NitIn P.JaIn and Others Vs. Titan Industries Limited - Court Judgment

HON'BLE Ms.S.USHA TECHNICAL MEMBER:

The above application is for rectification of the trade mark registered under No.573598 in class 14 in the name of Titan Industries Limited under the provisions of Trade Marks Act, 1999 (hereinafter referred to as the Act).

2. The applicant, a partnership firm were engaged in the business of manufacturing and marketing wrist watches in the eastern States of India since the year 1991. The applicant adopted the word ‘SONA and started using the same in the year 2002 for their watches and for the watches having gold plating / plating of gold. The word ‘SONA means gold in Hindi language. The word ‘SONA is a highly descriptive and laudatory one. There is a great demand for gold plated watches among the public. ‘SONA is common to trade and it has direct reference to the character and quality of goods. There are several manufacturers of watches using the descriptive and common word ‘SONA. No single manufacturer can claim monopoly over the word ‘SONA and it is a generic name for gold plated watches.

3. The respondent herein had filed a civil suit before the High Court of Delhi in CS (CO) 1577/2003 wherein the respondent had pleaded that the defendants / applicants trade mark ‘SONA is deceptively similar to that of the plaintiffs/ respondents trade mark ‘SONATA. The applicant herein and defendant in the civil suit had filed their written statement stating that there is no similarity between the words SONA and SONATA and as such there is no possibility of confusion being caused. The respondent herein filed an application before the Delhi High Court for amendment to carry out the fact that their trade mark SONATA had been registered. Aggrieved by the fact of registration, the applicant has moved for rectification of the registered trade mark ‘SONATA.

4. The applicant had filed the rectification on the following grounds that :-

(a) the registered trade mark was not distinctive on the date of registration;

(b) the registration was contrary to the provisions of section 18 of the Act as the respondents were never the proprietors of the trade mark;

(c) the registration of the trade mark was contrary to the provisions of sections 9,11,18,47 and 57 and other provisions of the Act;

(d) the registration offends against sections 9 and 11 of the Act on the date of registration and on the date of commencement of these proceedings as the proprietor has given a false and incorrect date of user;

(e) the respondent has obtained the registration by fraud as they were aware of the word ‘SONA being used by various other firms;

(f) the registered trade mark was wrongly remaining on the register without any sufficient cause;

(g) the impugned trade mark registration was liable to be set aside on the ground that the trade mark ‘SONATA had a direct reference to the character and quality of the goods;

(h) the impugned trade mark was not distinctive nor capable of distinguishing the goods of the respondent as the mark was only proposed to be used on the date of application for registration;

(i) the marks ‘SONATA and ‘SONA are similar;

(k) the respondent has not used the trade mark in relation to the goods for which it is registered for a continuous period of five years prior to the date of filing the application for rectification and that the provisions of section 47 of the Act are attracted;

(l) the impugned trade mark has never been used for the goods as specified in the classification of goods; and

(m) the mark is liable to be rectified on the grounds stated in section 47(1) (a) and (b) of the Act.

5. The respondent filed their counter statement denying all the allegations made in the application for rectification along with reply to the statement of the case. The respondent company was incorporated in the year 1984 and commenced its business in the year 1986-87. The respondents have been manufacturing and marketing watches, clocks, eye gear products and jewellery. The respondents have adopted various trade marks like Titan, Sonata, etc. The respondents goods are sold in about 40 countries of the world and thus enjoy a good reputation among the public.

6. The respondents represent a unique blend of high end Japanese technology, legendary European design and renewed Indian craftsmanship. The Respondent had adopted the trade mark in the year 1998. Ever since the launch, the goods bearing the trade mark ‘SONATA are being sold through exclusive ‘SONATA outlets, apart from regular outlets.

7. The respondents have spent enormous efforts and money to develop the various unique ranges and to maintain the good reputation earned all these years among the trade and public. The trade mark ‘SONATA a well known mark has acquired substantial goodwill and reputation by the high standards of quality and marketing strategies. On perusal of the sales turnover and expenditure incurred for advertising the said goods, the goodwill and reputation earned by the respondents can be seen.

SALES

ADVERTISEMENT

Year

Volume

(in lacs)

Value

(in crores)

Year

Amount

(in lacs)

April-Nov 2006

23.77

110.80

April-Nov2006

1396.54

05-06

44.81

199.00

04-05

1522.65

04-05

40.81

185.96

04-05

1037.86

03-04

35.08

168.26

03-04

963.58

02-03

15.93

109.34

02-03

314.84

01-02

26.96

175.40

01-02

366.02

00-01

26.74

171.09

00-01

348.66

99-00

19.89

135.97

99-00

314.84

98-99

20.68

153.26

97-98

8.53

74.82

8. The trade mark ‘SONATA is arbitrary in nature and has no relation to the goods. The said mark has been uniquely adopted and by virtue of extensive and continuous use over several years the mark has acquired a secondary significance and is solely associated with their goods alone.

9. The trade mark ‘SONATA is a famous well known mark by virtue of the degree of recognition which it enjoys as the trade mark of the registered proprietor, the extent and duration of the use of the mark, the extent to which the mark is recognised, used and advertised, registered, the degree of exclusivity of the mark, the degree of which the reputation of the mark symbolizes quality, reliability and trust and the extent of commercial value attributed to the mark and thus qualifies for protection.

10. The respondent denied that the suit filed against the applicant was out of jealousy or business rivalry and submitted that the mark ‘SONA and ‘SONATA are deceptively similar. The applicant has failed to substantiate that the mark ‘SONA is generic. The trade mark ‘SONATA has acquired secondary significance by virtue of prior extensive user. The applicant has failed to prove that the word ‘SONA is very common to trade. The grant of registration to the respondent cannot be a ground for the applicant to file the present rectification application. The applicant has failed to establish that the applicant is a person aggrieved and on this ground alone the application for rectification has got to be dismissed.

11. The respondent denied the statement that their mark was not distinctive on the date of registration. The applicant has failed to establish that the mark is disqualified for registration as it contravenes the provisions of sections 9,11,18, 47 and 57 of the Act. The respondent is the proprietor of the trade mark within the provisions of section 18 of the Act. The respondent denied the allegation that the registration was obtained by fraud and the applicant had also not substantiated the same with sufficient evidence. The trade mark ‘SONATA has no direct reference to the character or quality of the goods i.e. watches. The documents filed by the applicant is not sufficient to establish that the mark ‘SONA is common to trade.

12. The respondent is the sole and exclusive user of the trade mark ‘SONATA. The applicant is not a person aggrieved as per the provisions of section 57 of the Act and the application for rectification ought to be dismissed.

13. The matter was heard at Chennai on 26.3.2008. Learned counsel Shri Shailen Bhatia and Shri Jacob Kurien appeared on behalf of the applicant and learned counsel Shri M.S.Bharath and Shri Prem appeared on behalf of the respondent.

14. Learned counsel for the applicant mainly contended that though the trade mark was registered for goods like horological and chronological instruments, watches, time pieces, wall clocks and parts thereof and fittings included in class 14, watch strap, chain, bracelets, cases for watches, the mark has been used only for watches and clocks by respondent, which is also evidenced from the documents like copies of invoices filed by the respondent.

15. The applicant further contended that the word ‘SONA is common to trade and that ‘SONA is similar to ‘SONATA. He also submitted that no manufacturer can claim a monopoly in the word ‘SONA. The further argument was that the impugned mark was filed on the basis of proposed to be used and as such had not acquired distinctiveness and registration was made in contravention of section 9 of the Act. He submitted that the word ‘SONATA means ‘ a musical composition in three or four movements and that it cannot be registered for watches. The counsel also submitted that the trade mark ‘SONATA means musical composition according to various English dictionaries. He also contended that the word ‘SONA means beautiful in Punjabi.

16. The counsel for applicant drew our attention to the contention made in the counter statement and pointed out that the respondents have admitted that the marks ‘SONA and ‘SONATA are deceptively similar. He also drew our attention to the copy of the plaint filed before the High Court of Delhi to show the admission of the respondents as to the similarity of both the marks. The counsel for applicant contended that he had denied the same and had submitted in the written statement filed before the High Court that the word ‘SONA is genuine name for gold plated watches. He also submitted that the word ‘SONA is a laudatory word. The counsel submitted that one another company are prior in use of the mark HMT SONA which has been mentioned in the application for rectification and the same has not been answered by the respondent in their counter statement. The two marks ‘SONA and ‘SONATA altogether have a different meaning and connotation.

17. The counsel drew our attention to the monthly tradepost of the year 2007 filed as annexure G and the cash memo in annexure C and submitted that HMT SONA was in the market even prior to that of the respondents. The applicant drew our attention to the affidavit filed seeking permission for filing additional documents and reiterated the statement that ‘SONATA means a musical composition in three or four movements and that the word ‘ SONA and ‘SONATA are similar as admitted by the respondent in the civil suit.

18. Learned counsel for the applicant further submitted that the respondent had not denied the statement that the mark ‘SONA is common to trade and that HMT company had also adopted the mark HMT SONA. The applicant submitted that the Registrar should have used his discretionary powers under section 18(4) of the Act while granting registration by imposing certain conditions. He further submitted that the applicants were aggrieved persons as per the provisions of section 57 of the Act.

19. Learned counsel for the applicant cited various judgments in favour of his claim for removal of the mark from the Register of Trade marks. The counsel concluded his arguments by submitting that the trade mark ‘SONATA registered under application No.573598 be either totally expunged from the Register of Trade Marks or some conditions be imposed.

20. Learned counsel for the respondent vehemently opposed the arguments of the applicant. The respondent submitted that the applicant was trying to confuse the Board by saying that the dictionary meaning of the word ‘SONATA is a musical instrument and that it cannot be registered. He further submitted that musical instruments fall under class 15 of the Fourth Schedule and that to say that the mark ‘SONATA cannot be registered in class 14 is not correct. The impugned trade mark ‘SONATA has been registered as early as 15.07.03 and has subsequently been renewed upto date. The mark was applied for registration as a proposed to be used but later on had acquired distinctiveness by use. Ever since its launch, the watches bearing the trade mark ‘SONATA has acquired good reputation all over the world. He also drew our attention to the sales turnover figures and the volume of sales given in the counter statement.

21. The respondent further contended that the applicants have not filed any reply statement to the counter statement as per rule 11 of the IPAB (Procedure) Rules, 2003 which only shows that the applicants have admitted the averments made in the counter statement filed by of the respondent. He also drew our attention to the typed set of documents to show that the advertisements and the invoice copies to prove their sales turnover in the invoices and in the copy of the plaint in C.S. No.1577/2003 filed before the Honble High Court of Delhi.

22. The respondent further contended that the applicants have been using the mark as a word only and not as a trade mark as has been mentioned in para 3 of the application for rectification. The word ‘SONA was used only since 2002. In reply to the applicants arguments that ‘SONA was common to trade and HMT had also used the trade mark ‘SONA, the respondent denied the same and also pointed out that he had denied the same in his counter statement- para 23.

23. With regard to refusal of registration under section 9 and 11 of the Act, the respondent submitted that section 9 of the Act was arbitrary. The respondents trade mark had acquired distinctiveness by use. The respondent had applied for registration in the year 1992 whereas the applicant had started using the word ‘SONA only in the year 2002 so the mark qualifies for registration and is not in contravention of the provisions of section 11 of the Act. The respondent submitted that as a prior user, their mark is to be protected against a subsequent user.

24. By virtue of long and extensive use of the trade mark ‘SONATA the respondents are the lawful proprietors of the trade mark and the applicants are using the word ‘SONA since 2002 subsequent to that of the respondents and they cannot be the proprietors of the trade mark as per the provisions of section 18 of the Act.

25. The counsel for respondent submitted that the application for rectification has been filed on the grounds of non user under section 47 of the Act, which is a false statement. The respondent submitted that they had taken steps for infringement against the applicant in 2003 and the applicant had filed their written statement where no such averment has been made as to non user and apart from that the respondents had also filed documents like invoices, advertisements etc., since 1998 to 2006 till the date of filing of this application which proves that the mark was in use.

26. The counsel for respondent further submitted that the applicants were not persons aggrieved as per the provisions of section 57 of the Act. By the impugned mark ‘SONATA remaining on the register, the applicants rights are not affected in any way. He also referred to the judgments cited by the applicants and submitted that they were not applicable to the case on hand. The respondent concluded and prayed that the application be dismissed with costs.

27. The counsel for applicant in rejoinder contended that various goods such as horological and chronological instruments, watches, time pieces, wall clocks and parts thereof and fittings thereof included in class 14, watch straps, chains, bracelets, cases for watches were mentioned in the Trade Marks Journal for which trade mark registration was sought but the respondent was using the mark only for watches. In reply to the respondents arguments, the applicant submitted that rule 11 of IPAB (Procedure) Rules, 2003 was not mandatory.

28. We have heard both the counsel and have gone through the documents filed.

29. The first issue that arises for consideration in an application for rectification is whether the applicant is a person aggrieved. The well settled principle of law in this connection is that any person may oppose an application for registration whereas an application for rectification can be filed only by a person aggrieved.

30. The term “aggrieved person” has been liberally construed in several cases. In Powells Trade Mark case it has been held that:

“ I should be very unwilling unduly to limit the construction to be placed upon these words, because although they were no doubt inserted to prevent officious interference by those who had no interest at all in the Register being correct and to exclude a mere common informer, it is undoubtedly of common interest that they should not be unduly limited in as much as it is a public mischief that there should remain upon the Register a mark which ought not to be there and by which many persons may be affected, who nevertheless would not be willing to enter upon the risk and expense of litigation. Wherever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade mark and wherever the trade mark, if remaining on the register, would or might, limit the legal rights of the applicant so that by reason of the existence of the entry on the Register he could not lawfully do that which, but for the existence of the mark upon the Register he could lawfully do, it appears to me he has a locus standi to be heard as a persona aggrieved.”

In Powells trade mark, it was also held that “persons who are aggrieved are persons who are in some way or the other substantially interested in having the mark removed from the Register or person who would be substantially damaged if the mark remained. It is very difficult to frame a narrower definition than that (Bowen L.J.).”

In Rineres and Co Trade Mark, it was held that it must be a legal grievance, it must not be a stet pro ratione voluntas the applicant must not come merely saying “ I do not like this thing to be done”, it must be shown that it leads to his injury or to his damage in the legal sense of the word.”

31. From the above observation, it is clear that the primary duty of the court is towards the public and the maintenance of the purity of the Register. Here we find that the applicant has filed this application for rectification on the ground that the respondent has filed an infringement suit and the trade mark is wrongly remaining on the Register. We are also of the view that the applicant has adopted the mark ‘SONA only in the year 2002, whereas the respondent has been using the mark since 1992. when that be the case, the applicant would have known of the respondents mark while adopting the mark ‘SONA. We are, therefore, of the opinion that the applicant is not a person aggrieved.

32. The next issue as to whether the impugned trade mark could be allowed to remain on the Register in contravention of the provisions of sections 9 and 11 of the Act. Section 9 of the Act deals with the relative grounds for refusal of registration. A trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well known mark. In short, the registration is refused if the mark is devoid of distinctiveness, is purely descriptive or is common to trade and is likely to cause confusion or deception or is likely to hurt the religious feelings of a person or contains scandalous matter or if it consists of any shape etc.

33. A trade mark may be registered in the Register in respect of goods or services on which it is used or is to be used, if it is capable of distinguishing those goods or services either inherently or factually from other competing goods in the market. The characteristics which make a mark distinctive if they are inherent in the mark, such a mark possess inherent distinctive character. If a trade mark was not capable of distinguishing the goods at the time of commencement of the use of the mark as a trade mark, it may acquire the distinctive character. When in spite of the absence of a sufficient distinguishing characteristics in the mark itself, distinctiveness can be acquired by appropriate user, thereby overcoming a negative quality in the mark, it has acquired distinctive character. The mark is said to have acquired factual capacity to distinguish as a result of actual user of the goods and other circumstances like advertisements and publicity in the market.

34. The purpose of section 11 is not only to protect the interests of the proprietor of the trade mark already on the Register, but to safeguard the interests of the public who in fact would ultimately be the victim of deception or confusion if two deceptively similar marks are entered on the Register. The duty of the Registrar or the Court must, therefore, always be to protect the public irrespective of what hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive or cause confusion.

35. Registration of a trade mark is prima facie evidence of the validity thereof. Therefore, the onus of proof is on the applicant for rectification to show that the mark is wrongly registered or is wrongly remaining on the Register. In Formica (1971) 75 CWN 641 at 663 Mr. Bh. Mukherji J held:

“Mark on the Register you want to take off the Register?. This onus is then upon you to prove that the mark deserves to be taken of so. This is plain common sense too. I am on the Register. Sure enough, it is not for me to prove that I should be where I am and that the entry in my favour is valid. Where I to prove so, why register? Registration becomes valueless then.”

36. Based on these observations as per sections 9 and 11 of the Act, we are of the opinion that the registration is not in contravention of provisions of those sections. As far as section 9 is concerned, the mark should be distinctive or capable of being distinguished either by actual use or advertisements or to prove it to be a well known mark. Here in this instant case, the respondent has proved by way of documents to show that their mark is well known through advertisements, etc. The applicant has failed to prove that the mark on the Register had caused confusion or if the mark is allowed to continue on the Register, it would cause confusion among the public. No evidence has been produced and so the objection under sections 9 and 11 of the Act is rejected.

37. Next issue is whether the respondent is the proprietor of the trade mark as per section 18 of the Act. Registration of a mark can be made either for a mark which has been used or is being used or is proposed to be used. Once an application is made by person who has proposed to use that mark, all persons who apply for registration or use the mark subsequent to the earlier one cannot stand in the way of that registration. Here in the instant case, the applicants user of the mark ‘SONA was from the year 2002 whereas the respondents use was though a proposed one on the date when, they had applied for registration in the year 1992 and has started using the same without any interruption continuously therefore the respondent is the proprietor of the trade mark.

38. The last ground for rectification of the mark ‘SONATA is non user of the mark by the respondent as per section 47 of the Act. Here again the burden of proving the fact of non user is on the person i.e. the applicant who seeks to have the trade mark removed from the Register. Where there has been a non user of the trade mark for a continuous period of five years and the application for rectification has been filed three months after the expiry of such period, the person seeking to have the trade mark removed from the Register has only to prove such continuous non user. He has not proved the lack of bonafide intention on the part of the registered proprietor to use the mark on the date of application for registration. The case on hand is one where it is for the applicant to prove that the respondent had no bonafide intention to use the trade mark.

39. Here in the instant case, the registration of the mark ‘SONATA was granted on 15.07.2003. The application for rectification is filed on 13.02.2006. The period of five years itself has not lapsed to establish non user upto 5 years on the date of making the instant application for rectification. Besides it is also seen that the respondent has filed a civil suit in 2003 against the applicant. Therefore, the applicant has failed to discharge the onus cast on him to establish non user for the required period or that the respondent had no intention to use the mark and hence the objection under section 47 is also rejected.

40. Having rejected all the objections of the applicant, we hold that the application for rectification stands dismissed. However, there shall be no order as to costs.