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Judgment
Trade Mark,Class,Regd. No.,Goods
XEROX,03,254546,"Cleaning, polishing, scouring and
abrasive preparations.
XEROX,09,217825,"Photographic, electrophotographic,
photomechanical,
electrostatographic and
thermographic instruments and
apparatus, display machines (for
use in producing optical images),
machines for producing a
permanent visual record or copy, o
p t i c a l apparatus, photographic
apparatus, films and parts and
fittings of s u c h machines and
apparatus all included in class 9
XEROX,01,217823,"3Films (sensitized); chemical
products used in industry and
plastics included in class 1.`
XEROX,07,217824,"Printing machines, plates and
drums theref o r; parts and fittings
of the foregoing goods included in
class 7
XEROX,01,155627,"Developers consisting of a mixture
of electroscopic powder and
granular material used for
producing powder images in
making electrophotographic copies,
toners comprising llectroscopic
powder u s e d in connection with
granular material to produce
developer powders used for
making electrophotographic copies,
plates used in connection with
photographic copying machines, all
being goods included in class 1
XEROX,16,217826,"P aper, paper articles and
cardboard articles, all included in
class 1 6 ; cardboard, newspapers,
periodical publications, office
requisites (other than furniture),
index and record cards and forms,
printers' type and cliches
(stereotype); lithographic printing
apparatus for office use,
lithographic plates for use
therewith and lithographic prints;
books, photographs, stationery,
adhesive materials (stationery),
ribbons for printing, calculating
tables, tickets, stencil sets, writing
sets, document holders, office
machinery; trays and racks, all
included in class 16.
XEROXT HE
DOCUMENT
COMPANY",09,546220,"Photographic, electrophotographic,
photo-mechanical,
electrostatographic and
thermographic apparatus and
instruments; display machines (for
use in producing a permanent
visual record or copy); optical
apparatus; photographic apparatus;
films, facsimile transceivers;
photocopiers; xerographic copying
apparatus and instruments;
document scanners, computers;
computer programs computer
software; optical character
recognition apparatus, instruments
and software, document
management systems, electronic
publications; multimedia
publications; CD-roms; parts and
fittings included in class 9 for all
the
(xii) ORA 3 to 12/2007/TM/AMD (IPAB) Gee Kay Enterprises and ors vs. Hemant Haricharan Goel, the word was XTRONG and this Board held",,,
that no single person can claim exclusive right over the non-distinctive, descriptive mark.",,,
4 . The respondent filed its counter-statement and by our leave also filed additional documents in view of the importance relating to proof of user as,,,
laid down in Financial Times case. According to the respondent, they are a huge US based company with operations in more than 160 countries",,,
having the world's most established innovative documents solutions digital printers, copiers, facsimile machines etc. According to them, their expertise",,,
is unmatched. The respondents have an association with the trade mark since 1948 when no such word was used. In 1906, the US Patent for electro-",,,
photograph, later called xerography was granted. In 1948, Allied Company which obtained license to xerography patent coined the word Xerox. In",,,
1961 the company's name was changed to Xerox Corporation. It then became Rank Xerox and in 1962 Fuji Xerox Company was launched for,,,
marketing Xerox brand through out most of Asia. In 1977, the industry's first laser printer was announced. Apart from being the trade mark, the",,,
coined word Xerox is an integral and conspicuous part of their trade mark as a result of which the company's goods and services are identified with,,,
their trade mark. Among the marks which are sought to be rectified herein, claimed user is from 1961 with regard to five of the registrations., as",,,
regards the registration in Class 3 the user claimed is from 1960 and as regards the trade mark 155627 it is proposed to be used.,,,
The trade mark is different from the name of the patent 'xerography' though it may have etymologically derived from that. As stated earlier, the",,,
applicant has filed as many as seven volumes of typed set of papers to show that the word Xerox had been used in Courts, notifications, circulars,",,,
judgements etc., and therefore, it has passed into public domain. In response to this, it is submitted that on behalf of the respondents that some of the",,,
High Courts and Government Undertakings have acknowledged the respondent's proprietary rights in the word Xerox and those letters have been filed,,,
by the respondent. The respondent has also issued caution notices, advertisement campaign, numerous oppositions, law suits, cease and desist notices",,,
and other activities to protect its trade mark from becoming free for all.,,,
6 . The learned Senior Counsel appearing for the respondent submitted that the documents filed by the applicant could be divided into three groups: (i),,,
documents indicating casual non-commercial third party misuse; (ii) documents downloaded through biased and non-representative internet search; (iii),,,
documents filed to show third parties using Xerox mark or its various other trade mark or company name. The learned Senior Counsel referred to the,,,
history of Xerox, then the respondent's evidence to show internal vigilance and external vigilance, third party unsolicited evidence, documents",,,
evidencing extensive use. He submitted that respondent's vigilance in policing the mark before and after the institution of ORA has been consistent.,,,
He submitted that a mark will not be hit by genericity or become publici-juris because if for the said word has a conversational English language,,,
equivalent and that non-commercial casual use will not make the trade mark to publici-juris. There is no evidence to show that in relation to the goods,,,
in question, the competitors have been compelled to use the mark to sell the goods. The learned counsel submitted that the leading competitors of",,,
Xerox machines like Canon have always called themselves as Canon Photocopiers and not Canon Xerox machines. So the public, especially the",,,
competitors, knew that the ownership of this mark could be traced to the respondent. He submitted that genericity of the trade mark will creep in only",,,
if the proprietor does not take steps to protect it. The learned Senior Counsel submitted that there are letters from Public Sector Undertakings,,,
acknowledging misuse. The learned Senior Counsel submitted that when there was only one player in the market it is not unusual for the mark to be,,,
used as a synonym for the goods but if all along the origin of the mark is not forgotten then the mark will not become generic. Since its initial,,,
registration the mark has been constantly renewed and this shows the conscious assertion of trade mark rights by the respondent.,,,
7 . In the Chupa Chups case, the Court felt that giving exclusivity to 'Chup' would prevent other makers of lollipop from entering the market. But in",,,
this case, no competitor will suffer by the continuance of exclusivity since any way they do not use the word Xerox to describe their goods. In fact",,,
that is the important test. None of the competitors complain about the existence of the mark Xerox in the Register. In fact, the appellants had also not",,,
objected to it until a suit was filed against them before the Hon'ble High Court in the year 2004. The evidence shows that the trade mark was active.,,,
Capitalization of the first letter of the trade mark is consciously done wherever Xerox is used. The learned Senior Counsel referred to the Escalator,,,
case where one of the indicators of the mark slipping into generic use is the use of small letter. The learned senior counsel submitted that user is,,,
claimed only from 1961 and because of import restrictions initially the user in India was only by import and use in embassies. In 1965 the first sale of,,,
Xerox copying machine in India was to Baba Atomic Centre. This would show that the mark had been in use even before which is the reason why a,,,
Government undertaking like Baba Atomic Centre has chosen to place an order and the machine itself was installed in 1965. The learned counsel,,,
submitted that the patent for xerography machine was in 1947 and till 1967 no one could have entered the market. The learned counsel submitted that,,,
neither the Kushiram Biharilal Case nor the Financial Times case would apply here. In both the cases, as there were competitors. Here in 1965 when",,,
Xerox got its registration claiming user from 1961 there was no occasion for it to give a false date since there was no other photo copying machine in,,,
the market. It was not registered for preventive nor for defensive registration. None of the conditions of S. 32 arise. There is no pleading whether the,,,
non-user in this falls u/S 46 or S. 56. The applicant does not say that the mark was generic at its inception, his case is that by continued user it had",,,
become generic. The primary objection to registration is to the genericity which is not the case here. There is no evidence to show that the applicant,,,
was in any way affected from pursuing his calling or business. To prove generic use one should have evidence of production, consumer service and",,,
the competitor's perception none of which have been shown here. The learned Senior Counsel also referred to the concept of metonymy and,,,
submitted that the term Xerox was on such a high pedestal that concept of metonymy comes in to play. Several decisions have been cited.,,,
( i ) 235 F.3d 54: Creative Gifts, Inc. Fascination Toys & Gifts, Inc. and William Hones, Plaintiffs vs. Ufo, Michael Sherlock and Karen Sherlock - In",,,
which the Court observed that the compilation of website extracts was made in a biased manner drawing upon only those websites which appeared to,,,
use the term ""Levitron"" generically. This was relied on to show the websites relied on by the applicant were also drawn on the same basis.",,,
(ii) AIR 1992 Delhi 22 M/s Avis International Limited vs. M/s Avi Footwear Industries and another.,,,
(iii) AIR 1969 Mad 126 The Andhra Perfumery Works Joint Family Concerns vs. Karupakula Suryanarayaniah and Ors. - where it was held that the,,,
test whether a mark has become publici juris is whether the use by other persons has calculated to deceive the public but, whether it would have the",,,
effect of inducing the public to buy the goods not made by the original owner. The court held that surreptitious piracy cannot destroy distinctiveness.,,,
(iv) MIPR 2011 (3) 317 Jagpin Breweries Limited vs. Shaw Wallace and Company Limited - In this case it was held that a few unchallenged,",,,
scattered infringements by a number of traders would not render a registered trade mark common.,,,
(v) TRA/6/2005/TM/DEL M/s Times Publishing House Ltd. vs M/s. The Financial Times Limited and another (IPAB) - In this case the user from,,,
1948 had not been proved and therefore the mark was removed.,,,
(vi) AIR 2009 SC 892 Kabushiki Kaisha Toshiba vs. Tosiba Applicance Co. and Ors. - In this case it was held that the intention to use the trade mark,,,
was genuine and real and true distinction was made between S. 46(a) and (b).,,,
(vi i ) AIR 1992 Mad 74 Toshniwal Brothers (P) Limited and Toshniwal Instruments Madras -,,,
(viii) 2011 (a) CTC 721 Infosys Technologies Ltd. vs Jupiter Infosys Ltd. and another,,,
(ix) Extract from McCarthy on Trade Marks - where it is observed that most names become generic because the public is not given any other name,,,
to apply to an unfamiliar product.,,,
(x) 85 F.2d 75 (1936) Dupont Cellophane Co. Inc. vs. Waxed Products Co. Inc. - Here the trade mark involved was Cellophane and the Court held,,,
that the course of conduct of the complainant tended to make cellophane a generic term descriptive of the product than of its origin but in the,,,
advertisement no connection with Dupont Company was originally mentioned.,,,
(xi) 940 F.2d 638 Magic Wand, Inc. vs. RDB, Inc. -",,,
(xii) 272 F. 505 (S.D.N.Y.1921) Bayer Company vs. United Drug Co., - There it was held that ""The case, therefore, presents a situation in which,",,,
ignoring sporadic exceptions, the trade is divided into two classes, separated by vital differences. One, the manufacturing chemists, retail druggists, and",,,
physicians, has been educated to understand that 'Aspirin' means the plaintiff's manufacture, and has recourse to another and an intelligible name for",,,
it, actually in use among them. The other, the consumers, the plaintiff has, consciously I must assume, allowed to acquaint themselves with the drug",,,
only by the name 'Aspirin,' and has not succeeded in advising that the word means the plaintiff at all. If the defendant is allowed to continue the use of",,,
the word of the first class, certainly without any condition, there is a chance that it may get customers away from the plaintiff by deception. On the",,,
other hand, if the plaintiff is allowed a monopoly of the word as against consumers, it will deprive the defendant and the trade in general, of the right",,,
effectually to dispose of the drug by the only description which will be understood. It appears to me that the relief granted cannot in justice to either,,,
party disregard its division; each party has won, and each has lost.""",,,
(xiii) 120 F. Supp.2d 286 (2000) Pilates, Inc., vs. Current Concepts, Inc. and Kenneth Endelman - In this case the Court observed that the types of",,,
evidence to be considered in determining whether the mark is generic include dictionary definitions, generic use by competitors and other persons in",,,
the trade, plaintiffs own generic use, generic use in the media, consumer services.",,,
(xiv) 2003 (26) PTC Honda Motors Co. Ltd., vs. CharanjitSingh & ors -In this case one of the reasons why the Court accepted that plaintiff's mark",,,
had acquired reputation is the undertaking given by several persons that they will not use the mark.,,,
(xv) ORA/104/06/TM/DEL (IPAB) Shri Kanish Gupta vs. Liberty Footwear Company - This relates to persons aggrieved.,,,
(xvi) TA/166/03/TM/DEL (IPAB) M/s Kushi Ram Behari Lal vs. M/s New Bharat Rice Mills - Here the proof of the date of user as claimed was,,,
crucial for the decisions.,,,
Now we will refer to the evidence filed by the applicant. The Indian Section which is A1 to A728 are the rules of various High Courts, rules of",,,
various tribunals, cause lists etc. Then there is a foreign section which shows how this word had been used outside India and there are judgments",,,
wherein the word Xerox has been used. According to the appellant the words ""Xerox copies"" have been used in these documents. According to the",,,
respondent in most of these documents Xerox is capitalized. The applicant has also filed the copies of several judgements where the word Xerox has,,,
been used. To given an example at page 2 of this volume it relates to a judgement of the Andhra Pradesh High Court, the word Xerox copy is used.",,,
Similarly in 2007 Criminal Law Journal 2031 at page 82, which is the judgement of the Allahabad High Court, again the word Xerox copy is used.",,,
Here too the learned Senior Counsel submitted that Xerox copy is capitalized. Two voluminous paper books relating to these judgements have been,,,
filed. He The applicant has also filed documents where Xerox is used as verb. He has filed very many documents from USA Law Department,",,,
Defence, Local Government, Parliament where the word Xerox copy has been used.",,,
In response to this, and not to be out done by the massive paper books filed by the applicant, the respondent has filed 1356 pages to show that they",,,
had issued cease and desist notice against the misuse of the word Xerox. Many of these documents are post-litigation. In response to these letters, the",,,
Government of India, Ministry of Labour and Development, Government of Sikkim, The Registrar General of the High court of Jharkhand, Mumbai",,,
Port Trust and Andhra Pradesh High Court have acknowledged that they have inadvertently used the trade mark Xerox belonging to the respondent,,,
instead of using the word photocopy and that they have duly instructed the deletion of that word Xerox. The respondent has also filed a notice dated,,,
July 31, 2009 to the effect that Xerox cannot be used as another word for copying.",,,
Both the parties filed additional documents. The documents filed by the applicant are again extracts from the communications issued by various,,,
Government departments where Xerox is used as a word in various forms. In response, the respondent also filed additional documents one being a",,,
display advertisement, other extracts of a book titled"" Industrial restructuring"" and the third several display advertisement right from 1972.",,,
The Xerox marks have been registered in 1952 (155627), 1963 (217823 to 217824), 1969 (254546) and 1991 (546220). These marks have been",,,
periodically renewed, without any objection or opposition by anyone and no one, not even the respondent's major competitors, has attempted to remove",,,
the mark from the Register till date on the ground of ""genericity,"" until these batch of petitions were filed.. While a trade mark owner may take pride in",,,
his mark acquiring a stronghold in the people's minds with relation to the particular goods, if the public stops identifying the mark with the origin",,,
namely, the trade mark owner and starts using it as a synonym for the goods or services to which it was originally attached, then the trade mark risks",,,
the danger of losing its distinctiveness and ends in trademark death. Examples of such marks are 'Aspirin', 'Zipper', 'Laundromat' etc. The learned",,,
Senior Counsel appearing for the respondent submitted that the respondent had policed its mark vigilantly both internally and externally. To which the,,,
applicant responded that all their evidence was post-litigation and in any event it is of no use since by that time it had become generic.,,,
We find that at least from 2003, the respondent had begun to aggressively protect its mark by campaigning with advertisements like 'If you use",,,
Xerox the way you use Zipper, our Trade mark could be left wide open"" and ""If you use Xerox the way you use Aspirin, we get a headache"".",,,
It is also seen from the evidence filed before us that when the respondent took objection to the loose use of the word Xerox by Government, public",,,
sector undertakings etc., the response came in the form of apologies with assurances to set right the inadvertent error. We find, as referred to earlier,",,,
that the High Courts, Port Trust and like institutions and even the Government of India have agreed to delete the word Xerox and use the word""",,,
photocopy"". Several Governmental organizations have also given an undertaking that they will not use the mark in violation of the trade marks rights of",,,
the respondent. Therefore, though the public had been using the word Xerox in a loose manner, clearly knew that the owner of the trade mark was the",,,
respondent's. Perhaps the respondent has acted just in time to save its mark losing its life. Xerox has also been cited in text books as an example of a,,,
coined or invented word. Therefore, while there is no ignoring the documents that have been produced by the applicant to show the use of the word",,,
Xerox instead of using photocopy the equally voluminous replies filed by the respondents show the public's knowledge of the trade mark rights of the,,,
respondent. Further, since the word photocopier is available for the public to use the goods for which Xerox was first registered as a trade mark, the",,,
public will not be deprived by the exclusivity granted to Xerox. In the Chupa Chups case, that was the issue, that the Mexican lollipop makers will be",,,
deprived of the use of the word Chupa which means lollipop. Here the competitors like Canon only use the word ""photocopier"". In the Escalator case",,,
the proprietors had been using the word escalator with a small 'e' and along with elevator, thereby reducing the trademark strength. In the Aspirin",,,
case the Court felt that if Aspirin is made exclusive, then the defendants would be deprived of the right to use the word by which alone the public",,,
would be able to identify the product. That is not the case here. The word photocopier is available, not only for commercial use but also for non-",,,
commercial use. The public is quite familiar with that word. Further the patented invention was for Xerography from which the respondent has,,,
evolved Xerox unlike the ""cyclostyle' case. The one factor which leads us in favour of the respondent in this issue, is the uniform acknowledgement of",,,
all those who had used the word Xerox, that their use was inadvertent and that they would refrain from doing anything in violation of the Trademark",,,
rights of the respondent. This then is the evidence that the public was conscious of the ownership of the Trademark.,,,
11 . The trade mark has also been on the Register for a long time and had been renewed periodically and put in use continuously. The competitors,,,
knew of the existence of the mark and had they been hampered in their business by the continuance of Xerox in the register, they would have been",,,
the first to protest. In the Khodays case the Hon'ble Supreme Court refused to rectify a mark which had been on the register for 14 years. Here the,,,
mark has been on the register from 1960s. Of course in the Khodays case the rectification application was filed by the trademark owner, in this case it",,,
has been filed against the owner on the ground that the mark has lost its strength. But we find the long continuous existence on the register and the,,,
public acceptance of the trademark rights when pointed out are factors which weigh with us in our exercise of discretion.,,,
And finally we come to the proof of user as claimed. Here the appellant cited two of IPAB's judgements to support their case. When Xerox first,,,
applied for registration way back in 1961, there was no other photocopier in the market. It was not necessary for the respondent to gain a lead by",,,
giving a date of user earlier than the actual date. When the respondent applied there was no competitor dealing with the goods in respect of which the,,,
applications were made in 1963 claiming user from 1961. We find that as early as in 1965, Baba Atomic Centre had purchased the first Xerox",,,
machine in India. The difficulties of the respondent in producing evidence of use in 1961 when the registration has been renewed since then without,,,
any challenge must be accepted. The fact that they have given evidence of use from 1965 lends strength to their claim of user from 1961 when they,,,
applied in 1963.,,,
Two judgements of the IPAB cited are slightly different. In Kushiram Behari Lal Vs New Bharat Rice Mills (cited supra) both the parties are,,,
traders in rice and long time rivals. Kushiram Behari Lal applied for registration on 27.02.1989 claiming a 11 year user i.e. from 01.01.1978.,,,
Immediately its rival New Bharat Rice Mills which claimed user from 01.07.1978 challenged it. If there was proof of user it should have been easy to,,,
produce it because soon after the application for registration it was attacked. There was evidence in that case that Kushiram Behari Lal was,,,
associated with New Bharat Rice Mill and therefore knew of the latter's claimed date of user. New Bharat claimed that it was to steal a march over,,,
it that a date earlier i.e. 01.01.1978 was given. We have observed in our order that the claim of date of user is not a mere mistake; ""it has been made",,,
with a deliberate intention to deceive."" Therefore, that case turns on those facts. Here there is no allegation of deceit nor can there be any such",,,
allegation since the attack is made 46 years after registration.,,,
In the Times Publishing House case (Supra), the trade mark that was subject matter of dispute was applied for in 09.03.1987, claiming almost 40",,,
years user. That is Financial Times claimed that they had been in use from 1948 when the application was made in 1987. If they had claimed user,,,
from 1948 they should have produced those documents at the time of registration, since the registration was immediately attacked by its rival Times",,,
Publishing House. But they did not, or at least the only evidence which was a newspaper item produced by them was not accepted by us as proof of",,,
use. Further the Times Publishing House had already got the title 'Financial Times' approved in 1984 by the authority under the present Registration of,,,
Books Act. Though they had initiated to publish the paper, subsequently it was submitted that Times Publishing House had to discontinue the",,,
publication. Therefore, when Financial Times applied in 1987, they definitely needed to give a date of user which was prior to 1984. They chose 1948.",,,
In fact in that case, there was evidence of user subsequent to 1948 but prior to 1984. But for reasons best known to Financial Times, they chose to",,,
give 1948 as the date of use for which there is no evidence. The registration by Financial Times was immediately attacked and the evidence produced,,,
was insufficient Here the registration is attacked after several decades.,,,
This case stands out on a different footing. There was no rival at the time of registration. The date of application and the date of user are almost,,,
contemporaneous. There is just a two years' difference 1961 and 1963. In contrast in the two cases the gap is 11 years and 40 years. Xerox has,,,
proved that their machine was installed in 1965. We can reasonably presume user earlier to 1965 to that which is why the Baba Atomic Centre had,,,
placed an order for procuring the machine for installation. Therefore, after almost 50 years (1963-2009) of continued existence on the register without",,,
challenge, proof of almost 44 years user (1965-2009), we do not think the mark deserves to be removed.",,,
1 6 . The applicant knew that the respondent company was a huge multinational company with operations in more than 100 countries and yet the,,,
applicant took on the challenge. We appreciate the pains-taking manner in which the learned counsel for the applicant had gathered materials in,,,
several volumes to prove his case. While in consideration of environmental protection, we would definitely urge the parties to use less paper, the effort",,,
taken by the learned counsel deserves appreciation since the opponent was a formidable opponent.,,,
We have considered the additional documents filed by the parties. Miscellaneous Petitions No. 22/2011, 115/2011, 116/2011, 17 to 23/2012 and",,,
219/ to 225/2012 for filing additional documents are ordered accordingly. Miscellaneous Petitions No. 240, 241 and 322/2009 for stay stand closed. To",,,
sum up:,,,
a) The response from High Courts, Government organizations, public sector undertakings, universities etc. acknowledging the trademark rights of the",,,
respondent proves that the mark had not become generic;,,,
b) The mark had been on the Register since 1963 and continuously renewed without opposition.,,,
c) After 40 years of continuance in the Register, the respondent has been called upon to prove use and we are of the opinion that they have proved",,,
their user almost to the date of user claimed in these particular facts of this case. However, the user so proved relates only to Class 09 - application",,,
No. 217825 in ORA/199/2009/TM/KOL, Class 07 - application No. 217824 in ORA/200/2009/TM/KOL, Class 01 - application No. 155627 in",,,
ORA/204/2009/TM/KOL, Class 09 - application No. 546220 in ORA/291/2009/TM/DEL. Hence these rectifications are dismissed. For the other",,,
three marks in Class 03 - application No. 254546 in ORA/202/2009/TM/KOL, Class 16 - application No. 217826 in ORA/201/2009/TM/KOL and",,,
Class 01 -application No. 217823 in ORA/203/2009/TM/KOL there is no proof. Hence these rectification applications are allowed. No order as to,,,
costs.,,,