Berger Paints India Limited vs Registrar Of Trade Marks And Ors

S. Usha, J

1 . Appeal arises out of the order dated 18th May 2005 passed by the Deputy Registrar of Trade Marks dismissing the Opposition No. CAL- 107088

and allowing the application No. 762055 in class 2 to proceed for registration under the provisions of the Trade Marks Act, 1999 (hereinafter referred

to as the Act).

The third respondent herein filed an application on 28/08/1997 for registration of the trademark ""DUROMAR"" in class 2 in respect of paints and

maintenance compounds, varnishes, lacquers, preservatives against rust and against deterioration of wood, coberants, mordents, raw natural resins, all

being goods included in class

The mark was proposed to be used as on the date of application. The said application was advertised before acceptance in Trade Marks Journal

No. 1292 dated 1. 04.2003 at page 29. The appellant herein opposed the registration stating that they are one of the oldest, pioneer and leading

manufacturers and traders in the field of paints, distempers, dry colours. Since last five decades, they had been using several marks with the

prefix/suffix ""DUR/DURO"" and are also registered proprietors of various trade marks with the prefix like DURO, DUROMATT, BERGER

DUROMAT etc.

The appellant's trade mark has acquired goodwill and reputation among the public by virtue of long and extensive use, the impugned trade mark

which is deceptively similar to the appellants trade mark is likely to cause confusion & deception and therefore prohibited under Section 11 read with

Section 12 of the Act. The respondent's trade mark is proposed to be used as on the date of application and therefore not distinctive under Section 9

of the Act.

The third respondent filed their counter statement denying the averments made in the notice of opposition and stated that they started their business

in the year 1980 and the trade mark ""DUROMAR"" has been used continuously for last 20 years in various countries.

The Deputy Registrar on completion of the pleadings heard both the counsel and passed the impugned order. The objection under Section 11 of the

Act was rejected on the finding that the opponent/appellant failed to substantiate their use and reputation in the market trade. The rival trade mark are

not deceptively similar and therefore the objection by the opponent as to registrarbility was rejected. The opponent/appellant failed to show that the

applicant/respondents adoption was dishonest. The respondents are prior in adoption and therefore the Registrar exercised his discretionary power in

favour of the respondents.

Being aggrieved by the said order, the appellants are before us on appeal on the following grounds:

a) that the Deputy Registrar erred in allowing the application for registration;

b) that the Registrar misdirected himself both in law and in facts;

c) that the impugned order is ex-facie misconceived and arbitrary;

d) that the Deputy Registrar failed to appreciate that the prefix/suffix DURO/DUR is the distinctive indicuim of the appellant's business;

e) that the second respondent failed to take cognizance that the trade marks DUR, BERGEDUR, LUXADUR, TEODUR, POLYDUR, EPIDUR

were registered in class 2 in the year 1989 and are still subsisting;

f) that the trade mark DUROGLAZE was registered 50 years back was not considered by the second respondent;

g) that the second respondent misdirected himself in making the statement that the opponents are admittedly using their trade marks DURO/DUR

prefix which were registered in the year 1991;

h) that the second respondent erred in holding that there are many marks on the Register with the prefix DURO owned by different properties and

therefore no exclusive right can be claimed by the opponent in the prefix ""DURO"";

i) that the second respondent failed to appreciate the fact that the evidence dated 11.12.2000 provided by the respondent is subsequent to that of the

date of application.

j) that the Registrar wrongly decided the principles of deceptive similarity and

k) that the impugned order is contrary to law and not sustainable either in law or in fact.

The third respondent in their counter statement stated that they were incorporated as Martek Inc., on 06/08/1968 and changed to Martek Polymeric

Inc. on 04/02/1991 which was further changed to the present name DUROMAR Inc. on 14/09/1992. In 1980, they coined the trade mark

DUROMAR"" in respect of the goods falling in class-

They obtained registration of the trade mark DUROMAR on 05/01/1982 before the US Patent and Trade Mark office claiming user since 1980.

The respondent adopted the mark in the year 1980. As the mark is used on the global basis since 1980, there was no conflict between the rival marks.

The impugned order may be confirmed and the appeal therefore may be dismissed.

8 . We have heard Dr. Alok M. Saha, counsel for the appellant and Ms. Bhaswathi Singh, counsel for the respondent No. 3 during the Circuit Bench

Sitting at Kolkata on 25/08/2011.

The learned counsel for the appellant submitted that the impugned application was filed on 28/08/1997 as proposed to be used and so the mark

cannot be said to have acquired distinctiveness. The rival marks are similar. The goods are identical. The word DUR/DURO is used by the appellant

either as a suffix or prefix for a very long time. The appellants use is since 1928. The counsel pointed out to the respondents admission in the

impugned order that the appellants are using the trade mark DUR/DURO.

The respondents have not placed any documents to say that DURO is being used by several persons. The respondents registration which is of the

year 1980 is in the name of Martek Inc. and not in the name of the respondents. The 1st invoice filed by the respondent is only of the year 2004 and

not earlier to that. The appellants have their trade mark DUROCEM registered in the year 1943 which has not been considered by the Registrar while

passing the impugned order. The counsel then relied on Section 28 and Section 11 of the Act.

The appellant then relied on few judgments:

a) AIR 1953 SC 357 andAIR 1972 Cal 261 - National Sewing Thread Co. Ltd., Chidambaram Vs. James Chadwick & Bros. Ltd. And AIR 1972

CAL 261 - Prem Nath Mayer Vs. Registrar of Trade Marks and Anr. -

the onus is always on the applicant for registration to prove that there will be no confusion if the trade mark is allowed for registration.

b ) 2004 (30) PTC 345 (IPAB) - Berkefeld Filter Analagenbau GmbH Vs. Registrar of Trade Marks & Others,.

2005 (30) PTC 658 (IPAB) - Jolen Inc. Vs. Assistant Registrar of Trade Marks & Ors. and

2005 (30) PTC 533 (IPAB) - Wellcome Foundation Limited Vs. Reliance Formulations Private Ltd. & Anr. -

Applicants having registration in various countries is irrelevant to claim registration in India.

c): 2005 (30) PTC 272 (Cal) - Balsara Hygiene Products Limited Vs. Arun Chowdhury & Anr. -

a part of the registered trade mark if used by another person, the public will associate that with use of the registered proprietor.

d) AIR 1970 SC 146 - K.R. Chinna Krishna Chettiar Vs. Sri Ambal & Co. and Anr. -

if a trade mark is proposed to be used on the date of application and is likely to cause confusion with the existing trade mark then the registration

cannot be allowed.

e) AIR 1958 Bom 56 - Ciba Ltd. Vs. M. Ramalingam and S. Subramaniam - if any part of a trade mark is calculated to deceive it is the duty of the

court to order it to be removed.

In reply to the appellants arguments the counsel for the respondent submitted that the mark was registered in the names Martek Inc. in the year

1982 and later the name changed to DUROMAR INC. and the renewal of the registered trade mark now stands in the name of the present

respondent which is evidenced by the certificate at page 105 of the appeal book. The respondents had adopted and used the trade mark

DUROMAR"" outside India in the year 1980 whereas the appellants adopted the trade mark ""DUROMATT"" only in the year 1991. The evidence

filed by the appellant is only of the use of DUROCEM and not DUROMATT. The rival marks are totally different DUROMAR and DUROMATT

and therefore no confusion or deception.

The counsel then referred to few judgments:

a ) 1994 IPLR 31 - Reckitt and Coleman of India Ltd. Vs. Medicross Pharmaceuticals Pvt. Ltd.

b) 1997 PTC (17) (DB) High Court of Delhi -SBL Ltd. Vs. Himalaya Drug Co.

c) 1994 Supp (3) SCC 215 - J.R. Kapoor Vs. Micronix India

d) 2004 (29) PTC 488 (IPAB) - Sandoz Limited Vs. Hico Products & Ors.

where it was held common term either prefix or suffix will not cause confusion as emphasis will be to the suffix or prefix.

14 . In rejoinder the appellant submitted that though the respondents have stated there are several persons using the trade mark DURO, there is no

proof of use of the same. The Registration will be of no help, only use of the mark will help was the observation of the Apex Court in Corn Products

Case. The appellants trade mark DUROCEM was registered as early as 1943 and therefore they were the prior users of the mark and their rights

were to be protected.

We have heard and considered the arguments of both the counsel and have gone through the pleadings and documents.

We find force in the arguments of the counsel for the appellant that they are registered proprietors of the trade mark DUR/DURO either as suffix

or prefix. They have placed before us certain invoices of the year 1999 even though they claim user since the year 1991. The respondents herein

claim user since 1980 outside India but in the impugned application for registration filed on 28/08/1997 they are proposed to be used. The use of the

trade mark on the date of application is vital for obtaining registration. The trade mark was not put to use in India even on the date of filing the

evidence in support of the application. The invoice is of the year 2004 even that sale is only outside India and therefore will not be of any use to the

respondents. The other documents namely Product Date Sheet, General Application Guidelines etc also does not prove the respondent's use of the

mark on their goods.

The settled principle of law is that the onus is on the applicant for registration ie. the respondent to prove that the registration of the trade mark will

not cause confusion or deception. In the instant case, there is no sale in India and so the issue of confusion does not arise in our opinion. The mark

cannot be said to have acquired distinctiveness as it was only proposed to be used on the date of application and therefore hit by the provisions of

Section 9 of the Act.

Assuming that the respondents have adopted their trade mark from the name of the company, even that cannot be considered a valid reason as

there has been no sale in India. When there is no sale in India, the customers will only know of the appellants goods and not the respondents as the

appellants goods are in the market prior to that of the respondent. The customer/public may also be misled to think that the respondents goods bearing

the trade mark ""DUROMAR"" emanates from the appellants if introduced recently. When all the issues are decided against the respondents the

registration of the impugned trade mark cannot be allowed.

In view of the above reasons, the appeal is allowed and the registration of the trade mark ""DUROMAR"" under No. 762055 in Class 2 is refused.

No order as to costs.