mark does
not qualify for honest concurrent use under Section 12(3) of the Act.
5. The appellant in the appeal filed in
the High Court of Delhi has claimed that they are continuously using the trade
mark 'MILTON' since 1.1.1985. The respondent never used the trade mark 'MILTON'
in relation to electric items prior to 1.1.1985. Learned Assistant Registrar
came to an erroneous conclusion in matter of his examination under Sections 9,
11(a), 12(3) and 18(1) of the Act. Respondent in his reply rebutted the
averments of the appellant.
6. The appeal was taken up for
consideration on 2.11.2004 in the sitting of the Board held at New Delhi. Learned
counsel Shri S.K. Bansal appeared on behalf of the appellant and learned
Counsel Shri Amarjit Singh appeared on behalf of the respondent.
In United Brothers v.
United Traders 1997 PTC (17) DEL PG. 603 the Court has specifically
distinguished the goods of the petitioner from the goods of the respondent and
held that both are not allied or cognate goods.
In Roshan Lal Oil Mills
Ltd. v. Assam Company Limited, 1996 PTC (16) DEL 699 the Court held that
besides the goods being distinct the marks too were visually dissimilar.
J. Lyons and Co. Ltd.'s
Appln. for Rectification, (1959) RFC 120 (C.A). The case is not relevant in the
instant matter. In this case the Register was ordered to be rectified by
excluding 'ice cream' from the goods for which the mark was registered as the
proprietor admitted non user of the mark in respect of ice cream. In the cases
cited above, the Courts looking into the description of various products
involved held them to be of dissimilar nature and as such allowed registration
of the impugned marks.
8. Learned counsel for the respondent
submitted that the crux of arguments by learned Counsel for the appellant is
that the goods involved are different. Impugned application for registration
was filed on 21.12.1987 and the user claimed is since 1.1.1985 and the
appellant has been able to prove his user only since 19.4.1986. He argued that
there are the same trade channels, same consumers and same trade connections in
relation to both the goods. This fact has neither been denied nor challenged in
the pleadings of the appellant. Even the evidence adduced in this regard
remains unrebutted. There is complete identity of the marks. He relied upon the
following observations of the Supreme Court in Corn Products Refining Co. v.
Shangrila Foods, MANU/SC/0115/1959:
Where there are a
"series" of marks, registered or unregistered, having a common
feature or a common syllable, if the marks in the series are owned by different
persons, this tends to assist the applicant for a mark containing the common
feature. But before the applicant can seek to derive assistance for the success
of his application for registration from the presence of a number of marks
having one or more common features which occur in his mark also, he has to
prove that these marks had acquired a reputation by user in the market.
On this score he argued
that the appellant's claim miserably fails in relation to Section 11(a) of the
Act. He further argued that the relevant date for the purpose of assessing
distinctiveness of the mark being 21.12.1987 when the application was made, the
appellant has miserably failed to support his claim for acquiring
distinctiveness. He has been using the mark since 19.4.1986 only. Here the user
is of 20 months only. The four invoices which have been adduced to prove the
user till the date of filing of the application have only one out of those
which relates to electric iron. Thus, the appellant has miserably failed to
support his claim for qualifying under Section 9 of the Act. This fact has been
taken note of by the Assistant Registrar in arriving at his conclusions at page
9 of the impugned order. Besides relying upon the Corn Products Case, the
learned Counsel for the respondent referred to SIA Gems and Jewellery Pvt. Ltd.
v. SIA Fashion, 2003 (27) PTC 227 (Bom) wherein the said High Court held that
the plaintiff selling jewellery under the trade name SIA and the defendants
selling dress material and sarees in a shop bearing the name SIA shall lead to
likelihood of confusion. It was held that the defendant's goods are cogent to
plaintiffs goods and thus there is likelihood of causing damage to plaintiffs
reputation. He put his reliance also upon Shamlal v. Parley Products, AIR 1967
Madras 117 where the said Court held that 'Pearl' was deceptively similar to
the mark Tarle's' and was likely to cause confusion in the minds of public. In
Kumar Electric Works v. Anuj Electronics, 1990 PTC 26 DEL, the High Court of
Delhi held that the trade mark 'OLYMPUS' registered in respect of electric flat
iron in the name of the plaintiffs attracts the case of infringement and pas
sing-off for the use of the same mark by the defendant in respect of television
sets.
