AI Structured Summary
Not yet generated for this judgment
Judgment
Z.S. Negi, J
This is an application filed by the applicant for removal of the trade mark MAREX, under No. 1082600 in class 25 registered in the name of the
respondent No. 1, from the Register of Trade Marks or rectification of the Register under Section 47/57/125 of the Trade Marks Act, 1999
(hereinafter referred to as the Act).
The applicant has stated that he, as the sole proprietor of M/s. Mishra Sports Wear, is carrying on the business of manufacturing and marketing of
all types of sports wear, track suits, costumes, pant-shirts for players. The applicant is the proprietor of trade mark Marex and along with monogram
of HORSERIDER MAREX since December, 1997 and applications No. 795640 dated 20.3.1998 and No. 1094831 dated 12.4.2002, are pending for
registration. The applicant has been packing its products under the trade mark, and logo of, MAREX in a unique and distinctive manner; embossed the
monogram of HORSERIDER/MAREX on the bust line of the products and claims to be the real owner, first adopter and designer of the original
artistic monogram. Due to high quality of fabric used in the products and by virtue of continuous and regular use since 1997, the trade mark and
monogram have acquired a unique reputation and valuable goodwill in the eyes of general public at large and the trade mark has acquired secondary
meaning in the trade and become distinctive with the goods of the applicant alone. The goods, bearing the trade mark as well as the monogram, sold till
now is worth lakhs of rupees as per statement of sale figures annexed to the application and has incurred considerable amount of expenditure on
advertisement and promotional expenses in relation to the said trade mark and monogram. On a complaint of respondent No. 1 made to the Honarary
Secretary of Sports Forum (Regd.), Jalandhar about the misuse of trade Mark MAREX by the applicant, the Hony. Secretary in turn wrote to the All
India Sports Goods Manufacturers Association, Meerut to persuade the applicant not to use the trade mark of its member firm (the respondent No. 1
herein) and thereupon the General Secretary of All India Sports Goods Manufacturers Federation, Meerut in reply wrote on 23.01.2002 to the Hony.
Secretary, Sports Forum that the registration of the trade mark of respondent No. 1 was under class 28 regarding sports goods whereas the
registration of applicant's trade mark was under class 25 for track suits, sports wear, costumes and pant-shirts for the players and as such both the
companies are dealing in different products under different classes.
It is further stated that the applicant's application No. 795640 dated 20.3.1998 was ordered to proceed for registration and published in the Trade
Marks Journal No. 1262, dated 1.1.2002 on page 3670, against which the respondent No. 1 filed opposition No. DEL-T-3457/60797 on 9.3.2001 but
the Registrar of Trade Marks passed order on 23.2.2004 to the effect that the opposition is, by reason of operation of Sub-rule (2) of Rule 50 of the
Trade Marks Rules, 2002, deemed to have been abandoned and the application of the applicant (respondent No. 1 herein) to proceed further as per
rules. It is also stated that despite the above referred letter of All India Sports Goods Manufacturers Federation, Meerut, the respondent No. 1 made
application No. 1082600 in class 25 on 22.2.2002 for registration of trade mark with a malafide intention and adopted the trade mark fraudulently. The
said application was ordered to proceed further by the Registrar of Trade Marks ignoring the fact that the application dated 20.3.1998 of the applicant
herein is pending under an opposition filed by the respondent No. 1. During the currency of the opposition, the respondent No. 1 applied for the
registration by giving incorrect user date as 1988 although the said trade mark was not used by the respondent No. 1 till date-and played a fraud upon
the Trade Marks Registry. The registration granted by the Trade Marks Registry on the false representation of respondent No. 1 is wrong, illegal and
against the facts of the case.
Aggrieved by the impugned registration, the applicant has sought removal of the trade mark from the Register of Trade Marks on the grounds, inter
alia, that impugned registration is obtained by making material misstatement and by playing fraud; that the impugned mark was not, at the time of grant
of registration, and is not, at the time of commencement of present proceedings, distinctive of the goods; that the respondent No. 1 is not the proprietor
of the trade mark Marex in class 25; that the impugned trade mark and the goods are identical or deceptively similar with that of the trade mark and
the goods in respect of which registration is obtained by the applicant; that the entry relating to the impugned trade mark was wrongly made and is
wrongly remaining on the Register; that the impugned registration was made without sufficient cause and it exists on the Register without sufficient
cause; that the respondent No. 1 has no bonafide intention to use the mark at the time of making application nor there is any bonafide use of the mark
in relation to sports wear and that in the interest of purity of register the impugned entry deserves to be removed from the register.
The applicant has also filed along with the application for rectification a stay application M.P. No. 15/2008 under Section 92 of the Act for staying
proceedings for registration of trade mark MAREX in the application No. 1082600 in class 25, on the ground that the respondent No. 1 has filed the
said application with malafide intention to obtain the registration without informing the applicant and concealing the fact from the Trade Marks
Registry that an opposition is pending and that the registration granted therefore to the respondent No. 1 was not on merit and against the natural
justice. During the pendency of the application for rectification, the applicant has filed a miscellaneous petition No. 50/2008 seeking to implead the
Registrar of Trade Marks as respondent No. 2. The applicant has stated that due to inadvertence/casual slip it could not implead the Registrar of
Trade Marks in the application for rectification, whereas it is essential to implead him as respondent No. 2 to reply the erroneous and faulty certificate
of registration No. 1082600 in class 25 shown as proposed to be used, whereas the applicant is the owner of the trade mark Marex in class 25 prior to
the respondent No. 1 and despite that the respondent No. 1 has been issued the certificate which causes grievance to the applicant.
The respondent No. 1 filed the counter-statement denying the material averments and stating that it is the sole proprietor of M/s. Marshall Exports
and has been manufacturing, selling and exporting all kinds of sports goods included in class 25. It is stated that the respondent No. 1 is the registered
proprietor of the trade mark MAREX (word per se) under No. 505985 in class 28 in respect of sporting articles (except clothing) and MAREX, along
with the logo 'M' under No. 10822600 in class 25 in respect of Sports wears, sports shoes, sports garments and protective sporting articles included in
class 25. The trade mark MAREX (word per se) was registered as of 24.2.1989 which is renewed and subsisting and the trade mark MAREX along
with the logo 'M' is registered as of 22.2.2002.
It is claimed that the trade mark MAREX is invented by taking the initial letters from the trading style MARSHALL EXPORTS by taking the
letters MAR from the word MARSHALL and adding the letters EX from the word Exports. It is further claimed that the respondent No. 1 has been
using the mark MAREX and MAREX along with logo 'M' in respect of all goods for which registration has been granted and the respondent No. 1
has been selling the goods in India and also exporting them to other countries. The respondent No. 1 popularised the two marks by advertisements in
newspapers, magazines, presenting novelties, stickers and sponsoring games and players and by running a Sports Club which is registered on
05.08.2003 as MAREX CRICKET CLUB under the Societies Registration Act, 1860. The sales figures of goods of the respondent No. 1 sold under
the trade mark for the year 1988-1989 was Rs. 2,57,059.50 which rose to the tune of Rs. 49,95,531.75 for the year 2007-08 (up to 29.2.2008). It is
averred that initial adoption of mark by the applicant is tainted with dishonesty and in such an adoption of mark by the applicant for any goods, no
amount of subsequent use will remove its taint of dishonesty and further, the applicant has committed an offence under Section 107 of the Act by
falsely representing its unregistered trade mark as a registered trade mark for which the respondent No. 1 has filed a complaint before the Registrar
of Trade Marks, Delhi in April, 2008. The applicant has also furnished different addresses to mislead this Appellate Board. The respondent No. 1 has
submitted that the contention that goods of the rival parties are different have no relevance and is therefore wrong and denied and the opinion of the
All India Sports Goods Manufacturing Federation, Meerut is irrelevant, wrong and denied as it is based on misconception of law. The respondent No.
1 is not aware of the alleged suit and injunction, if any, against it. The applicant is not a person aggrieved and the present application deserves to be
dismissed with cost in favour of the respondent No. 1.
The applicant has on 23.05.2008 filed replication of the counter-statement with evidence by way of affidavit of Shri Uma Shankar Mishra,
proprietor of the applicant, refuting the contents of the counter-statement. It is generally stressed by the applicant in the replication that the respondent
No. 1 has not produced the original bills/invoices, registration certificates of trade marks and copyright as the trade mark MAREX with 'M' be proved
only on the exhibits (original documents) as given under Rule 54 of the Trade Marks Rules, 2002; that the illegal adoption and use of mark claimed on
fake and concocted invoices does not stand corroborated to become an evidence; that the mark Marex of the applicant and mark MAREX of the
respondent No. 1 are phonetically, visually and also deceptively the same; that the burden of proof that the respondent No. 1 has made any bonafide
use of trade mark applied for till date and prior to the applicant and that it has any bonafide intention to use the same is still on the shoulders of the
respondent No. 1 which needs to be discharged to shift the burden to the applicant's shoulders; that the applicant shall produce the evidence under
Sections 62 and 63 of the Evidence Act to prove prior and genuine user for the purpose of the present application (see page 11 at para 17.iv.) and that
the applicant's mark Marex (female horse) which is a coined mark contains letter X as suffix to read the mark as Marex (see page 13 at sub-para v.)
and hence the applicant's mark has been colourably adopted and used by the respondent No. 1.
The miscellaneous petitions No. 15/2008 and No. 50/2008 came up before us for hearing on 26.05.2008 when after hearing to some extent, it was
decided with the consent of counsel of both the parties that the main application and miscellaneous petitions be posted for final hearing on 15.07.2008.
Accordingly, the rectification applications and miscellaneous petitions were heard together on 15.07.2008 when Shri O.P. Chauhan, Advocate
appeared for the applicant and S/Shri M.R. Bhalerao and D.K. Handa, Advocates appeared for the respondent No. 1.
Shri O.P. Chauhan, learned Counsel for the applicant, contended that the respondent No. 1 has obtained registration of the mark by making material
misstatement and playing fraud as the respondent No. 1 deliberately and intentionally moved the application for registration of trade mark giving the
incorrect user date to the Trade Marks Registry. The respondent No. 1 was aware on the date of filing application that its opposition to applicant's
application for registration was ordered in favour of the applicant but despite that the respondent No. 1 filed application for registration of trade mark
and obtained registration in connivance, fraudulently and by material misstatement as to its user - which misstatement were made with a view and
intention to get improper advantage and improper purposes - by suppressing material and relevant information as well as true and correct use of the
trade mark in the Trade Marks Registry. The respondent No. 1 has filed bills from the year 1997 and not from the year 1988 and the copies of
bills/invoices since 1998 have not been filed as per Sections 62 and 63 of the Indian Evidence Act, 1872.
Learned Counsel for the applicant contended that the impugned mark of the respondent No. 1 was neither distinctive of the goods of the applicant
at the time of granting registration nor is distinctive at the commencement of the present proceedings and the claim of the respondent No. 1 that the
mark is invented is false as the same is a coined word consisting of MAR + EX. The impugned registration is, therefore, granted in contravention of
the provisions of Section 9 of the Act. It is evident from the records that the respondent No. 1 has not adduced any evidence of its claimed user since
1988. The mark of the respondent No. 1 was adopted and claimed user since the period when its firm was not registered. The respondent No. 1 has
not filed any evidence to prove user since 1988 as the documents filed by it is from the year 1997. The burden of proof of user still lies on the shoulder
of the respondent No. 1 which needs to be discharged to shift on the applicant's shoulders under the provisions of Sections 101 to 104 of the Indian
Evidence Act, 1872.
Learned Counsel contended that the impugned mark and the goods covered by it are identical or deceptively similar with the mark and goods of
the applicant. The marks of the parties are phonetically, visually or structurally same. The impugned mark in relation to the sports wears, track suits,
costumes and pant-shirts for players in class 25 is identical or deceptively similar with the trade mark of the applicant bearing No. 795640 dated
20.03.1998 in relation to the track suits, sports wear, costumes and pant-shirts for the players. When the marks and goods covered by them are
deceptively similar, they are bound to cause deception or confusion in the minds of public and trade. The impugned registration granted in favour of
respondent No. 1 is contrary to the provisions of Section 11 of the Act and therefore it ought not to have been registered due to the mandatory
provisions as also in view of the fact that the identical trade mark has already been in process for registration in favour of the applicant.
It was contended that the entry relating to the impugned trade mark was wrongly and without any sufficient cause made in the Register of Trade
Marks and the same is wrongly remaining on the Register. The mark MAREX is wrongly registered as an invented mark whereas the word MAREX
is a coined word taken from the trading style of the respondent No. 1 as admitted by it in the counter-statement. The entire registration granted on the
false representation of the respondent No. 1 is wrong, illegal and against the facts of the case; the entire exercise done by the respondent No. 1 as
well as the Trade Marks Registry is contrary to the various provisions of the Act and, therefore, the impugned entry in the Register of Trade Marks is
made wrongly and without any sufficient cause and wrongly remains on the Register.
Learned Counsel for the applicant contended that the respondent No. 1 has no bonafide intention to use the mark at the time of making application
for registration nor there has been any bonafide use of the impugned mark in relation to sports wear. By drawing our attention to the averment made
at paragraph 7 (page 3) of the application, the learned Counsel submitted that the respondent No. 1 has not used the trade mark till the date of filing of
the present application. He further contended that the defence of special circumstances or any other factor under Sub-section (3) of Section 47 of the
Act did not exist and hence not available to respondent No. 1.
Lastly, the learned Counsel contended that the respondent No. 1 is not the proprietor of the trade mark MAREX in respect of goods in class 25 as
the said trade mark exclusively belongs to the applicant. Hence the mark applied for by the respondent No. 1 is contrary to the provisions of Section
18 of the Act. When the respondent No. 1 applied for registration of the impugned mark, it was fully aware that the opposition filed against the
applicant's? application for registration was ordered in favour of the applicant. The applicant is the prior user, in fact, and the respondent No. 1 has
encashed upon the goodwill and reputation of the mark of the applicant and the applicant being prior user of the mark, the vested right of the applicant
is saved under Section 34 of the Act.
On the other hand, learned Counsel for the respondent No. 1 submitted that the applicant is not a person aggrieved within the meaning of Section
47 or Section 57 of the Act. He pointed out that the applicant has not explained as to how it claims to be a person aggrieved except stating that it has
instituted a suit No. 176 of 2002 against the respondent No. 1 for permanent injunction, infringement of copyright, damages and delivery ups etc., in
the Delhi Courts where the respondent No. 1 has been restrained from using the trade mark MAREX. The respondent No. 1 is, however, not aware
of the alleged suit and injunction granted against the respondent No. 1.
Learned Counsel for the respondent No. 1 submitted that the allegation of fraud and incorrect claim of user are wrong, denied and disputed. The
applicant's emphasis that the respondent No. 1 has obtained the mark/registration by making material misstatement and by playing fraud is without any
basis. The fact is that the opposition was treated as deemed to be abandoned by order of the Registrar on 23rd February, 2004 whereas the
application No. 1082600 was filed about two years before, i.e., on 22.02.2002 and as such the said allegation is totally baseless. The applicant has to
give specific details or particulars to sustain the allegation of fraud. A bald allegation of fraud without specific particulars is not sustainable. The
applicant has made a bald and general statement that the respondent No. 1 has obtained registration by making material misstatement with out any
proof and without giving any specific detail of any alleged material misstatement in the pleadings. The onus of proof is on the applicant alleging fraud
and in the case on hand the applicant has failed to discharge the onus.
Learned Counsel submitted that the applicant has failed to show as to how the mark of respondent No. 1 was not distinctive of the goods at the
time of grant of registration and as to how it is not distinctive even at the time of commencement of the present proceedings. MAREX is an invented
mark, not to be found in the dictionary and does not have obvious meaning and the mark was and is capable of distinguishing the goods of respondent
No. 1 from the goods of the applicant. The mark of the respondent No. 1 is inherently distinctive and entitled for registration. The applicant is required
to prove that the mark sought to be removed form the register was/is in contravention of the provisions of Section 9 of the Act. The Registrar has
granted registration legally and after complying with all the requirements of registration proceedings before him. As a matter of fact, the mark
MAREX is such that unless told to a person that it consists of the words MAR plus EX taken from the trading style, he cannot make out that it is a
coined word and in that sense it is an invented word.
Learned Counsel submitted that the respondent No. 1 is the registered proprietor of the subsisting mark MAREX (word per se) which was
registered as of 24.02.1989 in class 28 and the applicant after about eight years claiming to be the proprietor of mark Marex is nothing but a taintedly
dishonest claim. The learned Counsel by drawing our attention to paragraph 16(iii) of the counter-statement submitted that the respondent No. 1 has
not disputed the averment made by the applicant at paragraph 16(iii) of the application to the effect that the trade mark under application No. 795640
and 1082600 are deceptively similar and the goods for which registrations were sought therein are similar. Strangely, the applicant in the replication
blew hot and cold by stating that the mark MAREX with the logo 'M' over it of the respondent No. 1 in class 28 is not at all deceptively similar to that
of the applicant's mark whereas the same marks are undoubtedly deceptively similar when used in respect of class 25 goods. Learned Counsel read
out the relevant portion of the replication, which is extracted as under:
The petitioner's trademark contains or consists of the word MAREX and artistic device of letter 'M' above the word MAREX, whereas, the mark of
the petitioners contains or consists of the word MAREX and device of MARE and RIDER. Hence, the respondent's marks MAREX with artistic
device of the letter M above their Trade Mark MAREX in class 28 is not at all deceptively similar to that of the petitioners, but whereas, this mark is
used in class 25 it is undoubtedly deceptively similar to that of the petitioner's mark.
The respondent's mark are (1) word per-se MAREX (2) the device of Mare with its rider (3) the letter X has been added to the word MARE as to
read as MAREX which is coined word, hence, the petitioner's mark has been colorably adopted and used by the respondents.
Learned Counsel pointed out by quoting the following statement in the replication that the statement in para 16. (iii) and the statement quoted below
are clearly self contradictory:
8.ii. That the contents of this reply para are ridiculous and unfounded since the trade marks, devices, combination of MAREX, etc. can be identical but
not the application No. 795640 and 1082600, the similarity of goods makes no difference but similarity of trademarks is significant.
(emphasis supplied)
Learned Counsel submitted that the mark of the respondent No. 1 is an invented mark or a coined mark which has no obvious meaning and not found
in dictionary at the same time it has acquired considerable reputation. The mark MAREX (word per se) is not liable to be removed from the register
on the basis of prior use of the respondent No. 1. In support of his submission, the learned Counsel placed reliance upon the judgment of the Division
Bench of High Court of Delhi in the case of Telerad Private Ltd. (supra) wherein Telerad (invented word, Tele + Rad) registered for domestic
electric appliances in class 11 was expunged on the ground of prior use and reputation of the same mark for radios in class 9.
Learned Counsel for the respondent No. 1 submitted that the allegation of the applicant that the entry relating to the mark of the respondent No. 1
was made wrongly and without any sufficient cause in the Register of Trade Marks and the same wrongly remains on the Register is frivolous and
false especially when the applicant has placed nothing on record to show that the impugned entry was made wrongly and without any sufficient cause
and the same wrongly remains on the Register. In rectification proceedings, the onus of proof is on the applicant to show that the trade mark attracts
any of the provisions stated by the applicant. Mere bald allegation by the applicant that the entry relating to trade mark has wrongly been made or
made without any sufficient cause is not enough to remove the mark/entry from the Register of Trade Marks.
Shri Bhalerao, learned Counsel submitted that the respondent No. 1 has continuously and extensively used the mark till date and the copies of bills
vouchers made available on the record prove the use of the mark. The respondent No. 1 has registration under the Punjab Sales Tax and the Central
Sales Tax with effect from 11.5.1988 and the statement of yearly sales from 1988-89 to 2007-08 ( up to 29.2.2008) is given in paragraph 11 of the
counter-statement. On the contrary, the applicant has except making a bald allegation not furnished any proof of the alleged non-use or lacking bona
fide intention of the respondent No. 1 to use the mark at the time of making application for registration or up to five years or more, three months
before the filing of the present application. Question of lacked bonafide intention of registered proprietor to use the mark arises when the mark as
registered has not been used by such proprietor at all although he has reasonable business opportunities so to do. The applicant has substantiated or
attempted to substantiate its allegation. Therefore the present application deserves to be dismissed with exemplary costs.
Learned Counsel submitted that the respondent No. 1 is the true and rightful proprietor of the trade mark as he is the prior adopter of the mark
MAREX taken from his trading style; the mark is not a dictionary word and has no obvious meaning, therefore, no other honest person can claim to be
bonafide proprietor thereof. On the other hand the adoption of Marex by the applicant is tainted with dishonesty as there is no cogent and satisfactory
explanation or reason put forth by the applicant. There was not a whisper in the application about how and why the applicant settled for the mark.
When the applicant saw the explanation of the respondent No. 1 in the counter-statement, the applicant came up with imitated explanation in its
replication that it is a coined word consisting of Mare with X added at the end but why the addition of letter X was made is unexplained. This gives
rise to a serious suspicion about the bonafide and honesty of the explanation.
After hearing the arguments of both the sides and on perusal of records, the first question to be considered by us is whether the applicant is the
person aggrieved under Section 47 or Section 57 of the Act to file the present application. The Courts have given liberal construction to the expression
person aggrieved. A trader dealing in the same class of goods to which the registered trade mark relate, or persons who are in some way or the other
substantially interested in having the mark removed from the register, are persons aggrieved and include persons who opposed the application for
registration of the applicant. The test for such determination is propounded in Powell's Trade Mark 1894 (11) RPC 4. A person aggrieved includes the
rivals in the same trade who are aggrieved by the entry of the rival's mark in the register or person whose legal rights would or might be limited if the
mark remains on the register, he could not lawfully do that which, but for the existence of the mark on the register he could lawfully do. The applicant
in the present case is in the similar business of manufacturing and marketing in sports wear, etc. like the respondent No. 1. The applicant has only
stated that it is the person aggrieved because it has filed a suit for infringement, etc. of its copyright, therefore, we had to draw possible inference
from the pleadings of the applicant. After perusal of the pleadings, we are of the view that the registration of trade mark obtained by the respondent
No. 1 is prima facie in restraint to the legal rights of the applicant and the respondent No. 1 has opposed the application for registration of trade mark
of the applicant, therefore, the applicant is in one way or the other substantially interested in having the mark of respondent No. 1 removed from the
register. The applicant is in our prima facie opinion the person aggrieved.
A trade mark which is devoid of any distinctive character - not capable of distinguishing the goods of one person from those of another cannot be
registered under Section 9 of the Act. The mark of the respondent No. 1 is distinct which is coined or invented from the trading style of the
respondent No. 1, having no obvious meaning and not found in the dictionary. The respondent No. 1 is the registered proprietor of trade mark
MAREX in class 28 as of 24.2.1989. The applicant has not explained or set out any reason as to how and why the impugned mark was not distinctive
at the time of registration and is not distinctive at the time of filing the present application. Regarding the alleged fraud, it is evident from the records
that the respondent No. 1 filed the application for the impugned registration on 22.2.2002 and the order of abandonment of opposition filed by the
respondent No. 1 was passed about two years later that is to say on 23rd February, 2004. Even, as per copy of legal proceedings certificate, the
certificate of registration was issued on 22.1.2004, viz. before the passing of the said abandonment order. The applicant has not shown as to how the
respondent No. 1 has played fraud on the Trade Marks Registry and what misstatement or misrepresentation it has made; and what undue benefit, if
any, was derived by the respondent No. 1 by making application for registration during the pendency of opposition filed by it especially when the
respondent No. 1 was the registered proprietor of the trade mark MAREX In the absence of any specific particulars of fraud or misstatement or
misrepresentation, and in the absence of any explanation or reason as to how the impugned registration contravenes the provisions of Section 9 of the
Act, the allegation fraud, non-registrability of the impugned mark, etc. are not sustainable and hence fail.
Now the next issue we would take up is whether the two marks of the applicant and the respondent No. 1 are so similar that the mark of the
respondent No. 1 is likely to cause deception or confusion in the mind of ordinary consumers/purchasers. In order to find whether the two marks are
similar or not, the test laid down in the cases of Corn Products Refining Co. v. Shangrila Food Products Ltd. & Amritdhara Pharmacy v. Satya Deo
Gupta was as under: ""The test laid down for comparing the two marks are-
(i) The question whether the two marks are so as likely to cause confusion or deceive is one of first impression. It is for court to decide this question,
(ii) The question has to be approach by applying the doctrine of fading memory i.e., from the point of view of a man of average intelligence having
imperfect recollection, (iii) Whether the overall visual and phonetic similarity of the two marks is likely to deceive such a man or cause confusion that
he may make mistake the goods of the defendant for those of the plaintiff. (iv) The other question which arise are: (i) who are the persons who are
likely to be deceived and (ii) what rules of comparison are to be adopted in judging whether such resemblance exists.
In a recent decision in Mahindra and Mahindra Paper Mills Ltd. v. Mahindra and Mahindra Ltd. A.I.R. 2001 S.C.W. 4679 while upholding the
decision of a Division Bench of the High Court in an action for passing-off, the Supreme Court observed that whether there is likelihood of deception
or confusion; that all factors which are likely to create or allay deception or confusion must be considered in combination and that broadly speaking,
factors creating confusion would be, for example, the nature of the market, itself, the class of customers, extent of reputation the trade channels, the
existence of any connection in course of trade, and others. In the case of Jugmug Electric & Radio Co. (supra) where the mark TELERAD
registered for domestic electrical appliances falling in class 11 was expunged on the ground of prior use and reputation of the same mark for radios in
class 9 and observed that many firms manufactured both radios and domestic electric appliances which were sold in the same shops. The Division
Bench of High Court of Delhi at pages 78-79 observed as under:
Another very important consideration in judging the applicability of Section 11(a) is the nature of the trade mark. If a trade mark is an invented word,
then the first user of such a trade mark obviously intends to have a monopoly of it and he will make every attempt to satisfy the authorities acting
under the Trade and Merchandise Marks Act to protect his monopoly of the same. The intention to monopolise the word may not be so obvious when
the word constituting a trade mark is not an invented or a coined word but is a common dictionary word. The respondent coined the word
TELERAD"" appropriately because it manufactured radio sets indicated by the combination of the word ""Tele"" with the word ""Rad"". When a person
copies as his own trade mark a word previously invented by another person, suspicion immediately arises why the copyist is trying to imitate the
person who has a priority in the trade. The appellant in the present case has not been able to give any satisfactory answer as to why it chose the name
TELERAD"" as its trade mark and why it called itself ""Jugmug Electric & Radio Company"" when it knew it was not making radios, and when it also
knew that the word ""TELERAD"" was previously being used and was registered as a trade mark by the respondent appropriately because the
respondent manufactured radios. It is difficult to remove the impression from the mind of the authorities acting under the Trade and Merchandise
Marks Act as also from the mind of the Court that the appellant deliberately copied the trade mark of the respondent to obtain illegitimate advantage
of the reputation of the respondent attaching to the said trade mark. It was argued for the appellant that reputation is attached to goods and not to the
trade mark as such. This very argument recoils on the appellant. It is because the goods of the appellant are in the same trade channel as the goods of
the respondent that the probability of the appellant exploiting the reputation of the respondent arises. What the customers know is that the respondent
manufactures radios. The reputation of the respondent certainly attaches to those radios. But the customers are also likely to think that the respondent
also manufactures and/or sells domestic electrical appliances firstly because it is common practice for one firm to manufacture both these types of
goods and for shops to sell both these types of goods and secondly because both these types of goods are sold under the same trade mark
TELERAD"". What more assurance is needed to a customer to think that ""TELERAD"" domestic electrical appliance is image by the maker of
TELERAD"" radio than the common name"" ""TELERAD"" under which both of them are sold?
In the light of the above tests/principles, we would see whether the marks are deceptively similar to cause confusion or deception. The competing
marks are (i) applicant's marks pending registration are MAREX and Marex with device of Mare and Rider and (ii) the respondent No. l's marks are
MAREX (word per se) and MAREX with artistic logo of 'M' over it. In the marks of both the parties MAREX is common and prominent and the
same are phonetically similar. When some buyer go for purchase of sports wear or sports goods he will ask the shopkeeper by uttering or pronouncing
the mark MAREX and most probably he will not ask the shopkeeper by uttering or pronouncing MAREX with mare and rider or MAREX with logo of
'M'. The trade channel of respondent No. 1's goods, whether sports goods or sports wear is same as the goods of the applicant and the customers are
also common. The applicant in the application claimed to be manufacturing and marketing all types of sports wear but there are on record two
advertisements in November, 2005 and January, 2006 containing pictures of cricket balls and bats, tennis balls and rackets and football, stating the
applicant to be the manufacturers and whole sale suppliers. Based on that we can hold that goods of both parties are same and both parties are in the
same trade as the applicant is manufacturing and marketing in goods in class 28 also. The respondent No. 1 is evidently prior adopter and user of the
mark MAREX since 11.5.1988 and the records reveal that the respondent No. l's mark has acquired considerable goodwill and reputation. This
goodwill and reputation can be unhesitatingly inferred from the sales figures which was Rs. 2,57,069.50 in 1988-89 that rose to Rs. 49,95, 531.75 in
2007-08 (up to 29.2.2008) and it has exported the sports goods and sports wear to U.A.E in March, 1998 for Rs. 560010.00. When the applicant
adopted the mark in 1997, the sales figure of the respondent No. 1 was Rs. 35,47,329.80 (1997-98), whereas the applicant's sales figure was Rs.
46,400.00 (1997-98). In the present case the marks are deceptively similar;- the respondent No. 1 is prior adopter and user of the coined or invented
mark having acquired considerable goodwill and reputation by way of long use, and when a person copies as his trade mark a word previously
invented or coined by the respondent No. 1, suspicion immediately arises why the copyist is trying to imitate the respondent No. 1's who has a priority
in the trade. The applicant's explanation is not acceptable as there is no reason why the letter X has been added to the word Mare when the word
Mare has a meaning and the same is not indicative of character, quality, intended purpose or other characteristics of the goods of the applicant. The
applicant would not have adopted such a mark without seeing the mark of respondent No. 1 or knowing that such a mark was previously being used
and it is neither the case of the applicant that he was not aware of such mark being in use. The word was registered as a trade mark by the
respondent No. 1 appropriately because the respondent No. 1's trading style is MARSHALL EXPORTS. It is difficult to remove the impression from
our minds that the applicant deliberately copied the trade mark of the respondent No. 1 to encash the reputation of the respondent No. 1 attaching to
the said trade mark. Because the trade channel and customers are common or same, the probability of the applicant exploiting the reputation of the
respondent No. 1 arises. We have observed above that the applicant is in the business of goods in class 28 also, the averment of applicant that the use
of mark by the respondent No. 1 in respect of goods in class 28 is not at al deceptively similar to that of the applicant is untenable. In view of the
foregoing, we are of the opinion that the marks are deceptively similar and when both used in trade simultaneously they are bound to cause confusion
or deception in the minds of public.
The removal of the impugned mark from the Register of Trade Marks on the grounds that the entry in the Register is made without any sufficient
cause or the entry wrongly remaining on the Register is not sustainable in the absence of any specific details contained in the pleadings. It is a very
general and vague allegation and is not at all substantiated by the applicant and rejected.
Now we will see whether the respondent No. 1 had no bonafide intention to use the impugned mark and has not used the same at all three months
before the filing of the present application. The respondent has filed certain copies of sample invoices from 17.1.1997 to 20.4.2005 and all the copies
contain the trade mark MAREX and logo 'M' and PST/CST number dated 11.5.1988 but there is not a single copy of advertisement is on the record.
More over, the respondent No. 1 has not made a whisper about the non-production of invoices prior to the period of January, 1997. The applicant has
in the replication emphasised that the respondent No. 1 has not produced the original documents to corroborate the documents produced in evidence of
user. The applicants averment that the respondent No. 1 has not complied with the Sections of 101 to 104 of the Indian Evidence Act, 1872 is not
acceptable as the provisions of Indian Evidence Act, 1872 is not applicable to the proceedings before the Appellate Board. The respondent No. 1 has
adduced evidence by way of photocopies of invoices containing trade mark print and PST/CST number thereon and entries of sale of sports wear like
shirts, trousers, nickers, etc., are found in the invoices from 1997 onwards, it cannot be said that such copies cannot be treated as evidence unless the
very nature of evidence is doubtful. We do not find them to be doubtful from any angle. The averment of the applicant that the respondent No. 1 has
claimed user before the firm was registered is not true as the firm has obtained sales tax registration on 11.5.1988. On the other hand the applicant
even after making averment in the replication that it shall produce the evidence under Sections 62 and 63 of the Evidence Act to prove prior and
genuine user for the purpose of the present application but has not produced and the copied of invoices filed are nether legible nor contain the trade
mark print thereon. Majority of the copies of invoices are on plain papers affixed with rubber stamp of the firm. The applicant's averment in the
replication is misconceived that the onus of proof of use of mark on the respondent and if and when discharged will shift to the applicant. In the case
of Dolphin Laboratories Pvt. Ltd. v. Ranbaxy Laboratories Pvt. Ltd. 1984 PTC 176 Del., the High Court of Delhi held that the applicants have
discharged the burden of proof of showing that the registered proprietor's products under the trade mark AMFEDOL were not available in the market
and once the burden of proof is discharged by the applicants for rectification, the onus shifts on the shoulders of the registered proprietors to prove
that they have used the mark during the period 27th August, 1974 to 27th August, 1979. The applicant has miserably failed to discharge the onus to
prove the alleged non-use of the impugned mark by the respondent No. 1.
The next issue whether the respondent No. 1 is lawful proprietor of the impugned mark. The trade mark MAREX is claimed to be coined or
invented by the respondent No. 1 from its trading style MARSHALL EXPORTS by taking MAR from MARSHALL and EX taking from EXPORTS
and as such the respondent No. 1 has appropriately adopted and obtained registration. The respondent No. 1 is the prior adopter and user of the trade
mark MAREX and first in the trade. The applicant has objected in its pleadings that the respondent No. 1's mark MAREX with logo 'M' is shown as
proposed to be used and therefore and also when application for its registration was made the respondent No. 1 was fully aware that the opposition
filed opposing the application of the applicant was treated as abandoned by the Registrar of Trade Marks but despite that the application for
registration was dishonestly moved by the respondent No. 1 in 2002. The respondent No. 1 has produced a copy of application No. 1082600 and a
copy of legal proceedings certificate which clearly show that the user date is 11.5.1988. The applicant has also produced a copy of search report
which also corroborates with the said date. The applicant's objection that the application for registration was dishonestly moved by the respondent No.
1 has no substance as the application for registration was filed on 22.2.2002 and certificate of registration was issued on 22.1.2004 whereas the
abandonment order was passed by the Registrar on 23.2.2004, further, apart from that respondent No. 1 was already the registered proprietor of the
trade mark MAREX. We, therefore, see no infirmity in the proprietorship right of the respondent No. 1. The claim of protection under Section 34 of
the Act is not sustainable as the applicant has not established that it has been using the mark continuously from an earlier date to that of the
respondent No. 1.
M.P. No 15/2008 has become infructuous as the registration proceedings before the Registrar had concluded long before the filing of this
miscellaneous petition. We see no harm if the M.P. No. 50/2008 is allowed and the Registrar of Trade Marks is impleaded. We accordingly allow
M.P. No. 50/2008 and made the registrar as respondent No. 2 in this order.
In view of the above, we see no merit in the rectification application. We dismiss the application without order as to costs.