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Judgment
S. Usha, J
The instant appeal arises out of the order dated 15.05.2009 passed by the Deputy Registrar of Trade Marks, dismissing the opposition No. DEL-T-
2540/58052 and allowing the application No. 586142 in class 25 to proceed to registration under the provisions of the Trade Marks Act, 1999
(hereinafter referred to as the Act). The 1st respondent herein filed an application for registration of the trade mark label 'Beverly Hills Polo Club' on
03.12.1992 under No. 586142 in class 25 in respect of clothing, footwear and headgear. The mark was 'proposed to be used' on the date of
application. The said application was Advertised Before Acceptance in the Trade Marks Journal No. 1231 (S) dated 21.09.2000 at page 225. The
application was opposed by the appellant on various grounds. On completion of the pleadings, the Deputy Registrar heard the matter and passed the
impugned order. The Deputy Registrar held that the 1st respondent's trade mark is already registered in several countries and therefore the objections
under sections 9, 11, and 12 of the Act was decided in favour of the 1st respondent. The 1st respondent had adopted the impugned trade mark in the
year 1981 and used the same outside India but in India, it was proposed to be used. The 1st respondents have proved the goodwill and reputation of
the trade mark in India. Their sales figures are very high and they enjoy exclusive proprietary rights in the impugned mark. The appellants have not
discharged their onus to prove reputation. No party can claim exclusive right to the word 'Polo'. The issue of proprietor under section 18 of the Act
was decided in favour of the 1st respondent as they were the proprietors of the trade mark and therefore dismissed the opposition and allowed the
application for registration.
The appellants herein, the opponents before the Deputy Registrar, being aggrieved by the impugned order filed the appeal on the grounds that
(a) the Registrar failed to consider the fact that the appellants are the registered proprietor and prior adopter and user of the trade mark 'Polo' since
the year 1977;
(b) the Registrar erred in not taking on record the evidence filed by the appellants;
(c) the Registrar failed to consider that the appellants are the registered proprietors of the trade mark 'Polo' under No. 323908 in class 25 since 1977
and under No. 654970 in class 25;
(d) the Registrar failed to consider the appellant's registration and therefore erred in holding that the appellants have not proved the use and reputation
of the trade mark 'Polo';
(e) the Registrar has wrongly held the 1st respondent as the honest adopter and proprietor without considering the appellants registration and
evidence;
(f) the Registrar erred in rejecting the appellant's objection under section 18(1) of the Act as baseless;
(g) the Registrar failed to appreciate the objections under section 9 which was based on the fact that the application for registration was a proposed to
be used mark;
(h) the Registrar failed to appreciate that the burden of proving is always upon the applicant and not on the opponent;
(i) the Registrar erred in accepting the respondent's contention that the word 'Polo' is the name of a sport and no one can claim exclusive right;
(j) the Registrar erred in not considering the fact that the appellants are the registered proprietors of the trade mark 'Polo';
(k) the Registrar failed to consider the judgment cited by the appellants;
(l) the Registrar failed to take on record and consider the evidence filed by the appellants;
(m) the impugned order is contrary to the facts on record and also to the principles of law, equity and natural justice and is liable to be set aside.
The 1st respondent filed their counter statement stating that the Registrar had not erred in not taking on record the appellants evidence as it was a
belated one and the Registrar had also given the reasons for the same. The 1st respondents trade mark is a composite mark which includes the word
'Polo' which is the name of the sport and no one can claim exclusive right to the mark 'Polo'.
During the opposition proceedings, the 1st respondents had under gone a change - assignment from BHPC Marketing Inc. to BHPC Associates
LLC. Thereafter, the mark was further assigned from BHPC Associates LLC to BHPC International LLC and from BHPC International LLC to
Lifestyle Equities CV. The recordal of assignment is pending before the Trade Marks Registry.
5 . The 1st respondents denied that the appellants are engaged in the business of manufacturing and marketing readymade garments under the trade
mark 'Polo' since the year 1977. The appellants have failed to establish its claim. The appellant's applications for registration are opposed by various
parties and therefore they have no locus standi to challenge the 1st respondents rights. The word 'Polo' is a common dictionary word denoting a sport
and the appellants cannot claim exclusive right over the word 'Polo'. It is denied that the marks are deceptively similar. The impugned trade mark label
is a combination of words, which surrounds an artistic design which in union is inherently distinctive and capable of registration under section 9 of the
Act.
The appellants have failed to file evidence in time. The appellants have not sent a copy of the reliance letter to the 1st respondents. The appellants
have not filed any extension of time but had filed evidence after the 1st respondents evidence which is contrary to the Rules. The appellants right to
file reliance letter as well evidence is not provided in the Rules. 'Beverly Hills Polo Club' with a device was first used in the year 1981 by the 1st
respondent. 'Beverly Hills' is a place in Los Angels.
The reliance letter was never sent to the 1st respondent. On request to the Trade Mark Registry, the 1st respondent received the letter. The 1st
respondent's trade mark is a composite mark consisting of the combination of words 'Beverly Hills Polo Club' and the device of a horse rider which is
sufficiently distinguishable from the appellants trade mark 'Polo' which is a kind of a sport. The 1st respondent denied the appellants ground that the
Registrar erred in holding that the appellants have not proved the use of reputation of the mark 'Polo'. The registration is only prima facie evidence of
validity of owning such registration and cannot be used as evidence to prove use of a mark.
'Polo' being the name of a sport, the appellants cannot stop any person from using the word as a trade mark or as a part of a trade mark. The 1st
respondent is not claiming exclusivity in the word 'Polo'. Additionally, the 1st respondents mark is a distinctive composition of such words and device
which has no direct reference to the goods for which it has been applied for. The rival marks are dissimilar and therefore the registration will not be in
contravention of section 11 of the Act.
9 . The rest of the contentions and grounds made in the grounds of appeal were denied.
10 . We heard the Learned Counsel for the appellants Shri S.C. Chaddha and the Learned Counsel Shri C.M. Lall for the 1st respondent.
The Learned Counsel for the appellants submitted that the 1st respondent filed their evidence belatedly and the same was considered by the
Registrar. The impugned order was wrongly passed by the Registrar. The Learned Counsel submitted that the reliance letter was sent to the
applicants (the 1st respondents herein) for which they had no proof. The 1st respondents evidence was filed after a long delay of three and a half
years which cannot be taken on record but was considered.
1 2 . The appellants are registered proprietors of the trade mark 'Polo' as of 03.06.1976 under No. 454970. The impugned trade mark application has
been filed on 03.12.1992 as proposed to be used. The appellants are the prior user of the trade mark. The mark and the goods are identical.
The Registrar had not considered the judgments cited by the appellants while passing the impugned order as well the appellants registration were
also not considered. The impugned order is bad in law. The appellants are prior in use and they have the exclusive right to use the mark 'Polo'.
The Learned Counsel then relied on an order passed by the Registrar of Trade Marks which was confirmed by the Intellectual Property Appellate
Board (IPAB) in OA/22/2005/TM/MUM. The case was between the appellants and a third party, where it was decided that the appellants herein had
exclusive right over the word 'Polo'.
The Learned Counsel then relied on 1951 (68) RPC 178 in the matter of Gaines Animal Foods Ld.'s Application to Register a Trade Mark.; 1928
(45) RPC 279 in the matter of The Coca Cola Company v. Duckworth & Co.; 1927 (44) RPC 405 in the matter of Impex Electrical Ltd. v.
Weinbaum., to say that the use in other countries other than the place where the application is filed will not be of any use. The 1st respondents mark
when applied for registration was proposed to be used, where they claimed high reputation outside India.
In reply, the Learned Counsel for the 1st respondent submitted that Rule 50 was not complied with and therefore the opposition ought to have been
treated as abandoned. The appellants have not served on the 1st respondent the reliance letter relying on the notice of opposition. The mark 'Polo' is
already on the register and there are various others using the trade mark 'Polo'. The word 'Polo' means a kind of sport and therefore no one can claim
exclusive right.
The Learned Counsel for the 1st respondents then pointed out the admissions made by the appellants in the order in OA/22/2005/TM/MUM at
para 10:
In reply, the learned counsel for the respondent No. 1 on the contrary contended that the claim of trans-border reputation and well known Trade
Mark was not established by the appellant. The goods are not used in market in India and POLO mark is not a invented mark. The word is dictionary
word and anybody can use this mark POLO with device of a man riding on Horse and they have used this mark in 1977.
...where the appellants have admitted that the word 'Polo' is a dictionary word and anybody can use, then they cannot oppose the 1st respondents use.
The 1st respondent's counsel then submitted that the evidence filed by the 1st respondents was well within time. The 1st respondents had not
received the letter from the appellants relying on the notice of opposition and that they had not filed any evidence. On enquiry, the 1st respondents
were informed by the Trade Mark Registry about the reliance letter and therefore from that day the period was calculated to file their evidence and
the same was within the prescribed time.
The appellants in rejoinder submitted that the reliance letter was sent to the 1st respondents' erstwhile agent and therefore the evidence filed by
the 1st respondents was out of time. The Registrar had not considered the order of the Intellectual Property Appellate Board (IPAB) in
OA/22/2005/TM/MUM wherein it was held that the appellants had gained goodwill and reputation among the public.
The learned counsel then submitted that the marks are similar, the goods are identical and the trade channels are same and therefore there is triple
identity. The appellants have not produced any bills. The invoices produced do not have the trade mark mentioned. The advertisement relied on is not
from India. The 1st respondents registration is in other countries and not in India.
21 . We have heard and considered the arguments of both the counsel and gone through the documents and pleadings.
The first preliminary issue is regarding the filing of evidence in an opposition proceedings as per the Trade Marks Rules, 2003. As per the Rules,
the opponent is to file their evidence within two months from the date of service of the counter statement. The opponent shall leave with the Registrar
such evidence or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition
but intends to rely on the facts stated in the notice of opposition. If no such action is taken, the notice of opposition shall be treated as abandoned. The
applicant has to file their evidence within two months from the date of receipt of the evidence or the reliance letter. In both the cases, the concerned
party may seek extension on filing a request. Thereafter, within one month, the opponent may file their reply evidence.
23 . In the instant case, the appellants have neither filed their evidence nor had served the copy of the reliance letter on the applicants. On enquiry and
on information from the Registrar, the applicant filed their evidence within time i.e. within the prescribed time from the date of information. Therefore
the applicants evidence was taken on record and considered.
We may also mention here that at the request of both the counsel, the matter was heard on merits. The issue as to whether the delayed evidence
is taken on record or not was not decided. The ground that the evidence was not considered cannot be raised by the appellants after having advanced
their arguments on merits.
Now we shall deal with the issue as to the registration of the trade mark. Though the Registrar had not considered the evidence filed by the
appellants, in the interest of justice we have looked in the evidence filed by both the parties. The appellants though claimed user since 1977, have filed
invoices and bills. The first invoice is dated 30.05.1979. The invoices of the year 1981 upto 1989 do not bear any trade mark. The invoices of the year
1998 - two trade marks are maintained, it is not clear as to which goods were sold under which brand. The advertisement cuttings are also not clear.
The rival marks are 'Beverly Hills Polo Club' a label mark with the device of a horse rider design and 'Polo' together with a horse rider. On a bare
perusal of both the marks, we do not find any similarity between the two marks. The marks have to be compared as a whole. The impugned trade
mark is a composite mark which includes the word 'Polo' which is a kind of sport. The mark, in our opinion, has no direct reference to the quality on
character of the goods. It is settled law that when a trade mark consists of several matters, its registration shall give the proprietor exclusive right to
use the mark as a whole. The appellants have admitted that anyone can use the trade mark 'Polo' which is a kind of sport and that no one can have
exclusive right over it. The impugned trade mark is not only for the word 'Polo' but a combination of other words with the device of a horse rider
design.
2 7 . A person acquires a right in a mark by use. When a person applies for registration as proposed to be used that person is required to have a
definite intention to use the mark. The respondent has shown bonafide use outside India. The respondent has made the impugned application as
proposed to be used. In such a case, it is for the respondent to prove that there is some definite intention to deal in the goods and it is also that the
respondent who have used on the date of registration. The applicants case is that the respondents have used the trade mark outside India, which in our
view will definitely help the respondents. The appellant's intention therefore, can be considered. We, therefore, are of the view that the appellant is the
proprietor of the trade mark as per section 18 of the Act. We observe that the marks are not similar and that the possibility of confusion does not
arise. The 1st respondents are the proprietors of the trade mark. Accordingly, the appeal is dismissed with no order as to costs.