Shri Nalli Sambhasivam Vs. Mr. Ramnath K. Nalli and Another - Court Judgment

Excerpt:

Judgment:

Honble Ms. S. Usha, Technical Member:

The instant appeal arises out of the order dated 16.08.2007 passed by the Deputy Registrar of Trade Marks disallowing the opposition No. MAS-161811 to application No. 939087 in class 25 and allowing the application to proceed for registration under the provisions of the Trade Marks Act, 1999 (in short the Act).

2. The respondent No. 1 filed an application for registration of the trade mark “DOTCOM” on 13.07.2000 under application No. 939087 in class 25 in respect of clothing, footwear, headgear claiming user of mark as a proposed to be used. The said application was advertised before acceptance under section 20(1) proviso in the Trade Marks Journal No. 1303 (S-III) at page 321 on 28.09.2003. The appellant filed a notice of opposition on the ground that they are engaged in the business of manufacturing and marketing of silk sarees and textile piece goods readymade garments of all kinds for the past many years. The impugned mark is common to internet and is required by everyone.

3. The respondent No. 1 filed their counter statement denying all the material averments made in the notice of opposition. On completion of the formal procedures the Deputy Registrar heard and passed the impugned order with a finding that the opposition has been filed with no substance and to delay the registration. The applicants are already registered proprietors of the identical trade mark in class 24. Considering the facts and circumstances of the case, the opposition was dismissed and application was allowed for registration.

4. Aggrieved by the said order, the appellants filed the appeal on the grounds hereunder: -

(a) the impugned order is contrary to law and facts of the case;

(b) the Deputy Registrar erred in rejecting the objection under section 9 of the Act for the following reasons:-

(1) the Registrar failed to appreciate the fact that the impugned trade mark is not only common to opponents business but common to all business;

(2) the Registrar failed to appreciate that the trade mark of the respondent No. 1 DOTCOM had not acquired distinctiveness as on the date of application for registration i.e. on 13.07.2000;

(3) the respondent No. 1 did not file cogent evidence to prove its user whereas the onus is cast on them to prove the distinctiveness;

(4) the Registrar failed to appreciate that the trade mark of the respondent No. 1 is neither distinctive nor capable of being distinguished;

(5) the mark is hit by the provisions of section 9(1) (a), 9(1)(b), and 9(1)(c) of the Act;

(c) the Registrar erred in rejecting the objection under section 11 of the Act for the following reasons that-

(i) the Registrar ought to have considered that the respondent No. 1 has failed to file proof of use of the impugned trade mark;

(ii) the Registrar ought to have considered that word “Com” preceded by the symbols of a Dot represented as a com is common to every business , as com is used as part of their internet address and all commercial websites register their domain names with the suffix “com”;

(iii) the Registrar ought to have appreciated that various persons carrying on textile business are using the word “Com as part of their website and by granting registration to applicant would mean that other than the applicant/respondent No. 1 cannot use the word “com;

(iv) the Registrar ought to have considered that the impugned trade mark “Dot Com” is both visually and phonetically similar to the applicants www.nallis.com which may cause confusion as to the trade origin;

(v) the Registrar failed to consider that the respondent No. 1 was not using the impugned trade mark “DOTCOM” ;

(d) the Registrar erred in granting registration under section 12 of the Act as the respondent No. 1 failed to establish honest adoption and concurrent use of the mark;

(e) the Registrar has rejected the objection under section 18 of the Act failing to consider the fact that the applicant/respondent No. 1 is not the proprietor of the trade mark;

(f) the Registrar passed the order mechanically and the order suffers from non-application of mind;

(g) the exercise of discretion is arbitrary, unreasonable and fanciful;

(h) in the interest of justice, equity and good conscience the opposition be allowed.

5. The respondent No. 1 herein filed their counter statement denying the averments made in the grounds of appeal. The respondent No.1 stated that they had been carrying on the business of manufacturing and selling wide variety of goods related to clothing, footwear, headgears. During the course of their business they adopted the trade mark “DOTCOM”. They have spent considerable amount towards advertisements of their goods bearing the trade mark. The respondent No. 2 has passed the impugned order after careful consideration of the case. The trade mark “DOTCOM” as a whole is applied and intended to be used as a whole and the question of breaking the same into mere prefix or suffix does not arise. The mark of the appellant “NALLI” is not related to the trade mark “DOTCOM”. The domain name “www.nalli.com” can only be compared with the whole word “DOTCOM” which is wholly, substantially, structurally and phonetically different. Hence the trade mark will not cause confusion as to the trade source. The word “DOTCOM” does not in any way resemble the expression”.COM”. Even the commercial ventures owning a domain name will relate only to the expression”.COM” and not to the word ‘DOTCOM”. The trade mark “DOTCOM” is neither confusingly or deceptively similar to the trade mark ‘NALLI” of the appellant. The word “DOTCOM” is an uncommon word in the business of textiles, clothing and footwear. The trade and public relate the expression “.com” as a suffix to a trade mark or a trading style and does not attribute any significance to the expression “.com” by itself. The grant of registration will not give exclusive right to use the expression”.com and will not cause prejudice to the whole textile industry as the trade mark is “DOTCOM” word per se and not the expression “.com”. The issue of passing off also does not arise as the general public identifies the appellants website exclusively with their trade mark “NALLI”. The impugned trade mark is entitled to be registered under section 18(1) of the Act as the respondent is the honest adopter of the trade mark. The appeal may, therefore, be dismissed with exemplary costs.

6. We have heard the matter on 13.03.2009 at Chennai when Shri K.C. Kailasam learned counsel assisted by Shri S.C. Chadda, learned counsel appeared for the appellant and Shri P.S. Raman, learned Senior Counsel assisted by Shri A. Vijay Anand, learned counsel appeared on behalf of the respondent No. 1.

7. The learned counsel for the appellant submitted that the impugned trade mark “DOTCOM was applied for registration under No. 939087 on 13.07.2000 as a proposed to be used mark. The Registrar has passed an order disallowing the opposition and accepting the application for registration even without considering the issue as to whether the impugned trade mark had acquired distinctiveness and qualifies for registration. The counsel submitted that the Registrar ought to have refused registration as it did not qualify for registration as per the provisions of section 9(1)(a) of the Act. The counsel submitted that the trade mark was proposed to be used on the date of filing of the application for registration then the mark cannot be considered to be a valid trade mark. The counsel for the appellant also relied on some judgements in support of his submission.

8. The learned counsel for the respondent No. 1 submitted that they were the proprietors of the trade mark. They had been using the trade mark ‘DOTCOM” for the goods falling under class 24. He also referred to the sales figures and brought to our notice the auditors certificate filed as annexure in support of the same. The counsel further submitted that they were the registered proprietor of the trade mark ‘DOTCOM” in class 24.

9. The counsel submitted that though the appellant claim that “WWW.NALLI.COM” is their website till the date of hearing of the present appeal, the website was still under construction and placed the website printout before us in support of the contention and submitted that the word “DOTCOM” was used in an entirely different business and there was no possibility of confusion or deception and he relied on the judgement of this Appellate Board in 2004 (29) PTC 620 IPAB Nutrine Confectionery Co. Ltd., v. Ayyan Fireworks Factory Pvt. Ltd. and anr., wherein sweets and fireworks were considered to be a totally different business. The respondent No. 1 has not filed any proof to say that “DOT” was used by others and hence it is not generic word.

10. In rejoinder, the appellant contended that the use of the mark was not proved before filing of application for registration. The respondent No. 1 has not averred in the counter statement about the registration of earlier mark of the appellant in class 24.

11. We have heard and considered the arguments of both the learned counsel and have gone through the pleadings and documents.

12. The main issue is that whether the registration of the impugned trade mark would cause any confusion to the public as to the source of the product. The appellants main contention was that they propose to have a website “WWW.NALLI.COM” , which will cause confusion in the minds of the public if the word “DOTCOM” is allowed. It is a well settled principle of law that the mark has to be considered as a whole. As has been held by the Honble Supreme Court in Amritdhara case the two aspects to be considered while deciding the question of resemblance is who are the persons who are likely to be confused and what are the rules of comparison to be adopted to decide the issue of resemblance. This has to be approached from the point of view of a man of average intelligence and imperfect recollection. In the instant case, the possibility of confusion or deception does not arise as the appellants website and the trade mark of respondent No. 1 are in no way similar.

13. To determine whether a trade mark has acquired distinctiveness for the purpose of registration no fixed period of use has been laid down. Whether the mark is inherently capable of distinguishing or whether it is in fact capable of distinguishing are the factors to be considered while deciding whether a mark is capable of distinguishing to qualify for registration. A mark which has a direct reference to the character or quality of the goods is thus considered as inherently not capable of distinguishing. By nature of use of the mark, the mark can be determined as to whether the mark is in fact capable of distinguishing. Apart from use, there must be something in the mark itself which makes it capable of distinguishing the particular goods.

14. In the case of a word mark which is in a different form acquires a character of distinctiveness by that important element in it. A trade mark in a different form must consist of a unique term or word or phrase which must be used in an arbitrary manner and do not denote or describe the product to which it is applied. In such cases, the word will have no relevance to the quality of the goods which acquires more distinctiveness. In the instant case the expression “DOTCOM” is one word which is totally a word which has no relevance to the quality of the goods on which it is used. The judgment relied upon by the appellant -2004 (28) PTC 566 (SC) Satyam Infoway Ltd, v. Sifynet Solutions Pvt., Ltd., stating that the Apex Court has held that domain names cannot be used. We are of the opinion that the cited case has no relevance to this case on hand. Here we find that the domain name has not been adopted, it is only the word “DOTCOM” has been used in their textile business and not the expression”.Com” for their internet business.

15. The trade mark “DOTCOM” in class 24 has already been registered in favour of the respondent No. 1. It is also seen that though the appellants claim that “DOTCOM” will cause confusion as they have their website WWW.NALLI.COM, the website as on the date of hearing was still under construction which was the contention of the respondent No. 1 and the same was admitted by the appellant. Having held that there is no possibility of confusion or deception and also considering the fact that the trade mark is in no way similar to the appellants website WWW.NALLI.COM and also that the trade mark “DOTCOM” is in a different form has inherently acquired distinctiveness, we see no merits in the appeal. We, therefore, dismiss the appeal upholding the order of the Deputy Registrar. No order as to costs.