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Judgment
S. Usha, Technical Member
This appeal arises out of the order passed by the Assistant Registrar of Trade Marks on 05.07.2007 allowing the opposition No. CAL-212621 and
dismissing the application No. 1317652 in class 3 for registration under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the
Act).
The appellant herein filed an application for registration of a label mark consisting of the words 'MARUTI 100' and the word 'Hundred' under No.
1317652 in class 3 on 27.10.2004 in respect of agarbathies of all kinds including incense sticks being in class 3 and the mark was claimed to be used
since 01.04.2000. The said application was advertised before acceptance in the Trade Marks Journal No. 1332 dated 01.07.2006 at page No. 103-104.
The said application was opposed registration by the 2nd respondent herein by filing a notice of opposition on Form TM-5 on various grounds. The
2nd respondents are carrying on an established business in dhoop, agarbathies etc., since the year 1935 using the Trade mark 'MAHABIR' with the
device of Lord Hanuman/MAHABIR and that the word 'MAHABIR' and device of Lord Hanuman is registered under No. 14958 as early as
25.04.1943 in class 3 in respect of dhoop and agarbathies. The word per se 'MAHABIR' is also registered under No. 532374 as on 28.06.1990 in
class 3 in respect of dhoop and agarbathies. The rival marks being identical as they convey the same meaning as 'Lord Hanuman' is likely to cause
confusion and deception among the public as it is extensively used by the 2nd respondent. The 2nd respondent has been vigilant in taking steps against
the infringers. The appellant's trade mark is neither distinctive nor is capable of being distinguished as per Section 9(1)(a) of the Act. The use of the
impugned mark by the appellant would be detrimental to the reputation of the 2nd respondent's well established trade mark . The appellants have
copied the 2nd respondent's trade mark to trade upon the 2nd respondent's reputation and goodwill and thus to gain profit out of it and thus cannot
claim proprietary right over the impugned trade mark. The 2nd respondent finally stated that the registration being a bar under the provisions of
sections 9, 11, 12 and 18 of the Act, the registration be rejected.
The applicant/appellant herein filed their counter statement on Form TM-6 denying the various allegations made in the notice of opposition. The
appellant had further stated in the counter statement that they had adopted the mark and is being used continuously since 01.04.2000 without any
interruption. They further stated that the word 'MAHABIR' was a personal name and that they were entitled to adopt the same.
On completion of the formal procedures, the matter was set down for hearing and the learned Deputy Registrar of Trade Marks had passed an
order allowing the opposition and rejecting the application for registration for the following reasons:
The meaning according to Bharghava Hindi Dictionary is the word 'MAHABIR' means"" An epithet of Hanuman, Gautama Buddha, the twenty fourth
Tirthankar of Jains, a hero, a white horse, a sacrificial fire and the word ' MARUTI' means ""Hanuman, Bhima"".
So the word 'MAHABIR' means not only Hanuman but has some other meaning too as the same is the case with the word 'MARUTI'. Keeping in
view that the rival marks are to be compared as a whole, the rival marks here are not deceptively similar. The Registrar was not convinced with the
documents and was also not convinced with the adoption of the trade mark by the appellants as the word 'MARUTI' was used along with the device
of Lord Hanuman in the course of the trade.
Aggrieved by the said order of the Deputy Registrar of Trade Marks the appellants are on appeal against the order.
The appellants filed this appeal on various grounds. The appellants have stated that the Registrar had passed the order erroneously without deciding
the matter on the lines of the provisions of Section 18(4) of the Act, but had decided under the provisions of sections 9, 11 and 18(1) of the Act. The
appellant had also challenged the imposing of costs of Rs. 3,500/-. The device of Lord Hanuman used in the bills were only religious symbol which the
Registrar had considered it to be a logo. The 2nd respondent had not proved their case by way of any evidence.
The 2nd respondent filed their counter statement denying the various averments made in the appeal. The 2nd respondent have stated that they had
adopted the trade mark 'MAHABIR' in the year 1935 and got the same registered as early as in 1943. The trade mark 'MAHABIR' means Hanuman
and that the appellant's trade mark 'MARUTI' which means Hanuman is also the same. There is no infirmity in the Registrar's order and that the
same be confirmed.
After completion of the formal procedure, we heard the matter on 17.06.2008 in the Circuit Bench sitting at Kolkata. Learned Counsel Shri H.P.
Shukla appeared on behalf of the appellant and learned Counsel Shri V.P. Ghiraiya appeared on behalf of the 2nd respondent.
The 2nd respondent had sent a reply to the Board's letter directing it to file miscellaneous petition along with the affidavit seeking the permission of
the Board to file additional documents in support of the counter statement. The reply has been numbered as Dy.No. 445/08 and was listed for
maintainability. With the consent of both the counsel, it was decided that only the documents filed before the Registrar would be taken into
consideration for deciding the matter.
The learned Counsel for the appellant took us to the findings of the Registrar in the impugned order and submitted that the Registrar has passed an
erroneous order without considering the appellants' contentions in the counter statement filed by them before the Trade Marks Registry. The appellant
also pointed to the ground wherein they had stated that the Registrar had held that the marks are not deceptively similar and having rejected the
objection under various provisions of the Act should have allowed the registration.
The learned Counsel for the appellant further submitted that the rival trade marks were not similar and brought to our notice the Trade Marks
Journal advertisement.
He submitted that as the trade marks were not similar, the possibility of confusion or deception was also not there and prayed that the order of the
Registrar be set aside.
Learned Counsel for the 2nd respondent submitted that the appellants have stated that their trade mark 'MARUTI 100' has been in use
continuously since 01.04.2000 and had thus gained reputation which is not proved by any evidence. He also pointed out the statement of the appellant
that 'MARUTI' is a personal name. Learned Counsel for the 2nd respondent further pointed out to the advertisement and submitted that the trade
mark 'MARUTI 100' was seen along with the device of Hanuman and so the rival marks are similar. He also pointed out to the bills for the same.
Learned Counsel for the 2nd respondent submitted that the trade mark 'MARUTI' means Hanuman, Mahabir, etc., and the conclusion arrived at
by the Registrar was correct and in order. The 2nd respondent brought to our notice the certificate used in legal proceedings and submitted that they
had been using the trade mark since the year 1943.
Learned Counsel for the 2nd respondent submitted that evidence by way of cash memos, bills, credit bills without affidavit was doubtful and relied
on the judgment reported in Jagdish Pershad Ladda v. K. Ganesh Nadar and Anr. In support of the same, he also submitted that some of the invoices
were not related to the appellants.
Learned Counsel for the 2nd respondent also referred to the judgment reported in 2007 (35) PTC 920 (IPAB) Soongachi Tea Industries Pvt. Ltd.
v. Takkar (India) Tea Co. and Anr. in support of his argument that when meaning of the rival marks are same, possibility of confusion and deception
was there.
We have gone through the documents filed by both the parties and have carefully considered the arguments of both the counsel.
The only issue that arises for consideration is whether the rival marks are deceptively similar and whether there is any possibility of confusion
being caused as the rival marks convey a similar idea.
On perusal of the rival trade marks, we are of the view that public are not so ignorant that they may not be able to distinguish the meaning of
Mahabir and Maruti. In fact, the appellant's trade mark is as under:
(Editor: The text of the vernacular matter has not been reproduced. Please write to [email protected] if the vernacular matter is required.)
and whereas the 2nd respondent's trade mark is as under:
(Editor: The text of the vernacular matter has not been reproduced. Please write to [email protected] if the vernacular matter is required.)
On comparison of both the marks we do not find any similarity between the two marks either visually/structurally or phonetically. Generally speaking it
is clear that Mahabir means Maruti and both refer to Lord Hanuman. On that basis the Registrar had passed the impugned order. We are also of the
view that if the rival marks convey a similar idea, then the possibility of confusion will certainly arise, but here the marks as the composite ones are to
be compared as a whole. If the marks are compared as a whole, as has been held, in the Corn Products Refining Co. v. Shangrila Food Products Ltd.
there is no likely deception being caused among the public.
In the Corn Products case (supra) In the Supreme Court held:
It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole. We have to approach it
from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity of
the idea in the two marks is reasonably likely to cause confusion between them.
It is also worth mentioning the observations of Farwell J, in William-Bailey Birmingham Ltd's application (1953) 52 RPC 136 referred in Cadila case -
I do not think it is right to take a part of the word and compare it with a part of the other word, one word must be considered as a whole and
compared with the other word as a whole - I think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a
portion of the other word.
Lord Jhonston in Lavroma case observed (Tokalan v. Davidson (1915) 32 RPC 133):
We are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection but to be taken
from the general and even casual point of view of a customer walking into the shop.
However, it can be argued that the meaning of both the words, namely MARUTI and MAHABIR is Lord Hanuman and may lead to confusion.
On a mere look at the labels as a composite mark, we do not find any deceptive similarity between the two rival marks. We also observe that the
Registrar has compared the applicant's bills with that of the opponent's label and gone about in the order stating that the device of Lord Hanuman is
seen in both the labels and there is possibility of confusion being caused, which we do not agree. Apart from this, the Registrar has also held in his
order as under:
In the applicant's label the word 'MARUTI' and the word 'Hundred"" exist with the numeral '100' whereas in the opponent's registered trade mark the
word 'MAHABIR' and the device of Lord Hanuman is there. Keeping in mind the various judicial pronouncements and the fact that the rival labels
have to be compared as a whole keeping in view the meaning of the word 'MARUTI' and the word 'MAHABIR', it cannot be said the rival labels are
similar within the meaning of Section 2(1)(h) of the Act.
Having observed, so the Deputy Registrar has dismissed the application and allowed the opposition which only creates a doubt.
Having answered both the issues in favour of the appellant, we have no hesitation in allowing the appeal.
We, therefore, set aside the impugned order of the Deputy Registrar and allow the appeal. No order as to costs. As it was decided with the
consent of both the counsel that only the documents filed before the Registrar would be taken into consideration, Dy. No. 445/08 is disposed of on the
above terms.