(CIRCUIT SITTING AT AHMEDAHAD)
Honble Dr.Raghbir Singh, Vice-Chairman
Appeal No.1/1999 filed in the High Court of Gujarat at Ahmedabad has been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and numbered as TA/275/2004/TM/AMD.
2. The first respondent filed an application for registration of a trade mark consisting of words âUJALA KING with a device of Sun in Class 3 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act), in respect of soaps under application No.401336. The user claimed under that application is since December, 1975. In due course, the mark was advertised in the Trade Marks Journal No.1078 (Supplement) dated 8.5.1994 at page 6, under proviso to Section 20(1) of the Act. The appellant gave a notice on 27.7.1994 to oppose the registration of the mark on the ground that it is the proprietor of a well known trade mark âSUNLIGHT and also of the trade mark âSUN. The said marks are registered in various forms. The impugned mark is deceptively similar to its registered trade mark âSUNLIGHT. The word UJALA is descriptive of the goods like Soaps. The impugned mark is neither distinctive nor capable of distinguishing the goods of the applicant. The first respondent had earlier made an application for the same mark under No.342707 which was refused registration vide opposition No.BOM-6129. That decision of the Registry is res-judicata in the present matter. It opposed the mark under sections 9,11, 12(1), 18(1) and 18(4) of the Act. The first respondent filed its counter statement and the evidence. In due course, similarly the appellant filed its evidence. The Assistant Registrar heard the matter on 4.8.1997 and he inferred that the opposition is based on sections 9, 1, 12(1) and 18(1) of the Act. He heard arguments of the learned counsel for the appellant and the first respondent. He concluded that, by virtue of long user since 1975, the mark acquired distinctiveness and, as such, qualifies for registration under section 9 of the Act. In the matter of its examination under section 11(a), after having heard both the counsel, he concluded that both the marks are distinct and he inferred that even the goods are different. The first respondents product is washing soap and is meant for the poor class society whereas the âSUNLIGHT soap is a product which is being bought by the rich people because of its high price. So the objection of the appellant fails under Section 11(a) of the Act and accordingly the objection under Section 11(e) also fails. In the matter of its examination under Section 12(1), in relation to application of two tests thereof, his conclusion was that the rival goods are of the same description, but, however, he found that the mark does not meet the second requirement as the rival marks are totally different from each other in respect of get up, colour scheme, etc. Thus, he concluded that the opposition under Section 12(1) also fails. He found the mark to be eligible under section 18(1) of the Act. Having found the mark to be entitled for registration under Sections 9,11(a),11(e), 12(1) and 18(1) of the Act, he proceeded with the examination of the mark under Section 12(3) of the Act and found that, in any case, the mark is also eligible under Section 12(3) of the Act. His conclusion about the application of the principle of res-judicata in the matter is that the Tribunal which he was then for the time being presiding over is an independent Tribunal and the proceedings of the matter under opposition No.BOM-6129 are not binding upon that Tribunal. He mentioned that the circumstances in the Bombay case might have been different and in the present case, he has made a physical examination of the packing material as well as the products of both the rival marks and according to his findings and analysis he reached the conclusion that the rival marks are totally different from each other. Thus, he dismissed the opposition and ordered for the registration of the mark.
3. In the appeal filed before the High Court of Gujarat and since transferred to this Board for consideration, there is a factual reiteration of the pleas culled out from the order of the learned Assistant Registrar. The appellant has at the outset taken the position that the respondent Assistant Registrar was wrong in not applying the principle of res-judicata in the present matter. The first respondent had made application No.342707 for registration of the same/identical mark which was advertised in the Trade Marks Journal No.852 dated 1.12.1984 (wrongly mentioned as â1.12.1994â in the appeal) and the Registrar in that case, by giving a detailed order dated 29.11.1983 had allowed the opposition and refused the registration of the mark. The second respondent in another opposition, being opposition No.AMD-705 to an application No.388282, by his order dated 23.5.1997 had applied the principle of res-judicata in a case of opposition. On merits, the appellant has reiterated the grounds of opposition taken by him before the Assistant Registrar and submitted that the Assistant Registrar has gravely erred on all counts in matter of his examination under Sections 9,11(a),11(e),12(1),12(3) and 18(1) of the Act.
4. The matter was listed for hearing in the sitting of the Board at Ahmedabad on 22.12.2004. Shri Y.J. Jasani appeared for the appellant and Shri R.R. Shah appeared for the first respondent.
5. We have carefully heard the learned counsel for the appellant and the first respondent.
6. We intend to examine the scope of the institution of the Registrar created under the Trade and Merchandise Marks Act, 1958 with a view to determine the issue relating to res-judicata at the outset. Section 4 of the Trade and Merchandise Marks Act, 1958 provides as under:
â4. Registrar of Trade Marks:- (1) The Central Government may, by notification in the Official Gazette, appoint a person to be known as the Controller-General of Patents, Designs and Trade Marks, who shall be the Registrar of Trade Marks for the purposes of this Act.
(2) The Central Government may appoint such other officers with such designations as it thinks fit for the purpose of discharging, under the superintendence and direction of the Registrar, such functions of the Registrar under this Act as he may from time to time authorize them to discharge.â.
7. In view of the above, the Central Government has to appoint a person as the Controller-General of Patents, Designs and Trade Marks who shall be the Registrar of Trade Marks. The Central Government has to further appoint certain other officers who shall work under the superintendence and direction of the Registrar to perform his functions under the Act as he may from time to time authorise them to discharge. The scheme as above envisaged in relation to the Office of the Registrar under the Act is based upon the principle that the Office of the Registrar has to be a unitary institution. Of course, at the operational level in view of the enormity of the work, he has to function through various other officers who shall perform the functions authorised by him. Accordingly, the Registrar has authorized the holders of the offices known as Joint Registrars, Deputy Registrars and Assistant Registrars to perform the quasi judicial functions under the Act vested in the Registrar. The Joint Registrars, Deputy Registrars and the Assistant Registrars have been authorized to exercise their quasi judicial power at par with each other. However, in spite of their being different functionaries who have been vested with such of the powers of the Registrar as authorized by him, the officers known as Joint Registrars, Deputy Registrars and Assistant Registrars do not become the independent institutions in themselves. They still remain to be part of the bigger institution known as the institution of the Registrar. This is the scheme which is broadly followed under our legal system. Various constitutional and other statutory institutions which perform functions through their nuts and bolts provided for that huge machine function in that manner. In the very scheme of those organs, whether these be judicial or executive, there is nothing like as contended by the Assistant Registrar.
8. Sub section 2 of Section 4 of the Trade and Merchandise Marks Act, 1958 can best be exemplified as the replica of an instrumentality having its philosophical deduction from the provisions under the Constitution. The Registrar remains to be one in spite of its various limbs known as the Joint Registrars, Deputy Registrars and Assistant Registrars as the Government of India remains one in spite of the various civil servants to perform its functions at different levels. Since the institution of the Registrar is one of which the Assistant Registrar at Bombay and another Assistant Registrar at Ahmedabad happen to be integral part, one limb of that integrated personality cannot be seen as claiming that that particular limb is independent of the machinery as a whole. Here learned Assistant Registrar appears to be venturing in that direction. The Assistant Registrar is patently wrong in claiming that he is an independent Tribunal in itself. Independence of the Tribunal is undisputed, but, as the Tribunal of the Registrar as a whole and not of the specific nuts and bolts. It is essential that there must be some consistency amongst the functionaries discharging quasi-judicial functions. Otherwise on the rejection of an application by one authority, the applicant will be tempted to file a fresh application before another authority with or without modification and have a chance.
9. The learned counsel for the appellant drew our attention to the similarity of the marks in relation to Application Nos.342707 and 401336. He pointed out that there is no material change in the marks except for that the words UJALA KING under Application No.342707 are in single line and the same words under Application No.401336 are in two lines. Otherwise, materially, there is no difference in between the marks. There was a disclaimer of the word UJALA under application No.342707 and there is no such disclaimer about the same word in the application No.401336. He argued that the Assistant Registrar had made the examination of the application No.342707 in a detailed manner for the purposes of Sections 9, 12(1) and 18 and 12(3) of the Act and he found that the impugned mark does not meet any of those requirements. The learned counsel mentioned the following cases in support of his claim:-
1. N.E. Horo Vs. Jahan Ara Jaipal Singh â AIR 1973 SC 1406;
2. Bridgestone Tyre Company Ltd. Vs. Bridgestone Company (P) Ltd. â 1980(5) IPLR 8.
10. The learned counsel for the first respondent drew our attention to the order of the Assistant Registrar, Bombay which is dated 29.11.1993. He put an emphasis that the impugned application is prior in time to that order. The impugned application was filed on 14.2.1983. Hence, there was no dishonest intention. He emphasized that the issues in both the matters are different. There are two different dates of application, there are two different sets of circumstances and there is a different period of user in both the cases.
11. The learned counsel for the appellant in reply submitted that it was dishonest on the part of the first respondent not to disclose the rejection of the earlier application. There is no rebuttal on this score from the first respondent.
12. We have gone through the pleadings filed by both sides and heard the arguments made. The Assistant Registrar, in his order for the impugned mark has made a very cursory examination of facts and the issues involved and the law applicable more particularly, in relation to Sections 9, 11,12(1) and 18 of the Act. In the face of a well detailed discussion of the issues and law point discussed by the Assistant Registrar, Bombay, in his order dated 29.11.1983, the whole examination of the Assistant Registrar, Ahmedabad, crumbles to ground for which having found the eligibility of the impugned mark under Sections 9, 11,12,18(1) entitling the registration thereof he ultimately fell back upon Section 12(3) to allow the registration. The well laid down principle in the trade marks law is that resort to section 12(3) can only be had when the registration of the mark fails at the anvil of sections 9,11 and 12 (1) of the Act. It is indicative of the fact that he himself is not sure about his conclusiveness in relation to Sections 9, 11 and 12(1) of the Act. The word UJALA had been disclaimed in relation to application No.342707. However, in relation to the impugned application, there is no such disclaimer. Thus, the registration of the impugned mark fails on the ground that the word UJALA KING in itself is a descriptive word and cannot be distinctive of the mark of the first respondent. In the matter of examination under Section 12, the learned Assistant Registrar has himself concluded that the goods in relation to both the marks happen to be the same. However, he concludes that though the goods being the same, the marks are distinctive and as such the registration under Section 12(1) is permissible. We do not find any merit in the claim of the learned counsel for the first respondent. The word UJALA along with the device of rising sun constitute an essential feature of the first respondents trade mark and with the earlier get up and the colour scheme, the mark is deceptively similar to the mark of the appellant. .In view of that, we find that the objection of the appellant is well founded. The mark does not qualify under Section 11(a) of the Act, as the words are confusingly and deceptively similar and the goods for which they are to be used happen to be the same. Since the mark does not have distinctiveness, it is confusingly and deceptively similar to the mark of the appellant and it does not qualify under Section 12(1) of the Act, there is no question of the first respondent having the proprietorship of the mark under Section 18(1) of the Act. The mark does not qualify under Section 12(3) of the Act. It envisages honest and concurrent use for a long period which patently lacks in this case.
3. In view of the above, the impugned order of the second respondent dated 6.12.1998 is set aside and the application No.401336 of the first respondent is rejected. The opposition of the appellant is allowed. No order as to cost.