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Judgment
Z.S. Negi, J
This is an appeal under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) preferred against the order dated 11.5.2007
passed by the Deputy Registrar of Trade Marks, New Delhi whereby he refused application No. 166771B for registration of trade mark and allowed
opposition No. DEL-162329 opposing the said application for registration.
The case of sole proprietor of the appellant firm, Shri S. Jaswinder Singh Passitrading as M/s. J.S. Passi Agro Engg. Lndustries - (for convenience
the appellant shall hereinafter be referred to as Shri J.S. Passi), is that he bonafidely adopted and used the trade mark J.S. Passi Agro Engg.
Industries and filed on 13.1. 2003 application No. 1166771B claiming user since 28.2.1998 in class 8 in respect of hand tools including horticultural
tools, forestry tools, agricultural tools, garden tools and lawn movers for registration of the trade mark in respect of the aforesaid goods. The
application was advertised in the Trade Marks Journal No. Mega 4, dated 25.10.2003 at page 1785 and thereupon on 9.2.2004, M/s. Passi Mechanical
Works, the respondent No. 1 herein, gave notice of their intention to oppose the registration, which was numbered as opposition No. DEL-162329, on
the grounds, inter alia, that the registration would be in violation of the provisions of Sections 9, 11, 12 and 18 of the Act; that the respondent No. 1 are
engaged in the business of horticultural tools, forestry tools, hand tools, lawn movers and parts and fittings thereof since the year 1962; that the trade
mark Passi is registered under No. 357195 as of 7.1.1980 in class 8 and on account of superior quality of goods of its manufacture, the trade mark has
earned a valuable goodwill and reputation and the same is popular among the purchasing public; that the respondent No. 1 are also the owners of
copyright in the artistic work 'Passi' registered under No. A 27692/80 under the Copyright Act, 1957 and that the appellant knowing fully well that he
has no right in the said trade mark and, the respondent No. 1 has applied for registration of trade mark PASSI in class 6 and class 7 under application
No. 1222547 and 1222548, respectively, made another application No. 1227730 in class 7 on 28.8.2003 claiming user since, 1.4.2000 for registration of
trade mark label J.S. Passi.
The appellant filed the counter-statement on 16.8.2004 denying the material averments made in the notice of opposition and after completion of the
procedural requirements, the matter was heard on 21.7.2006 by the Deputy Registrar of Trade Marks and passed the impugned order on 11.5.2007.
Aggrieved by the impugned order, the appellant preferred the present appeal on the grounds, inter alia, that the appellant is the honest and concurrent
user of the trade name/trade mark since the year 1998 and such use remained unchallenged by the respondent No. 1; that the respondent No. 2 has
committed series of errors in the process of arriving at the impugned judgment especially by misconstruing the facts of the surety bond dated 9.2.1998
and ignoring or not noticing the host of judgments cited before the respondent No. 2 during the course of hearing; that the findings on objections under
Sections 9 and 18(1)of the Act are clearly perverse; that the respondent No. 2 ought not to have sustained the objection raised by the respondent No 1
under Section 11 and the finding of the respondent No. 2 regarding triple identity position between the parties is totally misplaced having regard to the
provisions of Section 12 of the Act; that the respondent No. 2 has not adverted to the provisions of Section 35 of the Act and that because of long gap
of period between date of hearing and passing of order, the respondent No. 2 has missed out several substantial points/arguments that were urged by
the appellant and as such the appellant has suffered material prejudice on this count, due to which also the impugned order is totally erroneous and
illegal and the same is liable to be set aside.
The respondent No. 1 filed the counter-statement on 4.2.2008 denying all the material averments made in the appeal and raised certain preliminary
objections such as that the appeal is barred by limitation, that the application was made by the appellant for registration in the name of J.S. Passi Engg.
Industries and the respondent No. 2 passed the order in that name but the appeal is filed in the name of J.S. Passi Agro Engineering Industries, that
the appellant's application for the registration was in respect of various goods including lawn mover in class 8, whereas the lawn movers is in class 7,
etc. The appellant has also filed rejoinder to the counter-statement on 10th July, 2008 disputing the submissions made in the counter-statement,
including the preliminary-objections raised by the respondent No. 1. After completion of procedural requirements, the matter was taken up for hearing
wherein Shri Amar Vivek, Advocate appeared for the appellant and S/Shri M.K. Miglani, D.K. Dhingra and Gaurav Miglani, Advocates appeared for
the respondent No. 1.
Shri Amar Vivek, learned Counsel for the appellant, contended that the preliminary objection about the varying description of the appellant in the
application for registration, etc. and in the appeal cannot be raised at the appeal stage. It was submitted that in any case the appellant has been
transacting business all through as J.S. Passi Agro Engg. Industries and the description J.S. Passi Engg. Industries, which is a typographical error, has
been sought to be projected out of proportion. Learned Counsel contended that the respondent No. 2 has committed series of errors, firstly, he has
completely misconstrued the facts while stating that the appellant had signed the surety bond in the month of February, 1998, hence the appellant was
fully aware of the existence of the trade mark/trade name of the respondent No. 1 at the date of its adoption, whereas the fact is that this document
dated 9.2.1998 has clearly been misconstrued and wrongly appreciated by him. Likewise, the argument of the appellant has not been correctly noticed
in this regard because the argument made was that the surety bond had been executed by the appellant on his own name and one of the partners the
respondent No. 1 stood a witness to said surety bond and as such the partner of the respondent No. 1 himself stood a witness to the aforesaid bond
whereon the trade name/trading style as J.S. Passi Agro Engg. Ind. was incorporated, which shows that at the time of inception of the business of the
appellant, the respondent No. 1 had no objection whatsoever to the use of the trade mark/trade name and incorporation of the word Passi in the
description of the trade mark/trade name of the appellant. The document further shows that when the appellant commenced the business the same
was not commenced in a fraudulent or secretive manner but the partner of respondent No. 1 standing witness to surety bond in itself shows that the
use of trade -mark and trade name by the appellant was absolutely bonafide and there is no question of appellant allegedly adopting the trade mark
deceptively similar to the trade mark of the respondent No. 1, much less through any deceit or in a secretive manner. He further contended that it was
only, for the first time, in the year 2003 an objection had been taken by the respondent No. 1 by way of filing a civil suit in the Court of Additional
District Judge, Ludhiana. Learned Counsel also contended that several judgments were relied upon during the course of hearing before the respondent
No. 2 and copies thereof furnished to him which have not been noticed, much less being discussed in the impugned order.
Learned Counsel contended that the findings of the respondent No. 2 on Section 9 of the Act is perverse as he has not adverted to the fact that the
surety bond had been executed voluntarily by the partner of respondent No. 1, wherein implied consent was evident in favour of the appellant for the
use of trade mark and trade name. The finding of the respondent No. 2 on the objection of Section 9 of the Act is clearly perverse for the reason that
he has not adverted to the fact that voluntary execution of the surety bond by the partner of the respondent No. 1 amounted to its implied consent for
the use of trade mark and trade name by the appellant and also he has not adverted to the provisions of Section 35 of the Act. The provisions of
Section 35 of the Act saves for bonafide use of name, address or description of goods or services from the interference of the proprietor or a
registered user of a registered trade mark. The respondent No. 1 is not entitled to interfere with the use of the caste, surname and name by the
appellant. In support of his contention, learned Counsel relied on the judgments in Kirloskar Diesel Recon Pvt. Ltd. and Anr. v. Kirloskar Proprietary
Ltd. and Ors. and K.G. Khosla Compressors Ltd. and Ors. v. Khosla Extraktions Ltd. and Ors. 1986-PTC-211.
Similarly, the finding that by reason of the registered trade mark of the respondent No. 1, the use of appellant's trade mark in a fair and normal
manner is likely to cause confusion and deception is totally misplaced, contended by the learned counsel. There is no plea from the respondent No. 1
that due to the use of trade mark/trade name by the appellant, the respondent No. 1 has suffered any loss. The word Passi is not at all personal or
monopolistic domain of the respondent No. 1, therefore, the plea of deception is clearly unsustainable. In so far as design of logo is concerned the
High Court of Punjab and Haryana has given a categorical finding which has assumed finality between the parties and the same has been reproduced
in paragraph 17 of the appeal. The respondent No. 1 which does not hold any copyright in respect of label sought to restrain the appellant from use of
label for which the appellant has obtained copyright in respect thereof, in any case the appellant has undertaken before the Hon'ble High Court of
Punjab & Haryana that he will not be using the labels. The marks are, therefore, not deceptively similar with each other and the finding of respondent
No. 2 on Section 11 of the Act is unsustainable.
It was contended that the finding given by the respondent No. 2 with regard to triple identity position between the two and the conclusion arrived at
that the appellant is not entitled to get registration under Section 12 of the Act is totally misplaced and are liable to rejected. No dishonesty on the part
of appellant has been discussed or established. It is a glaring fact that the appellant's caste is PASSI and that being so, the use thereof was genuine
and bonafide and, therefore, there was no question of any triple identity in the present case. The appellant has adduced evidence showing that the
appellant had been advertising goods under the distinctive trade mark/trade name in the same journals and magazines for a long time and there was no
objection raised by the respondent No. 1 against the appellant's honest concurrent use and such objection at a belated stage ought not to have been
accepted by the respondent No. 2.
Learned Counsel for the appellant, contended that the appellant is the honest and concurrent user of the trade name/trade mark on the products of
its manufacture since 1998 and the respondent No. 1 has not challenged or objected then, which is in the immediate neighborhood of the appellant and
the partners thereof are close relatives of the Shri J.S. Passi. As a matter of fact, the appellant and the respondent No. 1 have their factories cum
workshops side by side in the same street for several decades and have the common ancestor, namely, S. Boohar Singh Passigrand father of Shri
J.S.Passi and father of the partners of the respondent No. 1. This being so, no dishonesty could be inferred on the part of the appellant as has been
sought to be made out by the respondent No. 1. Apart from this, Passi is the caste title of the Shri J.S. Passi, who happens to be closely related to the
partners of the respondent No. 1 and as such Shri J.S. Passi is entitled to bonafide use of the caste title without hindrance. Learned Counsel went on
to contend that it is well known that a person could have the first choice and option of registration of his own caste in the trade name/trade mark and
in the present case barring the word Passi nothing else is common or similar in the trade names/trade marks of the appellant and the respondent No. 1.
To drive home the point, learned Counsel placed reliance upon the judgment in Jindal Industries Limited v. Samana Steels Limited 1993-PTC-129, Dr.
Reddy's Laboratories Ltd. v. Reddy Pharmaceuticals Limited, and Bajaj Electricals Limited, Bombay v. Metal & Allied Products, Bombay and Anr.
1988-PTC-133.
Learned Counsel for appellant contended that the finding of the respondent No. 2 on Section 18(1)of the Act is perverse without noticing that one
of the partner of respondent No. 1 had witnessed the surety bond dated 9.2.1998. There can be no restriction or objection to the bonafide adoption and
use of one's caste, sub title/surname in its trade mark but in fact, the respondent No. 1 after having once permitted the appellant by executing surety
bond dated 9.2.1998 with the trade name as J.S. Passi Agro Engineering Industries and trade mark as J.S.Passi had consented to use of the word
Passi as its trade name and trade mark, the objection raised at present would be extremely unfair, illegal, arbitrary and amount to a death knell to the
appellant's business at this belated stage. The appellant has filed sufficient evidence to show that the trade mark/trade name had been in use by the
appellant from the inception of its business and there was no objection from the respondent No. 1 till the year 2003. Thus the respondent No. 1 has
waived its right to raise such objection after a long and malafide silence. Learned Counsel in support of his contention relied upon the decision in
Riverdale School Society v. Riverdale High School and Ors. 2008 (36) PTC 131 (IPAB) and Power Control Appliances and Ors. v. Sumeet Machines
Pvt. Ltd..
The learned Counsel for the respondent No. 1 submitted that the appeal is not maintainable and deserves to be dismissed at the threshold because
the application filed for registration of trade mark by the appellant was made in the name of J.S. Passi Engg. Industries, in the advertisement in the
Trade Marks Journal the name shown is J.S. Passi Engg. Industries, Registrar passed the impugned order against J.S. Passi Engg. Industries but the
present appeal is in the name of J.S. Passi Agro Engg. Industries and there is no explanation for such a change. The application for registration was
made by the appellant in respect of various goods including lawn movers but as per classification, the lawn movers is in class 7 not in class 8. Further,
the appellant was allowed by the respondent No. 1 to use the name J.S. Passi Agro Engineering Industries for manufacture and repair of lawn movers
only and as such the appellant has no right to use the same as trade mark nor he is entitled to use any other trade mark with word Passi or any other
identical or deceptively similar trade mark Passi with or without any suffix or prefix.
Learned Counsel for the respondent No. 1 submitted that the appellant when executed the surety bond as proprietor of the firm he knew fully well
that the respondent No. 1 is the registered proprietor of the trade mark PASSI and the partner of respondent No. 1 witnessed the surety bond for the
purpose of sales tax registration to be granted to the appellant in the trade name J.S. Passi Agro Engineering Industries for the purpose of
manufacturing of lawn movers and repair work, not for the purpose of using any trade mark containing the word PASSI with or without any prefix or
suffix even in respect of lawn movers. It is very pertinent to note the malafide conduct of the appellant, in breach of respondent No. 1's trust, in
adopting and using the identical trade mark 'Passi' with the letters 'J.S' in an insignificant manner and in the similar get up, design and colour scheme
and combination on the packages meant for sale of hand tools as used by the respondent No. 1 for the sale of hand tools manufactured and marketed
by them. Therefore, the respondent No. 2 has aptly construed the surety bond witnessed by the partner of the respondent No. 1. When the
respondent' No. 1 came to know that the appellant has filed application for registration of trade mark, the respondent No. 1 filed opposition and
thereafter filed suit in the year 2004 and hence the allegation of latches and delay is without any basis. Learned Counsel further submitted that it is not
true that the respondent No. 2 has not noticed the judgments cited, the order shows the respondent No. 2 has discussed some of the cases cited
before him. The respondent No. 2 in its wisdom thought it fit to discuss only some of the citations in seriatim and applied the ratio of decision to the
case on hand.
Learned Counsel submitted that the mark of the appellant is neither distinctive nor capable of distinguishing the goods of the appellant from the
goods of others, especially from the goods of the respondent No. 1 which are in the market for a long time. The mark of the appellant has not acquired
distinctive character as the name and surname are not registrable unless it has acquired distinctive characteristics by virtue of long use. Apart from
this, the registration cannot be granted as the registration will cause confusion or deception to the unwary members of trade and the public. Further,
the provisions of Section 35 of the Act will be of no help to the appellant who has never used the impugned mark nor is the appellant entitled to use the
same. The appeal is therefore liable to be rejected even on this sole ground.
Learned Counsel submitted that the impugned mark of the appellant is identical as well as deceptively similar to the well known registered mark of
the respondent No. 1 and the goods in respect of which registration is sought by the appellant are same or of similar description, for which respondent
No. 1 has obtained registration under No. 357195 in class 8 and under No. 1222548 in class 7 and these registrations are valid and subsisting. Section
11 of the Act is a bar for registration of a mark, the use of which in the course of trade is likely to cause confusion or deception. The grant of
registration to appellant's mark will amount to infringement of marks of the respondent No. 1 and passing off the goods of the appellant as goods of
the respondent No. 1. In view of this, the order of respondent No. 2 cannot be termed as misplaced and the respondent No. 2 has rightly upheld the
objection raised by the respondent No. 1 under Section 11 of the Act. It was further submitted that nothing said in the order of the Hon'ble High Court
of Punjab & Haryana affect the merits of the case as has been averred by the respondent No. 1 in paragraph 8 of its counter-statement. Learned
Counsel citing the decision of the Apex Court in Mahendra & Mahendra Paper Milla Ltd. v. Mahindra & Mahindra Ltd. 2002 (24) PTC 121 (SC)
submitted that the trade marks of the appellant and respondent No. 1 are phonetically, visually and structurally identical and the use his trade mark by
the appellant in business and trade circle is likely to and in probability will create an impression of a connection with the respondent No. 1.
Learned Counsel submitted that the impugned mark is identical as well as deceptively similar to the trade mark of the respondent No. 1 and the
use of such impugned mark by the appellant is bound to cause confusion and deception in the normal course of trade and business and as such the
appellant is, as rightly held by the respondent No. 2, not entitled to registration of such mark. The registration of mark sought by the appellant is hit by
the principle of triple identity; the use of the appellant's mark is from the year 1998, hit by triple identity, adoption and use is with malafide and tainted
with dishonesty, therefore, registration under Section 12 is also barred.
Learned Counsel for the respondent No. 1 submitted that the appellant is guilty of breach of trust as the appellant was permitted to use the name
J.S. Passi Agro Engineering Industries by the respondent No. 1 by way of witnessing the surety bond by one of its partners for the purpose of sales
tax registration to be granted to the appellant in that name for the purpose of manufacturing of lawn movers and repair work and not for the purpose
of using any trade mark containing the word PASSI with or without prefix or suffix even in respect of lawn movers. The appellant adopted the
impugned mark with malafide intention and ulterior motive to trade upon the goodwill and reputation accrued to the well known trade mark Passi of
the respondent No. 1 and the appellant even applied for registration of the trade mark in breach of trust of the respondent No. 1. The appellant is not
the bonafide, honest and lawful proprietor of the trade mark and therefore not entitled for registration under Section 18 of the Act.
After having heard both the parties and going through the pleadings on record, we would take up the preliminary objections raised by the
respondent No. 1 seriatim for our consideration. The preliminary objections about limitation and memo of parties raised by the respondent No. 1 are,
from the perusal of records, found to be unsustainable. Though it is evident from the records that the description of the applicant's name, viz. J.S.
Passi Engg. Industries, occurring in the application for registration, advertisement in the Journal and in the impugned order dated 11.5. 2007 do not
match with the description of appellant's name (J.S. Passi Agro Engineering Industries) occurring in the memo of appeal, but we find that the
contention of the appellant that such objection cannot be raised at the appellate stage has a considerable force as a de novo proceedings cannot be
ordered from the application for registration at this stage and besides that, the submission of the Appellant that the he has been transacting the
business all through under the name of J.S. Passi Agro Engg. Industries has not been controverted by the respondent No. 1. The objection that the
appeal is filed after limitation period is not sustainable as the Registry has found the same to be in time. In so far as classification of lawn movers,
which is one of the goods included in the application for registration is concerned, the respondent No. 2 has not taken this objection into consideration
and after seeing the copy of 'Nice Claasfication-9th Edition, Part 1, page 90' containing Alphabetical List of Goods, which is produced by the
respondent No. 1 in support of its objection that the application No. l66771B made by the appellant for registration of trade mark in class 8 is wrong as
the lawn movers (machines), we find is shown under Basic No. 070201 that is to say in class 7. We are of the firm view that had the application for
registration been granted in respect of the goods under wrong classification, such registration would have been fatal as such registration would have
been liable to be rectified as an entry made without sufficient cause and an entry wrongly remaining on the register.
Next, the most contentious issues are as to whether the respondent No. 2 has misconstrued-the facts of the surety bond dated 9.2.1998 and did not
notice the alleged star arguments of the appellant including the judgments relied upon by the appellant. It is amply clear that a surety bond for Rs.
15000 dated 9th February 1998 was executed by Shri J.S. Passi as proprietor of M/s. J.S. Passi Agro Engg. Industries for obtaining Certificate of
Registration under the Central Sales Tax (Registration & Turnover) Rules, 1957 and a partner of the respondent No. 1 stood as a surety for the
appellant. It is also clear that the partner of the respondent No. 1 stood surety because of close blood relation with the appellant and out of sympathy
and affection allowing him to use the trading style J.S. Passi Agro Engg. Industries to enable him to begin with manufacture and repair of lawn
movers. It will amount to stretching the construction of the surety bond beyond the purpose for which the security bond was executed and the partner
of respondent No. 1 standing surety, if we construe the surety bond as an unconditional/absolute permission to use the registered trade mark of the
respondent No. 1 with any suffix or prefix thereto as a trade mark. The surety bond has to be construed keeping in mind the purpose for which it was
executed by giving a natural or plain meaning thereto. The appellant has contended that by standing as a surety to the bond by the partner of the
respondent No. 1, it amounts to implied consent given by it to appellant to use the trade name/trade mark on the basis of the name as trading style
incorporated on the bond is not sustainable as there is no material on record which enables us to raise such an assumption in favour of the appellant.
Even otherwise also, the appellant does not fulfill the requisites of the permitted user as specified under Section 2(1)(r) of the Act or to be a licensee.
An inference which possibly can be drawn is that the appellant was given a limited permission to use the name as a trading style and not as a trade
mark. The appellant's contention that the respondent No. 1 has remained silent and objected the impugned trade name/trade mark only in the year
2003 and thus the respondent No. 1 has waived its right to raise objection on the only ground that both parties are closely related, residing in and
carrying on business from the same street and therefore were aware of the appellant's use of the mark or trade name is also not convincing. It is no
doubt true that the appellant and partners of respondent No. 1 are close relatives, reside in and carry on business from the same street but that does
not mean that the respondent No. 1 should be spying on the appellant to know what is he up to or what business he is carrying on, especially when the
appellant is close relative and the respondent No. 1 allowed him in trust to use the name as a trading style for manufacture and repair of lawn movers.
The decision relied upon by the appellant in the case of Riverdale School Society (supra) will be of no help to the appellant as the facts therein were
different. In that case the respondent was allowed to use the goodwill of the in the name of the applicant for which respondent had paid royalties and
therefore it was held that such user in the considered view of the Appellate Board can be permissive. In other words, the oral argument set up by the
respondent with the evidence of payment of royalties for the use of name can be construed as licence and not an assignment of the name/mark itself.
The copies of bills on record from pages 26 to 94(except copies at pages 48, 55 and 62) annexed to the affidavit evidence in support of the under Rule
51 of the Trade Marks Rules, 2002, show that the appellant has been manufacturer of lawn movers only as 'Manufacturers Of: LAWN MOWERS' is
printed on every copy of bill. But the copies of bills at pages 48, 55 and 62 contain printing 'MFRS.OF: GARDEN TOOLS & LAWN MOWERS' out
of which one without date and two with illegible dates, which give rise to doubt about their genuineness. It is seen from the copies of bills at pages 95
(bill No. 1, dated 9.5.2003) onwards they contain the print 'MFRS.OF: GARDEN TOOLS & LAWN MOWERS', meaning thereby the appellant has
not been manufacturing hand tools including horticultural tools, forestry tools, agricultural tools, garden tools (except lawn movers) for which the
appellant had sought registration and which is the subject matter of the present appeal. Even the photographs of premises of the appellant and
respondent No. 1 placed on record (with a big board on front side of the business premises of the appellant whereon 'LAWN MOVERS & GARDEN
TOOLS and down below, that J.S. Passi' is written) do not prove that the respondent No. 1 was aware of the business of the appellant prior to 2003
because there is nothing to suggest that the said board was fixed prior to 2003 and the copies of bills, as we have already said, do not show that the
appellant has been carrying on other business along with the manufacturing of lawn movers until May, 2003. The plea of the appellant that copies of
some journals placed on record show that the advertisements of the respondent No. 1 and the appellant have been appearing simultaneously in the
same journals will not advance his case as most of the journals do not bear the date or month of the year and wherever the year is available they are
only 2003 and thereafter. The averment of the appellant that the decision of the High Court of Punjab & Haryana in FAO No. 1773 of 2005 has
reached finality is fallacious firstly the findings therein is prima facie and secondly it is recorded in the order that nothing in that order shall affect the
merits of the case. In the light of these facts it cannot be held that the respondent No. 1 despite knowledge of use of the trade mark by the appellant
sat silently and allowed the appellant to grow. Regarding the contention that the respondent No. 2 has not noticed and discussed the cases cited before
him is not sustainable as it is seen the out of 9 citations mentioned in the appeal, the respondent No. 2 has discussed first three citations and applied
their ratio of decision. The averment that the respondent No. 2 has missed the star arguments is not sustainable unless details of such of the
arguments are specified by the appellant. We are in agreement with the submission of learned Counsel for the respondent No. 1 that the respondent
No. 2 has in its wisdom discussed some of the cited cases in seriatim. In the light of the above, we are of the considered opinion that the claim of
respondent No. 1 that after it came to know of the use of impugned mark by the appellant, it, without any latches and delay filed the suit in 2004 is
genuine. No malafide on the part of respondent No. 1 is imputable because the objection was raised only when the respondent No. 1 came to know of
the use of the impugned mark by the appellant; the appellant's objection that the respondent No. 2 has misconstrued the surety bond and also not
noticed the cited cases are without any merits.
Sections 9 and 11 of the Act provide for absolute and relative grounds respectively, for refusal of registration of trade mark. It is evident from the
records that the respondent No. 1 is the first in point of time to adopt and use the mark Passi. When it is so, the appellant's mark cannot be capable of
distinguishing its goods from the goods of the respondent No. 1, which were already in market. The exception carved out of Sub-section (1) of Section
9 of the Act will not be available in the present case as the mark applied for is a combination of personal name and caste name in which the prominent
word is Passi. Prima facie, a surname is not adapted to distinguish the goods of one person from those of other persons bearing the same surname, but
such registration is possible upon proof of its distinctiveness under the proviso the Sub-section (1) of Section 9 of the Act. The appellant has failed to
prove the distinctive character of the mark applied for registration. Further, if it is found that the nature of the mark of the appellant is such as to
deceive public or cause confusion owing to similarity of mark and the goods covered by the earlier mark, which we will discuss a little later, cannot be
registered. The provisions of Clause (a) of Sub-section (2) of Section 9 and Sub-section (1) of Section 11 of the Act will hit the mark of the appellant.
Similarly, the appellant's mark will also not be registrable as it attracts the relative grounds of refusal contained in Sub-section (2) of Section 11 if the
appellant's mark is proved to be detrimental to the distinctive character or repute of the mark of the respondent No. 1. Distinctiveness in trade has to
be established. It is a notion by itself. It may be result of the sales or of the advertisement, but that result has to be proved. Sales and advertisements
may be the means to lead to distinctiveness but they themselves are neither necessarily so nor conclusive See Imperial Tobbaco Co. of India Ltd. v.
Registrar of Trade Marks and Anr.. It is the settled law that the distinctiveness should be on the date of application. In the present case there is no
such evidence even to be used that evidence as means to lead to distinctiveness of the appellant's mark. It is also evident from the record, as we have
already stated above, that the appellant has not been using, the trade mark in respect of goods for which registration was sought till May, 2003. The
application for registration was filed on 13.1.2003 and as per copies of bills on record, the appellant has started using the mark from May, 2003 and as
such no question of acquiring distinctiveness by user arises in this case. The respondent No. 2 has, after adverting to Section 9(2)(a) of the Act, come
to the conclusion that having regard to the widest possible mandate to the Registrar, whereby he may extend as much protection as he deems fit to a
trade mark, the objection raised by the respondent No. 1 under that Section be upheld. We see no perverseness in the conclusion arrived at by the
respondent No. 2. Regarding the contention of appellant that the respondent No. 2 has not at all noticed the provisions of Section 35 of the Act, which
provides saving for bonafide use of name or place of business by a trader. The Section does not protect the use of a name or place of business or
description by way of trade mark See Hindustan Development Corporation v. Deputy Registrar of Trade Marks. It has been held in the case of
Baume & Co. v. AH Moore Ltd. (1957) RPC at page 463 that bonafide use is equivalent to honest use by a person of his own name without any
intention to deceive anybody or without intention to make use of the goodwill which has been acquired by an another trader. In the case on hand the
appellant cannot said to be the bonafide user as such use is with dishonest intention to use the goodwill acquired by the respondent No. 1. The
judgment in Kirloskar Diesel Recon Pvt. Ltd. and another (supra) relied on by the appellant will not further the case as ratio of decision do not apply
on the present case owing to difference in facts as well as the use of the mark by the appellant cannot be said to bonafide. In that case, the High
Court of Bombay held that the use of surname was not saved by Section 34 of the Trade and Merchandise Marks Act, 1958 (corresponding to
Section 35 of the Act) for an artificial person like incorporated company. It was also held that the mark 'Kirloskar' used by the plaintiff had acquired a
secondary meaning and had become a household word and as such Section 34 of the Act could not come into the rescue of the defendant. In the case
of K.G. Khosla Compressors Ltd. and Ors. (supra) the High Court of Delhi answered in negative, to an issue that if a person is entitled as of right to
have a company registered in a name which happened to be his own name. It was held that he has no such right as the right to incorporate a company
in a particular name is a statutory right under the Companies Act, 1956 as Section 20 of that Act prescribes that no company shall be registered by a
name, which in the opinion of the Central Government, is undesirable; Sub-section (2) of that Section says that if a name which is identical with or too
nearly resembles the name by which a company in existence has been previously registered it may be deemed to be undesirable. The learned Judge
goes on to say that he cannot read into Section 20 of that Act that whenever a person applies for registration of a company in his name or in the name
of his family members it must be registered as this is not the law and could not be the law. On the analogy of this judgment, it can be safely said that
right to have a trade mark registered in one's name/surname is not a statutory right. Hence this judgment is adverse to the claim of the appellant.
We would take up the next issue relating to deceptive similarity of the two marks. In order to see whether one mark is deceptively similar to
another, only the broad and essential features are to be considered. The Apex Court in the case of Parle Products (P) Ltd. v. J.P. & Co held thus: ""In
order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered.
They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent
one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as
would be likely to mislead a person usually dealing with one to accept the other if offered to him. It is of no use to note on how many points there is
similarity and in how many others there is absence of it."" The marks are not to be compared placing them side by side but overall structural and
phonetic similarity be considered from the point of view of an unwary purchaser of average intelligence and imperfect recollection. The question
whether the two marks are likely to give rise to confusion or not is a question of first impression and it is well recognised that in deciding the question
of similarity between two marks, the mark have to be considered as a whole see Corn Products Refining Co. v. Shangrila Food Products Ltd.. The
question has to be approached from the point of view of a man of average intelligence and imperfect recollection. The registered trade mark of the
respondent No. 1 is 'Passi' and the registration sought for registration by the appellant under application No. 1166771 is 'J.S. Passi' written prominently
and down below that insignificantly in small size written 'Agro Engg. Industries"". In both the marks 'PASSI' is common and prominent word. Both the
marks are phonetically, visually and structurally closely resemble. For a man of average intelligence and imperfect recollection the overall phonetic and
structural similarity of the two marks Passi and J.S. Passi Agro Engg. Industries is, in our opinion, likely to deceive or cause confusion. Our opinion is
fortified by the following principle laid down by the Apex Court in the case of Amritdhard Pharmacy v. Satya Deo Gupta.
...The question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall
structural and phonetic similarity of the two names 'Amritdhara' and 'Lakshmandhara' is, in our opinion, likely to deceive or cause confusion. We must
consider the overall similarity of two composite words 'Amritdhara' and 'Lakshmandhara'. We do not think that the learned Judges of the High Court
were right in saying that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection would
not, as the High Court supposed, spilt the name into its component parts and consider the etymological meaning thereof or even consider the meaning
of the composite words as 'current of nectar' or 'current of Lakshman'. He would go more by the overall structural and phonetic similarity and the
nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase.
Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language
would go by the etymological or ideological meaning and see the difference between 'current of nectar' and 'current of Lakshman'.... The carton
boxes for Rolcut placed on record show that the getup, colour scheme layout and print are deceptively similar. The appellant has written letters J.S. in
smaller size and PASSI in big size as has been written on the carton box of the respondent No. 1. Even the instructions for use is same and in same
seriatim, written in similar font and colour. The averment of the appellant at paragraph 21 of the appeal that he has undertaken before the High Court
of Punjab & Haryana that he will not be using the similar label shows the appellant has been using the similar label to pass on his goods as the goods
of the respondent No. 1. The goods in respect of which registration is sought by the appellant 'are similar to the goods covered by the registration
certificates No. 357195 & 1222548 and pending application for registration No. 122547 of the respondent No. 1. The trade channel of the goods is
common and goods are being manufactured from the same street in district Ludhiana. The consumers include farmers who are either illiterate or
semiliterate who may even associate the goods of the appellant with the goods of the respondent No. 1 thinking that the respondent might have
expanded its manufacturing unit in the same street or will be misled into believing that the goods of the appellant emanated from the respondent No. 1.
Now while considering the contention that the appellant has right to use his name and surname unhindered, we would like to refer the case of
Jindal Industries Limited (supra) where leaned counsel for the defendant made a similar submitted that there cannot be a monopoly of the use of the
mark 'Jindal' by the plaintiff so as to prevent the use of the mar 'Bindal', 'Bansal' etc. by others and that Bindal is the surname of the defendant and
they have right to use the same. It was further submitted that there are so many persons doing business under the name of 'Jindal' and referred to
such names in appearing in the telegraph directory. In answer, the High Court of Delhi observed thus: ""In a case of infringement of trade mark and
passing off would such a plea be open to the defendant? My answer is in the negative. Reference in this regard can be made to the case of Bajaj
Electricals Limited, Bombay v. Metals & Allied All Products, Bombay and Anr. It was a case where surname Bajaj was the subject matter of the
dispute. The plea taken by the learned Counsel for the respondent was that the defendant No. 1 being 'Bajaj' was entitled to use his own name unless
it was established that the user was dishonest. Reference was also made to observations made in 1962 R.P.C.265 to the effect that trading must not
only be honest but not even unintentionally be unfair and, consequently, the conclusion arrived at was that the respondent was not entitled to use the
trade mark 'Bajaj' of the plaintiff even if it was assumed that the goods of the defendant were of high quality and that the plaintiff would not suffer
damage on account of the sales of the goods of the defendant with the same trade mark. It may be repeated at this stage that the defendant has
started the use of the word 'Bajaj' at a much later stage in respect of the same goods which are marked by the plaintiff."" In this case the Court further
observed that it is well established that the defendant cannot be permitted to deliberately reaping what it has not sown and the defendant cannot be
permitted to make use of plaintiffs' extensive labour and effort so as to misappropriate the plaintiffs property in business and goodwill. Similarly in the
case of Dr. Reddy's Laboratories Ltd. (supra), the plaintiff was marketing its productions under the trade mark Dr. Reddy's and the defendant was
using the trade mark Reddy on the ground that its Managing Director is Mr. Reddy, therefore, it is entitled to use trade mark Reddy. The High Court
of Delhi held as under:
The plea raised by the defendant that it has a bona fide statutory right to use the trade name ""Reddy"" as it Managing Director is Mr. Reddy is also
liable to be rejected for the reason that the trade mark ""Dr. Reddy"" in spite of not being registered has acquired considerable trade reputation and
goodwill in the community dealing with drugs and pharmaceutical not only in India but abroad also. This trade mark is now distinctively associated with
the plaintiff's company. Its long and continuous user by the plaintiff is pram facie established. The use of trade name/mark ""Reddy"" by the defendant
is capable of causing confusion and deception resulting in injury to the goodwill and reputation of the plaintiff company. No other ""Reddy"" has a right
to start a rival business by using the same trade name on the plea that it is his surname. This would encourage deception.' In the case of Mahendra &
Mahendra Pare Mills Ltd. (supra), the Apex Court by dismissing the appeal observed as under:
Judging the case in hand on touchstone of the principles laid down in the aforementioned decided case, it is clear that the plaintiff has been using
the word ""Mahindra"" and ""Mahindra & Mahindra"" in its companies/business concerns for a long span of time extending over five decades. The name
has acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name 'Mahindra' with a
certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will
create an impression of a connection with the plaintiffs' group of companies. Such user-may also effect the plaintiff prejudicially in its, business and
trading activities. Undoubtedly, the question whether the plaintiffs' claim of 'passing-off action' against the defendant will be accepted or not has to be
decided by the Court after evidence is led in the suit. Even so for the limited purpose of considering the prayer for interlocutory injunction which is
intended for maintenance of status quo, the trial Court rightly held that the plaintiff has established a prima facie case and irreparable prejudice in its
favour which calls for passing an order of interim injunction restraining the defendant-company which is yet to commence its business from utilizing
the name of 'Mahendra' or 'Mahendra & Mahendra' for the purpose of its trade and business. Therefore, the Division Bench of the High Court cannot
be faulted for confirming the order of injunction passed by the learned Single Judge."" We see no infirmity in the conclusion arrived at by the
respondent No. 2 and we are also of the view that the use of the mark, if granted to him, the probability of causing deception or confusion in the mind
of consumer and trade is great.
The well established principle of trade marks law is that the goods come from one source and one source only. However, the provision of Section
12 of the Act which deals with registration of honest concurrent use, etc. is the exception to the aforesaid principle. Allowing a concurrent registration
is a discretionary power conferred on the Registrar of Trade Marks but before any concurrent registration on the basis of honest concurrent use is
granted or allowed, the other provisions of the Act must be satisfied such as the requirement of distinctive character or capacity to distinguish under
Section 9 of the Act, etc. For the application of Section 12 of the Act only user prior to the application alone is relevant and the use claimed must be
bonafide use of a mark and by such use built up a valuable trade under the mark generally without any knowledge of the prior use of the same or
similar mark by another person in respect of the same goods and such use be concurrent as well. In the case hand the use of the mark claimed by the
respondent No. 1 is since 1962 whereas appellant's claimed use of his mark is since 1998 which is obviously more than three decades later. We have
already held that the appellants mark is not registrable being hit by Section 9(1) and (2)(a) of the Act as there is no evidence on record to established
the claimed use of the mark in respect of goods for which registration was sought. The copies of bills/invoices placed on record by the appellant to
establish user show that the appellant did not use the mark on or in respect of the goods until May 2003 for which application for registration was filed
in January 2003 by the appellant. Apart from this, we have also held that the adoption of mark by the appellant is not honest and bonafide. The
appellant has failed to establish a case for registration under Section 12 of the Act. In view of this the appellant cannot be granted registration under
Section 12 of the Act and the respondent No. 2 has rightly come to the conclusion that under the circumstances, the applicants are not entitled to get
registration under Section 12 of the Act.
The next issue is whether the appellant has right to adopt and get registration of his personal name and surname as a trade mark and whether his
adoption of such name as trade mark is bona fide and honest. A proprietary right in a trade mark to be registered in one's name can be obtained in a
number of ways such as by adoption, by assignment and by transmission, etc. In the case of adoption, the adoption should be bona fide and honest and
the onus is on the applicant to show by adducing evidence that he is the proprietor of the mark. In the case of Riverdale School Society v. Riverdale
High School and Ors. 2008 (36) PTC 131 (IPAB), this Appellate Board at paragraphs 11 and 15 observed as under:
A proprietary right in a mark sought to be registered can be obtained in a number of ways. The mark can be originated by a person or can be
acquired, but in all cases it is necessary that the person putting forward the application should be in possession of some proprietary right, which, if
questioned can be substantiated. In the instant case the respondent obtained the registration of the trade mark and it is, therefore, for him to establish
his proprietary right. It is not disputed by the respondent that it is not the proprietor of the mark in question. It has admitted that the applicant before us
is the prior user and the respondent claims rights by way of assignment from the applicant.
It was for the respondent to have adduced evidence in support of its application for registration that it was the proprietor of the mark/label/logo
applied for registration, that is the requirement of Section 18 of the Trade Marks Act, 1999.
At the time of adoption the appellant was aware that the respondent No. 1 has been using the mark PASSI and it is nowhere specified in the bond or
else where that the appellant is permitted to use Passi or J.S. Passi as a trade mark. There is a news in the newspaper dated 20.9.1999 (with
photograph to M.D. of respondent No. 1 standing with the then C.E.C. of India) which amongst others wrote that the respondent No. 1 was the first
to start manufacturing garden tools under the brand ""Passi"" garden kit. There are enough material on record to suggest that the mark Passi has
acquired a substantial goodwill and trade reputation. On the face of these facts, we may not be able to hold that the adoption of the trade mark J.S.
Passi Agro Engg. Industries or J.S. Passi was bona fide, without knowing that the mark PASSI was in use and the vendible goods of the respondent
No. 1 in respect of which registration were obtained were already in the markets.
In view of the above, the result is that the appeal has no merits and it deserves to be dismissed. Accordingly, the appeal is dismissed without order
as to costs.