(Circuit Bench Sitting at Delhi)
S. Jagadeesan, Chairman
1. The appellant has filed this appeal against the Order of the Deputy Registrar of Trade Marks, dated 1.9.1997.
2. The first respondent herein, M/s. Capital Automobiles filed application No. 460711 on 25.9.1986 for registering the trade mark 'MICRO' in respect of high pressure pipes for single cylinder and multi cylinder Diesel Engines being parts for Tractors included in class 12 of the Fourth Schedule of Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The said mark was advertised in the Trade Marks Journal No. 1069 dated 16.12.1993 at page 1045. The appellant herein, M/s. Motor Industries Company Limited, lodged their notice of opposition on 24.1.1994 opposing the registration of the impugned mark on the ground that they are the manufacturers of ignition systems and devices, parts and fittings for motor vehicles, spark plugs, machine tools, scientific apparatus and instruments, gaskets and allied goods with their trade mark 'MICO' in a number of classes and they are the inventors, adopters and sole proprietors of the word 'MICO'. It was invented by them as early as 1950 and their mark has attained reputation and goodwill and as such, the registration of the impugned mark is contrary to the provisions of Sections 9(1), 11(a) 11(e), 12(1) and 18(1) of the said Act. The first respondent filed the counter-statement refuting the averments made by the appellant in their opposition and further added that they are engaged in the business of manufacturing and marketing high pressure pipes suitable for single cylinder and multi cylinder Diesel Engines for Tractors since the year 1986 under the trade mark 'MICRO' and the said mark is a well known dictionary word capable of inherently distinguishing their goods from those of the others. Further, the said mark is not phonetically, visually or structurally similar to that of the appellant's mark. Therefore, the registration of the mark is not contrary to any of the provisions mentioned by the appellant. Both the parties filed their evidence and the matter was heard by the Deputy Registrar. Under the impugned order, the Deputy Registrar disallowed the opposition No. DEL-8390 of the appellant and accepted the application of the first respondent for registration finding that the appellant has failed to adduce substantial evidence to prove the user and also failed to establish that they attained a reputation and goodwill. The bills produced by the appellant are only xerox copies certified by the Notary and without the signature of the issuing authority. Hence, the same cannot be relied upon for the use of the trade mark 'MICO'. Apart from that, the mark of the first respondent 'MICRO' does not appear to be deceptively similar to the appellant's trade mark 'MICO'. Consequently, the objection of the appellant under Section 11(a) was over-ruled and the objection under Section 11(e) was also over-ruled on the same ground. The objection under Section 12(1) was also over-ruled on the ground that the marks are different. The objection under Section 9 was over-ruled on the ground that the impugned mark qualifies the requisites for registration under Section 9 of the Act. The objection under Section 18(1) was over-ruled on the ground that the first respondent is the proprietor of the impugned mark.
3. Aggrieved by the said order, the appellant filed the appeal CM (M) No. 565/1997 on the file of the High Court of Delhi at New Delhi and the same was transferred to this Board by virtue of Section 100 of the Trade Marks Act, 1999 and numbered as TA/137/2003/TM/DEL.
4. During our sitting at Delhi on 1.11.2004, the matter was heard by us. Shri N. Mahabir and Ms. Sheetal Vohra, the learned counsel appeared for the appellant and none appeared for the first respondent.
5. The learned counsel for the appellant contended that the appellant's mark 'MICO' attained goodwill and reputation as the same is in use from 1966. The appellant in their evidence had submitted the sales statistics from 1966 to 1994 from which it is clear that the sales had increased from Rs. 98.73 millions in 1966 to Rs. 6,592 millions in 1994 and this itself clearly proves their reputation and goodwill. The Deputy Registrar had rejected the Invoices of the appellant on the ground that the same are only xerox copies and they were not signed by the issuing authority. Though some of the Invoices were not signed by the issuing authority, many of the Invoices were signed by the Assistant Manager (Sales) and atleast those Invoices could have been taken into consideration. It is not proper on the part of the Deputy Registrar to reject all the Invoices produced by the appellant in a generic manner. Further, the xerox copies produced by way of evidence are all attested by the Notary Public as true copies. If the Deputy Registrar had any doubt either in the Invoices or in the attestation, he could have insisted for the production of the originals. Without doing so, it is not proper on the part of the Deputy Registrar to reject the Invoices. The goods are also of the same description and further the first respondent had admittedly used the impugned mark only from the year 1986 which is much later and hence the appellant is the earlier user of their mark 'MICO'. The marks are also identical not only visually but also phonetically. There is every possibility of confusion and deception especially if the pronunciation of the first respondent's mark is not perfect. Hence, the impugned order of the second respondent is liable to be set aside.
6. The issues for consideration are:
(i) whether the appellant establish their prior user of their mark?
(ii) whether the appellant and the first respondent's marks are identical and similar and thereby the registration of the first respondent's mark would create confusion? and
(iii) to what relief the parties are entitled to?
7. So far as the first issue is concerned, it is the case of the appellant that they are the registered proprietors of the trade mark 'MICO' which was adopted by them from the year 1953. The said mark had attained a nationwide reputation and goodwill since 1966. The said mark was registered under class 12 of the Fourth Schedule to the said Act and there are about 25 registrations of the same mark by the appellant for their different goods.
8. So far as the use of the mark is concerned, the appellant has furnished their sales statistics in their evidence filed in support of the opposition from the years 1966 to 1994. The advertisement expenses had also been furnished. The sales turnover of the appellant in the year 1966 was Rs. 98.74 millions. Every year, there is an increase in the sales and in the year 1994, the turnover was Rs. 6,592 millions. The advertisement expenses of the appellant in the year 1966 were Rs. 1.35 millions which rose to Rs. 23.75 millions in the year 1994. The appellant has also produced the Invoices from the year 1969 to 1990. These Invoices were rejected by the Deputy Registrar on the ground that they do not bear the signature of the issuing authority and the same are only the Xerox copies. In fact, the Deputy Registrar seems to have accepted the plea of the first respondent that the Invoices are fabricated ones. We have perused the documents. The Invoices at pages 99,101 and 103 of the type set filed alongwith the appeal are the Invoices of the year 1977, pages 50, 51, 52, 54 and 97 are the Invoices of the year 1978, pages 92 and 93 are the Invoices of the year 1981, page 95 is the Invoice of the year 1989, and all these Invoices are signed by the issuing authority. The purchase order at page 68 of the type set is of the year 1981. Though the appellant has produced various Invoices of the years 1969 at pages 70, 72, 73 of the typed set, those Invoices were not signed by the issuing authority. But, the same were attested to be true copy by a Notary. From the counter of the first respondent and also from the arguments of the counsel for the first respondent, the documents were not seriously challenged except by a vague statement that they are fabricated. We have no doubt with regard to the genuineness of these documents, especially, when the details of the documents have been placed before us. The vague suggestion that the documents had been fabricated may not be a sufficient cause to reject the plea of the appellant that they are using the trade mark from the year 1966. The sales statistics furnished by the appellant and the Invoices produced by them would clearly establish the goodwill of the appellant and as such, it cannot be said that they never used their trade mark 'MICO'. Hence, we are unable to agree with the view taken by the Deputy Registrar that the appellant has not established the use of their trade mark. We differ from the findings of the Deputy Registrar and hold that the appellant had established the use of their mark 'MICO' atleast from 1969 as could be seen from the Invoices produced by the appellant and thereby they had established a goodwill and reputation in the trade. The first issue is answered in favour of the appellant.
9. The second issue about the similarity of the mark is concerned, the Deputy Registrar has not elaborately discussed the same. However, he has found that the impugned mark does not appear to be deceptively similar to the appellant's mark 'MICO'. The appellant's mark is 'MICO' registered under class 12 of the Fourth Schedule of the said Act and the first respondent's mark 'MICRO' which is also sought to be registered under class 12 of the same Schedule of the said Act. So, there cannot be any dispute that the goods of both the parties are of the same description. When we compare the similarity of the marks in the context of Section 11 of the said Act, it is well established that the comparison of the two word marks for such a purpose must take into account of the probabilities of confusion between them when either seen or heard, and of any similar meanings that they could convey to the mind, in whichever of those two ways they might be apprehended, whereby the mind would tend to associate or equate them. Nor is the comparison to be confined to a decision on what is likely to happen if the words are presented simultaneously or merely so to the eye or to the ear. One must take the two words and Judge of them both by their look and by their sound. It must also be considered the goods to which they are to be applied. If both the words are resembled to one another both visually as well as phonetically, then, it has to be construed that the impugned mark if registered would cause confusion and deception in the trade. It cannot be compared syllable when the similarity is more. The appellant's mark 'MICO' and the first respondent's mark 'MICRO' if compared, the difference is only the 'R' the last but one letter in the first respondent's mark. Otherwise, the marks are very much identical. By adding of this one letter 'R', in our view, the first respondent's mark cannot be said to be a distinguishable one either phonetically or visually. When the marks are almost similar, the probability and the risk of confusion and deception is more and as such, we are of the view that the registration of the impugned mark is contrary to Section 11(a) as well as Section 11(e) of the said Act. The first respondent did not put forth any plea or any details to prove that their goods are not the same as that of the appellant or of the same description. Apart from this, they also did not plead for the benefit of Section 12(3) of the said Act in the counter-statement.
10. In this connection, it is worthwhile to refer to the judgment in the matter of an application by the Pianotist Company Ltd. for the registration of a trade mark, reported in Vol. XXIII RPC (1906) 774, at page 777, it has been held as follows:
"You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy the goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of these trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all these circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case."
Without any controversy, the same principle is being followed till date in the later judgments also. It may be worth to mention a judgment of Delhi High Court in the case of Ranbaxy Laboratories Ltd. v. Dua Pharmaceuticals (P) Ltd., AIR 1989 Delhi 44, where the learned Judge has held that the mark 'calmpose' is phonetically, visually and deceptively similar to 'calmprose' and is likely to cause confusion, which is almost identical to the facts of the present case.
11. Following the same principle, we find that the conclusion of the Deputy Registrar of Trade Marks cannot be sustained and accordingly, we set aside the impugned order of the Deputy Registrar and the appeal is allowed. Consequently, the Opposition No. DEL 8390 of the appellant is allowed and the application No. 460711 of the first respondent is rejected. No order as to costs.