(CIRCUIT BENCH SITTING AT DELHI)
V. Ravi, Technical Member:
The appellant are aggrieved by the order of the Dy. Registrar of Trade Marks, New Delhi dated 3rd December, 1997 refusing application no 447061 in Class 9 in respect of the trade mark SHARP filed on 18.12.1985 and pray for the quashing of the same. The brief facts of the case is stated below:-
1. a) The said application was advertised in the Trade Marks Journal and opposed by two parties. One opposition was filed by the present respondent herein under no Del-8439. The other opposition was filed by M/s Associated Electronics and Electrical (Bangalore) PVT. Ltd. under no Del.8306.
b) The appellant contested both the oppositions. Opposition no. 8439 decided on 3rd December, 1997 was allowed which is the impugned order in these proceedings. The appellant had earlier filed an appeal before Honble Delhi High Court challenging this ruling but did not seek stay of the impugned order and no order of interim nature was passed by the Honble Court. After the Trade Marks Act, 1999 came into force in 2003 the matter was transferred to the Board.
c) The applicant submit that it is the established practice of the trade marks registry that whenever there are two oppositions to one application published in the TM Journal, both the oppositions are normally taken up together. However, in case, one opposition is decided earlier, the fate of the other depends on the outcome of the earlier opposition. If the application is abandoned, withdrawn or refused in one opposition then in the other pending opposition a formal order to that effect is passed. If, however, the application is allowed and the opposition dismissed or withdrawn the second opposition is taken up for disposal on merits.
d) The applicant state that the impugned application was refused on 3rd December, 1997 and since they did not pray for the stay of the order and therefore nothing subsisted before the Registrar for consideration.
e) In the aforesaid circumstances, the order of the Deputy Registrar dated 30th January, 2004 in the second opposition is redundant, meaningless and void, ab-initio. By his order dated 30th January, 2004, the Deputy Registrar had abandoned the application for want of prosecution six years after the above mentioned earlier order. The appellant therefore submit that the order of the Deputy Registrar dated 30th January, 2004 is wholly without any jurisdiction and is a nullity in law and cannot preclude the Board to proceed with the present appeal and therefore pray that the impugned application be heard and decided on merit.
2. On merit, the case of the appellant is summarized below:
a. The appellant are engaged in the business of manufacturing and marketing TV Booster, antenna for TV, two in one and converters for the last many years. In 1974, they honestly and bonafidely adopted a dictionary word SHARP in order to distinguish it from goods of others. The logo /script (writing style) of the trade mark SHARP was specially prepared by an artist and the writing style is original as also unique and exclusively associated with the appellant. In view of the particular manner of use of the impugned trade mark it is exclusively associated with appellants goods. The appellant have incurred and invested large sum of money, skill, labour, time and energy to popularize their trade mark SHARP which has now acquired factual distinctiveness. To acquire statutory rights they filed an application under no.447061 in Class 9 on 18th December, 1985 which is the impugned mark.
b. The registrar ordered the publication of the impugned mark after scrutiny of evidence of use and it was published in Journal No.1067 of TM Journal dated 16.11.1993. The respondent herein filed a notice of opposition. After the completion of evidence by both parties the matter was heard by the Deputy Registrar of Trade Marks on 10th November, 1997 and by his order dated 3rd December, 1997 he allowed the opposition of the respondent herein and refused the registration of the trade mark SHARP of the appellant. Being aggrieved by the said order, the appellant have preferred the present appeal on the following brief grounds:-
i) the impugned order is not sustainable either in law or on facts of the case. The Deputy Registrar has failed to mention the arguments advanced by the counsel at the time of hearing. Contrary to the provision of rule 51 of the Trade and Merchandise Rule, 1958 the respondent/opponent did not furnish complete details of registration of his mark for the goods in respect of which it was registered. The respondent had relied on the registered trade mark 358541 in Class 9 but failed to mention the goods for which it was registered. Instead the respondent/opponent chose to state that it was for âVarious goods included in Class 9â. Even at the evidence stage before the Registrar the respondent/ opponent did not spell out the goods for which the mark was registered. Strangely, the Registrar ignored this major lacuna and in his speaking order stated that the mark is registered for goods âMENTIONEDâ in the notice of opposition. Thus, the order of the Deputy Registrar is completely reckless, hasty, in contravention of the mandatory provision of law and contrary to the pleadings of the parties and their evidence. The Deputy Registrar had grievously erred in law and failed to appreciate the motive of the respondent. Further, the order of the Deputy Registrar did not give a finding on whether the competing goods are the same or for goods of the same description. It is well settled that totally different goods may be categorized in the same class under the International Classification of Goods and Services.
ii) The appellant further submit that the Deputy Registrar failed to take into account that on the date of application, the respondent/opponent had failed to prove any use of the trade mark SHARP. The impugned order is based on assumptions and presumptions. The Deputy Registrar had assumed that the adoption of the impugned mark by the appellant was dishonest which is a perverse finding. The impugned order did not consider the writing style of the trade mark SHARP is totally different and distinct from that of the respondent. In fact, the respondent had never alleged nor claimed that the appellant have used the impugned mark in the same manner and writing style as the opponent/respondent. Therefore the findings of the Deputy Registrar are completely contrary to the record.
iii) Further, the findings of the Deputy Registrar that the appellant did not produce the original bills is false and untrue. The appellant had produced the original document at the time of hearing and the same was scrutinized and returned to the appellant. In fact, the Deputy Registrar adopted different yardsticks to support his conclusions. While alleging that the appellant did not produce the original document, the impugned order is silent about production of the original by the respondent/opponent.
iv) The Deputy Registrar further erred in law while commenting that bills of the appellant are signed by the same person (which is normally the case in trade practice). It does not mean they are not trustworthy. On the contrary he failed to note that the documents filed by the respondents were not even signed which raises doubts on the fairness of the findings of the Deputy Registrar.
v) The finding that the respondent/opponent are the prior adopter and user of the trade mark SHARP in other countries since 1912 onwards is absolutely beyond record. It is obvious that the Deputy Registrar is swayed by the averments of the respondent/opponent as it is a big corporation and he did not care to consider the pleadings or appreciate the contentions of the appellant in his speaking order. The appellants state that there is no monopoly in ordinary dictionary word like SHARP and he had cited Privy Council decisions on the point which were not discussed in his speaking order.
vi) In view of the foregoing, the order of the Deputy Registrar of the Trade Mark dated 3.12.1997 in respect of opposition no Del 8439 to application 447061 in Class 9 may be set aside/quashed and the impugned mark SHARP be directed to be registered.
3. The case of the answering respondent is summarized below:-
a) The respondent company was founded way back in 1912. One Mr. Tokuji Hayakawa, invented a mechanical pencil named EVER-SHARP pencil. The trade mark SHARP is derived from this. In 1929, the respondent began to make and sell radio receiving set using the trade mark SHARP. They have also been carrying on the business of manufacture and sale of household and cosmetic equipments in particular radio tape recorder, television, VCR, Video Cameras, amplifier, telephone, facsimile machine, calculator, plain paper copier and electronic component such as integrated circuit and liquid Crystal Display (LCD ) units under the trade mark SHARP. The respondent is a leading International Corporation and is well known all over the world including India. The word SHARP has been and continues to be the essential part of its corporate name as also its business and trading style and is its most valuable House Mark. The said mark has been registered in many countries including India. The trade mark SHARP has been used in respect of the aforesaid goods throughout the world including India through its subsidiary. The respondents have 66 manufacturing units in 32 countries including India. They have entered into the financial and technical collaboration within India with KALYANI SHARP India Ltd holding 51% of the issued, subscribed and paid-up equity share capital. The sales turn over of the respondents products under the trade mark SHARP is US $ 17 Billion per annum. The respondents has service centers in over 18 countries and their trade marks is widely advertised even in India and as such the SHARP has become a very famous trade mark.
ii. The respondents are the proprietors of the trade mark SHARP under no. 358541 in Class 9 in respect of Scientific, nautical, surveying electrical apparatus and instruments (excluding radio receiving sets, radio amplifies and inter communication apparatus) photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision) life saving and teaching apparatus and instruments, coin or counter-freed apparatus, talking machines, cash registers, calculating machines, fire extinguishing apparatusâ. The said registration is still valid and subsisting. The respondents are also the registered proprietor of the trade mark SHARP under no.206181 in Class 9; 363251; 325653; 325654 and 383795 all falling in Class 9. They are also the registered proprietor of the said mark SHARP under 423530 in Class 14.
iii. All the above registration was originally in the name of Associated Electronic and Electrical Industries (Bangalore) Pvt. Ltd., (AEEI) which was later assigned in favour of the respondent and the assignment was duly recorded by the Registrar of Trade Marks as subsequent proprietors.
iv. The Indian subsidiary of the applicant M/s KALYANI SHARP INDIA LIMITED has obtained Government approval to manufacture TV, VCR and VCP , TV receivers , audio products etc. The annual turnover of KALYANI SHARP bearing the trade mark SHARP in 1995-96 was approximately Rs. 127 crores.
v. The appellant claim the use of the identical trade mark SHARP in respect of TV booster, antenna, two-in-one and convertors but their adoption is dishonest and void ab-initio. Both the competing goods are similar and sold over the same counter to the same class of purchasers and there is bound to be confusion. The Deputy Registrar has given a detailed order of refusal with reasons and case law to support his findings. He was correct in refusing the registration of the impugned mark under No. 447061. The appellants have made unwanted allegations against the respondent.
vi. The respondent also denies the statements, allegations and submissions made in the grounds of appeal. The Deputy Registrars order is in accordance with the law and facts of the case. Section 12(1) of the Trade and Merchandise Mark Acts, 1958 prohibits the registration of an identical mark which is already registered in respect of the similar description of the goods. The respondents mark SHARP is already registered in India in respect of a wide range of goods falling in Class 9. Therefore the Deputy Registrar is correct in refusing application No 447061 in class 9. In fact the respondent had annexed the affidavit of Mr. Masuru Umeda dated 10TH March, 1997 as evidence in reply before the Registrar and relied on it in respect of other registered trade marks of the respondent. In fact, the trade mark SHARP has been registered under No 363251 in the name of the respondent in respect of television sets, parts and fittings thereof, TV antenna, television booster and parts and fitting thereof. Similarly, two-in one in respect of which the appellants are seeking registration is also included under registration No. 373875 in Class 9. The appellants goods moreover have to be used in conjunction with television sets. Customers and traders are well acquainted with the respondents TV sets bearing the trade mark SHARP upon seeing the appellants booster, TV antenna and convertors are bound to be confused and wonder whether the appellants goods emanates from that of respondent. The use of the trade mark SHARP by the appellant amounts to an infringement and is an offence under Section 78, 79 of Trade and Merchandise Marks Act, 1958. The appellants have made false claim of use and have failed to substantiate it with sufficient documentary evidence. They have also failed to explain why they adopted the trade mark SHARP in the field of electrical and electronics goods. The respondent submit that the impugned mark has been copied with dishonest intention and ulterior motives. The respondent therefore prays that the Board may be pleased to confirm the order of the Deputy Registrar allowing Del 8439 and refusing application No.447061 in Class 9.
4. The respondent had also filed a Letters Patent Appeal (LPA 872/2010) challenging the order of the Single Judge of Honble Delhi High Court dated 6th October, 2010 dismissing the Writ Petition No.184 of 2008 filed by them. The issue relates to the registration of trade mark SHARP in respect of âTV Boosters, two-in-one, TV antenna and convertors.â The appellant and the respondent had filed written submission as directed by the Board and the Deputy Registrar of Trade Marks also submitted a written note on the issue of abandonment of the appellants application. The Board passed an order dated 16th August, 2007 in TA/2007/138/2003/TM/Del stating that the order passed by the Deputy Registrar in DEL 8306 is not directly connected with or any issues thereto are involved in the pending appeal and they do not have any jurisdiction to pass any order in relation thereto. On 15th October, 2007 the respondent filed a MP.No.121 of 2007 in TA/138/2003/TM/DEL seeking directions of the Board to dispose of the appeal in view of the abandonment of the application. The Board by its order dated 12th December, 2007 refused to hear the MP in view of its order dated 16th August, 2007 aforementioned. The Board however, made it clear that parties are free to raise all contention in the main hearing. Writ Petition 184/2008 relates to this. Notice was issued to appellant and His Lordship stayed the proceedings before the Board. However, by an order dated 6th October, 2010 the Writ Petition was dismissed. On further appeal the Division Bench found no merit in it and directed that both the appellant and the respondent are at liberty to canvass the respective contentions before the Board in the main appeal.
5. The matter was listed for hearing on 22.03.2013 when we have heard the detailed arguments of the respective learned counsel and gone through the pleadings and the records.
6. The following authorities were relied on by the appellant:
1. âNestle Products Ltd., and others Vs M/s Milkmade Corporation and anotherâ - AIR 1974 DELHI 40
2. âUnited Brothers Vs United Traders â â 1997 PTC (17)
3. âVishnudas trading as Vishnudas Kkishndas Vs Vazir Sultan Tobacco Co. Ltd. â- 1996 PTC (16)
4. âThomas Bear and Sons (I) Ltd Vs P. Narain and Jegannathâ â 1941 â R.P.C. 25 P.C.; 84 Sol. Jo.368; AIR. 1940 P.C. 86; 67 I.A.212
5. Jellineks Appln. (1946)63 R.P.C. 59 Ch.D.- Mr. Justices Evershed and Romer
6.âComputer Generated TM- Search Report dated 20.03.2013â
7.â MCA 21 - Computer Generated TM- Search Report dated 19.03.2013â - Ministry of Corporate Affairs.
7. The following authorities were relied on by the respondent:
1. âN.R. Dongre and others Vs Whirlpool Corporation and another â 1996 5 SCC 714
2. âM/s Hamdard Industries Vs M/s Hamdard National Foundation (India) anotherâ IPAB Order No. 164/2011 dated 4th October, 2011 in OA/08/2005/TM/DEL
3.âMilment Oftho Iindustries and others Vs Allergan Inc., â- 2004(28)PTC 585 SC
4. âM/s Madley Laboratories P. Ltd., Vs M/s Progro Pharmaceuticals P. Ltd., and 2 others â- Order dated 13.09.1989 in WA 1151/1985
5. M/s |Laxmi and Co Vs A.R. Deshpande and another â AIR 1976 SC 49
6. âRameshwar and others Vs Jotram and othersâ- AIR 1976 SC 49
7. âArvind Laboratories Vs Modicareâ 2011 - 4 L.W. - 55
8. âAshok Leylands Ltd. Vs Blue Hill Logisticsâ
9. âBlue Hill Logistics Pvt. Ltd. Vs Ashok Leyland Ltd.â â 2011 (4) CTC 417
10 .âAutomatic Electric Ltd. Vs. R.K. Dhawan and anotherâ - 1999 PTC (19) 81
8. Summary of arguments of appellants Counsel:
Before the commencement of proceeding, Shri Arun Mohan, learned counsel for the respondent raised a preliminary objection that the subject application is deemed to have been abandoned. As an immediate response, the appellants counsel Shri Miglani asserted that this objection was raised years ago in the High Court. He then traced the history of this application making reference to the afore mentioned two oppositions in respect of the same application. On merits, Shri Miglani summarized the issues raised in the pleading and also made detailed arguments on the main grounds of appeal the gist of which is indicated below:
a. anything not pleaded in the counter statement should not be looked into by the Board.
b. the respondents have not disclosed the exact goods for which they have secured registration as stated in the pleading.
c. the impugned order of the Dy Registrar is in complete derogation of the Act and rules. It is a reckless order and contrary to pleadings.
d. the respondents have misled the registrar and snatched an illegal order.
e. the respondents are mainly in the business of calculators which is not of the same description as that of the appellant.
f. the Registrars ruling is based on the presumption that the adoption and use of the trade mark SHARP is per se dishonest.
g. the appellants have filed 98 documents in support of the application along with 7 sales bills whereas the respondents have not filed a single invoice in the 400 pages tendered to the Board to show the use of the trade mark SHARP by them.
h. till date, there is no supporting document filed by the respondent regarding assignment of the trade mark and the respondents are barred from going beyond the pleadings.
i. the impugned mark SHARP is an ordinary dictionary word and this has not been given appropriate weightage by the Registrar.
j. there is nothing in the pleading that the appellants have copied the style and manner of the respondents trade mark.
k. Lastly, the appellants are entitled to the benefits of Section 12 (3) with respect to the impugned mark in view of its continuous use from 1975 onwards till date.
9. Summary of arguments of respondents counsel :
a. the learned counsel Shri Arun Mohan referred to the Japanese electronic firm with the house mark SHARP as a part of its trading style and claimed that it is one of the top Fortune 500 companies and 20th largest electronic firm in the world.
b. the appellants are seeking registration for antenna and TV Boosters which are obsolete goods and only of comic value. Today no one buys two-in-one and convertors.
c. the first objection was the impugned application has been abandoned and once this is the case nothing survives further. The appellants have taken no step to revive the said application.
d. the respondents have complied with the requirement of Rule 51 as is evident from a scrutiny of pages 20, 42, 44 and 68 (examples of request for spare parts). The declaration of ownership is mentioned in page 103. Page 141 is the copy of the UK registration of 1974.
e. in fact the trade mark SHARP has been registered in most countries. It has been widely published in famous magazines like Life, Newsweek, Asia Week, Readers Digest etc.
f. the respondents are having 36,0000 employees on its payroll.
g. the appellants while claiming adoption of the trade mark in 1974 have in fact filed the oldest invoice that dates back to 1985.
h. the appellants have given a wrong date of user and have approached the Board with an unclean hand. There is no amendment of user and they have given no reason for adopting the trade mark SHARP for electronic goods.
10. REJOINDER OF THE APPELLANT:
i) the respondents have introduced new grounds of appeal not found or pleaded in the Counter Statement.
ii) the respondents have no direct presence in India. The appellants are the prior user and adopter in India of the impugned mark SHARP. The rights have to be determined as of 1975.
iii) regarding allegation that the appellants goods have become obsolete it was asserted that even now in villages and towns across rural India there is heavy demand for TV Boosters and antenna and the respondents cannot take away the rights of the appellant.
iv) in fact only one registered trade mark of the respondents have been pleaded and that too for radio receiving set (wherein antenna have been excluded). The respondents cannot improve their case through reply evidence.
v) the Registrar has in thousands of cases permitted registration after amendment of user.
vi) the trade mark SHARP of the appellant is so common that it cannot be alleged to be dishonest.
11. It would be appropriate to take up the issue of abandonment of the mark and the legal position on the same. We are in complete agreement with the submissions made by the Learned Counsel for the appellant on this point summarized at the beginning of this order. That is the long standing and established practice of the trade marks registry and we affirm it as correct position in law.
12. On merit,there isnodispute thatthe competingmarks are identical and the demands forboth the goods would be by asking for SHARP brand TV, radio etc. of the respondent or SHARP brand boosters, antenna, converter etc. of the appellant. The plea of stylized version of appellants mark may sound as good legal argument but the consuming public will continue to be deceived or confused by the presence of appellants mark in the market. The plea that the respondents mark require âseasoning in the country and its use in global market is irrelevant before attaining repute in India has no foundation in law. The trade mark SHARP of the respondent has undoubtedly trans-border reputation in India even if they entered the Indian market for argumentssakelater than the appellant and without a shadow of doubt it is a celebritybrand.Moreover, given the respondents internationalreputation it is the product of the appellant bearing the samemarkthat is questionable. The plea of the respondent of unfair trading activity by the appellant carries both weight and substance. A mark in the form of a word which is not derivative of the product points to the source of the product. Given various rulings of Superior Courts, SHARP is clearly an indication of the origin of respondents goods. There is no plausible and convincing explanation as to how and why the appellant came to adopt the mark âSHARP an exalted celebrity brand with universal fame. The adoption and use by the appellant of an identical mark cannot be regarded as honest despite strenuous legal nit picking. It is hard to swallow the adoption and use of appellants mark is innocent and accidental. The resemblance between the two marks is too glaring and to add to that there is a clear phonetic similarity. There is also similarity in the nature, character and performance of the goods. The Board has to ensure public interest is in no way imperilled. The basic truth is the appellant have not been able to squelch the suspicion of copying the respondents mark. The ultimate test is who is in the market first. The mere fact that the respondent have not been using the mark in India is irrelevant if they are the first in the world market. When the trade marks are identical and competing goods are of the same category there is a statutory presumption that use by a later adopter is likely to cause constant confusion in mind of the public particularly the latter is an imitation of a well known mark. It would appear the appellant wants to encash on the growing leisure market that includes household TV etc in India on the strength of respondents brand SHARP. The Board has to be cautious for the reason that an average person with average intelligence, normal brain power and imperfect recollection should not be misguided into believing the goods of appellants in this case emanate from that of the respondent. The rulings in â Milment oftho Industries and Others v/s Allergan Inc.â-(2004(28)PTC 585 SC squarely applies to the case on hand. There is absolutely no merit in the appeal and all the arguments and drumbeats of appellant are insubstantial and the façade of legality is totally hollow and contrary to settled law on the subject. We find no infirmity in the ruling of the Deputy Registrar. It needs no reminding that the fundamental operating principle in trade marks jurisprudence is âOne Mark, One Source, which is particularly true of well-known international brand.
13. In the result, TRA/138/2003/TM/DEL is dismissed and we uphold the refusal of application No.447061 in Class 9. Parties are left to bear their own costs.