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Judgment
Prabha Sridevan, J
The present appeal is against the rejection of the Appellants trade mark application No. 1547273 in class 9 for the mark ""HCI"".
The Appellant is a leading developer of connectors and inter connect systems. On 9th April 2007, they applied for a trade mark ""HCI"" in respect of
Electrical Power Connectors in class 9. On 25th March 2008, the examination report raised an objection under Section 9 & 11 of the Trade Marks
Act, 1999 (hereinafter referred to as the Act). The search report sent along with the examination report cited the mark HCI CAB registered in class 9
bearing No. 1089597 in use since 26.3.2008. The Appellant replied that the trademark has no direct reference to the character or quality of the goods,
that it is a coined/invented trade mark and that it is visually, phonetically, structurally and conceptually different. There is no likelihood of confusion,
since the cited mark was in connection with PVC wires, cables and switchgear, whereas the Appellant was dealing in Electrical Power Connectors.
3 . A hearing was given. But the Respondent was not convinced and the order of rejection was passed.
4 . The Learned Counsel for the Appellant submitted that the impugned order has been passed without considering the Appellant's reply. The word
HCI is a unique combination of three alphabets. It does not refer to character or quality of goods. They are not used commonly in respect of the
relevant goods. This mark has been registered in the same class in several countries. The cited mark is clearly for different goods though in class 9
and relied on 1996 (10) PTC 512 (SC) Vishnudas trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Company Ltd.
We have considered the submissions. The Appellant filed their present application on 9th April, 2007. The application state that the 1st application in
a convention country to register the trade mark was USA on 3.11.2006 under Application No. 77/035, 942.
6 . The examination report cited Application No. 1089597 in class 9 HCI CAB advertised in Journal No. 1339, user date 26.03.2002, for P.V.C.
Wires, Cables and Switchgears in class 9 and also raised grounds under Section 9 viz. devoid of distinctive character.
After hearing, the Respondent held that
The application No. 1547273 is made for registration of trade mark consisting of letters ""HCI"" in Class 9. The mark consists of only three letters
which may be abbreviation of a name or it may indicate the model or grade of product. Such marks are not regarded as distinctive. This trade mark as
such is not capable of distinguishing the applicant's goods from goods of others.
The trade mark applied for registration consists exclusively of three letters which is not capable of distinguishing the applicant's goods from the goods
of others. Admittedly, the applicant's mark is ""proposed to be used"" in India. So, it obviously has not acquired any distinctive character at the date of
filing application.
The applicant had claimed priority since 3.11.2006 stating that they had filed application in USA with same detail. No copy of the US application or
any extract of that application has been filed so far.
Since the identical/similar trade mark in respect of same/similar goods is already there on record, in the name of a different person and there exists a
likelihood of confusion because of identity/similarity of earlier trade mark and identity/similarity of goods covered by such trade mark, therefore the
registration of this trade mark is barred under Section 11(1) of the Trade Marks Act, 1999.
8 . The U.S. registration has been produced, as also the registration certificates obtained by the Appellant in other countries. But the failure to produce
the US certificate is not the only reason for rejecting the application. So the production of it before us cannot mean that the appeal must be allowed.
Other countries have undoubtedly granted registration for the same trade mark in same class. This does not mean that the Respondent is bound to
allow registration. Other things being equal, there should be consistency, but if there is a circumstance which requires rejection, then that will be the
most important factor.
Counsel for the Appellant relied on the following citation:
1968 (3) RPC 54 - British Petroleum Company Limited v. European Petroleum Distributors Limited - It will be convenient to deal with the attack
made in the counterclaim on the last mark, No. 848,911, before coming to the question of infringement. The first ground of objection to this mark was
that it is not a distinctive mark and ought never to have been registered. This objection, if valid, ought of course to have prevented the registration of
the other five marks, but as they have been on the register for more than seven years it is now too late for the Defendants to take the point against
them, see Section 13. A trade mark may consist simply of letters of the alphabet provided that they constitute a ""distinctive mark"" - that is to say that
they are adapted to distinguish goods with which the proprietor of the mark has a connection in the course of trade, from goods in the case of which
no such connection subsists, see Section 68(1) and Section 9(1)(e) and (2).
In considering whether or not the mark is ""inherently adapted"" to distinguish the goods it is relevant to ask oneself whether and to what extent if the
proposed mark was not given a statutory protection, other producers of the goods would case of a mark consisting simply of letters of the alphabet the
answer to this question must depend to a large extent on the number of letters and the rarity of the combination. In the ""W. & G."" case (du Cros'
Application (1913) 30 R.P.C. 660) decided under the Act of 1905, the House of Lords considered the question in relation to a two-letter mark
consisting of two common initial letters, W. & G. There the user was proved for some five years, but only in the London area. Registration was
refused, but as I read the judgment - and in particular the speech of Lord Parker - that was not because the letters W. & G. were thought to be so
inherently unadapted to distinguish the goods in question (taxi cabs) as to make registration in principle impossible, but because the user proved,
especially as regards area, was thought not to be enough to justify registration in a case where the inherent distinctiveness of the mark was so slight.
In Kerly on Trade Marks (9th edn. (1966), paragraph 283) it is said that since the W. & G. case, two-letter marks are not registered. This case shows
that as a mere matter of fact that is not so; but further I do not think that it is right to say that no two-letter mark ought ever to be registered. of
course, if the letters constitute a common combination, as they do in this case, the mark ought only to be registered on proof of user for a substantial
time over the whole country, but no doubt proof of such user was given when the first B.P. mark was registered in 1921.
Book of Kailasam, Trade Marks - ""Three letter marks constituting a pronounceable word should be accepted in the prima facie case unless they are
objectionable as descriptive words, acronyms, etc. If a letter mark consists of letters with dots in between, like P.E.N. it will be regarded only as a
letter mark and objected as such. Similarly, objection will prevail when all the three letters are in capital letters, unless the word is a dictionary word.
Applicant may overcome objection by amending the mark, such as ""KEK, PIV"" etc. as ""Kek"", ""Piv"", where the first letter is in capital and the other
two letters in small type.
1996 (16) PTC SC - Vishnudas trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Company Ltd. - In our view, If a trader or manufacturer
actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no
bonafide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer
should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude
the other traders or manufacturers to get registration of separate and distinct goods which may also be grouped under the broad classification. If
registration has been given generally in respect of all the articles coming under the broad classification and if it is established that the trader or
manufacturer who got such registration had not intended to use any other article except and articles being used by such trader or manufacturer, the
registration of such trader is liable to be rectified by limiting the ambit of registration and confining such registration to the specific article or articles
which really concern the trader or manufacturer enjoying the registration made in his favour. In our view, if rectification in such circumstances is not
allowed, the trader or manufacturer by virtue of earlier registration will be permitted to enjoy the mischief of trafficking in trade mark. Looking to the
Scheme of the registration of trade mark as envisaged in the Trade Mark Act and the Rules framed thereunder, it appears to us that registration of a
trade mark cannot be held to be absolute, perpetual and invariable under all circumstances.
AIR 1960 SC 142 - Corn Products Refining Company v. Shangrila Food Products Ltd. - ""We think that the view taken by Desai, J., is right. It is well
known that the question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the court to decide
that question. English cases proceeding on the English way of pronouncing an English word by Englishmen, which it may be stated is not always the
same, may not be of much assistance in our country in deciding questions of phonetic similarity. It cannot be overlooked that the word is an English
word which to the mass of the Indian people is a foreign word. It is well recognized that in deciding a question of similarity between two marks, the
marks have to be considered as a whole. So considered, we are inclined to agree with Desai, J., that the marks with which this case is concerned are
similar. Apart from the syllable 'co' in the Appellant's trade mark, the two marks are identical. That syllable is not in our opinion such as would enable
the buyers in our country to distinguish the one mark from the other.
There is no convincing explanation why HCI was chosen for registration of the goods falling under the same class 9. Undeniably HCI CABS has
been there prior to the applicant's application. The last decision is applicable. When the two marks are considered as a whole, undoubtedly there is
likely to be confusion.
In view of the above observation, we are of the opinion that there is nothing which requires our interference in the impugned order. The appeal is
therefore dismissed without costs.