Bata India Limited vs Deputy Registrar Of Trade Marks And Ors.

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S. Usha, J

The above appeal has been filed against the order of the Deputy Registrar of Trade Marks dated 05/07/1999 disallowing the opposition No.

CAL2760 and allowing the application for registration under No. 517770 in class 25 to proceed for registration under the provisions of the Trade and

Merchandise Marks Act, 1958 (hereinafter referred to as the Act).

The brief facts of the case are-The third Respondent herein filed an application for registration of the trade mark 'WEEKEND BY MAX MARA'

in respect of clothing and articles of clothing, footwear, headgears, stockings, gloves, neckties, belts, sportwear, sports clothing considered separately

and in combination, for women included in class 25 under No. 517770 on 03.10.1989. The said application was advertised in the Trade Marks Journal

No. 1094 (supplement) dated 08.01.1995 at page 33.

The Appellant herein filed their notice of opposition to the application for registration on the ground that the impugned trade mark was not

registrable under the provisions of sections, 9,11 (a), 11(e), 12(1), 17 and 18(1) of the Act.

On completion of the formal procedures, the matter was heard and the impugned order was passed. The Deputy Registrar had observed that the

prefix 'WEEKEND' is common to both the conflicting marks but the suffix i.e. 'BY MAX MARA' to the impugned mark is inadequate to obliviate the

apprehension or likelihood of confusion or deception to the purchasers in the market. The impugned trade mark has no direct reference to the

character or quality of the impugned goods. The impugned trade mark is not deceptively or confusingly similar to the opponent's trade mark and is

registrable under the provisions of Sections 9,11(a), 12(1) and 18(1) of the Act. The applicants have proved their proprietorship. The opposition was

therefore dismissed and the application for registration was allowed.

Being aggrieved by the said order, the Appellants filed the instant appeal before the Hon'ble High Court of Calcutta in TMA No. 3 of 1999 and the

same was transferred to this Appellate Board in pursuance to Section 100 of the Trade Marks Act, 1999 and re-numbered as TA/8/05/TM/KOL.

The Appellants are manufacturer and retailer of shoes, chappal, footwear, hosiery and accessories and readymade garments and sell their products

under the trade mark and house mark 'BATA' since 1934. The Appellants hold various other trade marks in respect of its products. The Appellants

are the proprietors of over 300 trade marks.

The memorandum of grounds of appeal are:

(a) The learned registrar erred in dismissing the opposition and allowing the application for registration;

(b) the learned registrar misdirected himself in his appraisal and application of the material facts of the case resulting in total miscarriage of justice;

( c) the order of the Registrar is vitiated by his failure to follow the well established principles of law;

(d) the Registrar failed to appreciate that the Appellant is the prior and bonafide adopter, user and registered proprietor of the trade mark

'WEEKEND';

(e) the Registrar erred in holding that the Appellant's trade mark 'WEEKEND' is dissimilar to the trade mark 'WEEKEND BY MAX MARA' as the

former contains one word and the letter four words;

(f) the Registrar failed to appreciate the fact that the rival marks are identical and /or deceptively similar;

(g) the Registrar failed to appreciate that the goods are same / similar;

(h) the learned Registrar ignored the provisions of Section 12(1) of the Act while passing the impugned order;

(i) the Registrar failed to take note of the fact that the Respondent had not used the impugned trade mark in India;

(j) the Registrar failed to consider the fact that the Respondent could not establish that the trade mark acquired transborder reputation;

(k) the Registrar failed to appreciate the fact that the Respondent failed to establish its case complying with the provisions of the Act;

(l) the Registrar overlooked the grounds of passing off;

(m) the Registrar solely proceeded on the basis that in the impugned trade mark in which 'WEEEKEND' is a prefix and 'BY MAX MARA' is a suffix

while applying the principles of comparison of marks but totally overlooked the fact that the question of prefix and suffix can arise only in respect of a

trade mark which is a single word and not when the trade mark is made up of plurality of words;

(n) the impugned order is otherwise bad in law and facts.

The third Respondent filed their counter-statement denying the various allegations made in the grounds of appeal. The Respondent submit that they

are old established company and owner of the trade mark 'WEEKEND BY MAX MARA' and 'MAX MARA s.r.l.' engaged in manufacturing and

marketing of clothing and articles of clothing, footwear, headgears, stockings, gloves, neckties, belts, sportswear, sports clothing, considered separately

and in combination for women.

The trade mark 'WEEKEND BY MAX MARA' was adopted by them in Italy in the year 1982 and first used in Italy in the year 1983 and has been

used continuously and extensively on a worldwide basis. They have advertised their goods bearing the said trade mark in various journals and

magazines throughout the world. The said trade mark 'WEEKEND BY MAX MARA' has been registered in various countries.

The adoption of the trade mark 'WEEKEND' by the Appellant is subsequent to that of the third Respondent. The Appellants are well aware of the

third Respondent's trade mark 'WEEKEND BY MAX MARA'. Being aware of the third Respondent's adoption and use, the appeal has been filed

only to harass the third Respondent. The appeal has no valid grounds and is devoid of any merits. The relief sought is not maintainable either on facts

or in law. The appeal therefore be dismissed with exemplary costs.

We have heard learned Counsel Shri Saurabh Banerjee for the Appellant and learned Counsel Shri Sayantan Basu for the third Respondent in the

Circuit Bench Sitting at Kolkata on 21st June, 2010.

The learned Counsel for the Appellant stated that they had been using the said trade mark 'WEEKEND' since the year 1983. The third

Respondent had filed their application for registration in the year 1989 as proposed to be used mark, whereas in the counter-statement they have

stated they are using the same since July, 1982 in Italy is totally wrong. The third Respondents though claim to have used the mark since July, 1982

there is no evidence produced in proof. The third Respondent had only been selling in Italy, if at all and not in India. In this regard the counsel relied on

the judgment reported in 2004 (28) PTC 585 (SC) Milment of the Industries and Ors. v. Allergan Inc. to say that if a multinational company who had

not sold in India cannot stop Indian company from carrying on the business using the impugned mark and also relied on the judgment reported in 2009

(41) PTC 248 (Mad) DB UAS Pharmaceuticals Pty. Ltd. and Anr. v. Ajantha Pharma Limited. The counsel further relied on the judgment reported in

2004 (28) PTC 663( IPAB) E.L. Du Pont De Nemours & Co. of USA v. Gemini Distilleries Ltd. to say that the principle of transborder reputation

relating to well known mark can be decided only when the Respondent's foreign reputation if any has reached India and that they have established

their presence in India which has not been proved by the third Respondent herein. The counsel also relied on the judgment reported in K ironical

Kashiram Marketing and Agencies Private Limited v. Sachdeva and Sons Industries Pvt. Ltd. 2006 (32) PTC 434 (Mad.) (DB) Devi Pesticides

Private Limited v. Shiv Agro Chemicals Industries.

The learned Counsel for the third Respondent in reply stated that the Appellant's user was only since 1983 whereas the third Respondents are

using the said trade mark since the year 1982 belts, sportswear, i.e. prior to that of the Appellants. The third Respondent also drew our attention to the

impugned order and stated that they had filed sufficient documents which were considered and recorded by the Registrar. The counsel then brought to

our notice the finding of the Registrar at page 10, at about 10th line of the impugned order: ""In this case, the prefix 'WEEKEND' is common to both

the conflicting marks but the suffix i.e. 'BY MAX MARA' to the impugned mark is adequate to obliviate the apprehension or likelihood of confusion or

deception to the purchasers in the market"". The counsel then relied on Section 17 of the Act. The third Respondent relied on the judgment reported in

2008 (4) CHN 608 Three-N-products Private Limited v. Emami Limited. In support of their contention.

We have hard and considered the arguments of both the counsel and have perused the pleadings and documents.

A trade mark when applied for registration is registrable if it is distinctive or capable of being distinguished of the goods on which it is used. The

mark is said to acquire distinctiveness either by use or inherently. In the instant case, the mark is a combination of four words; therefore the mark

could acquire distinctiveness only by use. The mark has been applied for registration on 3.10.1989 as a proposed to be used mark. The mark was not

put to use as on the date of application and therefore could not be said to have acquired distinctiveness.

The next issue would be as to the likelihood of confusion and deception. Confusion or deception may arise from the mode in which the mark is

being used by the applicant or by similarity of the marks or by the fact that a particular mark is known in the market by a particular name. It also

depends on the class of customers, the extent of reputation, the trade channel, the existence of any connection in the course of trade. In deciding the

question of likelihood of confusion the Apex Court and various other Courts have held that the mark have to be compared as a whole and that it was

not a matter of microscopic inspection but the general and casual point of view of a customer walking into a shop.

A mark may be known in a market by a particular name which does not appear on the mark itself. In the instant case, it is seen the mark

'WEEKEND' is in use by the Appellants since the year 1983 whereas the third Respondents though claim to have used the mark since 1982 in Italy,

there is no whisper as to when they started in India nor is there any iota of evidence to show that their use in India. No doubt the third Respondents

have produced some invoices of the year 1989, 1990 and so on, but they only show that the third Respondent's sale is outside India and not in India. In

case of an application for registration, the onus is on the applicant i.e. the Respondent herein to prove that there will be no confusion if the mark is

allowed to be registered. In the case on hand, the third Respondent has failed to satisfy the same.

In the case of deception, as in the case of confusion, the deception may be due to what appears on the mark itself. In Eno v. Dum (1890) 7 RPC

311 - NS Thread Co. v. James Chadwick & Bros, the House of Lords held that registration ought to be refused wherein it was not clear that

deception may not result. In Mc. Dowells application (1927) 44 RPC 335, it was decided that the burden to prove that a proposed trade mark is not

likely to deceive lies upon the applicant and that if that proof is incomplete, then in dubio the application should be refused. The same applies to this

case and the Registrar ought to have refused registration.

The settled principle of law is that the marks are to be compared as a whole. If that be the case, the Appellant's mark is 'WEEKEND' and the

third Respondent's mark is 'WEEKEND BY MAX MARA' as far as the Appellant's mark is concerned, the mark has been in use since 1983 in India

whereas the Respondent's mark has not been put to use in India even as on day as per the Respondent's documents and that apart the public will only

say the first word i.e. 'WEEKEND' and not WEEKEND BY MAX MARA' while purchasing the goods. In such case, we are of the view that by

allowing the registration it would only cause confusion and deception among the public.

One more aspect we have seen is that on perusal of the documents (some of them were of the year 2000-2006 which we have not considered as

they were subsequent to the impugned order even though not objected to by the Appellants) the third Respondent's mark is either MAX MARA or

only WEEKEND which is again outside India. It is worthwhile to quote the observations of the Apex Court in 2004 (28) PTC (SC) at para 9 and 10....

We are in full agreement with what has been laid down by this Court. Whilst considering the possibility of likelihood of deception or confusion, in

present times and particularly in the field of medicines, the Courts must also keep in mind the fact that nowadays the field of medicine is of an

international character. The Court has to keep in mind the possibility that with the passage of time, some conflict may occur between the use of the

mark by the Applicant in India and the user by the overseas company. The Court must ensure that public interest is in no way imperiled. Doctors

particularly eminent doctors, medical practitioners and persons or Companies connected with medical field keep abreast of latest developments in

medicine and preparations worldwide. Medical literature is freely available in this country. Doctors, medical practitioners and persons connected with

the medical field regularly attend medical conferences, symposiums, lectures etc. It must also be remembered that nowadays goods are widely

advertised in newspapers, periodicals, magazines and other media which is available in the country. This results in a product acquiring a worldwide

reputation. Thus, if a mark in respect of a drug is associated with the Respondents worldwide it would lead to an anomalous situation if an identical

mark in respect of a similar drug is allowed to be sold in India. However, one note of caution must be expressed. Multinational corporations, who have

no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian Company by not permitting it to sell a

product in India, if the Indian Company has genuinely adopted the mark and developed the product and is first in the market. Thus, the ultimate test

should be who is first in the market.

In the present case, the marks are the same. They are in respect of pharmaceutical products. The mere fact that the Respondents have not been

using the mark in India would be irrelevant if they were first in the world market. The Division Bench had relied upon material which prima-facie

shows that the Respondents product was advertised before the Appellants entered the field. On the basis of that material the Division Bench has

concluded that the Respondents were first to adopt the mark. If that be so then no fault can be found with the conclusion drawn by the Division

Bench.

The above observation applies to the case on hand. The third Respondent though applied for registration in India in the year 1989 as a proposed to

be used mark had not used the same in India. There is no evidence produced to prove their user. So it is clear that the third Respondent though had

applied for registration had no intention to use the same in India. The third Respondent's use outside India though pleaded since the year 1983, the first

document is of the year 1986 and not earlier. Considering the observations that the mere fact that the third Respondents have not been using the mark

in India would be irrelevant if they were first in the world market, the third Respondents being subsequent to that of the Appellant the registration

ought not to have been granted.

The Apex Court in Corn Products Case has observed that mere registration of the trade mark i.e. mark on the register will not prove use of the

trade mark. The third Respondent has stated that the mark has been registered in various countries throughout the world and the impugned registration

ought to be allowed to continue on the register. Applying the observation of the Apex Court in Corn Products we are of the opinion that mere

registration in various countries will not help the Respondents to prove their user. If at all used, it is to be taken that the mark was used outside India

and not in India.

In view of the above observation, we are of the opinion that the above appeal be allowed and the order passed by the Deputy Registrar of Trade

Marks on 05.07.1999 be set aside. The appeal is accordingly allowed without any order as to costs.