Aziz Ul Ghani, Sole Proprietor M/S. United Electric Co., Vs. M/S. United Brothers and Another - Court Judgment

SooperKanoon Citationsooperkanoon.com/1117786
CourtIntellectual Property Appellate Board IPAB
Decided OnJan-28-2010
Case NumberTA/177 of 2003/TM/DEL
JudgeHONOURABLE MS. S. USHA VICE-CHAIRMAN & HONOURABLE SYED OBAIDUR RAHAMAN TECHNICAL MEMBER
AppellantAziz Ul Ghani, Sole Proprietor M/S. United Electric Co.,
RespondentM/S. United Brothers and Another
Excerpt:
trade marks act, 1999 - section 100 -(circuit bench sitting at delhi) order no. 27/2010 honble ms. s. usha, vice-chairman: 1. the instant appeal was filed before the honble high court of delhi in cm(m) 200/2001 and subsequently pursuant to the provisions of section 100 of the trade marks act, 1999 transferred to this appellate board and re-numbered as ta/177/2003/tm/del. the brief facts of the case are - 2. the appellant herein filed an application under no.518071 for registration of the trade mark united (word per se) in class 7 in respect of mixer grinder, hair dryer (machine) and washing machines on 06.10.1989 under the provisions of the trade and merchandise marks act 1958 (hereinafter referred to as the act). the user claimed in the application was since 01.04.1977. the application was advertised as accepted in the trade marks journal no.1067 dated 16.11.993 at page 885. 3. the application for registration was opposed by the 1st respondent. the 1st respondent had stated that they were engaged in the business of manufacturing and marketing of alluminium hollow ware for household use under the trade mark “united” since the year 1957 under their registered trade mark no.274649 in class 21 and household, domestic utensils and containers (not of precious metal or coated therewith) pressure cookers (non-electric) milk (cans) and soap cases (boxes) under registered trade mark no.369826 in class 21. 4. the impugned trade mark is hit by section 12(1) of the act as the trade marks are identical and the goods are of the same description, sold under the same roof and purchased by the same type of customers. the trade mark is disentitled to registration under section 11(a) and (e) of the act as the mark applied for registration is likely to cause confusion and deception. the user date given by the respondent no.1 is false. the respondent no.1 is not the proprietor of the impugned trade mark under section 18(1) of the act. 5. the appellant filed the counter denying the various allegations made in the notice of opposition. they further had stated that their user since 1977 is honest and bonafide. finally stated that the notice of opposition is infructuous and is liable to be dismissed. 6. on completion of the formal procedures, the assistant registrar passed the impugned order. the marks are identical and the goods in respect of which registration is sought is of the same description and hence the application does not qualify for registration in view of the provisions of section 12(1) of the act. the mark applied for registration is prohibited under section 11(a) of the act as the rival marks are identical and there is likelihood of confusion and deception. the mark applied for registration is not in conformity with the provisions of section 18(1) of the act as it is identical to the respondent no.1s registered trade mark. in view of the above reasons, the opposition no.del 8511 is allowed and application under no.518071 in class is refused registration. 7. aggrieved by the above said order, the appellants filed the instant appeal on the following grounds:- a) the respondent no.2 has passed the impugned order contrary to the finding of the high court in an injunction suit between the same parties that the said goods are so different in shape and use and that there cannot be any confusion in the minds of the public; b) the respondent no.2 has no material to arrive at the finding that the goods are cognate and allied in nature in the absence of evidence; c) the impugned order is liable to be set-aside on the ground that the respondent no.2 has wrongly held that the competing goods are of same description which is a pre-condition for the prohibition under section 12(1) to be involved; d) that the impugned order is liable to be quashed and set-aside as it had ignored the provisions of section 12(3) of the act; e) the respondent no.2 ought to have allowed the application for registration for the reason that the appellants had been using the trade mark “united” since 1977 which was within the knowledge of the respondent no.1, that the appellants are registered proprietors of the trade mark in class 9, on account of special circumstances coupled with honest and concurrent use the respondent no.2 ought to have granted registration; another application under no.545824 in class 11 has been allowed for registration by the respondent no.2 despite opposition; f) that the impugned order is erroneous and is liable to be set-aside as the examination report issued by the respondent no.2 office did not find the respondent no.1 goods as being of same description to the goods of the appellant; g) the impugned order is liable to be set-aside as it is based on the registration obtained by the respondent no.1 which is in violation of the principles of the act. 8. the respondent no.1 herein filed their counter denying all the material allegations made in the grounds of appeal and prayed that the appeal be dismissed with costs. 9. we have heard shri. hemant singh, counsel for the appellant and shri sushant singh, counsel for the respondent no.1 on 16th december, 2009 during circuit bench sitting at delhi. 10. the learned counsel for the appellant contended that the goods are different though the mark was registered and brought to our notice, the ground of notice of opposition at page 2 of the impugned order. there was no evidence produced to show that the goods were same. he also drew our attention to para 10 of the affidavit of evidence filed in support of application filed before the registrar of trade marks in opposition proceedings and stated that it was clearly stated there that the goods are not allied and cognate and even if sold in the same shop, the goods are so different in shape and use and there cannot be any confusion in the minds of the purchasers. the counsel also brought to our notice the order passed by the high court of delhi in an injunction suit between the same parties reported in 1997 ptc (19) 603 wherein it was held that the goods though sold in the same shop were of different shape and use. the counsel also referred to the judgment of this honble board reported in 2005 (31) ptc 709 in a rectification petition filed by the respondent no.1 herein against the respondent no.1 for the mark “united”. the rectification application was dismissed on the ground that the applicant that is the respondent no.1 herein failed to prove that the registration was in contravention of the provisions of section 11 of the act as the marks were in different classes say class 21 and class 9. 11. in reply, the counsel for the respondent no.1 submitted that each case has to be decided on the own facts of the case concerned and not based on the observations of the board reported in 2005(31) ptc 709. the counsel referred to various judgments in support of his case. his main arguments were based on the judgment reported in 2006(32) ptc 661. wherein in a suit for injunction the honble court had held that the marks in respect of class 21 and class 11 though fall under different classes are available in the same shop and confusion is apparent. 12. the counsel further submitted that they were prior user of the trade mark and their rights were to be protected by allowing the registration there would be every possibility of confusion and deception among the public. 13. the counsel for the appellant in rejoinder submitted that the judgments referred to by the respondent no.1 were not relevant to the case on hand. there was no mention of the registration of the trade mark under no.388765 in the impugned order. though the sales figures were mentioned in the affidavit of evidence before the registrar of trade marks no documentary evidence produced to prove the same. the user claimed is of the year 1957 but the sales figures only from the year 1985 where no explanation given for the years prior to 1985 as to why they were not given. 14. the registrar has not given any finding as to the 1st respondents use. the registrar has not considered the judgment of mr. justice r.n. agarwal. the appellant therefore prayed that the appeal be allowed and the registration be granted. 15. we have carefully considered the arguments of both the counsel and have gone through the pleadings and documents. the issues that arise for consideration is whether the grant of registration of application under no.518071 in class 7 would be in contravention of the provisions of sections 11,12 and 18 of the act. section 11(a) of the act deals with the mark, the use of which is likely to cause confusion and is prohibited for registration. the marks being identical the possibility of confusion and deception is certain. moreover, the respondents are registered proprietors of the trade mark “united” in respect of household goods falling under class 21. the respondents have been using the trade mark since the year 1957 whereas the appellants admittedly have adopted and used the trade mark since 1977 subsequent to that of the respondents. by long and continuous use the respondents have acquired reputation and goodwill among the public. the public would definitely associate the goods of the appellants as that of the respondents by which there will be every possibility of confusion and deception. 16. when the marks are identical and the goods are of different description the identical mark cannot be registered for the reasons that the registered proprietors reputation cannot be allowed to be diluted by such registration. when the registered mark had built up a reputation and goodwill of their own, there will be confusion or deception in the minds of the public as if they are being produced by the same registered proprietor. 17. the trade mark shall not be registered in respect of any goods or description of goods which is identical to a trade mark which is already registered. we agree with the finding of the registrar that the appellants goods and the respondents goods are household goods which are sold to the same class of purchasers. the application does not qualify for registration as the rival marks are identical and the goods are of the same description. 18. lastly coming to the question of proprietorship as per section 18(1) of the act, there is no doubt that the respondent who is the registered proprietor of the trade mark as early as 1957 is the proprietor. the applicant ie. the appellant herein who is the subsequent user of the year 1977 cannot claim to be the proprietor of the trade mark. the mark therefore does not qualify for registration as per the provisions of section 18(1) of the act. 19. in view of the above, we dont find any infirmity in the order of the registrar and accordingly, the appeal is dismissed upholding the order of the registrar dated 07.12.2000 with no order as to costs.
Judgment:

(Circuit Bench Sitting at Delhi)

ORDER No. 27/2010

Honble Ms. S. Usha, Vice-Chairman:

1. The instant appeal was filed before the Honble High Court of Delhi in CM(M) 200/2001 and subsequently pursuant to the provisions of section 100 of the Trade Marks Act, 1999 transferred to this Appellate Board and re-numbered as TA/177/2003/TM/DEL.

The brief facts of the case are -

2. The appellant herein filed an application under No.518071 for registration of the trade mark United (word per se) in class 7 in respect of mixer grinder, hair dryer (machine) and washing machines on 06.10.1989 under the provisions of the Trade and Merchandise Marks Act 1958 (hereinafter referred to as the act). The user claimed in the application was since 01.04.1977. The application was advertised as accepted in the Trade Marks Journal No.1067 dated 16.11.993 at page 885.

3. The application for registration was opposed by the 1st respondent. The 1st respondent had stated that they were engaged in the business of manufacturing and marketing of alluminium hollow ware for household use under the trade mark “United” since the year 1957 under their registered trade mark No.274649 in class 21 and household, domestic utensils and containers (not of precious metal or coated therewith) pressure cookers (non-electric) milk (cans) and soap cases (boxes) under registered trade mark No.369826 in class 21.

4. The impugned trade mark is hit by section 12(1) of the Act as the trade marks are identical and the goods are of the same description, sold under the same roof and purchased by the same type of customers. The trade mark is disentitled to registration under section 11(a) and (e) of the Act as the mark applied for registration is likely to cause confusion and deception. The user date given by the respondent No.1 is false. The respondent No.1 is not the proprietor of the impugned trade mark under section 18(1) of the Act.

5. The appellant filed the counter denying the various allegations made in the notice of opposition. They further had stated that their user since 1977 is honest and bonafide. Finally stated that the notice of opposition is infructuous and is liable to be dismissed.

6. On completion of the formal procedures, the Assistant Registrar passed the impugned order. The marks are identical and the goods in respect of which registration is sought is of the same description and hence the application does not qualify for registration in view of the provisions of section 12(1) of the Act. The mark applied for registration is prohibited under section 11(a) of the Act as the rival marks are identical and there is likelihood of confusion and deception. The mark applied for registration is not in conformity with the provisions of section 18(1) of the Act as it is identical to the respondent No.1s registered trade mark. In view of the above reasons, the opposition No.DEL 8511 is allowed and application under No.518071 in class is refused registration.

7. Aggrieved by the above said order, the appellants filed the instant appeal on the following grounds:-

a) the respondent No.2 has passed the impugned order contrary to the finding of the High Court in an injunction suit between the same parties that the said goods are so different in shape and use and that there cannot be any confusion in the minds of the public;

b) the respondent No.2 has no material to arrive at the finding that the goods are cognate and allied in nature in the absence of evidence;

c) the impugned order is liable to be set-aside on the ground that the respondent No.2 has wrongly held that the competing goods are of same description which is a pre-condition for the prohibition under section 12(1) to be involved;

d) that the impugned order is liable to be quashed and set-aside as it had ignored the provisions of section 12(3) of the Act;

e) the respondent No.2 ought to have allowed the application for registration for the reason that the appellants had been using the trade mark “United” since 1977 which was within the knowledge of the respondent No.1, that the appellants are registered proprietors of the trade mark in class 9, on account of special circumstances coupled with honest and concurrent use the respondent No.2 ought to have granted registration; another application under No.545824 in class 11 has been allowed for registration by the respondent No.2 despite opposition;

f) that the impugned order is erroneous and is liable to be set-aside as the examination report issued by the respondent No.2 office did not find the respondent No.1 goods as being of same description to the goods of the appellant;

g) the impugned order is liable to be set-aside as it is based on the registration obtained by the respondent No.1 which is in violation of the principles of the Act.

8. The respondent No.1 herein filed their counter denying all the material allegations made in the grounds of appeal and prayed that the appeal be dismissed with costs.

9. We have heard Shri. Hemant Singh, counsel for the appellant and Shri Sushant Singh, counsel for the respondent No.1 on 16th December, 2009 during Circuit Bench Sitting at Delhi.

10. The learned counsel for the appellant contended that the goods are different though the mark was registered and brought to our notice, the ground of notice of opposition at page 2 of the impugned order. There was no evidence produced to show that the goods were same. He also drew our attention to para 10 of the affidavit of evidence filed in support of application filed before the Registrar of Trade Marks in opposition proceedings and stated that it was clearly stated there that the goods are not allied and cognate and even if sold in the same shop, the goods are so different in shape and use and there cannot be any confusion in the minds of the purchasers. The counsel also brought to our notice the order passed by the High Court of Delhi in an injunction suit between the same parties reported in 1997 PTC (19) 603 wherein it was held that the goods though sold in the same shop were of different shape and use. The counsel also referred to the judgment of this Honble Board reported in 2005 (31) PTC 709 in a rectification petition filed by the respondent No.1 herein against the respondent No.1 for the mark “United”. The rectification application was dismissed on the ground that the applicant that is the respondent No.1 herein failed to prove that the registration was in contravention of the provisions of section 11 of the Act as the marks were in different classes say class 21 and class 9.

11. In reply, the counsel for the respondent No.1 submitted that each case has to be decided on the own facts of the case concerned and not based on the observations of the Board reported in 2005(31) PTC 709. The counsel referred to various judgments in support of his case. His main arguments were based on the judgment reported in 2006(32) PTC 661. Wherein in a suit for injunction the Honble Court had held that the marks in respect of class 21 and class 11 though fall under different classes are available in the same shop and confusion is apparent.

12. The counsel further submitted that they were prior user of the trade mark and their rights were to be protected by allowing the registration there would be every possibility of confusion and deception among the public.

13. The counsel for the appellant in rejoinder submitted that the judgments referred to by the respondent No.1 were not relevant to the case on hand. There was no mention of the registration of the trade mark under No.388765 in the impugned order. Though the sales figures were mentioned in the affidavit of evidence before the Registrar of Trade Marks no documentary evidence produced to prove the same. The user claimed is of the year 1957 but the sales figures only from the year 1985 where no explanation given for the years prior to 1985 as to why they were not given.

14. The Registrar has not given any finding as to the 1st respondents use. The Registrar has not considered the judgment of Mr. Justice R.N. Agarwal. The appellant therefore prayed that the appeal be allowed and the registration be granted.

15. We have carefully considered the arguments of both the counsel and have gone through the pleadings and documents. The issues that arise for consideration is whether the grant of registration of application under No.518071 in class 7 would be in contravention of the provisions of sections 11,12 and 18 of the Act. Section 11(a) of the Act deals with the mark, the use of which is likely to cause confusion and is prohibited for registration. The marks being identical the possibility of confusion and deception is certain. Moreover, the respondents are registered proprietors of the trade mark “United” in respect of household goods falling under class 21. The respondents have been using the trade mark since the year 1957 whereas the appellants admittedly have adopted and used the trade mark since 1977 subsequent to that of the respondents. By long and continuous use the respondents have acquired reputation and goodwill among the public. The public would definitely associate the goods of the appellants as that of the respondents by which there will be every possibility of confusion and deception.

16. When the marks are identical and the goods are of different description the identical mark cannot be registered for the reasons that the registered proprietors reputation cannot be allowed to be diluted by such registration. When the registered mark had built up a reputation and goodwill of their own, there will be confusion or deception in the minds of the public as if they are being produced by the same registered proprietor.

17. The trade mark shall not be registered in respect of any goods or description of goods which is identical to a trade mark which is already registered. We agree with the finding of the registrar that the appellants goods and the respondents goods are household goods which are sold to the same class of purchasers. The application does not qualify for registration as the rival marks are identical and the goods are of the same description.

18. Lastly coming to the question of proprietorship as per section 18(1) of the Act, there is no doubt that the respondent who is the registered proprietor of the trade mark as early as 1957 is the proprietor. The applicant ie. the appellant herein who is the subsequent user of the year 1977 cannot claim to be the proprietor of the trade mark. The mark therefore does not qualify for registration as per the provisions of section 18(1) of the Act.

19. In view of the above, we dont find any infirmity in the order of the Registrar and accordingly, the appeal is dismissed upholding the order of the Registrar dated 07.12.2000 with no order as to costs.