(Circuit Bench at Kolkata)
Hon'ble Ms. S. Usha, Technical Member:
This appeal has been filed against the order of the Deputy Registrar of Trade Marks passed on 29.06.05 allowing the opposition No. CAL-5917 and refusing the application No. 667703 in class 25.
2. The appellant herein filed an application for registration of a label mark consisting of the words âKashmir Beauty Kalighatâ under application No. 667703 in class 25 on 31.05.1995 claiming user since 15.06.1990. The said application was advertised before acceptance with a disclaimer of the words Kashmir, Beauty and Kalighat, respectively, in Trade Marks Journal No. 1247 dated 16.05.2001 at page 702.
3. The third respondent filed notice of opposition opposing the registration of the application on various grounds â that the opponents have been using various trade marks namely, Kashmir, Kothari Kashmir and Kashmir Beauty since the year 1975; that due to extensive use and wide publicity their goods bearing the impugned trade mark has acquired reputation and goodwill among the public; that by such reputation there was every possibility of confusion and deception being caused and as such prohibited registration under sections 11 and 12 of the Trade Marks Act, 1999 (hereinafter referred to as the Act); that the applicants adoption itself was dishonest and so cannot claim any proprietary right; that the impugned mark was prohibited registration under sections 9, 11, 12 and 18 of the Act.
4. The appellants filed their counter statement denying the various allegations made in the notice of opposition and stated that they had been using the impugned trade mark since 1985 continuously; that they are holding copyright registration; that the appellants and the respondent No. 3 were known to each other; that the respondent No. 3 had recently adopted the trade mark.
5. The learned Registrar heard and passed the impugned order on the grounds that the word Kashmir Beauty is not registrable as Kashmir is an important geographical place and Beauty is descriptive to the quality of the goods, the word âKashmirâ can never attain distinctiveness irrespective of the amount of use and hence rejected under section 9(1) (a) of the Act; the appellants have admitted that the respondent No. 3 is using the trade mark âKashmir Seconds and that both are known to each other and the Registrar had allowed the opposition and refused registration in exercise of his discretionary powers under section 18 (4) of the Act.
6. Aggrieved by the said order, the appellants filed the above appeal for setting aside the order dated 29.06.2005 of the Deputy Registrar and to allow the application to proceed for registration.
7. The appellants filed the above appeal on various grounds and the respondents had filed their counter statement denying the various allegations and averments made in the grounds of appeal. The main ground taken by the appellant was that the respondent No. 3 never used the trade mark âKashmir Beauty. The above fact has been also approved by the Honble High Court of Calcutta in the civil suit. In an opposition to the appellants copyright registration also the appellant were successful in obtaining the copy right registration certificate. The trade mark being a composite label mark was erroneously not considered by the Registrar while passing the order. The Registrar erroneously passed the order without considering the fact that the appellant was the prior user of the trade mark. The Registrar went wrong in passing an order relying on Shimla Trade Mark which was a totally different mark. The appellants prayed that the order be set aside and the appeal be allowed.
8. The respondent No. 3 filed the counter statement stating that the Registrar was right in passing the impugned order. The trade marks âKashmirâ, âKashmir Beautyâ are being used by the respondent No. 3 since 1975. Apart form this trade mark, the respondent No. 3 also adopted various other trade marks namely âChallengeâ, âKothariâ, âHimawoolyâ since 1975 and had been using the same without any interruption. The appellants have obtained orders in their favour in the civil suit by producing fabricated documents before the Honble High Court. The respondent No. 3 denied all the material allegations made in the memo of appeal and prayed that the appeal be dismissed.
9. The matter came up for final hearing on 19.06.2008 at the Circuit Bench at Kolkata. Shri Sayantan Basu learned counsel appeared for the appellants and learned counsel Shri Jishnu Saha appeared on behalf of the respondent No. 3.
10. The learned counsel for the appellant contended that they had been using the trade mark since 15.06.1990 and had applied for registration on 31.05.1995 and thus by uninterrupted use of five years the mark had acquired distinctiveness and was capable of being registered. The appellant also stated that in the suit filed by the respondent No. 3 no injunction was granted and the same was confirmed by the Honble Supreme Court. He drew our attention to the order passed by the Copyright Board dismissing the removal application filed by the respondent No. 3. He further submitted that even though they had claimed user since 1975 no proof of user since 1975 was filed. He further stated that the suit was filed in June, 2001 and subsequently the respondent No. 3 has applied for registration of the copyright in July, 2001 claiming user since 1975 which is not a bonafide act. He also submitted that the cartons produced do not bear the trade mark âKashmir or âKashmir Beauty and in some of the cartons it is only âKashmir Seconds which only refer to the quality of the goods and does not refer to the brand name. In this regard, he pointed out to the observations made by the High Court in the suit that the respondent No. 3 has not produced any material to prove user.
11. The learned counsel also submitted that in the affidavit of evidence filed in support of opposition, the sales figures were given for all the products whereas in the Auditors Certificate at page 295, sales figures were the same but for the products bearing the trade mark âKashmir also was given and that there was no clarification in this regard before the Registrar. He pointed out to the price list from page 102 -103 and submitted that no trade mark was found in the list.
12. The leaned counsel for the appellant relied on various judgements in support of his appeal. He referred to (i) 1999 PTC 104 (9) â A.T.Raja, Madras Vs Mangalore Ganesh Beedi Works, Mysore in support of his contention that registration of the mark of a city is not prohibited under section 11 of the Trade and Merchandise Marks Act, 1958; (ii) AIR 1959 CAL-654 (v 46 c 180) E. Griffiths Hughes Ltd., Vs Vick Chemical Co., - Registrar has no power to dissect the mark and then conclude that the some parts were distinctive and some were not; (iii) PTC 2004 (28) 653 (IPAB) Pondicherry Textile Corporation Limited Vs Assistant Registrar of Trade Marks â a geographical name indicating geographical origin is not prima facie capable of distinguishing, it may be considered for registration upon evidence of acquired distinctiveness.
13. The learned counsel for the appellant also referred to section 9(1)(b) of the Act and submitted that the goods were not exclusively manufactured in Kashmir and so did not describe the name of the place.
14. The learned counsel for the respondent No. 3 vehemently opposed the arguments of the appellants counsel. The counsel clarified that sales figures were only for the trade mark âKashmir given in affidavit of evidence. He further submitted that they had been carrying on business for a long time and that the mark was registered as early as 1971 itself and drew our attention to the trade mark registration certificate (Trade Mark Kothari Hosiery Kalighat).
15. The learned counsel also referred to section 9(2) and section 11 of the Act and submitted that if the impugned mark was allowed to be registered possibility of confusion would definitely arise among the public. He further submitted that âKalighat was the place where goods were manufactured. In reply to the argument that the price list did not bear the trade marks the counsel for respondent submitted that it only referred to the quality of goods.
16. The goods being the same and the trade channel same possibility of confusion and deception would arise. The counsel further submitted that the appellants had just copied the label of the respondent No. 3 (the two horn shaped semi-circle on either side) and there was no reason given for such an adoption. The counsel also submitted that the appellants were well aware of the mark of the respondent No. 3 mark as they were erstwhile employers of the respondent No. 3.
17. The respondent No. 3 therefore concluded that the impugned trade mark cannot be registered for the reason that no explanation was given for the adoption; that the applicant/appellant was aware of the opponents/respondents reputed trade mark and was trying to earn profit out of the same; that marks being similar there was every possibility of confusion being caused and that the appeal be dismissed.
18. The learned counsel for the appellant in rejoinder to the reply arguments made a few submissions. He submitted that the sales figures mentioned were not given in the civil suit whereas the same has been mentioned here after the order in the suit only to overcome the order in the civil suit as observations were made to that effect in the order in the suit. He also pointed out that though the respondent No. 3 claimed user since 1975 the sales figures were only from the year 1984 whereas nothing was stated as to the availability of the sales figures for the year 1976-1983. The appellant also submitted that he was not employed in the firm of respondent No. 3 and only his father and brothers were employed. It was false to say that the appellant was aware of the impugned trade mark even before adoption.
19. After carefully considering the arguments of both the counsel and after going through the documents we are making our observations in the paragraph below.
20. On perusal of the entire records we find that the respondent No. 3 has been using various trade marks like Kothari, Kothari Hosiery Kalighat, Challenge, etc. whereas no documents have been produced to prove the use of âKashmirâ or âKashmir Beautyâ. The only document filed to show that âKashmirâ as a trade mark is the copyright registration certificate. The application has been made in the year 2001. Apart from this document, there are few others which bear the word âKashmir Secondsâ which refers to the quality of the goods. We also observe that the Honble High Court of Calcutta has also given a finding to this effect stating that the respondent No. 3 has not produced any material to prove user whereas the appellants have sufficient material. On perusal of the cartons above, we are of the view that there is no possibility of confusion being caused as there is no deceptive similarity between the two marks. Here the mark is a composite mark consisting of geographical name, it may be registered upon proving distinctiveness, if not distinctive, may be considered for registration upon acquiring distinctiveness by use. Under section 9(1) (b) a mark which indicates geographical origin is an absolute ground for refusal of registration. But if a mark has acquired distinctiveness as a result of use it can be registered. Here âKashmirâ does not designate geographical origin of clothing goods and so not attracted under section 9(1)(b). Here again, it is not only the word Kashmir which is sought to be registered, but also the whole composite mark which is a label mark. We should consider whether from the name and description of the goods to which it is applied, it is clear that any ordinary person would understand, that the name could not be intended to designate the place where the goods were produced. When a label mark is registered as a whole, such registration cannot possibly give any exclusive right to use any particular word in that label but the mark as a whole is to be taken into account. The appellant has applied for registration in the year 1995 claiming user since 1990 and thus we are of the opinion that the mark has acquired distinctiveness by use for a period of five years. In our view, therefore, the trade mark âKashmir Beauty Kalighatâ could be registered.
21.We deem it appropriate impose condition here in this case, to the effect that appellant/applicant is directed to remove the horn shaped two semi-circles on either side of the trade mark âKashmir Beauty Kalighatâ and also to make the three words written in the same font and size and not like the one which is already applied for. We, therefore, direct the appellant to take out necessary application before the Registrar of Trade Marks for carrying out the necessary changes as stated above following the proper procedure.
22. Accordingly, the appeal is allowed in the above terms and the order of the Deputy Registrar of Trade Marks dated 29.06.05 is set aside. No order as to the costs.