Old World Industries, Inc vs Fleetguard Inc. And Ors

Prabha Sridevan, J

The Appellant is aggrieved by the order dated 27.04.2009 by which the Opposition No. CAL-225509 filed by the Respondent herein to the registration of trade mark "FLEET CHARGE" in class 1 under No. 1324578 was rejected in view of Section 9 (2) 11 (1) (a), 11 (1) (b), 11 (2) (a), 11

(2) (b) and 18 (1).

The Appellant is a company registered in the State of Illinois, U.S.A. It applied for registration of the trade mark "FLEET CHARGE" in respect of antifreeze and coolant for engines in class 1. The date of application was 08.12.2004. It was proposed to be used on that date. An objection was raised by the registrar that the mark was deceptively similar to the registered marks and the Appellant explained how their mark was distinguishable.

Therefore, it was ordered to be advertised before acceptance. It was advertised on 15.10.2005 in Trade Marks Journal No. 1335 and made available to the public on 23.03.2006. On 19.05.2006, Respondent filed a notice of opposition. Their mark was "FLEETGUARD". They were established in 1958 and they were the registered proprietors of the mark "FLEETGUARD" under trade mark No. 341371 in respect of filters in class 7 and had been used in India since November, 1975. According to them, the impugned trade mark could result in deception and confusion and therefore, it should not be registered. The counter-statement was filed to this. The matter was heard by the Registrar who held that the mark "FLEET CHARGE" as a whole is deceptively similar to the registered trade mark "FLEETGUARD". The Registrar was satisfied that the Respondent's goods have been sold extensively in India. As regards the stands taken by the Appellant that the two marks are co-existing in other countries, the same was rejected on the ground that the two marks are so identical that the public was likely to wonder whether the product marketed under the trade mark ""FLEETGUARD was the product of the Respondents and that the adoption and user of the trade mark was tainted with dishonesty. As regards the evidence of user, he held that a majority of the invoices did not contain any reference to the impugned trade mark.

3 . The matter came up for hearing at the Circuit Bench Sitting at Kolkata on 23.06.2011.

4 . Learned Counsel Shri L. Bhaswati Singh and Ms. Sanchari Saha appeared for the Appellant where as the Respondent No. 1 was represented by Learned Counsel Shri Hariharan Subramaniam.

5 . The Learned Counsel appearing for the Appellant submitted that they had been marketing coolant under various brands including FLEET CHARGE, FINAL CHARGE and PEAK and that the impugned mark was honestly adopted by them. She referred to the list of world wide registration and that the trade mark had acquired factual distinctiveness and that the goods have been in the market since 1991. Rival marks had been co-existing in various countries. The Learned Counsel submitted that "FLEET" is a common word and if the distinctive word is considered, it is impossible to hold that Charge and Guard can be confused. It cannot be said that there was intention to deceive. Two products belong to the different classes and there could be no confusion. The Learned Counsel relied on the following decisions. 1994 IPLR 31 Reckitt & Coleman of India Ltd., v. Medicross Pharmaceuticals Pvt. Ltd., where the marks were MEDISPRIN and DISPRIN; MANU/MH/0687/2001 : 2002 (25 ) PTC 74 (Bom) Burroughs Wellcome (I) Ltd. v. American Home Products and Anr., where the marks were ACTIFED and ACTICEPH;2004 (29) PTC 488 (IPAB) where the marks were DERMAGEN and DERMASOFT;2010 (42) PTC 806 (Del) where the marks were IMPERIAL BLUE and IMPERIAL GOLD and1984 PTC 81 where the marks were CIPLAMINA and COMPLAMINA.

The Learned Counsel appearing for the Respondent submitted that the Registrar's order was well conceived and dealt with the provisions of law correctly. He submitted that when cars are serviced the filters, oil and coolants are all changed and, therefore, it was no argument to say FLEET CHARGE is coolant while FLEETGUAR relates to filters and that the two fall in different classes. He submitted that it is the same trade channel through which the two products are sold. He submitted that while FLEETGUARD was in use from 1963, there is no use of FLEET CHARGE in

India. H submitted that the mark FLEET CHARGE was both visually, phonetically associated with FLEETGUARD. To the submission that FLEETGUARD was a single word whil FLEET CHARGE is printed as two words, the Learned Counsel submitted that this factor alone will not reduce the danger of deception and confusion. The Learned Counsel submitted that there is no rebuttal of the averment relating to non-user. To the submission that FLEET was a common English word to which the Respondent cannot have a monopolistic right and the fact that there are a number of trade marks comprising the word FLEET and that they relate totally to different goods and the reason for objecting to the present trade mark has been raised in opposition and dealt with by the authorities correctly. The Learned Counsel also submitted that a search would show that many of the trade marks containing the word FLEET like FLEET TRAILER, FLEET CARRIER, FLEET STREET, FLEET VALUE have been cance and the marks that are on the Register are that of the Appellant. The Learned Counsel also submitted that the list of countries where FLEETGUARD and FLEET CHARGE co exist and the invoices filed to support it, would show that there has been no substantial sale even with regard to other countries where FLEET CHARGE is concerned. The Learned Counsel relied on: AIR 1963 SC 449 Amritdhara Pharmacy v. Satya Deo Gupta; AIR 1969 CAL 4 Aktiebolaget Jonkoping Vulcan v. V.S.V. Palanichamy Nadar and others. Though there are many decisions cited both by the counsel for the Respondent and the Appellant, ultimately the decision will depend on the facts of the case. We will have to look at the mark as a whole with regard to surrounding circumstances like sound, looks etc. The use of a registered trade mark outside India is not use within the meaning of the Act. It is not necessary to enquire whether there is a likelihood of deception or confusion if the rival marks are deceptively similar. When two marks are placed side by side, they may exhibit many differences but what is important is the main impression left on the mind. If the goods are such that they have some similarity the purchasing public will think that they come from the same source. The law also requires that the Court should look at the nature of the goods and the customer who is likely to buy those goods. The consideration that weighs with the Court in pharmaceutical products is slightly different.

The Hon'ble Bombay High Court as regards MEDISPRIN and DISPRIN has held that the prefix 'ME' was not sufficient t eliminate confusion. In the decision of this Board in DERMAGEN and DERMASOFT was held 'Soft' and 'Gen' were not visually same or identical. No proprietorship can be claimed with regard to common words or descriptive words, descriptive mark can be granted protection if it has assumed a secondary meaning.

7 . In the present case, there is no rebuttal regarding non-user. Therefore, till date the Appellant's products are not in use in India. On the other hand, the Respondent's products have been in use since 1963. The Appellant has been marketing their products under the name FLEET CHARGE. There is no explanation for adopting 'FLEE CHARGE' when they wanted to enter the Indian market. Therefore, the charge made by the Respondent that there was dishonesty in the adoption cannot be brushed aside. We are also unable to turn down the submissions made by the Learned Counsel for Respondent that since both the goods are marketed through the same trade channel and are likely to be used in service stations when all the cars are serviced considering the nature of customers who will be using the products are the servicing station or the servicing station owner we are of the opinion that the customers are very likely to think that FLEET CHARGE and FLEETGUARD come fro the same stable. Where DERMAGEN and DERMASOFT are concerned, 'Gen' and 'Sof are entirely different and therefore it was held as not likely to cause confusion. But FLEET CHARGE and FLEETGUARD are not like that. There is just a minor dissimilarit in the two words and when pronounced as a whole, there is every likelihood of confusion. The impugned order has dealt each of these aspects cogently and clearly. We do not think it warrants any interference in appeal. The appeal is, therefore, dismissed. No order as to costs.

M.P. No. 200/2009 filed by the Appellant for stay stands closed. © Manupatra Information Solutions Pvt. Ltd.