Mahesh Book House vs Alwar Prakashan And Registrar Of Trade Marks

S. Jagadeesan, J

The appellant has preferred this appeal against the order dated 22.11.1995 of the second respondent herein, rejecting the application of the appellant

for registration.

The appellant filed the application No. 442125 on 22.8.1995 for registering the trademark 'POPULAR ASHOKA' in respect of text books

(educational) for sale in the State of Rajasthan. The said application was advertised before acceptance in the Trade Mark Journal No. 1050 dated

1.3.1993 at page 1205, claiming the user since 1967. On 19.4.1993, the first respondent herein gave notice of their intention to oppose the registration

of the impugned trademark on the ground that it violates Section 9, 11(a), 11(e), 12(1) and 18 of the Trade and Merchandise Marks Act, 1958,

hereinafter referred to as the Act. The appellant filed their counter statement as well as the grounds in rebuttal. The first respondent filed evidence in

support of their opposition by way of an affidavit in the name of Shri Ashok Kumar Jain. The evidence consists of the advertisement of their

trademark, the bills of sale for the period 1968 to 1992 under exhibit B-1 to B-97, then bills of artists and printers for the period 1968 to 1970 under

exhibit BB-1 to BB-7. Some of the advertisements under exhibit C-1 to C-19 along with affidavit and letters of teachers, book-sellers are filed as

exhibit D-1 to D-48. The first respondent also filed some of the sales invoices, which are at exhibit S-1 to S-35 and affidavits from various persons

under exhibit SA-1 to SA-14 along with affidavits and sales invoices of some other book-sellers under exhibit SO-A to SO-5. The appellant filed

evidence in support of their application by way of an affidavit in the name of Shri Ashok Prakash Gattani. They also filed the sales invoices and other

supporting documents under exhibit 1 to 144. After compliance of the formalities, the Assistant Registrar heard the matter and ultimately rejected the

application of the appellant and allowed the opposition No. AMD 574 of the first respondent under the impugned order.

Aggrieved by the same, the appellant preferred an appeal on the file of the High Court of Gujarat at Ahmedabad in Appeal No. 8 of 1986, which

stood transferred to this Appellate Board in compliance of Section 100 of the Trade Marks Act, 1999.

We heard the appeal during our sitting at Ahmedabad on 20.12.2004. Shri R.R. Shah, the learned counsel appeared on behalf of the appellant and

Shri Manav A. Mehta, the learned counsel appeared on behalf of the first respondent. The learned counsel for the appellant contented that the

appellant is seeking the registration of the mark 'POPULAR ASHOKA' confining the same in respect of the text books (educational), whereas the

first respondent's mark 'ASHOKA' is registered in respect of books in general. As such, the registration of the impugned mark cannot create any

confusion or deception in the trade and hence Section 11(a) of the Act is not attracted. Both the names 'POPULAR ASHOKA' of the appellant and

'ASHOKA' of the first respondent are not identical and are clearly distinguishable by the consumer. Even apart from that, most of the books of the

first respondent are being identified with the title and not with the printer's trademark, whereas the text books invariably are being identified with the

printers. Hence there is no possibility of any confusion or deception. The findings of the Assistant Registrar of Trade Marks in respect of Section

12(1) is also incorrect as the Assistant Registrar did not consider the difference of goods of the appellant especially when the appellant has restricted

their mark for the text books (educational) alone, whereas the first respondent's mark is a general one in respect of all the books. He also contented

that the appellant had let in evidence with regard to the user by way of advertisements, affidavits, letters and sale invoices and proved the earlier use.

The Assistant Registrar, without properly considering the evidence, has rejected the same on the ground that the applicant did not produce a book

which was published or printed by the appellant. The production of the book is unnecessary in view of the other evidences available on record. The

learned counsel for the appellant also pleaded that the appellant is entitled for the benefit of Section 12(3) of the Act. On the contrary, the learned

counsel for the first respondent contented that the first respondent's mark is registered under No. 336730 very much earlier to the application of the

appellant. Further, the nature of goods of both the appellant as well as the first respondent are the same and as such, the identical mark in the trade

would cause confusion and deception. The Assistant Registrar has discussed all the material evidences available on record and found on facts that the

impugned mark is not registrable as it offends Section 11(a) and 12(1) of the Act. The finding being a question of fact, no interference is called for and

the appeal is devoid of any merits.

We carefully considered the above contentions of both the counsels. The first respondent's mark is a registered one in respect of books and the

mark is 'ASHOKA'. Now the appellant is seeking for registration of the trademark 'POPULAR ASHOKA' in respect of text books (educational).

The main contention of the leaned counsel for the appellant is that the trade marks are distinguishable and the goods are also different in nature and

consequently neither Section 11(a) nor 12(1) is attracted.

When the first respondent has registered the mark 'ASHOKA' in respect of the books of general in nature, which cannot exclude the text books, it

is for us to consider how far the arguments of the learned counsel for the appellant can be accepted. The claim of the appellant that the impugned

mark is totally different because of the addition of the word 'POPULAR'. The addition of the word 'POPULAR' in no way distinguishes the

trademark of the appellant in respect of their goods, namely, text books. When once the text books also fall within the general category of books, for

which the first respondent registered his mark, we are of the opinion that the impugned mark 'POPULAR ASHOKA' in no way can be termed as a

distinguishable mark from that of the first respondent. To compare the similarity of the mark as laid down by various courts, both the marks must be

looked at in a general manner and one cannot go into the minute details to find out the differences and justify the mark on such minute differences. In

the case on hand, the first respondent's mark is 'ASHOKA', who is also dealing in books. The appellant seeks registration of the impugned mark in

respect of text books.

The publisher's or printer's name is mentioned in the books, in order to identify the source of publication, which also identifies the place of

availability of such books barring the distributors. If, suppose stock of books is not available with the distributors, then the consumer has to contact the

printer or the publisher. At the same time, while purchasing the books, the books are being identified with the title it bears. So far as the text books are

concerned, they will be bearing the name of the subject, for instance, Botany, Zoology, History etc., which ultimately being identified with the books.

In such circumstances, the printer or the publisher is being identified with the books. The University or the Institution may specify the books in respect

of a particular subject of a particular publisher and/or author. In such situation, the use of the publisher's name is relevant. If two names almost

identical are to be registered as publishers, then definitely there will be confusion in the trade and deception among the consumers. It is not the case of

the appellant that the first respondent is not engaging themselves in the printing or publishing of the text books concerning education. When that be the

case, we are of the view that the Assistant Registrar has rightly refused registration of the impugned trademark. With regard to the earlier use

claimed by the appellant, the Assistant Registrar has considered all the evidences adduced by the appellant. Most of the evidences consist of the

letters and affidavits from the book-sellers and photo copies of some sale invoices. The first respondent had raised objection with regard to the

genuineness of the invoices as well as other documentary evidences on the ground that all the documents produced by the first respondent are of the

nature that they can be procured at any point of time. The Assistant Registrar has felt that in such circumstances, proper evidence for the use of the

mark by the appellant will be production of books published by them. The contention of the learned counsel for the appellant is even if the books are

produced, the books do not bear the year of publication and as such, the failure to produce the books published by the appellant would not affect the

case of the appellant. The Assistant Registrar ought to have accepted the evidence on record and decided the matter. We are unable to agree with

the submission of the learned counsel for the appellant. As rightly viewed by the Assistant Registrar, especially in the light of the objections raised by

the first respondents in respect of the documentary evidences produced by the appellant, they ought to have produced a book published by them, to

establish the earlier use. Normally, the books bear the year of printing and the edition. It is not as if the year of printing is not mentioned in the book.

The non-production of the vital evidence is fatal to the claim of the appellant and we also concur with the finding of the Assistant Registrar that the

appellant has failed to establish their earlier use. Consequently, we do not incline to interfere with the impugned order of the Assistant Registrar.

Accordingly, the appeal is dismissed. However there will be no order as to cost.