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Judgment
V. Ravi, Technical Member
The appellant herein are seeking the quashing/setting aside of the order and decision of the Deputy Registrar of Trade Marks Kolkata dated
26.2.2007. The respondents herein had applied for the registration of a trade mark SHALIMAR in class 23 under in 647880 in respect of Knitting
wool (Cashmilon). This was accepted and published in the Trade Marks Journal and opposed by the appellant herein. The Deputy Registrar dismissed
the opposition and directed the registration of the impugned mark. The case of the appellant is mentioned below:- The appellant is a leading and
reputed company in India engaged in the business of manufacturing and marketing quality edible oil, toiletry, coconut oil, cosmetic products, spices of
various kinds and dairy products. The appellant adopted the trade mark 'SHALIMAR' some time in 1941 from their initial trading style and have been
using the said trade mark continuously since then. They have expended large sum of money in promoting and popularizing the trade mark Shalimar
which has now acquired secondary meaning. They have also issued trade mark and Copyright Caution Notice from time to time in leading
newspapers. Therefore, this trade mark of the appellant has become a household name. The mark has also acquired common law rights and in fact
the appellant/opponent lodged more than 60 oppositions against the registration of the Shalimar trade mark by various third parties.
In May, 2004 the appellant came to know that the respondent had applied for the registration of an identical trade mark Shalimar which was
published in the TM journal dated 14th November 2003 (MEGA-V). The respondent claimed the use of Shalimar mark since January, 1985 in respect
of knitting wools. A second application for a composite trade Mark Shalimar was also filed by the respondent under No. 846761 claiming user since
January, 1985.
Both the applications were opposed by the appellant herein. The impugned mark under application No. 647880 was ordered to proceed to
registration subject to restriction in area of sale confined to Eastern region of the country and is the matter of instant appeal. The second application
under No. 846761 between the same parties is still pending adjudication before the Registrar.
The appellant submits that the user claimed in the impugned application is palpably false and fictitious and a fraud has been committed on the
Registrar by making false claim of use of the impugned mark. The respondent had failed to establish alleged use of the impugned mark through first
hand documentary evidence. The appellant submits that the impugned mark will cause inevitable confusion and deception amongst the public and will
also dilute the distinctive character and repute of the appellant's trade mark.
Further, the purported sales turnover under the trade mark Shalimar by the respondent is completely bogus and the evidence in support thereof is
concocted and thoroughly unreliable. The sale documents do not reveal the name and address of the purchaser; the list of dealers and distributors with
their names and addresses and does not mention the sales tax and Value Added Tax particulars as authenticated proof. Most of the purported
advertisement do not correlate with the business of the respondent and are thoroughly irrelevant.
The Deputy Registrar had wrongly disallowed the appellant's objections under Sections 9 and 11 of the Act and fell in grave error when he
observed that there is not a single instance of confusion or deception. He ignored the basic legal principle that it is the likelihood of confusion that has
to be addressed. He also failed to appreciate the long standing use of the appellant's trade mark over the last 66 years and misdirected himself by
allowing the impugned mark to proceed to registration on the ground that it is a common word. It is apparent from the language of the order and
judgment of the Deputy Registrar that he had misdirected himself and failed to apply his mind to the facts of the case. He has further failed to
appreciate the ratio of legal principle and the rights of the respective parties. It is well settled that in an application for registration the onus is always
on the applicant to make out a case for registration. The Deputy Registrar had placed blind trust on the unsubstantiated documents tendered by the
respondent having no evidentiary value. His conclusion is completely misconceived and against the principle laid down by Superior Courts.
The impugned mark Shalimar is a distinctive indicium of the appellants business and is a well known trade mark and the subject impugned mark
ought to have been refused outright at the threshold. The respondent could not offer any logical explanation for the use of the name Shalimar
Company before the Registrar. The Deputy Registrar has also failed to take into account the associated goodwill and reputation of the appellant's
trade mark Shalimar resulting in a complete failure of justice leading to grave and serious prejudice to the appellant. It is therefore prayed that the
Board may set aside the order of the Deputy Registrar of Trade Mark dated 26.2.2007 and refuse the registration of the impugned trade mark.
THE CASE OF THE RESPONDENTS IS AS FOLLOWS:-
i) The respondents are carrying on an old and established business as manufactures and merchants of knitting wool (Cashmilon). They adopted the
trade mark Shalimar in an honest and bona fide manner and have become the owner and proprietors thereof by virtue of longstanding use of the mark
since 1985. The impugned trade mark has gained enviable and wide spread reputation and goodwill identified with knitting wools of the respondent.
The impugned mark has been used over the last 22 years and the sales turnover under the said mark as of 2003-04 was in excess of Rs. 22,00,000/-.
In fact, the word ""Shalimar"" is neither a coined or invented word and if anything only has a geographical connotation.
ii) The respondent submits that the appellants herein are not at all dealing in any of the goods in respect of which the respondents are trading, even
though they have registered their trade mark in many classes. The competing goods are totally different. On the basis of the evidence on record and
submissions of the parties on the point of law the Deputy Registrar had observed as follows:
I have considered the submissions of both parties and gone through the records. IT IS CORRECT THAT THE RIVAL GOODS CAN NEVER BE
HELD TO BE THE GOODS OF SAME DESCRIPTION. It is also correct that the opponents are mainly dealing in consumer goods being household
items specially food products and toiletries whereas the impugned mark is only for specific goods 'Knitted wool' included in Class 23. I am also
conscious of the submissions of Mr. Mukherjee that there are many marks on the Register containing the word 'SHALIMAR' owned by various
proprietors for various specifications of goods. I have also gone through the cases cited by Mr. Mukherjee and is of the view that each case has its
own peculiar facts and circumstances and the relevant marks involved therein. In the Sony case the registration was allowed for the word 'SONY' in
Class 3 for the goods ""nail polish"" inspite of the registration of the word 'SONY' in favour of Japanese Company in Class 9 on the ground that there is
no common field of activity in the course of trade between the two items and the class of customers who would purchase the two items are distinct
and different. In this case, the applicant's long period of user was also considered as one of the factor in entitling him the impugned registration.
Similarly the word 'HERO' was allowed registration in spite of the word 'HERO' already registered by M/s. Hero Cycles Limited and it was held that
the word 'HERO' is being used by various proprietors in respect of various goods. Thus, the mark is not such an uncommon word or an invented word,
that the adoption of which might be understood to be the deliberate attempt by an applicant to copy the opponent's mark. No dishonesty can be
attributed to an applicant in adoption of such a trade mark namely 'HERO' in respect of different goods. The class of customers of both the sets of
goods namely the sewing machines and the cycle and cycle parts are different customers.'
I have given my thoughtful consideration to the overall facts and circumstances of the case and is of the view that since the applicant is using the
impugned mark right from the year 1985 and there has not been a single instance of confusion or deception pointed out by the opponents and keeping
in view of the fact that the rival goods are wide apart and have no connection whatsoever during the course of trade as their class of customers,
channels of trade are altogether different and hence on consideration of these overall facts of this case, this Tribunal is of the view that the Applicant
is entitled to the registration of the impugned mark for the goods ""knitting wool"" as sought for by him. Mere allegations of dishonesty in adopting the
impugned mark by the applicant as raised by the opponents cannot help them in sustaining their objection under Section 18(1). Moreover, the word
SHALIMAR"" is a common word which can occur to any one and in fact there are many marks on the register containing the word ""SHALIMAR
as already given above. Similarly, I have no hesitation to deny the exercise of my discretion adverse to the Applicant as sought for by the Opponents.
However, keeping in view of the use of the impugned mark by the applicant, the impugned Application No. 647080 in Class 23 shall proceed further
for the goods reading as knitting wool (cashmilon) for sale in the Eastern zone of the country and the Applicant is directed to file the necessary
request on Form TM within 15 days from the date hereof whereafter only the applications shall proceed further after the necessary notification in the
Trade Marks Journal of the amended goods and consequently therefore, the Opposition No. KOL-176431 is disallowed. Parties are left to bear their
own costs.
iii) The respondent further denies and dispute each and every allegations raised in the appeal. The Deputy Registrar's order is based on admissible
documentary evidence filed before him for the purpose of adjudication. He has considered all the material facts and in the light of the relevant
provisions of law disallowed the opposition of the appellant. The respondent also deny and dispute that Shalimar is a well known mark and has
acquired a secondary meaning and such claims are figment of imagination. The alleged Caution Notice published has no bearing as the adoption and
use of the impugned mark relates to totally different goods with different consumer base and separate trade channel. The impugned mark Shalimar
cannot be exclusively associated with the opponents alone. The opponents have made unfounded and unsubstantiated allegations which are totally
baseless concerning the use of the impugned mark stated to be false and fictitious. The allegations that the respondent have failed to prove the use of
the impugned mark before the Registrar is contrary to record. Therefore this is a fit case to dismiss the appeal and award the costs of the proceedings
to the respondent.
iv) The respondents have also filed an affidavit under Section 65(b) of the Indian Evidence Act. The enclosure to the affidavit includes trade mark
search report; downloaded judgments, journals containing trade mark details sourced from the Internet.
The matter was listed for hearing on 13th June, 2013. We have heard the detailed arguments of the respective counsel, gone through the pleadings
and the records.
The following authorities were relied on by the appellants.
i) 2009 (41) PTC (Cal) Sony Kabushiki Kaisha Vs. Mahaluxmi Textile Mills-
Held, to hold that the reputation of a trade mark shall remain restricted to those goods and services only in which its proprietor is directly engaged in,
would be ignoring the ground realities of today's business world-Consumers may wonder as to whether the proprietor of the trade mark has launched
a new product.
ii) AIR 1953 SC 357 National Sewing Thread Company Ltd., Chidambaram Vs. James Chadwick & Brothers Limited.- Held-The burden of proving
that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant. It is for him to satisfy the
Registrar that his trade mark does not fall within the prohibition of Section 8 and therefore it should be registered. Moreover in deciding whether a
particular trade mark is likely to deceive or cause confusion that duty is discharged by arriving at the result by merely comparing it with the trade mark
which is already registered and whose proprietor is offering opposition to the registration of the mark. The real question to decide in such cases is to
see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what
association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be
purchasing.
iii) AIR 1969 Bombay 24 Sundar Parmanand Lalwani & others Vs. Caltex (India) Limited. The appeal concerns a dispute over trade mark
CALTEX"" word per se.
Para 48. Now, before proceeding to consider the facts of this case, it is necessary to bear in mind that in proceedings for application of registration,
the onus of proving that the mark is not calculated to deceive or cause confusion lies on the applicant. That proposition is well established. For
example, see the judgment of Lord Watson in the above case in (1890) 7 RPC 311 and also the judgment in Edward Hack's case, in (1942) 58 RPC
91.
Para 49. In this case, the goods are totally different. There is no trade connection between them There is no connection in the course of trade nor any
common trade channels. There are factors against holding that there would be any danger of deception or confusion. But we must consider the
factors which tend to show that there is a likelihood of creating deception or confusion. The opponents have been using their mark on a very large
scale since 1937. Their sales in 1956 exceeded Rs. 30 crores. Their publicity is wide spread and large. In 1956 they spent over a million rupees on
advertisements. The goods in respect of which they use the trade mark ""Caltex"" are mainly petroleum, kerosene and lubricants like greases and oils
etc. The goods in respect of which the applicant seeks registration are mainly watches. The class of goods in respect of which the applicant seeks
registration is wider than watches and watches can be both costly and cheap. It cannot go without notice that the goods in respect of which the
applicant in fact used the mark before he applied for registration were very cheap watches. The goods of the opponents are used by persons all over
India, in cities and in villages, in different walks of life, rich or poor, literate or illiterate. The goods of the applicant are different in nature. But they are
watches. They can be cheap watches. The potential market for them is, therefore, similar to that of the existing market of the opponents, in the sense
that the goods of both the parties are not special goods. They are goods which would be purchased by the common man. Now, so far as the word
Caltex"" is concerned, it is common to the opponent's mark as also to the opponents' name. To mention the mark ""Caltex"" is also to mention the name
of the owner. The mark is unlike the Lion or the ""Stag"" mark where there would be no direct connection between the mark and the name of its owner.
The opponents are a large company known by many as having large resources, and therefore, capable of starting any new industry or trade. Because
of that reason, there is a greater probability of the public believing that any goods with the mark ""Caltex"" on them would be the goods of the
opponents.... The evidence of the other deponents as contained in their affidavits is similar. There is an additional factor to be taken into consideration.
The applicant has given no explanation why he selected the word ""Caltex"".
v) 2005 (31) PTC 231 (IPAB) S. Sunil Gupta Trading Vs. Assistant Registrar of Trade Marks & Another-If the mark applied for registration is
identical and similar to a well known and reputed mark, impugned mark not to be registered. Though goods belongs to different classes not having any
trade connection, but available across the same counter.
vi) 1999 PTC (19) DB) 570 Caterpillar Inc. 100 NE Vs. Jorange and another-Similarity of products-Necessity to prove-piracy of reputed brand name
for a different products-likelihood of confusion and deception-balance of convenience plaintiff's favoured-injunction granted.
vii) AIR 1955 Calcutta 654 E. Griffiths Hughes Ltd., Vs. Vick Chemical Company-It was held:-
Now it is well-settled that in the case of all applications for registration of trade marks, including opposed applications, the rights of the party or parties
are to be determined as at the date of application for registration.
viii) 2005 (31) PTC 330 (IPAB) Jain Electronics Vs. Combra Cables (P) Ltd., & Another-Unless the trade mark with description of goods or the
goods identified by the trade mark is mentioned in the bills or invoices, the relation between the two cannot be inferred or said to have been
established.
The following authorities were relied on by the respondents
i) 2011 (46) PTC 152 (Del) Kamadhenu Ispat Ltd., Vs. Kamdhenu Pickles & Spices Ind. Pvt., Ltd., & another- Para 21. This Court is of opinion that
the use of KAMADHENU as corporate name by the defendant, notwithstanding the plaintiff's registration of the word mark, cannot ipso facto confer
exclusivity. The plaintiffs should use it in relation to specific goods, such as pickles and condiments, etc., (by the defendants); then only would there be
any justification for granting relief. Trademark law, does not imply formalistic or ritualistic application of abstract principles; its existence and rationale
is to protect businesses built up to match certain standards. If a trader or manufacturer uses words that acquire some distinctiveness, he is
undoubtedly entitled to protection, at least in respect of similar marks in respect of the goods he deals in. However, merely because he acquires
registration (of the mark) he does not become its exclusive owner. KAMADHENU conjures up images of plenty and even affluence in the Hindu
tradition. The plaintiffs do not deal in goods, which are sold by the defendants or even allied goods nor are they shown as dealing in them.
ii) 2006 SCC 22 Mattel, Inc. Vs. 3894207 Canada Inc.
The applications judge observed that ""It cannot be automatically presumed that there will be confusion just because (Mattel's BARBIE) mark is
famous"" (para 40). The test was that of reasonable likelihood of confusion and the fame of a mark ""could not act as a marketing trump card such that
the other factors are thereby obliterated"" (Para 40). All of the relevant factors listed in Section 6(5) of the Trade Marks Act had to be evaluated, and
(o)ne of the key factors in this case is the striking difference between the wares"" para (17). He stated that ""....confusion is less likely when the wares
are significantly different, even when the mark is well known"" and that ""... when the wares are significantly different, this factor must be given
considerable weight"" (paras 17-18). In this case, he stated ""... the nature of the wares, as well as the nature of the business of both parties, could not
be more different"" (para 21) and ""there is noting about these restaurants that is suggestive of toys, dolls or childhood (para 20)....
The Statutory Test of ""Confusion"" - Trade-mark confusion is a term defined in Section 6(2) and arises if it is likely in all the surrounding circumstances
6 (5) that the prospective purchaser will be led to the mistaken inference.
... That the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or
not the wares or services are of the same general class
(Emphasis added)
This is not to say the nature of the wares or services is irrelevant. Section 6(5) specifically identifies ""the nature of the wares, services or business"" as
a relevant consideration. The point of the underlined words in Section 6(2) is simply to lay it down in clear terms that the general class of wares and
services, while relevant, it not controlling factor....
Within the ""all the surrounding circumstances"" test, Section 6(5) of the Act lists five factors to be considered when making a determination as to
whether or not a trade-mark is confusing. These are: ""(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they
have become known; (b) the length of time the trade-marks or trade-names have been in use; (c) the nature of the wares, services or business' (d) the
nature of the trade; and (e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by
them."" The list of circumstances is not exhaustive and different circumstances will be given different weight in a context-specific assessment. See
Gainers Inc. V. Marchildon (1996) 66 C.P.R. (3d) 308(F.C.T.D.) . In opposition proceedings, as stated, the onus is on the applicant (here the
respondent) to show on a balance of probabilities that there is no likelihood of confusion.
iii) 2010 (44) PTC 2009 (Del.) Skol Breweries Vs. Unisafe Technologies
In General Motors Corporation v. Yplon SA, (1999) All ER (EC) 865 ECJ held that in order to have a reputation a trade mark had to satisfy a
knowledge threshold"". This was described as follows:
The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned
by the products or services covered by that trade mark.
In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case, in particular the
marked share held by the trade mark, the intensity, geographical extent and duration' of its use, and the size of the investment made by the undertaking
in promoting it.
The need to establish ""linkage"" or mental association of the offending mark, with that of the Plaintiffs is vitally essential for securing relief in any claim
for dilution. This was emphasized as follows, by Professor McCarthy (McCarthy, J. Thomas McCarthy on Trademarks and Unfair Competition,
Volume IV, 4th Edition 1996 (loose-leaf updated December 2005, release 36): ...if a reasonable buyer is not at all likely to think of the senior user's
trade mark in his or own mind, even subtly or subliminally, then there can be no dilution. That is, how can there be any ""whittling away"" if the buyer,
upon seeing Defendant's mark, would never, even unconsciously, think of the Plaintiff's mark? So the dilution theory presumes some kind of mental
association in the reasonable buyer's mind between the two parties and the mark. (Footnote omitted: emphasis in original; - 24:70, at page 24-143.)?
On the one hand, well-known mark owners say that people should not reap what they have not sown, that bad faith should be punished, that people
who sidle up to their well-known marks are guilty of dishonest commercial practice. These vituperations lead nowhere. One might as well say; that the
well-known mark owner is reaping what it has not sown when it stops a trader in a geographic or market field remote from the owner's fields from
using the same or a similar mark uncompetitively. (D. Vaver, ""Unconventional and Well-known Trade-Marks"", [2005] Sing. J.L.S. 1, at page 16) 54
while ""fame"" is not a requirement of Section 22, a court required to determine the existence of goodwill capable of depreciation by a ""non-confusing
use (as here) will want to take the approach into consideration, as well as more general factors such as the degree of recognition of the mark within
the relevant universe of consumers, the volume of sales and the depth of market penetration of products associated with the claimant's mark, the
extent and duration of advertising and publicity accorded the claimant's mark, the geographic reach of the claimant's mark, its degree of inherent or
acquired distinctiveness, whether products associated with the claimant's mark are confined to a narrow or specialized channel of trade, or move in
multiple channels, and the extent to which the mark is identified with a particular quality.
Gist of appellants counsel arguments:
It was reiterated that 'SHALIMAR' is the corporate name, trading style, and house mark of the appellant as also its trade mark for the last 66 years
and the net synergistic effect of this is, it is associated solely and only with the appellant's goods. They hold registration in many classes. The
impugned registration is hit by Sections 9(1)(a), 9(2), 11(1)(a) and 18(1) of the Act. Our attention was invited to para 15 of the petition that shows
sales turnover under the brand SHALIMAR to the tune of Rs. 15 Crores in 1993-94. Proof of issuance of caution notice is at page 147 onward upto
page 171. Page 182 to 221 lists the various High Court rulings in appellant's favour.
The appellant criticized the bills of the respondent as of no significance as it was just rubber stamped. Also there is no basis for the Deputy Registrar
to infer 'SHALIMAR' is a common word. He has also not dealt with the Section 9(1) objection raised by them. Atrociously, the Deputy Registrar
shifted the onus on the opponent to prove confusion. He argued in detail the issues raised in the pleadings and concluded that the impugned mark
deserves to be refused.
Gist of respondent/applicants arguments:
The learned counsel Shri Majumdar argued that the appellant mainly have a standing in cooking oil business in particular coconut (edible oil) and
coconut hair oil. Even if we take a worst case scenario, the respondent mark can be treated as proposed to be used. In 1999, the appellant knew of
the respondents application. They have not been sued by the appellant till date. Reliance placed on various High Court decisions are based on the
repealed Trade and Merchandise Marks Act, 1958 and not relevant to these proceedings. The impugned mark 'SHALIMAR' was bona fidely adopted
without any reference to the appellant's mark or its use for other unrelated goods. There are many other 'SHALIMAR' mark in use in the market and
also in the Register. He further argued the appellant's trade mark cannot be put in the pedestal of CALTEX trade mark. As the competing goods are
completely distinct and different there is not the remotest possibility of likelihood of confusion. There is absolutely no infirmity in the finding of the
Deputy Registrar. This appeal deserves to be dismissed with exemplary costs.
Rebuttal arguments
The appellants stated that they have never claimed 'SHALIMAR' was an invented word. They have also initiated legal action against 'SHALIMAR
RESTAURANT. The appellants have filed copies of evidence of use for the last 70 years. They are also engaged in the manufacture and sale of
medicated (hair oil) and not confined to coconut oil only as alleged. Their mark in use has been proved at least since 1960. Why the respondent
adopted the impugned mark? There is no reasonable explanation. The onus is on the applicant/respondent to show there is no likelihood of confusion.
The appellant once again asserted that 'SHALIMAR' is their well known mark and the impugned mark ought to be refused.
We first take up the issue of objection under Section 9(1) and 9(2) of the Act. The legislative approach of this Section is if a particular word (used
as a trade mark) becomes clearly associated in the public minds with the goods of a particular trader, then it could not be legitimately be used as a
trade mark by a rival competitor. Here, the appellant and respondent are in totally different market and are not in competition. The legislative intent of
Section 9 couched in negative language is to accord proper statutory protection and not exorbitant monopoly. The impugned mark 'SHALIMAR' is
inherently distinctive. The Registrar cannot be expected to refuse registration of a mark merely on the apprehension it may possibly fetter the freedom
of action of other bona fide traders. To pass the test of Section 9, the Registrar has to assess the marks ability to differentiate the commercial origin of
the goods to which it relates in the minds of the consumer as on the date of registration. The impugned mark by its very nature and appearance is
distinctive. Since the competing goods edible oil and knitting wool relate to two different markets there is no possibility of public confusion under
Section 9(2) of the Act. We find no merit for objection raised under Section 9.
Objection has also been raised under Section 11(1) of the Act. Here too the objection is frivolous. The natures of competing goods are different.
The appellants are not in the knitting trade. The purpose of competing goods is different. One is a consumable item and other is used in textile trade.
The composition of the rival goods is very dissimilar. There is no common trade channel. From a business sense the appellants opposition is based on
irrational fear. The Deputy Registrar has taken the further safeguard by limiting the sale of the respondents goods to the Eastern Regions of the
country. Given that in the case on hand we are dealing with non-competing goods, there is no legal basis to invoke an objection under Section 11(1)
and it accordingly fails.
Everything points to the bona fide and honest adoption and use of the impugned mark and we therefore hold the applicant/respondent is the
legitimate owner and lawful proprietor of the impugned mark under Section 18(1) of the Act There is no infirmity in the findings of the Deputy
Registrar. In the result, OA/25/2007/TM/KOL is dismissed. There is no order as to costs.