Ram Gopal Soap Factory vs Godrej Soaps Ltd. And Ors.

Raghbir Singh, J

Application No. 431608 for registration of trade mark "CHABI" in Devanagari script was filed on 28.12.1984 by S/Shri Manoharlal and Tirath Das under the name and style of M/s. Ram Gopal Soap Factory, Jaipur, in respect of specification of goods which stand on amendment as washing soap for sale in the districts of Jaipur and Pali in the State of Rajasthan. The applicant claimed user of the mark applied for since 1978. The said application was advertised in the Trade Marks Journal No. 1008, dated 1.6.1991, at page 307. Respondent No. 1, M/s. Godrej Soaps Ltd., Bombay, gave notice of their intention on 28.8.91 to oppose the registration of the mark advertised as aforesaid on the ground of violation of Sections 11(a), 12(1) and 18(1) of the Trade and Merchandise Marks Act, 1958. Shri Tirath Das contested the notice of opposition to the application on 18.12.1991 in his counter. Shri Tirath Das, in his counter statement disclosed himself as the former partner of M/s. Ram Gopal Soap Factory, the factory in whose name the application for registration of the mark applied for had been made. The opponents filed their evidence by way of affidavit dated 5.1.1993. The applicant also filed its evidence in support of its application on 10.5.1993. The opponents did not file any evidence in reply.

The Assistant Registrar, took up the matter for consideration on 28.9.1993. The appellant/applicant was represented by their learned Counsel and none appeared from the side of the respondent/opponents before the Assistant Registrar. The Assistant Registrar, while examining the application in terms of Section 12(1), noticed that the opponent is the registered proprietor of trade mark "CHAVI" brand with the device of key under No. 4759 as from 4.9.1942 in respect of all kinds of toilet soaps, lime juice, glycerine and other glycerines (toilet preparations), glycerine soaps and other toilet substances. The respondent/opponents are also registered proprietors of another trade mark under No. 314821 as of 14.5.1976 in respect of soaps, scouring powder and detergents (not for use in industrial and manufacturing processes). The Assistant Registrar found the 'CHAVI' brand with the device of key held by the respondent/opponent under No. 4759, dated 4.9.1942, as almost similar to the impugned mark CHABI"" in Devanagari script.

He found that under the said mark of the respondent/opponent, the goods covered are inter alia toilet soap while the goods under the mark applied for are 'washing soaps'. Keeping in view the nature and substances of the goods, the purpose for which it is used and the trade channels through which it is bought and sold, the goods under the mark applied for viz., washing soaps were held to be the goods of the same description as those covered under the aforesaid registration of the respondent/opponent, viz., 'toilet soaps'. Similarly the Assistant Registrar held the impugned mark "CHABI" in Devanagari script to be deceptively similar to the opponent's trade mark key under No. 314821. Thus, he concluded that both the conditions required for invoking and prohibition under Section 12(1) are met. The Assistant Registrar observed that the applicant is not entitled for registration under Section 12(3) of the Act since any registration under that Section is to be based on the honest and concurrent use of the mark applied for. He found that there is no honesty on the part of the applicant in adopting and using the mark applied for viz., "CHABI" in Devanagari script which is already registered in the name of the respondent and has already acquired reputation in the minds of the purchasing people with the impression that the case therein are related to the opponents only. Similarly, in view of the fact that the mark applied for is identical to the registered trade mark of the opponent which had been successfully used and thus had acquired substantial reputation by the name of the opponents, the applicant fails to establish any claim for proprietorship of the mark applied for under Section 18(1) of the Act.

The Assistant Registrar did not feel persuaded with the submission of Shri Tirath Das who had filed counter statement that since the mark applied for had come to his share, he is the rightful proprietor of the mark. The application had been filed by Shri Manoharlal and Shri Tirath Das as partners of the firm under the name and style of M/s. Ramgopal Soap Factory, Jaipur, and there is nothing on record to indicate that Shri Tirath Das is the successor in interest and hence held that the application deserves to be refused under Section 18(4) of the Act, in view of the fact that the applicant is not the proprietor of the mark applied for.

The present appeal has been filed by Shri Tirath Das as the proprietor of the mark and as partner of Ramgopal Soap Factory, Jaipur. He submits that the Assistant Registrar has wrongly decided the matter under Sections 12(1), 12(3) and 18(1) and further having identified Section 11(a) as one of the provisions of the Act for examination of the application, he ignored to pass any orders under that Section.

The appeal was taken up for consideration by the Board in its sitting held at Ahmedabad on 26th July, 2004. Shri R.R. Shah, the learned Counsel for the appellant/applicant and Shri Y.J. Trivedi appeared for the respondent/opponent.

The learned Counsel for the appellant drew our attention to the sale figures of the applicant more specifically under the brand "CHABI" and submitted that the mark of the appellant which is already in use since 1978, has established a position for itself in the districts of Jaipur and Pali.

Whereas, the goods of the respondent under its trade mark "CHAVI" is nowhere to be found in these districts. He drew our attention to the annual sale figures of the respondent under the brand "CHAVI" and submitted that having given the figures for the years 1987 to 1992, in terms of metric tons, the respondent had nothing to mention the corresponding figures in terms of value of the goods. It indicated that the respondent opponent had something to hide.

It is settled position in law that in order to meet the test of Section 12(1) of the Act, the impugned mark has to meet all the tests in terms of the identity of the marks and the description of goods vis-a-vis the opponent's mark. We find in the instant case that the applicant's mark has miserably failed on both counts. The mark "CHABI' both phonetically and visually being similar to a great extent, is deceptively similar to the registered mark CHAVI" of the respondent/opponent. "CHABI" and "CHAVI" written in Devanagari script make these more deceptive in appearance since the two vowels and two consonants used in both the marks are exactly the same except for one consonant which though might have a little bit of dissimilar appearance in English, in Devanagari, is written in a manner giving a deceptive appearance of more or less of an exact similarity. Again, in the matter of phonetics, both appear to be belonging to the same family with only a marginal difference of that, in the language of linguistics one is having softer tone than to the other. Again in many regions of the country, in vernaculars, people do pronounce "CHABI" as "CHAVI" and vice versa.

The respondent/opponent's mark "CHAVI" was registered in 1942 and had been in use since then. The applicant, knowing well the position, started selling his goods as claimed by him from 1978 under a deceptive and similar mark "CHABI" knowing well the position in the market, thus, disentitling himself for the benefit of honest concurrent use under Section 12(3) of the Act. The Assistant Registrar, without making a specific reference to examination of the mark under Section 11(a), has at places in his order given his observations about the confusion and deceptive similarity of the marks and has rightly held that the impugned mark is confusing and deceptively similar. In view of that, we feel that the impugned mark does not muster the scrutiny of Section 11(a) as a whole. The status and the position of the impugned mark as it is in view of the scrutiny thereof at the annuls of Section 11(a), Section 12(1) and 12(3) as observed above and the respondent/opponent having the registered proprietorship of its identical marks since 1942, there is nothing left for the appellant to fall back upon the benefit of Section 18(1) in the matter of claiming proprietorship over the mark.

In view of the clear position as it is of the impugned mark, there was nothing for the Assistant Registrar to exercise his discretion under Section 18(4) of the Act.

In view of the above, the appeal is dismissed without any order for the costs.