AI Structured Summary
Not yet generated for this judgment
Judgment
,,
This is the Appeal under Section 91 of the Trade Marks Act, 1999 against the order of Registrar of Trade Marks, Mumbai Respondent No. 2",,
herein, dated February 24, 2016 passed in Opposition No.BOM-190960 filed against the registration of Application No. 1037034 in class 9 for the",,
mark ZION(hereinafter, the “Impugned Trade Mark/Impugned Labelâ€).",,
FACTS OF THE CASE,,
On merit, the facts are as follows:\",,
About the Appellant,,
The Appellant is an American multinational corporation and technology company headquartered in Santa Clara, California, in Silicon Valley. It is the",,
world's largest and highest-valued semiconductor chip manufacturer on the basis of revenue, and is the developer of the x86 series of",,
microprocessors, the processors found in most personal computers (PCs). The Appellant ranked No. 46 in the 2018 Fortune 500 list of the largest",,
United States corporations by total revenue. The Appellant supplies microprocessors for computer system manufacturers such as Apple, Lenovo, HP,",,
and Dell. Intel also manufactures motherboard chipsets, network interface controllers and integrated circuits, flash memory, graphics chips, embedded",,
processors and other devices related to communications and computing.,,
The facts of the Appellant’s case against the Respondent No.1,,
The Appellant submitted that the Opposition was dismissed in a cryptic manner and the Respondent no. 2 directed application for the impugned,,
mark in class 9 (application no. 1037034) to proceed to registration. The registration certificate was issued for ZION INFINITE TECHNOLOGIES,,
word mark whereas the Respondent had applied for  label mark.,,
The Appellant further submitted that, the Respondent no. 2 has wrongly issued the registration certificate in favour of the impugned mark even",,
though the appeal and miscellaneous petition filed by the Appellant seeking stay on the issuance of registration certificate during pendency of the,,
Appeal was pending.,,
The Appellant further submitted that, paragraphs 18, 19, 20 and 22 of the impugned order state:",,
“ All these documents show that the applicants are the proprietor of the impugned trademark and corroborate the claim of the,,
applicants regarding adoption of the impugned trademark in the year 2000 and its since thenâ€.,,
On the other hand, the opponents’ registered mark XEON on which reliance has been placed by the Ld. Counsel for the opponents",,
was applied for registration under application no. 865353 dated 13.07. 1999 as ‘Proposed to be used mark’,,
“I have gone through the list of various registrations which has been relied upon by the opponents and filed as Annexure ‘D’,,
to the affidavit evidence in support of opposition. According to the list, the earliest registration of the mark ZEON dates to 03.06.1998 in",,
Belarus. Thus, at best it can be said that the opponents have adopted the mark ZEON in the year 1998, however, there is nothing on record",,
to show that the opponents have been using the mark XEON per se either in India or outside India prior to the adoption and use of the,,
impugned trademark by the applicants in India â€,,
Accordingly, I reject the contentions raised by the opponents that the applicants are not the proprietors of the impugned mark or that",,
the trademark has been lifted by the applicants from the opponent’s internationally famous trademark XEON knowingly to trade upon,,
the immense reputation and goodwill of the opponents in their said trademark.,,
The Appellant submitted that, the above finding would show non application of mind and contradiction in the finding. While in paragraph 18, the",,
Respondent no. 2 has stated that Respondent no.1 is proprietor of the impugned mark since 2000 and in paragraph 20 admits that the,,
Appellant/Opponent adopted the XEON mark in 1998, it goes on to reject the contention that the mark has been copied without assigning any clear",,
reason. The Respondent no. 2 having admitted that the Appellant enjoys prior rights in the XEON mark has still dismissed the opposition filed by the,,
Appellant. In doing so, the Respondent no. 2 has ignored averments made and cogent documentary evidence filed by the Appellant to prove prior",,
adoption, use and registrations of the XEON mark.",,
The Appellant mark XEON claims to be registered in more than 140 countries of the world. List of worldwide registrations and copy of registration,,
certificates of XEON mark in class 9 in the following countries are dated as follows:,,
a. New Zealand â€" filed on 14th July 1999,,
b. Kenya â€" filed on 19th July 1999,,
c. Jamaica â€" filed on 13th July 1999,,
d. Italy â€" filed on 13th July 1999,,
e. Israel â€" 9th July 1999,,
f. Indonesia â€" filed on 20th July 1999,,
g. Brunei â€" filed on 22nd July 1999,,
h. Australia â€" filed on 19th July 1999,,
i. USA - filed on 9th July 2003,,
The Appellant further submitted that, the Respondent no. 2 has ignored that the Appellant is:",,
Appellant â€" XEON mark,"Respondent no. 1 -
 mark",
apparatus for recording transmission or reproduction of
sound of sound or images magnetic data carriers recording disks
data processing equipments, included in class 9.",,
Moreover, the words INFINITE TECHNOLOGIES in the impugned mark have been disclaimed by Respondent no. 1. Thus the comparison should",,
have been made of marks (XEON v ZION (represented in bold font) on the Register.,,
The Appellant invited attention to paragraph 29 of the impugned order:,,
The fact that the opponents have not been able to single out any instance of confusion or deception arising from the use of the impugned,,
trademark till date supports the above conclusion.,,
The Appellant submitted thatRespondent no. 2 ought to have taken into account that the actual instance of confusion and/or deception is not required,,
to be proved by the Appellant - The test prescribed under Sections 11 (1) and 29 of the Trade Marks Act, 1999 is ‘likelihood’ of confusion on",,
the part of public. The finding of Respondent no. 2 that actual instance of confusion has not been proved in paragraph 29 of the impugned order is,,
contrary to the provisions of Trade Marks Act, established ratio decidendi of numerous judicial precedents which clearly upheld that the test is",,
‘likelihood of confusion or deception’ in the minds of the public.,,
The Appellant further submitted thatRespondent no. 2 has failed to appreciate that the contents of sales invoices, advertisement and publicity",,
material are deemed to be admitted by Respondent no. 1 as it did not object to the contents of the said Annexures in the evidence in support of,,
application before the Trademarks Registry. The Appellant referred to paragraph 20 of the impugned order which is mentioned below:,,
…………The various sales invoices/ bills or other documents of sales relied upon by the opponents and filed as Annexure `G' to the affidavit,,
evidence in support of opposition nowhere show that they are in respect of the goods traded/sold under the mark `XEON'. Similarly, the various",,
Annual Reports relied upon by the Opponents and filed as Annexure 'F' also do not evidence upon the use of the trademark XEON per se by the,,
opponents rather indicate that the opponents have been using the same, if at all, as 'INTEL XEON' or INTEL INSIDE XEON', 'Pentium III Xeon'.",,
The various advertisement and publicity material relied upon by the opponents and filed as Annexure 'H' further show that the opponents have been,,
using XEON not independently but in the form of label marks as 'INTEL XEON' or 'INTEL INSIDE XEON'. Moreover, the opponents have",,
themselves admitted to such use in para 2 of the notice of opposition.,,
The Appellant further submitted thatas per Order XII, Rule 2A (1) of Civil Procedure Code, 1908 documents are to be deemed to be admitted if",,
not denied specifically. The flaws pointed out by the Respondent no. 2 in relation to Annexures G and H (sales invoices and promotional material) in,,
paragraph 20 of the impugned order are based on reading into the evidence when the Respondent had not raised the issues. The findings are thus,,
arbitrary, erroneous and legally not sustainable. Thus it is apparent that Respondent No. 2 has completely erred in his findings and ignored evidence of",,
the Appellant’s XEON mark. Therefore, the impugned order is liable to be set aside.",,
The Appellant further submitted thatthe observation of Respondent no. 2 in paragraph 18 of the impugned order that Respondent no. 1 is the,,
proprietor of the impugned mark and has created market base and is associated with the Respondent no. 1 is clearly an erroneous finding and without,,
any basis. The Respondent no. 1 has contended that it conducted searches in the market and into the records of Trade Marks Registry prior to,,
commencing use of the impugned mark. In the absence of any documentary proof, the averments cannot being relied upon. It is incomprehensible that",,
the Respondent no. 1 did not come across Appellant’s prior adopted XEON mark. The averments made by the Respondent no. 1 that the,,
impugned mark has been honestly and independently conceived is clearly an afterthought and are devoid of merit. In any case, it is well-settled that",,
the search report issued by the Trade Marks Registry is not a conclusive proof to ascertain availability of the mark. The Appellant’s mark XEON,,
being a coined word, the Respondent No. 1 failed to consider that in the absence of a plausible explanation for adoption of the impugned mark being",,
deceptively similar to the prior adopted/ registered XEON mark of the Appellant, an adverse inference ought to be drawn.",,
Judicial Decisions relied on by the Appellant,,
Milmet Oftho Industries & Others vs Allergan Inc. (Supreme Court decision dated May 7, 2004) Appeal (Civil) 5791 of 1998 - The Supreme",,
Court held that the ultimate test is who is first in the market. The mere fact that the mark has not been used in India would be irrelevant if they were,,
first in the world market. The goods nowadays are widely advertised in newspapers, periodicals, magazines and other media which is available in the",,
country. This results in a product acquiring a worldwide reputation. Thus, if a mark is associated worldwide it would lead to an anomalous situation if",,
products bearing identical mark are allowed to be sold in India.,,
Century Continuous Stationery P. Ltd. v RadheyShyam Gupta 1998 PTC 553 (Punjab & Haryana High Court decision dated July 9, 1998) - In this",,
case, the CENTURY mark was highlighted by both parties. The Punjab & Haryana High Court restrained the defendants from using CENTURY",,
even though the defendant was using the said trade mark with the word SWAROOP and contained the trading name ‘Century Continuous,,
Stationery Pvt. Ltd’. The Court held that the defendant has no right to use the trade mark CENTURY even by adding certain words or using the,,
wrapper in different colours. The Appellant referred to paragraphs 32 and 56 of this judgment.,,
Laxmikant Patel vs. Chetanbhai Shah and Another (2002) 3 SCC 65 - The law does not permit any one to carry on his business in such a way as,,
would persuade the customers or clients in believing that his goods or services belonging to someone else are his or are associated therewith. It does,,
not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the",,
basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which",,
already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and,,
thereby resulting in injury.†In this case, the Apex Court further observed that: “Where there is probability of confusion in business, an injunction",,
will be granted even though the defendants adopted the name innocently.†The Appellant referred to paragraph 10 of the judgement,,
Mrs. RajnishAggarwal& Others vsAnantam (Delhi High Court, decision dated 26 November, 2009 CS (OS) No. 602/2009) - The Court held that",,
actual damage or fraud is unnecessary. If there is a likelihood of the offending trade mark invading the proprietary right, a case for injunction is made",,
out.The Appellant referred to paragraph 23 of the judgment.,,
Jolen Inc. vs Doctor & Company (Delhi High Court decision dated 6 May, 2002) - 2002 (25) PTC 29 Del",,
- The Court observed that when a party after copying a trade mark comes out with an explanation as to its invention which is unbelievable or may be,,
plausible, its attempt to synchronize combination of words is mere after-thought and is an act of searching excuses and explanation. The Appellant",,
referred to paragraph 27 of the judgment.,,
Aktiebolaget Volvo vs. Volvo Steels Limited Decision by Bombay High Court dated October 16 1997 (1998 PTC 47) - The plaintiff being the,,
proprietor of the VOLVO mark objected to use of VOLVO mark by Volvo Steels and represented ""Building on the strength of the Volvo Group"" in",,
bold font style in promotional material. The explanation given by the defendant was that the plaintiff’s VOLVO mark is not invented word and is a,,
Latin word meaning to roll, business activities of rival parties are different and there is no probability of deception. The Court refused to accept the",,
explanation of the defendants for adopting the word ""Volvo"", and observed that the dishonestly adopted the Volvo mark/name and the intention of the",,
defendants is only to trade on the reputation and goodwill of the plaintiff .The Appellant referred to paragraphs 74, 75 and 77 of the judgment.",,
Arguments advanced by the Appellant,,
Learned Counsel for the Appellant Mr. Ranjan Narula argued that in the present case, the two marksare phonetically, structurally and visual",,
similar, the goods in question of both parties are IT hardware which by their nature are globally connected, the Respondent no. 2 has wrongly",,
dismissed the opposition even though Appellant is prior adopter of the XEON mark since 1998 which has been admitted by the Respondent no.2 in the,,
impugned order, and that the Respondent di not take into account the voluminous evidence filed by the Appellantincluding sales invoices to corroborate",,
use of XEON mark in India since 1998.,,
Learned Counsel for the Appellant further argued that the alleged use by the Respondent No.1 of a virtually identical word ZION is clearly,,
dishonest and with a view to trade upon and benefit from the goodwill and reputation of the famous mark XEON of the Company. The trade and,,
public would assume that the products of the Respondent No.1 under the impugned mark especially bearing the word ZION are another brand,,
extension offered under the XEON brand of the Appellant. Thus the use of the word ZION as the trademark for identifying the goods of Respondent,,
No. 1 is wrongful. Further no amount of use can render adoption of a deceptively similar mark to be legitimate.,,
Learned Counsel for the Appellant also argued that the Respondent No, 1’s contention that they in good faith adopted the mark ZION is not",,
acceptable. Moreover the Company’s date of adoption of the mark XEON, i.e. in the year 1998 â€" predates the Respondent No. 1’s alleged",,
date of adoption of the mark ZION in the year 2000. Thus being in a trade akin to the Appellant, the Respondent No. 1ought to have had knowledge",,
of the presence of Company’s mark XEON in the market. Counsel therefore prayed the impugned order dated 24th February 2016 passed by,,
Respondent no. 2 be set aside.,,
About Respondent No.1,,
The Respondent No. 1 submitted that they are engaged inter alia in the business of manufacturing computer hardware and peripherals, parts and",,
accessories, since last more than half a decade on its own and through its common law licensee. In relation to the aforementioned goods, respondent",,
No. 1 submitted that it is the owner and proprietor of the trade mark ZION INFINITE TECHNOOGIES. The mark was honestly and independtly,,
conceived and adopted by Respondent No. 1 in early 2000 and has been in continuous use since July 2000 by permitted user viz. Abacus Peripherals,,
Pvt Ltd, who has been duly authorized to use the impugned trade mark in relation to the aforementioned goods. Within a short span of time the said",,
trade mark has earned enough goodwill and reputation for itself owing to superior quality of goods produced by the Respondent No. 1.,,
Contentions by Respondent No. 1,,
The Respondent No. 1 further submitted that it has been using the trade mark ZION INFINITE TECHNOLOGIES, as a whole under its stylized",,
label, continously ever since the year 2000 and has done enormous business under the said mark in the last seven years. The goods have been widely",,
sold and a substantial amount has been spent on sales promotion, advertisement and other printing activities undertaken under the said mark.",,
Respondent No. 1 submitted that the said trademark ZION INFINITE TECHNOLOGIES has acquired a distinct connotation as being identified,,
exclusively with Respondent No.1 and none else and the said trademark is distinctive of its goods in the trade.,,
Respondent No. 1 submitted that the impugned trademark is distinctive of its goods. The said trademark is inherently distinctive off its goods in the,,
trade and further the said trade has by virtue of its use since the year 2000 acquired the distinctiveness required which can distinguish my,,
company’s goods from those of other manufacturers. The said trade mark is thus distinctive of the Respondent No. 1’s goods and its,,
registration is and would be in accordance with the provisions of Section 9(1) of the Act. Any use of the trade mark ZION INFINITE,,
TECHNOLOGIES in relation to the aforementioned goods is and would be exclusively identified with the Respondent and there is no question of,,
confusion or deception from anyone. Respondent No. 1 has not tried to copy or usurp upon the Appellant’s rights or their ark. Respondent No. 1,,
has sufficient goodwill and reputation in the said trade mark and does not need to harp upon or sail on other’s winds. The Appellant’s trade,,
mark INTEL XEON is distinct and different visually, phonetically and structurally from Respondent No. 1’s impugned trademark ZION",,
INFINITE TECHNOLOGIES. Further on account of honest and independent adoption and use thereof since the year 2000, Respondent No.1 is and",,
claims to be the rightful proprietorand owner of the trademark ZION INFINITE TECHNOLOGIES within the meaning of Section 18 of the Trade,,
Marks Act, 1999.",,
Respondent No.1 further submitted that the mark ZION INFINITE TECHNOLOGIES is distinctive of Respondent No. 1’s goods and the,,
same has been independently and honestly adopted and openly, bonafidely used by the Respondent No. 1. Hence the said trademark is perfectly",,
registrable in the name of Respondent No. 1,,
Arguments advanced by the Respondent No.1,,
Learned counsel for Respondent No. 1, Mr. Vinod Bhagat argued that the impugned trade mark was independently adopted by the Respondent",,
No. 1 without having any knowledge of the marks of the Appellant. He submitted that the said trade mark is a unique combination of three words, first",,
word ZION is a coined and invented word and the same is suffixed with two dictionary words INFINITE TECHNOLOGIES, thereby comprising the",,
whole of the Respondent No. 1’s trademark ZION INFINITE TECHNOLOGIES. Prior to the launch and putting into use of the said trade mark,",,
Respondent No 1 had ascertained from the markets and the trade about the existence of any identical / similar name. Having found none using an,,
identical / similar mark I relation to identical / similar description of goods, the Respondent No. 1 commenced use of its trade mark in relation to the",,
mentioned goods since the year 2000.,,
Counsel for the Respondent No. 1 argued that substantial business has been undertaken by them using the said trade mark. Usage is there,,
continuously since the year 2000 and owing to the extensive and continuous use of the said trade mark, the said mark has acquired a distinct",,
connotation and has come to be exclusively associated with the Respondent’s goods and business both in the name of the purchasing public and in,,
the trade. Counsel submitted that so far Respondent No.1 has done business in excess of Rs. 682.88. crores using the said trade mark continuously,,
since June 2000 till the present date. Accordingly it was argued that substantial reputation and unique goodwill has been earned by Respondent No. 1,,
on account of open, continuous and extensive use of its trade mark in relation to these goods, the trade mark therefore being inherently distinctive of",,
the goods of the Respondent.,,
Counsel for Respondent No. 1 argued that the two rival marks exhibit more dissimilarities that any similarity, when compared as a whole. As the",,
rival mark ZION INFINITE TECHNOLOGIES and INTEL XEON, INTEL INSIDE XEON and XEON trade marks are distinguishable from each",,
S. No.,Description,Date
1,"Opposition filed by Appellant at Trademarks Registry on the
basis of prior rights in XEON, INTEL INSIDE XEO
INTEL XEON marks","May 2, 2005
N,
2,"Order passed by Respondent no. 2 dismissing the opposition
filed by Appellant against the impugned mark","February 24, 2016
3,"Impugned order received via post on the Appellant’s
agents
by Trademarks Registry","March, 10, 2016
4,"Appeal filed at IPAB challenging the impugned order dated
February 24, 2016 passed by Respondent no. 2 along with
miscellaneous petition seeking stay on the issuance of
registration certificate for the impugned mark in favour of
Respondent no. 1 during pendency of the Appeal.","May 2, 2016
5,"1st Hearing on March 27, 2018
Appeal was admitted. The matter re-listed for final disposa
on December 21, 2018.","March 27, 2018
l
6,"Official letter dated May 29, 2018 received from IPAB for
service of appeal on Respondent no. 1","May 29, 2018
7,"Official letter dated October 10, 2018 received from IPAB
mentioning that service letter addressed to Respondent no. 1
has returned with a noting ‘unclaimed’.","October 10, 2018
8,"Official letter replied to IPAB informing there is no change
in the address of Respondent no. 1, as per online database of
Trademarks Registry. The alternate address mentioned in the
records of Registrar of Companies (ROC) wasp rovided.
Letter was filed on December 4, 2018","December 3, 2019
9,"2nd Hearing on December 21, 2018
Hearing attended by us. We were told that the appeal will be
served on the new address provided by us. Matter re-listed
for hearing on July 19, 2019.","December 21, 2018
10,"Official letter dated December 14, 2018 received from IPAB
indicating fresh service of our appeal on Respondent no. 1 on
their new address (provided by us). Respondent no. 1 directed
to file CS within two months.","December 31, 2018
11,"Reply received from IPAB stating that no counter statement
has been filed yet, however Respondent no. 1 has sought
extension to file the counter statement.","June 3, 2019
,"afterthought and factually incorrect as it was not mentioned
in the extension requests.",
14,"Email received on July 24, 2019 from counsel of Respondent
no. 1 to provide complete paper book.","July 24, 2019
15,"Counsel of Appellant provided complete set of Appeal along
with Miscellaneous Petition to counsel of Respondent no. 1
(Reply email sent to counsel of Respondent no. 1 enclosing
complete set of documents filed at IPAB)","August 7, 2019
16,"4th Hearing on December 12, 2019
Hearing was adjourned as the quorum at IPAB was no
complete.","December 12, 2019
t
17,"Letter addressed to IPAB stating that Respondent no. 1 has
failed to file the counter statement nor filed any extension
request to file CS, as per inspection of official file conducted
by Agents of Appellant.","January 27, 2020
18,"Hearing notice received indicating appointment of another
hearing","August 6, 2020
It is the case of Appellant that the adoption of the Respondent No. 1 of the impugned trade mark is dishonest, the same having been adopted in the",,
year 2000 and subsequent to the adoption of the Appellant of its trade mark XEON, which was widely publicized and is well known to the members of",,
the industry. Therefore, the use of Respondent No.1 is not bonafideand harps on the goodwill and reputation of the Appellant’s trade mark",,
XEON.,,
The case of Appellant is that it was a dishonest act of Respondent no.1 and that this is evident from that fact that Respondent no 2 has repeatedly,,
compared the marks INTEL XEON or INTEL INSIDE XEON with ZION whereas the comparison should have been made of marks (XEON v,,
ZION (represented in bold font) on the Register since the Appellant had obtained prior registration of the mark XEON in class 9 (registration no. is,,
865353) and the Respondent no. 1 had applied for the mark . Â Moreover, the words INFINITE TECHNOLOGIES in the impugned mark",,
have been disclaimed by Respondent no. 1.,,
It is an admitted fact that the parties trade in nearly identical cognate goods, the Appellant uses its trade mark XEON on Intel's high-end x86-",,
based CPU chips with 400 MHz microprocessor while the Respondent No.1 uses the impugned trade mark ZION on 128 MB SD RAM, the",,
consumer base being the same. There exists a likelihood of confusion on the part of the public, including the likelihood of association with the",,
Appellant's earlier, registered and well-known trademark. The impugned registration is in relation to goods that are identical to the Appellant's goods;",,
and therefore, it stands in violation of Sections 11(1), 11(2) and 11(3) of the Act.",,
The Appellant's mark XEON in respect of the aforementioned goods are well known and inextricably associated with the Appellant alone and,,
entitled to protection by law against identical and/or deceptively similar trade marks even in respect of dissimilar goods/services. The Respondent No.1,,
was fully aware of the reputation and goodwill attached to the Appellant's mark XEON when it dishonestly adopted the near identical impugned mark,,
ZION in respect of identical/similar goods and applied for registration thereof. The Registered Proprietor had not come with clean hands in seeking,,
registration of the impugned mark and as such, the application ought to be regarded as having been made in “bad faithâ€. The impugned registered",,
mark is liable to be cancelled under the provisions of Section 11(10) of the Act.,,
Respondent No. 1 has not filed any evidence to show usage of the mark. Statement of the annual sales turnover and the amount spent on,,
advertisement, publicity and other sales promotion expenses incurred by the Respondent No.1 for the impugned mark from 2000-2001 up until 2006-",,
07 is part of the evidence filed by Respondent No.1 before the Responent no.2 in the opposition proceedings and the same has been perused by us.,,
No evidence exists of usage of the impugned mark subsquent to 2007.,,
FINDINGS OF THIS BOARD,,
Now, the first question to be considered about the similarity of the two rival marks and it is to be decided upon about the deceptive similarity",,
between the two marks. It is the admitted position that the letters X and Z as the first letters of each mark are phonetically similar in pronounciation.,,
Further the second letter “I†being a vowel, in Respondent No.1 trade mark ZION would be slurred over and does not have a prominent and",,
distinguishing sound in pronunciation. Therefore the presence of the I in ZION instead of the E of XEON, is not a distinguishing factor in the",,
Respondent’s mark and does not distinguish phonetically over the Appellant’s mark. The last two letters O and N are the same in both marks.,,
As a whole the phonetic, structural and visual similarity between the impugned mark ZION and the Appellant’s trade mark XEON is striking and",,
the arguments of Respondent No.1 to distinguish the same does not hold water.The use of the mark XEON or any other trademark comprising the,,
word XEON as a part thereof, or any other mark deceptively/confusingly similar to the Appellant's mark XEON, in relation to the said goods and/or",,
related goods would connote and denote the Appellant as the exclusive source thereof.,,
The Respondent No.2 while holding the marks to be phonetically similar had held that they are dissimilar. The phonetic similarity in sound is one,,
factor in determining whether two trademarks are confusingly similar. It is to be noted that Phonetic similarity of Trademarks, it may spell the",,
Trademarks differently but phonetically its sounds the same; includes same commercial impression in the minds of the customers. If the two rival,,
trademarks sound the same, there is a possibility they could be found confusingly similar.",,
It is also the case of the Respondent No.2 that the marks are Phonetically similar if compared as “XEON†and “ZIONâ€; however the,,
Respondent No.2 while passing the impugned order stated that the mark “XEON†has not been used by the Appellant independently and has been,,
used the same in conjunction with the mark “INTEL†or “INTEL INSIDE†and thus on comparison of “INTEL XEON†or “INTEL,,
INSIDE XEON†with “ZIONINFINITE TECHNLOGIES†they are not similar. However the Respondent while holding so; has not considered,,
the Registration of the mark “XEON†word per se to the Appellant under Application No.865353 in class 9 and documents filed by the Appellant,,
to prove the usage of the mark. Even assuming that the Appellant has no usage of the mark independently in India; however the Appellant is prior,,
adopter and Registered proprietor of the mark in India and has Registration of the mark in various countries across the globe.,,
Further the Appellant is the prior adopter, user and registered proprietor of the well known mark XEON in India in respect of goods in Class 9,",,
which mark is in use not only in India but also in a number of other countries. The word XEON does not have any significance in relation to the,,
Appellant's goods on which it is applied and as such, it is a distinctive trademark for the said goods. The Appellant has been using its XEON",,
trademarksin India and in a number of other countries as well. The Appellant's said XEON trademarks, have acquired tremendous reputation and",,
goodwill. Further, through extensive and continuous use, including wide publicity and promotion of the Appellant's goods bearing the XEON",,
trademarks, have acquired factual distinctiveness and have become inextricably linked with the Appellantcompany. The Appellant's various XEON",,
trademarks are thus well-known trademarks within the ambit of Section 2(1)(zg) of the Trade Marks Act, 1999 in respect of the said goods.",,
We have examined the present case in hand with various judgments such as in the case of Lakme Ltd. vs. Subash Trading, 1996 (16) PTC 567",,
(Del) the Delhi High Court held the Defendant’s mark LIKE-ME is visually and phonetically similar to the Plaintiff’s mark LAKME. It was,,
also held that there is every possibility of deception and confusion being caused in the minds of the prospective buyers of the Plaintiff’s products.,,
The Court granted injunction in favour of the Plaintiff and restrained the Defendant from using the mark “LIKE-MEâ€. The Delhi High Court in,,
the case of Glaxo Group Ltd. &Anr. vs S.D. Garg&Ors. on 12 May, 2015was of the view that phonetically on comparison of the sound, the mark",,
GENTAC was deceptively similar to the brands ZINETAC and ZANTAC. Further in the case of Encore Electronics Ltd. vs. Anchor Electronics and,,
Electricals Pvt. Ltd. 2007 935 PTC 714 [Bom] the Division Bench of Bombay High Court dealt with phonetically similarity between the trademarks,,
ENCORE and ANCHOR. The Court restrained use of the ENCORE mark. The court viewed that phonetic structure of marks indicate how the rival,,
marks ring in the ears and therefore phonetic similarity constitutes an important index in evaluating whether a mark bears a deceptive or a misleading,,
similarity to another.,,
The Gujarat High Court in Vikram Stores AndAnr. vs S.N. Perfumery Works And Anr. on 30 November, 2007AIR 2008 Guj 65 held that the",,
Mark'RANGILI'is deceptively similar to registered TrademarkRANGOLI. A man of imperfect recollection and of average intelligence will be,,
deceived by mark used by the defendants. The Calcutta High Court in the case of BanwaridasPugaliavs Colgate Palmolive Co. And Ors. on 8 June,",,
1978, AIR 1979 Cal 133 held that the marks FORMIS is likely to be confused as CHARMIS on the basis that the fact that both the words contain",,
four common letters ‘RMIS’ while holding so the Calcutta High Court relied case of Re: Pianotist Co.'s Application, (1906) 23 RFC 774 where",,
Parker, J, observed as follows at: ""You must take the two words. You must judge them, both by their look and by their sound. You must consider the",,
goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must",,
consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trademarks is used in a normal way,,
as a Trademark for the goods of the respective owners of the marks.""",,
The Apex Court in Ruston and Hornby Ltd. vs. Zamindara Engineering Co. AIR 1970 SC 1649 held the marks RUSTON and RUSTAM INDIA,,
were held to be deceptively similar. It was held that the use of suffix INDIA to the word RUSTAM would not obviate confusion with the trademark,,
RUSTON. Applying the aforesaid judicial pronouncements to the present case, it is clear that addition of the words INFINITE TECHNLOGIES to",,
ZION word will not obviate any confusion between the rival marks. Clearly, the adoption of the mark ZION INFINITE TECHNLOGIES is intended",,
to cause confusion of XEON mark of the Appellant.,,
In the case of K.R. Chinna Krishna Chettiar versus Sri Ambal& Co. AIR 1970 SC 146 wherein the rival trademarks of the parties were Ambal,,
and Andal, the Supreme Court of India held that there is a striking similarity and affinity of sounds between the two trademarks and in spite of there",,
being no visual resemblance between the two marks, the ocular comparison is not always the decisive test. The resemblance between the two marks",,
must be considered with reference to the ear as well as the eye.,,
It is pertinent to go through the other decisions of the Apex court inAmritdhara Pharmacy v. SatyaDeo Gupta reported in AIR 1963 SC 449, Parle",,
Products (P) Ltd. v. J.P. & Co. reported in AIR 1972 SC 1359 and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., reported in 2001 (1)",,
CTMR 288 (SC). In Amritdhara's case, the Supreme court was dealing with the words Amritdhara and Lakshmandhara and held that the words had",,
overall structural and phonetic similarity. It was further held by the Supreme court in the said case that ""the trade mark is the whole thing-the whole",,
word has to be considered"". In Parle Products (P) Ltd's case the Supreme court held that ""In order to come to the conclusion whether one mark is",,
deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if",,
there are any differences in the design."" In Cadila Health Care Ltd., v. Cadila Pharmaceuticals Ltd., reported in 2001 (1) CTMR 288 (SC), the",,
Supreme court, relied upon its earlier decision in Amritdhara's case and held that ""It is also important that the marks must be compared as a wholeâ€.",,
It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the,,
other case there is no sufficient similarity to cause confusion. But in all the above cases, phonetic similarity alone was not taken to be the sole deciding",,
factor. On the other hand, the Supreme Court emphasized the need to apply the test of ""overall structural and phonetic similarity"" in Amridhara's case",,
and ""visual and phonetic tests"" in Cadila's case. Similarly, the Supreme Court applied the test of ""broad and essential features"" in Parle Products case.",,
However the present case in hand the suffix “INFINITE TECHNLOGIES†has been issued a disclaimer by the Respondent No.2 and hence,,
what needs to be compared is the only mark “ZION†with the Registered mark of Appellant “XEON†and applying the tests propounded by,,
the Apex Court it can be safely concluded that the mark “ZION†is phonetically similar to the mark “XEONâ€.The subsistence of the,,
impugned registered mark ZION in the Register is contrary to the Appellant's business interests as the impugned mark ZION is,,
deceptively/confusingly similar to the Appellant's well known mark ZION and the goods thereunder are identical/similar to those of the Appellant. The,,
adoption, use and registration of the Appellant's mark XEON are prior to that of the Registered Proprietor's mark ZION, which is near-identical and",,
confusingly/deceptively similar to the Appellant's mark XEON and has been registered for identical/similar goods as those of the Appellant under the,,
mark XEON. Therefore, the Registered Proprietor could not, and even now, the Registered Proprietor cannot claim proprietorship to the impugned",,
mark under Section 18 of the Act and therefore, the impugned registration is contrary to the provision of Section 18 of the Act.",,
The second question before us is the question of usage of the impugned trade mark. Under Section 47(1)(a) of the Trade Marks Act, a registered",,
trade mark has to be taken off the register if such trade mark was registered without any bona fide intention to use the mark in relation to the goods or,,
services. Time and again, on the issue of non-user of the mark, the courts have held that a genuine and real intention to use a mark has to manifest.",,
This was dealt by the Supreme Court in Kabushiki Kaisha Toshiba Versus Tosiba Appliances Company and others reported in (2009)10SCC-766,,
where the Hon’ble Supreme Court has observed as follows: “46. The intention to use a trade mark sought to be registered must be genuine and,,
real. When a trade mark is registered, it confers a valuable right. It seeks to prevent trafficking in trade marks. It seeks to distinguish the goods made",,
by one person from those made by another. The person, therefore, who does not have any bona fide intention to use the trade mark, is not expected to",,
get his 45 | P a g e product registered so as to prevent any other person from using the same. In that way trafficking in trade mark is sought to be,,
restrictedâ€.,,
The burden of proof to establish the user during relevant period is always upon the registered proprietor. In Imperial Group Limited V/s. Philips,,
Morris Company Limited, reported in 1982 FSR72(CA) where the Court of Appeal held the following: “According to the judgments given in this",,
court in that case a bona fide use should be “ordinary and genuine†(per Lord Evershed M.E. at p. 36), “perfectly genuine,†“substantial in",,
amount,†“a real commercial use on a substantial scale†(per Jenkins L. J. at p. 41) and not “some fictitious or colourable use but a real or",,
genuine use†(per Morris L.J. at p. 42).The Respondent No.1 has not filed any evidence before us of usage, from what we have perused of their",,
usage from 2000 to 2007; their use of it was not substantial; it was not a real use in any commercial sense. From the material on record. it is apparent,,
that the Respondent No. 1 has not undertaken any use, much less bona fide use, of the impugned trade mark. there is no evidence of any substantial",,
use and advertisement of the impugned trade mark in this period from 2000 to 2007. there is also no evidence submitted of any use of the impugned,,
trademark subsequently. There is no material, advertisement or any other document which shows that the Impugned Trade Mark was actually used as",,
the case would be in the event of any bonafide use. In nutshell the position is that there is no cogent, evidence is available on record to prove that the",,
documents /evidence produced is in relation to the impugned trade mark.,,
On the contrary the adoption and usage of the mark as admitted by the Respondent No.1 is since July 2000 which much latter to the adoption and,,
usage of the mark by the Appellant and thus can conclude the adoption of the mark of the Respondent No.1 is not bondafide Adoption. The,,
Respondent No.1 has no plausible explanation for adopting the ZION word in the mark ZION INFINITE TECHNOLOGIES. Thus the very adoption,,
of the mark containing the phonetically similar word ZION is dishonest.,,
Further it is it is judicially settled principle that no amount of use can render adoption of deceptively/ phonetically similar mark to be legitimate. In,,
the case of Laxmikant Patel vs. Chetan Bhai Shah AIR 2002 SC 275, the Supreme Court observed as under: ‘A person may sell his goods or",,
deliver his services such as in the case of a profession under a trading name or style. With the lapse of time such business or services associated with,,
a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in,,
the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit anyone to,,
carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are,,
his or associated therewith. It does not matter whether the latter person does so fraudulently or otherwise’. Even if the mark is honestly adopted,,
by the Respondent No.1 is not allowed as per this judgment.,,
It was held by Courts in various judgments such as in Jolen Inc. vs. Doctor & Co. 2002 (25) PTC 29 (Del) the Delhi High Court held that the,,
advertisements and sales figures of the defendant are of no relevance if the adoption of trade mark is subsequent, tainted and dishonest. In such a",,
case even long user, reasonable reputation and goodwill of the trade mark cannot vest the right in the defendant to protect it. In Aktibolaget SKF vs.",,
Rajesh Engineering Corp. 1996 PTC 160 DEL it was held that if adoption of the trade mark is dishonest â€" the use of trade mark for a long period is,,
of no consequence and in Tube Investments of India Ltd. vs. Tata Engineering and Locomotive Company Ltd. 2001 (21) PTC 562 (Reg) (Mad)., the",,
court held that where the marks are deceptively similar, the adoption is considered to be dishonest and an application for registration of the same is",,
liable to be dismissed. In this case, even though the goods were different, it was held that use of the impugned label mark would lead to confusion and",,
deception.,,
The Respondent No.1 has failed to prove its alleged bona fide adoption and use of the mark ZION INFINITE TECHNOLIGIES on the other,,
hand, the Appellant filed sufficient documentary evidence to prove its prior adoption and use of the XEON trade mark/ name internationally as well as",,
in India. Further it is a matter of record that the Appellant is the prior registered proprietor of XEON mark worldwide and in India.,,
The Respondent No.1 has no plausible reason and/ or basis of adoption of the mark “ZION†Phonetically similar/deceptively similar to that of,,
the Appellant XEON mark and allowing the same would severely prejudice the essence of Trademark law and would likely to mislead consumers,,
believing products of Respondent No.1 emanating from that of the Appellant. In order to fulfill distinguishing function of Trademarks for consumers,,
who wish to make their choice between different goods of the same kind on the market, phonetically similar/deceptively similar marks need to be",,
discouraged. As otherwise competitors could use identical signs for the same or similar goods or signs so similar that the consumer would be confused,,
as to the origin of the goods.,,
The Respondent No.2 ought to have cited the Appellant Trademark as conflicting in the Examination Report. It is a common pitfall to only using,,
the exact, intended spelling of the mark while examination of Trademark Applications. It is very important to conduct search for phonetically similar",,
trademarks as well by the Examiner (Respondent No.2).,,
In view of the above, the present appeal is allowed. The Order dated February 24, 2016 passed by Respondent No. 2 is set aside. Trade Mark",,
No.1037034 for the mark “ZION INFINITE TECHNOLIGIES†in Class 9 is removed from the Register of Trade Marks. The Respondent No-2,,
is directed to delete the entry of the said mark forthwith. Copy of order be sent to the parties as well as Respondent No.-2. Consequently all,,
miscellaneous petitions are also closed.,,
There shall be no orders as to the Costs.,,