(Circuit Sitting at New Delhi)
Honble Dr.Raghbir Singh, Vice-Chairman:
These appeals filed in the High Court of Delhi as CM(M) 536/94 and 369/99 have been transferred to this Board in terms of section 100 of the Trade Marks Act, 1999 and have been numbered as TA/99/2003 and TA/323/2004 respectively.
2. For the purpose of convenience, parties herein are being referred to as âMonikaâ and âSarvodayaâ being the first word of full nomenclature of the respective parties.
3. Sarvodaya filed application No. 487390 B on 15.3.1988 for registration of trade mark âVISHAL in respect of pressure cookers included in class 21. In due course the mark was advertised in the Trade Marks Journal No.1028 dated 1.4.1992 at page 38. Monika gave notice of opposition on 4.5.1992 opposing the registration of the mark on the basis of sections 9,11(a), 11(e) and 12(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). In due course the counter statement and the evidence by affidavit were filed and the Deputy Registrar held the hearing on 10.8.1994. From the order of the Deputy Registrar it appears that the objections under section 12(1) of the Act seems to have been dropped. Learned Deputy Registrar instead of making specific examination under the relevant sections, that is , sections 9, 11(a), 11(e) of the Act proceeded to examine the matter in a generalized form. There is no specific examination under section 9 of the Act as to the distinctiveness of the mark and as to how the mark was evolved. Nothing deterred him to make examination under section 18(1) of the Act as to the proprietorship of the mark in spite of the fact having been not asked by Monika. He relied upon the evidence produced by the Sarvodaya as to the user of the mark since 1984 -1985 to 1992-1993 on the basis of affidavit dated 9.2.1994 filed by Shri Jai Prakash Gupta. He reached the conclusion that the affidavit dated 4.1.94 by the Monika in the name of Mohinder Pal bears the sale figures from the year 1982-83 to 1992-93. The goods mentioned therein are masala danis only. Thus he reached the conclusion that Monika has never sold pressure cookers (non-electric) and thus their opposition cannot be sustained. In conclusion, he rejected the opposition filed and allowed the application for registration of the mark.
4. Monika filed appeal No. CM(M) 536/94 in the High Court of Delhi on 26.11.1994 against the decision of the Deputy Registrar. The main grounds in the appeal that have been taken are that the Deputy Registrar should have made examination under section 9 of the Act that âVISHAL being a personal name is registrable only on evidence of long and established use at the time of filing of the application. The Deputy Registrar has failed in that regard. However, while not examining the matter under section 9 of the Act and thus disallowing the opposition of Monika, the Deputy Registrar in sidelines has mentioned that the bills produced by Sarvodaya numbering 042 to 326 bear no printed particulars of Sarvodaya. Hence those bills cannot be considered as evidence towards registration of the impugned mark. In addition the trade mark âVISHAL has been added subsequently. The bills bearing numbers 37 and 38 consist of the trade mark âVIDEOCON pressure cookers. Hence these bills cannot be considered. Thus the decision of the Deputy Registrar is riddled with contradictions. Bills filed by Sarvodaya, particularly since 20. 5.1987, are bogus, fabricated and manipulated. The Deputy Registrar while making examination under section 11(a) of the Act has acknowledged that the Monika has filed adequate evidence by way of affidavit since 1982-83 to 30..6.1993 and the sale figures have been corroborated / proved on the basis of certified copies of bills kept on record. Having acknowledged that Sarvodayas bills were of the period later to the period to which the Monikas invoices evidence relate, the Deputy Registrar should have held that the Monika is the prior user of the trade mark âVISHAL. Monika filed certified copies of the invoices obtained from the Delhi High Court and Sarvodaya had just filed photo copies of invoices since 20.5.1987. This fact should have been taken into consideration while deciding the case. While examining the matter under sections 11(a) and 11(e) of the Act, the Deputy Registrar should have taken into consideration that masala danis and pressure cookers (non-electric) are goods of same description and thus there is every likelihood of confusion and deception within the meaning of sections 11(a) and 11(e) of the Act. Monika being prior adopter and user of the trade mark âVISHAL for utensils for kitchen, the Deputy Registrar should have gone into the meaning and scope of section 18 of the Act for the purpose of examination of impugned application of Sarvodaya. The Deputy Registrar should have proceeded in the matter on the assumption that the onus to prove that the mark âVISHAL was not likely to cause confusion or deception within the meaning of section 11(a) of the Act was on the Sarvodaya. The Deputy Registrar should have exercised his discretion under section 18(4) of the Act in favour of Monika. Counter affidavit to the appeal was filed on 13.1.1995 by Sarvodaya, controverting all the material submissions of Monika. A rejoinder was filed by Monika.
5. Monika filed application for registration of trade mark âVISHAL under No.513761 on 21.7.1989 in respect of kitchen utensils included in class 21. The user claimed was from 1.2.1982. The application was ordered to be advertised in the Trade Mark Journal No.1091 dated 16.11.1994 at page 1201. Sarvodaya gave notice of their intention to oppose the registration of the trade mark on the grounds of its violation of the provisions of the Act. After completion of the formalities, the matter was taken up for hearing by the Assistant Registrar of Trade Marks on 8.9.1998. Sarvodaya had raised a preliminary objection that Monika had not supplied them the copies of exhibits filed by the Monika in the Trade Marks Registry along with their affidavit dated 27.6.1997 as required under Rule 57. The Assistant Registrar held that the pleadings on record reveal that the opponent (Sarvodaya) made no efforts to obtain copies of the exhibits filed by the applicant (Monika). Thus Sarvodaya cannot plead for the benefit of their own wrong. Then he took up the examination of the matter under section 11(a) of the Act. Relying upon the evidence produced by Sarvodaya, he held that the first sale invoice No.016 submitted by Sarvodaya is dated 20.5.1987 and rest of the copies are subsequent thereto. In relation to the other invoices placed at pages 23-43, their genuineness was objected to by the learned counsel for Monika. The Assistant Registrar concluded that in the absence of original having not been produced, he cannot subscribe to the veracity of those documents. Then on the basis of the evidence filed by Monika, the learned Assistant Registrar reached the conclusion that the earliest sales invoice No.3 is dated 25.3.1982 and rest of the copies are subsequent to that. There are copies of advertisements in the Trade mark Journal in respect of advertisement of the mark of Sarvodayas trade mark FARISTHA under No.532508 in respect of pressure cookers, under No.48730-B in respect of trade mark âVISHAL for pressure cookers, under No.481359 in respect of trade mark FARISTHA for pressure cookers,under No.481360-B in respect of trade mark INDIA KING for pressure cookers, under No.510129 B in respect of trade mark VIDEOCON for pressure cookers and under No.510130 in respect of trade mark ANCHOR for pressure cookers. Thus he reached the conclusion that the trade mark âVISHAL is being used by Monika since 25.3.1982 in relation to his products. Furthermore, Sarvodaya had been using four other trade marks VISHAL, FARISTHA, INDIA KING and ANCHOR. He concluded that Monika is the prior adopter as well as user of the trade mark âVISHAL in respect of the product kitchenware since 25.3. 1982 and Sarvodaya commenced the honest user of the trade mark âVISHAL in respect of their products, namely, pressure cookers subsequent to the Monika, that is 25.5.1987. He reached the conclusion that if the exhibits at pages 23-42 submitted by the Sarvodaya are to be taken to be genuine, the user can be attributed to that as from 25.5.1987 otherwise it shall be from 7.5.1984. Furthermore, he mentioned that the Sarvodaya are using five trade marks that is, VISHAL, FARISTHA, INDIA KING, ANCHOR AND VIDEOCON for their product pressure cookers. In view of that, the sale figure shown by them in their affidavit dated 28.5.1987 appear to be in respect of total sale figure under all the five trade marks. There is nothing clear in the evidence of Sarvodaya as to what is the volume of sale of Sarvodaya under the trade mark âVISHAL. In view of the above inference, he deduced that there is no likelihood of confusion or deception if the trade mark is used by Monika since Monika is prior in user and has his reputation in the market. Then he proceeded to examination of the mark under section 18(1) of the Act. In the present case, the user of the mark by Monika is from 25.3.1982 which is much earlier to his date of his application, that is, 21.7.1989. Thus the Assistant Registrar reached the conclusion that the claim of Monika to the proprietorship of the mark under section 18(1) of the Act is correct. Lastly, he proceeded to examination of the mark under section 9 of the Act. Normally a personal name is not qualified for registration except upon the evidence of its user. In this case the mark propounded for registration is word âVISHAL which is obviously a personal name. But the evidence of user of about seven and half years was considered to be enough by the Assistant Registrar for acquiring distinctive trade mark, that is, adapted to distinguish the goods of Monika. He concluded that the mark meets the scrutiny of section 9 of the Act also. In conclusion, he allowed the registration of the application and disallowed the opposition DEL 9186.
6. Sarvodaya filed an appeal in CM(M) 369/99 on the file of the High Court of Delhi on 1.7.1999 The grounds taken in the appeal are that the Assistant Registrar failed to appreciate the evidence of user of trade mark âVISHAL for the sale of pressure cookers by Sarvodaya since 1984. Monika has not placed any documentary evidence proving the use of the mark âVISHAL to prove his user prior to 1992 in respect of pressure cookers. The Assistant Registrar has grossly erred in passing the impugned order because there is an earlier order on the same subject dated 31.8.1994 passed by the Deputy Registrar who happens to be the senior officer. The Assistant Registrar has failed to appreciate that the application for registration cannot be allowed for the reason that the Delhi High Court has already decided in a matter that Sarvodaya is the prior user of the mark âVISHAL in respect of their pressure cookers. The Assistant Registrar has erred while concluding that the trade mark âVISHAL in respect of pressure cookers is being used by Monika since 25.3.1982.
7. Monika filed reply on 6.9.1999 controverting all the material averments of Sarvodaya. Sarvodaya filed rejoinder on 6.12.1999.
8. Since the parties involved in both the matters happen to be the same and marks happen to be the same, it was decided with the consent of both the counsel, that both the appeals will be taken up together. Learned counsel Shri V.P.Ghiraiya appeared for Monika and learned counsel Shri M.K.Miglani appeared for Sarvodaya.
9. Learned counsel for Monika argued that in the impugned order relating to application No.487390 B, there are no findings of the learned Deputy Registrar in relation to sections 9, 11(a) and 11(e) of the Act. He has discussed the whole issue in a very generalized and cryptic manner. He drew our attention to bills and invoices filed by Monika in relation to various items of kitchen utensils which includes chapati boxes, fry pans, ghee pots and kadais. The earliest of the invoices dates back to the year 1982 relating to chapati boxes. He took objection to the sale figures filed by Sarvodaya in relation to pressure cookers. He mentioned that since Sarvodaya had been using various trade marks like FARISTHA, INDIA KING, VIDEOCON, ANCHOR etc., it is hard to find that whether those sales figures given by them relate to âVISHAL. He argued that pressure cookers (non electric) are also a kitchen utensil. The products are sold on the same shops and the purchasing public happen to be the same. Thus those are goods of same description and underlying principles in relation to sections 9, 11(a) and 12(1) of the Act apply with full force. He cited a number of cases in support of his claim where similar goods have been held to be goods of similar description in cases like L.D.Malhotra V Ropi Industries 1982 PTC 233 Del, Sundar Parmanand Lalwani V. Caltex (India) Ltd. AIR 1969 BOM 24 and I.K. Sons V. Prakash Brassware Industries 2004 PTC 493 IPAB. He submitted that in relation to the mark of Monika under application No.513761 he has sufficiently adduced evidence whereby it stands proved that Monika had been using the mark âVISHAL in relation to kitchenware items since 1982. Whereas the bills submitted by Sarvodaya take them back to 7.5.1984 only which too is very doubtful in view of the fact that the original of the photocopies of the bills could not be produced by Sarvodaya before the Assistant Registrar. Thus the Assistant Registrar has placed their user as from 25.5.1987 only. In view of that Monika is the prior user of the mark âVISHAL and the goods happen to be the same. In conclusion, he submitted that his appeal in application No.487390 should be accepted and the appeal of Sarvodaya in application No.513761 should be rejected.
10. Learned counsel for Sarvodaya submitted that pressure cookers (non electric) being manufactured by Sarvodaya and the kitchen utensils being manufactured by Monika are distinct items having no inter connectivity. He submitted that the sales figures given by Monika for the initial years are of insignificant character and thus no reliance should be put upon that. In conclusion, he put reliance upon the case of Nestle Products Ltd. Vs. Milkmade Corporation AIR 1974 Delhi 40, Bridgestone Company (P)Ltd. V. Bridgestone Tyre Co. Ltd. 1966 DLT 143 and London Rubber Co. Ltd. V. Durex Products AIR 1963 SC 1882and submitted that in any case the benefit of honest concurrent user should be given to Sarvodaya.
11. We have gone through the pleadings of both the parties and heard the arguments at bar. At the outset, we shall like to deal with the evaluative strength of the orders passed by the Assistant Registrar and the Deputy Registrar. It has been submitted that the decision of the Assistant Registrar in relation to application No.513761 is later in time than to the decision of the Deputy Registrar in relation to application No.487390. The Assistant Registrar being lower in hierarchy to the Deputy Registrar should have followed the decision given by the Deputy Registrar. The Deputy Registrar has held Sarvodaya to be the rightful proprietor of âVISHAL, whereas the Assistant Registrar has held Monika to be the rightful proprietor of the impugned mark âVISHAL. The Assistant Registrar, Deputy Registrar, Joint Registrar and Registrar in matter of various provisions of the Act function by virtue of the powers conferred upon them under section 4(2) of the Act. They exercise quasi judicial powers and while doing so they work as an independent tribunal and are subject to the appellate jurisdiction of the appropriate bodies provided under the Act. Under the Trade and Merchandise Marks Act, 1958, it was the High Courts having the appellate jurisdiction and under the Trade Marks Act, 1999 it is the Intellectual Property Appellate Board which is having the appellate jurisdiction. No senior officer on the administrative side can give them instructions while exercising this power. The orders passed by them are of equal force irrespective of their level of office in executive parlance. All of them are tribunals by virtue of section (2) (1) (x) of the Act. Thus the order passed by the Deputy Registrar on 31.8.1994 and the order passed by the Assistant Registrar on 24.3.1999 stand at equal pedestal.
12. The application of Sarvodaya for registration relates to pressure cookers (non electric) and the application of Monika for registration relates to kitchen utensils. The pressure cookers, more so the non electric pressure cookers as those are in the present case are an item in the nature of kitchen utensils. It is a specie belonging to the broader gene, that is, kitchen utensil. Even if it is argued for a moment that Monika had not been manufacturing pressure cookers, still the description of goods of Monika vis-a-vis Sarvodaya, does not stand apart. Those belong to the same description and are put to use in the same household. These are items sold from the same shops in the markets. The purchasers also happen to be the same. These are vendible goods of same character and description. It will surely lead to deception and confusion for the purpose of section 11(a) of the Act. Thus the application of Sarvodaya, whereunder user is later in time, fails on that score and Monika is entitled for registration under section 11(a) of the Act. The Assistant Registrar has rightly concluded that âVISHAL being a descriptive term, one can only by long use for the same assume distinctiveness and Monika started using the mark in 1982 and the application has been made on 21.7.1989 a period of more than 7 years has elapsed which is enough to endow it with the character of having acquired distinctiveness. Thus the attribute of having gained distinctiveness in relation to mark also goes in favour of Monika. For similar reasons we hold that Monika is the proprietor of the mark for the purpose of section 18(1) of the Act. Since they had been using the mark for more than 7 years, before making an application for registration thereof.
13. In view of the above the appeal of Monika in TA/99/2003 succeeds and is allowed and the appeal of Sarvodaya in TA/323/2004 fails and the same is dismissed. The Registrar shall proceed with the registration of mark âVISHAL in favour of Monika Manufacturing Company, the appellant in TA/99 and the respondent in TA/323/04. No order as to costs.