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Judgment
Z.S. Negi, J
The above appeal under Section 109 of the Trade and Merchandise Marks Act, 1958, hereinafter referred to as the Act, is directed against the
order dated 14.8.2002 passed by the Assistant Registrar of Trade Marks, Delhi, allowing the application No. 497818B filed by the respondent No. 1 to
proceed for registration and dismissing the opposition No. DEL-T-7/50303 filed by the appellants. The Hon'ble High Court of Delhi has, pursuant to
the provisions of Section 100 of the Trade Marks Act, 1999, transferred the appeal being C.M. (Main) 54 of 2003 on its file to the Intellectual
Property Appellate Board and the Appellate Board has renumbered the said appeal as TA/197/2003/TM/DEL.
The case of the appellant is that it is a corporation organized and existing under the laws of the State of Delaware, U.S.A. and that the appellant
entered into a joint venture with Birla Group and formed a joint venture company known as Birla 3M Ltd., Bangalore. The appellant and the said joint
venture Birla 3M, have been using the trade mark SCOTCH in India on their products for the past more than twenty years.
3 The appellant is the registered proprietor of following SCOTCH trade marks in India:
It is stated that the respondent No. 1 filed application No. 497818B on 14.9.1988 for registration of trade Mark SCOTCH (word per se) in class 09
in respect of electrical wires, electrical cables and electrical fittings and accessories thereof. The trade mark, on the date of application, was proposed
to be used and the said application was advertised before acceptance in the Trade Marks Journal No. 1121 dated 16.2.1996 at page No. 3135.
Thereupon, Minnesota Mining and Manufacturing Company, the appellant on 10. 4.1996 filed an opposition No. DEL-T- 7/50303 against the said
application and the respondent No. 1 on 1.9.1997 filed its counter-statement to the notice of opposition. The appellant filed the affidavit dated
16.11.1999 of Ms. Carolyn A. Bates, Assistant Secretary of the appellant, annexing an exhaustive list of countries where the trade marks SCOTCH
and SCOTCH prefixed trade marks of the appellant are registered or are subject matter of pending applications and copies of certificates of
registration of said trade marks in other countries of world (these documents were not filed before the High Court on the ground of being voluminous)
along with an affidavit dated 16.11.1999 of Mr. M.S. Swaminathan, an officer of Birla 3M Ltd., Bangalore. Mr. Swaminathan in his affidavit in
paragraph 5 has given the sales figures in India in respect of products bearing the trade mark SCOTCH from the year 1989 onwards and has in
paragraph 6 shown Rs. 2,70,000 as the annual promotional and advertisement expenses for the SCOTCH trade mark. The respondent No. 1 by letter
dated 5.6.1999 intimated the Registrar that it did not wish to file evidence under Rule 54 of the Trade and Merchandise Marks Rules, 1959,
(hereinafter referred to as the Rules), in support of its application and would rely on the submissions made in the counter-statement. The appellants,
however, claimed that the counter-statement of the respondent No. 1 only contained bald statements and allegations without a single document in
support thereof. The opposition filed by the appellants was dismissed by the respondent No. 2 by his order dated 26.12.2001 and aggrieved by the said
order the appellants filed a Civil Miscellaneous Main Petition No. 135 of 2002 in the High Court of Delhi against the said order dated 26.12.2001 of the
respondent No. 2. The said Civil Miscellaneous Main Petition No. 135 of 2002 was disposed of by the Hon'ble High Court by order dated 10.4.2002
remanding the case to the Registrar of Trade Marks, the relevant portion of the order reads as under:
But whenever such documents are accepted and are likely to be acted upon by the court, the opposite party is supposed to be put on notice and should
be given an opportunity of being heard on the fresh documents which were filed and shown. There is no doubt about one aspect that while the
Respondent filed the document, the Petitioner failed to produce any additional documents as was desired by the Assistant Registrar, meaning thereby
that the Petitioner did not intend to file any additional evidence. Now the question of filing additional evidence would not arise any further as learned
Counsel for the Petitioner does not want to file any additional evidence. In the aforementioned circumstances, the only appropriate course is that the
matter should be remanded to the Registrar of Trade Marks for deciding the matter afresh within a period of 45 days from the date of receipt of this
order after giving opportunity to both the parties' counsel to argue in view of the subsequently filed documents produced by the Respondent.
In compliance with the above extracted order, the Assistant Registrar after hearing the agents of the parties dismissed the opposition by order dated
14.8.2002. Aggrieved by the said order, the appellants have preferred the instant appeal.
The instant appeal is on the grounds, inter alia, that the respondent No. 2 failed, to consider the veracity and evidentiary value of the documents filed
by the respondent No. 1 and, to appreciate the effect of such documents which did not prove that the respondent No. 1 has been selling its goods
under the trade mark SCOTCH and that the respondent No. 2 has misdirected himself in the proceedings and failed to consider/follow the well settled
rule of law while considering the merits of application and opposition thereto and failed to consider the evidence led by the parties especially when the
invoices of respondent No. 1 did not find any mention of trade mark SCOTCH any where and as such the conclusion that the respondent No. 1 had
been using the trade mark SCOTCH on its goods since the date of its application dated 14.9.1988 and such goods of respondent No. 1 are totally
different goods i.e. electrical wires, electrical cables and electrical fittings and, there is no question of confusion and deception is wrong; that the
finding of the respondent No. 2 that ""the case argued and pleaded by the opponents is in the capacity of a firm styled as MINNESOTA MINING
AND MANUFACTURING COMPANY whereas the trade name of opponent's is Minnesota Mining and Manufacturing Co."" is totally erroneous
and that the respondent No. 2 has been unduly influenced by the name of the appellant and made an erroneous observation at page 6 of the impugned
order; that the finding that SCOTCH is a dictionary word which any one can adopt and the application is for registration in Part B of the register,
therefore, respondent No. 1 is proprietor of the mark within 18 (1) of the Act is totally erroneous and that the respondent No. 2 ought to have followed
the established judicial dictum of one mark one source and one proprietor. In short the appellant had opposed the application for registration of the
respondent No. 1 on the grounds of Sections 9, 11 (a) and (e), 12 (1) and 18 (1) of the Act but the opposition was wrongly dismissed by the
respondent No. 2.
No reply/counter-statement to the appeal appears to have been filed by the respondent No. 1 and the Registry of Trade Marks, despite notice, have
not forwarded the documents of the case. The appeal came up before us for hearing on 21.4.2009 when Shri Ajay K. Gupta, Senior Advocate and
Shri J.V. Abhay, Advocate appeared for the appellants and Shri S.K. Bansal and Shri Saurab Kapoor, Advocates appeared for the respondent No. 1
and both sides agued the matter at length.
Shri Ajay Gupta, learned senior counsel, contended that the respondent No. 1 has claimed user of the trade mark SCOTCH from 14.9.1988, the
date on which it applied for registration of the mark as proposed to be used but the copies of invoices placed on record at pages 58 to 94 do not
contain any mention of trade mark SCOTCH on any of them. The claim of the respondent No. 1, in paragraph 5 of the Form TM-6, that it has widely
advertised the said trade mark through different media such as advertisement in newspapers, distribution of trade literatures and trade novelties and
that it has already spent substantial sums of money on publicity of the said trade mark and in consequence thereof the said trade mark enjoys solid and
enduring reputation in the market is a bald statement without an iota of documentary proof. On the face of copies of the invoices, etc. on record, the
respondent No. 2 has surprisingly observed, by failing to appreciate the veracity and evidentiary value thereof, that he has perused the original
documents of the respondent No. 1 and scrutinized them minutely and found that the respondent No. 1 has been using the mark on their goods, is
frivolous, which is made without taking into cognizance of the fact that the mark SCOTCH does not find mention on any of the invoices adduced by
the respondent No. 1. Thus, the observation of the respondent No. 2 that the respondent No. 1 has been using the mark SCOTCH on their goods soon
after making the impugned application in the Trade Marks Registry on 14.9.1988 is contradictory to the records and is totally erroneous. The veracity
and evidentiary value is not free from doubts as no reasonable inference could be drawn that they pertain to vendible goods of the respondent No. 1
under the trade mark SCOTCH as the respondent No. 1 appear to own another trade mark MAYUR for PVC cables, etc. and the mention of PVC
wires, etc. are there on the invoices (though no disclosure of MAYUR trade mark is made in Form TM-6), as such the invoices do not pertain to
SCOTCH trade mark, therefore, the appeal deserves to be allowed on this ground alone.
Learned Counsel for the appellant contended that the observation of the respondent No. 2, that since the applicant's goods i.e. electrical wires and
electrical cables are totally different from the goods of the opponents covered under their so-called registered trade marks, the question of confusion
and deception does not arise, is not sustainable. Relying on the decision of Bombay High Court in Sunder Parmanand Lalwani and Ors. v. Caltex
(India) Ltd. AIR 1969 Bombay 24 he submitted that in deciding the question of likelihood of deception or confusion, all factors which are likely to
create or allay deception or confusion must be considered in combination. The factors creating confusion, broadly, are the nature of the mark itself, the
class of customers, the extent of reputation, the trade channels, the existence of any connection in the course of trade, and several others to which the
respondent No. 2 has not taken into consideration while arriving at such finding. By failing to consider all factors, the respondent No. 2 has, even after
observing that the registered trade mark of the appellant have acquired reputation, come to the conclusion that the goods of both parties are of totally
different description and as such the case of the respondent No. 1 fall in the ambit of judgment passed in Vishnudas Trading as Visnudas Kishendas v.
Vazir Sultan Tobacco Ltd. Hyderabad and Anr. 1996 PTC 512 SC. The ratio of the judgment of Supreme Court in Vishnudas case is not applicable in
the case on hand. He submitted that only on the difference of description of the goods of the respondent No. 1 from the description of the goods of
appellant is no proof that there is no likelihood of deception or causing confusion. Relying upon the decision in the National Sewing Thread Co. Ltd.,
Chidambaram v. James Chadwick and Bros. Ltd. AIR 1962 Sc 357 the learned Counsel submitted that the burden of proving that the trade mark
which a person seeks to register is not likely to deceive or cause confusion is upon the applicant but in the instant case the respondent No. 1 has failed
to discharge that burden. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of
ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he
would connect the trade mark with the goods which he would be purchasing. Again, relying on the decision in Sunder Parmanand Lalwani's case
(supra), the learned Counsel submitted that the appellants are a large company known by many as having large resources, and therefore, capable of
starting any new industry or trade and because of that reason, there is great probability of public associating the goods of respondent No. 1 as
emanating from the appellants or believing that any goods with the trade mark SCOTCH on them would be the goods of the appellants. He further
submitted that the registration of mark applied for by the respondent No. 1, if allowed would dilute the distinctiveness, well reputed and well-known
trade mark of the appellants. To buttress his plea of reputation and well-knownness of the appellants mark SCOTCH, learned Counsel, by taking us
through the affidavit of Mr. M.S. Swaminathan, an officer of Birla 3M, Bangalore, pointed out that in paragraph 5 of the affidavit it is stated that Birla
3M company is using the SCOTCH trade mark in India since the year 1989 by that company under license from the appellant and goods under the
said trade marks are manufactured in accordance with the specifications and standards of quality laid down by the appellant, and has also furnished
sales figures of products bearing the trade mark SCOTCH which was Rs. 22,434 in the year 1989 and progressively rose to Rs. 2,700,000 till
September in the year 1999, and the company annually spends about Rs. 270,000 towards promotion and advertisement expenses in relation to
products bearing the SCOTCH trade mark. He drew our attention to an averment made in sub-paragraph (c) of paragraph III of the affidavit of Ms.
Carolyn A. Bates, Assistant Secretary of the appellant that the appellant is using one of its SCOTCH trade marks i.e. SCOTCHFLEX in India since
the year 1988 on electronic cable connectors, clips and ducts which will certainly qualify to be the goods of identical description as those covered
under the impugned mark. She further states in that para that the identical description of goods would in all probability lead to confusion and/or
deception as the goods under the impugned mark also emanate from the appellant and because these goods will pass through the same trade channels
and trade network, the trade and public are likely to assume that the goods of the respondent No. 1 origins from the appellant. The facts, circumstance
and the evidence on record establish the use, which in turn establishes the distinctiveness of the mark and the reputation accrued to the appellants'
trade mark. In fact the respondent No. 2 has, in his previous order dated 26.12.2001 at page 6, admitted the reputation acquired by the appellant by
observing that ""Though the opponents have acquired reputation in respect of their registered trade marks referred to above but in view of the goods as
applied for under the impugned application the chances of confusion and deception are remote."" Learned senior counsel pointed out that some of the
appellant's trade mark 'SCOTCHLITE', 'SCOTCHGARD' and 'SCOTCH TAPE' are mentioned in the Oxford Dictionary (OXFORD University
Press) which shows the well-known status of the appellant's trade mark and that the mark has acquired such a well-known status or reputation that it
has found entry in the English Dictionary. In the case of New Kids on the Block v. News Am. Pub. Inc. 971 F.2d 302 : 9th Cir. 1992 the US Circuit
Court at page 2, while referring to the well-known trade marks, has mentioned Scotch tape, the trade mark of the appellant. All the above, go to
establish beyond doubt that the appellants' trade mark has been in use, acquired distinctiveness, rather secondary meaning, and reputation and is a
well-known trade mark, whereas the impugned trade mark of the respondent No. 1 has no evidence of user, leave aside the distinctiveness or
reputation attached thereto.
Learned senior counsel contended that the respondent No. 2 is unduly influenced by the name of the appellant, particularly by the word 'Mining' as
he has dismissed the appellants' opposition mainly on the ground that because the appellants' name is ""MINNESOTA MINING AND
MANUFACTURING CO."" only, the business of mining can be associated with the appellant and not the trade mark SCOTCH or the self adhesive
tapes being sold by the appellant under the trade mark SCOTCH and the appellants business and manufacturing activities. The learned Counsel drew
our attention to the observation made by the respondent No. 2 at page 6 of the impugned order, which reads thus:
If the principle laid down in the above stated cases are applied to the present case, then the very objective of opponents' firm is to engage themselves
in the goods which are related only with mining. This is apparent from the trade name of the opponent company i.e. M/s. MINNESOTA MINING
AND MANUFACTURING CO., of which word ""AND"" is very important and the dictionary meaning of the word ""AND"" is to be taken jointly.' He
further contended that the finding of the respondent No. 2 that the case argued and pleaded by the opponents is in the capacity of the firm styled as
MINNESOTA MINING AND MANUFACTURING COMPANY whereas the trade name of the opponent's is Minnesota Mining and
Manufacturing Co. The observation made as above is totally erroneous, confusing and it is clear that the respondent No. 2 was confused while
drawing such inference from the name of the appellant. Reliance placed upon the judgment in the Vishnudas case (supra) to hold that under the
circumstances the case of the applicant is duly covered by the law laid down in that case is erroneous as the facts the present case are
distinguishable.
Learned senior counsel submitted that the evidence led by the parties in support of their respective cases have not been considered by the
respondent No. 2. He failed to appreciate that while the appellant had led cogent evidence by way of affidavits, list of countries where SCOTCH or
SCOTCH prefixed trade marks of the appellant are registered or applications pending for registration, copies of certificates of registration, invoices in
respect of sale of goods under the trade mark SCOTCH in India and the annual sales promotional and advertisement expenses, but the respondent
No. 1 had not adduced even a shred of evidence before the respondent No. 2 to support any of the claims made by the respondent No. 1 in its
counter-statement. In the absence of any evidence of user on record, the findings of the respondent No. 2 that the respondent No. 1 ""are the true
proprietor of the mark within the ambit of Section 18(1) of the Act"" and after minutely scrutinising the documents found that the respondent No. 1 had
started using the impugned mark soon after making application in the Trade Marks Registry on 14th September, 1988"" is perverse. The claim of
proprietorship in a trade mark has to be proved according to the rules of evidence like any other fact in issue. The adoption of mark SCOTCH by the
respondent No. 1 is not honest and bona fide and there is no explanation from the respondent No. 1 for its adoption of mark which is identical to the
appellants' mark especially when the respondent No. 1 was already using other trade marks such as MAYUR in respect of its products. The evidence
of the appellant mentioned here before established beyond the shadow of doubt that the appellant had been using SCOTCH and SCOTCH prefixed
trade marks much prior to the date of the application for registration made by the respondent No. 1. Learned Counsel relying on the decision of the
Madras High Court in Mohan Goldwater Breweries (Private) Ltd. v. Khoday Distilleries Private Ltd. and Anr. (1977) 2 P.L.R. 83 and E. Griffiths
Hughes Ltd. v. Vick Chemical Co. AIR 1959 Calcutta 654 submitted that for the purpose of registration of a trade mark, the rights of the applicants
are to be usually determined as on the date of the application. The respondent No. 1 has not adduced any evidence to prove user of the impugned
mark since the date of application up till the present date and hence the claim of proprietary right remained unproved. Whatever evidence the
respondent No. 1 has advanced before the respondent No. 2 could not be said to have evidentiary value in so far as establishing its proprietary rights
in the impugned trade mark SCOTCH is concerned. The evidence in support of application for registration is of post application period and that too do
not prove the use of the impugned trade mark SCOTCH.
Learned senior counsel contended that while considering the provisions of Section 9 of the Act, the respondent No. 2 misdirected him in finding
that the bar of that section does not operate against the application of respondent No. 1 on the ground that the words SCOTCH is a dictionary word
which anybody can adopt. The appellant have produced enough evidence to show that the word SCOTCH has attained a secondary meaning. Inviting
our attention to the trade marks 'SCOTCHLITE', 'SCOTCH CARD' and 'SCOTCH TAPE', learned senior counsel submitted that these trade marks
of the appellant are mentioned as trade marks in the Oxford Dictionary, Thesaurus and Wordpower Guide (OXFORD University Press). The
respondent No. 2 ought to have held that the applicant's trade mark SCOTCH had acquired a secondary significance and attained such a
distinctiveness and reputation that it had found its way into the English dictionary to define it to mean the goods in respect of which it is registered in
favour of the appellants and in view of that the application for same trade mark by the respondent No. 1 could not be allowed. The respondent No. 2
has completely ignored the settled rule of law that where the mark applied for is identical or deceptively similar to the existing registered trade mark,
the application must be refused even though it may be for the different class or description of goods unless the same is covered by the provisions of
Sub-section (3) of Section 12 of the Act. Hence, the finding of the respondent No. 2 that because the word SCOTCH is a dictionary word it can be
adopted by anybody by overlooking the fact that the trade mark SCOTCH had become distinctive of, and exclusively associated and identified with
the appellants' business and goods under the trade mark SCOTCH and grant of registration of the identical mark in favour of the respondent No. 1 is
contrary to the settled law, perverse and suffers from material irregularity.
Shri S.K. Bansal, learned Counsel for the respondent No. 1, submitted that the impugned mark sought to be registered by the respondent No. 1
was adopted on 14.9.1988 and ever since then the same has been used continuously till present. He drew our attention to paragraph 3 of the Form
TM-6 and submitted that the business carried on by the by the respondent No. 1 is a very extensive one and the goods bearing the trade mark
SCOTCH have been practically distributed in major parts of the country. The respondent No. 1 have already spent substantial amount of money
advertisement or publicity of the trade mark SCOTCH by virtue of which the said trade mark enjoys solid and enduring reputation in the markets. The
respondent No. 2, after minutely scrutinizing the originals of the evidence on record, has found that respondent No. 1 have been using the trade mark
SCOTCH on their goods soon after making the impugned application on 14.9.1988. When the respondent No. 2 has recorded in his order that he has
minutely scrutinized the original documents and found that the respondent No. 1 has started using from 14.9.1988, it is obvious that he has considered
the veracity of the evidence on record and satisfied himself about the veracity of such documents/evidence before passing the impugned order.
Learned Counsel for the respondent No. 1 submitted that the competing goods of both the parties are absolutely different and distinct and the
appellants have no user and reputation in relation to their goods. Refuting the averment made in paragraph III (b) of the affidavit of the Assistant
Secretary of the appellant that ""... I say that since my company's SCOTCH trade marks are being used in India on a very wide and extensive scale
and as to the objection of an identical trade mark by the applicants cannot be said to be honest they cannot claim to be the proprietors of the mark
applied for registration. I say that the impugned trade mark is neither adapted to distinguish nor capable of distinguishing the goods of the applicants
and therefore it does not merit registration and deserves to be outrightly dismissed.... I say that my company is using one of its SCOTCH trade marks
i.e. SCOTCHFLEX in India since the year 1988 on electronic cable connectors, clips and ducts which will certainly qualify to be the goods of identical
description as those covered under the impugned mark of the applicants and as a result thereof, the co-¬existence of two marks bearing the word
SCOTCH covering identical description of goods would in all probability lead to confusion and/or deception amongst trade and public as to their source
or origin since they are likely to assume that the goods under the impugned mark also emanate from my company and/or its joint venture company
because these goods will pass through the same trade channels and trade network"", the learned Counsel submitted that the appellants have no
registration or user for trade mark SCOTCH in respect of electrical wires and cables and electrical fittings and these goods of the respondent No. 1
and those of the appellants are different and distinct and, therefore, there is no room for confusion or deception. The respondent No. 2 has after
satisfying himself from going through the entire documents came to the conclusion that the appellants have not manufactured and marketed goods like
electrical wires and electrical cables and most of the goods of the appellants covered under the registration certificates are the goods which are used
in various industrial fields such as mining. Reliance was placed on the decision in Cannon Kabushiki Kaisha v. B. Mahajan and Ors. 2007 (35) PTC
265 (Del.) to submit that though the competing marks are similar the goods are totally different. Learned Counsel submitted that the respondent No. 1
has proved before the respondent No. 2 that the registration of mark applied for by the respondent No. 1 would not deceive or cause confusion and
also proved that the appellants have no user of identical or similar goods or description of goods and where there is no user the question of deception
or confusion does not arise. On the other hand the respondent No. 1 adopted the mark on 14.9.1988 and has been continuously using the same since
then up to the present time without any interruption or interference whatsoever from any corner and it has built up a valuable trade under the said
trade mark. Reliance has been placed by the respondent No. 1 on the decision of the Division Bench of High Court of Delhi in Century Traders v.
Roshan Lal Duggar & Co. and Ors. AIR 1978 Delhi 250 to contend that the priority in use is superior to priority in registration in a passing off action.
Similarly, reliance has been placed upon the decision of the Apex Court in Corn Products Refining Co. v. Shangrila Food Products Ltd. AIR 1960
Supreme Court 142 to contend that the onus of proving user is on the person who claims it and the world-wide registration of the mark claimed by the
appellants does not prove the user as it is not permissible to draw any inference as to their user merely from the presence of marks in the register.
Learned Counsel for the respondent No. 1 submitted that the name of the appellant is M/s Minnesota Mining & Manufacturing Company and
obviously they have been manufacturing the goods pertaining to the mines only, which are used in mining only. If the principles of law laid down by the
Apex Court that the immediate qualification for becoming the proprietor of the trade mark is the distinctiveness and reputation of the trade mark and
which can never be avoided are applied to the present case, then the very objective of the appellants firm is to engage themselves in the goods which
are related only to mining. This is apparent from the trade name of the appellant's company and which name the word 'and' is a very important word
and the dictionary meaning of the word 'and' is to be taken jointly. Having regard to the above in view, the filing of opposition/objection by the
appellant is whimsical and having no locus standi.
Learned Counsel submitted that the respondent No. 1 has adopted the trade mark SCOTCH in respect of electrical wires and cables and electrical
fittings of their manufacture and marketing on 14.09.1988 and have been using the same continuously and extensively till present. Relying on
observation made by the Bombay High Court in Consolidated Foods Corporation v. Brandon and Co. Private Ltd. AIR 1965 Bom. 35 and approved by
the High Court of Delhi in Century Traders' case (supra), learned Counsel submitted that a trader acquires a right of property, in a distinctive mark
merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade and also priority in adoption
and use of trade mark is superior to priority in registration. Learned Counsel drew our attention to sub-paragraphs (x) and (xviii) of paragraph 3 of the
Form TM-5 and submitted that the appellant has applied in India for registration of trade mark SCOTCH in class 09 on 13.12.1990 and 26.8.1992,
respectively. The appellants have, thus, started using the mark in India subsequent to the respondent No. 1. Since the respondent No. 1 is prior to
adopt and use the said trade mark, they have superior right over the appellants who have not used the mark in India. He relied on the decision in
Veerumal Praveen Kumar v. Needle Industries (India) Ltd. and Anr. 2001 PTC 889 (Del) (DB) to submit that if there was a non-user for a long
period of time the mark would lose its distinctiveness or is permitted to die for non-use as a trade mark cannot exist in a vacuum and the enforcement
of the right of exclusive use of a trade mark will depend on its continuous use by the proprietor. Bringing para 6 of the counter statement to our
attention, the learned Counsel submitted that the applicants are the proprietors of the trade mark SCOTCH in respect of goods of their manufacture
and marketing and on account of its prior adoption and continuous user thereafter. According to Sub-section (1) of Section 18 of the Act, any person
claiming to be the proprietor of a trade mark used or proposed to be used by him and desirous of registering it shall apply to the Registrar in writing.
Therefore, there is no bar for the respondent No. 1 to apply for registration of the trade mark SCOTCH without showing any user. It is notable that
the respondent No. 1 has been using the mark since its adoption continuously and extensively and the respondent No. 2 in his order has recorded that
he has found that the respondent No. 1 have been using the trade mark SCOTCH on their goods soon after making the impugned application in the
Trade Mark Registry on 14.09.1988.
The learned Counsel submitted that the words SCOTCH is a dictionary word which anybody can adopt and apply for registration as a trade mark
since the appellants have no user in India and the SCOTCH mark applied for is registrable and is capable of distinguishing the goods of the respondent
No. 1 from the goods of the other traders. Before advertising the trade mark applied for by the respondent No. 1, the Registrar of Trade Marks had a
hearing of the respondent No. 1 and thereafter satisfying himself he allowed the mark to be advertised in the Trade Mark Journal.
After carefully hearing both the parties and after perusing the records, the issue that requires to be determined first is whether the appellants have
user in India and whether the respondent No. 1 has user after adoption of the impugned mark and, in the light of contention of the appellant about non-
appreciation of evidence led by the parties, especially the veracity of the evidence in support of application, whether the respondent No. 2 has properly
appreciated the evidence led before him by the parties. The issue of user raised by the parties assumes central place because the proposition of law is
that priority in adoption and use is superior to priority in registration and the court will afford protection to a prior user even if his mark may not be
registered. In the appeal on hand, it is undisputed that the appellant has filed affidavit of Assistant Secretary of the appellant along with affidavit an
officer of Birla 3M Ltd. in support of opposition, which include affidavits, certain invoices, registration certificate/renewal certificates, statement of
sales and the amount of expenditure which the company incurs annually on publicity, etc. but the respondent No. 1 vide letter dated 5.6.1999 intimated
the respondent No. 2 that it did not wish to file ""evidence in support of the application"" under Rule 54 of the Rules and would rely on the submissions
made in the counter-statement. However, on the direction of High Court, respondent No. 1 has stated to have placed on record certain documents in
support of application which consist of certain invoices, a copy of advertisement in a souvenir and a copy of price list of Mayur PVC. The Division
Bench of High Court of Bombay had occasion to construe the expression ""evidence in support of application"" in Rule 54 of the Rules framed under
the Trade Marks Act, 1940, in Md. Oomar v. S.M. Noorudin AIR 1952 BOM. 165 wherein Chagla C.J, speaking for the Bench, expressed the view
that, under the Trade Marks Act and under the rules framed there under the Registrar has to decide any matter that comes before him on the basis of
affidavits, that as per the procedure set out in the Rules framed in the Trade Marks Act, after notice of opposition is given, affidavit evidence in
support of the opposition is to be given by the opponent setting out the evidence on which he intends to rely, and that the expression used in Rule 54,
evidence in support of application"", will include evidence in rebuttal of the case of the opponent and, therefore, it is incumbent upon the applicant
dealing with the evidence in support of the opposition to rebut any case that might have been set up by the opponents under that rule. The above
decision indicates that if affidavit evidence in support of the application is not filed by the applicant under Rule 54 it should be taken that he has no
evidence in rebuttal in the case put forward by the opponent in his evidence in support of the opposition. The rights of the party or parties in the cases
of applications for registration of trade marks, including opposed applications, are to be determined as at the date of the application for registration. It
has been held in the case of E. Griffiths Hughes Ltd. v. Vick Chemical Co. AIR 1959 Calcutta 654 the Division Bench of the Calcutta High Court
held: ""With these introductory words in the question of interpretation of the Section 6 of the Act, I now pass on to the consideration of the evidence as
to user which has been adduced in this case. Now it is well settled that in the case of all applications for registration of trade marks, including opposed
applications, the rights of the party or parties are to be determined as at the date of the application for registration. The evidence which is tendered
before the Registrar is normally by way of affidavits of persons who are competent to testify to the user of the particular mark"". Similar observation
has been made by the High Court of Madras in the case of Mohan Gold Water Breweries (Private) Limited v. Koday Distilleries Private Limited and
Anr. (1977) 2 P.L.R. 83.
Now we would come to the evidence placed on record by the respondent No. 1. The copies of invoices at pages 58 to 94 pertain to period
29.2.1998 to 7.2.2000 which do not contain any mention of trade mark SCOTCH on any of them so as to establish use of the trade mark by the
respondent No. 1 in relation to its goods. 1998 was certainly not a leap year; hence the month of February in that year cannot be of 29 days. The
averment in paragraph 5 of the counter-statement that the respondent No. 1 has widely advertised the SCOTCH trade mark through different media
such as newspapers, trade literature, etc. and has already spent a substantial amount of money on publicity and in consequence thereof the said mark
enjoys solid and enduring reputation in the markets is a bald statement as there is no documentary proof to substantiate such statement/averment.
There is not a single copy of advertisement, except a cutting of souvenir published in some magazine and in that cutting on both corners at the top
'MAYUR' in English and Hindi with a device of peacock and below in the middle MAYUR in a stylized manner and the words and figures 'REGD.
TRADE MARK No. 394621' are written and a copy of Price List for MAYUR PVC cables, etc., and as such these documents are irrelevant for the
present purpose. From the price list and an advertisement cutting of souvenir from a magazine are for MAYUR PVC cables, etc., and the invoices
contain mention of PVC wire, etc., therefore the possible inference that can be drawn is that the copies of invoices might have been issued for sale of
MAYUR PVC cables & flexible (copper conductor). Though the appellant has averred in the appeal that the evidence on record should not be taken
into consideration on the ground that the same were on record when previous appeal was disposed of by the High Court on 10.4.2002 and remanded
the case to the Registrar, but we have to take the documents into consideration because the Registrar has given his findings on these documents and
the appellants have themselves averred in the appeal that the respondent No. 2 has not considered the veracity and evidentiary value of the evidence
on record. After perusing the evidence in support of application for registration we find it difficult to agree with the findings of respondent No. 2: 'I
have also gone through the original documents of the applicants and scrutinized them minutely and I have found that they have been using the trade
mark ""SCOTCH"" on their goods soon after making the application in the Trade Mark Registry on 14/9/1988', as no copy of invoices contain mention
of trade mark SCOTCH and the invoices pertain to period about ten years after the date of filing of application for registration. We have no hesitation
to conclude that the respondent No. 1 has no user or even intention to use the mark, in respect of goods for which registration was sought, till
February, 2000 up to which period the evidence is filed. On the face of the copies on record, it is not possible for us to presume that the mark
SCOTCH might have been mentioned in original documents. On the other hand, the appellant has been using the mark since 1989 and the same is
established by way of adducing documentary evidence like copies of invoices (first invoice is dated 31.5.1990); in all invoices the trade mark
SCOTCH is mentioned; the sales figures from the years 1989 to 1999 and annual expenditure incurred towards promotion and advertisements of the
trade mark. The averment made in the affidavit of Assistant Secretary of the appellant that ""I say that my company is using one of its SCOTCH trade
marks i.e. SCOTCHFLEX in India since the year 1988 on electronic cable connectors, clips and ducts by the licensed user of the trade mark"" stands
unrebutted by the respondent No. 1. Applying the decision of the Bombay High Court in Md. Oomar's case (supra), affidavit evidence in support of
the application not filed by the applicant under Rule 54, we take that respondent No. 1 has no evidence in rebuttal in the case put forward by the
appellant in their evidence in support of the opposition.
Now the next issue is whether the impugned mark if registered is likely to deceive or cause confusion in the mind of public. The question arising
whether there is any likelihood of confusion or deception is a matter for decision by the Court and the Court must consider all factors which are likely
to create or allay deception or confusion. The well established proposition is that while proceeding to consider the facts of the case, it is necessary to
bear in mind that in proceedings for registration, the onus of proving that the mark is not calculated to deceive or cause confusion lies on the applicant.
For our present purpose, it would be beneficial to refer to the Caltex case, wherein facts and issues involved were nearly identical to the case on hand.
In the Caltex case (supra) relied upon by the appellant, an application for registration of mark in respect of 'Horological and other chronometric
instruments and parts thereof in class 14, was filed by one Lalwani before the Registrar. Caltex (India) Ltd. opposed the application on the grounds,
inter alia, that there was danger of confusion because the opponents are using the mark on a very large scale since year 1937 and had spent a large
sum on advertise¬ment and that the mark Caltex was used all over the world for marketing petroleum, kerosene and lubricants like greases and oils
and has acquired reputation. The op¬ponents claimed that registration of the same mark by applicant for his goods, mainly watches is likely to cause
deception or confusion. The Deputy Registrar held that competing marks were identical but competing goods were entirely different in character,
there was no connection in the course of trade between the competing goods, the trade channels were entirely different and therefore despite the
reputation of the opponents' mark, the use of the identical mark by applicant is not likely to cause deception or confusion. The Deputy Registrar also
turned down the contention that the application had been actuated by dishonest intention and motive in selecting the mark. In an appeal preferred by
the opponents, the learned single Judge upheld the finding that there is no likelihood of deception or confusion but came to con¬clusion that applicant
dishonestly selected the mark, and thereupon allowed the ap¬peal and dismissed the application for registration. On further appeal to the Division
Bench, the Court while considering the appeal, ob¬served in para 49 of the judgment:
In this case, the goods are totally different. There is no trade connection between them. There is no connection in the course of trade, nor any
common trade channels. There are factors against holding that there would be any danger of deception or confusion. But we must consider the
factors which tend to show that there is a likelihood of creating deception or con¬tusion. The opponents have been using their mark on a very large
scale since 1937. Their sales in 1956 exceeded Rs. 30 crores. Their publicity is wide spread and large. In 1956 they spent over a million rupees on
advertise¬ments. The goods in respect of which they use the trade mark 'Caltex' are mainly petroleum, kerosene and lubricants like greases and oils
etc. The goods in respect of which the applicant seeks registration are mainly watches. The class of goods in respect of which the applicant seeks
registra¬tion is wider than watches and watches can be both costly and cheap. It can¬not go without notice that the goods in respect of which the
applicant in fact used the mark before he applied for registration were very cheap watches. The goods of the opponents are used by persons all over
India, in cities and in villages, in different walks of life, rich or poor, literate or illiterate. The goods of the applicant are different in nature. But they are
watches. They can be cheap watches. The potential market for them is, therefore, similar to that of existing market of the opponents, in the sense that
the goods of both the parties are not special goods. They are goods which would be purchased by the common man. Now, so far as the word 'Caltex'
is concerned, it is common to the opponent's mark as also to the opponent's name. To men¬tion the mark ""Caltex"" is also to mention the name of the
owner. The mark is unlike the Lion or the 'Stag"" mark where there would be no direct con¬nection between the mark and the name of its owner.
The opponents are a large company known by many as having large resources, and therefore, capable of starting any new industry or trade. Because
of that reason, there is a greater probability of the public believing that any goods with the mark ""Caltex"" on them would be the goods of the
opponents. This is in our opinion, sufficiently established by the 36 affidavits referred to above. The deponents of these 36 affidavits are from different
parts of India, and from different vocations....
What has to be decided in a case, is whether on the totality of the facts of that case, it is likely that there would be deception or confusion. It would,
therefore, be totally misleading to rely only on some individual fact or facts from decided case and put emphasis on them without taking into account
other facts in combination with which that particular fact was looked upon as yielding any principle.
After considering the evidence in the shape of affidavits and observing that there is no affidavit to the contrary on behalf of the applicant, the Division
Bench con¬cluded the issue against the applicant in the following passage (at p.37): ""On the facts of this case, we have no hesitation in holding that
a large num¬ber of persons, if they see or hear about the mark ""Caltex"" in connection with watches, would be led to think that the watches were in
some way con¬nected with the opponents, or they would at least wonder whether they were in any way connected with the opponents. Persons
seeing the mark at¬tached to watches, which is a new class of goods, would assume, or are most likely to assume, that they originated from the
proprietor of the mark, namely, the opponents.
By applying the above proposition, we found that the trade mark SCOTCH of the appellant has acquired reputation, rather secondary significance,
which is evident from the Oxford Dictionary, Thesaurus and Word power Guide (OXFORD University Press) wherein the trade marks
'SCOTCHLITE', 'SCOTCH CARD' and 'SCOTCH TAPE', of the appellants are mentioned as trade marks which means that the appellants' trade
mark SCOTCH had acquired secondary significance and attained such a distinctiveness and reputation that it had found its way into the English
Dictionary. The Dictionary contains a note on trademarks and proprietary status which reads thus: ""This dictionary includes some words which have,
or are asserted to have, proprietary status as trademarks or otherwise. Their inclusion does not imply that they have acquired for legal purposes a non-
proprietary or general significance, nor any other judgment concerning their legal status. In cases where the editorial staff have some evidence that a
word has proprietary status this is indicated in the entry for that word by the label trademark, but no judgment concerning the legal status of such
words is made or implied thereby."" In the case of New Kids on the Block v. News Am. Pub. Inc. 971 F.2d 302 : 9th Cir. 1992 the US Circuit Court
the at page 2 of its judgment has referred to certain well-known trade marks including the appellants trade mark Scotch tape which reads as "" With
many well-known trademarks, such as Jell-O, Scotch tape and Kleenex, there are equally informative non-trademark words describing the products
(gelatin, cellophane tape and facial tissue). But sometimes there is no descriptive substitute and a problem closely related to genericity and
descriptiveness is presented when many goods and services are effectively identifiable only by their trade marks...."" The Assistant Secretary of the
appellant, Ms. Carolyn A. Bates, in sub-paragraph (c) of paragraph III of her affidavit evidence has averred: ""...I specifically deny that the items of
the applicants and those of my Company are absolutely different and distinct. In say that my company is using one of its SCOTCH trade marks i.e.
SCOTCHFLEX in India since the year 1988 on electronic cable connectors, clips and ducts which will certainly qualify to be the goods of identical
description as those covered under the impugned mark. ...probably lead to confusion and/or deception amongst trade and public as to their source or
origin since they are likely to assume that the goods under he impugned mark also emanate from my Company and/or from its joint venture Company
because these goods will pass through the same trade channels and trade network"" and that averment remained unrebutted by way of any affidavit by
the respondent No. 1. The description of goods of the appellant in class 09 under the trade mark SCOTCHFLEX is 'electric cable connectors, chips
and ducts and description of goods of respondent No. 1 in class 09 is electrical cables, electrical wires, electrical fittings and description of goods
'electric cable' is common in both and as such the claim of respondent No. 1 that goods or description of goods of both the parties are totally different
and distinct cannot be sustained. The reliance placed upon the judgment in Vishnudas case (supra) by the respondent No. 2 to hold that the case
respondent No. 1 is duly covered by the law laid down in the Vishnudas case is erroneous as the said case is not applicable to the facts of the present
case. In the present case there is no evidence to show that the respondent No. 1 is actually manufacturing or trading in the electrical cables under the
trade mark SCOTCH. The appellant's sales figure in India in the year 1999 till September was Rs. 2700000 and their annual expenditure on publicity
was Rs. 270000. After having found that the appellant's mark has reputation, we are in agreement with the learned senior counsel for the appellants
that the appellants are large company known by many as having large resources, and therefore, capable of starting any new industry or trade and
because of that reason, there is great probability of public associating the goods of respondent No. 1 as emanating from the appellants or believing that
any goods with the trade mark SCOTCH on them would be the goods of the appellants. We also agree with the learned senior counsel that the
registration of mark applied for by the respondent No. 1, if allowed would dilute the distinctiveness and deface the well reputed and well-known trade
mark of the appellants. Apart from this, the respondent No. 1 has failed to discharge the burden of proving, which lies on it, that the trade mark which
it sought to be registered is not likely to deceive or to cause confusion as the respondent No. 2 has not mentioned a word about discharging such
burden by the respondent No. 1. We are of the opinion that the finding of respondent No. 2, that since the applicants' goods are totally different from
the goods of the opponents' goods the question of confusion and deception does not arise, is not sustainable.
Now, we would come to the observation of respondent No. 2 ""The filing of objections by the said company is whimsical and flimsical in character
and has no locus standi. The case argued and pleaded by the opponents is in the capacity of the firm styled as MINNESOTA MINING AND
MANUFACTURING COMPANY whereas the trade name of the opponent's is MINNESOTA MINING AND MANUFACTURING
COMPANY. Under the circumstances the case of the applicants is duly covered by the law laid down in Vishnudas v. Wazir Sultan case 1996 PTC
512 SC we are of the opinion that the facts of the of the Vishnudas case is not applicable as the facts of the present case is distinguishable. The
present case is an appeal whereas judgment in Vishnudas case is on a rectification application. In the present case, the appellant therein is actually
manufacturing or trading in electric cable connectors whereas the respondent No. 1 has no evidence of manufacturing or trading or bonafide intention
to manufacture or trade in electrical wires, electrical cables since it has not traded in or manufactured electrical wires, electrical cabled from
14.9.1988 till February, 2000. There is no evidence or finding that the appellant has no intention to manufacture or trade in such articles in future. We
have already noticed that the claim of appellant that description of goods and trade channels and trade network are common remained unrebutted. Let
us take a worse case against the appellant that the goods of both parties are totally different as claimed by the respondent No. 1. The records show
that one of the products of appellants in class 09 is electric cable connector and one of the products of respondent No. 1 in class 09 is electrical
cables, therefore appellants cable connector is used in electrical cables for connecting the cables of respondent No. 1 and hence the same is cognate
to the product for which respondent No. 1 has sought for registration of trade mark SCOTCH. In that case the judgment relied upon is not applicable.
Further, the issue of well-known mark or reputation was not involved in the case relied upon by the respondent No. 2. We also do not find it possible
to agree with the observation of respondent No. 2 that the appellant has no locus standi to file objection as the appellant is entitled oppose the
registration in terms of the provisions of Section 21 (1) of the Act which provide that any person may within the stipulated time give notice of
opposition, in writing, to the Registrar.
Now, we would come to the issues of registrablity of, and proprietorship in, the trade mark in combination The respondent No. 2 has held that the
word SCOTCH is a dictionary word and as such anybody can adopt the same as trade mark. When it is a dictionary word and not inherently
distinctive, use of the word as trade mark only can acquire distinctive character which lacks in the present case. When there is identical/similar mark
already registered in the name of appellant, registration of similar/ identical mark in favour of respondent No. 1 cannot be granted. The onus to prove
the registrablity of mark is on the person who applies for registration. The plea of respondent No. 1 that the Registrar heard the respondent No. 1
before ordering for advertisement before registration is no ground for proving the registration of mark when the opponent is opposing the registration.
In an opposition it is more important to consider the matter from the point of view of the public than from the from point of view of the two parties to
the proceedings and therefore the merits and demerits of the opponent are irrelevant. The respondent No. 2 ought to have satisfied himself that the
mark applied for is registrable especially when the SCOTCH was a registered trade mark of the appellant and acquired reputation/ well-known status.
As per Section 18 of the Act any person claiming to be the proprietor of a trade mark used or proposed to be used by him and desirous of registering it
may apply in writing to the Registrar. The implication of the provision is that the prior use is not necessary but intention to use the mark should be
there. In Kerly's law of Trade Marks and Trade Names 9th edition page 27 it has been stated in paragraph 48 that though at common law no
protection could be secured for a mark which had not been used, the statues dealing with registration of trade marks always encourage registration by
saying that actual use is not necessary for registration as the traders are generally anxious before adopting and using a mark as a trade mark to
ascertain whether it is registrable that the mark applied for may be one which is already in use or may be one which is proposed to be used by the
applicants that if the applicants do not use the mark, they must have at that time of the registration some definite and present intention to deal in
certain goods or description of goods and not a mere general intention of expanding their business at some future time to anything which he may think
desirable, and that the intention must be to use the mark as a trade mark by the applicants themselves in respect of the goods for which the
registration is sought. Dr. S. Venkateswaran, in his treatise on the law and practice under the Trade Marks Act at page 311 says that in determining
whether an applicant for registration of a trade mark had intended to use the mark in relation to the relevant goods as to justify registration, regard
must be had to the difficulties and uncertainties of the time and a bonafide intention, on the part of the applicant to use the mark as soon as conditions
allow may be sufficient to support the application. In Mohan Goldwater Breweries (Private) Limited's case (supra), the Madras High Court observed
'It is true, the burden of proving that the trade mark in respect of which registration is sought is entitled to go on the register is on the applicant and if
there be any doubt in the matter the application will have to be refused. It is also well established that it is incumbent on the applicant to establish that
he is the proprietor of the mark before his mark could be registered. In this case the applicants are persons who have proposed to use the expression
Silver King"" as a trade mark and sought for registration of the same. On the date of the application for registration of that mark no one had designed
and proposed to use the same. Of course they have not chosen to use the trade mark either before or after the application for registration was filed.
But as already stated, user is not necessary for filing an application having regard to the language of Section 18. If a bonafide intention to use the trade
mark immediately in connection with the goods manufactured is established, that will enable the applicant to maintain an application for registration
under Section 18. I am not prepared to accept the contention of the appellants that non-preparation and non-user of the mark from the date of the
application till the application came up for hearing will show that the applicants have really no intention to use the trade mark. The applicants had
sufficient interest in the mark so as to enable them to file an application under Section 18 as on 10th November, 1969, when no one had used or
proposed to use the trade mark in question.' In the present case the application was filed on 14.9.1988. The application was converted to application
for Part B registration. After filing application there is no proof to show the intent of use by the respondent No. 1. In Century Traders case (supra) it
was held that for the purpose of claiming such proprietorship of a mark it is not necessary that the mark should have been used for considerable length
of time. As a matter of fact, a single actual use with intent to continue such use consistently confers a right to such mark as a trade mark. It is
sufficient if the article with the mark upon it has actually become a vendible article in the market with intent on the part of the proprietor to continue its
production and sales. It is not necessary that the goods should have acquired a reputation for quality under that mark. Actual use of the mark under
such circumstances as showing an intention to adopt and use it as a trade mark is the test rather than the extent or duration of the use. A mere casual
intermittent or experimental use may be insufficient to show the intention to adopt the mark as a trade mark for specific article or goods, ..."" There is
no claim of the respondent No. 1 that they have been preparing or taking steps to manufacture and trade in electrical wires, electrical cables. It is
neither the case of respondent No. 1 that the mark applied for was inherently distinct of its goods nor it has proved the distinctiveness thereof before
the respondent No. 2. There is no explanation as to how the respondent No. 1 had hit upon the dictionary word as trade mark out of thousands of
dictionary words and it is not the claim of the respondent No. 1 that it had no knowledge that a similar mark is already on the register and is in use. As
per first invoice dated 29.2.1998, the respondent No. 1 was manufacturing/trading in PVC wires, therefore, it is not possible to infer that it would have
been taking steps to start using of trade mark SCOTCH on electrical wire and electrical cables but such steps even if taken would not take more than
a decades time to accomplish. We are of the considered view that the respondent No. 1 had no bonafide intention to use the mark applied for and
therefore no proprietary right of respondent No. 1 lies in the trade mark SCOTCH. The counsel for respondent No. 1 had submitted before the
respondent No. 2 that the law laid down by the Supreme Court in Amritdhara Pharmacy v. Satyadeo AIR 1963 SC 449 is that the immediate
qualification for becoming the proprietor of the trade mark is the distinctiveness and reputation of the mark and this can never be avoided. The
respondent No. 1 has not fulfilled this immediate qualification of becoming the proprietor of trade mark SCOTCH. In the case of Md. Oomer's case
(supra) it was held that there is no absolute right in any one to obtain the registration of a trade mark, even though his application may not fall within
the prohibition of Section 8 or Section 10 of the Trade Marks Act, 1940, there is no right in the applicant to get the trade mark registered. Having
regard to above, we are unable to agree with the findings in regard to objection of Sections 9 and 18 of the Act.
In view of the above, we find that the order dated 14.8.2002 passed by the Assistant Registrar of Trade Marks is not sustainable. Accordingly, we
allow the appeal and set aside the said order of Assistant Registrar of Trade Marks. There shall be no order as to costs.