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Judgment
S. Jagadeesan, J
The appellant has preferred this appeal against the order of the Assistant Registrar of Trade Marks, New Delhi, dated 6.3.1998, rejecting the
application of the appellant.
The appellant filed an application No.429975 on 20.11.1984 for registration of the trade mark in the form of label consisting of the word
'GOLDCON-D' in respect of infant foods including Glucose in class 5 of the Fourth Schedule of the Rules framed under the Trade and Merchandise
Marks Act, 1958 (hereinafter referred to as the Act), claiming user since 27.5.1984. The said application was advertised before acceptance in the
Trade Marks Journal No.935, dated 16.5.1988 at page 195. The first respondent gave notice of their intention to oppose the registration of the
impugned mark on 14.7.1988 on the ground of its violative of the provisions of the said Act. On 20. 3.1989, the appellant filed her counter statement
and also the grounds in rebuttal to the objections of the first respondent. On 28.8.1989, the first respondent filed their evidence in support of their
opposition. The appellant also filed evidence in support of the application. After the completion of the formalities prescribed under the statute, the
matter was listed for hearing on 4.3.1997. After hearing the learned counsel on either side, under the impugned order, the Assistant Registrar of Trade
Marks, rejected the application of the appellant on the ground that the impugned mark of the appellant is similar to that of the registered trade mark
'GLUCON-D' of the first respondent. The goods are also of the same description and as such, the prohibition imposed under Section 12(1) of the Act
is attracted. So far as the bar under Section 11(a) of the Act is concerned, the Assistant Registrar held that the registration of the impugned mark
would cause confusion in the trade and among the public as both the marks are identical and the goods are also of the same description. The Assistant
Registrar further held that the appellant cannot claim proprietorship of the impugned mark as she has copied the well known trade mark of the first
respondent. Aggrieved by the same, the appellant preferred the appeal before the High Court of Delhi at New Delhi, in CM(M) 424/1998.
3 . During the pendency of the appeal before the High Court of Delhi, a petition in CMP 1686/2000 was filed to implead the second respondent. As
there was no objection, the said application was ordered on 29.9.2000 on the ground of the assignment in favour of the second respondent.
4 . By virtue of Section 100 of the Trade Marks Act, 1999, now the appeal stood transferred to this Board and numbered as
TAM/223/2004/TM/DEL.
5 . We have heard Shri S.K. Bansal, the learned counsel for the appellant and Shri A.R. Lall on behalf of the respondents.
6 . The learned counsel for the appellant contended that the impugned mark of the appellant is 'GOLDCON-D' which is a part of their trading style,
namely, M/s. Goldcon Products. Hence, the appellant has not copied the registered trade mark of the respondents. Further, there is a clear distinction
between the word GOLDCON and GLUCON. Both visually and phonetically, there is a lot of difference between the two words and as such, in no
sense, it can be said that the marks are identical and the registration of the impugned mark would cause confusion. Further, it was contended that the
suit filed by the respondent was dismissed for default as early as on 17.5.1988 and the respondents did not take any steps for restoration of suit which
impliedly mean that the respondents have no case. The respondents in support of their opposition filed only affidavits in TM 5 and no evidence was
produced to establish their use. Hence, it cannot be said that the registered mark of the respondents had attained any distinctiveness as contemplated
under Section 9 of the Act or attained any reputation by use. When it is not established that the registered mark is in use, the registration of the
impugned mark will in no way cause any confusion or deception. Hence, the findings of the Assistant Registrar is not supported by any material on
record and consequently is liable to be set aside.
7 . On the contrary, the learned counsel for the respondents contended that the appellant though claimed the user from 27.5.1984, there is absolutely
no evidence to establish their use except the affidavit in TM 6. Apart from that, it is also contended that there is no dispute with regard to the
registration of the mark of the respondents. When that be so, the burden is on the appellant to establish that the registration of the impugned mark will
in no way cause any confusion or deception. When the description of goods are same, the Assistant Registrar found that the marks are also similar. A
mere comparison of both the marks will make it clear that both are visually as well as phonetically similar. He also relied upon the judgments :- (1) in
the case of Fena Private Limited v. Nipa Chemicals Pvt. Ltd. and Ors. reported in 2004 (28) PTC 371 (;2) in the case of Amritdhara Pharmacy v.
Satya Deo Gupta reported in (AIR) 1963 SC 44;9 (3) in the case of K.R. Chinna Krishna Chettiar v.. Sri Ambal & Co. reported in AIR 1970 SC 146
and (4) in the case of Corn Products Refining Co. v. Shangrila Food Products Ltd. reported in AIR 1960 SC 142.
By way of reply, the learned counsel for the appellant contended that the appellant is using the impugned mark for more than 20 years and as such,
her mark has also attained distinctiveness by now and this factor may also be taken into consideration.
We have carefully considered the above contentions of both the counsel.
To find out the similarity of the marks, the well laid principle is that we have to approach it from the point of view of a man of average intelligence
and imperfect recollection. To such a man, the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably
likely to cause a confusion between them. It is well known that the question whether the two marks are likely to give rise to confusion or not is a
question of first impression and it is for the court to decide that question. The question of similarity of words Goldcon -D, the impugned mark and the
registered mark of the respondents Glucon-D is a question of first undoubtedly are so similar that it is likely to cause confusion in the buying public and
deceive them. Unless a stress is given to the letters 'L' and 'D' in the impugned mark Goldcon, the pronounciation is like that of the registered mark
Glucon. When the goods are also of the same description, the Courts are expected to be a little more careful in finding the similarity. Too much minute
differences cannot be taken into consideration to find out the distinction between the two marks because in deciding the question of similarity between
the two marks, we have to keep in mind a man of average intelligence and of imperfect recollection. The resemblance between the two marks must
be considered with reference to the ear as well as the eye and ocular comparison is not always a decisive test. Therefore, even if there be no visual
resemblance between the two marks, that does not matter when there is close affinity of sound between the words which are distinctive features of
the mark. In fact, the Assistant Registrar has found both the marks are similar only on the above principles. Hence, we do not find any infirmity in the
said finding of the Assistant Registrar. When marks are identical and similar, one cannot have any doubt that the registration of the impugned mark
will cause confusion and deception among the trade and as such Section 11(a) of the Act is a bar for registration of such marks.
Even with regard to the goods, there is no dispute that the goods of the appellant as well as the respondent are of the same description. The
appellant's goods are infant food including Glucose. While the respondents' registered trade mark is in respect of Glucose (for food), flour and
preparation made from cereals, bread, biscuits (not for animals), pastries, and confectionery (not medicated), milk, chocolates, etc. Both the goods are
almost of the same nature and the composition and same functions. The trade channel is also the same. Hence, the prohibition under Section 12(1) of
the Act is also attracted.
Though the appellant claimed proprietorship of the impugned mark contending that the same is a part of their trading style M/s. Goldcon Products,
there is absolutely no explanation from them for adding the letter 'D' along with their Trade Mark. The respondents' reputed mark Glucon-D is well
known and by adding the letter 'D' with the impugned mark, undoubtedly, the appellant wants to take the benefit of the reputed mark of the
respondents. Hence, as rightly held by the Assistant Registrar, the appellant cannot claim the proprietorship of the impugned mark.
Coming to the last contention of the learned counsel for the appellant that the appellant had been using the impugned mark for 20 years, we are of
the view that the use of the impugned mark subsequent to filing of either the application or the filing of the opposition cannot be taken into
consideration because the appellant is taking a risk once the opposition is filed. Her mark may be accepted or the opposition may be upheld. In such
circumstances, a mere continuous use is of no help. Further, when the appellant is using the mark by virtue of the stay obtained in the High Court, she
cannot take advantage of the same and that use also cannot be considered for her benefit. The use will always pertain to the date of the application.
Hence there is no substance in the said plea of the learned counsel for the appellant. Consequently, the appeal is devoid of any merit.
For the above reasons, the appeal is dismissed However, there will be no order as to costs.