(Circuit Bench at New Delhi)
HON'BLE Ms.S.USHA TECHNICAL MEMBER:
The appellant herein filed an application for registration of the trade mark SONY under application No.512242 in class 18 in respect of brief cases and luggage carriers on 21.6.1989 claiming user since 1.4.1985. The said application was ordered to be advertised before acceptance in the Trade Marks Journal No.1084 dated 1.8.1984 at page 542. The second respondent herein opposed the said registration on the following grounds:-
i) The second respondents are the registered proprietors of the trade marks under various classes as early as 1962.
ii) Second respondents are the registered proprietors of the trade mark SONY under No.397944 in class 18 in respect of leather and leather articles.
iii) As the goods covered under the impugned registration is also the same, the registration would be contrary to the provisions of section 12(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act)
iv) The second respondents mark has been used in many countries and thus enjoy a good reputation all over the world.
v) Goodwill and reputation has accrued to the second respondents trade mark by way of use, advertisement and sales promotion activities and also by reason of superior quality of the goods.
vi) The mark does not qualify for registration under section 9 of the Act as the impugned registration is an exact imitation of the second respondents trade mark.
vii) The second respondents trade mark which is a well known trade mark throughout the world has acquired high reputation and the impugned registration would be contrary to the provisions of section 11(a) and (e) of the Act.
viii) Second respondent prayed that the registrar exercises his discretion and pass suitable orders.
2. After completion of formal procedures the Registrar heard the matter and passed the impugned order on 29.10.2001.
3. Learned Assistant Registrar passed the order based on the objections under sections 11, 12 and 18 of the Act. Learned Registrar had found that the marks being identical and the goods also being the same, there was every possibility of confusion and deception being caused in the course of the trade. He had also held that the second respondent had filed sufficient documents to prove their extensive use by way of advertisement and sales and had held that the registration of the impugned mark shall be contrary to the provisions of section 11(a) and (e) of the Act.
4. Learned Assistant Registrar had also rejected the objection under section 12(1) of the Act on the finding that the goods are of the same description and as those for which the second respondent have registered their trade mark in class 18 and that the question of likelihood of confusion would be analogous under section 12(1) of the Act.
5. With regard to the objections under section 18 of the Act, the Registrar held that a person can claim to be the proprietor of the mark by way of use or by way of registration of the mark. Here, the appellants who are subsequent in use cannot claim to be the proprietor of the trade mark and rejected the objection under section 18(1) of the Act.
6. The Assistant Registrar had also held that the second respondents being prior adopters and users of the trade mark SONY are the proprietors of the trade mark and he has also held that the appellants have not given any reason for the adoption of an identical mark. The Registrar had on the above points refused the registration of the application No.512242 and allowed the opposition DEL 8938.
7. Aggrieved by the said order the appellants have preferred the appeal before the High Court of Delhi under CM(M)/714/2001. The same has been transferred to this Appellate Board pursuant to section 100 of the Trade Marks Act, 1999 and renumbered as TA/183/2003/TM/DEL.
8. The matter was taken up for hearing in the Circuit Bench at New Delhi on 22.8.2008. Learned counsel Shri Ashok Mittal appeared on behalf of the appellant and learned counsel Ms. Anuradha Salhotra appeared on behalf of the second respondent.
9. Learned counsel for the appellant submitted that they have been carrying on business of manufacturing and selling brief cases and luggage carriers. He further submitted they had adopted the trade mark SONY on 1.4.85 and had been using the same without any interruption till date. The counsel mainly contended that the goods being totally different, i.e. the second respondents goods were electronics goods whereas the appellants goods were brief case and luggage carriers which were in no way connected with the second respondents goods and so there was no confusion or deception being caused or for the public to think that the goods bearing the trade mark âSONY emanates from the second respondent. Learned counsel for the appellant also pointed out to the observations made by the Assistant Registrar in the impugned order that the electronic goods and bags were connected as they have the same consumers and many of the goods are sold with the bags and submitted that electronic goods were not sold in bags and the findings of the Assistant Registrar was incorrect.
10. Learned counsel for the appellant also pointed out to the advertisements filed by the second respondent and submitted that the goods were only electronics and were in no way connected with the second respondents goods as they were leather bags and briefcases. Learned counsel referred to following judgments in support of his contentions:- PTC (Suppl) (1) 622 (Bom) Sony Kabushiki Kaisha Vs. Shamrao Maskar and Ors was referred to with regard to his contentions that when the goods were totally different there was no possibility of any confusion or deception.
2000 PTC 561 DB Delhi Hindustan Pencils Private Limited Vs. Universal Trading Company was relied on to say that when the impugned mark was in use by the appellants for several years, no prejudice would be caused to either side if the mark is registered and allowed to remain on the register.
If the respondents sale was in no way affected by the appellants use of the impugned mark, the mark need not be refused registration was contended by the learned counsel for the appellant and he relied on the judgment reported in 2006 36 PTC 852 IPAB P. Mittulaul Lalah and sons Vs. Lal Products.
11. Learned counsel for the appellant prayed that the appeal be allowed and the order of the Learned Assistant Registrar be set aside and the application be proceeded for registration.
12. Learned counsel for the second respondent mainly contended that the appellants have not come to the Court with clean hands. Learned counsel for the second respondent also pointed out to the findings of the Assistant Registrar in the impugned order that the trade mark SONY is registered in the name of the second respondent in class 18 and it has been registered as early as 22.11.1982 in class 11.
13. Learned counsel also submitted that under section 34 of the Act if the mark is already registered, the second respondent need not have to prove user by way of any other documents. The counsel also submitted that if the appellants had made any search in the Trade Marks Registry they would have definitely come across the second respondents mark as it was in use since 1962. The counsel also pointed to page 14 of the impugned order that the impugned mark SONY was registered under application No.397944 in class 18. The counsel further pointed out to the sales figures which run to several thousands of US dollars as mentioned in the affidavit of evidence in support of opposition filed before the Registrar of Trade Marks. Learned counsel further submitted that the Assistant Registrar had considered all the facts and had passed a reasonable order and there was no illegality in the order passed by him.
14. The counsel further submitted that the adoption itself was dishonest as the appellants had not given any reason for the adoption of an identical mark which had been in use for several years and had become a well known mark. The appellants mark also was in contravention of section 9(2) of the Act as by four years use the mark could not have acquired distinctiveness. Learned counsel for the second respondent prayed that the appeal be dismissed with costs.
15. We have heard both the counsel and have gone through the pleadings and documents.
16. Before we go into the merits and decide the matter, we would like to make some observations with regard to the issuance of the certificate and its renewal. The certificate of registration has been issued as early as 30.06.1995 when the notice of opposition had already been filed. When the same was brought to the notice of the Registrar of Trade Marks, a notice under sub-section (4) of section 56 of the Act was issued to both the parties on 05.08.1996 and after a hearing was held, on 09.02.1998 the Assistant Registrar had passed an order directing the entry in the Register be removed and the matter be proceeded in accordance with the provisions of section 21 of the Act. We find that the trade mark has not been removed instead has been renewed The impugned trade mark has been renewed for a period of seven years on 21.06.1996 and subsequently on 21.06.2003 which is not legally valid. We, therefore, are of the view that the registration is void and cannot be used as a valid certificate.
17. Now, coming to the merits of the case, as per section 9 of the Act, the trade mark should be distinctive or capable of being distinguished either inherently or by use or by other circumstances. The relevant date for proving distinctiveness is the date of application for registration. The test to prove distinctiveness is that the public associate the goods bearing the said trade mark only with the applicants and not with others as on the date of application and in future also. It is sufficient if the mark indicates to the public that the goods bearing the trade mark emanates only from that particular source. In the instant case, we find that the mark has been applied for registration on 21.06.1989 claiming user since 01.04.1985. We find no reason offered by the appellant for the adoption of the impugned mark except a bald statement that the mark SONY is taken from their companys name â SONY PLASTICSâ- no reason for the adoption of the companys name. In such circumstances, we observe that the appellant had only copied the second respondents well known trade mark only to unlawfully gain the profit from the goodwill earned by the second respondents. The mark, therefore, does not qualify for registration under the provisions of section 9 of the Act.
18. As regards the issue as per section 11 of the Act, we find that there is every possibility of confusion being caused as the marks are identical. The use here by the appellant is not honest and bonafide. The use has been with the intention to make use of the goodwill which has been acquired by the second respondent. The finding of the Assistant Registrar in this issue is in favour of the second respondent and we find no reason to go into the issue, as we are also of the same view. Apart from the marks being identical, the goods though said to be different according to the appellants, the second respondent has been using the impugned trade mark in respect of leather goods in class 18 and had obtained registration which fact has not been denied by the appellant. The only repeated contention and argument of the appellant was that the appellants goods were briefcase and luggage carriers and the second respondents goods were electronic goods. We, therefore, find that the goods and marks being identical, there was every possibility of confusion being caused among the public and the registration, if granted would be in contravention of the provisions of section 11 of the Act.
19. The observations made in Daimler Benz Aktiegesellschaft and Anr. Vs. Hybo Hindustan reported in AIR 1994 Delhi 239 â â that if a globally well known mark is used by another in respect of different kinds of goods, the possibility of confusion is still thereâ We are also be the view that when the impugned trade mark âSONY has acquired the status of a well known mark, the second respondents adoption was not bonafide.
20. In this connection we would like to quote the observations made by the Division Bench of Bombay High Court reported in AIR 1969 Bom 24 at page 37 Sunder Parmanand Lalwani Vs. Caltex (India) Ltd.
âOn the facts of this case, we have no hesitation in holding that a large number of persons, if they see or hear about the mark âCALTEX in connection with watches, would be led to think hat the watches were in some way connected with the opponents, or they would least wonder whether they were in any way connected with the opponents. Persons seeing the mark attached 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.â
21. 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 brief case and luggage carriers for which the application is made, the public would be led to think that the goods bearing the impugned trade mark âSONY emanates from the appellants which is likely to cause deception and confusion.
22. As the appellant has not satisfied that the impugned mark applied for registration is not prohibited for registration will not have the benefit of the provisions of section 12(1) of the Act. When the goods are of the same description and the marks are identical, the use of the trade mark by the appellant would definitely cause confusion among the public and, therefore, registration of the impugned trade mark ought not to be granted.
23. The well settled principle of law is that priority prevails over the registered proprietor. In the instant case, the appellants are subsequent user i.e. 1985, whereas the second respondents have adopted the mark as early as 1958. The second respondents who are first in the market are the proprietors of the mark and the appellants who are subsequent adopters, cannot claim to be the proprietors under section 18 of the Act. Therefore, the objection under section 18 of the Act also sustains.
24. Having negated all the pleas of the appellant and as we also do not find any infirmity in the order of the Assistant Registrar, the appeal is dismissed with no costs. As we have held in earlier part of this order, we direct the Registrar for necessary action for removal of the mark from the Register.