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Judgment
Z.S. Negi, J
This is an appeal under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) directed against the order dated 1.6.2006
passed by the Assistant Registrar of Trade Marks, Chennai whereby she has disallowed the opposition No. MAS-111156 and allowed the application
No. 889702 to proceed for registration. The appellant has along with the appeal filed an application being M.P. No. 93/2006 for staying the operation
of the impugned order till the disposal of the appeal and this Appellate Board by its order dated 5.3.2007 restrained the Registrar from issuing
certificate of registration until further orders.
It is stated that the first respondent herein has filed an application No. 889702 on 3.12.1999 for registration of trade mark 'C&C CLASSIC POLO'
(label) in class 25 in respect of readymade garments and all kinds of hosiery goods for sale in the States of Tamil Nadu, Karnataka, Andhra Pradesh
and Kerala. The trademark applied for was proposed to be used and the said application was advertised in the Trade Marks Journal No. 1291
(Supplementary III) dated 28.3.2003 at page 267 with the condition that ""Registration of this Trade Mark shall give no right to the exclusive use of the
C&C and the word Classic"". In view of the disclaimer, the word POLO is the only prominent and distinguishing feature of the impugned mark. The
appellant herein filed opposition being No MAS-111156 opposing the registration on the grounds that they have an established international business as
manufacturers and merchants of high quality men's, women's and children's clothing and variety of consumer merchandise marketed and sold under
the well-known trade mark POLO world wide and in India including but not limited to POLO, POLO PLAYER SYMBOL, POLO SPORT, POLO
JEANS, POLO BY RALPH LAUREN, etc.; that the mark POLO was designed, adopted and used by Ralph Lauren in 1967; that the appellant owns
and uses a number of trade marks consisting of or containing POLO several of which are registered or pending registration in several classes in many
countries of the world including India; that the trade mark POLO has been in use in India at least from June 1999 in relation to clothing items
manufactured and exported from India to other countries which constitutes use of that trade mark in India for the purposes of the Act, therefore,
others do not have any right to adopt the same as their trade mark; that it is a globally well-known mark of Ralph Lauren and would qualify for
protection under Article 6 bis of the Paris Convention which has been adapted into Sections 11(2-10) of the Act; that the mark applied for registration
by the applicant/first respondent is neither adapted to distinguish nor capable of distinguishing its goods; that the application of the first respondent for
registration is on the basis of proposed to be used, therefore, subsequent use or goodwill cannot be considered in favour of the first respondent and in
such circumstances the proposed registration would be contrary to the provisions of Sections 9, 11(a), (b) & (e) and 18(1) of the Trade and
Merchandise Marks Act, 1958.
On completion of the procedural requirements, the matter was set down for hearing and the impugned order was passed on 1.6.2006 after hearing
both the parties. Aggrieved by the impugned order, the appellant has challenged the impugned order on various grounds, inter alia, that the
determination as to distinctiveness of the mark under Section 9(1)(a) and likelihood of deception and confusion/deceptive similarity under Sections 9(2)
(a) and 11 of the Act are erroneous; that the findings given or observation made in the impugned order regarding non-use of the appellant's mark in
India is incorrect; that the first respondent has failed to prove its claim of ownership and entitlement to registration of the impugned mark; that the
interpretation given in the impugned order to the concept of well-known mark is absolutely wrong and that the determination of proprietorship in favour
of the first respondent under Section 18 of the Act is wrong.
On 2.4.2007 the counter-statement along with list of enclosures was filed on behalf of the first respondent and thereafter the appellant on 20.7.2007
filed the reply to counter-statement along with an interlocutory petition being M.P. No. 102/2007 for taking on record the Annexure A-1 to A-14 of the
said petition. The first respondent has also on 5.9.2007 filed an interlocutory petition being No. 103/2007 for taking on record the affidavit of Mr.
Shivaram along with the exhibits thereof. On the day of hearing, the interlocutory petitions were taken up first, when Shri R. Gandhi Senior Advocate
raised objection that the first respondent has filed certain documents without supporting affidavit, whereupon Shri N.R. Chandran Senior Advocate
undertook to file the desired affidavit within a week's time. Ultimately, both learned senior counsel agreed that both the interlocutory petitions should
be taken on record and accordingly both the interlocutory petitions were allowed and documents taken on record. Thereafter, the appeal was taken up
for final arguments when both the parties have submitted their written arguments also.
At the outset, learned Senior Advocate Shri R. Gandhi, appearing for the appellant assailed the conclusion arrived at by the second respondent as to
the distinctiveness or distinctive character of the impugned mark under Section 9(1)(a) of the Act on various grounds. The grounds were mainly, inter
alia, that the impugned mark was not capable of distinguishing the goods of the first respondent from that of the goods of the appellant specially when
the impugned mark has no user prior to the making the application for registration to show acquisition of distinctive character. The application was
made on the proposed to be used basis, therefore, as on the date of application the proposed mark had no distinctiveness, either inherent or acquired
and the evidence relevant for taking into consideration should be the evidence as at the date of application not subsequent to the date of application as
has erroneously been taken into account the subsequent evidence of the first respondent by the second respondent in the present case. Reliance in
support of his argument was placed on the judicial pronouncement in the case of E.G. Hughes Ltd. v. Vick Chemical Co. wherein it was held that in
case of all applications for registration of the trade marks, including opposed applications, the right of the parties are to be determined as at the date of
the application for registration. That the second respondent has erroneously relied on the submission that the mark POLO is a common dictionary
word for which exclusive proprietary right cannot be claimed by the appellant, without appreciating that the existence of appellant's registration of the
mark POLO in class 25 in diverse countries clearly establish the trade mark significance of POLO and the appellant's exclusive proprietary right
therein. That apart many dictionary words /surnames/geographical names have been held to acquire great trade mark value and secondary meaning
by virtue of use and publicity and reputation accrued there from. That the second respondent has allowed herself to be guided by extraneous
submissions and materials, such as the plea that the mark POLO is generic word, which did not form part of the pleadings/counter-statement in Form
TM-6. This plea of POLO being a generic word had suddenly been raised by the appellant at the time of hearing and such plea ought not to have been
taken into consideration. The Apex Court has in its decision reported in AIR 1964 SC 1680 at p. 1686, AIR 1965 SC 1167 and AIR 1979 SC 621 at
para 5 has held that a ground not specifically pleaded cannot be the subject of adjudication. He asserted that in the case on hand, the impugned order
which was adjudicated on the new plea of POLO being a generic word in the absence of the specific plea contained in the counter-statement of the
first respondent is bad in law which ought not to have been considered and further, if the word POLO is generic then the first respondent is also not
entitled to claim exclusive right of registration, therefore, the application for registration should have been refused on this inconsistent and self
defeating ground itself. It was also argued that it is an undisputed fact that there is a disclaimer for the right to the exclusive use of 'C & C' and the
word 'CLASSIC- implying thereby that only essential and prominent feature left to be considered for registration was POLO- but this fact was totally
overlooked by the second respondent.
Shri Gandhi submitted that the appellant is using the trade mark in India within the meaning of the expression 'and any other act done in India'
employed in Sub-section (1) of Section 56 of the Act which means that if goods are manufactured in India for and on behalf of a trader outside India
and the goods so manufactured are exported outside India on the request of such trader then that will constitute use under that sub-section. He pointed
out that the documents filed by the appellant under Annexure A-4, A-6 and A-7 in M.P. No. 102/2007, containing copies of bills, trade invoice raised
on POLO garments manufactured by Indian licensee for export, samples manufactured by the Indian licensee, copies of invoices and other documents
showing shipments of POLO products from India are proof of his submission and as such the appellant is entitled to the benefit of provision of Sub-
section (1) of Section 56 of the Act.
Learned Senior counsel Shri Gandhi contended that the principle of law in the case of likelihood of confusion and deception is that the onus to prove
that there is no likelihood of confusion is on the first respondent herein but the said respondent has failed to discharge the same. In support of his
contention, the learned sr. counsel placed reliance upon the judgment in Raj Lakshmi Knitting Company v. Ascot (S&F) International Ltd. and Ors.
2007 (37) PTC 147 (IPAB), Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. 2001 PTC 300 (SC), N.R. Dongre v. Whirlpool Corporation 1996
(16) PTC 476), Corn Products P. Ltd. v. Shagrila Food Products Ltd. and Parle Products P. Ltd. v. J.P. and Co. Mysore. He contended that since the
world famous POLO brand owned by the appellant has created a land mark in the minds of the people in the garment sector throughout the world
associating with the appellant only and none else, as such if the first respondent's impugned trademark is used, the public will think that the brand
comes from the house of appellant and thus it will cause confusion among the public. The High Court of Calcutta in the case of E. Griffiths Hughes
Ltd. (supra) held at page 19 thus: 'If however the proviso to Sub-section (3) is applicable to the case then the question whether the trade mark is
adapted to distinguish or not become immaterial and the Registrar can direct registration solely on the evidence of acquired distinctiveness. In other
words if the proviso is attracted then the ""acquired distinctiveness"" is conclusive and entitles the mark to be registered. But if the proviso does not
apply then the ""acquired distinctiveness"" is not conclusive, and the Registrar has to find that adaptability to distinguish is present in the trademark
proposed to be registered.
Shri Gandhi submitted that POLO trademark of the appellant is well-known and enjoys transborder reputation since Ralph Lauren is widely
recognised world over for excellence in creation of contemporary clothing designs and has in this field received several awards such as Coty Award
for Menswear, Menswear Fashion Award, American Fashion Award, Coty Hall of Fame Award for Menswear, Council of Fashion Designs of
America Designer of the Year Awards for both Menswear and Womenswear, GQ Manstyle Award, The Cutty Sark Men's Fashion Award for
Special Achievement, and The Council of Fashion Designers of America Lifetime Achievement Award. Due to extensive use worldwide, publicity
globally and registration/protection in various countries for clothing, garment and allied goods and for other goods, the POLO has earned enormous
reputation and goodwill as a mark of the appellant. Apart from several trade marks registration containing the word POLO, POLO word mark per se
in India, the appellant has registrations in various countries for these marks. The word POLO forming a predominant feature is used as a trade mark,
corporate name and as a trading style of the appellant. The goods of appellant bearing POLO mark have been widely advertised in the reputed
magazines like Voge, Variety Fair, Esquire, Sports Illustrated, Rolling Stone, Time, Elle, Forbes and Newsweek. Placing his reliance heavily upon the
decision in N.R. Dongre v. Whirlpool Corporation 1996 PTC (16) 476, the learned Senior Counsel submitted that in today's world it cannot be said that
a product and the trade mark under which it is sold abroad does not have reputation or goodwill in countries where it is not available as dissemination
of knowledge about a trade mark in respect of product through advertisement in media amounts to use of trade mark whether or not such
advertisement is coupled with the actual existence of product in the market. Learned Counsel, relying upon the decision of Division Bench Of Calcutta
High Court in J.N. Nichols (Vimto) Limited v. Rose and Thistle and Anr. 1994 PTC 83, submitted that mere advertisement without having even the
physical existence of the goods in the market can be said to be a use of the mark and this decision was relied upon by the High Court of Delhi in the
case of N.R. Dongre (supra). He pointed out that Annexure A-1 to A-14 of the M.P. No. 102/2007 prove the global reputation and goodwill of POLO
mark and the fact that of its being a well know mark of the appellant.
Countering the ground of argument of the first respondent that the word POLO is used by other traders like LEVIS, WRANGLER, etc. as shown
in the documents filed as Annexure-B of the M.P. No. 103/2007, the learned Senior counsel submitted that the applicant's mark POLO is
distinguishable on the grounds that those traders use the word in descriptive form and not in the trade sense as a trade mark, that they do not give
prominence to word POLO and do not use it in their invoices, purchase bills or advertising on their trade mark, that they have not applied for
registration so as to obtain exclusive right over POLO and the customers are unlikely to get influenced by the use of the word POLO by these traders
as the circumstances under which they use it are different in a descriptive sense and not in a trade sense. Such argument will not provide any shelter
to the first respondent. Regarding Annexure-D to the M.P. No. 103/2007 of the first respondent, the learned senior counsel submitted that the
appellant has been always vigilant and active in protecting its proprietary right in POLO. Pages 137 to 145 along with the Memorandum of Appeal are
testimony to this which contains copy of interim injunction issued by the High Court of Delhi against the infringing of mark POLO. Similarly,
Annexure-A to the written arguments contains the list of oppositions filed by the appellant against application for registration of the POLO mark. It
was further submitted that in the first respondent's application, other words having been disclaimed, POLO is the essential element with full emphasis
thereon. The first respondent is trying to confuse this Appellate Board with the meaning of the word POLO and POLO SHIRT by making submission
at para 3 of the written arguments that the Polo shirt means a casual short sleeved cotton shirt with a collar and several buttons at the neck.
Shri Gandhi contended that the adoption of mark by the first respondent was dishonest and malafide. The first respondent did not apply to the
Registrar for conducting official search before making application for registration. It is not the case of first respondent either that it was not aware of
the existence and in use of appellant's mark POLO at the time of making its impugned application. Relying upon the decision of this Appellate Board
in Needle Industries (India) Ltd. v. Super Thread Industries and Ors. 2007 (34) PTC 614 (IPAB) and the High Court of Delhi in Cadbury India
Limited and Ors. v. Neeraj Food Products learned Counsel contended that the first respondent has not explained the reason or justification for the
adoption of the mark POLO and in the absence of any explanation therefore the only inevitable conclusion is that the first respondent wanted to cash
upon the goodwill and enormous reputation attached to the appellant's mark. In support of the above contention he further relied upon the judgment of
Division Bench of Madras High Court in Needle Industries (India) Ltd., Chennai v. Sanjay Jaiswal and Ors. 2002 (24) PTC 646.
Shri Gandhi submitted that the first respondent in para 2 of its written submissions stated that the appellant had failed to prove its claim of
ownership of the POLO mark. The law is well settled that the onus of proof is on the applicant for registration (first respondent herein) to prove its
claim of ownership and entitlement to the impugned mark. While this is so, the first respondent having failed to prove honest adoption and
distinctiveness of the impugned mark cannot claim that the appellant has failed to prove ownership. Irrespective of this, the documents before the
Registrar and the Appellate Board along with M.P. No. 102/2007 in this appeal go to prove the appellant's ownership to the mark and as such the first
respondent's submission to stated effect are only to divert the attention of the Appellate Board from the main issue to trivial issues.
Learned Senior counsel Shri Chandran appearing for the first respondent submitted that the appellant has failed to prove its claim of ownership of
the mark POLO as all the proofs submitted by the appellant are the word POLO in combination with other words or device such as POLO PLAYER
SYMBOL, POLO BY RALPH LAUREN, etc. which are absolutely insignificant to this case because when it is compared with the first respondent's
composite mark C&C CLASSIC POLO (label), including other features, is totally different by visually, phonetically, layout and getup.
Shri Chandran submitted that the word polo is a dictionary word meaning a game of eastern origin with rules similar to hokey played on horse back
with a long handled mallet and polo shirt meaning a casual short sleeved cotton shirt with a collar and several buttons at the neck. As such the claim of
the appellant for proprietary right over the word POLO is untenable in the eyes of law and incapable of getting a well-known mark status as per the
plethora of cases. He further submitted that the appellant in its own submission at para 3(b) of the reply to M.P. No. 103/2007 admitted that the word
POLO is descriptive and generic term as to the specification of goods in class 25. The learned Counsel after narrating the history of Polo T Shirts
submitted that the all prominent players in textile sector world wide manufacture their POLO Shirts that have gained popularity over the year as a
formal casual wear and submitted that Lacoste, POLO HERZ, Wear Guard, Sports ""R"" Us, Passport International, Online Sports, Skate America, etc.
are some of the prominent international companies in this range. Since all textile players produce POLO Shirts and the word denotes a particular
category of garments in textiles, there is no doubt that the word POLO is a generic word. By referring to Mc Carthy on Trade Marks and Unfair
Competition (3rd Edn. Vol.2) that ""A generic name of a product can never function as a trademark to indicate origin. The terms 'generic' and
'trademark' are mutually exclusive. Thus if, in fact a given term is generic, it can never function as a mark to identify and distinguish the products of
one seller"", the learned Sr. counsel submitted that in the present situation the appellant's argument that it maintains monopoly over the use of the word
POLO is unsustainable in law since POLO is undoubtedly a generic word. He submitted that it is worth referring that in Novartis AG v. Wanbury, the
Delhi High Court has held that the generic word 'MINIC' was a part of the trade name of various drugs used as a suffix to other alphabets and an
exclusive right could not be claimed over the word. Along the same lines the word POLO is also used in textile trade by many players and no one
entity can claim an exclusive right over it. Learned Counsel cited the judicial pronouncement in SBL Ltd. v. Himalaya Drug Co. Astrazeneca UK
Limited v. Orchid Chemicals, Indo-Pharma Pharmaceutical Works Ltd. v. Citadel Fine Pharmaceuticals Ltd. Asian Paints Limited v. Home Solutions
Retail (India) Limited 2007 (35) PTC 697 (Bom), Rich Products Corporation and Anr. v. Indo Nippon Foods Limited, MIPR 2007 (2) 316 and PEPSI-
COLA Co. of CANADA, Ltd. v. COCA-COLA Co. of CANADA, Ltd. (1940) S.C.R. 17 in support of his submissions. Reliance was also placed
upon the decision of the Singapore Court of Appeal in The Polo/Lauren Co, LP v. Shop In Department Stores Pte Ltd. [2006] SGCA 14 where the
Court, while dismissing the plaintiff's claim of infringement and for breach of the undertaking, held that the POLO word mark was always used in
conjunction with the other trade marks of the appellant, therefore, the Court felt that the distinctiveness of the mark was diminished and, the Court
expressed its doubt that any average consumer will be confused.
Shri Chandran submitted that the appellant has employed a futile and shabby last minute attempt to 'uncover, evidence. In fact the documents
produced by the appellant by way of Annexure A-4 to A-7 of M.P. No. 102/2007 are mere copies of consignment bills, shipment documents of
consignment by the sourcing companies from India named therein to the appellant and samples sent by the appellant to the said sourcing companies
and as such the said Annexures are nothing but relating to production outsourcing by some manufacturing entities which produced goods on
contractual basis and delivered them back to the appellant. The appellant is thus trying to mislead the Appellate Board by stating them as licensed
manufacture and export. The appellant has neither shown a single instance of use either by itself or by its alleged licensees nor any evidence of
presence of its brand in India. The evidence filed as Annexure A-10 to the said M.P. merely reflects the use of Ralph Lauren in all the goods which in
no way reflect the use or marketing/advertising of its mark in India and thus the appellant has failed to provide any evidence relating to Brand
marketing, promotion and advertisements, sales turn over of the so called use of its brand in India, any mention in Indian or foreign fashion magazines
of its presence in India and industry rating and ranking of its position in India. Relying upon the decision in Hotel Hilton International v. Hotel Hilltone
Private Limited 2005 (31) PTC 625 (IPAB), Procter & Gamble v. Satish Patel Milmet Oftho Industries v. Allegen and Pfizer Products v. B.L. &
Company the leaned Senior counsel submitted that evidence of presence of appellant's use of mark in India is not there and the respondent is first in
the Indian market. He asserted that the appellant's evidence in substantiate its alleged use of the mark in India under Section 56 of the Act refers to
RALPH LAUREN and POLO Player Device mark only and not an iota of evidence of use of the mark POLO in India. Likewise the evidence in
Annexure A-11 shows that the appellant's alleged licensee in India, P.S. Apparels manufacture POLO goods for other entities also and the pertinent
question arise there from is if that entity is appellant's licensee how the appellant can allow its licensee to manufacture POLO goods for other entities
?
Shri Chandran asserted that by applying the factors propounded by the Apex Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. that
generally for deciding the question of deceptive similarity, the nature of marks, the degree of resembleness between the marks, etc. are to be
considered, there can not arise any question of deceptive similarity between the marks of the appellant and the first respondent. Relying the decision in
Corn Products Refining Co. v. Shangrila Food Products Ltd. and Parle Products (P) Ltd. v. J.P. and Co., Mysore, it was submitted that for deciding
the question whether the two marks are likely cause confusion or not is a question of first impression and in deciding the question of similarity between
the marks, the broad and essential features of the two marks and the marks as a whole have to be considered and such a question is answered if
overall similarity to the registered mark is such as would be likely to mislead a person usually dealing with one to accept the other if offered to him.
The learned Counsel placing his reliance upon the case of the Coca-Cola Co. of Canada Ltd. v. Pepsi-Cola Canada Ltd. (1942) LIX RPC 127, the
question arose if PEPSI-COLA was so similar with COCA-COLA as to be likely to cause confusion. It was found that COLA was not the name of
the drink which has been adopted for beverages in Canada. PEPSI and COLA joined by a hyphen so also COCA and COLA joined by a hyphen,
were both written in a script form with flourishes. Both had been used simultaneously and for sometime with wares of the same kind. The judicial
Committee of the Privy Council found that both the trade marks had a descriptive flavour to the trade. On using the word COLA, on the review of the
authorities, their Lordships laid down the following three fundamental propositions:
(i) In considering similarity comparison must be between the defendant's mark as used and a normally imperfect recollection, of the plaintiff's mark,
(ii) In making a comparison no regard should be paid to the fact that some part of the mark common to both marks has a descriptive flavour unless it is
proved that such part is in common use in the trade.
(iii) If after applying the aforesaid propositions the conclusion is reached that the marks are similar it is irrelevant that the defendant had used
differentiating features of get-up.
Shri Chandran submitted that whether a particular trade mark is well-known or not is a question of fact and depends on the special circumstances
of each case. By drawing our attention to the definition of well-known trade mark under Section 2(1)(zg) read with Sub-sections (7) to (11) of Section
11 of the Act and Article 16(2) & (3) of the TRIPS Agreement 1994 based on Article 6 bis of the Paris Convention 1993, the learned Counsel
submitted that prima facie the concept of well-known mark is not applicable in the present situation because the instant application is also for the same
class of goods as that of the appellant as the 'well-known mark' concept is applicable only to goods or services belonging to different classes. The very
doctrine as defined in Section 2(1)(zg) of the Act rationally finds application only when the well known mark and the other mark are applied ""in
relation to other goods or services"", i.e. goods or services in two different classes, since only such a situation would result in migration of 'well
knowness' from one kind of goods or services to another. This has been reiterated in a host of cases by the Hon'ble Courts in India including from
Corn Products Refining Co. case (supra) till the recent case of Royal Enfield Motors Limited v. Deepak Engineering Syndicate,
TA/252/2004/TM/AMD (A. No. 2/1995). In the latter case it was clearly held that ""it is clear that a well known mark cannot be permitted to be
copied by another even in respect of different goods falling under different classes because there will be a doubt with regard to the source of
production. In such cases, the person who adopts the well-known mark will definitely take advantage of the reputation of that well-known mark which
cannot be permitted."" It is thus illogical on the part of the appellant to apply this doctrine to the present case. The sine qua non for the protection of a
well-known trademark is that it should not be laudatory or descriptive. It has to be an invented one. It has to be an invented/arbitrary mark, devoid of
any signification, meaning or suggestiveness. This has been emphasized in Nutrine Confectionery Co. Ltd. v. Ayyan Fireworks Factory Pvt. Ltd.
TA/16 and 17/2003/TM/CH (TMA Nos. 6 and 7 of 1998). A distinct contraction or variation of two common words resulting in a new word
conveying no meaning, can be called an invented word. However a mere combination of two or more English words is not an invented word, even
though the combination might not have been in use before. The words POLO, PLAYER AND SYMBOL used in the mark of the appellant is neither
a new created word nor is devoid of any meaning when used together. Therefore the term 'POLO' cannot be considered as a well-known mark. Thus
in a plethora of cases it were held that 'BENZ', 7 'O' Clock, Caterpillar, Whirlpool, etc. are invented/arbitrary words. He submitted that in the absence
of any registered trade mark, the appellant ought to have produced evidence about the extent and record of successful enforcement of the well-known
mark in that particular country to establish well-known mark status in that country but the appellant has miserably failed to produce any evidence to
show the enforcement of its rights for the contended mark in India Regarding evidence produced by the appellant to establish its claim of reputation
and goodwill in India, the learned Counsel submitted that on looking at the advertisements produced as evidence by the appellant none of the
advertisements can be accessed by the Indian public nor the same are published in India. Further, the evidence of having registration obtained in
various other countries in the world will support the case of appellant to obtain well-known mark status in India only if other conditions like presence or
sale or enforcement of right etc. are fulfilled. On the other hand, though the application for registration was filed by the first respondent in December
1999 on proposed to be used basis and put to use in trade in January 2000, the first respondent's mark was distinctive as to its goods as the appellant is
not present in India till date. The email reply by the appellant in 2005 is by itself a sufficient proof that appellant was not present in India.
Shri Chandran lastly submitted that CLASSIC POLO is the first respondent's house mark and the trading style and refusal to registration would
cause sever hardship and inconvenience. The first respondent's mark bears not even the slightest resemblance or similarity to the appellant's POLO
PLAYER and the POLO mark. It is notable that CLASSIC POLO is a composite term and POLO not to be read in isolation and it is reiterated that
POLO is a generic word no textile player can claim monopoly over this word. He further submitted that the first respondent emphatically deny the
alleged reputation of appellant's mark POLO and THE POLO PLAYER SYMBOL and the presumption of causing confusion and deception amongst
public and trade is a mere figment of imagination. Learned Counsel also submitted that the first respondent is an equally reputed company engaged in
the business of manufacturing, designing, exporting and marketing garments and hosieries. In 2003, CLASSIC POLO became the first knitwear brand
in India to be nominated for IFA (Indian Fashion Association) Awards, 2003 for the most admired launch of the year, 2003 and was ranked as
runners-up. In an exclusive survey conducted by the famous fashion magazine 'IMAGES FASHION' on the Indian T-Shirt market in 2005, Classic
Polo was ranked among top 5 casual wear brands in India, ahead of major brands Lacoste and others and it was also awarded 'the Best Brand of the
Year 2006' for Garments by Clothing manufacturers Association of India. Apart from this, the mark/device 'C&C' is separately registered under No.
906310 and 'CLASSIC POLO' is registered in Singapore under No. T078643F.
We have carefully heard both the learned senior counsel for the appellant and the first respondent in detail and have perused the pleadings,
documents filed and written submissions submitted by the parties and the judgments relied on by them. Since this appeal is against the order of the
learned Assistant Registrar, we have now to see whether the findings given by the Assistant Registrar are sustainable on the facts and law. Sections 9
and 11, under Chapter II dealing with the registration and conditions for registration, of the Act provide for absolute and relative grounds, respectively,
for refusal of registration. When the first respondent made application for registration of its trade mark on 3.12.1999, the appellant was the registered
proprietor of the trade marks POLO, POLO by PALPH LAUREN, POLO LAUREN, etc. in India (first mark as of 6.8.1987) and in view of this the
appellant, in the Indian context, is the first in point of time to adopt the mark POLO. When it is so, the first respondent's mark is devoid of any
distinctive character, that is to say, not capable of distinguishing the goods of the first respondent from those of goods of the appellant. The exception
carved out of Sub-section (1) of Section 9 of the Act will not be available in the present case as the mark applied for was on the basis of proposed to
be used and as such there was no user to acquire a distinctive character. The mark is hit by Section 9(1)(a) of the Act. If it is found that the nature of
the mark of the respondent is such as to deceive public or cause confusion owing to similarity of mark and the goods covered by the earlier mark,
which we will discuss a little later, then the mark applied for is not registrable. The provisions of Clause (a) of Sub-section (2) of Section 9 and Sub-
section (1) of Section 11 of the Act will hit the mark of the respondent. Similarly, the first respondent's mark will not be registrable as it attracts the
relative grounds of refusal contained in Sub-section (2) of Section 11 that is to say if the respondent's mark is proved to be detrimental to the
distinctive character or repute of the appellant's mark shall not be registrable. The plea that POLO is a dictionary word, not devoid of meaning and is a
generic term is unacceptable to the extent that the meaning of polo as contained in the Concise Oxford English Dictionary does not designate the kind,
quality, quantity, intended purpose or value of the goods covered by the mark POLO. According to the Chambers Dictionary (New Edition) the word
generic"", adj means general, applicable to any number of a group or class; of or belonging to a genus; (of a drug, etc) not patented or sold as a
proprietary name; (of the name of a brand) that has come to be used as a general name for that type of product (eg Biro for the ballpoint pen, hoover
for vacuum cleaner).-n a generic drug, etc; a product sold without a brand-name, in plain packaging, and with no promotion or advertising; a generic
brand-name. While taking this dictionary meaning of the word generic in relation to POLO, one must bear in mind that we are not considering the
word Polo Shirt but the word POLO only. From this, we are unable to persuade ourselves to agree that the POLO is a generic word. A number of
trade mark registrations obtained by the appellant world over with word POLO or consisting of word in any form support our view that if the word
POLO would have been generic, some where in some country, some authority in the world would have held it to be so. The plea of the first
respondent that polo is generic word is self contradictory and self defeating because if the word is generic for the appellant so is for the first
respondent. We are also not in agreement with the submission of the first respondent that the appellant has in its own submission at para 3 (b) of the
reply to M.P. No. 103/2007 admitted that POLO is descriptive and generic term as from the it is very clear that the appellant has explained/shown as
to how the other companies are using the polo in a descriptive form not in a trade mark sense by not using the term in advertising, on invoices or
during aural order of their product, etc. The case law cited by the first respondent in regard to generic word will be of no help to it as they are
distinguishable. The onus to prove that the mark applied for registration is distinctive and entitled to be registered is on the first respondent which it has
failed to discharge. The learned second respondent has concluded that on filing the documentary evidence the objection of Section 9 of the Act, and
the use of the mark is enough to justify the distinctiveness of the mark applied for. The documentary evidence filed were copy of article on IFA
Awards' 03, articles and advertisements published in various magazines, and newspapers across India, promotional materials, in-house journal of the
first respondent, turnover details for the years April 2002-March 2003 to April 2003-March 2004, invoices and caution notice issued in Hindu dated
25.2.2004. The earliest advertisement in Financial Express is of 13.2.2001 and the earliest invoice is No. 56 dated 30.12.1999 describing the goods as
100% cotton knitted hosiery garments, CLASSIC BASIC. Except in invoice No. 75 dated 25.11.2000, against Sl. No. 3 of which the description of
goods is given as ""CLASSIC POLO"" but in all other invoices different description of goods such as 'CLASSIC BASIC, CLASSIC CREATIVE, CPF
(FULL SLEEVES JAQD)' are given. The mark CLSSIC POLO is not written on any other invoice. The inevitable inference is that there is only
single invoice showing user till the filing of application and the statement of turnover and all the advertisements pertain to period after the year 2000,
therefore such evidence can neither be relevant nor be sufficient to acquire distinctiveness. Evidently, the evidence taken into account by the learned
second respondent is post application period evidence whereas the legal proposition is that the evidence relevant for taking into consideration should be
as at the date of application. This proposition has been propounded by the Division Bench of Calcutta High Court in the case of E.G. Hughes Ltd.
(supra) at para 19 as under:
(19) With these introductory words on the question of interpretation of Section 6 of the Act I now pass on to the consideration of the evidence as to
user which has been adduced in this case. Now it is well-settled that in the case of all applications for registration of trade marks, including opposed
applications, the right of the party or parties are to be determined as at the date of the application for registration. The evidence which is tendered
before the registrar is normally by way of affidavits of persons who are competent to testify to the user of the particular mark.
The learned second respondent, even after taking into account the post application evidence, has come to an arbitrary conclusion. The conclusion of
the second respondent that the mark of the first respondent is erroneous in the absence of any cogent evidence on record. We are of the view, that
the conclusion arrived at by the learned second respondent is factually erroneous and unsustainable in law.
Regarding the objection under Section 11 of the Act, the learned second respondent after observing that the onus rests heavily on the opponents to
establish the reputation of their trade mark in order to justify the likelihood of confusion or deception likely to arise due to the use of the mark applied
for, concluded by stating that she decides the issue in favour of the applicant/first respondent. The question of confusion or deception will arise where
both the competing marks are in use. We have already stated that the first respondent has failed to show its user at the relevant date. The documents
filed by the appellant by way of Annexures A-4 to A-14 of the reply to counter-statement contain copy of bills and other trade invoices raised by the
Indian licensees for POLO garments manufactured, final audit results form and final inspection reports issued by the said licensees, samples, invoices
and shipment documents, export certificates, advertisement in international fashion magazines, newspaper articles, etc. None of the bills, invoices, final
audit results form, samples manufactured by Indian licensees, export certificates, invoices and shipment documents, the trade mark POLO is written
or indicate that these pertain to trade mark POLO. Though the first respondent demanded that the appellant should produce any agreement entered
into with the licensee but the appellant has only stated that it has licensee in Chennai and the first respondent insisted its demand. Though the mark
POLO has not been mentioned on the bills, invoices, etc. there are bills, invoices, final audit results form, final inspection reports export certificates
dated 11th, 15th and 16th June 1999 and shipment documents which show that goods were manufactured and exported. The submission of the first
respondent's counsel that the license of the appellant to manufacture POLO goods for other entities is without any evidence and hence not acceptable
to us. under Section 56(1) of the Act the application in India of a trade mark to goods to be exported from India would constitute use of the trade mark
for the purposes of the Act or any other law. Now having found that the mark of the appellant is in use we would see whether the mark of the first
respondent is deceptively similar to cause confusion or deception. While comparing the two marks to find out the similarities between them, the test is
to see whether similarities in two marks are similar enough to cause confusion when consumer of average intelligence with imperfect memory wants
to buy a particular product. In Cadila health Care Ltd. v. Cadila Pharmaceuticals Ltd. (supra), the Apex Court held that in an action for passing off on
the basis of unregistered trade mark generally for deciding the question of deceptive similarity, factors to be considered are- (a) The nature of the
mark i.e. whether the marks are word marks or label marks or composite mark i.e. both words and label works, (b) The degree of resembleness
between the marks, phonetically similar and hence similar in idea. (c) The nature of the goods in respect of which they are used as trade marks. (d)
The similarity in nature, character and performance of the goods of the rival traders. (e) The class of purchasers who are likely to buy the goods
bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the
goods. (f) The mode of purchasing the goods or placing orders for the goods. (g) Any other surrounding circumstances which may be relevant in the
extent of dissimilarity between the competing marks. Weightage to be given to each of the aforesaid factors depending upon the facts of each case
and the same weightage cannot be given to each factor in every case. Similarly, the Apex Court in the Corn Products Refining Co. case (supra) at
paras 16, 19 and 22 held as under:
Now it is a well recognised principle that has to be taken into account while considering the possibility of confusion arising between any two trade
marks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market such a
common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective marks and to distinguish
between them by those features. This principle clearly requires that the marks comprising the common element shall be in fairly extensive use and, as
I have mentioned, in use in the market in which the marks under consideration are being or will be used.
We think that the view taken by Desai, J., is right. It is well known that the question whether the two marks is likely to give rise to confusion or not
is a question of first impression. It is for the court to decide that question. English cases proceeding on the English way of pronouncing an English
word by Englishmen, which it may be stated is not always the same, may not be of much assistance in our country in deciding questions of phonetic
similarity. It cannot be overlooked that the word is an English word which to the mass of the Indian people is a foreign word. It is well recognised that
in deciding a question of similarity between two marks, the marks have to be considered as a whole. So considered, we are inclined to agree with
Desai, J., that the marks within which this case is concerned are similar. Apart from the syllable 'co' in the appellant's mark, the two marks are
identical. That syllable is not in our opinion such as would enable the buyers in our country to distinguish the one mark from the other.
It is true that in both the above-mentioned cases the two competing trade marks were absolutely identical which is not the case here. But that in
our opinion makes no difference. The absolute identity of the two competing marks or their close resemblance is only one of the tests for determining
the question of likelihood of deception or confusion. Trade connection between different goods is another such test. Ex hypothesi, this latter test
applies only when the goods are different. These tests are independent tests. There is no reason why the test of trade connection between different
goods should not apply where the competing marks closely resemble each other just as much as it applies, as held in the ""Black Magic"" and ""Panda
cases, where the competing marks were identical. Whether by applying these tests in a particular case the conclusion that there is likelihood of
deception or confusion should be arrived at would depend on all the facts of the case.
It was held in Parle Products (P) Ltd. (supra) that-
To decide the question as to whether the plaintiffs' right to a trade mark has been infringed a particular case, the approach must not be that in an
action for passing off goods of the defendant as and for those of the plaintiff. According to this, Court in Durga Dutt v. Navaratna Laboratories.
While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods
as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered
proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods (vide Section 21 of
the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of
an action for infringement.
In the above case the Court further pointed out:
In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity
between the plaintiffs and the defendant's mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is
an imitation, no further evidence is required to establish that the plaintiffs rights are violated. Expressed in another way, if the essential features of the
trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the
packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor
of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is
sufficient to distinguish his goods from those of the plaintiff.
According to Karly's Law of Trade Marks and Trade (9th edition paragraph 838):
Two marks, when placed side by side, may exhibit many and various differences but the main idea left on the mind by both may be the same. A
person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be
impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus,
for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the
idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade-marked goods, and relying,
as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of
dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.
Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted
with for reasons of their own.
It is, therefore, clear 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 and if so, whether they are
of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall
similarity to the registered mark as would be likely to mislead a person usually dealing with one, to accept the other if offered to him. In this case we
find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not
identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one
arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm
house with a fence. The word ""Gluco Biscuits"" in one and ""Glucose Biscuits"" on the other occupy a prominent place at the top with a good deal of
similarity between the two writings. Anyone in our opinion who has a look at one of the packets to-day may easily mistake the other if shown on
another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the
plaintiffs' goods, he might easily mistake the defendants' wrapper for the plaintiffs' if shown to him some time after he had seen the plaintiffs. Afterall,
an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendants' wrapper is
deceptively similar to the plaintiffs' which was registered. We do not think it necessary, to refer to the decisions referred to at the Bar as in our view
each case will have to be judged on its own features and it would be of no use to note on how many points there was similarity and in how many
others there was absence of it.
The two marks are POLO and C& C CLASSIC POLO and POLO is common and prominent feature. When a person of average intelligence and
imperfect recollection he gets the first impression that both are nearly resembling so closely that both may be coming from the same company. He
tends to ignore other word C&C CLASSIC, which are otherwise also disclaimed, and retains the word POLO. The goods are common. A consumer
will not go into the microscopic inspection of the word or label unless he is a very careful person. The appellant's registered marks having transborder
reputation and POLO as a formative word being used in conjunction with other words will put the consumers into the state of wonderment whether
the first respondent's goods are coming from the trade source of the appellant or the appellant being a reputed garment manufacturer and trader might
have expanded its business in India and the first respondent's goods have some connection with the appellant. Regarding the observation of the second
respondent about the onus of the appellant, it is the settled principle that the onus of proving that the mark applied for is distinctive and the applicant is
entitled to get the mark registered is on the applicant and if the applicant discharges the onus then it shifts on the opponent to prove reputation of its
mark. In this case the applicant/first respondent had failed to discharge the onus on it.
The thrust of appellant has been on transborder reputation as it is widely recognized throughout the world for excellence in creation of
contemporary clothing designs and as such would qualify for protection under the Paris Convention. It would be appropriate at this stage to refer to so
the following cases on transborder reputation:
In the case of N.R. Dongre v. Whirlpool Corporation (supra) it was held as under:
15 The knowledge & awareness of a trademark in respect of the goods of a trader is not necessarily restricted only to the people of the country
where such goods are freely available but the knowledge and awareness of the same reaches even the shores of those countries where the goods
have not been marketed. When a product is launched and hits the market in one country, the cognizance of the same is also taken by the people in
other countries almost at the same time by getting acquainted with it through advertisements in newspapers, magazines, television, video films, cinema
etc. even though there may not be availability of the product in those countries because of import restrictions or other factors. In today's world it
cannot be said that the product and the trademark under which it is sold abroad, does not have a reputation or goodwill in countries where it is not
available. The knowledge and awareness of it and it's critical evaluation & appraisal travels beyond the confines of the geographical area in which it is
sold. This has been made possible by development of communication systems which transmit & disseminate the information as soon as it is sent or
beamed from one place to another. Satellite Television is a major contributor of the information explosion. Dissemination of knowledge of a trademark
in respect of a product through advertisement in media amounts to use of the trademark whether or not the advertisement is coupled with the actual
existence of the product in the market.
In J.N. Nichols (Vimto) limited v. Rose and Thistle and Anr. 1994 PTC 83 (para 20), a Division Bench of the Calcutta High Court observed that
the use of the trade mark does not necessarily imply actual sale of the goods bearing such a mark. Use can be in any form. Mere advertisement
without having even the physical existence of the goods in the market can be said to be a use of the mark. In Consolidated Foods Corporation v.
Brandon & Co. Private Ltd. it was found that the petitioner was the proprietor of the trade mark 'Monarch' in respect of its food products in several
countries of the world and its products were advertised in American Magazines which had large circulation in several countries including this country.
Though the goods of the petitioner had not been imported continuously, the petitioner's right to use the trademark 'Monarch' in this country in
preference to the adoption of the mark by the respondent's was recognized on the strength of the advertisement. Accordingly, the order of the Joint
Registrar of Trade Marks granting registration of the mark in favour of the latter was set aside by the Bombay High Court and while doing so it held
as under :
...Not only that the petitioner corporation's products are widely advertised in American Magazines of common interest, which have a fairly large
circulation in this country, but even these products have been imported into this country though not quite continuously. There can, therefore, be no
doubt that the petitioner corporation has a right to the use of the mark 'Monarch' in preference to the respondent company which sought to introduce
that mark for the first time in 1951.
Similarly the High Court of Australia in the The Seven Up Company v. O.T. Limited and Anr. (1947) 75 CLR 203 held as follows:
...In my opinion the effect of these cases is that in the absence of fraud it is not unlawful for a trader to become the registered proprietor under the
Trade Marks Act of a mark which has been used, however extensively, by another trader as a mark for similar goods in a foreign country, provided
the foreign mark has not been used at all in Australia at the date of the application for registration. But the position is different if at date the mark has
become identified with the goods of the foreign trader himself or by some importer or in some other manner. The court frowns upon any attempt by
one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign
country. Therefore ceases upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of
the woods of the foreign trader in Australia. It is not then the mark which another trader is entitled to apply to register under the Trade Marks Act
because it is not his property but the property of the foreign trader. The registrar is entitled to refuse to register the mark for such goods. If it has been
registered the court may rectify the register on the ground that the mark is wrongly entered on the register. Further, if at the date of the application for
registration, the mark of the foreign trader, although it has not been used in Australia, has nevertheless become associated in the minds of the
Australian public with his goods because it has been advertised in publications which have circulated extensively in Australia or in some other manner,
the registrar is entitled to refuse to register the mark for such goods because it is likely to deceive. If it has been registered the court may rectify the
register on the ground that the mark is wrongly entered on the register.
This Court in Apple Computer Inc. v. Apple Leasing & Industries 1992 (1) Arbitration Law Reporter 93 at 137 while dealing with the question of
overseas reputation of a trade mark in respect of a product held as follows :
...In other words, it is not necessary in the context of the present day circumstances, the free exchange of information and advertising through,
newspapers, magazines, video, television, movies, freedom of travel between various parts of the world, to insist that a particular plaintiff must carry
on business in a jurisdiction before improper use of it's name or mark can be restrained by the court. Similarly, I am also in agreement with the view
expressed regarding the meaning of goodwill in passing-off cases. In passing-off cases, the main consideration is the likelihood of confusion and
consequential injury to the plaintiff, and the need to protect the public from deception, deliberate or otherwise. Where such confusion or deception is
prima facie shown to exist, protection should be given by courts to the name or mark or goodwill of the plaintiff. The reason why all traders and
manufacturers of goods, and providers of services, wish to protect their name and build up their name is that they want their name or market to have
an impact upon anyone who has need of their goods or services. The impact may take diverse forms, but one of them would certainly be that a name
or mark would recall to the mind of a potential consumer or user of such services, the source from where the goods originate, or the person who
provides the services. This is the impact of advertising and publicity by whatever means including word of mouth, and the build-up of reputation. It
would not be right for courts to permit the persons who have spent considerable time, effort, money and energy in building up a name sufficient to
have an impact to lose control over such an impact by improper use of the very same or colourably similar name by another unauthorisedly or even
dishonestly.
To the similar effect is the decision of the Bombay High Court in Kamal Trading Co., Bombay and Ors. v. Gillette U.K Limited, Middle Sex,
England 1988 PTC 1 wherein it was laid down as follows:
...It is necessary to note that the goodwill is not limited to a particular country because in the present days, the trade is spread all over the world and
the goods are transported from one country to another very rapidly and on extensive scale. The goodwill acquired by the manufacturer is not
necessarily limited to the country where the goods are freely available because the goods though not available are widely advertised in newspapers,
periodicals, magazines and in other medias. The result is that though the goods are not available in the country, the goods and the mark under which
they are sold acquires wide reputation. Take for example, the televisions, and Video Cassette Recorders manufactured by National, Sony or other well
known Japanese Concerns. These televisions and V.C.Rs. are not imported in India and sold in Open market because of trade restrictions, but is it
possible even to suggest that the word 'National' or 'Sony' has not acquired reputation in this country. In our judgment, the goodwill or reputation of
goods or marks does not depend upon it's availability in a particular country.
Extra territorial reputation of a mark was also recognised in the matter of Vitamins LD's Application for Trade Mark 1956 R.P.C. 1. In that case
the respondent applied for registration of mark ""Pabalate"" in respect of pharmaceutical substance. This was opposed by the appellant, an American
Corporation, on the ground that the said mark stood registered in their favour in various countries and the same was advertised extensively in Medical
Journals, which had circulation in United Kingdom as well. The American Company however, did not have any user of the trade mark in United
Kingdom as no sale of the goods had been made under the said mark by them in that country. Despite the lack of user in England it was held that the
application of the respondent should not be permitted to proceed having regard to the fact that the advertisements of pharmaceutical substances were
reaching in that country. In this regard it was observed as follows:
...Having regard to the fact that the evidence discloses a genuine business on the part of the Appellants in their country of origin, and that
advertisements of such are reaching this country and appearing in libraries or places of reference to which medical men may resort, it seems to me
that I am bound to consider the possibility that, with the passage of time, some conflict may occur between the use of the mark by the present
Respondents and the advertisement and user of the mark overseas by the present Appellants. Having regard to the international character which
medicine and the allied sciences have assumed and increasingly assumed over the last two decades, it seems to me that the Court must be particularly
careful to see that in exercising it's discretion under the Act the public interest is not in any way imperiled. For my part I am not satisfied that, in
allowing to be used by the manufacturers in this country as a brand name for a pharmaceutical substance a word which is in fact used by an
American Corporation in respect of the same material and advertised in journals, which on the evidence are received into this country and referred to,
the public interest will be best served by permitting registration. Accordingly, on both those grounds it seems to me that it is my duty to indicate that in
the light of the fuller consideration which the matter has received in this Court the application should not be permitted to proceed.
At this stage we may refer to the animated cinema characters ""Mickey Mouse"" and ""Minni Mouse"" invented by Walter E. Disney which have
become extremely popular. They are known world over. The popularity is acquired mostly through Motion Pictures which have great impact on the
audience. It was because of this popularity that registration of marks 'Mickey Mouse' and 'Minni Mouse' in respect of radio receiving sets
manufactured by a trader, namely, Radio Corporation Property Limited were refused to be registered by the Registrar of Trade Marks even though no
registration had been obtained in Australia by the inventor and creator of animated cinema characters in respect of the words 'Mickey Mouse' and
'Minni Mouse' as trade marks. But in Great Britain and other countries the words were registered as trade marks for Motion Pictures. This decision of
the Registrar of Trade Marks was upheld by the High Court of Australia in Radio Corporation Proprietary Ltd. v. Disney and Ors. 1937 CLR 448, on
the ground that the words were so closely associated with the respondent/opponent, that their use by the appellant/applicant was calculated to deceive
and cause confusion in trade and public mind. The names 'Mickey Mouse' & 'Minni Mouse' were held to be associated or transfixed in the public mind
with the respondent. The world wide fame and popularity of the names 'Mickey Mouse' and 'Minni Mouse' is due to the tremendous impacts that films
have on the minds of the public. Television has a similar effect on the viewers and so have the advertisements in magazine periodicals, newspapers
etc. having world wide publication. Today advertisements in respect of goods and the trade marks under which they are marketed in one country are
taken cognizance of in other countries. Business reputation is gained by the companies even in countries where their product is not used and is merely
known through advertisements.
Thus a product and it's trade name transcends the physical boundaries of a geographical region and acquires a transborder or overseas or
extraterritorial reputation not only through import of goods but also by it's advertisement. The knowledge and the awareness of the goods of a foreign
trader & it's trade mark can be available at a place where goods are not being marketed and consequently not being used. The manner in which or the
source from which the knowledge has been acquired is immaterial.
The objection of the appellants based on non-user of the product of the first respondent under the trade mark 'WHIRLPOOL' in India therefore,
does not appeal to us. Besides, it is not a case where the goods of the first respondent have not been imported in this country. The respondents have
asserted that the goods under the trade mark 'WHIRLPOOL' were imported in India by the American Embassy & U.S AID office New Delhi.
The appellant has filed Annexure A-9 to A-11 containing copies of advertisements published in the reputed magazines such as Esquire of December,
1975, March 1976, August, 1976, September, 1976, April, 1977, Gentlemen's Quarterly of March, 1976, September, 1976, Summer 1976, March, 1977
and advertisements in Indian newspaper/magazines/website such as Business today, Indus-League, DNA (Daily News & Analysis), India Today,
Visual Communication Journal, Scents & Sensibility, etc. where references to POLO mark of the appellant have been made. Dissemination of
knowledge of the trade mark POLO in respect of garments through these advertisement amounts to use of the trade mark whether or not the
advertisement is coupled with the actual existence of the garments in the market. The appellant is the registered proprietor several trade marks with
POLO formative in different classes in India and the mark POLO had not been used as a trade mark before it was so used by the appellant.
The next issue is that the adoption of trade mark by the first respondent is dishonest and malafide and it has not failed to prove its ownership
thereof. As already stated that the appellant is the registered proprietors of the trade marks, including POLO in India before the first respondent
applied for registration of its trade mark proposed to be used. If an applicant for registration intends to adopt and use the trade mark it applies to the
Registry of Trade Marks for conducting official search to ensure that no mark conflicting to the proposed mark is registered or pending registration
and after receiving nil report from the Registry, applies for registration and such action taken by the applicant proves its honest and bonafide adoption
of the mark. In the present case no such search report is made and the first respondent has not explained the justification of its selection of the mark.
It is not the case of the first respondent that it was not aware that trade mark POLO is in existence and in use. In cases where the applicant did not
give plausible grounds for selecting the trade mark, the Courts have drawn inference that the adoptions were dishonest and malafide. Recently, this
Appellate Board in the case of Needle Industries (India) Ltd. (supra) held the mark has not acquired any distinctiveness and the adoption of the mark
by the first respondent being dishonest, the rights under Section 18 of the Act is also not available to the first respondent. The Appellate Board in para
14 observed as under:
As decided by the Division Bench of the Madras High Court we agree to hold that the appellant's gds fall under class 26, a well known mark and
the use of the same mark for goods falling under class 23 would lead to confusion. Here we find it worth to extract some portion of the judgment of
the Division Bench of the Madras High Court in Needle Industries (India) Limited, Chennai v. Sanjay Jaiswal and Ors. 2002 (24) PTC 646 (DB) for
better appreciation of the arguments of the appellant and for conclusive finding in determining the dispute before us.
In paras 22 and 23 page 652, the learned Judges have observed:
In this case, there can by no doubt whatsoever that the mark used by the defendants is a mere copy of the plaintiff's mark. The mere addition of
the name of the defendants as manufacturer or stockists, does not in the least make a difference to the average purchaser who looks at the mark
'Pony' and label and would assume that the sewing threads sold by the defendants emanates from the same source as the needles manufactured by
the plaintiff, needless threads being related goods sold across the same counter. The confusion or deception in the case is not merely likely, but almost
certain, having regard to the manner in which the mark and the label had been copied by the defendants.
The defendants have offered no explanation whatsoever for the adoption of this mark. It is not a mark invented by the defendants. It is evident
that the second defendant having been the dealer of the plaintiff, being familiar with the mark and being will aware of the enormous goodwill attached
to that mark, had sought to ride piggyback on the good will at the cost of the plaintiff. The defendants' conduct is not one which can be regarded as
bona fide. The adoption of the trade mark by the defendant was deliberately and consciously done with a view to profit from the goodwill earned by
the plaintiff for the mark and label. The fact that the mark has been registered in favour of the first defendant for sewing threads recently does not
make any difference, as registration of the mark in a different class is not by itself a complete defence in an action for passing off. While such
registration may be permissible, the registration does not confer immunity against an action for passing off.
From the above extract, it is clear that the Division Bench has come to a conclusion that the appellant has made out a prima facie case. With due
respect to the learned Judges we agree with their views and hold that the appellant as prior user in point of time have valid rights than that of the first
respondent.'
We hold that the adoption of the mark by the first respondent cannot be said to be honest and bonafide especially when it was aware of the
existence of the well reputed mark of the appellant. It does not appear from the order of the second respondent that the first respondent has proved its
ownership over the impugned mark. We have not taken into account the voluminous documents pertaining to media coverage filed by the first
respondent as they pertain to the period after the date of filing of application for registration and hence not relevant in deciding this appeal.
In view of the above, the appeal has to succeed and we, accordingly, allow the appeal, and set aside the order dated 01.06.2006 passed by the
Assistant Registrar of Trade Marks, Chennai and allow the opposition No. MAS-111156. There shall be no order as to costs.