Hoechst Aktiengesellschaft vs Artee Minerals And Ors.

S. Jagadeesan, J

The above appeal is directed against the order of Deputy Registrar of Trade Marks dismissing the opposition filed by the appellant herein for the

registration of the first respondents' trade mark ARTEELON in respect of the preparation for killing weeds including anti-cryptogamic preparations,

insecticides, fungicides, pesticides and parasiticides included in class 5. The respondent herein by application No. 416437 dated 20.1.84 sought the

registration of the trade mark ARTEELON in respect of the preparation of killing weeds including anti-cryptogamic preparations, insecticides,

fungicides, pesticides and parasiticides included in class 5. The mark was proposed to be used on the date of the application. The mark was ordered to

be advertised in Journal No. 918 dated 1.4.87 at page 417. The appellant filed the objections stating that they are the proprietors of the trade mark

ARELON registered under No. 362348 in class 5 in respect of the preparations for killing weeds and destroying vermin as on 30.5.80. Their case is

that the trade mark applied for by the appellant is deceptively similar to their trade mark and the rival goods are also the same and of the same

description. Therefore, undoubtedly, the trade mark applied for by the appellant would lead to confusion in the trade. Their opposition was mainly on

the ground that the registration of the impugned trade mark would be contrary to the provisions of Sections 9, 11, 12(1) and 18 of the Trade and

Merchandise Marks Act, 1958. The 1st respondent filed counter statement stating that they are the lawful proprietors of the trade mark ARTEE in

respect of preparations for killing weeds including anti-cryptogamic preparations, insecticides, fungicides, pesticides and parasiticides included in class

The said trade mark was registered under No. 330935 as on 23.11.77. The respondents are also proprietors of the trade mark in Devanagiri script

in respect of the same goods. So as to acquire the statutory rights in the trade mark they filed application No. 378909 as of 27.7.81. By virtue of the

long and extensive user, the respondent acquired considerable reputation and goodwill in respect of the impugned trade mark. The impugned trade

mark was honestly adopted by the respondent without any reference to anybody's trade mark much less the appellants. It is only by taking the word

ARTEE from their registered trade mark and adding a generic word and/or common suffix 'LON' they had coined the mark ARTEELON in October

1983. The respondents trade mark ARTEELON was adopted to distinguish their product and they have got every right to claim to be the proprietors

as part of their trade name was registered as trade mark ARTEE. The appellants filed evidence of user by way of affidavit dated 27.3.1989 in the

name of one Mr. Chaggan Lal Jain, Finance Director and Secretary of Hoechst India Limited alongwith unattested Photostat copies of invoices 'A'

series and advertisement cuttings B-series. On 17.4.89 the appellants filed another affidavit in the name of one Mr. Wolfarm Mascus dated 21.2.1989.

The respondents filed evidence by way of affidavit dated 20.10.89 in the name of Mr. Jugan Kishore Bhartiya, partner of the respondent's firm

alongwith the Annexure A, the publicity material, Annexure B the advertisement material, and Annexure C the Photostat copies of invoices. The

respondent also filed 18 affidavits from different agents/dealers. After completion of evidence the matter was heard by the Deputy Registrar. Under

the impugned order the Deputy Registrar overruled the objections of the appellants and directed the registration of the respondent's trade mark, finding

that the impugned trade mark is a new mark in view of the fact that the respondent was a registered proprietor of the trade mark ARTEE and now by

adding the suffix word 'LON' which is common to the rival trade marks will lead to a new mark. The weightage/importance is offered to the first part

of every trade mark and as the first part of the impugned trade mark ARTEE is totally different and distinguishable from the first part of the trade

mark of the appellant 'ARE'. Hence, there cannot be any deceptive similarity between both the trade marks. While dealing with the objection under

section 11(a) the Deputy Registrar held that the respondents are prior users of the trade mark ARTEE and as the respondents has added the suffix

'LON' it need not be taken as proposed to be used as the first part of the impugned mark ARTEELON is substantially the registered trade mark of the

appellant. On this ground the appellant's impugned trade mark is deemed to be in use and consequently the objections under section 11(a) cannot be

sustained. Similarly, the Deputy Registrar held that by virtue of the registration of the respondent's trade mark ARTEE, the respondents have proved

the user of the impugned mark and consequently the objection under section 9 of the said Act also cannot be sustained. Aggrieved by the same the

present appeal has been filed before the High Court of Delhi which was transferred to the Appellate Board by virtue of section 100 of the Trade and

Merchandise Marks Act, 1999.

There is no much controversy in this matter to elaborately discuss the affidavits of evidence in detail. The respondent is the registered owner of the

trade mark ARTEE which was registered on 23.11.77 under application No. 330935 and in Devnagiri under registration No. 378909 as on 27.7.81.

They have been using the said trade mark ARTEE from 1968. On 20.1.1984 the respondent applied for registration of the impugned trade mark

ARTEELON claiming the mark as one proposed to be used. It is not the case of the respondent that they are using the proposed trade mark or they

want any registration of the impugned trade mark as an associate trade mark. They are clear in their claim that the impugned trade mark

ARTEELON being a new trade mark they desire to use it in future though they are the registered proprietors of the trade mark ARTEE for

considerable long period. The view expressed by the Deputy Registrar that the respondent has taken the benefit of use under Section 54 and the

impugned trade mark is therefore deemed to be used from the date of registration of their trade mark ARTEE is not correct. The benefit of use under

Section 54 is given only in case of rectification proceedings when use of an associated trade mark is deemed to be use of the registered trade mark

against which rectification proceedings are initiated for non-use of the mark.

The appellants admittedly are the proprietors of the trade mark 'ARELON'.

Now the question is whether the proposed impugned trade mark is deceptively similar and would cause confusion in the minds of the consumers

who are farmers with average intelligence with imperfect recollection. A perusal of both the trade marks would clearly establish that they are almost

similar in both structurally as well as phonetically. There is not much of a difference between the appellant's trade mark 'ARELON' and the

respondent's proposed impugned trade mark ARTEELON. Even if the reasoning of the Deputy Registrar is to be taken into consideration that the first

part of the word to be taken into consideration since the second part of the suffix word being common in respect of both the mark, it should be

considered as to whether the first part in both the trade marks is similar or not. The first part of the appellant's trade mark is 'ARE' and the

respondents is 'ARTEE'. When the rival goods are the same, it is our duty to consider whether this would cause any confusion. The nature of

confusion can be decided only by the manner in which the customer may seek for the goods with the dealer. The customer, the main user being

agriculturist, whether the first part of the word alone would make a distinction between the two marks. Even if this is taken into consideration still we

have our own doubts as to how far the same can make the difference between the 'ARELON' and 'ARTEELON'. To make a distinction between the

words of the two trade mark, the consumers must be in a position to make a difference while pronouncing the middle of the word which we are afraid

whether the consumer who is mostly being agriculturist would be able to do it. Except the letter 'T' in the respondent's trade mark, the other portion of

both the marks are very much similar phonetically and structurally. When the rival marks are compared as a whole they are deceptively similar. On

this short ground, we dispose of the appeal with the finding that the proposed trade mark of the respondent is deceptively similar with that of the

appellant's registered trade mark. So far as the evidence produced by both the parties, we are of the view that there is no need to go into the question

elaborately as prima facie the impugned trade mark is deceptively similar to that of the appellant's mark. Further, when the respondent had been using

the trade mark ARTEE since 1968, we are not satisfied with the explanation of the respondent regarding adoption of the impugned trade mark. Taking

into consideration all these aspects we are of the view that the impugned order of the Deputy Registrar cannot be sustained and accordingly the same

is set aside. The appeal is allowed. No costs.