1. Word 'PEPSI' was sought for registration under Applicant No. 687663 in class 25 for the goods "hosiery and readymade garments" by the above named Applicant. The mark was claimed to be used since April, 1992.
Eventually the application was advertised before acceptance under Section 20( 1) proviso vide Trade Marks Journal No. Mega 1 dated 25.8.2003 at page 193.
2. On 22.1.2004 a notice of opposition on Form TM-5 was lodged by the above named Opponent objecting to the registration of the impugned mark on the following grounds :- That the Opponents are in an established international business and dealing, manufacturing and merchandising of soft drinks, beverages, concentrates, syrups and food products as well as clothing accessories and are using a world famous trade mark 'PEPSI' which enjoys an international reputation and goodwill including India and that they are the registered proprietors of the same in class 32 under Nos. 417908 and 417910 as of 1984 and that various applications in different classes are pending for registration.
3. That the very adoption of the impugned mark under these circumstances by the Applicant is nothing but a dishonest attempt on his part to trade and benefit from the goodwill and reputation already enjoyed by the opponents in their world famous trade mark and, therefore, he cannot claim its proprietary right and that the use of the same shall also cause deception and confusion during the course of trade and hence prohibited for registration under Section 11 read with Section 9 of the Act. The Opponents took objections to the registration of the impugned mark under Sections 9, 11 and 18 of the Act and also prayed for exercise of the discretion, adverse to the Applicant, under Section 18(4) of the Act.
4. In his counter-statement filed on 1.6.2004 the Applicant denied the various averments of Opponents and stated that the impugned mark was honestly conceived and adopted in the year 1990 and is being used thereafter continuously. Rest of the counter-statement contains mere denial of the Opponents' averments.
5. After completion of the evidence of the parties as per the Rules, the matter was set down for hearing. It may be mentioned here that the Opponents' evidence was taken on record by way of allowing an interlocutory petition vide my order dated 3.3.2005. The hearing in the matter took place in presence of Ms. Divya Balasundaram, Advocate for the Opponents and Shri E.S. Godfrey, Registered Trade Marks Agent for the Applicant.
6. Ms. Divya Balasundaram learned advocate for the Opponents submitted that the trade mark 'PEPSI' is a wold famous trade mark and is registered in many countries of the world and the same is being used and publicised extensively throughout the world including India and under these circumstances, the very adoption of the impugned mark by the Applicant is a calculated move on his part to trade upon and benefit from the goodwill and reputation already enjoyed by the opponents in their registered trade mark. She stated that the use of the impugned mark by the Applicant will cause confusion and deception with regard to the origin and source of the goods and shall also dilute the distinctiveness of their registered trade mark 'PEPSI'. She invited my attention to the evidence of use filed by the Opponents in support and stated that the word 'PEPSI' is being used in India right from the year 1956 through publicity and advertisement and also the goods under the said mark of the Opponents are imported in this country. She invited my attention to the worldwide sales figures under the trade mark 'PEPSI' from the period of 1975 to 2003 along with the Exhibits B and C whereby the goods under the trade mark 'PEPSI' were imported in this country. She stated that from the year May, 1990 the trade mark 'PEPSI' is being used through their collaborator M/s. Punjab Agro Industries Corporation and invited my attention to the exhibit D in this connection. She stated that the nature and class of customers of the rival goods are same and similar and, therefore, there is every chance of confusion and deception during the course of use of the impugned mark. She stated that there can be only one mark, one source and one proprietor and referred to the decision of the Hon'ble Supreme Court reported as Supreme Court of India . She stated that the word 'PEPSI' is one of the world's best known brands and qualifies as a well-known trade under Section 11(2) to Section 11(10) under the new Trade Marks Act, 1999. She stated that the Applicant has failed to disclose as to how and why he has adopted the impugned mark.
Ms. Sundaram referred to the evidence filed by the Applicant and stated that the sales invoices filed along with the same are not genuine and fabricated. She took me through the evidence of use filed in these proceedings both by the Applicant as well as the Opponents in support of her contentions.
7. Shri E.S. Godfrey Registered Trade Marks Agent for the Applicant vehemently refuted the submissions of Ms. Sundaram and stated that the impugned mark is being used right from the year 1992 continuously and extensively. He invited my attention to the affidavit of Shri Om Prakash Rathi along with the annexures in support. Shri Godfrey stated that the rival goods are not similar and, therefore, there is no basis to sustain any of the Opponents' objections to the registrability of the impugned mark. Shri Godfrey stated that tins opposition is filed just to harass the Applicant without any basis and to delay the registration of the impugned mark, 8. I have considered the submissions of both the parties and have gone through the records. It is correct that the Applicant has not given any plausible explanation as to how and why he has adopted the impugned mark. It is also correct that the Opponents' registered trade mark 'PEPSI' enjoys a huge reputation and goodwill not only in India but also internationally - as is evident from the evidence filed in these proceedings. It is also correct that the rival goods are meant for common class of customers and are being used by a common man. The evidence filed by the Applicant in support of use since the year 1992 is not convincing and in any case the same does not deserve any reliance on account of the fact that the copies of the invoices are just photo copies which appear to have been prepared at 'one go' at the same time. The originals of these sales figures were not produced at the hearing. The Applicant is stated to have spent Rs. 1000 per year as publicity and sales promotional work but has not produced any documentary evidence in support thereof. On consideration of the overall facts and circumstances of the case, this Tribunal is not convinced with the very adoption of the impugned mark by the Applicant and the same is evidently shrouded with doubt with regard to its bona fide. However keeping in view the use and reputation of the Opponents' registered trade mark, the use of the impugned mark undoubtedly is likely to cause confusion and deception during the course of trade and hence prohibited for registration under Section 11 of the Act and the issue is decided accordingly. Similarly it is difficult to digest the honesty and bona fide of the Applicant with regard to the circumstances leading to his adoption of the impugned mark and the issue under Section 18(1) shall also go against the Applicant and is ordered accordingly. Also the discretion of this Tribunal shall go against the Applicant under Section 18(4) of the Act keeping in view the overall facts and circumstances of the case and more particularly the type of evidence of use which has been filed in these proceedings and in the absence of plausible explanation by the Applicant leading to the adoption of the impugned mark.
9. In view of the foregoing, the Opposition No. KOL-160895 is allowed and the Application No. 687663 in class 25 is refused registration. The Opponents are entitled to a cost of Rs. 2500 (Rupees Two Thousand Five Hundred) only of these proceedings.