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Judgment
S. Usha, Technical Member
This appeal arises out of the order dated 03.11.2003 passed by the Joint Registrar of Trade Marks, Mumbai in opposition No. BOM-56511 against
application No. 541590 filed for registration of trade mark 'FEMINA' in class 3 in respect of ""Bindis"" under the provisions of the Trade Marks Act,
1999 (hereinafter referred to as the Act).
The first respondent herein filed an application for registration of the trade mark 'FEMINA' in class 3 in respect of ""Bindis"" under application No.
541590 claiming user since the year 1983. The said application was advertised before acceptance under proviso to Sub-section (1) of Section 20 of the
Act. The appellants herein had filed their notice of opposition to the said application. The appellants had opposed the registration of the application on
the grounds that;
a) they were prior users and registered proprietors of the trade mark 'FEMINA' in respect of hair oil for sale in the State of Maharashtra as early as
1975 under No. 306663B in class 3 in the name of the partnership concern i.e. Paras Products
b) the trade mark 'FEMINA' was also registered under No. 508531 as of 14.01.1994 in the name of an individual, a partner in the partnership firm
Paras Products in class 3;
c) they were carrying on business of hair oil and attars under various trade marks like 'FEMINA', 'APNA' etc.;
d) their mark is a well known mark by virtue of continuous and exclusive use;
e) by the registration of the first respondent's mark, there is every possibility of confusion and deception being caused as the marks are identical;
f) the first respondent are aware of the appellant's use of the trade mark and as such the first respondent's adoption is not honest and in such a case, it
is not eligible for concurrent registration under the provisions of the Act;
g) the first respondent's trade mark is, therefore, prohibited from registration under Sections 11(a), 11(b), 11(e), 12(1) and 18(1) of the Act.
The first respondent filed their counter statement on Form TM-6 denying the various allegations made in the notice of opposition. The first
respondent had also stated that they had been using the said trade mark continuously and exclusively since 1983. The affidavit of evidence were filed
by both the sides and on completion of the formal procedures, the matter was set down for hearing before the Joint Registrar of Trade Marks.
The Joint Registrar had passed an order dismissing the opposition No. BOM-56511 and allowing the application No. 541590 to proceed to
registration with a condition to confine the sale in the State of Maharashtra only. The following were the grounds for allowing the application:
a) the objection under Section 18(1) of the Act was rejected on the ground that the documents relied on by the appellant / opponent, namely, the two
registration certificates bearing No. 508531 and 306663B were in the names of two persons i.e., one in the name of an individual and the other in the
name of a partnership. So the proprietary right by use cannot be considered as no explanation was given as to how the appellants/opponent have
acquired the rights in the mark and so do not qualify to be the proprietors of the trade mark.
b) The objection under Section 12(1) of the Act was upheld for the reason that the two conditions under the provisions of Section 12(1) were satisfied,
namely, that that the marks and goods were similar.
c) The objection under Section 11(a) of the Act was also sustained as the appellants/opponents have proved prior user of the trade mark for hair oil
and any subsequent use by the applicant / first respondent was likely to create confusion or deception. Therefore, the objection under Section 11(a) of
the Act also was sustained.
d) The first respondent has proved his user since the year 1983 with corroborative evidence and as both the appellants and the first respondent have
been in the market for more than 14 years and no instance of confusion has been placed on record, the applicants / first respondent are entitled for
registration under Section 12(3) of the Act.
The appellants / opponents being aggrieved by the said order are on appeal.
The matter was taken up for hearing in the Circuit Bench at Mumbai on 19.09.2007. We have heard Shri W.S. Kane learned Counsel for the
appellants and Shri Rahul Chitnis, learned Counsel for the first respondent.
Learned Counsel for the appellant mainly contended that the application for registration of the impugned trade mark 'FEMINA' has been in the
name of a sole proprietor whereas the earlier applications which were withdrawn by the first respondent / applicant has been filed in the name of a
partnership firm. The appellant submitted that they are the registered proprietors of the trade mark 'FEMINA' under application Nos. 30666B in class
3 in respect of hair oil and 508531 in class 3 in respect of perfumes, cosmetics, etc. The appellants also contended that they have produced copies of
the invoices to prove their user since 1969. Learned Counsel for the appellant also contended that the first respondent have not proved how they
acquired the right to the trade mark 'FEMINA' from their predecessors. He also brought to our notice the findings of the Joint Registrar that there are
as many as 25 Femina trade marks registered or pending but the order does not contain any explanation as to date of user or any other particulars like
in respect of what products, etc.
The learned Counsel for the appellant further submitted that the order was challenged only under Section 12(3) of the Act i.e. on the principles of
honest concurrent user. The learned Counsel for the appellant submitted that the first respondent had not proved that they had been using the trade
mark since 1983. The appellant's mark has acquired reputation and goodwill and has thus become a well known mark.
Learned Counsel for the appellant also contended that the first respondent had not proved their user of the trade mark 'FEMINA' since the year
1983. Learned Counsel also pointed out the sales figures of their firm to show that their business had rapidly increased its sales. He also brought to our
notice the pleadings averred in the affidavit of evidence in support of opposition that their trade mark was already registered in class 3. The counsel
for appellant forcefully argued that the first respondent's adoption was not honest. He further submitted that the first respondent had not made a
search in the Trade Marks Registry before adopting the trade mark. If a search had been made, the appellant's registration would have been reflected
in the Register. The counsel referred to the letter dated 1.8.1978 at page 68 of the typed set of documents to say that they had been carrying on the
business of manufacturing Bindis under the said trade mark since the year 1978 (where no trade mark was mentioned) and also to the letter dated
20.03.1979 from Mauritius regarding the price of the products where again no trade mark was given. He referred to invoices where the trade mark
'FEMINA' was mentioned as well as the central sales tax being charged for the sale. He also referred to a letter dated 20.06.1973 from ""The Canara
Banking Corporation Ltd."" to say that they had been carrying on business since 1973. He further pointed out that the first respondent had given false
statement that there was no such trade mark already existing when the first respondent applied for the same. They referred to the sales figures and
submitted that the figures were given (in zeros) in rounded figures which only raised a doubt as to its genuinity.
The learned Counsel for the appellant submitted that the first bill dated 25.12.1989 at page 204 of the typed set was addressed to the God i.e.
Char Munhiji Namah"" which did not bear the central sales tax number which will only prove that they had not been using the mark since 1983 as
claimed but were using only since 1989. The counsel for appellant also submitted that there were discrepancies as regards the dates in the affidavits
given by the applicant / first respondent's dealers. In this regard he submitted that there were two sets of affidavits filed out of which one was a
corrected copy. The learned Counsel for the appellant further stated that as the first respondent had mentioned the letter ""R"" in a circle which denotes
registered on the right top of the trade mark, a criminal complaint against the first respondent was lodged before the Registrar of Trade Marks and the
same is pending.
The learned Counsel for the appellant further referred to the findings of the Joint Registrar as regards the objection under Section 18(1) of the Act
and submitted that the Joint Registrar had committed error in rejecting the objection under Section 18(1) of the Act. As regards the finding under
Section 12(3) of the Act, the appellant submitted that as the first respondent's adoption itself was dishonest, the use by the first respondent cannot be
said to be concurrent and so the provisions of Section 12(3) of the Act does not apply. The learned Counsel for the appellant submitted that the
appellants being the prior adopter and user of the trade mark are the proprietors of the mark and the first respondent being the subsequent user is not
entitled to get his mark registered.
Learned Counsel for the appellant referred to the judgment reported in National Chemicals and Colour Co and Ors. v. Reckitt and Colman of India
Limited in support of his contention that where the first application for registration of the trade mark has been withdrawn and second application is
filed, the adoption itself cannot be considered to be honest. 2002 (24) PTC 226 (Bom) (DB) Bal Pharma Ltd. v. Centaur Laboratories Pvt. Ltd. was
referred to say that if no search has been made before application is filed the applicant will have to face the consequence and that if a search had
been made in this case, the first respondent would have come to know of the appellant's registration.
Learned Counsel for the appellant submitted that in a trade mark registration, the burden to prove that the applicants are honest and concurrent
users of the trade mark will lie on the applicant only and relied on two unreported judgments of the Bombay High Court (M.P. No. 13/91 The Arvind
Mills Ltd. v. Marda Textile Corporation and M.P. No. 1521/76 Munshibhai Bidi Works v. Puranmal Tiwadi & Sons) and also National Sewing Thread
Co. Ltd. v. James Chadwick and Bros. Ltd. and Kanshiram Surinderkumar v. Thakurdas Deoomal Rohire and Ors.
The learned Counsel for the first respondent contended that the appellant's trade mark was registered in respect of hair oil only and the registration
was for the states of Maharashtra, Gujarat and Karnataka only under application No. 30666B and the other application No. 508531 was in respect of
Kum Kum. He submitted that as such the goods were different. Learned Counsel for the first respondent submitted that when they applied for the
registration of the trade marks, the appellant's application for registration in respect of hair oil only was shown as a conflicting mark. The first
respondent referred to pleadings made in para 13 of the TM-6 counter statement that the appellants were aware of the first respondent's use since
1983 and had not challenged the same.
In reply to the argument of the learned Counsel for the appellant that the first respondent's sales figures rounded to zeros, the learned Counsel for
the first respondent submitted that even the appellant's sales figures were in the same manner as seen from the affidavit filed in support of opposition.
He also submitted that the appellants had given sales figure for all the goods and not only for hair oil. The first respondent pointed out that when the
sales were confined to the States of Maharashtra, Gujarat and Karnataka how the appellants could plead that their goods under the trade mark
'FEMINA' had a good demand all over India and abroad as mentioned in the affidavit of evidence.
Learned Counsel for the first respondent submitted that though the appellant had filed documents for the year 1978 to prove their user, no
document had the trade mark 'FEMINA' mentioned in the same. He also pointed out to the various invoices. He further submitted that the central
sales tax mentioned in the invoice could either be with regard to all the goods or with regard to sale of hair oil also. He submitted that in this regard
there was no doubt about the appellant carrying on business since 1978 but what business and under what trade mark was not given.
Learned Counsel for the first respondent submitted that the impugned application for registration was filed on 12.12.1990 whereas the earlier
application filed in the year 1983 was withdrawn on 19.1.1993 and also denied that there was an undertaking given by the first respondent that they
will not file any application in future. The first respondent also filed a copy of the order passed by the Registrar in regard to withdrawal.
Learned Counsel for the first respondent also submitted that the affidavits of dealers filed in page Nos. 153-164 of the typed set of documents
were not from the first respondent whereas the page Nos. 218-230 were only filed before the Registrar. He submitted that they have been using the
trade mark since 1983 and referred to the invoices filed along with typed set of documents.
Learned Counsel for the first respondent in reply to the contention of the appellant that the first invoice dated 25.12.1989 at page 204 of the typed
set of documents is addressed to the God ""Char Munhiji Namah"" stated that it was not the first invoice and also that the central sales tax number was
mentioned in the invoice. He also referred to the advertisements made in 1986. Learned Counsel for the first respondent relied on the Copyright
registration certificate dated 1985 to show that the trade mark was being used since 1983 and pointed out to the date of first publication given as 1983
of the artistic work.
Learned Counsel for the first respondent referred to the counter statement filed before this Board to state that the first respondent is carrying on
business since 1983 and no one was using the trade mark 'FEMINA' for self sticking Bindis like the respondents. Learned Counsel for the first
respondent further submitted that on perusal of the sales figures given by the appellant, it is seen that there has been an increase in sales and as such
the use of the trade mark 'FEMINA' by the first respondent has not caused any loss to the appellant's business nor has caused any confusion among
the public and relied on the judgment of this Board in TA/61/2003/TM/MUM Mohan Lal Hargovinddas Bidi Udyog Private Limited v. MHA Beedi
Company
Learned Counsel for the first respondent submitted that they had been using the trade mark 'FEMINA' since 1983 and there has been no instance
of confusion and that registration was to be granted and relied on the judgment reported in PTC (Suppl) (1) 567 (Cal) J&W Hardie Ltd. v. Joesph E.
Seargram & Sons Inc. and Anr. By way of long, continuous and uninterrupted use, the applicant/ first respondent's use has been honest and
concurrent. He relied on the judgment reported in 1933 RPC Vol.50 147 Alex Pirie and Sons Ld. v. Hammermill Paper Co. in this regard.
Learned Counsel for the first respondent submitted that the judgment relied on by the appellant cannot be considered as they were orders passed
in the suit or where no evidence was filed. Learned Counsel for the first respondent, therefore, concluded his argument stating that they had been
carrying on the business under the trade mark 'FEMINA' since 1983 without any interruption and as a prior user, their right is to be protected. Apart
from this, the appellants have not proved any confusion or deception on account of the first respondent's mark on the register.
Learned Counsel for the appellant in reply to the first respondent's arguments submitted that the first respondent has not given any valid reason for
adoption of the mark. The counsel for the appellant also stated that there was no specific denial about the plea of undertaking given to the Registrar at
the time of withdrawal except for a plain denial. With regard to the sales figure given in a rounded figure, learned Counsel for the appellant submitted
that it was for the first respondent to prove the same and not to question about the validity of the appellant's figure. Learned Counsel for the appellant
also relied on AIR 1960 SC 142 Corn Products Case to say that a mark on the register will not prove the user. Learned Counsel for the appellant
finally submitted that the judgments relied on by the first respondent had no relevance to the facts of the case.
We have carefully gone through the pleadings and documents of both the parties. Let us first deal with the objection of the appellant regarding
maintainability though not pleaded before the lower court.
The main contention of the appellant before us was that the earlier applications were made in the name of the partnership firm and now the
impugned application made in the name of the sole proprietor was not maintainable. In this regard we find there was no such plea raised at any stage
before the Registrar during the opposition proceedings. The appellants, in our opinion, cannot raise any new ground in the appeal which was never
raised before the Registrar. We also observe that under Sub-section (7) of Section 109 of the Trade and Merchandise Marks Act, 1958 permission
could be sought to raise new grounds whereas under the Act no such permission is provided. Even assuming the provision is available, no such
permission has been sought from the Board. Hence the objection is rejected.
The next contention as that two different sets of the same documents were available with the Registrar. The difference between the documents
were that some corrections were made. On perusal of the affidavit of evidence in reply, we find the statements are contradictory. The appellants in
para 3(d) of the affidavit stated that no copy of the documents filed as exhibits and the affidavits were served on them but were filed before the
Registrar. They further go to state that on their inspection before the Registry found no documents or affidavits filed which were served on the
appellants. The appellants have in fact sought leave of the Registrar to file their comments on receipt of the documents. The appellant having stated so
have given their comments about the affidavits of the dealers filed as exhibits in para 3(m). in view of the above, we are not considering the same and
are rejecting the same for the reasons stated above.
The other objection by the appellant was that the first respondent had filed an application for registration of the trade mark 'FEMINA' earlier and
had withdrawn with an undertaking that he will not file any such application. In our opinion, there is no bar for marking a second application for the
same mark. An applicant is entitled to withdraw an application and to make a second application so as to obtain the advantage of a longer period of
user if the adoption is honest. We have perused the copy of the order of withdrawal passed by the Registrar and find that the first respondent has not
given any such undertaking not to make an application as submitted by the appellants. Be that apart, we also find that the second application has been
made in the year 1990 whereas the first application has been withdrawn as on 19.01.1993. So to say that it is illegal to file a second application after
an undertaking given not to file further application cannot be accepted.
The other issue will be about confusion and deception being caused to the public as the trade mark 'FEMINA' is identical. In such cases when the
marks are identical, there is every possibility of confusion and deception being caused. The burden to prove that the registration will not cause
confusion or deception will be on the opponent by user and reputation, the burden will shift to the applicant, if discharged by the applicant. On perusal
of the records, there is no doubt that the appellants have been carrying on business since the year 1969. The appellants have been using different trade
marks, namely 'FEMINA' 'APNA' etc. Though the letters and other exhibits bear the year from 1970 as there is no trade mark mentioned, we are not
considering the same. We are of the view that it could be for the other trade mark too. The first document bearing the trade mark 'FEMINA' is the
letter dated 16.12.1985 and no document earlier to that period is on record. The two trade mark registration certificates, namely application No.
30666B in class 3 has been registered in the name of the partnership firm as of 1978 and the other application No. 508531 in class 3 in the name of a
sole proprietor as of 1994 to prove their user since 1970. The real proprietor is not made clear at the same time we are not going into that issue as no
objection has been raised by the first respondent in this regard. We are to deal with this, as not reliable as the appellants have relied on these
certificates in the notice of opposition. In fact, the opponent/appellant has filed the notice of opposition in the capacity as a sole proprietor and has
sated that he is the proprietor of the trade mark 'FEMINA' and that his mark is registered in his name. The appellant has filed the evidence affidavit in
support of opposition in the capacity of a partner of the firm, which again raises a doubt as to how he acquired title to the mark. The onus to prove that
if the mark is allowed to be registered will cause confusion has not been satisfied by the appellant either by long user or reputation and hence the
objection under Section 11 of the Act also fails.
When the appellants have failed to prove their user for long years and also their reputation, the objection under Section 18(1) of the Act also does
not sustain.
As regards the issue under Section 12 of the Act is concerned, we are of the view that the first respondent's use has been concurrent and honest.
The appellants admit that they have been opposing the first respondent's mark on earlier occasions also. We find that the first application was of the
year 1983 and the same was not challenged. It is also apparently clear that the goods are being sold in the same area but no instance of confusion has
been proved by the opponent / appellant. In such circumstance, we are not able to appreciate the appellant's objection in this regard.
The first respondent's goods has been confined for sale in the State of Maharashtra only and the Registrar has also granted registration with a
condition being imposed restricting the registration of the trade mark 'FEMINA' to the State of Maharashtra. So, on this ground also we are of the
view that there is no infirmity in the order of the Joint Registrar.
We also appreciate the contention of the counsel for the first respondent that there is an increase in the sales figures, which will only go to prove
that the first respondent's trade mark 'FEMINA' has definitely not caused any loss in the business and that registration of the first respondent's mark
will not cause any confusion or deception among the public.
We are, therefore, of the view that the first respondent has been using the trade mark 'FEMINA' in respect of self sticking bindis since 1983
without any interruption with the knowledge of the appellants. Having rejected the objections of the appellants, we have no hesitation in confirming the
order of the Joint Registrar of Trade Marks dated 03.11.2003. Consequently the appeal is dismissed with no order as to costs.