Apex Europe B.V. vs Registrar Of Trade Marks

This is the Appeal against the Order of Registrar of Trade Marks, Delhi dated August 09, 2018 refusing the registration of Trademark GTT under

Trade Mark Application No. 2378433 in Classes 6, 7 and 40.

The Appellant states that this application was filed in respect of:

[Class : 6] common metals and their alloys, namely metering rolls used in printing and coating machines; anilox rolls, glue rolls and doctor rolls used in

printing and coating machines.

[class : 7] machines and tools, namely: rolls (part of a machine) for use in printing, coating or other applications comprising the transfer of fluid via a

metering roll.

[class : 40] treatment of materials, namely engraving, coating, etching and generally surface-processing of metering rolls, anilox rolls, glue rolls and

doctor rolls.

The mark was filed on 13/08/2012. The Usage claimed is 31/05/2008.

FACTS OF THE CASE

As per the written submissions of the Appellant, it is an internationally renowned organization based in the Netherlands, founded 25 years ago, and

has more than 5,000 clients around the world and boasts worldwide presence including, but not necessarily limited to, the territory of India. The

Appellant is a global leader of anilox, glue set and metering products and print maintenance solutions, with 05 (five) production facilities on four

continents, a strong portfolio of clients in over 80 countries and leading solutions for customers in the industries of corrugated sheets, flexographic

printing, label and narrow web, offset and coating, the Appellant has become a world leader over a very short span of time.

The Appellant submitted that it was founded in the year 1993 as an innovative company involved in the business of manufacturing anilox rolls for

printing machines. Today, the Appellant boasts a clientele of more than 5000 clients across various countries, around the world including in India.

The Appellant submitted that in the year 2008, the Appellant honestly conceived and adopted the mark GTT, to enable the public at large and the

members of the trade to associate the goods originating from its source. The trade mark GTT stands for 'Genetic Transfer Technology' which offers

optimal solutions for other industrial sectors including flexible packaging and coating/offset.

The Appellant submitted that its GTT technology is also one of the first technologies of its kind to be granted a patent by the United States Patent

and Trademark Office and the European Patent Office. The Appellant’s GTT has also been awarded a 'Utility Model Protection' by the Dutch

and German Patent Offices. The Appellant's GTT technology is also patented in China. The Appellant is also the recipient of the Laser Innovation

Award, 2014. Most recently, in the 2nd EFTA-Benelux Flexo Awards (ceremonies organized and held in Antwerp in 2017), seven of eight print gold

medals were awarded to customers of the Appellant. It is also one of the first companies to be certified with the Esko-HD Flexo certification and the

MacDermid LUX certified co-supplier.

The Appellant submitted that ever since the adoption of the trademark GTT it has been used to denote the Appellant's goods and is also a source

identifier for the products of the Appellant. The consumers and traders all around the world exclusively associate the trade mark GTT with the goods

of the Appellant. The Appellant has used its trade mark GTT continuously, uninterruptedly and extensively uthroughout the world including India. Such

is the goodwill attributed to the Appellant's trade mark GTT that its presence on a product or otherwise is sufficient to enable consumers to associate

the product with its source. The trade mark GTT is associated by the consumers and the traders with the Appellant's products. A mere viewing of the

trade mark GTT conjures up the reference of the Appellant's goods in the minds of the traders and the consumers all around the world.

The Appellant submitted that in addition to the above, the Appellant has a very strong association with the Indian Territory as a variety of goods

bearing the Appellant's trade mark GTT have been continuously manufactured for export purposes in India since in or about the year 2008. All the

goods manufactured in India for and on behalf of the Appellant under the trade mark GTT is strictly in accordance with the stringent standards and

specifications (including standards and specifications as to quality control and packaging) of the Appellant.

The Appellant submitted that it has always been very particular and vigilant about the protection of its trademarks and service marks. In pursuance

of the same, and in order to acquire statutory rights (in addition to common law rights), the Appellant has filed applications and/or has obtained

registrations of its trade mark GTT in almost all major jurisdictions and countries around the world, including in India. Copies of the relevant

registration certificates were placed before us.

The Appellant submitted that it has a long and significant presence on the internet. The Appellant is the owner of the domain name

www.aianilox.com. The said domain name was registered on 29th April, 2015. Appellant’s goods bearing the trade mark GTT (in all languages)

are prominently displayed on the Appellant's website on the Internet and are accessible to consumers all over the world including consumers in India.

The Appellant submitted that it has regularly and continuously been promoting its trade mark GTT through extensive advertisements, publicity,

promotion and market research and the Appellant has been spending enormous amount of money, efforts, labour and skill thereon. The Appellant has

been doing so, through various means and modes, including through the visual and print media, trade literature and magazines, including on the internet,

television advertisement etc., worldwide, including India. In view thereof, the said trade mark GTT enjoys tremendous goodwill and reputation world-

wide, including India. The products under the trade mark GTT have acquired secondary meaning with the Appellant.

The Appellant submitted that it has an exclusive presence in India through its subsidiaries Apex India Roll Technologies and Apex India Sleeves

Technologies. Apart from the above, the Appellant has also liaised with several other notable Indian entities to bring its technology to India. Thus, the

reputation and the goodwill attached to the Appellant's trade mark GTT with respect to its goods and services are well recognized in India.

Copies of documents substantiating all the aforementioned submissions were submitted before us.

The Appellant submitted that in order to distinguish the goods and services from the goods and services of others, amongst various trademarks, has

adopted the impugned trade mark and has been using the said trade mark openly, extensively, continuously and uninterruptedly since adoption. Since

then, the said trademark of the Appellant has become connotative and denotative of the Appellant only and no one else.

The Appellant submitted that the high quality products of the Appellant have led to an immense amount goodwill being generated in favour of the

Appellant. All products of the Appellant bear the impugned trade mark in some form or other.

The Appellant submitted that it is also the Registered Proprietor for the GTT mark in other countries. the Appellant's trade mark GTT is

internationally famous and well-known trade mark, enjoying enviable goodwill and reputation internationally. The goodwill, reputation and brand equity

enjoyed by the Appellant in its trade mark GTT is an extremely valuable intellectual property right, owned and zealously guarded by the Appellant.

The Appellant submitted that in the above background, the Appellant's trade mark GTT had already acquired distinctiveness as on the date of the

Trade Mark Application No. 2378433. The Appellant being the proprietor of the trade mark GTT under Section 18 of the Trade Marks Act, 1999 is

entitled to the statutory protection of the same under various provisions of the Act.

The Appellant submitted that by virtue of such honest adoption, long standing, continuous and extensive use of the applied for trade mark in the

market, the Appellant has acquired and retained an exclusive right to the use of the trademark, and common law rights in the said trademark. The said

trademark has achieved such distinctiveness and degree of association with the Appellant, that the use of an identical or a deceptively similar mark in

relation to any goods or services is most likely and bound to be taken as indicating a connection in the course of trade or of rendering of services

between those goods and the persons using and having knowledge of the mark in relation to goods and services of the Appellant under the afore

mentioned trade mark.

The Appellant submitted that in order to protect the subject mark in India, the Appellant filed present trade mark on 13/08/2012 before the Ld.

Registrar of Trade Marks, New Delhi. The subject mark was examined and an examination report was issued. The Appellant had responded to the

said objections by way of filing of a response to the examination report.

The Appellant submitted that a show-cause hearing was appointed for Application No. 2378433 for the mark GTT in classes 06, 07 and 40 on the

20th of March, 2018. The counsel for the Appellant had appeared before the Hearing Officer at the Trade Marks Registry, New Delhi. The counsel

made submissions and produced the evidence which the Appellant relied on. The evidence was produced on a user affidavit as per procedure

established by law. Copies of said Hearing Notice and the documents submitted in compliance are being filed along with the present appeal. The

Hearing Officer had raised an objection with regard to one of the cited parties. As a worldwide co-existence was in force between the cited party and

the Appellant, the requisite co-existence agreement was produced at the time of hearing. However, unimpressed by the submissions put forth, the

Hearing Officer withheld the hearing order and refused to communicate the same to the counsel for the Appellant. Eventually, upon perusal of the

online records of the application, it was revealed that the Hearing Officer had refused Application No. 2378433. Said Refusal Notice dated 20th

March, 2018 was uploaded online but has not been served upon the counsels for the Appellant till date.

Appellant submitted that aggrieved by the said order, the Appellant preferred a petition for review of the Registrar's decision. The petition was

eventually appointed for a hearing on 09lh July, 2018. The counsel for the Appellant attended the hearing and adduced additional evidence to request

the Hearing Officer to review his decision. The counsel also produced a no-objection letter from one of the cited parties, in pursuance of the

requisitions made by the Hearing Officer who failed to appreciate the fact that a worldwide co-existence was, and still is in force. Regardless of the

same and sans any appreciation of the evidence placed before him, the Hearing Officer refused the review petition and upheld the refusal order dated

20th March, 2018. Refusal order of said review petition dated 09th August, 2018 has stated that on the first date of hearing i.e., 20th March, 2018

none appeared for the hearing and no request for adjournment was filed either. However, it is submitted that the counsel for the Appellant had

appeared on the said date and submissions in support of the application were also made. Upon perusal of the refusal order dated 20th March, 2018

which is available online, it becomes apparent that Mr. Tim S. Gupta, the counsel for the appellant had appeared before the concerned Hearing

Officer to make his submissions in support of the application.

Aggrieved by the impugned order dated August 09, 2018 passed by the Respondent, the Appellant has filed the present appeal before us.

ARGUMENTS MADE BY THE APPELLANT

The learned counsel for the Appellant Mr. Himanshu Deora submitted that the Registrar of Trade Marks had erred by refused the application for

the impugned trademark. The Appellant argued that the Hearing Officer of Trade Marks has not sufficiently appreciated the submissions in the

response filed by the Appellant and has not considered the Appellant's evidence and submissions placed on record by way of an affidavit of use dated

15 March, 2018 before rejecting the Subject Application by erroneously passing the Impugned Order. The Appellant's prior registrations and common

law rights in the Subject Application which it acquired by way of continuous, extensive and genuine use, was completely disregarded.

Counsel for the Appellant argued that they had submitted submissions and evidence showing statutory protection obtained by the Appellant

however the same was ignored by the Hearing Officer. The Appellant has submitted extensive evidence as well as submissions in support of the

trademark Application No. 2378433 showing use for approximately 10 years which has been ignored by the Learned Hearing Officer. There is no

reference, discussion or findings to the evidence and submissions of the Appellant in the decision of the Hearing Officer, the Appellant argued that the

Impugned Order is violative of the principles of natural justice, and is liable to be set aside as it has not been passed in consonance with the principles

of natural justice.

Counsel for the Appellant submitted that the impugned order has also been arbitrarily made without giving any reasoning for refusal of the

application and maintainability of the order dated 20th March, 2018. There is no reference, discussion or findings to the evidence and submissions of

the Appellant in the decision of the Hearing Officer, which makes the impugned order violative of the principles of natural justice, and is liable to be

set aside.

We have examined the Registrar’s order dated August 09, 2018 and reviewed the submissions of the Appellant. It is noted that the Registrar

has not considered the evidence, documents and submissions tendered in support of the subject mark. None of the documents, submissions,

information available prima facie were taken into consideration prior to issuance of the Impugned Order.

The impugned Order has not considered the Appellant’s prior and extensive rights in the Appellant's Trade Mark and the various foreign

registrations already obtained. Going into the similar cited marks, cited as objection it is seen that 'GTT' which is visually, phonetically and structurally

identical to the cited mark under Registration Number 1920874 for the mark GTT in the name of Gaztransport Et Technigaz of the address 1, Route

De Versailles, 78470 St Remy Les Chevreuse, France have co-existed in a similar business sphere and have not been engaged in any conflict

whatsoever till date. By virtue of a worldwide co-existence agreement, the Appellant and the cited party has agreed to provide to each other written

instruments and other documentation as may be necessary, to pre-empt authorities citing each other's GTT trademarks as objections. The coexistence

agreement was placed before us. A perusal of Clause A of the co-existence agreement also makes it clear that the business areas of the Appellant

and the cited party are different. A perusal of Clause 1C also makes it clear that the Appellant and the cited party have unequivocally agreed to not to

object, whether by way of oppositions and/or cancellations, or to otherwise hinder any other application for registration until and unless it is in violation

of the terms and conditions of this agreement.

Clause ID of the coexistence agreement states that parties shall provide to each other, Letters of Consent as and when required by any of the parties

to the agreement. Also, by virtue of the same clause, a letter of consent had been obtained from the cited party to further substantiate the Appellant's

case. Said Letter of Consent has also been placed before us. Therefore refusal under Section 11(a) of the Trade Marks Act, 1999 is untenable in law.

The Appellant is an honest concurrent user of a trademark under Section 12 of the Trade Marks Act, 1999.

Regarding the refusal of the impugned trademark application under Section 11(a) of the Trade Marks Act, 1999, the objection based on

Gaztransport Et Technigaz, does not apply due to the co-existence arrangement between the parties. The second objection is based on the mark

Global Technology and Trademarks Ltd.(BVI). The cited party's trademark GTT BRITISH VIRGIN ISLANDS is substantially distinct from the

Appellant's GTT trademark. A copy of the journal advertisement of the cited party's registration was filed before us. The cited party's trademark

registration was advertised to the public subject to the following disclaimers: ""Registration of this trade mark shall give no right to the exclusive use of

word ""British Virgin Islands"" and ""The mark shall be limited to the colours ""black and blue"" as shown in the representation on the form of the

application"". As the cited party has been granted a right over the trademark only as a whole, the cited party cannot claim any exclusive right to the

letters GT&T. Therefore refusal under Section 11(b) is untenable in law.

The Impugned Order cites three judgements:

a) SAP SE Ors. v. SAP Edge [CS (OS) 599/2015]. This is not applicable since the Defendant did not appear, much less present any evidence, in the

proceedings, therefore there is no comparative evidence. Further, Paragraph 14 of said judgement clearly mentions that the same is being passed due

to the evidence of the Plaintiff being unrebutted.

b) Icon Health and Fitness, Inc. v. Sherff Usman and Ors. [CS(Comm.) 216/2016]. For the reasons listed above said judgement is also not applicable

to the present case, as the Defendant was proceeded against, exparte.

c) Skipper Limited v. Akash Bansal Limited and Ors. [G.A. No. 237 of 2016 and CS. No. 7 of 2016]. The trademark involved in said judgement

consists of two words ""BANSAL SKIPPER"" vis-a-vis ""BANSAL ASTER"". The cause of action was one of the two words i.e., 'BANSAL'. Also,

the word 'BANSAL' happened to be the personal name of one of the Defendants to the suit. Given the above facts and circumstances, said

judgement is not applicable to the subject matter.

As stated by the Hon’ble Supreme Court in Cadila Healthcare Ltd. Vs. Cadila Pharmaceuticals Ltd. in AIR 2001 SC 1952, the learned Judges

has considered the various decisions of the High Court on the question of deceptive similarity and at para 35 below as under :-

“35 Broadly stated in an action forpassing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the

following factors to be considered:

a) The nature of the marks i.e.whether the marks are word marks or label marks or composite marks, i.e. Bothwords and label works.

b) The degree resemblances between the marks, phonetically similar and hence similar in idea.

c) The nature of the goods in respect of which they are used as trade marks

d) The similarity in the nature, character and performance of the goods of the rival traders.

e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care

they are likely to exercise in purchasing and/or using the goods.

f) The mode of purchasing the goods or placing orders for the goods, and

g) Any other surrounding circumstances when may be relevant in the extent of dis-similarity between the competing marks.â€​

It has been stressed that the question whether the two marks are likely to give rise to confusion or not is a question of first impression (Corn Products

Refining Co. V.Shangrila Food Products Ltd., AIR 1960 SC 142) .

The rules for comparison of words have been laid down by Lord Parker in Pianotist Company Limited’s application, (1906) 23RPC 774 at

p.777, which is as follows :-

“You must take the two words. You must judge 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 trademarks is used in a normal way as a trade mark for the

goods of the respective owners of the marks. If considering all those 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.â€​

Bearing in mind the cited similar registered trademarks, it is to be ascertained whether the impugned trade mark application as applied on the

article of purchase, would create an impression in the mind of an ordinary citizen that he was buying an article bearing the registered trademark. The

general principle on the standard of care to be expected is that it must not be assumed that a careful examination of the mark will be made. It is also a

well settled proposition that the marks have to be compared as a whole.

We find that there is no visual or conceptual similarity between the impugned trade mark application and the cited trade marks, and

consequentially, no confusion would be cause to an average ordinary consumer with imperfect recollection. The Registrar’s order dated August

09, 2018 refusing the registration of Trade Mark Application No. 2378433 in Classes 6, 7 and 40 has failed to examine these aspects.

The applied trademark has been genuinely, extensively and continuously used by the Appellant since its adoption on 31/05/2008. The applied

trademark is a distinctive mark. In addition, owing to genuine, continuous, and extensive worldwide use and promotion of the applied trademark, it has

acquired distinctiveness and is associated in the minds of the consumers, the public in general and the members of the trade. Therefore, the impugned

mark is not descriptive of the services sought to be covered under it and has no reference to the kind, quality an intended purpose of the services, but

is in fact inherently distinctive and is eligible for registration.

Taking into consideration of the above, the Appeal is hereby allowed. Impugned order dated August 09, 2018 passed by the Registrar of Trade

Marks is set aside. The Trade Mark Application No. 2378433 in Classes 6, 7 and 40 is allowed to proceed on to advertisement in the Trade Marks

Journal. There is no order regarding costs.