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Judgment
Raghbir Singh, J
CM(M) 426/96 filed in the High Court of Delhi has been transferred to this Board in terms of section 100 of the Trade Marks Act, 1999 and
numbered as TA/128/2003.
S/Shri Rajiv Gupta, Anil Gupta and Smt. Shashi Gupta trading as M/s JVC Auto Centre applied for registration of trade mark words 'JVC' per se
under application No. 447435 B in respect of ""Battery Chargers, electric invertors, electric voltage stabilizer and safety helmets for motor cyclist
included in class-9 on 27.12.1985. The appellants claimed the user of the mark since 1.12.1982. The trade mark was advertised in the Trade Marks
Journal No. 1000 dated 1.2.1991 at page 1278.
M/s Victor Company of Japan gave notice of their intention to oppose the registration of the trade mark on 31.5.1991 on the grounds of section
11(a), 12(1) and 18(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). After filing of pleadings and evidence
from both the sides, the matter was set down for hearing by Shri M.C.Gupta, Assistant Registrar of Trade Marks on 16.11.1994. Shri M.C.Gupta vide
his order dated 5.12.1994 disallowed the request from the appellant on form TM-16 dated 8.11.1994 and decided that the appellants were not entitled
to registration of the mark applied for. Thereupon the appellant applied for review of the aforesaid decision of the Assistant Registrar on form TM-57
dated 13.1.1995. Shri Om Prakash, Deputy Registrar of Trade Marks heard the review on 6.6.1995 and vide his order dated 12.6.1995 set aside the
order dated 5.12.1994. The first respondent being aggrieved by the aforesaid order dated 12.6.1995 of the Deputy Registrar appealed to the High
Court of Delhi in appeal CM(M) 301/1995. The High Court of Delhi vide order dated 18.7.1995 ordered that the application for registration of trade
mark JVC bearing No. 447435 and opposition No.DEL-7236 be heard by a Deputy Registrar other than Shri Om Prakash. Accordingly, the matter
was heard by Shri U.S.Sharma, Assistant Registrar of Trade Marks in Delhi. The appellant in the instant appeal has challenged the proprietary of
hearing the matter by an Assistant Registrar in place of the specific order of the High Court of Delhi that the matter be heard by a Deputy Registrar.
We shall deal with this aspect of the matter later on.
The Assistant Registrar Shri U.S. Sharma heard the matter on 30.8.1995. Learned Assistant Registrar identified sections 11(a), 12(1), 12(3) and
18(1) of the Act as principal areas for consideration in the matter. In matter of his examination under section 12(1) of the Act, he came to the
conclusion that there is complete identity of the impugned mark to the registered trade mark Nos.339772 and 436950 B of the first respondent.
However, he found that the goods are of different description and are also not normally sold on the same counters. The goods of the appellant are
mainly inverters used for generating the A.C. current and battery chargers etc., and the goods of the first respondent are mainly audio and video
equipments. In view of that he found that in so far as the description of goods are concerned, that is distinct and thus he found that the prohibition
contained in section 12(1) of the Act does not apply.
In matter of his examination under section 11(a) of the Act, he found that the goods are of different description but still there is some trade
connection between the goods of the appellant and the goods of the first respondent and thus there is likelihood of confusion and deception in the
minds of the purchasing people. But the users are the same. Inverters etc., are also used in the same household where the audio and video equipments
are used. The persons of average prudence are likely to be confused that the goods have trade connections. Thus he concluded that the impugned
mark attracts prohibition under section 11(a) of the Act.
In matter of examination under section 12(3) of the Act, it was held that the mark of the first respondent had acquired global reputation and thus is
a well-known mark in respect of audio and video equipments. The appellant has failed to explain the reasons for his adopting 'JVC' as a mark. Thus
the appellant is tainted with dishonesty. In view of that he is not entitled to benefit of section 12(3) of the Act.
In matter of his examination under section 18(1) of the Act, the Assistant Registrar held that a person cannot claim to be the proprietor of the mark
for which there is already an established claim on proprietorship by some other proprietor. Furthermore, the appellant had dishonestly adopted the
mark 'JVC'. Thus he rejected their claim under section 18(1) of the Act.
In conclusion, the Assistant Registrar refused registration. Furthermore, in matter of TM-16 dated 8.11.94 referred to earlier and another TM-16
dated 10.9.1992, the Assistant Registrar allowed the requests for the amendment of the proprietorship of the mark applied for.
Appeal against the order of the Assistant Registrar was filed in the High Court of Delhi on 19.9.1996. At the outset the appellant had taken a
position that the Hon'ble High Court of Delhi had vide its order dated 18.7.1995 given a direction that the matter in the Trade Marks Registry be heard
by a Deputy Registrar other than Shri Om Prakash. However, the impugned order dated 6.6.1996 was passed by second respondent who is not a
Deputy Registrar but an Assistant Registrar. Therefore, the impugned order is without any authority and without jurisdiction and is liable to be set
aside. On merits the appellant submitted that the goods manufactured by the appellant are entirely different from the goods of first respondent and
have no connection with them. The user of the mark 'JVC' by the appellant is much earlier to that of first respondent. There is no consistency in the
application of principles under sections 11(a) and 12(1) of the Act in the impugned order. In matter of section 12(1) of the Act, the Assistant Registrar
held that there is no similarity between the goods manufactured by the appellant and the first respondent . But while deciding the issue under section
11(a) of the Act, he considered otherwise. Assistant Registrar is wrong in holding that there is trade connection between the goods of the appellant
and goods of first respondent. The goods manufactured by first respondent and by the appellant are mainly consumed by the urban people who are
considered to be literate. Thus the public at large being educated and well versed with electric and electronic equipments can easily make out the
difference. The end use of the goods of the appellant and first respondent is entirely different. The second respondent has erred in not appreciating
that first respondent is claiming use of trade mark 'JVC' worldwide and not in India since 1968. Second respondent had committed an error in
believing the publicity blitz of first respondent. The appellant had adopted the trade mark honestly and in a bonafide manner in December, 1982 and
since then he is using the mark and thus he is entitled protection under section 12(3) of the Act. The Assistant Registrar is also wrong in concluding
that the appellant is not the proprietor of the mark.
First respondent filed their reply on 13.2.1998. In their submissions they have controverted the material averments of the appellant. A rejoinder
was filed on behalf of the first respondent on 5.5.1999.
The matter was taken up for hearing in the sitting of Board held at New Delhi on 14.2.2005. Learned counsel Shri Siddarth Yadav appeared on
behalf of the appellant and learned counsel Shri N.Mahabir appeared on behalf of the first respondent.
Learned counsel for the appellant submitted that the Assistant Registrar has gravely erred in interpreting the provisions of sections 11(a), 12(1)
and 18(1) of the Act. The impugned mark 'JVC' of the appellant is in relation to electric goods and not electronic goods. The appellant's application
No. 447435 B is in relation to battery chargers, helmets, electric inverters, electric voltage stabilizers and safety helmets wherefor the user claimed is
from 1.12.1982. Registration No. 436950 B held by first respondent is in relation to video tape recorders/players, video cameras etc., which are items
relating to video and audio equipments. Thus the impugned mark is in relation to electrical goods and the mark of first respondent is in relation to
electronic items. Learned counsel submitted that the Assistant Registrar has gone too astray in matter of determination under section 11 of the Act
and emphasized that the Assistant Registrar was wrong in his decision under section 12(3) of the Act as well. He drew our attention to various
documents in the type set submitted by the first respondent, placed at page-65, 234 and 245. He drew our attention also to the copies of Trade Marks
Journal in relation to the trade marks of the appellant and the first respondent mentioned above, placed at pages 1 and 2 of the type set of first
respondent. He submitted that in view of the clear orders of the High Court of Delhi that the matter should be heard by a Deputy Registrar in the
Trade Marks Registry in place of Shri Om Prakash, Deputy Registrar, the Assistant Registrar was wrong in assuming jurisdiction. He also relied upon
Mahendra and Mahendra (2002) 2 SCC 147,C orn Products Refining Co. V. Shangrila Food Products, AIR 1960 SC 14 2and Hardie Trading Limited
V. Addison Paints & Chemical Ltd (2003) 1 SCC 92 in support of his arguments.
Learned counsel for first respondent submitted that in the impugned mark 'JVC' and the mark as registered in the name of first respondent the
fonts are exactly similar. That by itself indicates the dishonesty of the appellant. He submitted that the first respondent is also in business of battery
chargers, etc., He drew our attention to certain pamphlets placed at page 84 of the type set submitted by them wherein the description of battery
chargers produced by the first respondent have been given. He drew our attention to certain portions in the annual reports at pages 118 and 139 of the
type set. He submitted that the Assistant Registrar was patently wrong in his conclusion under section 12(1) of the Act. In matter of test of similarity
of goods, it is not necessary that the goods should be exactly similar. Even if they belong to the same description or are analogues goods for which the
determining standards are that the identity of the selling counters and the consuming public, the prohibition is attracted. Hereunder much of the goods
are sold on the same counters. The consuming public happens to be the same which fact the Assistant Registrar has recognized. In support of his
case he put reliance upon Bajaj Electricals Ltd. V. Metals & Allied Products AIR 1988 Bom 167.
We have carefully gone through the pleadings filed by the learned counsel for the appellant and the first respondent and the arguments made
during the hearing.
At the outset we shall like to deal with the matter relating to the jurisdictional issue of Assistant Registrar vis-Ã -vis the Deputy Registrar. It is true
that the learned judge in the High Court of Delhi who heard CM(M) 301 of 1995 vide his order dated 18.7.1995 ordered that the application for
registration of trade mark 'JVC' bearing No. 447435 and opposition No.DEL-7236 be heard by Deputy Registrar other than Shri Om Prakash, Deputy
Registrar. Section 4 of the Act provides as under:-
Registrar of Trade Marks.- (1) The Central Government may, by notification in the Official Gazette, appoint a person to be known as the Controller
General of Patents, Designs and Trade Marks who shall be the Registrar of Trade Marks for the purpose of this Act.
(2) The Central Government may appoint such other officers with such designations as it thinks fit for the purpose of discharging, under the
superintendence and direction of the Registrar, such functions of the Registrar under this Act as he may from time to time authorize them to
discharge.
The Act in its various sections confers the power which is judicial in nature upon the officer known as the Registrar. In view of the enormous volume
of work which is to be dealt with at various centres in the country the necessity for having many other officers who shall perform that work is
necessary. Again for the reasons to provide necessary incentives for good work, certain designations in the ladder, namely, Assistant Registrar,
Deputy Registrar and the Joint Registrar purely from the angle of personnel policy have been provided. It is again important to mention that different
persons in the system, namely, the Assistant Registrar, Deputy Registrar, Joint Registrar and the Registrar have to perform besides the judicial
functions vested in them under the Act, the administrative functions as well. To conclude, in matter of their administrative functions, heirarchial steps
are very much relevant to one being placed as subordinate to the other. However, in matter of their judicial functions vested in them by virtue of sub-
section (2) of section 4 of the Act, all office holders work at par. In other words, one is not subordinate to others irrespective of the designation they
hold. On a practical plank, it does happen that at a particular centre at a given time there might not be a Deputy Registrar available. In view of this,
we find nothing wrong in the matter being heard by an Assistant Registrar. It is further important in this regard that the appellant was participating in
the hearing conducted by the Assistant Registrar U.S.Sharma and had nowhere raised this objection. The order of the High Court of Delhi should be
seen through the spirit of it and not through the nomenclature which is used therein. Since the impugned order had been passed by the Deputy
Registrar Shri Om Prakash, the Hon'ble High Court essentially meant that the matter should not be heard by him and ordered that it should be heard
by someone else who is competent to hear it. Shri U.S.Sharma Assistant Registrar is very well competent to hold the hearing and we decide
accordingly.
Learned Assistant Registrar has correctly decided that the mark is exactly similar to the mark for which the registration is held by first respondent
. However, we find that he has somewhere faulted in not co-relating the identity of the goods for which the mark has been applied. In practical terms
electrical and electronic goods make no marked difference, since electronics is nothing but an extension of electricity in technology. The thrust as such
is that both belong to the same gene as at the bottom of both is that the same energy is used to operate these. The goods of the appellant and first
respondent are used in the same household to supplement each other. Thus there is a complete identity amongst these. We hold that the Assistant
Registrar was wrong in arriving at the conclusion that the goods are distinct. We feel that the impugned mark of the appellant suffers from section
12(1) of the Act. In matter of section 11(a) the Assistant Registrar has rightly concluded that in view of the reputation of the mark of first respondent
and that too in the sphere of electronics which were earlier mentioned as relatable to electricity, there is every possibility of confusion and deception
being caused. The products of first respondent had all along been imported into India and wide publicity in various Indian journals including journals of
Indian Airlines etc., had been done. Thus, there is no doubt as to this aspect of impugned mark causing confusion and deception. In matter of
entitlement under section 12(3) of the Act, there is heavy burden upon the appellant to prove that the mark to which he claims the proprietorship has
been honestly evolved and used. There had not been any cogent explanation from the appellant as to the adoption of the mark by them. For similar
reasons we hold that the appellant is not entitled for proprietorship of the mark under section 18(1) of the Act.
Accordingly the appeal is dismissed. Application No. 447435 shall not proceed for registration and the opposition No. DEL-7236 is allowed. No
order as to costs.