A.S. Hameed, Sole Proprietor, No. 10 A.S. Photo Beedi Company and No. 10 A.S. Photo Beedi Company Vs. Abdul Azeez and Sons, Number Ten Beedi Factory, - Court Judgment

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intellectual property rights - prohibition of registration of identical trade mark - section 12 of the trade and merchandise act, 1958 - appellants filed an application for registration in respect of beedies marketed by them for the past nearly 20 years - trade mark had the photo of a boy (son of the first appellant) with name of the appellant written below the photo and the numeral 10 on all four corners of the label and either side of the boy - on advertisement in the trade mark journal, respondents opposed the registration on the ground of using the numeral 10 in respect of the same good - assistant registrar refused registration which was upheld on appeal - hence, the present second appeal - held, trade mark of the appellants did not appear to be identical or deceptively similar to the mark used by respondents, in view of different colour combinations, different layout and a different phonetic and structural representations - respondents cannot claim exclusive right to use of numeral 10 as numeral 10 was used in the labels of other traders of the same goods - focus is on numeral 10 in the label of the respondents, while it was not so in the label of the appellants - appeal allowed intellectual property rights - misrepresentation - photo of a boy (son of appellant) with his name - held, misrepresentation, unless it materially affects the minds of the public in deciding whether or not to buy the goods, cannot be said to be disentitled to protection - in present case, there was no misrepresentation and even if, by a figment of imagination, the photograph and the name were taken to be a misrepresentation, it was not one which had something to do with the character or quality of the goods and it was not one which would materially affect the minds of the public in deciding whether or not to buy the goods - appeal allowed constitution - jurisdiction - scope of interference - held, where the registrar has not exercised his discretion judicially, or where he has acted on wrong principles or has taken into account irrelevant factors or failed to consider relevant factors, his order is liable to be set at naught - - 5. we have carefully considered the rival submissions and also gone through the pleadings of both the parties and the evidence let in by them as well as the case law cited by them. the numeral 10 is printed on all four corners of the label as well as on either side of the picture of the boy. as a matter of fact, the objection of the contesting respondents to the mark of the appellants, has arisen solely on account of the use of the numeral 10. paragraph-2 of the notice of opposition filed by the contesting respondents, in form tm-5 as early as on 28.8.1989, makes it clear that their objection centred around the use of numeral 10. 8. coming to the objection relating to the numeral 10, contained in both the marks, we are of the view that the contesting respondents cannot claim exclusive right to use numeral 10. while numeral 10 is printed in only one place, prominently at the centre of the label of the contesting respondents, the same is printed, though not prominently, in the four corners of the label and on both sides of the picture of the boy as well as in the flaps, in the label of the appellants. curiously, the registrar did not even choose to examine the bills, vouchers and other documents as well as the turnover particulars furnished by the appellants. it was also held in the same judgment that even the volume of honest concurrent use is of no significance and 'even a small trader is entitled to protection of his trade mark if there is honest concurrent use'.but the registrar as well as the learned judge did not go into detail in respect of the claim made by the appellants regarding honest concurrent use, with reference to any of these salient features. 15. coming to the scope of the high court to interfere with the orders of the registrar, it is by now well settled that where the registrar has not exercised his discretion judicially, or where he has acted on wrong principles or has taken into account irrelevant factors or failed to consider relevant factors, his order is liable to be set at naught. in the case on hand, the registrar has failed to apply his discretion judicially while considering the usage of numeral 10. he has also failed to take into account relevant factors, but took into account irrelevant factors while deciding the question of honest concurrent use.v. ramasubramanian, j.1. the appellants, whose application for registration of a trade mark, in class 34 in respect of beedies, was rejected by the registrar of trade marks and whose regular appeal in t.m.a. no. 2 of 1996 also got dismissed by the learned judge of this court, have filed the above trade mark second appeal.2. the brief facts, leading to the above appeal are as follows:(a) on 13-9-1982, the appellants submitted an application for registration of a trade mark, in respect of beedies marketed by them, known as ' no. 10, a.s. photo beedi' with the photo of a boy printed in the centre and no. 10 displayed on all four corners of a label. the appellants claimed user of the mark from 15-9-1974.(b) after the release of the advertisement in the trade marks journal on 16-7-1989, the respondents 1 and 2 served notice of opposition on 28.8.1989 on the ground that they are the proprietors of a registered trade mark containing numeral 10, in respect of the same class of goods namely beedies and that the proposed trade mark of the appellant was deceptively similar to their registered mark.(c) therefore the assistant registrar conducted an enquiry and passed an order dated 15-3-1995 refusing to register the trade mark of the appellants. challenging the said order of the assistant registrar, the appellants filed t.m.a. no. 2 of 1996, but the same was also dismissed by the learned judge, by an order dated 25-3-1998. therefore the appellants have preferred this second appeal.3. assailing the orders of the assistant registrar and the learned judge, mr. a.a. mohan, learned counsel appearing for the appellants contended -(i) that the trade mark of the appellants and that of the respondents 1 and 2 are not deceptively similar(ii) that the numeral 10 appearing on the label used by the appellants and the one used by the contesting respondents are totally different and at any rate the respondents cannot claim exclusive right to use the numeral 10(iii) that numeral 10 appears on the labels used by atleast four other registered proprietors of trade mark in respect of the same goods namely beedies(iv) that the appellants applied for registration, claiming user of the mark in question from 15-9-1974 and hence they come under the category of 'honest concurrent user' as seen from the bills and vouchers produced and(v) that the respondents 1 and 2 have not so far initiated any proceedings against the appellants for infringement in the past 30 years.4. per contra, mr. m.k. rao, learned counsel for the contesting respondents 1 and 2 contended -a) that the marks should be looked at as a whole and a side by side comparison is not proper and if so viewed, the mark of the appellants is deceptively similar to that of the contesting respondents;b) that the scope for interference with the decision of the registrar of trade marks is limited to the extent of seeing whether the registrar had approached the problem in the right way or has taken into consideration materials which he ought not to have taken into consideration or omitted to take into account relevant factors; andc) that the trade mark of the appellants contained the picture of a boy beneath which, the name 'a.s. hameed' was written, and which happened to be a false and misleading information, disentitling the appellants to have it registered.5. we have carefully considered the rival submissions and also gone through the pleadings of both the parties and the evidence let in by them as well as the case law cited by them.6. it is seen from the trade mark, of which registration was sought for by the appellants, that it contains the bust size photograph of a boy with the name 'a.s. hameed' written prominently below the picture. the numeral 10 is printed on all four corners of the label as well as on either side of the picture of the boy. on both sides of the picture of the boy, the words ' no. 10 a.s. photo beedi' appears, in tamil on the left side and in malayalam on the right side. the label is printed with a colour combination of yellow background with the words printed in red colour and ' no. 10' printed in blue background. on the other hand, the contesting respondents use two different labels. one of them has a colour combination of white background with blue borders and the words 'azeez beedi' appearing in english, hindi, telegu, kannada and urdu. the numeral 10 appears prominently at the centre of the label. the other label used by the contesting respondents has a red background with numeral 10 appearing prominently at the centre in a blue coloured box and the words 'azeez' and 'beedi' appearing on either side of the numeral.7. in our considered view, the trade mark of the appellants do not appear to be identical or deceptively similar to the mark used by the contesting respondents, in view of different colour combinations, different layout and a different phonetic and structural representations. as a matter of fact, the objection of the contesting respondents to the mark of the appellants, has arisen solely on account of the use of the numeral 10. paragraph-2 of the notice of opposition filed by the contesting respondents, in form tm-5 as early as on 28.8.1989, makes it clear that their objection centred around the use of numeral 10.8. coming to the objection relating to the numeral 10, contained in both the marks, we are of the view that the contesting respondents cannot claim exclusive right to use numeral 10. while numeral 10 is printed in only one place, prominently at the centre of the label of the contesting respondents, the same is printed, though not prominently, in the four corners of the label and on both sides of the picture of the boy as well as in the flaps, in the label of the appellants. in other words, the focus is on numeral 10 in the label of the respondents, while it is not so in the label of the appellants. moreover, it is seen that the numeral 10 is used in the labels of other traders of the same goods viz., beedies, some of whom have also got their trade marks with numeral 10 registered with the registrar. two persons by name puran chand and lakshman prasad, trading as 'the crown biri factory' have got their trade mark with numeral 10 appearing promptly in the centre of the label, got it registered on 10.11.1942. similarly, one gulab chand bhaiyalal jain of ahmedabad got his trade mark registered with the numeral 10 printed below the portrait of a person, on 26.9.1977. two persons by name govind ram and gopal dass trading as govind ram lakshman prasad and also trading as 'crown biri factory' got a mark registered with numeral 10 appearing all over the label in several places. the words 'rocket-ten' and 'rocket 10' got registered as a trade mark by american brands, inc., care of m/s. remfry and son, calcutta in october 1971. therefore, the contesting respondents are not entitled to claim exclusive use of numeral 10 and consequently, they cannot object to the use of numeral 10 by the appellants in their label.9. we find from the order passed by the assistant registrar and the order of the learned judge that much ado has been made about the picture of the boy in the label used by the appellants. admittedly, the picture contained in the label is that of the 1st appellant's son and the name 'a.s. hameed' found below the picture is that of the 1st appellant. therefore, both the registrar and the learned judge have proceeded on the footing that there was a false representation on the part of the appellants in printing the picture of the 1st appellant's son, but giving the father's name under the same. but we find that there is no false representation on the part of the appellants. in the affidavit sworn to by the appellants on 21.9.1988, which accompanied their application for registration, the appellants have stated that their label contains the device of a man's bust. they did not state in the affidavit that it was the bust of the 1st appellant. in the counter statement filed by the appellants in form tm-6 to the opposition filed by the contesting respondents on 23.12.1989, the appellants have categorically stated in para-1 that the label contains the photo of the 1st applicants' son. therefore, there was virtually no false representation on the part of the appellants in printing the photograph of the 1st appellant's son and printing the name of the 1st appellant at the bottom of the photo.10. in connection with the said controversy about the photograph, the learned counsel appearing for the contesting respondents brought to our notice a passage from the book on trade marks by mr. p. narayanan, to the effect that a trade mark, which contains a false or misleading statement, is not entitled to protection. but the same book contains another passage to the effect that 'a distinction must be drawn between a misrepresentation which affects the character or quality of the goods and a misrepresentation which has no relation to the character or quality of the goods'. the misrepresentation, unless it materially affects the minds of the public in deciding whether or not to buy the goods, cannot be said to be disentitled to protection. in the case on hand, there is no misrepresentation and even if, by a figment of imagination, the photograph and the name are taken to be a misrepresentation, it is not one which has something to do with the character or quality of the goods and it is not one which would materially affect the minds of the public in deciding whether or not to buy the goods. therefore, the orders of the registrar and the learned judge taking the photograph and the name found below the photograph, to be a false representation, disentitling the appellants to registration, are not legally correct.11. even at the time of filing the application on 13.9.1982, the appellants have claimed that they have honestly adopted the trade mark concurrently and have been using the same in connection with beedies ever since 15.9.1974. in para-3 of the affidavit filed in support of their application dated 13.9.1982, the appellants have furnished details of their sales turnover for the years 1975-76 to 1981-82 and also annexed bills, advertisements etc. in support of their claim. the contesting respondents, in their notice of opposition have claimed to have had knowledge of the use of the trade mark by the appellants, from august 1988 and admittedly, the respondents had issued a legal notice to the appellants. but till date, the contesting respondents have not initiated any legal proceedings against the appellants. as a matter of fact, the appellants sought to invoke the provisions of section 12(3) of the act, on the ground that there has been an honest concurrent use of the trade mark. the plea of the appellants is that even if the registrar was of the opinion that their mark was identical with or deceptively similar to the mark of the contesting respondents, their application should have been considered atleast under section 12(3) of the act. unfortunately, that plea was rejected by the registrar on the flimsy ground that in their application for registration, the appellants had given a description of themselves as ' no. 10 a.s. photo beedi works', but had described themselves as ' no. 10 a.s. photo beedi company' in the statement and bills and vouchers. it is no one's case that ' no. 10 a.s. photo beedi works', and ' no. 10 a.s. photo beedi company' are different establishments. therefore the denial of the benefit of honest concurrent user to the appellants, on this sole ground, is not legally sound. curiously, the registrar did not even choose to examine the bills, vouchers and other documents as well as the turnover particulars furnished by the appellants. the learned judge fell into the same error in reasoning and denied the benefit of honest concurrent user to the appellants.12. coming to the legal aspect of honest concurrent use, it is seen that section 11(a) of the trade and merchandise marks act, 1958 prohibits the registration of a mark, 'the use of which would be likely to deceive or cause confusion' and section 12(1) prohibits the registration of a trade mark 'which is identical with or deceptively similar to a trade mark already registered in the name of a different proprietor in respect of the same goods or description of goods'. but sub-section (3) of section 12 carves out an exception to the said general prohibition. sub-section (3) of section 12 reads as follows:12. prohibition of registration of identical or deceptively similar trade marks(1) ...(2) ...(3) in case of honest concurrent use or other special circumstances which, in the opinion of the registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the registrar may think fit to impose.the law relating to 'honest and concurrent use' was summed up in kores (india) ltd. v. khoday eshwarsa and son and anr. 1984 a. l.r. 213 as follows:11. from the decided cases, it can be gathered that the facts which are to be taken into account to determine whether the mark is entitled to registration under sub-section (3) of section 12 of the act are as follows:(1) the honesty of the concurrent use;(2) the quantum of concurrent use shown by the petitioners having regard to the duration, area and volume of trade and to goods concerned;(3) the degree of confusion likely to follow from the resemblance of the applicants' mark and the opponents' mark;(4) whether any instance of confusion have in fact been proved, and;(5) the relative inconvenience which would be caused to the parties and the amount of inconvenience which would result to the public if the applicants' mark is registered.13. in london rubber co. ltd v. durex products ptc suppl. (1) 246 (sc) the supreme court held that section 10(2) of the trade marks act, 1940 (corresponding to section 12(3) of the trade and merchandise marks act, 1958) permitted the registrar 'to admit registration of marks which are identical or nearly resemble one another in respect of the same goods or description of goods provided he is of the opinion that it is proper to do so because there was honest concurrent use of the mark by more than one proprietor or because of the existence of special circumstances.' the supreme court further held in the said case that the provisions of section 10(2) (of the old act), were by way of exception to the prohibitory provisions contained in the act and hence they over ride the provisions of section 8(a) and 10(1) of the old act. it was also held in the same judgment that even the volume of honest concurrent use is of no significance and 'even a small trader is entitled to protection of his trade mark if there is honest concurrent use'. but the registrar as well as the learned judge did not go into detail in respect of the claim made by the appellants regarding honest concurrent use, with reference to any of these salient features.14. as rightly pointed out by the learned counsel for the appellants, the contesting respondents have not pulled the appellants to a court of law or obtained a prohibitory order against the use of their trade mark, for the past more than two decades. the mere mix up of the words ' no. 10 a.s. photo beedi works' and ' no. 10 a.s. photo beedi company' would not make the concurrent use of the appellants, a dishonest one, so as to deprive them of the benefit of section 12(3) of the act. the contesting respondents, by their long silence and inaction, have actually acquiesced to the use of the mark by the appellants.15. coming to the scope of the high court to interfere with the orders of the registrar, it is by now well settled that where the registrar has not exercised his discretion judicially, or where he has acted on wrong principles or has taken into account irrelevant factors or failed to consider relevant factors, his order is liable to be set at naught. in the case on hand, the registrar has failed to apply his discretion judicially while considering the usage of numeral 10. he has also failed to take into account relevant factors, but took into account irrelevant factors while deciding the question of honest concurrent use.16. therefore in our considered view, the orders of the registrar dated 15.3.1995 and of the learned judge in tma no. 2 of 1996 dated 25.3.1998 are liable to be set aside. accordingly, these orders are set aside and the above appeal shall stand allowed without any order as to costs.