1. On 18th November, 1992 M/s. Kalyanpuri Flour Mills Private Limited, a company incorporated under the Indian Companies Act at 3-B, Berlie Street cross, Langford Town, Bangalore-560025 (hereinafter referred to as the Applicants) filed an application being Application No. 397696B to register a trade mark label containing the device of an elephant and the words APPU BRAND as its essential feature of the mark in respect of "Maida, sooji and atta being goods included in class 30. The said trade mark is stated to be proposed to be used on the date of application.
The Registrar of Trade Marks raised a preliminary objection to the said application under Section 12(1) of the Act on the ground that the same is identical with jar deceptively similar to the registered trade marks and/or in prior pending applications in the records of the Register.
But subsequently after hearing the Applicants attorney and clarifying that the impugned mark is different from the cited marks and on the Applicants converting the application into one for registration in part B of the Register, the application was ordered to be advertised before acceptance for registration in the Trade Marks Journal. The said application was eventually advertised before acceptance under proviso to Section 20(1) of the Trade & Merchandise Marks Act, 1958 in the Trade Marks Journal No. 1023 dated 16th January, 1992 at page 1313.
2. On 16th March, 1992 Mr. Jagmohan Kumar a sole proprietor trading as M/s. Jugal Kishore Harbanslal at 578-A, G.B. Road, Shradhanand Market, Delhi-110006 (hereinafter referred to as the 'Opponent') filed a notice of opposition to the aforesaid application inter alia on the following grounds :- (i) That the Opponent is the proprietor of the trade mark consisting of the device of an elephant and the words ELEPHANT BRAND in respect of 'Flour, gram flour, besan, rice, atta and gram dall and has been using the said trade mark since the year 1954; (ii) That the Opponent is the proprietor of the trade mark ELEPHANT BRAND in respect of 'Gram flour and gram dall (broken) under trade mark Nos. 292411 and 366084 both in class 30; (iii) The essential feature of the Opponent's trade mark is the device of an elephant and that the said device is exclusively associated in the minds of the public and trade as the products of the Opponent's alone; (iv) By reason of long, extensive and continuous use, advertisement as well as sales promotion work through different media and the superior quality of the goods sold under the trade mark ELEPHANT BRAND, great reputation and goodwill have accrued to the said trade mark; (v) Having regard to the established user and reputation associated with the Opponent's trade mark, the use of the impugned mark will result in deception and confusion and, therefore, the registration of the mark applied for will be contrary to the provisions of Sections 11(a) and 11(e) of the Act; (vi) That the mark sought to be registered by the Applicants under Application No. 397696B consists of the device of an elephant is identical with/deceptively similar to the Opponent's reputed and registered trade mark mentioned above; (vii) That the impugned mark is neither adapted to distinguish nor capable of distinguishing the goods of the Applicants and, therefore, it fails to qualify for registration under Section 9 of the Act; (viii) That the Applicants cannot claim to be proprietors of the trade mark within the meaning of Section 18(1) of the Act; and (ix) The registration of the impugned mark would be contrary to Sections 9, 11(a), 11(e), 12(1), 18(1) and 18(4) of the Trade & Merchandise Marks Act, 1958.
3. The Applicants filed their counter statement on 25th September, 1992 denying the allegations of the Opponent and disputing the alleged similarity between the trade mark of the Applicants and of the Opponent and also stating that the goods in respect of which the Applicants seek registration are not the same goods or description of goods as those in respect of which the Opponent's marks are registered.
4. The evidence in support of opposition consists of an affidavit dated 1st December, 1992 of Mr. Jagmohan Kumar, proprietor of the firm alongwith exhibits C-1 to C-45 and D-1 to D-3 collectively as per details contained in the said affidavit. The evidence in support of application consists of an affidavit dated 21st April, 1993, of Mr.
Vinod Kumar Bansal, Director of the Applicants' company alongwith Exhibits B-1 to B-19 and C collectively as per details contained in the said affidavit. The reply evidence is again by way of an affidavit dated 14th June, 1993 of aforesaid Mr. Jag-mohan Kumar and accordingly the matter was set down for a hearing on 21st December, 1998 and in terms of Rule 59 the respective parties were requested to notify on form TM-7 their intention to attend the hearing.
5. The Opponent and the Applicants both notified their intention on form TM-7 in terms of Rule 59 of the Trade & Merchandise Marks Rules, 1959. However, the said hearing was then adjourned on request made by the Opponent. The matter eventually came up for a hearing before me on 9th March, 2000, when Mr. V. Balakrish-nan, Registered Trade Mark Attorney for the Applicants and Mr. M.K. Miglani, Advocate instructed by M/s. World Wide Registration Bureau, New Delhi appeared on behalf of the Opponent.
6. Mr. M.K. Miglani, Advocate, the learned counsel for the Opponent submitted that Opponent is the registered proprietor of the trade mark consisting of the device of an elephant and the words HAATHI CHAAP in respect of Gram Flour (besan) and gram dall (broken) both in class 30 and he has been using the said trade mark since the year 1954 continuously and extensively throughout India in respect of the goods mentioned above. By reason of long and continuous use, advertisement, sales promotion work and also the superior quality of the goods sold under the trade mark has come to be exclusively identified and associated by the members of public and trade with the Opponent and his products only. Obviously, the Opponent's goods bearing the trade mark HAATHI CHAAP and the device of an elephant have acquired enviable goodwill and reputation among the public and trade. In this context, my attention was drawn to paragraphs 6,7,8 and 9 of the affidavit dated 1st November, 1992 of Mr. Jagmohan Kumar, proprietor of the Opponent's firm and emphasised that the Opponent has filed adequate evidence in support of use of the mark and the same has been sufficiently established by him. He also stated that having regard to the established user and reputation associated with the Opponent's trade mark, the use of the Applicant's mark will not only result in confusion and deception in the course of trade but also lead to passing of the Applicants' goods as and for those manufactured and marketed by the Opponent and, therefore, its registration is prohibited under the provisions of Sections 11(a) and 11(e) of the Act.
7. Mr. Miglani stated that the mark sought to be registered under Application No. 397696B in class 30 in respect of Maida, sooji and atta is confusingly/deceptively similar to the Opponent's used and reputed trade mark HAATHI CHAAP and the device of an elephant. Further, the goods in respect of which the Applicants seek registration under the instant application and the Opponents' goods are goods of the same description and therefore, its registration is prohibited under Section 12(1) of the Act. The learned counsel in this context relied upon the cases of (i) Essco v. Mascot, AIR 1982 DEL 308 at page 311 : 1982 PTC 302, (ii) James Chadwick Brothers v. National Sewing Thread Co., AIR 1951 Bombay 147, (iii) Amritdhara Pharmacy v. Satya Deo AIR 1963 SC 449 at 452 : PTC (Suppl)(2) 1(SC), and (iv) Metro v. Wazir Chand, AIR 1972 Del. 248 : PTC (Suppl)(1) 76(Del)(DB) on the deceptive similarity aspect of rival marks and emphasised that the idea conveying the rival marks is same being an elephant in this case, 8. Mr. Miglani further submitted that the Applicants have no justification for the adoption of a deceptively similar trade mark but done so solely with an intention to trade upon and have benefit from the goodwill enjoyed by the Opponent's trade mark HAATHI CHAAP and the elephant device. Further, the impugned mark is stated to be proposed to be used on the date of application and that any user claimed by the Applicants subsequent to the application has no relevance and therefore, the Applicants are not entitled to the concurrent registration of the mark under Section 12(3) of the Act. He relied upon the case of London Rubber v. Durek, AIR 1963 SC 1882 : PTC (Suppl)(1) 246(SC) in support of his arguments and contention.
9. Mr. Miglani also stated that the mark sought to be registered under the impugned application in respect of Maida, sooji, atta is nothing but a trifle variation of the Opponent's used and registered trade mark HAATHI CHAAP and contended that the Applicants were aware of the reputation and goodwill attached to the Opponent's trade mark and that the Applicants have dishonestly copied their mark and as such the Applicants cannot claim to be the proprietors of the impugned mark in terms of Section 18(1) of the Act.
10. Mr. Miglani further contended that the Applicants have no right to the exclusive ownership of an emblem which constitutes a trade mark apart from its use or application of it in connection with some vendible commodity, because the mark submitted for registration is a reproduction of the official logo which was devised by the Government of India for the Asian Games which held at New Delhi in the year 1982 and thus it belongs to Government of India and none else. Therefore, the use and its registration of the same is in contravention of the existing statute and the same is liable to be refused registration.
11. In view of the facts stated above and having regard to the high probability of deception and confusion that may arise by registration of the impugned mark, he accordingly requested the Registrar to exercise his discretion adversely to the Applicants and impugned application may be refused registration with costs to the Opponent in respect of these proceedings.
12. Mr. V. Balakrishnan, Registered Trade Mark Agent for the Applicants refuted the submissions of Mr. Miglani and submitted that Applicants are the proprietors of the trade mark label consisting of the device of an elephant and the words APPU BRAND which is the subject matter of the impugned application under Application No. 397696B in class 30 and that the said trade mark was honestly adopted by them in November, 1982 and to the best of their knowledge and belief there was none using a similar trade mark in respect of 'Maida, sooji and atta. Further, they have used the said trade mark continuously and extensively and bona fide ever since January, 1983 in respect of goods mentioned above. Due to such continuous and extensive use the said trade mark has become exclusively associated with the Applicants and their products alone.
13. Mr. Balakrishnan stated that the Applicants are the proprietors of the trade mark label consisting of the device of an elephant and the words APPU BRAND as a whole is entirely different from that of the Opponent's registered trade mark HAATHI CHAAP with the device of an elephant both visually and phonetically. Further, the impugned label is used in respect of maida, sooji and atta whereas the Opponent's label is claimed to have been used in respect of 'Gram flour (besan), gram dal (broken) are also different description of goods. Therefore, the use and registration of the impugned mark is not at all prohibited under Section 12(1) of the Act.
14. Mr. Balakrishnan further submitted that the objection raised by the Opponent under Section 11 is devoid of any substance or merit because the Opponent has not proved the use and reputation of his mark.
Further, it must be established by the Opponent by sufficient and satisfactory evidence of his mark on the date of application. He drew my attention to para 6 of the affidavit dated 1.12.1992 of the Opponent filed in support of opposition and pointed out that the Opponent has furnished approximate annual sales of the goods sold by him under the trade mark HAATHI CHAAP for the year 1975-76, 1984-85, 1985-86, 1986-87, 1987-88 and 1988-89. Obviously, there has been no sales during the years 1977 to 1983. The Opponent has no doubt filed evidence of user of his mark since July 1975. He has furnished some copies of the bills for the years 1975, 1976, 1984, 1986, 1987 and 1988. These bills also contain reference to the words SHAKTI BHOG ATTA and ELEPHANT BRAND. He further stated that 50% of the above sales turnover relates to the goods under the trade mark ELEPHANT BRAND and the device of an elephant which means all the sales figures are vague. Moreover, there is not a single instance of actual confusion or deception has been brought to the notice of the tribunal. He also challenged the reputation and goodwill enjoyed by the Opponent in his trade mark and stated that the Opponent has failed to make out a case under Section 11(a) of the Act. Therefore, the use and its registration of the impugned label is not at all barred by the provisions of Sections 11(a) and 11(e) of the Act.
15. Mr. Balkrishnan also stated that the impugned label consisting of the words APPU BRAND and the device of an elephant was adopted honestly by the Applicants without any knowledge of the Opponent's trade mark in the year 1983 and to the best of their knowledge and belief, there was none using a similar trade mark in respect of Maida, sooji and atta and therefore, there is nothing to displace the proprietory rights within the meaning of Section 18(1) of the Act. Since both the rival marks as well as the goods are different, there is absolutely no possibility of any confusion and/or conflict between the impugned mark and the Opponent's trade mark. Further, the alleged confusion and deception are wholly imaginary and can bear no relation to facts.
16. Mr. Balakrishnan finally contended that the notice of opposition filed by the Opponent is devoid of any substance or merit and that the Opponent has not made out any case for refusal of the impugned application mentioned above. He accordingly prayed that the opposition may be dismissed with costs and the impugned application be directed to proceed to registration without any further delay.
17. I have heard both the Attorneys for the Opponent and Applicants and also carefully considered all the materials available on record. Though the opposition is stated to be based on Sections 9, 11(a), 11(e), 12(1), 12(3) and 18(1) of the Act, the Opponent's counsel did not press his objection based on Section 9 of the Act.
18. Before considering the issue under Section 11, it will be convenient to consider the Opponent's objection under Section 12(1) of the Act. The Applicants' label consists of the device of an elephant with the words APPU BRAND. The Opponent's objection under Section 12(1) is based on the registered trade mark Nos. 292411 and 366084 consisting of the words HAATHI CHAAP and the device of an elephant. Section 12(1) provides that no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or decription of goods.
19. The question for consideration under Section 12(1) are (a) whether the goods for which registration is sought are goods of the same description as those for which the Opponent's marks are registered and if so (ii) whether any normal use of the Applicant of his mark will lead to confusion with the Opponent's mark also used in a normal and fair manner by reason of similarity of two marks. Where the marks are identical, the only question is whether there is conflict as to the goods (1949) 66 RPC 305 at page 308.
20. As regards the first point relating to the goods under the rival marks, the Applicants' goods are Maida, sooji and atta being goods included in class 30. On the other hand, the goods under the Opponent's marks are Gram flour (besan) under one registration and Gram dall (broken) under the second registration. The Ap plicants in their counter-statement emphatically asserted that the goods under the rival marks are goods of the different description. On the other hand, the Opponent's counsel contended that the goods are to be treated as goods of the same description. Actually, the goods under both the marks can be described as food products in one form or the other falling in the same class 30. The items gram flour (besan) and gram dall (broken) can be used as food products for human consumption. The goods like maida, sooji and atta under the Applicants' specification of goods may also be used as food products for human consumption. Besides, the sales channels through which the goods pass, also happen to be the same. The Opponents' counsel says that the rival goods will be sold in the same shops at the same counters and in the same market. There is no dispute that the goods under the rival marks can be treated as goods of the same description. The only question, therefore, is whether the two marks are deceptively similar.
21. In this connection in para 8 of the counter statement the Applicants state as follows :- "........we state that our trade mark is entirely different from the Opponents' trade mark both visually and phonetically. We state that our trade mark is 'APPU BRAND' with the device of 'APPU', whereas the Opponents' trade mark is 'HATHI CHHAP' with the device of an elephant. Further, our trademark is used in respect of maida, sooji and atta, whereas the opponents' trade mark is claimed to be used in respect of gram flour (besan) and gram dall (broken). We further state that there is no point of similarity between our trade mark and the opponents' trademark. We also state that our goods and the opponents goods are of different description." 22. In the evidence filed in support of opposition, Mr. Jagmohan Kumar in para 18 of his affidavit dated 1.12.1992 states as follows :- .........I reassert that the mark applied for is visually and phonetically deceptively similar to my well known, reputed and registered trade mark and the goods for which applicant is seeking registration and my goods for which my trade mark ELEPHANT is registered and used are of the same description.
23. In James Chadwick Brothers v. National Sewing Thread Co., AIR 1951 Bom 147, it was held by the Division Bench that it is important to find out the distinguishing or essential feature of the trade mark already registered and what is the main feature or the main idea underlying the trade mark and ascertain if the trade mark whose registration is sought contains the same distinguishing or essential feature or conveys the same idea. The question to be asked what would be the salient feature of the mark which in future would lead the purchaser to associate particular goods with that trade mark. Applying this test there is no doubt that the Applicants' trade mark will be identified as ELEPHANT and their goods will be referred to or called for under the name of ELEPHANT BRAND and ELEPHANT BRAND only. I hold that the Applicant's trade mark is deceptively similar to the Opponent's registered trade marks and as such Section 12(1) constitutes a bar to the registration of the Applicants' mark in this case.
24. Now, passing to the Opponent's objection under Section 11, Section 11 of the Act provides inter alia that a mark, the use of which would be likely to deceive or cause confusion or which would otherwise be disentitled to protection in a court shall not be registered as a trade mark. The competing trade marks in this case are deceptively similar to each other and the goods covered by both the marks are also goods of the same description.
25. It is pertinent to note that an opposition under Section 11 is founded upon the proved user and reputation of the Opponent's trade mark, the inference being that the public are so familiar with the trade mark that the use of the Applicants' mark seeking registration is likely to lead to deception and confusion among them. (See Dr. S.Venkateswaran on Law of Trade & Merchandise Marks page 157). In this case, though the Opponent has produced some copies of invoices for the years 1975, 1976, 1984, 1985, 1986, 1987 and 1988, no documentary evidence in the form of bills or invoices for the years 1977 to 1983 has been filed. It is also seen that few bills do contain reference to the expressions SHAKTI BHOG ATTA and ELEPHANT BRAND. The only argument put forthwith by the Applicants is that it is not clear whether these are different trade marks used by the Opponent and whether sales figures furnished by him include sales relating to the goods under the trade mark also. It is true that the bills do contain reference of both the marks owned by the Opponent in relation to which trade mark is used. However, the Opponent has stated 50% of the sales turnover relates to the goods bearing the trade mark ELEPHANT BRAND and the device of an elephant. In sum, the Opponent's evidence of proving user and reputation of his mark shows that the onus has been adequately discharged by him.
26. Further, it is also to be borne in mind that Section 11 is one which exists not merely for the benefit of other traders but for the benefit of public at large. (See Boots Pure Drugs Co, Ltd. trade mark 54 RFC at page 336). The Registrar is bound to reject a trade mark which offends against Section 11. The interest of the public are of greater importance than the relative rights of the parties. In this case, having regard to the established use and reputation of the Opponent's trade mark ELEPHANT BRAND, I am satisfied that the mark applied for, if used in a normal and fair manner in connection with the Applicants' goods as prayed is likely to cause deception and confusion in the trade. Therefore, the Opponent's objection under Section 11(a) is sustained.
27. As regards the objection under Section 11(e) of the Act taken by the Opponent, I have already held that the use of the impugned mark by the Applicant is likely to cause confusion and deception. It was held in the case of Berlie v. Bali, (1969) 63 RFC page 472 that if there is a confusion or likelihood of confusion, the mark would ipso facto be disentitled to protection. Therefore, the objection raised by the Opponent under Section 11(e) is also sustained.
28. Regarding the objection based on Section 12(3), I wonder what is the basis of this objection. A case under Section 12(3) would arise where Applicants seeks registration of their trade mark under Section 12(3) by reason of honest and concurrent user or special circumstances.
Since the Applicants have not sought registration of their mark under Section 12(3) of the Act, the question of considering the application under Section 12(3) does not arise in this case.
29. Lastly, turning to the Opponent's objection under Section 18, the Opponent contended that the Applicants' adoption of the impugned mark is not honest. But I must say that unless it is established that the Applicants have copied the Opponents' trade mark or the mark sought to be registered is some one else's trade mark, it cannot be said that the Applicants cannot claim to be the proprietor of the trade mark which has been adopted honestly and bona fide by them and used in relation to their goods. In any case, having regard to the explanation offered, it is reasonable to assume that the Applicants have honestly adopted the said trade mark device of an elephant and put to use in relation to the goods mentioned above. Just because the Applicants' mark happens to be close to the Opponent's mark, one cannot say that the Applicants have copied the Opponent's mark. Accordingly, the Opponent's objection based on Section 18(1) is rejected.
30. It is well settled that in an opposition proceeding the onus lies on the Applicants to establish that their mark is entitled to registration and that the opposition was unjustified. As stated above, the Applicants have not discharged this burden and established their case for registration under the mandatory provisions of the Act.
Further, the Opponent has also challenged the Applicants' claim of adoption of the mark from January 1983 and they have also challenged the Applicants' claim for entitlement to registration of the impugned mark on the reason that the same is nothing but a reproduction of the official emblem devised by the Government of India for the purpose of Asian Games which held in the year 1982. This objection was conveyed to the Applicants' attorney at the time of hearing and he in fact offered no comments for the same.
31. It is pertinent to note that an Application No. 397696 filed on 18th November, 1982 long after the emblem of the elephant device with the words APPU BRAND has been adopted to represent the Asian Games symbol which is an event of great national importance and significance, highly adored by sport persons as well as audience or viewers including the Indian general public at large. It is clear, therefore, the Applicants cannot claim an absolute right to have their trade mark registered. I therefore, strongly feel that the Applicants cannot claim such monopoly rights in the impugned mark particularly as it is conceived and adopted after the sport event is concluded.
32. On consideration of the overall facts and circumstances of the case, I have no option but to refuse the application under Section 18(4) of the Act as the Applicants have failed to meet the requirements mentioned above and that they are entitled to registration.
33. In the result, the Opponents No. MAS-2666 is allowed and it is hereby ordered that the mark under Application No. 397696B in class 30 shall be refused registration and it is hereby further ordered that the Applicants shall forthwith pay a sum of Rs. 330/- (Rupees three hundred and thirty only) to the Opponent towards costs of these proceedings.