Order (No. 88 of 2013)
Ms. S. Usha, Vice-Chairman:
(CIRCUIT BENCH SITTING AT KOLKATA)
TA/304/2004/TM/KOL (TMA No. 3 of 2000)
This appeal arises out of the order dated 17/12/1999 passed by the Registrar of Trade Marks allowing the opposition Nos. CAL-2861 and CAL-2862 and rejecting the application Nos. 473752 and 473753 with a condition that the marks may be considered for registration if the applicants desire to exclude from the specification of goods preparation made from cereals, foodstuff preparations etc in the form of snacks.
2. The appellants are engaged in the manufacture and sale of an extensive range of food and other products such as cereals, milk and dietetic products, beverages including instant coffee, culinary products including pasta, noodles, sauces and soups, frozen products and ice-creams, refrigerated products (including fresh cheese and cold meat products), chocolates, confectionaries, biscuits, pet foods and pharmaceuticals.
3. One of the many products manufactured and sold by the appellant is crisp wafer fingers covered with milk chocolate under the trade mark âKIT KATâ. The product crisp wafer finger was first launched in United Kingdom in the year 1935 and achieved nationwide distribution by the end of the year. By 1949, the product was recognised by the trade name and trade mark Kit Kat. In 1995, Kit Kat entered the Guinness Book of World Records. Kit Kat is sold over fifty countries around the world and the sale of Kit Kat exceeds 225 million pound sterling a year in the United Kingdom alone.
4. In India, the appellant manufactures and markets its products through one Nestle India Limited. The said company Nestle was set up in India in the year 1959. Since then it is engaged in the business of manufacturing and selling milk products such as condensed milk, infant formula, cereal food for infants, chocolates, coffee, tea and other food preparations and beverages.
5. In the 1980s, the product was imported to India through M/s. Rountree Mackintosh of the United Kingdom. On and from 1995 August, the appellant started and selling KIT KAT in India through Nestle India Limited. Even before 1984, Kit Kat was used to be regularly brought back to India by visitors abroad and was thus popular for a long time in India.
6. The Kit Kat in India was sold to the value of over Rs. 70 crores in India in the year 1996. The appellant had spent enormous amounts of money every year for promoting and advertising Kit Kat all over the world. The trade mark Kit Kat has thus become directly associated with the appellants and with no one else.
7. On 01/12/1942, Rountree and Company Limited obtained the registration of the trade mark Kit Kat under No. 8982 in class 30 in respect of coco, chocolate, confectionary and chocolate biscuits. In 1969, Rountree and Company Limited changed its name to Rountree Mackintosh Limited, which again changed its name to Rountree Mackintosh PLC. Rountree Mackintosh PLC later became Rountree Mackintosh Confectionary Limited which was taken over by Nestle group of companies in the year 1988. Therefore, the trade mark Kit Kat which was registered was assigned to the appellants by Rountree Mackintosh Confectionary Limited.
8. On 16th June, 1987, the appellants filed three applications namely Nos. 473752, 473753 and 473754 â label marks in class 30 in association with No. 8982 in class 30. All the three applications were advertised in the Trade Marks Journal No. 1117 dated 16/12/1995 at page 2666. Application No. 473754 was registered as there was no opposition and the certificate was issued on 15/09/1999.
9. Applications Nos. 473752 and 473753 were opposed by the 3rd respondent herein. In the notice of opposition, the 3rd respondent had stated that they are carrying on business under the name and style of M/s. Kit Kat Food Products and were manufacturing and marketing channachur preparations made from cereals and food stuffs prepared in the form of snacks. They had adopted the trade mark Kit Kat in an artistic manner and had been using the same since 1991.
10. The 3rd respondent had also stated that on 16/12/1991, they had applied for registration of the trade mark Kit Kat in class 30 under application No. 545855 which is the subject matter of OA/58/2005/TM/kol. The said application for registration was opposed by the appellant herein on the ground that a mere glance of the two products leaves no room for doubt that the respondents have copied the appellants trade mark to trade upon the appellants goodwill. Each and every feature has been copies including bright red packaging, the mark comprised of an oval device, the words Kit Kat in red colour upon a white background and a red inner line outside the oval device.
11. In view of the dishonest adoption and fraudulent use by the respondent the appellant filed a civil suit C.S. No. 48 of 2000 before the Hon'ble High Court for injunction along with an interim application. Meanwhile, the respondent filed an application before the Hon'ble High Court for a direction that the records of the registered trade mark under No. 473754, be called for and expunged, rectified or amended. The matter is pending. The respondents have also obtained copyright registration.
12. The appellants filed their counter statement to the notice of opposition to application Nos. 473752 and 473753. The matter was heard after the pleadings were completed, the impugned order came to be passed as under:-
âThe appellants are registered proprietors of the trade mark Kit Kat for coco, chocolates and others and have not used for chanachur, preparations made from cereals, food stuffs prepared in the form of snacks. Further Kit Kat is not an uncommon word in the country.
The word Kit Kat has not been used for the goods âchanachur etcâ on the date of application or upto the date of hearing. The appellants have not established their use of the trade mark. The onus to establish the distinctiveness of the mark has to be discharged by the appellants as applicants in respect of the goods for which they are seeking registration. Distinctiveness has been established under special circumstances as they are earlier registered proprietors. The Registrar held that the earlier registration under No. 8982 cannot be accepted as the registration is only in respect of cocoa, chocolates and others.
The goods are not similar in view of the guidelines laid down by the Hon'ble High Court of Delhi and the appellants cannot derive any benefit of special circumstances. Any special circumstance has to be read with use and adoption. Special circumstances must be connected with the use of the mark. The appellants have not used the trade mark Kit Kat for chanachur but have used only for chocolates from the year 1995 and therefore have no right of special circumstances. The respondents have proved use of the trade mark KIT KAT for the goods, chanachur etc since the year 1991 even before the appellants. The rival marks are identical and therefore likelihood of confusion and deception during the course of use of the impugned trade mark for the goods chanachur etc. The onus is on the applicant (appellant herein) to prove that the mark if registered is not likely to cause confusion or deception. Section 11 is not merely for the benefit of the other traders but for the benefit of public at large. Therefore, the registration is prohibited under section 11 of the Act.
The appellants adoption of the trade mark Kit Kat appears to be justified and bonafide as they are the registered proprietors of the trade mark Kit Kat. A mark which is honestly adopted is not necessarily registerable especially when the mark is mandatorily prohibited under the provisions of the Act. Therefore, the Tribunal is of the opinion that the discretion should not be exercised in favour of the appellants. In view of the reasons stated above, the oppositions are allowed and the applications are refused registration. The impugned trade mark for registration can be considered if the appellants so desire for amending the specification of goods to read as âexcluding preparations made from cereals, foodstuff preparations in the form of snacksâ.
13. Being aggrieved by the said order, the appellants had preferred an appeal before the Hon'ble High Court of Calcutta which was transferred to the Board as per section 100 of the Trade Marks Act, 1999.
OA/58/2005/TM/KOL and Miscellaneous Petition Nos. 77 of 2005 and 233 of 2011 in OA/58/2005/TM/KOL
14. This instant original appeal arises out of the order dated 05/07/2005 allowing the application No. CAL-52208 and the application No. 545855 in class 30 is refused registration.
15. The appellants herein filed an application for registration of the label mark consisting of the words âKIT KATâ under No. 545855 in class 30 in respect of chanachur and preparations made from cereals, on 21/02/1991, claiming user since 01/01/1991. The said application was advertised in the Trade Marks Journal No. 1165 dated 16/12/1997 at page 1779.
16. The 3rd respondent filed the notice of opposition stating that they are the registered proprietors of the trade mark Kit Kat under No. 8982 in class 30 in respect of chocolates, confectionery, biscuits as of 01/12/1942. On account of its extensive and continuous use, the public associate the trade mark Kit Kat only with the respondents. As the marks are identical, the registration of the impugned trade mark is likely to cause confusion or deception during the course of trade and hence prohibited under section 11 read with section 12 of the Act.
17. The very adoption of the impugned trade mark is tainted with fraud and dishonesty and thus they cannot claim any proprietary right under section 18 of the Act. The registration would be in contravention of the provisions of the Act.
18. The appellant herein filed their counter statement stating that they are the manufacturers of chanachur, preparations from cereals, food stuffs in the form of snacks and are using Kit Kat trade mark since the year 1991 continuously and extensively. They have also obtained copyright registration. The respondents application for registration under Nos. 473752 and 473753 are refused registration and the appeal against that order are pending before the Appellate Board. The appellants have been using the trade mark since 1991 for more than a decade and there has been no instance of confusion in the market.
19. The Registrar on hearing both the counsel held that though the respondents two applications are refused registration and are pending before the Appellate Board, one application under No. 473754 is registered in respect of âcocoa, chocolate, chocolate products, confectionary, candy, chewing gum and bubble gum, biscuits, chocolate biscuits, cereals and preparations made from cereals, snack foods included in class 30â. Based on this registration, the respondent objected to the appellants registration. The specification of goods under the impugned trade mark are chanachur and preparations made from cereals. chanachur is nothing but a product or a kind of snack made from cereals. Both are food items consumed by all class of customers especially children. The rival goods are not only goods of the same description but are also allied and cognate to each other. In view of the respondents registration of a similar mark for similar goods, the impugned registration is prohibited under section 11 of the Act. The appellants cannot claim any benefit under section 12 of the Act as their use is just one month prior to the date of application.
20. The respondents are the registered proprietors of the trade mark as of the year 1942. The word Kit Kat does not have any descriptive connotation and it is not understood as to how and why they adopted the trade mark Kit Kat. The opposition is therefore allowed and the registration is refused.
21. Aggrieved by the said order, the appellants have filed this appeal before us.
OA/2/2007/TM/KOL and Miscellaneous Petition Nos. 3 of 2007 and 128 of 2011 in OA/2/2007/TM/KOL
22. This appeal arising out of the order dated 18/09/2006 allowing opposition Nos. CAL-201958 and CAL-202875 to application Nos. 864115 and 1198509 thereby refusing the registration of the application.
23. The appellant herein filed two applications for registration (1) the label mark containing the words âKIT KATâ in class 30 was under No. 864115 on 06/07/1999 claiming user since 04/01/1997; (2) a word mark application under No. 1198509 in class 30 was filed on 13/05/2003 claiming user since 01/01/1990. Both the applications came to be advertised in Trade Marks Journal No. 1328 Supplementary (3) dated 21/02/2005 at pages 2298 and 2357 respectively.
24. The respondents herein filed the notice of opposition stating that they are the registered proprietors of the trade mark Kit Kat under Nos. 8982 and 473754 in respect of chocolates, confectionaries, chocolate biscuits etc as of 01/12/1942. On account of extensive use and wide publicity, the mark Kit Kat enjoys worldwide reputation including India. The said mark is identified and associated with the respondents. The marks are identical and therefore the registration is likely to cause confusion and deception among the public and is therefore prohibited under section 11 of the Act.
25. The appellants filed another application (label mark) under No. 545855 in class 30 which was refused registration by order dated 05/07/2005 which is the subject matter of OA/58/2005/TM/KOL. The very adoption of an identical trade mark is only with a view to trade upon the goodwill and reputation earned by the respondents. The appellants cannot claim any proprietary right under section 18 of the Act. The registration would be in contravention of the provisions of the Act.
26. The appellants filed their counter statement stating that they had adopted the trade mark Kit Kat and had been using the same since 1991 without any interruption. By long and continuous use, the trade mark Kit Kat had acquired tremendous goodwill and reputation among the public.
27. On completion of the pleadings, the Registrar heard the matter and held that the respondents prior registration for the same and similar specification of goods to that of the impugned application is a bar to the registration of the impugned mark under section 11 of the Act.
28. The appellants are trying to obtain registration by filing number of applications and also by giving different date of users for which there is no evidence. The appellants though claim that they adopted the trade mark from their trading style, which is not a sufficient ground for the appellants to base their claim on an honest and bonafide adoption. Since the mark is prohibited registration under section 11, the application is refused and the opposition is allowed.
29. The appellants, being aggrieved by the said order are therefore before us on appeal.
30. On completion of the pleadings, the appeal was listed for hearing on 03/12/2012. We heard the learned counsel Ms. Antara Sharma for M/s. Kit Kat Food Products and learned counsel Shri Hemant Singh for Societe Des Produits Nestle S.A.
31. All the three matters were heard together as common argument was advanced by the respective counsel. For the sake of convenience, we shall refer the appellants in TA/304/2004/TM/KOL and respondents in OA/58/2005/TM/KOL and OA/2/2007/TM/KOL as Societe Des Produits Nestle S.A. and respondents in TA/304/2004/TM/KOL and appellants in OA/58/2005 and OA/2/2007/TM/KOL as M/s. Kit Kat Food Products. The issues are common and the parties are one and the same in all the three matters.
32. The learned counsel for Societe Des Produits Nestle S.A. submitted that the TA/304/2004/TM/KOL relates to two applications for registration under Nos. 473752 and 473753 in class 30 filed by Societe Des Produits Nestle S.A.. The applications were refused registration.
33. OA/58/2005/TM/KOL relates to application No. 545855 in class 30 filed by M/s. Kit Kat Food Products application was refused registration.
34. OA/2/2007/TM/KOL relates to registration under Nos. 864115 and 1198509 in class 30 filed by M/s. Kit Kat Food Products. The registration was refused.
35. The learned counsel submitted that the issue for consideration is who is the proprietor of the trade mark KIT KAT, for what goods. Kit Kat wafer chocolate is from the Nestle India Limited. Whether the adoption of the trade mark Kit Kat by the respondent is honest or not?
36. Kit Kat word is a coined word and has no meaning. The mark was used by the applicants predecessors since 1935 for wafer biscuits with chocolate internationally. Since 1940, it was imported to India and sold in India.
37. The learned counsel further submitted that they had obtained registration of the trade mark Kit Kat (word mark) as early as 01//12/1942 under No. 8982 in the name of Rountree and Company, the Societe Des Produits Nestle S.A.s predecessors. Subsequent changes have been made in the register as there was a change in the name of the company.
38. Societe Des Produits Nestle S.A. filed three applications for registration of the label mark Kit Kat on 16/06/1987 proposing to use the same, under Nos. 473752, 473753 and 473754 in class 30. Application No. 473754 was registered and the certificate was issued. Application No. 473752 and 473753 were opposed against which this instant appeal has been filed.
39. M/s. Kit Kat Food Products adopted the trade mark only in the year 1991 whereas the Societe Des Produits Nestle S.A. had been using the trade mark since 1935 prior to M/s. Kit Kat Food Products. M/s. Kit Kat Food Products is not the proprietor of the trade mark and therefore is prohibited under section 18 of the Act. The learned counsel for Societe Des Produits Nestle S.A. then relied on section 11 and section 34.
40. The learned counsel then relied on the invoices filed before the Registrar to prove that the wafer chocolates bearing the trade mark Kit Kat were imported since 1989 even before the use by M/s. Kit Kat Food Products.
41. The supplementary affidavit of Mr. Venite Gabriel, constituted attorney of Societe Des Produits Nestle S.A. was referred to by the counsel. In the affidavit Mr. Gabriel had stated that Kit Kat is estimated to be worth over 220 million and is sold over 100 countries. The trade mark Kit Kat conveyed one and only meaning i.e. a brand indicating a connection in the course of trade between the product bearing the trade mark Kit Kat and its proprietors origin associated with Societe Des Produits Nestle S.A. Kit Kat appeared on Television in 1957 with the theme âHave a Break â Have a Kit Katâ. The sales increased with huge advertisement and sales promotion. It is sold all over the world. The first trade mark registration was of the year 1940 in Australia. In India, it was registered as of 01/12/1942 under No. 8982 in class 30.
42. In India, it was locally manufactured from the year 1995 and the sale was in the range of Rs. 17 crores in 1995 which increased to Rs. 51 crores in 2002.
43. The adoption of the trade mark Kit Kat by M/s. Kit Kat Food Products is dishonest. The learned counsel further pointed out that in the affidavit of evidence filed by M/s. Kit Kat Food Products before the Registrar in the opposition proceedings now under challenge, it is stated that the trade mark Kit Kat was chosen from the expression of Chitchat in conformity with the nature of their goods for chanachur, snacks which are generally consumed during the course of Chitchat. It is also stated that the trade mark Kit Kat is used by many traders for a variety of goods which are registered or are pending registration. Apart from these averments, there is no other reason given for the adoption of the trade mark Kit Kat.
44. The learned counsel relied on the few judgments namely:-
(1) 1996 PTC 16 â N.R. Dongre Vs. Whirlpool Corporation â The rights of the prior user are to be protected. Prior users right prevails over the registered owner.
(2) AIR 1990 Delhi 19 â M/s. Hindustan Pencils Ltd. Vs. M/s. India Stationery Products Co. and Anr. â Relief will be awarded only to a person who comes to court with clear hands. The Registrar in the impugned order has given no finding as to M/s. Kit Kat Food Products adoption but has rejected Societe Des Produits Nestle S.A.s application for registration.
(3) 2007 (34) PTC 370(Delhi) â Ishi Khosla Vs. Anil Aggarwal and Anr. â Adoption of a trade mark which is already used, the subsequent user i.e. the respondent is to give reason for such adoption, if not no relief can be granted to the respondents.
(4) 2011 (4) SCC 85 â T.V. Venugopal Vs. Ushodaya Enterprises Ltd. and Anr. â Reputation not established as there is no use by the respondents.
(5) TA/1/2007/TM/DEL (IPAB Order No. 204 of 2009) â Societe Des Produits Nestle S.A. Vs. Mr. Darshan Kumar Mahajan and Anr. â Societe Des Produits Nestle S.A. used the trade mark Kit Kat in India prior to 1967 and it is a well known trade mark having transborder reputation.
(6) MANU/MH/0471/2012 â M/s. Neon Laboratories Ltd. Vs. M/s. Medical Technologies Ltd. â The mark in respect of which protection is sought must have been used for a date prior to the use of the registered trade mark or the date of registration of the registered trade mark or whichever is earlier.
(7) MANU/IC/0001/2008 â Plus Systems, Inc. and Visa International Service Association Vs. Plus Computer Systems Ltd. and Ors. âPrior adopter of the trade mark have the proprietary right to file an application for registration under section 18 of the Act. Subsequent user of similar mark for similar goods is prohibited under section 11 of the Act.
(8) MANU/IC/0072/2011 â M/s. Hamdard Industries Vs. M/s. Hamdard National Foundation (India) and Anr. â Onus to establish that the mark if registered will not cause confusion or deception is on the applicant for registration.
(9) 2004 (28) PTC 585 (SC) â Milment Oftho Industries and Ors. Vs. Allergan Inc. â The mere fact that the party has not been using the mark in India would be irrelevant if they were first in the world market.
(10) 2006 (32) PTC 133 (Del) â Austin Nichols and Co. and Anr. Vs. Arvind Behl and Anr. â The goods acquire reputation even in a place where it is not available because of knowledge and awareness as it is not restricted to a particular place.
(11) 2008 (38) PTC 49 (Del) (DB) â Pankaj Goel Vs. Dabur India Ltd. â When the marks are similar for similar goods and the trade channels are same, the possibility of confusion is present.
(12) AIR 1994 Delhi 239 â Daimler Aktiegesellschaft and Anr. Vs. Hybo Hindustan â Trade Mark Law is not intended to protect a person who deliberately sets out to take the benefit of somebody elses reputation with reference to goods especially so when the reputation extends worldwide.
(13) AIR 1969 Bombay 24 â Sunder Parmanand Lalwani and Ors. Vs. Caltex (India) Ltd. â The onus to establish proprietorship, user and if registered would not cause confusion or deception is always on the applicant for registration.
(14) 2008 (36) PTC 223 (Del.) (DB) â Larsen and Toubro Limited Vs. Lachmi Narain Traders and Ors. â Test of field of activity is no more a valid question. The question is one of real likelihood of confusion or deception among the consumers and the resultant damage.
(15) 2009 (41) PTC 184 (Cal.) (FB) â Sony Kabushiki Kaisha Vs. Mahaluxmi Textile Mills â If a highly distinctive trade mark is applied to a class of goods which its proprietor does not deal with, consumers may always wonder as to whether the proprietor of the trade mark has launched a new product.
45. The learned counsel for M/s. Kit Kat Food Products submitted that Societe Des Produits Nestle S.A. filed their application for registration in the year 1987proposing to use. They had been manufacturing only since 1995. They had been manufacturing chocolates and not chanachur. M/s. Kit Kat Food Products adoption of the trade mark Kit Kat is not dishonest. The learned counsel then referred to the affidavit of Mr. Murali (Head of the Legal Department and Company Secretary of the Nestle India Limited) and submitted that the sales figures are only from the year 1995 and therefore used only since 1995 which is subsequent to M/s. Kit Kat Food Products who had been using since 1991. The learned counsel also relied on the averments made in the grounds of appeal at para 10.
46. The learned counsel further submitted that when M/s. Kit Kat Food Products adopted the trade mark Kit Kat in the year 1991, there was no such mark in the market as Societe Des Produits Nestle S.A. started manufacturing in India since 1995 only.
47. The word Kit Kat is not an invented word. According to Wikipedia, it is a place which is the very old region in Cairo. Societe Des Produits Nestle S.A. has not produced any evidence to prove that M/s. Kit Kat Food Products traded with their reputation or use. The learned counsel then relied on the order of the Hon'ble Delhi High Court in the civil suit, where it was held that M/s. Kit Kat Food Products are prior user of the trade mark Kit Kat.
48. The argument regarding dishonest adoption was not found in the impugned order. The Registrar had also not mentioned about the effect of earlier registration as well about the likelihood of confusion or deception. The learned counsel also submitted that M/s. Kit Kat Food Products had filed evidence of user.
49. The learned counsel then relied on few judgments:-
(1) 1996 PTC (16) 512 â Vishnudas trading as Vishnudas Kishendas Vs. Vazir Sultan Tobacco Co. Ltd. â If a trader or manufacturer actually trades in or manufacturers only one or some of the articles coming under the broad classification and such trader or manufacturer has no bonafide intention to trade in or manufacture other goods or articles which does fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification.
(2) AIR 1969 Cal. 43 â Aktiebolaget Jonkoping Vulcan vs. V.S.V. Palanichamy Nadar and Ors. â A foreign use or use abroad or outside India cannot be pleaded as sufficient ground for retaining a registered trade mark on the Indian Trade Mark Register.
(3) 1997 (17) PTC (DB) 669 â Rob Mathys India Pvt. Ltd. v. Synthes Ag Chur âThe onus of use is on the applicant. The applicant has to prove use in India and any use in a foreign country will not be of any assistance to the appellant.
(4) 2004 (29) PTC 620 (IPAB) â Nutrine Confectionery Co. Ltd. Vs. Ayyan Fireworks Factory Pvt. Ltd. and Anr. â This case was relied to state that the transferred appeal had to be decided under the 1958 Act as per section 159(4) of the 1999 Act. The appeal had to be decided as if the new Act had not been passed and the old Act is still continuing.
(5) 2004 (28) PTC 663 (IPAB) â E.I. Du Pont De Nemours and Co. of USA Vs. Gemini Distilleries Ltd. â No evidence produced for use in India, mere filing of details of registration and sales figures in foreign countries is no proof of use in India.
(6) 1998 PTC (18) â Cluett Peabody and Co. Inc. Vs. Arrow Apparals â Registration confers on the proprietor a monopoly right over the use of the mark. But proprietary rights in a trade mark acquired by use are superior to rights obtained by registration under the Act.
50. In rejoinder, Mr. Hemant Singh, the learned counsel for Societe Des Produits Nestle S.A. submitted that the wafer biscuits are made of flours ground from the cereals and there is trade connection between the rival goods. The 1st registration obtained under No. 8982 in the year 1942 is for biscuits made out of cereals. Societe Des Produits Nestle S.A. has been selling its goods under the trade mark Kit Kat since 1982 at least as stated in the affidavit of Mr. Vinatha Gabriel. Various trade marks overseas do not make it common to trade. The registration applied for by others are after 1942. The various registrations i.e. the mark on the register will not amount to use unless it is proved. (AIR 1960 SC 142 â Corn Products Refining Co. vs. Shangrila Food Products Ltd.).
51. The Wikipedia information relied on by M/s. Kit Kat Food Products cannot be relied on as it is only a website which can be uploaded by any person. As regards the Dictionary meaning, we are not sure when it was published. The provisions of section 11(11) of the Act does not apply as it is not in good faith.
52. We have heard both the counsel at length and have considered their arguments and have carefully gone through the pleadings and documents. There are five applications by either party in the three appeals. We shall give below the details of each application:-
TA/304/2004/TM/KOLâ Two applications â (1) 473752 â June 16, 1987 Societe Des Products Nestle S.A. (A company registered under the laws of Switzerland) of 1800, Vevey, Switzerland, Manufacturers and Merchants. Address for service is C/o. DePenning and DePenning, 10 Government Place East, Calcutta â 700069. Proposed to be used. To be associated with Registration No. 8982 (15) XXX and others. (CALCUTTA).
Cocoa, Chocolate, Chocolates, chocolate products, confectionary, candy, chewing gum and bubble gum, biscuits, chocolate biscuits, cereals, and preparations made from cereals, snack goods included in class 30.
(2) 473753 â June 16, 1987 Societe Des Products Nestle S.A. (A company registered under the laws of Switzerland) of 1800, Vevey, Switzerland, Manufacturers and Merchants. Address for service is C/o. DePenning and DePenning, 10 Government Place East, Calcutta â 700069. Proposed to be used. To be associated with Registration No. 8982 (15) XXX and others. (CALCUTTA).
Cocoa, Chocolate, Chocolates, chocolate products, confectionary, candy, chewing gum and bubble gum, biscuits, chocolate biscuits, cereals, and preparations made from cereals, snack goods included in class 30
"Image"
These applications were filed by Societe Des Produits Nestle S.A. and opposed by M/s. Kit Kat Food Products. The opposition was allowed and the applications were refused registration.
OA/58/2005/TM/KOLâ Application under No. 545855 in class 30 â 545855 â February 21, 1991, SWAPAN KUMAR GHOSH and KRISHNA PADA SAHA, trading as KIT KAT FOOD PRODUCTS, 68/26, Jaripada Dutta Lane, Calcutta â 700 033; Manufacturers and Traders. User claimed since 01/01/1991 (CALCUTTA).
"Image"
This application was filed by M/s. Kit Kat Food Products and opposed by Societe Des Produits Nestle S.A. The application was refused registration and the opposition was allowed.
OA/2/2007/TM/KOLâ Two application under Nos. 864115 and 1198509 in class 30
âImageâ
These applications were filed by M/s. Kit Kat Food Products and were opposed by Societe Des Produits Nestle S.A. The opposition was allowed and the applications were refused registration.
53. The first two applications under Nos. 473752 and 473753 are in respect of cocoa, chocolates, chocolate products, confectionary, candy, chewing gum, bubble gum, biscuits, chocolate biscuits, cereals and preparations made from cereals, snack foods included in class 30. These two marks are label marks and in one mark, the words Kit Kat is written in a stylish font and the other one is written in a stylish font in an oval line.
54. The other application under No. 545855 is in respect of chanachur and preparations made from cereals. This is a label mark where the words Kit Kat is written in a stylish font with a device of a chef and descriptive matters.
55. The last two applications under No. 864115 is in respect of pulses, masala, spices, mineral water, aerated water, non-alcoholic drinks, noodles and egg noodles, vermicelli, ice cream, ice candy and rice and under No. 1198509 is in respect of ice cream, ice candy, sattu and besan. The application under No. 864115, the trade mark Kit Kat, is in an oval shaped line and in the other application No. 1198509 the word Kit Kat is written in a normal font.
56. We shall first deal with the application Nos. 473752 and 473753 filed by Societe Des Produits Nestle S.A. The applications have been filed on 16/06/1987 as proposed to be used. The first sales invoice is export sales invoice dated 01/11/1987 which includes Kit Kat 4 fingers.
57. There is no dispute about the use of Societe Des Produits Nestle S.A. since 1987. They have used the mark in respect of chocolate biscuits (wafer chocolates) which is made of flour - cereals. The finding by the Registrar in the impugned order âas to what led them to extend goods in the impugned application to preparations made out of cerealsâ cannot be accepted. Societe Des Produits Nestle S.A. had been using the trade mark in respect of wafer chocolates since 1935 outside India. In 1942, their mark is registered for goods falling in class 30. Though registration will not amount to use, the impugned application was filed as proposed to be used as on 16/06/1987 and the appellants (Societe Des Produits Nestle S.A.) have shown user as of 01/11/1987. M/s. Kit Kat Food Products use is since the year 1991 as claimed in their application for registration. The Societe Des Produits Nestle S.A. are therefore prior user of the trade mark.
58. The onus is always on the applicants for registration to prove their case for the grant of registration. The applicants have to prove use and also to show that the trade marks if registered would not cause any confusion or deception. Societe Des Produits Nestle S.A. here are the applicants have satisfied the use since the year 1987. As we have held above that the M/s. Kit Kat Food Products are subsequent to Societe Des Produits Nestle S.A., the confusion will be by the use of M/s. Kit Kat Food Products and not Societe Des Produits Nestle S.A. who are prior in use.
59. Societe Des Produits Nestle S.A. have established the distinctiveness under special circumstances by their earlier registration. This special circumstance has been observed by the learned Registrar in the impugned order but rejected as the registration will be of no help to the applicant (Societe Des Produits Nestle S.A.) without proof of use.
60. Societe Des Produits Nestle S.A. have proved their use of the impugned trade mark for wafer chocolates. The wafer chocolates are made of cereal flour which is an ingredient. The provisions of section 11(1)(a) is not attracted. The Societe Des Produits Nestle S.A. is prior user and the possibility of confusion does not arise. The consuming public, who are aware of Societe Des Produits Nestle S.A. will know that it is the product of Societe Des Produits Nestle S.A. only.
61. We do not accept the reasons given by the Registrar for refusing the registration.
62. In view of the reasons stated above, we set aside the impugned order and consequently the appeal is allowed.
63. We shall now deal with the applications under Nos. 545855, 864115 and 1198509 filed by M/s. Kit Kat Food Products. Application under No. 545855 has been filed on 21/02/1991 claiming user since 01/01/1991 in respect of chanachur and preparations made from cereals. M/s. Kit Kat Food Products has filed evidence like â Certificate of Registration for dealer having only one place of business in West Bengal dated 21/01/1993, Central Sales Tax Registration Certificate dated 28/02/1994, Certificate of Enlistment dated 27/01/1992 and there are few bills dated 01/01/1992, 09/03/1992 etc., which do not have the trade mark Kit Kat mentioned nor does it have trading style M/s. Kit Kat Food Products mentioned. There is one bill dated 19/12/2003 where the trade mark Kit Kat in an oval line is mentioned.
64. Application under No. 864115 has been filed on 06/07/1999 claiming user since 04/01/1997 in respect of pulses, masala, spices, mineral water, non-alcoholic drink, noodles and egg noodles, vermicelli, ice cream, ice candy, rice etc.
65. Application under No. 1198509 has been filed on 13/05/2003 claiming user since 01/01/1990 in respect of ice cream, ice candy, sattu and besan. In respect of these applications, M/s. Kit Kat Food Products have relied on the same evidence filed in support of the application under No. 545855. M/s. Kit Kat Food Products has given different dates of use of the trade mark. In the first application, their user date is 01/01/1991; in the second application it is 04/01/1997 and in the third application it is 01/01/1990. In fact, it is M/s. Kit Kat Food Products own admission in the affidavit of evidence filed in support of application No. 545855 that they adopted the trade mark in the first part of the year 1991. If that be the case then the user claimed in the third application under number 1198509 which is a word mark cannot be a correct date of user. Even assuming the first two applications are label marks and so the dates are different for different applications, there is no evidence to prove their user for the dates mentioned as the goods are different though they fall in the same class.
66. The marks are identical. The goods are also similar. The trade channels are also same. The class of customers could also be the same. It is relevant to point out that Societe Des Produits Nestle S.A. deals with wafer chocolates and M/s. Kit Kat Food Products deals with chanachur, ice cream etc. It is often purchased by small children. When the class of customers are considered, which is the test to determine deceptive similarity, there is every possibility of confusion being caused by the user of the mark by M/s. Kit Kat Food Products.
67. It is for the applicant M/s. Kit Kat Food Products who are the applicants for registration to prove the case. The onus to prove that they are the prior user of the trade mark and that the registration will not cause any confusion among the public is on the M/s. Kit Kat Food Products. The applicants i.e. M/s. Kit Kat Food Products have not filed any clear evidence as to use as claimed in their application for registration. The first bill is dated 19/12/2003 which is definitely after Societe Des Produits Nestle S.A.s use. Even though there are bills dated 01/01/1992, 09/03/1992, the trade mark is not mentioned and the applicant M/s. Kit Kat Food Products name is also not mentioned. We therefore cannot consider those documents.
68. M/s. Kit Kat Food Products (the applicants) have not satisfied as to how the registration will not create confusion. M/s. Kit Kat Food Products has also given no reason for the adoption of an identical mark. Their only contention is that it was derived from the word âchit chat as the goods were snack items which were taken during the chat.
69. Societe Des Produits Nestle S.A.s goods being purchased by small children, has become known among that class of customers. M/s. Kit Kat Food Products has no reason for the adoption and cannot be considered to be bonafide. When the reason for adoption is not clear, then the very reason would be that the M/s. Kit Kat Food Products is trying to ride upon the goodwill of Societe Des Produits Nestle S.A.
70. As has been held in the Eenadu Case (supra) if we are to permit the M/s. Kit Kat Food Products to restrict their sale only to West Bengal would only amount to encouraging their wrong adoption.
71. We would also like to observe that the Societe Des Produits Nestle S.A. has been first in the world market. This fact has not been disputed by the respondents. As observed by the Hon'ble Supreme Court in Mulmet Oftho Case (supra) â âThe mere fact that the respondents have not been using the mark in India would be irrelevant if they were first in the world marketâ. We think Societe Des Produits Nestle S.A. has their mark used outside India and their rights are to be protected.
72. For the reasons stated above, the appeals are dismissed and the impugned order is upheld.
73. To summarise, our findings are as follows:-
(a) TA/304/2004/TM/ KOLâ The appeal is allowed and the impugned order is set aside. The application Nos. 473752 and 473753 filed by Societe Des Produits Nestle S.A. shall proceed to registration.
(b) OA/58/2005/TM/KOLâ The appeal is dismissed as we do not find any reason to interfere in the impugned order. The application No. 545855 filed by M/s. Kit Kat Food Products is refused registration. The Miscellaneous Petition Nos. 77/2005 and 233/2011are closed.
(c) OA/02/2007/TM/KOLâ The appeal is dismissed and the impugned order is upheld. Application Nos. 864115 and 1198509 are refused registration. The Miscellaneous Petition Nos. 3/2007 and 128/2011 are closed.
74. There shall be no order as to costs.