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Judgment
Z.S. Negi, J
This is an application for removal of the trade mark, under No. 791498 in class 34, registered in the name of the respondent No. 2, from the
Register of Trade Marks or rectification of the register under Section 57/125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
The facts that emerge from the application are that Mrs. D. Seeni Ammal in 1961 started a proprietorship concern M/s. Aruna Match Industries
and used the trade mark FAN for match boxes since then. In 1966, the firm devised a label with the fan at the centre of the picture with a band at the
background and the words FAN in English and Pankha in Hindi and the trade mark device of FAN or its minor modifications is being used by the
predecessor of the applicant and by the applicant thereafter since 1966 continuously. The word FAN and the device thereof have remained the
essential and distinctive feature of the applicant's trade mark and have always been used by the applicant and its predecessors for the last 41 years
continuously, openly and honestly. On 24.10.1967, the predecessor of the applicant applied for registration of PANKA (FAN) device and the same
was got registered on 27.1.1969 under No. 245046 in class 34 and the said registration is subsisting and valid up to 24.10.2009.
It is the claim of the applicant that the trade mark FAN for safety matches has been used by the applicant and its predecessor since 1966 till date
continuously and it is one of the oldest firm and established manufacturer of the safety matches in Sivakasi; the trade mark is well known in the trade
circle and commands great respect and the turn over of the applicant by sale of safety matches is of several lakhs of rupees. The applicant submits
that it has spent several lakhs of rupees for promotion of its trade mark by means of calendars, gifts, souvenirs, sponsoring local functions and events
in Sivakasi and other neighbouring towns. Owing to long use of 41 years, the trade mark FAN device has acquired immense reputation and goodwill
amongst the members of the trade and public. The applicant claims to be the prior adopter and user of the trade mark FAN device to the exclusion of
all other safety match manufacturers in the trade, having openly, honestly and extensively used it since 1966.
It is averred that the applicant has recently become aware that the respondent No. 2 has obtained registration of an identical trade mark FAN
device under No. 791498 in class 34 in respect of safety matches. Upon enquiry, the applicant has found that the said trade mark registration of the
respondent No. 2 is valid up to 17.2.2008. Hence this application for rectification of that trade mark FAN device has been made by the applicant on
the grounds, inter alia, that the applicant is the person aggrieved to file the present application; that the trade mark of the respondent No. 2 is identical
and for the identical goods which is bound to cause deception and confusion amongst the trade and public, therefore, the impugned registration of trade
mark of the respondent No. 2 is contrary to Section 11(1)(b) and 11 (3) of the Act and that the applicant is the prior adopter and user of the trade
mark and as such the entry of trade mark of the respondent No. 2 in the Register of Trade Marks is made without sufficient cause; that the entry is
wrongly remaining on the register and in order to maintain the purity of the register, the impugned mark deserves to be expunged and rectified.
The respondent No. 2 filed its counter-statement along with documents on 5th December, 2007 denying the material averments and submitting that
the sole proprietary concern of the respondent No. 2 started manufacturing safety matches in the year 1978 and later on continued such
manufacturing in the name and style of 'FAN' Brand with the permission as of 7.10.1998 for manufacture of safety matches from the Central Excise
Department. The respondent No. 2 has continuously been manufacturing and marketing safety matches from 1988 till date in the name 'FAN' Brand.
The respondent No. 2 is the bonafide user of the said mark and has been marketing in the aforesaid brand name continuously since 1988. When in
1998, the respondent No. 2 applied for registration of the aforesaid brand, even the search report did not reveal any other similar mark manufacturing
safety matches. It is submitted that in the year 2006, the applicant had approached the respondent No. 2 and the applicant in proof of its similar brand
registered in 1967 had submitted two printouts and labels but the brands of the applicant so submitted and the brand of the respondent No. 2 were
nowhere visually similar to each other. The applicant's brand had a background of yellow colour and FAN in red colour and the word FAN was
written in English/Hindi in white colour with its firm name and that on seeing the composite label/mark of respondent No. 2, the applicant has changed
the colour background to the respondent No. 2's colour background, thereby trying to pass of its goods as that of the goods of the respondent No. 2.
The respondent No. 2 claims that it was not aware of the existence of applicant's mark since the applicant had not used the same for a long time.
The respondent No. 2 further submits that its mark is visually distinctive with three dimensional picture of FAN in brown colour in light sky blue
background and the word fan written in yellow colour, used in black colour in red background and that the channel of business and area of operation
are distinctively different and there is no possibility of any confusion especially when the applicant is marketing the said brand with the name of The
Aruna Match Industries. The respondent No. 2 submits that as on date there is no confusion amongst the traders and channel of distribution and even
amongst the consumers of both the brands. Respondent No. 2 denies the averment of the applicant that in 2006 it came to know about the registered
trade mark of the respondent No. 2 on the ground that the applicant itself admits that it also manufactures the safety matches within a neighbouring
town of the place of respondent No. 2.
It is the submission of the respondent No. 2 that it has been in the trade for almost more than 30 years and that its mark has been registered from
1988 and the applicant having knowingly permitted the respondent No. 2 in using the mark, the present application of the applicant is hit by Section
33(1) of the Act. It is the further submission of the respondent No. 2 that the applicant has sworn before the Appellate Board that it has not filed any
similar claims before any Court, whereas the applicant has filed a suit O.S. No. 172/2007 before the Principal District Judge, Virudhunagar with a
similar prayer and the applicant has failed to disclose the same and has not made any effort to bring it to the notice of the Appellate Board that it has
filed a suit with similar prayer. This shows that the applicant is trying to cause hardship to the respondent No. 2 by filing vexatious claim against the
legally conceived distinctive trade mark which it has been honestly using for the last 30 years. The respondent No. 2 claims to be using the mark
honestly and concurrently and also spent large sums of money in building a Brand Name in the industry and the same cannot be taken away by the act
of the applicant.
In reply to the counter-statement, the applicant has filed its reply affidavit along with documents wherein the applicant has reiterated that the two
marks being identical and registered without any geographical limitation, though not admitted, the plea of the respondent No. 2 that the area of
operation being different, would be of no assistance to the respondent No. 2 as the area of operation is not of any significance in the rectification
application and also in view of the identity of the two marks, the use of other features would not avoid confusion. It is further stated that the reliance
placed by the respondent No. 2 on Section 33(1) of the Act is incorrect in the factual situation of the present case and also the respondent No. 2 has
not satisfied the conditions laid down to take advantage of that section.
The application came up for hearing before us on 25.6.2008, when Shri R. Sathish Kumar, Advocate appeared on behalf of the applicant and Shri
Ramesh Venkatachalapathy, Advocate appeared on behalf of respondent No. 2.
Learned Counsel for the applicant submitted that the applicant is the proprietor of trade mark FAN device and has been extensively using the said
mark in respect of safety matches prior to the registered proprietor/respondent No. 2 and with the registration of identical trade mark in respect of
identical goods in the name of respondent No. 2, the applicant is a person aggrieved and has locus to file the present rectification application. The
impugned registration is against public interest, purity of register, without sufficient cause and is wrongly remaining on the register and such
registration adversely affected the applicant's business in safety matches under the device FAN.
Learned Counsel submitted that the applicant and its predecessors have used the trade mark FAN in respect of safety matches since 1966 until
now openly, honestly, extensively and continuously and its sales turnover is to the tune of several lakhs of rupees. The applicant being one of the oldest
and established manufacturers of safety matches in Sivakasi and has acquired immense reputation and goodwill amongst the members of trade and
public during these long years of use and by spending several lakhs of rupees on promotion of its trade mark FAN device. The applicant has filed
sufficient documents to prove its use, reputation and goodwill, etc. whereas the respondent No. 2 has not produced any proof except a copy of ledger
account which do not show that the goods sold were safety matches with trade mark device of Fan or something else as there is not a single entry
with respect to safety match sold bearing the trade mark device of FAN. He further submitted that it is evident from the records that the applicant is
the prior adopter and user of the trade mark device of FAN, obtained registration of the mark earlier to the respondent No. 2 and, therefore, the
applicant is entitled to use the same in exclusion of all others.
Learned Counsel submitted that the trade mark of respondent No. 2 is identical, goods are identical and area of trade and class of customers is
common and as such the impugned mark is bound to cause confusion and deception among the trade and public. In both the competing marks, FAN is
the predominant and striking feature but the colour scheme, layout and font are not what would catch the customers'/consumers' eye. There is also no
geographical restriction of both the competing marks; the respondent No. 2's claim that the area of operations and trade channels are different is
absolutely un-sustainable. The respondent No. 2 has conveniently forgotten that use of phonetically identical mark is inevitable to cause or likely to
cause confusion and deception. The impugned registration is contrary to the provisions of Section 11(1)(b) and (3) of the Act and also the use of such
mark in the course of trade infringes the provisions of clause (c) of Sub-section (2) of Section 29 of the Act.
The learned Counsel also submitted that the impugned registration has been made without any sufficient cause and the same is wrongfully
remaining on the register of trade marks; the impugned registration is against the public interest and against the purity of the register. The learned
Counsel relied upon the decision, in support of his submissions made herein above, in Ciba Ltd. Basle Switzerland v. M. Ramalingam and S.
Subramaniam trading in the name of South Indian Manufacturing Co., Madura and Anr. MANU/MH/0021/1958 and Baljit Kumar Trading as Grand
Foundry, Punjab v. Ram Saroop and Ors. MANU/DE/0020/1972 .
On the contrary, the learned Counsel for the respondent No. 2 submitted that the respondent No. 2 has been continuously manufacturing and
marketing safety matches from 1988 til now under the name and style FAN Brand. The respondent No. 2 has honestly devised and conceived the
mark and promoted the same as a true distinctive mark and the respondent No. 2 was not aware of existence of applicant's mark. In order to show
that the adoption and use of trade mark by the respondent No. 2 was bonafide, the learned Counsel by taking us to a copy of official search dated
3.8.1998 submitted that when application for registration was made even the official search report did not reveal other mark manufacturing safety
matches. He submitted that the respondent No. 2 in support of his claim has also submitted a copy of the account ledger.
Learned Counsel submitted that the two competing marks are not identical and they are no where visually similar to each other. He tried to
differentiate by submitting that the registered trade mark of the respondent No. 2 is visually distinctive as there is three dimensional picture of the
FAN in brown colour in a light sky blue back ground and the word Fan written yellow colour (used in black colour in red back ground), and the
respondent No. 2 conceived this composite structure of the mark and created distinctiveness by proper promotions of the label which can be visually
differentiated by the common man seeing the brand. It was further submitted that the channel of business and area of operation of the competing
marks are distinctively different and there is no way of any confusion especially when the applicant is marketing with adding the name of the industry,
i.e. The Aruna Match Industries.
Learned Counsel stressfully submitted that the present application is hit by Section 33(1) of the Act as the applicant having knowingly permitted
respondent No. 2 in using the impugned trade mark cannot now be entitled to apply for the cancellation of the trade mark of respondent No. 2 without
proving that the respondent No. 2 had not applied for registration of its mark in good faith.
After hearing the arguments of both the sides and on perusal of records, the first question to be considered by us is as to whether the applicant is
the person aggrieved to file the present application. The Courts have given liberal construction to the expression person aggrieved. A trader dealing in
the same class of goods to which the registered trade mark relate, or persons who are in some way or the other substantially interested in having the
mark removed from the register, are persons aggrieved. The test for such determination is propounded in Powell's Trade Mark 1894 (11) RPC 4. A
person aggrieved includes the rivals in the same trade who are aggrieved by the entry of the rival's mark in the register or person whose legal rights
would or might be limited if the mark remains on the register, he could not lawfully do that which, but for the existence of the mark on the register he
could lawfully do. The applicant in the present case is in the same business of manufacturing and marketing in safety matches like the respondent No.
The registration of trade mark obtained by the respondent No. 2 is in restraint to the legal rights of the applicant and is causing embarrassment to
the applicant and the goodwill and reputation of the applicant's mark would be diluted and debased by use of the impugned registration, therefore, the
applicant is in one way or the other substantially interested in having the mark of respondent No. 2 removed from the register. Applying the above
referred propounded test, the applicant is the person aggrieved.
The next issue we would determine is whether the marks are similar or identical to cause confusion or deception. It is well settled that while
comparing the marks we have to take the mark as a whole, dissection of mark is not permissible. The Supreme court in Parle Products (P) Ltd. v.
J.P. & Co., Mysore MANU/SC/0412/1972 has laid down the test to determine the question when a trade mark is deceptively similar to another. Their
Lordships observed at page 1362:
It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the
two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of
such a character as to prevent one design from being mistaken for the other. It would be enough if the impugned marks bear such an overall similarity
to the registered trade mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. ""A little later it was
observed:
After all, an ordinary purchaser is not gifted with the power of observation of a Sherlock Holmes.
The Supreme Court relied on the following passage in Karly's Law of Trade Marks and trade Names:
Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be same. A person
acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with
the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example , a
mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed
by each might be simply a game of football. It would be too much that persons dealing with trade marked goods, and relying, as they frequently do,
upon marks should be able to remember the exact detail of the marks upon the goods with which they are in the habit of dealing. Marks are
remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in
detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their
own.
The test in this matter has also been laid down by Mr. Justice Parker in the case of In re Pianotist Co's Application (1906) 23 RPC 774 (C), at p. 777:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be
applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding
circumstances; and you must further consider what is likely to happen if each of those trade marks is used of the respective owners of the marks. If,
considering all these circumstances, you come to the conclusion that there will be a confusion, that is to say, not necessarily that one man will be
injured and the other will gain illicit benefit but that there will be a confusion in the mind of the public which will lead to confusion in the goods, then
you may refuse the registration, or rather you must refuse the registration in that case.
In the present case, the device of FAN (ceiling fan) which is prominent feature in both the competing trade marks is common, the word FAN in
English and Panka in Hindi written in both the marks are common though written at different places/positions and are in different colour back grounds.
Safety matches are purchased by urban and rural children, women and men, majority of who are illiterate or semi literate who may remember the
prominent feature FAN and may tend to forget the different colour scheme. A man of average intelligence and imperfect recollection will not
remember the colour scheme but will easily remember the device of FAN. The purchaser while purchasing safety matches of the applicant or
respondent will place order by pronouncing the brand name FAN. Due to phonetic similarity in pronouncing the word FAN, the shopkeeper may give
any of the safety matches which bear the FAN mark. Unless the purchaser is very meticulous to closely scrutinise the safety match (for doing that,
the purchaser should remember the colour scheme of the safety match he/she intends to buy) or has power of Sherlock Holmes' observation, he or
she will accept the one which the shopkeeper gave him or her. In other words the purchasers of safety matches who are mostly men of average
intelligence and of imperfect recollection will tend to remember the striking feature of the mark, i.e. the FAN. The likelihood of causing confusion or
deception is imminent in the present case. There is also possibility that the purchaser/consumer may associate the goods with the applicant or think
that the safety matches of respondent No. 2 are emanating from the applicant because of business expansion. The goods in respect of which
registration have been obtained are same and the area of operation is common without any geographical restrictions. The trade channels and
consumers are also common. The respondent No. 2 has disputed that the area of operation of both marks are different but the respondent No. 2 has
not shown any ground on which it has disputed that the area of operation are different. It is evident that the applicant is prior in adoption use of the
mark and prior obtaining registration therefore. There is no pleading to the effect that the registration of the impugned trade mark of respondent No. 2
was granted under Section 12 of the Act. We, therefore, hold that the impugned registration is barred by the provisions of Section 11(1)(b) of the Act.
The next issue is whether the present application, as claimed by the respondent No. 2 is hit by the provision of Section 33(1) of the Act. The
averment made at paragraph 4 of the counter-statement by the respondent No. 2 is that it honesty devised and conceived the mark and promoted
same and it was not aware of the existence of applicant' mark since the applicant has not used the same for a long period. There is no explanation
whatsoever as to how he settled at a FAN with words FAN in English and Pankha in Hindi which is akin to the applicant's mark which is in use in the
neighbourhood of the respondent No. 2. It is also averred that at the time of official search, there was no other similar marks manufacturing safety
matches. The copy of search report clearly shows the details of trade mark of the applicant as 1st entry in the said report. Despite this, the respondent
No. 2 went ahead for obtaining the registration. The respondent No. 2, by submitting a copy of ledger account and copy of Statement of sales, of FAN
Brand Wax matches, from a Chartered Accountant, claimed that it has been marketing in the impugned brand name continuously since 1988. The
copy of ledger account is in Tamil and no translation thereof has been produced. There is not a single entry showing sale of safety matches bearing
trade/mark Fan and there is no copy of invoice or bill. On a sample tally of\ Chartered Accountant's statement of sales figures and the figures of
ledger account a striking difference came to our notice. The Chartered Accountant has shown sale of Rs. 2100/- for the year ended 31.3.89, whereas
ledger account figure for the period from 23.4.88 to 14.2.89 is totalling to Rs. 1,41,325/-. We have, on perusal of the user evidence of applicant's mark
consisting of copies invoices, bills, Gate passes and certificates of insurance for goods despatched through transporters found that the allegation of the
respondent No. 2 that the existence of trade mark of applicant was not in its knowledge as the applicant has not used the mark for a long time is not
sustainable and we are unable to persuade ourselves to hold the adoption of the impugned trade mark was honest. To show acquiescence under
Section 33 of the Act, it has to be proved by the respondent No. 2 that the proprietor of the earlier mark was not only aware of the later mark, but also
by positive acts inconsistent with the claim of exclusive rights, the proprietor of earlier mark had acquiesced in the use of the later mark. The question
that the applicant has acquiesced for five years in the use of mark by the respondent does not arise as the applicant has claimed that it came to know
of the registered mark of the respondent No. 2 only in 2006. This claim of the applicant gets support from the averment made at para 3 of the counter
statement of respondent No. 2 that in 2006 the applicant approached him. The plea of acquiescence gets negated by the suit filed by the applicant
against the respondent No. 2. In view of the matter discussed in this para, we hold that the application is not hit by Section 33 of the Act.
As we have observed in the foregoing para 18 that the applicant is prior adopter and user of the trade mark and has obtained the registration
therefore on 27.1.1969, when that is so, the entry of the mark of respondent No. 2 has been made in the register without sufficient cause and such
entry is wrongly remaining on the register of trade marks. No consideration on account of the balance of convenience of the parties or of public
interest have shown as to why the impugned registered trade mark should not be removed from the register when it is clearly established that the
applicant is the prior adopter and user.
In view of the above, we allow the rectification application and direct the Registrar of Trade Marks to remove the trade mark registered under No.
791498 in class 34. Let a copy of this order be forwarded to the Registrar of Trade Marks for compliance. There shall be no order as to costs.