(Circuit Bench Sitting at Delhi)
Honble Shri Z.S.Negi, Chairman:
The appeal being C.M. (M) No. 244 of 2003, filed under sub-section (2) of section 109 of the Trade and Merchandise Marks Act, 1958, hereinafter referred to as the Act, before the High Court of Delhi, is directed against the order dated 20.12. 2002 passed by the Deputy Registrar of Trade Marks, New Delhi, whereby he refused the appellants application for registration of trade mark and allowed the opposition filed by the respondent No. 2. The Honble High Court of Delhi has, in pursuance of section 100 of the Trade Marks Act, 1999, transferred the said appeal to the Intellectual Property Appellate Board and the Appellate Board renumbered the said appeal as TA/202/2003/TM/DEL.
2. It is stated that the appellant, Shri Baldev Singh, the sole proprietor of Madaan Plastic Industry, is engaged in the business of manufacturing, marketing and selling of footwear. Before 1.4.1995, the appellant was a partner of partnership firm consisting of partners S/Shri Satvinder Singh, Darshan Singh and Baldev Singh and by a dissolution deed dated 1.4.1995, S/Shri Satvinder Singh and Darshan Singh retired from the partnership firm and Shri Baldev Singh continued the business activities of the firm as the sole proprietor thereof. The appellant in the year 1988 bonafidely adopted the trade mark CASIO in respect of footwear included in class 25 and has since then been using the said trade mark continuously and extensively till the present time and the goods bearing the said trade mark have been practically distributed throughout India. The appellants trade mark CASIO has, by virtue of long, continuous and extensive use, acquired a valuable goodwill and reputation in respect thereof so much so that the purchasing public and the members of the trade identify and associate footwear under the trade marks CASIO with the goods of the appellant and none else.
3. With a view to obtain statutory rights in the trade mark CASIO, the appellant filed an application No. 551253 on 17th May, 1991 for the registration thereof and after completion of the due formalities the same was advertised, before acceptance, in the Trade Marks Journal No. 1128 dated 1.6.1996 on page 466. The respondent No. 2 on 30.8.1996 filed a notice of opposition No. DEL-T-226/50945 to oppose the registration sought for and thereafter the appellant filed the counter-statement dated 1.1.1998. The appellant filed evidence in support of the application under the provisions of rule 54 of the Trade and Merchandise Marks Rules, 1959 (in short the Rules) by way of an affidavit of Shri Baldev Singh along with documentary evidence showing continuous use of the trade mark CASIO since the year 1988 but the respondent No.2 did not file evidence in terms of rule 53 of the Rules and chose to rely upon the facts stated in the notice of opposition. However, the respondent No. 2 filed its reply evidence under the provisions of rule 55 of the Rules, by way of affidavit of Mr. Shunji Nakano. After completion of procedural requirements, the respondent No.1 finally heard the matter on 16.7.2002 and passed the impugned order on 20.12.2002.
4. Aggrieved by the impugned order, the appellant preferred the present appeal on the grounds, inter alia, that the respondent No.1 failed to appreciate that the respondent No.2 had not uttered a word about the use or intention to use and did not adduce any evidence of use of trade mark CASIO in respect of foot wears or any other goods in class 25 and consequently no alleged reputation can be there without use of the mark; that the respondent No.1 erred in holding that the appellant could not claim to be proprietor of the trade mark under section 18 (1) of the Act; that the respondent No.1 failed to appreciate that CASIO, by any stretch of imagination, is not an invented trade mark but is a common surname and erred in holding that appellants adoption of the mark is dishonest and appropriated dishonestly; that the respondent No.1 failed to appreciate that the mark CASIO is capable of distinguishing the goods of the appellant and has become distinctive by virtue of its long use by the appellant; that the respondent No.1 failed to decide the objections under section 11 (a) of the Act, which decision was bound to be in favour of the appellant as the appellants goods for which registration was sought for were totally different and distinct from the goods of the respondent No.2 and that the respondent No.1 failed to appreciate the existing reputation and goodwill in the name of appellant in respect of shoes as claimed in the counter-statement (Form TM-6) which was not even denied or rebutted by the respondent No.2.
5. The respondent No.2 filed counter-statement and reply to appeal, denying the material averments made in the appeal. It is stated in the counter-statement that the trade mark CASIO is an internationally well-known trade mark of respondent No.2 and also the forepart and most distinguishing feature of its corporate name and trading style and this being a Japanese or foreign word having no significance in India can be treated on par with an invented word. It is stated that the trade mark CASIO is registered in India in a number of classes including 09, 14, 15 and 28 and the details of the registration is set out in the opening paragraph of the counter-statement. It is stated that the registration of the well-known trade mark CASIO in the name of appellant would have been contrary to the provisions of sections 11(a) and (e) and 18 (1) of the Act. The respondent No.2 has stated that the respondent No.1 has correctly appreciated that the rights of the parties have to be determined as on the date of the application and the test to be applied is likelihood of confusion and actual confusion need not be proved. The onus of proving user and the registrability of the mark is on the applicant (appellant herein) which he failed to discharge.
6. The respondent No.2 in its reply to appeal reiterated that it has number of trade mark registrations in different classes in India and the earliest registration is as of 20.1.1972 under No. 277782 in class 09. As such the respondent No.2 has an earlier claim to the proprietorship of the CASIO mark and name. The adoption of CASIO mark by the appellant is dishonest as the mark is associated worldwide with the respondent No.2 and notably the appellant has not given any explanation as to how he happened to adopt or to hit on the world famous mark CASIO of respondent No.2. It is alleged that the appellant has been making false claim of use of the mark before the respondent No.1 as he has filed 47 invoices in all [see Annexure R-1(1 to 47) to the reply] out of which 24 were duplicates of the same invoice as one invoice had been photocopied four times (that is to say in quadruplicate) in an attempt to show that the mark was more extensively in use than it actually was. It is well established principle of law that the Registrar of Trade Marks has the responsibility of maintaining the purity of the register. It is stated that the appeal is devoid of all merits and liable to be dismissed in liminie with costs in favour of the respondent No.2.
7. The appellant has filed reply to the counter-statement and rejoinder to the reply of the respondent No.2 mainly denying the contents of counter-statement and the reply of respondent No.2 and reiterating and reaffirming the grounds of appeal. The appellant, while reiterating the objections under sections 11(a) and 18 (1) of the Act, has stated that there was no chance of any confusion or deception nor any such confusion or deception has ever been alleged to have taken place during the last 18 years since when the appellant has extensively and exclusively used the mark CASIO in conjunction with its registered trade mark MPI in respect of PVC foot wears of its manufacture and sale. The appellant has stated in the reply that it is pertinent to mention that the trade mark CASIO is being used by the appellant in conjunction with its registered trade mark MPI and to show his bonafides the appellant is prepared to amend his trade mark under application No. 551253 in class 25 as a conjunctive mark i.e. âMPI-CASIO. The appellant has denied that the learned Deputy Registrar correctly interpreted the provisions of section 18 (1) of the Act or that the appellant could not claim himself to be the proprietor of the trade mark which has extensively and exclusively been used ever since its honest adoption in the year 1988. Appellant denied that the Deputy Registrar had correctly held that the appellant could not claim to be the proprietor of a trade mark which the respondent No.2 allegedly had a claim of earlier proprietorship which was not at all proved by way of documentary evidence and that too in relation to the totally different and distinct goods, having no trade connection whatsoever with the goods of the appellant. The appellant denied to have made any exaggerated claim of use before the Deputy Registrar or with this Appellate Board and that any of the documents filed by the appellant were duplicates of the same invoice or any invoice was copied four times as alleged or otherwise. It is further stated that no copy of the alleged Annexure R-1 has been supplied to the appellant and the appellant is not in a position to comment upon the same unless the copies thereof are supplied to him. It is prayed by the appellant that this Appellate Board may be pleased to allow the appeal and set aside the impugned order passed by the Deputy Registrar of Trade Marks on 20.12.2002.
8. The appeal came up for hearing before us on 23.4.2009 wherein Shri Neeraj Grover, Advocate appeared for the appellant and Ms. Natasha Sakhiya, Ms. Bhavna Gandhi and Ms. Shalika Bhalla, Advocates appeared for the respondent No.2.
9. Learned counsel for the appellant contended that the respondent No. 2 has no claim of trade mark CASIO in India in respect of goods in class 25 as it has no vendible good, i.e. foot wears included in class 25. He drew our attention to paragraph 2 of Form TM-5 whereunder particulars of CASIO trade mark registered in India in various classes in favour of respondent No.2 are set out and submitted that it is evident from there that no trade mark is registered in India in class 25 in its favour. He further contended that the respondent No.1 has failed to appreciate the fact that the respondent No.2 did not adduce any evidence of use of the trade mark CASIO in respect of any goods whatsoever and failed to place a single document in support of averments made in the notice of opposition. Respondent No.1 also failed to appreciate the fact that the respondent No.2 had not uttered even a word about the use of the trade mark and/or even any intention to use the impugned trade mark in respect of foot wears and/or any other article falling under class 25. The particulars of trade marks furnished in paragraph 2 of the Form TM-5 are not sufficient to prove the user of the trade mark CASIO. He relied upon the judgment in Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 Supreme Court 142 to contend that mere setting out of the particulars of registered trade marks without adducing documentary proof of use is no proof of user as has been held by the Apex Court in that case. He submitted that the respondent No.2 is neither using the trade mark CASIO in respect of goods falling in class 25 nor there is any intention to use the mark in respect of goods in that class stands fortified by the fact that the respondent No.2 does not hold any defensive registration nor any application for such registration under section 47 of the Act is pending. Further, the learned counsel placed reliance upon the judgment in Bridgestone Company (P) Ltd. v. Bridgestone Tyre Company Ltd., Tokyo, Japan, PTC (Suppl) (1) 540 (Punj) to contend that in the case of a notice of opposition under sections 11(a) and 12 of the Act, the Court has to be satisfied not merely that there is a possibility of confusion but that there is a real tangible danger of confusion by registering a mark and establishing trade reputation with respect to different description of goods would not be sufficient. The respondent No.1 failed to appreciate that neither the existing reputation and goodwill in the name of appellant in respect of shoes as claimed in the counter-statement was even denied or rebutted by the respondent No.2 nor the user nor the distinctiveness of the trade mark of appellant was denied by the respondent No.2. He contended that the respondent No.1 failed to appreciate that the respondent No.2 has failed to prove their alleged reputation and on the contrary he took judicial notice of reputation or goodwill even in the absence of any documentary evidence and request for taking such notice from the respondent No.2, therefore, the present appeal be allowed on this sole ground. Referring to the decision of this Appellate Board in E.I. Du Pont De Nemours and Co. of USA v. Zip Industries Private Limited, Chennai, 2004 (28) PTC 174 (IPAB), Wellcome Foundation Limited v. Reliance Formulations Private Ltd. and Anr., 2005 (30) PTC 533 (IPAB), Jolen Inc, v. Assistant Registrar of Trade Marks and Anr., 2005 (30) PTC 542 (IPAB), Worldwide Brands Inc. v. Smt. Dayavanti Jamndas Hinduja and Anr., 2006 (32) PTC 697 IPAB) and Kraft Jacobs Sucharc Ltd. V. Government of India by Secretary, Ministry of Commerce and Industry and Ors., 2004 (29) PTC 376 (IPAB), the learned counsel submitted that in these cases, the respective appeals were dismissed as the appellants have not adduced sufficient evidence in support of their reputation by way of promotional activities to popularise their mark in India either through advertising and publicity in newspapers, journal, magazines and presentations at fairs and exhibitions, etc. to show that the relevant section of public have knowledge of such mark or have failed to prove their claim of reputation or well-knownness or trans-border reputation of their mark.
10. Learned counsel for the appellant contended that the goods or description of goods of the appellant are totally different and distinct from that of the goods of the respondent No.2. The trade channels and consumers are also different and therefore there is no likelihood of any confusion or deception in the course of trade. The appellant is using the mark CASIO in conjunction with its registered trade mark âMPI in respect of PVC foot wears of its manufacture and sale. Having regard to the difference in goods or description of goods of the parties and having regard to the facts and circumstances of the case and the issue raised under section 11 (a) of the Act and having regard to the well settled principles of law, the Registrar of Trade Marks ought to have sustained the objection raised by the appellant under the aforementioned section by a speaking order but the Registrar of Trade Marks has failed to decide the objection at all under the above referred section of the Act. Reliance has been placed on the judgment of Bombay High Court in the case reported as Sony Kabushiki Kaisha v. Shamrao Maskar and others, PTC (Suppl) (1) 622 (Bom), orders passed by this Appellate Board in Champagne Moet and Chandon v. Moets, 2005 (30) PTC 323 (IPAB) and in the cases referred to in the preceding paragraph to contend that where the trade channels for sale of two products are entirely different and there is also no common field of activity in course of trade of the two products and also the classes of customers who purchase the two products are entirely distinct and different, the objection to registration of the impugned trade mark cannot be sustained, as there would be no likelihood of confusion or deception. The respondent No.1 has failed to appreciate that during the long use of the mark by the appellant, for a span of about 15 years, there was not even a single instance of confusion.
11. It is the contention of the learned counsel for the appellant that the respondent No.1 failed to appreciate that the trade mark CASIO was not an invented word by any stretch of imagination but a common surname and as such no benefits which accrue to an invented trade mark could be extended to the trade mark CASIO of the respondent No.2. To buttress his contention, learned counsel drew our attention to the additional evidence contained in Annexure-A to the affidavit dated 17.7.2001 of Shri Baldev Singh, trading as M/s. Madaan Plastic Industry, filed along with an interlocutory petition before the respondent No.1. The said Annexure-A contained copies of certain documents down loaded from the Yahoo Website Services to show that CASIO is a common name/surname and the same can not be described as an invented mark or the same could not have been treated at par with an invented word as alleged or otherwise. The learned counsel contended that by virtue of open, continuous and extensive user, the appellants mark was capable of distinguishing the goods of the appellant and had become distinctive in respect of the appellants goods. The respondent No.1 also failed to appreciate that there are other registered proprietors of the trade mark CASIO in different goods in respect of different classes and the presumption that the respondent No.2 being the only proprietor of mark CASIO was misconceived as per the records of the Registry of Trade Marks.
12. Learned counsel for the appellant contended that the respondent No.1, by failing to appreciate that an application for registration of a trade mark can be made in respect of a specified class of goods, and thus there could be more than one proprietors of a trade mark in respect of totally different goods, erroneously held that the appellant could not claim itself to be the proprietor of the trade mark under section 18(1) of the Act. He also failed to appreciate that claim of proprietorship of a trade mark could arise by use or by registration and in the present case the appellant applied for registration of trade mark claiming extensive and continuous use of the mark for three years before the date of application. It is submitted that the appellant has been openly, continuously and extensively using the mark and by virtue of this, the mark has acquired enviable reputation and goodwill amongst the public and the appellant had filed evidence showing its continuous and extensive use of the mark since the year 1988. Placing reliance upon the decision in E. Merck Aktiengesellschaft v. Schering Limited, PTC (Suppl) (1) 640 (Bom), it was contended that once a user by a proprietor of a trade mark is shown, application for registration under section 18(1) of the Act can be filed. Learned counsel, while refuting the allegation that the adoption of mark CASIO by the appellant by copying the identical mark of respondent No.2 with mala fide intention to trade upon the goodwill of respondent No.2, which amounts to dishonest adoption, submitted that the respondent No.2 cannot claim monopoly over the use of word CASIO which is a common name/surname and the appellant is using the mark CASIO in conjunction with another registered trade mark MPI.
13. Lastly, learned counsel contended that the impugned order is vague, riddled with fallacies and lacks reasoning; passed in haste and the same is bad in law, which is passed with a negative approach towards the erstwhile counsel appearing for the appellant due to personal vengeance and to settle scores on personal fronts. By drawing our attention to a copy of notice dated 24.1.2003 issued by the Joint Registrar of Trade Marks to the erstwhile counsel for the appellant to appear, along with relevant materials available with him, before him on 28.1. 2003, the learned counsel submitted that two complaints against the respondent No.1 were filed on 29.10.2002 and 16.12.2002, respectively, by the erstwhile counsel for the appellant and it is a matter of record that the respondent No.1 heard the arguments in the present matter on 16.7.2002 and passed the impugned order on 20.12.2002 despite the knowledge that an enquiry has already been initiated against him. In order to prove his bona fide, the respondent No.1 should have himself refrained from passing any order in the present proceedings but on the contrary he chose to pass a fallacious and vague order on 20.12.2002 with a negative approach. He urged that the impugned order dated 20.12.2002 may be set aside and the present appeal be allowed.
14. Ms. Natasha Sakhiya, learned counsel for the respondent No.2 submitted that respondent No.2 is the registered proprietor of world famous trade mark CASIO in India in respect of different classes of goods and first of such marks is registered in class 09 as of 20.1.1972 and the respondent No.2 has been diligently and successfully protecting its world famous trade mark, a list of such successful oppositions was handed over to the respondent No.1. The contention of the appellant that the respondent No. 2 had not uttered even a word about the use of the trade mark and /or even any intention to use the mark in respect of footwear is irrelevant to the issue on hand. Refuting the contention of the appellant that the respondent No.2 has failed to adduce a single piece of documentary evidence in support of its case, the learned counsel submitted that it is not a fact that would have in any way affected the decision of respondent No.1 for the simple reasons that it is the settled principle of law as laid down by the Apex Court, in the cases of Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 Supreme Court 449 and National Sewing Thread Co. Ltd., Chidambaram v. James Chadwick and Bros. Ltd., AIR 1953 Supreme Court 357, that onus of proving the registrability of mark applied for is on the applicant (the appellant herein) and that the provisions of sub-section (5) of section 21 of the Act empowers the Registrar of Trade Marks to take into account any ground of objection in deciding the opposition whether relied upon by the opponent (the respondent No.2 herein) or not. Relying upon the decision of Division Bench of Calcutta High Court in Prem Nath Mayer v. Registrar of Trade Marks and another, AIR 1972 Calcutta 261, the learned counsel submitted that the onus on the applicant at no stage of proceedings shift to the opponent. She went on further to add that it is well established principle of law that the Registrar in a proceeding before him must in the public interest maintain the purity of the register.
15. Learned counsel submitted that the CASIO is well-known trade mark of the respondent No.2 and the same is closely associated to them and its use by any person other than respondent No.2 is bound to cause confusion or deception. Reliance has been placed upon the judgment in Sunder Parmanand Lalwani and others v. Caltex (India) Ltd., AIR 1969 Bombay 24 to fortify her submission that while considering the ambit and scope of section 11(a) of the Act, all factors which are likely to create or allay deception or confusion, such as the nature of the mark itself, the class of customers, the extent of the reputation, the trade channels, the existence of any connection in the course of trade, and several others, must be considered in combination. Relying upon the decision of Division Bench of Bombay High Court in Mahomed Oomer Moahomed Noorulla Sahib v. S. M. Nooruddin, AIR 1956 Bom 76 she submitted that even though the application for registration may not fall within the prohibition of section 11 or 12 of the Act, there is no right in the applicant to get the trade mark registered. She further submitted that CASIO is a world wide well-known trade mark of the respondent No.2 having enviable goodwill, the use of an identical mark by anybody would dilute and deface the reputation and goodwill of the registered trade mark, which cannot be permitted. In support of her submission the learned counsel relied upon the decision in Daimler Benz Aktiegesellschaft and another v. Hybo Hindustan, AIR 1994 Delhi 329, Meerani Electricals v. The Registrar of Trade Marks, (1982âPTC-51) and Sony Corporation v. Jasbir Singh Kohli and Anr., 2005 (31) PTC 486 (IPAB). The learned counsel relying on the above referred cases also submitted that the Registrar as a tribunal and the court can take judicial notice of the fact that a trade mark is well-known trade mark and the respondent No.1 has rightly taken the judicial notice, by relying on the case of Daimler Benz (supra), that CASIO trade mark of the respondent No.2 is a well-known trade mark.
16. Learned counsel for the respondent No.2 pointed out that the appellant has placed over emphasis on the evidence placed on record to prove extensive use of the trade mark but in fact the appellant has been making false and exaggerated claim of use of the trade mark before the Registrar, the Court and now before this Appellate Board. Learned counsel took us to Annexure R-1 which contain 47 copies of invoices and pointed out that out of 47 invoices 8 invoices are in quadruplicate and 2 in triplicate and this is done in an attempt to show that the mark was more extensively in use than it actually was. Refuting the averment made in para 3 of the rejoinder filed by the appellant that no copy of alleged Annexure R1 has been supplied to the appellant and unless copies are supplied the appellant, the appellant is not in a position to comment upon the same, the counsel for the respondent No.2 took us to letter dated 10.9.2005 by which the counsel for the respondent No.2 had forwarded the counter-statement, etc. with a copy thereof endorsed to the counsel for the appellant. However, the Annexure R1 is filed by the appellant and the factual position could have been verified from its records or, if needed a copy thereof, the appellant could have again asked for the same from the respondent No.2. The averment made by the appellant that the mark CASIO is used in conjunction with registered trade mark MPI is false as it could be seen from the copies of invoices that the appellant has discontinued writing MPI after 1992. The plea that the appellant is using the trade mark CASIO in conjunction with the registered trade mark MPI is raised for the first time and this is nothing but an after thought of the appellant. It is also evident from the copies of invoices that the appellant has been misrepresenting the unregistered trade mark CASIO as a registered by writing ® on the top right side corner of the word CASIO.
17. Learned counsel submitted that the respondent No.1 has correctly held that the appellant could not claim to be the proprietor of the trade mark CASIO to which the respondent No.2 had an earlier claim of proprietorship. The trade mark CASIO of respondent No.2 is a well-known mark and the surname has no significance in India as has rightly been held by the respondent No.1. Relying on the decision in Tobu Enterprises Pvt. Ltd. V. Toho Cycle Industries, (1983-PTC-392), learned counsel submitted that CASIO, a Japanese or foreign word having no significance in India, can be treated at par with an invented mark. Apart from this, the word CASIO is the most distinguishing feature of the corporate name and trading style of respondent No.2. Even if, it is assumed for the sake of argument that the word CASIO is a surname, it will in no way help the appellant because it is not the case of the appellant that his surname is CASIO. It was contended by the counsel for the respondent No.2 that the appellants adoption of identical mark of respondent No.2 is malafide and dishonest and no explanation has forth come from the appellant as to how it settled on such a mark. It is not the claim of the appellant, to show his honest and bona fide adoption of the trade mark CASIO, that at the time of such adoption it had no knowledge that an identical mark is already registered in the name of the respondent No.2 and the same is being used by it or it had got the search made before adoption from the Registry of Trade Marks to ascertain whether any conflicting mark is already registered or pending for registration with the Registry.
18. After having heard both the parties at length, the first issue to be decided is whether, in the absence of any documentary proof of user, the respondent No.2 has any claim over the trade mark CASIO in India in respect of goods in class 25. In the case of registration of trade mark, the use of opponents mark and its reputation if any is to be determined on the date of filing of application. Use of the mark does not postulate actual sale of goods bearing such a mark. Use can be in any form or way and does not necessarily mean and imply actual physical sale and even mere advertisement without having even the existence of the goods can be said to be a use of the mark. In the case of registration of trade mark, the evidence in support of notice of opposition under rule 53 of the Rules by way of affidavit is required to be given by the opponent setting out the evidence on which he intends to rely unless he intimates the Registrar in writing that he does not desire to adduce evidence but intends to rely on the facts stated in the notice of opposition. It is true that the respondent No.2 has not filed any evidence in support of its opposition, except affidavit evidence in reply under rule 55 of the Rules, and chose to rely upon the facts stated in the notice of opposition. The respondent No.2 has stated in the notice of opposition that it is the registered proprietor of world famous trade mark CASIO and substantial reputation and goodwill has accrued to that trade mark by reason of use, sales promotion and advertisement and by reason of superior quality of goods in relation to which the said trade mark is used. The onus is on the applicant to show that the opposition is not justified and that he is entitled to registration. The respondent No.1 has taken judicial notice of the reputation by taking such notice observed in the impugned order that âThe word CASIO is a reputed trade mark and any person who have dealt with electronic goods must be knowing about that trade mark, as it is the matter of common knowledge that the electronic goods under the trade mark CASIO are easily available in Indian markets.â The term Judicial notice, as defined in The Law Lexicon, Reprint 2002 (General Editor Justice Y.V.Chandrachud,former CJI) means the notice which a judge will take of a fact without proof. Acceptance by court for the purpose of a case, of the truth of certain notorious facts without requiring proof. Having this in view, we do not find any infirmity in taking judicial notice of reputation by the Registrar as a tribunal. Regarding the appellants contention that the respondent No.1 has taken judicial notice of reputation even without such request from the respondent No.2, reference can be made to the provisions of sub-section (5) of section 21 of the Act which provide such power to the Registrar. A passage from the Law of Trade Marks and Passing-off authored by Dr. S. Venkateswaran states that âSub-section (5) of section 21, expressly provides that the Registrar may take into account a ground of objection whether relied upon by the opponent or not. But even under the Act of 1940 and the U.K. statutes, where there was no express provision to the effect, it was always held that Registrar may take into account any point or issue not relied upon by the opponent as âthe interest of the public are of greater importance than the interests of the parties to the proceeding.â We found the contention of appellant regarding absence of defensive registration by respondent No.2 as there are several well-known or reputed trade marks which are without defensive registration and in the present case the respondent No.2 has furnished a list of applications in which it successfully safeguarded its right in the trade mark CASIO. The contention of the appellant that no such list was given to respondent No.1 is not sustainable as he has not rebutted the present list of registrations opposed by the respondent No.2. The decision in Corn Products case (supra) as relied upon by the appellant will be of no help to him as the observation was made by the Apex Court in the context where the applicant was seeking to derive assistance for the success of his application from the presence of series of marks having one or more common features which occur in his mark, whereas in the instant case, the respondent No.2 has listed out its own marks which are registered in India. Hence that case is distinguishable. The other cases relied by the appellant is not applicable to the present appeal as we have already noticed that the respondent No.1 has taken judicial notice of reputation of the trade mark of respondent No.2.
19. It is undisputed that the marks of the respondent No.2 and appellant are similar. It is an undisputed fact that the goods and class of goods in respect of which registrations have been obtained by the respondent No.2 and the goods in respect of which registration are was sought for by the appellant are different and their trade channels are different. It is a well established principle of law that in deciding the question of likelihood of deception or causing confusion, all factors which are likely to create or allay deception or confusion must be considered in combination. In the present case it would be beneficial to refer to the Caltex case (supra), wherein the facts and issues involved were nearly identical to the case on hand. In the Caltex case, an application for registration of mark in respect of 'Horological and other chronometric instruments and parts thereof in class 14, was filed by one Lalwani before the Registrar. Caltex (India) Ltd. opposed the application on the grounds, inter alia, that there was danger of confusion because the opponents are using the mark on a very large scale since year 1937 and had spent a large sum on advertise¬ment and that the mark Caltex was used all over the world for marketing petroleum, kerosene and lubricants like greases and oils and has acquired reputation. The op¬ponents claimed that registration of the same mark by applicant for his goods, mainly watches is likely to cause deception or confusion. The Deputy Registrar held that competing marks were identical but competing goods were entirely different in char¬acter, there was no connection in the course of trade between the competing goods, the trade channels were entirely different and therefore despite the reputation of the opponents' mark, the use of the identical mark by applicant is not likely to cause deception or confusion. The Deputy Registrar also turned down the contention that the application had been actuated by dishonest intention and motive in selecting the mark. In an appeal preferred by the opponents, the learned single Judge upheld the finding that there is no likelihood of deception or confusion but came to con¬clusion that applicant dishonestly selected the mark, and thereupon allowed the ap¬peal and dismissed the application for registration. On further appeal to the Division Bench, the Court while considering the appeal, ob¬served in para 49 of the judgment:
"In this case, the goods are totally different. There is no trade connection between them. There is no connection in the course of trade, nor any com¬mon trade channels. There are factors against holding that there would be any danger of deception or confusion. But we must consider the factors which tend to show that there is a likelihood of creating deception or con¬tusion. The opponents have been using their mark on a very large scale since 1937. Their sales in 1956 exceeded Rs. 30 crores. Their publicity is wide spread and large. In 1956 they spent over a million rupees on advertise¬ments. The goods in respect of which they use the trade mark 'Caltex' are mainly petroleum, kerosene and lubricants like greases and oils etc. The goods in respect of which the applicant seeks registration are mainly watches. The class of goods in respect of which the applicant seeks registra¬tion is wider than watches and watches can be both costly and cheap. It can¬not go without notice that the goods in respect of which the applicant in fact used the mark before he applied for registration were very cheap watches. The good of the opponents are used by persons all over India, in cities and in villages, in different walks of life, rich or poor, literate or illiterate. The goods of the applicant are different in nature. But they are watches. They can be cheap watches. The potential market for them is, therefore, similar to that of existing market of the opponents, in the sense that the goods of both the parties are not special goods. They are goods which would be pur¬chased by the common man. Now, so far as the word 'Caltex' is concerned, it is common to the opponent's mark as also to the opponents name. To men¬tion the mark "Caltex" is also to mention the name of the owner. The mark is unlike the Lion or the 'Stag" mark where there would be no direct con¬nection between the mark and the name of its owner. The opponents are a large company known by many as having large resources, and therefore, capable of starting any new industry or trade. Because of that reason, there is a greater probability of the public believing that any goods with the mark "Caltex" on them would be the goods of the opponents. This is. in our opinion, sufficiently established by the 36 affidavits referred to above. The deponents of these 36 affidavits are from different parts of India, and from different vocationsâ¦.
What has to be decided in a case is whether on the totality of the facts of that case, it is likely that there would be deception or confusion. It would, therefore, be totally misleading to rely only on some individual fact or facts from decided case and put emphasis on them without taking into account other facts in combination with which that particular fact was looked upon as yielding any principle.â
After considering the evidence in the shape of affidavits and observing that there is no affidavit to the contrary on behalf of the applicant, the Division Bench con¬cluded the issue against the applicant in the following passage (at p.37):
"On the facts of this case, we have no hesitation in holding that a large num¬ber of persons, if they see or hear about the mark "Caltex" in connection with watches, would be led to think that the watches were in some way con¬nected with the opponents, or they would at least wonder whether they were in any way connected with the opponents. Persons seeing the mark at¬tached to watches, which is a new class of goods, would assume, or are most likely to assume, that they originated from the proprietor of the mark, namely, the opponents.
We are, therefore, of the opinion that if the application for registration is granted and the mark is used in connection with the goods in respect of which the application is made, it is likely to cause deception and confusion.â
In the instant case, the goods of appellant is used by people of almost all strata, whether literate or semiliterate and whether living in urban or rural areas and likewise people of all strata whether literate or semiliterate and whether living in urban or rural areas use the electronic items of the manufacture of respondent No.2. As the mark of the respondent No.2 is well-known and reputed and the respondent No.2 is a large company known by many as having large resources, and therefore, capable of starting any new industry or trade and because of that reason, there is great probability of people associating the goods of the appellant as emanating from the respondent No.2 or believing that any goods bearing the trade mark CASIO on them would be the goods of the respondent No.2. Apart from this, the word CASIO is a foreign word not in common use in India and the people seeing the mark CASIO attached to footwear which is a new class of product, they would assume, or are most likely to assume that the respondent No.2 might have expanded its business and started a new venture in the field of footwear manufacturing. Therefore, we are of the opinion that if the application for registration is granted and the trade mark is used in connection with the footwear, it is likely to cause confusion and deception. Having regard to the contention of the appellant that so far there have been no incidence of confusion or deception, the claimed extensive use and reputation of appellants trade mark is required to be considered. There are 47 copies of invoices in all, out of which 32 copies are of 8 invoices (filed in quadruplicate) and 6 copies are of 2 invoices (filed in triplicate). In 12 invoices, both the trade marks MPI on the top and CASIO at the bottom, respectively, are written and there are no indications as to which articles were sold under which trade mark. It is not possible to discern from the copies of invoices as to which articles were sold under the trade mark CASIO and which under the trade mark MPI. We have to bear in mind that the appellant has to establish the claimed use and reputation of the mark CASIO in respect of footwear and not the use and reputation of trade mark MPI. Placing copies of invoices in quadruplicate and triplicate, in an anxiety to prove its case, the appellant has deliberately attempted to misrepresent before the tribunal by inflating the number of invoices than the actually issued to the purchasers is certainly with mala fide intention to obtain undue advantage. Filing of quadruplicate copies in relation to one or two invoices could be assumed to have been filed due to bona fide mistake, not that of 8 invoices. The objection of the appellant that it is unable to comment on the invoices for want of copies is not tenable as these invoices are filed by it. It is also noticed from the Form TM-6 and arguments put forwarded by the appellant before the respondent No.1 that no plea of having two trade marks used in conjunction was raised and as such the plea is an after thought. Having these facts in view, we are unable to sustain the claim of the appellant that the mark has been extensively used and earned enviable reputation and goodwill as the same is not born out by the evidence on record. The appellant has not discharged its burden of proving that the trade mark which it seeks to register is not likely to deceive or cause confusion, which onus is on the appellant as an applicant for registration as has been held in Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 Supreme Court 449. Similarly, the Apex Court has in National Sewing Thread Co. Ltd. v. James Chadwick and Bros. Ltd., AIR 1953 Supreme Court 357 held as under:-
â22. The principles of law applicable to such cases are well-settled. The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant. It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of S.8 and therefore it should be registered. Moreover in deciding whether a particular trade mark is likely to deceive or cause confusion that duty is not discharged by arriving at the result by merely comparing it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the mark. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing.â
We found that the cases relied upon by the appellant are of no help to him as they are distinguishable. The judgment in Sony Kabushiki Kaisha v. Shamrao Maskar and Others, PTS (Suppl) (1) 622 (Bom) is distinguishable as in that case the Assistant Registrar had recorded the finding that the registration of mark sought by the respondent was not likely to cause confusion or deception in the minds of the customers and the Court in appeal found that finding correct. In the case of Bridgestone Company (P) Ltd. v. Bridgestone Tyre Company Ltd., PTC (Suppl) (1) 540 (Punj), the appeal was allowed on the ground that the respondent company had failed to establish its reputation with respect to bicycle tyres and tubes as such a number of persons are not caused to wonder whether it might not be the case that the two products come from the same source. In the case of Champagne Moet and Chandon v. Moets, 2005 (30) PTC 323 (IPAB), the Appellate Board dismissed the appeal on the ground that the appellant/opponent failed to discharge burden of proof to establish opposition and material on record establishing prior user of impugned mark by applicant was available. In the case of Worldwide Brands Inc. v. Smt. Dayavanti Jamndas Hinduja and Anr., 2006 (32) PTC 897 (IPAB), the application for registration of trade mark âCamel Collection with device besides other similar trade marks were filed which were opposed by Worldwide Brands Inc. on the ground that they were using the trade mark all over world for clothing etc. and their application in class 25 is pending registration in India. The Assistant Registrar rejected the opposition on the ground that they have not led any evidence to prove their use of mark in India and also did not produce any evidence to show that their mark is well-known in India and thereby enjoys transborder reputation. Appeal against the order of Assistant Registrar was rejected by the Appellate Board. Regarding dilution or defacing of well reputed mark, this Appellate Board after making reference to several decision pf Courts, observed in Sony Corporations case (supra) that âFrom the above principles it is very clear that irrespective of the goods different, if the use of a well reputed trade mark by others is permitted, the same would dilute and deface such goodwill and reputation of the registered trade mark, which cannot be permitted.â Apart from this, the respondent No.2 has relied upon number of cases in support of their case and we feel it will not be necessary to advert on all of them. It is a settled law that the applicant for registration of trade mark has no absolute right to obtain the registration. In Mahomed Oomers case (supra), the Division Bench of Bombay High Court held: âTurning to the Act, the scheme of that Act has often been considered by this Court and it is unnecessary to repeat what has been stated before, But one or two general principles may be usefully re-enunciated. As has often been said, there is no absolute right in any one to obtain the registration Even though his application may not fall within the prohibition of Section 8 or Section 10, there is no right in the applicant to get the trade mark registered.â Regarding contention of the appellant that the respondent No.1 has failed to appreciate that other registered proprietors are also using the mark, it is notable that he appellant has not furnished any particulars of mark and the contention is not sustainable in view of the following decision in Indian Shaving Products case (supra):-
âAdmittedly, the said parties are not before this Court. Neither the said parties are claiming any relief against the plaintiffs nor the plaintiffs are claiming any relief against them. Hence the said defence, that other persons are also using the said trade mark is not available to the defendants. The court is called upon to decide disputes in between the parties which are before it. The court cannot be expected to adjudicate upon a dispute which is not before it. A matter very much akin to the matter in hand came up before a single Judge of this Court. It was observed in Coolways India v. Prince Air Conditioning and Refrigeration, 1993(1) Arbitration Law Reporter 401. The contention that a plaintiff himself is usurping or infringing the trade mark of a third party was not to be gone into by the Court while deciding the issue in between the parties. What is to be seen by the Court is as to whether the plaintiff has acquired goodwill and reputation for his products. Moreover the plaintiffs have placed on record on Urban Market for Batteries, October, 1997. A perusal of the same shows that Sony New Ultra was sold only one unit during the month of May, 1997.There is no sale in the month of June, July, August, September, 1997. Similarly, Sony has go no market share during the months of May, June, July, August, September,1997. Thus, the same is absolutely of no avail to the defendants. To the same effect is the view expressed by learned Single Judge of this Court in Amrit Soap Co. V. New Punjab Soap Factory 1989 (2) Arbitration Law Reporter 242. The allegation that some other manufacturers are also using the same trade mark is of no consequence as the court is concerned with parties before it only.â
20. The next issue is whether the registration of mark is sought by the appellant is hit by section 9 of the Act. The provisions of section 9 of the Act deal with requisites for registration in Parts A and B of the register. Sub-section (1) of that section provides that order to be registrable in Part A of the Act, a trade mark must contain one or more of the essential particulars as setout therein and sub-section (2) provides that a name, signature or word, other than such as, fall within the descriptions in clauses (a) to (c) and (d) of subsection (1) shall not be registrable in Part A except upon evidence of its distinctiveness. The word distinctive means adapted to distinguish. To prove that the mark is adapted to distinguish, the onus is always on the applicant and unless he discharges that onus, the application should be refused. Under clause (d) of sub-section (1) of section 9 of the Act a word which according to its ordinary signification is a surname, is to be excluded. Where the word sought to be registered has several ordinary meanings, of course one of such meaning is surname, such word will not be accepted under clause (d) of sub-section (1) of section 9 of the Act without evidence of distinctiveness. In the present case, it is the contention of the appellant that CASIO is not an invented word and is surname/common name but beyond that it has not indicated whether the word CASIO has any other ordinary meaning, other than surname. The respondent No.2 has submitted that the word CASIO has no name significance in India and as such will be treated at par with an invented word. In this regard beneficial reference can be made to decision in Tobus case (supra). In that case the Court while considering the contention of the plaintiff that the trade mark Tobu being a coined word is entitled to greater protection, especially as the trade mark used by the defendant is also not a word in use in common in India, accepted that trade mark Tobu is not in use in common in India and directed defendant not to use the word TOHO except in conjunction with TCI. The Court observed: âDealing with the present case and the point whether the word âTohoâ is an invented word or has a specific meaning, as submitted by learned counsel for the defendant, it would appear to me prima facie, that as far as India is concerned, it is a coined word. The Japanese dictionary meaning of walking etc. is not in use in common parlance in India. In the case of, In re R.J. Lea Ltd., (1913) 1 Ch 446 (K), in which registration of the word Boardsmans was sought in respect of manufactured tobacco. The word Boardsmans was surname of an individual. The application was rejected by Joyce J. on the ground that a mere surname of an individual was not within the meaning of s. 9(5) and in appeal the decision of Joyce J. was affirmed. Admitting that CASIO is a surname/common name, let us consider if the surname is registrable. Firstly, the word CASIO as surname gets excluded under clause (d) of sub-section (1) of section 9 as not registrable unless there is evidence of distinctiveness, and the applicant discharges its onus of proving that the mark is adapted to distinguish. The appellants contention is that the respondent No.1 has failed to appreciate that the trade mark CASIO was capable of distinguishing the goods of the appellant and had become distinctive by virtue of open and extensive user for about 15 years. We have already stated above that the claim of appellant regarding extensive use, goodwill and reputation is not born out by the evidence on record. When there is no extensive use, the mark cannot acquire distinctiveness. Secondly, by virtue of prior registration as of 20.1.1972 and use of the mark CASIO by the respondent No.2, the opponent/ respondent No.2 is the proprietor of the mark; the appellants mark is deceptively similar to the opponents registered mark and conflicting mark is not registrable unless the adoption is bona fide and honest and concurrently used.
21. We would now consider whether the respondent No.1 fell into error by holding that the appellant could not claim itself to be proprietor of the trade mark under section 18(1) of the Act. Proprietorship in the trade mark can be acquired either by use, assignment or registration. A person can not claim proprietorship in a trade mark if the similar or identical trade mark is already registered in the name of some other person unless it is proved that his adoption is honest and bonafide. The appellant has not explained as to how it settled on a word which is not used in India unless he has seen the mark in use. It is not the case of the appellant that he was unaware of existence or use of the mark by the respondent No.2. It is also not the case of the appellant that he was not aware of the reputation and goodwill of the trade mark of respondent No.2. To prove his bonafide, the appellant has not set up a case that before adopting the trade mark he has got the search made from the Registry of Trade Marks to ascertain whether any conflicting mark is on the register or pending registration. In the Benzs case (supra) the Court observed while discussing the adoption of mark âBENZ and âThree Pointed Human Being in a Ringâ that âIn any case, as long as I remember, âMercedesâ has been a status car, which very few of the car owners are able to afford today, or at any time. âBenzâ happens to be a surname of a German. It does not exist as a surname in this country, and no Indian person has been pointed out by the counsel for the defendant during the course of arguments, having that name as an Indian, in India.
I see no reason why any trader in India should adopt the name âBenzâ, which is, as stated above, associated with one of the finest engineered cars in the world, and use the same name with respect to ordinary goods, in this case undergarments, particularly underwears.â The word CASIO apart from being a trade mark is the forepart of its corporate name and trading style whereas the word CASIO is neither the surname of the appellant nor a name or trading style of the firm. In our view the appellants adoption of mark cannot be termed as bona fide and honest and as such no amount of user can cure the dishonest adoption. The contention raised by the appellant, relying upon the decision in E. Mercks case (supra), that once a proprietary user is shown, application for registration can be filed. Here the application for registration has been filed by the appellant on the basis of prior use but we have already stated above that the evidence placed on record is inadequate to acquire distinctiveness. The under lined portion of the decision is escaped from the notice of the appellant. The decision reads as under:-
âOnce a proprietary user of a trade mark is shown, then an application for registration of the mark can be made under section 18(1) of the Trade and Merchandise Marks Act, 1958. The section lays down as a condition for application that the proprietor of a trade mark must have used or proposed to use the trade mark. Therefore, once there is user by the proprietor he is entitled to apply under section 18(1) of the Act for the registration of the said mark. As to whether ultimately registration of the mark would be granted or not is a different question but the applicant is within his rights to make an application under section 18(1) of the Act. In the present case, there has admittedly been a user of the trade mark âNEO MERCARZOLEâ by the respondent and it is entitled to apply under section 18(1) of the said Act for the registration of the said trade mark.â
22. The last issue is not required to be dealt by us as the enquiry is initiated by the concerned authorities and we have no jurisdiction to go into that issue. Leaving the allegation of impugned order passed with negative approach aside, we observe that the impugned order in favour of respondent No.2 is passed by the Deputy Registrar of Trade Marks by exercising his discretionary powers under sub-section (4) of section 18 of the Act. We do not find that the discretionary power has been exercised arbitrarily or in an a capricious manner and, therefore, the impugned order is not required to be interfered with.
23. Accordingly, we dismiss the present appeal without order as to costs.