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Judgment
Raghbir Singh, J
CM (M) 350/90 has been transferred from the High Court of Delhi in terms of section 100 of the Trade Marks Act, 1999 and numbered as
TA/306/2004.
First respondent filed application No. 331661 on 16.12.1977 for registration of trade mark containing letters 'SKE' in class 12 in respect of timing
chains for use in automobiles. Appellant filed their notice of opposition on 20.4.1981 based upon the provisions of sections 9, 11(a), 11(e), 12(1), 12(3)
and 18(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The grounds taken for the opposition are that the
appellant is the registered proprietor of trade mark 'SKF' and device of ball bearing under registration NO. 231861 as of 20.10.1965 in class 12 in
respect of axle boxes containing anti-friction bearings for land vehicles and parts thereof included in class 12. Appellant have applied for registration of
trade mark 'SKF' logo type under No. 320666 as from 25.11.1976 in class 12 in respect of bearings for vehicles, bearing units and axle boxes for land
vehicles, brake drums and discs, crank shafts etc., and user therefore is claimed since 1968. Appellant is the registered proprietor of many other trade
marks in class 7 as of 30.9.1942. The letters 'SKF' are distinctive and exclusively identified with the goods of the appellant because of continuous and
extensive use in India. The trade mark 'SKF' forms an essential feature of its corporate name and trading style. A cursory look at the impugned mark
'SKE' reveals its visual similarity to that of the appellant's mark 'SKF'. The letter 'E' is so close to letter 'F' that it is likely to be mistaken. The first
respondent adopted the mark 'SKE' with dishonest intention to trade and benefit from the reputation and valuable goodwill of the appellant. The rival
goods are sold over the same shops and over the same counters and to the same class of purchasers.
On 2.5.1983 the first respondent being the applicant filed their counter statement denying all the material averments of the appellant. Appellant filed
their evidence by way of an affidavit dated 15.12.1983 and 20.12.1983. First respondent filed his evidence of user on 23.1.1979 by way of affidavit by
Shri Sardari Lal, partner of the firm.
Hearing was held by the Deputy Registrar of Trade Marks on 29.6.1990 where none appeared on behalf of the first respondent. At the outset the
learned counsel for the appellant had taken objection that the first respondent had claimed his user since January, 1972 in the counter statement, but
they have not adduced any evidence of distinctiveness since that year. They have not been served with any copies of evidence filed in this regard, if
any, under Rule 54 of the Trade and Merchandise Marks Rules, 1959. In spite of the submissions of the learned counsel for the appellant, the Deputy
Registrar chose to rely upon the evidence of distinctiveness and put reliance upon that and came to the conclusion that the mark 'SKE' has acquired
distinctiveness. Thus the Deputy Registrar concluded that the mark qualifies for registration under section 9 of the Act and accordingly overruled the
opposition raised under section 9 in this regard.
In regard to his examination under section 12(1) of the Act he was of the view that the letter 'E' in 'SKE' in contra-distinction to letter 'F' in 'SKF'
makes a difference in pronunciation and thus the rival marks are distinct and dissimilar. He proceeded further to examine the goods or description of
goods for which the marks are being used and was of the view that the goods of the appellants under trade mark 'SKF' under No. 231861 as of
20.10.1965 are in class 12 in respect of axle boxes containing anti-friction bearings for land vehicles and parts thereof included in class 12 and under
another similarly registration No. 320660 as of 20.11.1976 under the trade mark 'SKF' in class 12 are in respect of bearings for vehicles, bearing unit
and axle boxes for land vehicles etc. First respondent's goods are timing chains under their trade mark 'SKE' for sale in the States of Punjab, Haryana,
Rajasthan, Uttar Pradesh and the Union Territory of Delhi. He was of the view that the raw material used and the purpose for which those goods are
used are different. The goods are not purchased by ordinary persons of imperfect recollection since they are not in a position to maintain vehicles, the
goods are bought by only owners of vehicles or by their drivers who possess adequate mechanical and technical and vehicular know-how. Thus he
concluded that the goods are totally different. At this juncture he was of the view that even if the mark is deceptively similar it is difficult to decide
that confusion is likely to arise unless there is some positive evidence leading to such confusion and thus he concluded that opposition under section
12(1) is not sustainable.
In matter of his examination under section 11(a) of the Act he again put reliance upon the affidavit filed by Shri Sardari Lal, partner of the firm
showing the sale figures from 1972-73 to 1979-80. He did not pay credence to the affidavit of Shri Dara Kaikushru Sarkari, Company Secretary
wherein the sales figures under the trade mark 'SKF' had been depicted from 1972 to 1982 and similarly advertisement expenses have been shown
from the year 1972 to 1982. His objection is that the appellant while giving these sales figures and advertisement expenses has not distinctly mentioned
whether these expenses or the sales figures relate to their products in class 12 only. Thus he rejected the opposition under 11(a) of the Act. Similarly
he dismissed the opposition under section 11(e) of the Act.
In matter of his examination under section 18(1) of the Act, relying upon the affidavit of first respondent claiming distinctiveness from 1.1.1972, he
concluded that they are the proprietors under section 18(1) of the Act. He did not proceed to examination under section 12(3) of the Act and thus
allowed registration of the impugned mark 'SKE'.
Appellant in their appeal filed on 16.10.1990 had submitted that the Deputy Registrar should not have taken cognizance of the evidence filed by the
first respondent in view of the mandatory provisions of Rule 54 of Trade and Merchandise Marks Rules, 1959 which provides that in case the
applicant relies on any evidence already let in by him in connection with the application, he shall deliver to the opponents a copy thereof. Since the first
respondent had not delivered a copy of the evidence to the appellant, the Deputy Registrar should not have relied upon that evidence. This fact was
made known to the Deputy Registrar at the stage of hearing itself. In spite of that he proceeded with by putting his reliance upon the evidence. The
Deputy Registrar erred in arriving at the conclusion that the goods are distinct. He has further erred in saying that the mark 'SKE' is not deceptively
similar to the appellant's mark 'SKF' and is not likely to cause confusion since the purchasers of the goods are people with expertise and affluent
persons who can afford to buy the vehicles. The Deputy Registrar wrongly concluded that under section 11(a) read with section 11(e) the mark is
competent to be registered as it is not likely to deceive or cause confusion. Since the mark from the beginning is not distinctive of the goods of the first
respondent, the Deputy Registrar was wrong in concluding that he is the proprietor of the mark under section 18(1) of the Act. Since the Deputy
Registrar had chosen to consider the application under section 12(3) of the Act, he should have made an examination thereof under section 12(3) of
the Act and should not have concluded just simply by saying that since the first respondent had not adduced any evidence in this regard, he does not
want to proceed with the examination under section 12(3) of the Act.
The matter was heard in the sitting of the Board at Delhi on 28.01.2005. Learned counsel Shri Sanjay Jain appeared on behalf of the appellant and
learned counsel Shri M.R. Bhalerao appeared on behalf of the first respondent.
Learned counsel for the appellant at the outset submitted that they are using the mark since 1928 under No. 231861 dated 20.10.1965 and the
application of the appellant under No. 320666 was registered on 25.11.1976. First respondent filed his impugned application on 16.12.1977 claiming
user from 1.1.1972. He claimed this user despite the fact that the evidence filed by him is not admissible in view of the violation of mandatory
provisions of Rule 54 of Trade and Merchandise Marks Rules, 1959 as submitted before the Deputy Registrar. Learned counsel for the appellant
contended that the nomenclature of the goods are different, namely, timing chains for the impugned trade mark 'SKE' and the bearings for vehicles
etc., for the trade mark 'SKF', but those are goods of allied and cognate nature. Both the goods relate to class 12 of the Fourth Schedule. Both goods
are used for the vehicles. Those are sold at the same counters and the intending purchasers belong to the same class. Thus the description of the
goods meet all the requirements, the goods being of allied and cognate nature. He submitted that the Deputy Registrar was in grave error in deciding
the matter under section 12(1) of the Act . While concluding as to the distinctiveness and dissimilarity of both the marks, he narrowed down the class
of intending purchaser of goods to affluent class who own the vehicle. His imagination did not proceed beyond that. Though he did mention that the
motor mechanics are having expert knowledge in the area, he gravely erred in this regard in inferring that the mechanics as they are in this country a
class of semi-literate persons - can be so discriminating in the identity of marks which bear such closeness. Learned counsel emphasized that with a
view to know the purpose one has to look into the functionality aspect of the operation and in the instant matter the functionality of the user happens to
be common whether it is the timing chain or ball bearings. The functionality linkage is only in relation to vehicles.
Learned counsel for the appellant put reliance upon Aktiebolaget SKF Vs. Rajesh Engineering Corporation 1996 PTC 160 wherein the mark 'SKI'
was held to be deceptively similar to the mark 'SKF'. It was held that there was a possibility and likelihood of mistake being committed by an average
man of ordinary prudence and intelligence in identifying the trade mark 'SKI' with the goods of the appellant.
The goods involved in relation to both the marks were ball bearings. Learned counsel for the respondent at this juncture emphasized that the
registration of the mark 'SKI' was held to be objectionable as it related to the same goods.
In Essco Sanitation, Delhi Vs. Mascot Industries (India), Delhi 1982 PTC 302 it was held that the trade mark 'OSSO' has taken a substantial part of
registered trade mark ESSCO. The marks are too close phonetically, visually and in idea. In Hoechst Aktiengesellshaft Vs. Artee Minerals, 2004 PTC
470 IPAB it was held that the mark ARTEELON is confusingly and deceptively similar to the mark ARELON .In M/s Daffodils Perfumes &
Chemicals Indus Vs. M/s Daffodil Chemical (P) Ltd. 1996 PTC 153, Justice R.C. Lahoti held that the use of similar trade mark 'DAFFODILS'
though in respect of different goods is likely to cause confusion and deception because the products are allied products. In Bombay Enterprises Vs.
B.R. Mechanical Corporation 2004 PTC 453 IPAB, the mark 'WONTEX' was held to be deceptively similar to the mark 'WINTEX'. The goods
though not exactly the same but were held to be similar and of the same description and trade channels were held to be the same. Learned counsel for
the appellant put great reliance upon Kirloskar Diesel Recon. (P) Ltd. Vs. Kirloskar Proprietary Ltd. 1997 PTC 46 9BOM wherein it was held the
mark 'KIRLOSKAR' being the house mark of the group of companies to be distinctive of their products. Similarly, he put reliance upon Honda Motors
Co. Ltd. Vs. Charanjit Singh 2003 PTC 1where the word HONDA which has become a household name having acquired reputation over five
decades was held to be the house mark of Honda Motors Company Limited and thus the injunction was issued against the respondent.
Learned counsel for the first respondent contended that both the marks are distinct. 'SKE' has been put just in letters with full stops in between
three letters in ordinary fonts. Whereas the word 'SKF' has been put in a stylish form with no full stops in between. Thus the marks are visually and
phonetically distinct. He took us to the remarks of the Deputy Registrar at page 5 of the impugned order wherein he has referred to the learned
counsel for the appellant having submitted that 'ban type of ball bearings' were not being imported into India due to import policy of Government of
India but the other types of ball bearings were being manufactured in India. Learned counsel for the first respondent stated that there has not been
actual user of the mark even on the submission made by the learned counsel for the appellant. Thus they cannot have a monopoly on the basis of the
registration. He submitted that the issue involved in the Delhi High Court judgment for marks 'SKF' and SKI' related to ball bearing in both the cases.
Here the goods are distinct. Furthermore he submitted that the area of operation has been restricted to a few northern states which does not affect
the appellant in any way.
We have carefully gone through the pleadings on the file and the submissions made at the hearing at New Delhi. Learned Deputy Registrar has
very correctly brought on record the various trade marks held under mark 'SKF' by the appellant, the user where under dates back to 1942. Thus in
that context, that is not a shred of doubt that the appellant has acquired distinctiveness about their mark 'SKF' in the market. The first respondent
moved his impugned application on 16.12.1977 claiming user from 1.1.1972. It is clear from the pleadings on the file that he has not made available to
the appellant evidence about the user claimed from 1972. Thus there is nothing but to infer the non acceptability of his claim of his user from 1972.
Thus the conclusion of the Deputy Registrar in matter of distinctiveness of the impugned mark is not free from doubt. In his examination under section
12(1) of the Act the Deputy Registrar has concluded that with the little change of a single letter the mark becomes distinct and dissimilar. He has
erred gravely in this regard. The marks 'SKF' and SRE' are deceptively similar and with two strong consonants 'S' and 'K' being at the first two
places, there is every likelihood that the persons may slur in pronouncing the word, and even while reading the marks. In its geometrical presentation
the letters E and F bear too much of resemblance leading to confusion in reading of the marks. With a view to attract the disqualification under section
12(1) of the Act, it is not necessary that the goods should exactly be the same. If the goods are cognate and allied the disqualification under section
12(1) in matter of similarity of goods is bound to be attracted. Timing chains and ball bearings and other automobile goods for which the appellant
holds registration are goods which are allied and cognate and the automobile goods are sold at the same counters. The class of intending purchasers is
also the same. In view of that the impugned mark earns disqualification on both the grounds in relation to section 12(1) of the Act. The Deputy
Registrar has done his examination under section 11(a) of the Act in a very cursory manner. He had put reliance upon the sale figures given by Shri
Sardari Lal in his affidavit and has paid no credence to the affidavit filed by Shri Dara Kaikushru Sarkari, Company Secretary of the appellant. In
view of the high reputation of the appellant's marks, in the automobile industry there is every likelihood that the impugned mark 'SKE' will deceive and
cause confusion and thus registration thereof should not be admissible under section 11(a) of the Act. The Deputy Registrar's examination about the
claim of proprietorship under section 18(1) is also absolutely based upon the affidavit of the first respondent claiming distinctiveness from 1.1.1972.
Much credence cannot be placed upon this affidavit since that was not made available to the appellant in the matter.
In view of the above, we hold that the impugned mark fails under sections 9, 11(a), 12(1) and 18(1) of the Act. Accordingly, we accept the
opposition No. DEL 3544 and direct the impugned mark shall not proceed for registration. No costs.