(Circuit Bench at Mumbai)
Honble Ms.S.Usha, Technical Member:
This appeal has arisen out of the order dated 31.12.1986 dismissing the opposition No.BOM-3850 and allowing the application No.321169 in class 9 to proceed to registration by the Joint Registrar of Trade Marks.
2. The first respondent herein filed an application for registration of the trade mark âSONY in class 9 in respect of frames for spectacles and goggles under the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The application was filed on 16.12.1976 claiming user since 1965. The said application was accepted and advertised in the Trade Marks Journal No.709 dated 16.12.1979 at page No.753.
3. The appellant herein filed a notice of opposition to the application for registration on the grounds that :
(a) the appellants are registered proprietors of the trade mark âSONY in class 9 in respect of radio apparatus with transistors and parts thereof under No.196589;
(b) the trade mark âSONY is distinctive and exclusively identified with that of the appellants goods and âSONY formed part of the appellants trading style;
(c) the impugned trade mark was identical with that of the appellant and it was bound to cause confusion and deception among the public;
(d) the registration of the impugned mark would be in contravention of the provisions of sections 9,11(a), 11(e), 12(1), 12(3) and 18(1) of the Act;
4. The first respondent filed their counter statement denying the various allegations made in the counter statement. The first respondent had also stated that the trade mark âSONY was a very common surname and it had a common meaning in Indian language. The first respondent had further stated that the goods in respect of which they were claiming registration was different and had stated that the mark being common the appellant cannot claim monopoly over the same.
5. After completion of the formal procedures namely filing of evidence by both sides, the matter was heard by the Joint Registrar on 25.11.1986. The order was passed making the following observations by the Joint Registrar:-
(a) The trade mark had acquired distinctiveness on the basis of evidence and was qualified for registration as per the provisions of section 9(2) of the Act.
(b) The objection under section 12(1) was declined as the goods were different though were under the same class of the Fourth Schedule, but the marks were identical.
(c) When the goods are totally different even though the marks were identical, as there was no cogent evidence shown to prove confusion, the objection under section 11(a) was rejected.
(d) In the absence of any evidence as to the applicants mark is disentitled to protection in a court of law, the objection under section 11(e) of the Act was rejected.
(e) Unless the opponents proves by adducing evidence that the applicants have copied the opponents trade mark, the objection under section 18 does not sustain.
6. Aggrieved by the said order the opponent / appellant herein filed an appeal before the Honble High Court of Bombay in Miscellaneous Petition No.225 of 1987 and the same was transferred to this Board as per the provisions of section 100 of the Trade Marks Act, 1999 and renumbered as TA/50/03/TM/mum.
7. The appellant filed the appeal on various grounds. The main grievance of the appellant was that the Joint Registrar did not consider and look into the various citations relied on by the appellant and that if the Joint Registrar had gone into the citations he would have reached a different conclusion.
8. The first respondent had filed their affidavit replying to the appeal. After the formal procedures were completed, the matter was set down for hearing. As the notice sent to the first respondent was returned unserved, the appellants had taken out a miscellaneous petition No.62/07 for service by way of substituted service. The miscellaneous petition was allowed and paper publication was effected. Despite the service by way of substituted service, the first respondent neither appeared in person nor any representation was made on his behalf. The matter was heard ex-parte. The matter was heard at the Circuit Bench of the Board held at Mumbai on 31.3.2008. Learned counsel Ms. Bhavana appeared on behalf of the appellant and none appeared on behalf of the first respondent.
9. Learned counsel for the appellant Ms. Bhavana mainly contended that the rights of the appellants as registered proprietors will definitely be affected by the impugned registration as the marks were identical. The Registrar had gone wrong in holding that the marks though were identical there was no possibility of confusion as the goods were different. The first respondent had adopted an identical mark only to trade upon the goodwill of the appellants.
10. Learned counsel for the appellant further submitted that there was a specific ban under the provisions of section 12(1) of the Act as the appellants trade mark âSONY had acquired wide reputation and goodwill among the public. The trade mark âSONY was a well known mark. The public would definitely be misled to think the first respondents goods bearing the trade mark âSONY emanated from the appellants company only.
11. Learned counsel for the appellant also submitted that the trade mark âSONY was a well known mark and the appellants goods were sold throughout the world. The appellants had adopted the trade mark as early as 1960 and the trade mark was registered on 20.06.1960. Learned counsel also drew our attention to the affidavit of evidence filed in support of the opposition before the Trade Marks Registry in the opposition proceedings under appeal to show their sales turnover and the expenses incurred towards sales promotion and advertisements. The figures were in lakhs of Japanese Yen.
12. Learned counsel for the appellant therefore prayed that the appeal be allowed and the impugned order passed by the Joint Registrar be set aside.
13. We have carefully heard the arguments of learned counsel for appellant and have gone through the documents filed.
14. In this case there is no dispute that the appellants mark âSONY is registered as early as 1960 in respect of radio apparatus with transistors and parts thereof falling in class 9. The appellants had been using the mark when the first respondent had made an application for registration in the year 1967 for an identical mark in respect of frames for spectacles and goggles. Here we will have to consider and decide whether registration of the impugned mark would create confusion and deception among the public.
15. From the principles laid down by various judgments â Benz case in particular, it is clear that because the goods are different, two identical marks cannot be registered for the reason that the established goodwill and reputation earned by the appellant be allowed to be diluted by registration of an identical mark. It is also very clear that when the appellants mark as a well known mark had gained wide reputation and if the impugned mark is allowed to be registered, there will be confusion in the minds of the public leading to think that the goods of the respondent have connection with that of the appellant.
16. On these well settled principles of law even though the goods are different, two identical marks cannot be registered in the name of two different persons as the same would cause confusion. Here, in the instant case, there is no dispute that the appellant had a global reputation and good will of the mark âSONY associated with their goods. If that be so, then permitting the first respondents mark to be registered will definitely mislead the public to think that the first respondents goods emanate from that of the appellants. Therefore, we are of the view that the reason given by the Joint Registrar for accepting the application for registration cannot be accepted.
17. As regards the reason given by the Joint Registrar for accepting the application for registration under section 12(3) of the Act is also not sustainable. Section 12 of the Act reads as follows:-
12. 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 a later date until after determination of the proceedings in respect of the earlier application, and may dispose of such application or applications in the light of evidence tendered in relation to earlier application and the oppositions thereto, if any.
(3) In case of honest concurrent use 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.
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 the description of goods must also be similar in respect of the 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. We find that section 12 will not be applicable as the goods are different. We are, therefore, of the opinion that permitting the registration under section 12(3) also does not sustain.
18. A trade mark is registered considering the length of use which is a material factor to acquire distinctiveness in a trade mark. Here in the instant case the first respondent have filed the application for registration of the trade mark âSONY in the year 1976 claiming user since 1965. Though the use is for a period of 11 years no sufficient evidence have been produced as may be seen from the observations made by the Joint Registrar in the impugned order. Therefore, in our opinion the first respondents trade mark has not acquired any distinctiveness. Moreover we did not have the benefit of hearing the first respondent to satisfy us. When we have held that the registration of the impugned mark would lead to confusion, the mark does not qualify for registration.
19. Learned counsel for the appellant Ms.Bhavana had produced certain documents at the time of hearing which we are not taking on record as no proper application has been made for taking them on record.
20. With the above observation, we set aside the order of the Joint Registrar dated 31.12.1986 and allow the appeal. However, there shall be no order as to costs.