Jawahar Lal Aggarwal, Sole Proprietor, M/S Johnflex Industries Vs. the Registrar of Trade Marks, Trade Marks Registry and Another - Court Judgment

(Circuit Bench sitting at Delhi)

ORDER(No.28/2010)

Honble Ms. S. Usha, Vice- Chairman:

1. Appeal arising out of the order dated 27.11.2001 passed by the Assistant Registrar of Trade Marks disallowing the opposition No.DEL.T.845/52572 and allowing the application No.531669 in class 9 to proceed for registration with the condition that the word CAPITAL shall be used in connection with the logo as represented by the applicant in his application on Form TM-6 under the provisions of the Trade and Merchandise Marks Act, 1958 (in short the Act).

2. The second respondent herein filed an application for registration of the trade mark ‘CAPITAL with a logo on 18.06.1990 under No.531669 in class 9 in respect of electronic and electrical apparatus and instruments like stereo, mono amplifiers, tape recorders, tape decks, radio receivers, tuners, loud speakers and loud speaker system, record players, televisions, electric wire and cables and parts of electric fittings, including electric switches, coil holders, plugs, electric adopters, electric connectors, electric testers, electric bells and buzzers, irons, voltage stablilizers, capacitors, condensers, motor starters, super enamel copper wire, Bakelite sheet, miniature circuit barkers, fuses and fuses units, switch gears, circuit boards, panel accessories, current transformers, refrigeration controls, industrial fittings, tubes and lamps, conduit P.V.C. pipes / accessories, film, glass fabric tapes and cloth, leatheroid and press paper, mica and micanite products, E-class shoes, empire and varnished class sleevings, telephone, tel-exchange, wireless and intercom parts and accessories distribution boxes, O.C.B and A.C.B., fans motors and fluorescent fixtures included in class 9 as a proposed to be used mark. The mark was advertised before acceptance subject to association of the applicants (respondents) already registered trade mark No.460507, in Trade Marks Journal No.1174 dated 01.03.1998 at page No.314. The trade mark was proposed to be used.

3. The appellant herein opposed the registration on the ground that the grant of registration would be in contravention of the provisions of the Act. The second respondent filed its counter statement to the notice of opposition. On completion of the formal procedure, the Registrar heard the matter and passed the impugned order. The registration was granted on the ground that the applicant i.e. the second respondent was already a registered proprietor of the said impugned trade mark used in respect of the same description or allied or cognate goods under section 12(3) of the Act and was also using the trade mark as a part of their trading style. The second respondents adoption is honest as they are the registered proprietors of the trade mark as early as 1990. The second respondent, therefore, can claim to be the proprietor of the trade mark and therefore, registration allowed under section 18(1) of the Act.

4. Aggrieved by the said order, the opponent filed the instant appeal before the Honble High Court of Delhi in CM (M) No.70 of 2002 and subsequently transferred to this Appellate Board in terms of provisions of section 100 of the Trade Marks Act, 1999 and re-numbered as TA/187/03/TM/DEL.

5. The appellant is engaged in the business of manufacturing and selling ‘insulated wires and cables (electric) under the trade mark ‘CAPITAL since 1974. The appellant is the registered proprietor of the trade mark CAPITAL under No.326665 in class 9 as of 02.07.1977 which is subsisting as on date. The mark was registered in the name of the partnership firm earlier and now after the retirement of one partner, the concern is a sole proprietorship concern and necessary steps have been taken to bring on record the changes which is pending before the Registrar. The sales figure of the appellants business runs to several lakhs of rupees. The second respondent has field the impugned application for registration on 18.06.1990 as a proposed to be used mark. The appeal is filed on the following grounds:-

a) the impugned order is not maintainable as it is contrary to the provisions of law;

b) passing of the impugned order has resulted in miscarriage of justice;

c) the first respondent has not considered the various averments of the appellant;

d) the registrar erred in not appreciating the facts of the case;

e) the impugned order is contrary to the well established principles of law;

f) the registrar ignored the evidence produced by the appellant;

g) the registrar has passed the impugned order and made the appellants prior registration ineffective which is contrary to the provisions of law.

h) that the registrar wrongly held that the case of the second respondent was covered under “any other special circumstances.”;

i) the registrar failed to consider the interest of the ultimate consumer.

j) the registrar ignored the fact that the appellant was already a registered proprietor of the trade mark as of the year 1977.

k) The registrar failed to consider the fact that the second respondent was incorporated in 1985 much after the appellants trade mark was registered.

l) the registrar failed to apply the principles of “ejusdem generies”

m) the registrar failed to put any reasonable or logical limitation and condition while permitting the application of the second respondent.

n) The registrar failed to consider the fact that the second respondents adoption was dishonest as the appellants mark was already on the Register;

o) that the impugned order suffers from legality and is liable to be set aside;

p) the registrar erred in holding the second respondents use as honest as there was no evidence of use on the date of application as it was a proposed to be used mark;

q) the registrar failed to appreciate that there was no evidence at all showing that the trade mark CAPITAL was associated with the second respondent.

6. The second respondent filed their counter statement generally denying all the allegations made in the grounds of appeal. The instant appeal is not maintainable in law nor on facts. They had been using the trade mark CAPITAL since the year 1986 without any interruption. The mark of the second respondent has acquired distinctiveness on account of long and continuous use. The mark was duly advertised and has thus gained good reputation among the public. The sales figures of the second respondents business runs to several crores of rupees. The second respondent, therefore, prayed that the appeal be dismissed with exemplary costs.

7. We have heard learned counsel Shri M.L.Mangla for the appellant and learned counsel Shri S.K.Bansal for the second respondent in the Circuit Bench sitting at Delhi on 15.12.2009.

8. Learned counsel for the appellant contended that they adopted the trade mark as early as 1974 and applied for registration on 02.07.1977 and obtained registration in respect of cables and wires. Whereas the second the respondent filed the impugned application on 18.06.1990 as a proposed to be used mark. The counsel referred to number of judgments in support of his case that the second respondents registration in respect of other classes will not help the second respondent to get the trade mark registered in class 9. The “other special circumstances” was misunderstood by the registrar.

9. Learned counsel for the second respondent pointed out to the impugned trade mark application at page 41 of the appeal and at page 43 of the appeal and pointed out that in the year 1986 itself they had made an application for registration in respect of measuring apparatus and instruments including energy meters in class 9. The counsel pointed out to the averments made in the notice of opposition where they had averred that they were engaged in the business of manufacturing and selling insulated wires and cables since 1974. The counsel further submitted that the appellant has filed rectification application against the second respondents registered trade mark No.1064931 in class 9. The counsel further submitted that the trade mark CAPITAL was registered in their name under other applications but the same were not challenged by the appellant. The appellant had not filed any rebuttal before the Registrar. The invoices did not bear the trade mark. The counsel finally relied on judgments in support of his contentions.

10. In rejoinder to counter the arguments of the second respondent, the counsel for appellant submitted that the statement that the goods are allied and cognate is not correct as they have stated in the counter-statement filed before the registrar that the goods are entirely different. The rights can be determined only on the date of application, but here the user was proposed on the date of application and so no right of use has accrued. The Registrar has not observed about the non mentioning of the trade in the sales invoices. The judgments relied on by the second respondent is not relevant to the case on hand.

11. We have heard and considered the arguments of the counsel and have gone through the pleadings and documents. The rival marks are identical except for a writing style, where the opponents i.e. the appellants is in the usual way of writing, the applicants i.e. the second respondents are in a stylish manner. When the marks are identical there is every possibility of confusion or deception being caused. In the instant case, the second respondents have registered the trade mark in their favour as early as 1990 in respect of similar goods. The second respondents are the proprietors of the trade mark CAPITAL in respect of goods which are allied and cognate to the goods for which the registration is granted. Hence under section 12(3) of the Act, the second respondent is entitled to have the registration granted under special circumstances.

12. The other aspect is that the trading style of the second respondent i.e. M/s Capital Meters Limited is a prominent feature of the mark. This fact is to be considered as the other special circumstances to qualify for registration under section 12(3) of the Act. This aspect has been dealt and decided by the Supreme Court in London Rubber Company Vs. Durex Products Inc. and Anr - AIR 1963 SC 1882 which constituted the part of the trading style of the respondents company, namely DUREX products Incorporated, it was observed – “The High Court has, however, considered the alternative ground on which the registration has been ordered. The ground is the existence of special circumstances.”

13. The fact that the mark is already registered for similar goods and also that the mark CAPITAL which forms part of the trading style of the second respondents company, there exists special circumstances and the impugned trade mark qualifies for registration under section 12(3) of the Act.

14. The impugned registration will not, therefore, be attracted by the prohibition under the provisions of sections 11(a) and 12(1) of the Act. The other issue is whether the mark qualifies for registration as per the provisions of section 18(1) of the Act. Section 18(1) of the Act provides that the person who makes an application for registration should have a definite claim of proprietorship. The second respondents are the registered proprietors of the trade mark in respect of allied and cognate goods. We have perused the documents filed by the second respondent to prove their user as well as the certificate of registration is perused. The second respondents thus are the proprietors of the trade mark and the application, therefore, qualifies for registration under section 18(1) of the Act.

15. We, therefore, find no infirmity in the order of the Assistant Registrar and hence uphold the same. The second respondents are hereby directed to use the trade mark with the logo as directed by the Registrar. Accordingly, the appeal is dismissed with no order as to costs.