(Circuit Bench at New Delhi)
HON'BLE Ms.S.USHA TECHNICAL MEMBER:
The first respondent herein filed an application for registration of the trade mark âKAVI in respect of chewing tobacco for sale in the State of Assam, West Bengal, Bihar, Maharashtra, Gujarat, Madhya Pradesh and NCT of Delhi in class 34 under No.534889 on 09.08.1990 under the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) claiming user since 01.03.1973. The said application was advertised before acceptance in Trade Marks Journal No.1158 dated 01.09.1997 at page 1123.
2. The appellants herein, being the opponent in the opposition proceedings filed their notice of opposition on 26.11.1997 opposing the registration of the trade mark on various grounds. On 12.04.1999 the first respondent filed their counter statement denying the averments made in the notice of opposition.
3. The Assistant Registrar of Trade Marks heard the matter on completion of all formal procedures and passed an order dated 31.07.2001. The Assistant Registrar had passed the order on two issues, namely (i) the applicant, i.e. the first respondent herein was entitled for registration under the provisions of section 12(3) of the Act as there existed the element of honest and concurrent use of the mark (ii) the applicants have been using the mark for 13 years as on the date of application for registration and as such the applicants had a definite claim to be the proprietors of the mark and were entitled for registration as per the provisions of section 18(1) of the Act.
4. On the above findings the Assistant Registrar had passed an order dated 31.07.2001 dismissing the opposition No.DEL-T-633/52100 and allowing application No.534889 in class 34 to proceed to registration. The opponent / appellant being aggrieved by the said order filed an appeal before the High Court of Delhi in CM(M) No.667/2001 and the same was transferred to this Appellate Board as per the provisions of section 100 of the Trade Marks Act, 1999 and re-numbered as TA/181/2003/TM/DEL.
5. The appellant filed the appeal on the grounds that the appellant being prior user of the mark, the first respondents application was barred by section 12(1) of the Act; that in case of triple identity- identical goods, mark and class of customers, benefit of section 12(3) cannot be granted; that the first respondent failed to prove their user since 1973 or 1977 as claimed; that the first respondent i.e. applicant for registration had not proved their case; that the civil suit mentioned by the Registrar was irrelevant to decide the opposition proceedings; that the copyright registration was irrelevant to decide the opposition proceedings; that on perusal of the sales figures, the first respondent held no goodwill or reputation; that the first respondent was not the proprietor of the trade mark and was barred for registration as per the provisions of sections 9,11,12 and 18 of the Act; that the appellants prior registration of the trade mark would be affected by the impugned registration.
6. The matter was taken up for hearing in the circuit bench at New Delhi on 29.05.2008. Learned counsel Shri Pankaj Kumar appeared on behalf of the appellant and learned counsel Shri Rajesh Sharma appeared on behalf of the first respondent.
7. Learned counsel for the appellant mainly relied on the earlier registration certificate which was registered as early as 1977 in respect of chewing tobacco under No.326402 in class 34. The sales figures since 1992 which was filed as annexure before the Trade Marks Registry was brought to our notice. Learned counsel for the appellant vehemently submitted that the appellant being the registered proprietor of the trade mark âKAVI had proved the distinctiveness of the mark before the Registrar under No.326402 and that it need not be done so here.
8. The other contention of the appellant was that though he had objected to the registration of the impugned trade mark on the grounds of the provisions of section 11(a), 12(1) and 18(1) of the Act, the Registrar had only dealt with section 12(3) of the Act. Learned counsel for the appellant further contended that though the first respondent have claimed user since 01.03.1973 in the application for registration, the first document is of the year 16.4.1977 which is a newspapaer advertisement not supported by any sale or use which is subsequent to that of the appellants use i.e. 10.03.1977 which is evidenced by invoice No.196.
9. Learned counsel for the appellant further submitted that the observations made by the learned Assistant Registrar in regard to the goodwill and reputation was totally wrong. He pointed out to the same in the impugned order. Learned counsel for the appellant also submitted that when the appellants use was prior in point of time than that of the first respondent, the registration and the use of the impugned mark by the first respondent, when the mark and the goods were identical, there was every possibility of confusion and deception being caused which was not taken note of by the learned Assistant Registrar.
10. Learned counsel for the appellant submitted that onus to prove user was on the first respondent / applicant. Here, in this instant opposition, the applicant though has claimed user since 01.03.1973 has filed evidence only from the year 1977 which is only a newspaper advertisement not supported by any sales invoice to prove sale. Learned counsel for the appellant further submitted that the suit NO.475/1977 referred to by the Assistant Registrar in the impugned order was of no relevance to the case on hand as the suit was not between the appellant and the first respondent whereas it was between the first respondent and a third party who is not connected with the present proceedings.
11. The adoption of the impugned mark by the first respondent was dishonest. The sales figures given by the first respondent is since the year 1985 which is also very meager, whereas the appellants sales figure is high. The appellant need not prove their reputation in view of their earlier registration. Learned counsel for the appellant further submitted that it is an admission by the first respondent that in the year 1977 M/s Chourasia Industries had filed a suit against the first respondent and the appellant, this itself goes to prove that the first respondent were aware of the appellants use of the impugned trade mark KAVI in the year 1977 itself. When that be so, the first respondent should have taken a search report while filing this impugned trade mark application in the year 1990. So, the adoption of the trade mark âKAVI by the first respondent is dishonest and cannot claim registration under section 12(3) of the Act.
12. Learned counsel for the appellant relied on the following judgments in support of his claim:-
a) 2007 (34) PTC 392 Delhi Ansul Industries Vs. Shiva Tobacco Company was relied on in support of his contention that honesty of adoption at the initial stage itself has to be established to take the benefit of concurrent registration under section 12(3) of the Act.
b) 2002 (24) PTC 226 Bombay (DB) Bal Pharma Ltd. Vs. Centaur Laboratories Pvt. Ltd. â balance of convenience is not in favour of a person who consciously or without taking necessary steps to assure himself of the existence of a mark uses it.
c) 1995 PTC 165 SC Power Control Appliances and Ors. Vs. Sumeet Machines Pvt. Ltd and Ors. â The well settled principle of law is that one mark, one source and one proprietor.
d) AIR 1978 Delhi 250 - Prior user gets a valid right than the registered proprietor.
e) 1986 (1) SCC 465 â American Home Products Corporation Vs. MAC Laboratories -reputation of trade mark need not be proved in case of registered proprietor.
13. Learned counsel for the first respondent submitted that they had relied two judgments in support of their contention under the provisions of section 12(3) of the Act before the Registrar and the application was proceeded to registration based on the case laws [ 1998 PTC (18) 300 Maekawa Bearing Manufacturing Co. Ltd. Vs. Onkar Bearing Industries and 2006 (32) PTC 852 (IPAB) P. Mittulaul Lalah and Sons Vs. Lal Products]. The case laws relied by the appellant are not relevant to the facts of the case on hand. The learned counsel for the first respondent further submitted that the trade mark registration will not prove user as has been held by the Supreme Court in Corn Products case reported in AIR 1960 SC 142.
14. The first respondent claimed user since 01.03.1973 but were not able to produce any documents as they were destroyed and had filed documents from 16.04.1977 to prove their user. Apart from that, the first respondent also brought to our notice various other documents, namely copyright registration certificate, gate pass, sales bills, etc. The first respondent also submitted that they had been using the mark for a long and continuous period of 13 years without any interruption and thus the Registrar had granted registration based on concurrent user and honest adoption.
15. The first respondent also pointed out that the appellants registered mark under No.326402 was applied for registration on 22.06.1977 which was subsequent to the first respondents news paper advertisement dated 16.04.1977 which goes to say that the respondents were prior to that of the appellant.
16. Learned counsel for the first respondent submitted that there was no infirmity in the order of the Registrar, under special circumstances, registration can be granted to more than one proprietor for the same mark. The first respondent also submitted that there was no provision that a person must obtain search report before filing an application. The adoption and use of the impugned trade mark by the first respondent was honest and bonafide and thus was entitled for registration under section 12(3) of the Act.
17. We have heard both the counsel and we have considered the written submissions of both the parties and have gone through the documents carefully.
18. The two issues that arises for consideration are:
(i) Is the first respondents trade mark entitled to be registered as per the provisions of section 12(3) of the Act under special circumstances?
(ii) Is the first respondent proprietor of the impugned trade mark âKAVI as per the provisions of section 18(1) of the Act?
19. We shall first deal with the first issue, namely whether the trade mark âKAVI is entitled for registration as per the provisions of section 12(3) of the Act. It is worthwhile to quote the provisions of section 12 of the Act.
â12. Prohibition of registration of identical or deceptively similar trade marks-(1) Save as provided in sub-section (3), no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of different proprietor in respect of the same goods or description of goods.
(2) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, the Registrar may defer the acceptance of the application or applications bearing later date until after the determination of the proceedings in respect of the earlier application, and may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any.
(3) In case of honest concurrent user or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.â
Sub-section (3) of section 12 is an exception to sub-section (1) of section 12. Sub-section (1) of section 12 provides that no trade mark shall be registered in respect of goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered. Hence the goods or description of goods must also be similar in respect of marks already registered. Sub-section (3) of section 12 empowers the Registrar to register the trade mark if there is honest concurrent use or of special circumstances in respect of the same goods or description of goods. Sub-section (3) of section 12 also provides that the Registrar may permit registration even if the trade marks are identical. Honest concurrent use or special circumstances is decided on the question of volume of use which depends on the facts of each case. In considering the length of use to arrive at as a concurrent user, the quantum of production and sale is not necessary, there may also be interruption in the use but what is required is a constant use in the commercial sense.
20. Here, in this instant case, we find that the first respondent has applied for registration in the year 1990 claiming user since 1973, whereas the evidence produced to substantiate use is of the date 16.4.1977 which is a newspaper advertisement. We also find that gate pass filed as exhibit is of the year 1989. The first respondent though in his written submission has stated that they being small dealers could not preserve documents earlier to 1977 which is a submission made for the first time whereas nothing has been averred either in the counter statement before the Registrar or in the counter before the High Court of Delhi.
21. We strongly disagree with the following findings of the Registrar in the impugned order:-
âIn view of the aforesaid evidences, as discussed above, the applicants commenced the use of the mark applied for on 16th April, 1977 while opponents commenced the use of the trade mark KAVI in respect of chewing tobacco on 10th March, 1977. Thus, the applicants commenced the use of the mark applied just about one month subsequent to the opponents. It cannot be believed that during the one month period from 10th March, 1977 to 16th April, 1977 the opponents goodwill of their goods under the trade mark KAVI became so high that it tempted the applicants to copy their trade mark. The peculiar circumstances of the matter in hand is that that word KAVI being a common word was adopted by the applicants independently without any knowledge of the same in respect of the use of the opponents. Thus, the very adoption of the mark applied for by the applicants and its subsequent use by the applicant does not appear to be tainted with dishonesty in view of the above discussed circumstances. As regards the concurrency of the use of both the trade marks the evidence on record indicate that the applicants had been using the mark applied for namely.- KAVI in respect of chewing tobacco since 16th March, 1977 i.e. for about more than 13 years as on the date of application which is 9th August, 1990. In view of the aforesaid discussion, their exists the element of honest concurrent use of the mark applied for in terms of provisions of section 12(3) of the Act. Hence the applicants are entitled for concurrent registration under section 12(3) of the Act.â
22. It is admitted by the first respondent as well as the Registrar that the appellant has been using the trade mark since 10.3.1977 prior to that of the first respondent. The well settled principle of trade mark law is that priority prevails even over a registered user. Based on the above principle, in our view, the appellants right as a prior adopter and user of the trade mark is more valid than that of the first respondent and the appellants rights are to be protected.
23. The first respondent in his own admission has stated that two suits were filed by a third party against the appellant and the first respondent by which the first respondent was aware of the appellants use as early as 1977 itself and to file an application in the year 1990 is with malafide intention. When the applicant was aware of the opponents use, continued to use the same, the same cannot be held to be honest concurrent user as held by the Division Bench of the Bombay High Court in National Chemicals and Colours Ltd. Vs. Reckitt and Coleman of India Ltd. (AIR 1991 Bombay 76).
24. We also would like to make an observation as to triple identity situation. In such cases the question of confusion and deception could be totally eliminated. In case of identical marks, same goods and same class of customers, registration cannot be allowed.
25. We are, therefore, of the opinion that the first respondents application does not qualify for registration under section 12(3) of the Act.
26. The next issue under section 18(1) of the Act is that whether the first respondent is the proprietor of the trade mark? Here we find that the first respondent has filed the application in the year 1990 claiming user since 1973, whereas whatever documents filed in support of their case is only from the year 1977. There is no explanation given as to why no documents have been filed for the period from 1973 to 1977. The only document filed is of the year 1977 â a newspaper advertisement with no reference as to any sale. Though the user is for a period of 13 years, no sufficient evidence has been produced to substantiate the case.
27. On the above findings, we are of the considered view that the respondent has not proved his case of prior user or concurrent use and are, therefore, not entitled for registration.
28. Consequently the appeal is allowed and the order of the Assistant Registrar of Trade Marks dated 31.07.2001 dismissing the opposition No.DEL-T-633/52100 and allowing the application No.534889 in class 34 to proceed for registration is set aside. There shall be no order as to costs.