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Judgment
S. Usha, J
Applicant is seeking cancellation of the trade mark KIT PLUS in class 19 registered under No. 998225 under the provisions of the Trade Mark Act
1999. The applicant herein is carrying on business of manufacturing and marketing of Plywood, Plyboard, laminates and allied goods and the said goods are sold under the trade mark KITPLY since 1982. The applicant also uses various other trade marks namely KITBOARD, KITBOARD PLUS, KITLAM, KITMICA, KITMDF & KIT WOOD. The applicants have also applied for registration of the trade mark having Kit as a prefix in various classes. The goods bearing the trade mark KIT is associated with the applicants and use by any other person would create confusion in the minds of the customers. The artistic mark has also been registered under the Copyright Act 1957 under No. A-53202/96 dated 29/03/1986.
The applicants goods bearing the trade mark with the prefix Kit has been sold throughout the country extensively. The sales turnover in the year 1984 was Rs. 7,70,89,906 which increased to Rs. 47,72,11,319 in the year 2003-2004. Their expenditure on advertisement, publicity and promotion also runs to several lakhs of rupees.
In the first week of March 2003, the applicants came to know of the respondents registration. The applicants made a search in the market and came to know that the respondents who are the registered proprietors of the trade mark have been selling the goods plywood under the impugned trade mark Kit Plus. Immediately, the applicants lodged a complaint before the Police authorities. Thereafter as no action was initiated by the Police authorities, the applicants filed a criminal complaint before the First Class Magistrate, Nagpur.
The applicants then issued a cease and desist notice to the respondents. The applicants did not receive any reply from the respondents, therefore they filed a civil suit before the District Court, Nagpur on 25/3/2003. The said suit was withdrawn subsequently.
In April 2003, the respondent in reply to the cease and desist notice issued a letter denying the various averments made in the said notice. In the reply, the respondents admitted that they started using the trade mark Kit Plus since July 1999 which is subsequent to the applicant's use.
In the suit the respondent had filed several documents. They had also filed the examination report issued by the Registrar of Trade marks. The Registrar had required the respondent to disclaim the word PLUS and therefore the only word left was KIT which is deceptively similar/identical to the applicants already registered trade marks and the registration ought not to have been granted.
The impugned trade mark is wrongly registered and wrongly remaining on the register without sufficient cause. The impugned trade mark was not distinctive on the date of application for registration. The registration is in contravention of the provisions of sections 9, 11 and 18 of the Act.
The respondents herein filed their counter statement along with the documents. The respondents have stated that the trade mark Kit Plus is distinctive of their goods. They had been using the same continuously, honestly and extensively since 1999 without any interruption. The examination report issued the Registrar of trade marks did not reflect any conflicting marks as stated by the applicants. The mark Kit is a common word being used by several traders and the respondent had adopted a common word Kit in continuation with the word Plus. Kit being common to trade, the applicant cannot claim a monopoly right.
The respondents had been using the trade mark since 1999 and therefore the trade mark is validly remaining on the register. The application for rectification therefore be dismissed with costs.
On completion of the pleadings, the matter was listed for hearing. Counsel for applicant was present and none for the respondent. Therefore, the matters were set ex parte. We heard the learned counsel for the applicant Ms. Mitul Dasgupta
The learned counsel for the applicant submitted that they adopted the trade mark as early as 1982. They were carrying on business under the name Sudarshan Plywood Industries and subsequently changed the name to Kitply Industries Limited in the year 1989
The impugned trade mark was applied for registration in the year 2001 claiming user since 1999 which is subsequent to the applicant's use.
The respondents have given no reason for the adoption of the trade mark Kit Plus. In this context, the applicants relied on Ciba-Geigy Limited and Another Vs. Surinder Singh & Ors.
The registration is in contravention of the provisions of section 11(3) of the Act as the goods are same and the rival marks are deceptively similar.
The applicants mark was registered as early as 1989 and therefore the examination report clearly reflected the mark already on the Register.
The applicants relied on a few judgments:-
(1) Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories - Where common marks are included in the trade mark to be compared or in one or in one of them, the proper course is to look at the marks as a whole and not to disregard the parts which are common.
(2) Unreported - RFA (OS) No. 90/2010 - The Himalaya Drug Company Vs. M/s. S. B.L. Limited -- LIV written in isolation is an essential feature of the trade mark LIV 52 and also noticed the rules of comparison which is that the marks are to be compared as a whole.
(3) 1937 RPC (54) 341 Ravenhead Brick Co., LD Vs. Ruabon Brick & Terra Cotta Co., LD - RUS & SANRUS -- 'Rus' registered. 'Sanrus' was not allowed to be used on the basis of reasonable probability of an assumption of identity of origin.
(4) Amar Singh Chawal Wala Vs. Shree Vardhman Rice and Genl. Mills - Adoption and use of a deceptively similar trade mark subsequent to the applicants adoption cannot be said to be honest.
(5) M/s. Hindustan Pencils Pvt. Ltd Vs. M/s. India Stationery Products Co. and Another -- Adoption and use of a deceptively similar trade mark subsequent to the applicants adoption cannot be said to be honest.
(6) EC No. 40/94 -- Sunplus Technology Co. Ltd Vs. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) & Sun Microsystems, Inc., -- Likelihood of confusion on the part of the public must be assessed globally, taking into account all the relevant factors of the case in hand.
(7) 1979 RPC 469 -- UNIMAX Trade Mark -- Use of a series of marks containing the prefix UNI and having reputation in that series of UNI mark - registration of a mark with the prefix UNI was rejected.
(8) A.J. Von Wulfing Vs. D.H. Jivandas and Co. - The use of a trade mark by others is calculated to deceive the public if the source has come to be known to the public.
(9) Corn Products Refining Co. Vs. Shangrila Food Products Ltd. - In deciding the issue of similarity between two trade marks the approach should be from the point of view of a man of average intelligence and of imperfect recollection.
(10) Madhubhan Holiday Inn Vs. Holiday Inn Inc. --Reason for adoption to be given.
We have considered the arguments of the learned counsel for the applicant and the documents and pleadings. We have also considered the counter statement and the documents while deciding the matter.
The applicants are aggrieved persons as they had been using the trade mark since 1990 as seen from the Annexure E though not from 1982 as claimed. The respondents have claimed user since July 1999 which is subsequent to the applicants. The marks are similar Kitply Vs. Kit plus. The goods are same. The trade channels are also same. The applicants as prior user of the trade mark are aggrieved by the presence of the impugned trade mark on the register.
The respondents have filed certain documents in support of their case namely few bills from the year 2000, 1SI Certificate, ISO Certificate, user affidavit filed before the Registrar of Trade marks at the time of registration, all class search certificate issued by the Trade Marks Registry and the copyright registration certificate. The respondents though claim user since the year 1999 have filed invoices since May 2000 which do not have the trade mark mentioned.
In the affidavit of use filed before the Registrar of Trade Marks during the registration process, the period since when the mark is used is not clear as seen at para 4 it is stated that ""The said trade mark was conceived and adopted by my firm in an about the year three and has since that been openly, continuously, and interruptedly and extensively used as indicating the goods of my firm's manufacture/merchandise"".
In the said affidavit sales figures are given which is not certified by the Chartered Accountant. The affidavit of user cannot be considered to be of any support for the applicant/respondent to have obtained registration.
The Registrar has issued the examination report and in the search report the applicants' trade mark is clearly reflected. When that be the case, the Registrar should not have granted registration of the impugned trade mark.
The rival marks namely Kitply & Kit Plus are deceptively similar, in our considered opinion. The issue of deceptive similarity are to be tested comparing the mark as a whole. In the case on hand the marks when compared as a whole the possibility of confusion is certain. The goods are identical. The class of customers are also be considered. The goods being plywood is purchased used usually by illiterate people and therefore could result in confusion.
As regards the non use issue, the respondents have denied the same in the Counter Statement. The respondents have filed invoices from May 2000 which do not mention the trade mark. We therefore are of the view that though the respondents in their Counter Statement have denied, the issue of non use have not substantiated with proper evidences to prove their use. Considering all these, we rule that the trade mark Kit Plus deserves to be removed. The application is accordingly allowed with a direction to the Registrar of Trade Marks to remove the Trade mark Kit Plus registered under No. 998225 in class 19. No order as to costs.