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Judgment
S. Usha, Technical Member1. The appellants are engaged in the business of manufacturing and marketing of plywood, decorative and industrial
laminates, black boards, shuttering plywood, boards and plywood for marine use and teak ply all being goods included in class 19. The appellants had
adopted the trade mark ""Duro"" and had applied for registration of a label mark consisting of the word ""Duro"" under application No. 501968 dated
8.12.1988 claiming user since 1.10.1987 under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act). The said application
was advertised in the Trade Marks Journal No. 1140 dated 1.12.1996 at page 1249.
The second respondent herein had filed their notice of opposition objecting to the said application for registration. The second respondent in their
notice of opposition had averred that they are engaged in the business of manufacturing and selling PVC doors and windows, etc. and are the
registered proprietors of the trade mark ""Duroplast"" being used since 1987. They also stated that by extensive use and wide publicity the mark
Duroplast"" is exclusively identified and associated with them. They further stated that the registration of the impugned mark which is deceptively
similar to their mark was likely to cause confusion and deception and thus was prohibited for registration under Section 11 of the Act. They based
their objections under Sections 9,11,12 and 18 of the Act.
The appellant herein in reply to the notice of opposition filed their counter statement denying the various averments. They also contended that they
are registered proprietors of various trade marks consisting of the word ""Duro"" as prefix namely ""Duroply, Duroboard, Duromac and Duroderby"" and
they have been using the same since October 1987. The appellant also stated that the second respondent's user was subsequent to their user.
After completion of the formal procedures the Assistant Registrar set down the matter for hearing. The Assistant Registrar allowed the opposition
and rejected the application for registration as per the provisions of Section 9 of the Act. The Assistant Registrar held that the impugned mark was
highly descriptive and was devoid of any distinctiveness as the user was hardly for a period of one year.
Aggrieved by the said order, the appellants are before us on appeal.
We have heard Ms. Mousmi Chatterjee, Counsel for the appellant and Mr. Ajay K. Gupta, Counsel for the respondent at the Circuit Bench sitting
at Kolkata on 5.9.2006. The appellant has also taken out an application in M.P. No. 68/2005 to stay the operation of the order dated 10.05.2005 of the
first respondent.
The learned Counsel for appellant mainly contended that the trade mark ""Duroply"" was registered as early as 1968. The counsel further contended
that they were registered proprietors of various trade marks with ""Duro"" as a prefix. He also submitted that the second respondent was using the
trade mark only from the year 1987 whereas their user was since the year 1968. The counsel submitted that as the goods were different, the trade
channel was also different and as such there was no possibility of confusion or deception.
The appellant pointed out to the finding of the Assistant Registrar that the word ""Duro"" is a Spanish word which means hard and denied the same
and stated that it was not descriptive as held by the Assistant Registrar in his order. The appellant submitted that as per the provisions of Section 9 of
the Act, the impugned mark shall be registered as it had acquired distinctiveness by long user.
The appellant relied on various judgements in support of his contentions. He placed reliance to the judgment in Goddfrey Philips India Ltd. v. Girnar
Food & Beverages (P) Ltd. To support the contention that a descriptive trade mark was entitled to protection if it has assumed secondary meaning
when it identifies with a particular product or being a particular source.
The Appellant also brought to our notice to the finding of the Assistant Registrar in the order, in opposition No. CAL 2627, and submitted that each
case should be decided on the facts of each case as was held by the Apex Court in the earlier judgments.
The appellant relied on the judgment in (SO Vishnudas Trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd., to support the claim
that as the goods were different they were entitled for registration.
Based on observations made in the above judgments and on the facts of the case, the appellant prayed that the appeal be allowed.
The learned Counsel for second respondent drew our attention to the Trade Mark Journal advertisement where the impugned mark was
advertised. The user claimed in the said application was since 1.10.1987. The learned Counsel for the second respondent further submitted that it was
clear that the mark was used only from the year 1987 and as such the argument advanced by the appellant that they have been using the mark since
1968 is false. The appellants have not produced any evidence to prove that they had been using the impugned mark earlier to 1987.
The learned Counsel for the second respondent drew our attention to para 6 of the notice of opposition wherein they had stated that the mark was
not distinctive and was prohibited for registration under Section 9 of the Act. He also referred to the findings of the Assistant Registrar in Opposition
No. CAL-2627-wherein it was stated that ""Duro"" was Spanish word which means ""hard"" and that the opponents (in opposition No. CAL-2627) can
have no exclusive right.
The second respondent also brought it to our notice the Trade Mark Journal advertisement published in Trade Mark Journal No. 1092 dated
1.12.94 in page No. 1289 wherein the appellants have consented for the condition of disclaimer of the word ""Duro"".
The second respondent relied on the judgment in S.P. Chengalvaraya Naidu (dead) by L. Rs. v. Jagannath (dead) by L.Rs. and Ors. in support of
his contention that the appellant had not produced any documentary evidence to prove their user. The Apex Court in the above case held that ""a
litigant who approaches the Court, is bound to produce all the documents executed by him which are relevant to the litigation. If he withholds a vital
document in order to gain advantage on the other side then he would be guilty of playing fraud on the Court as well as on the opposite party.
Based on the above submissions the second respondent prayed that the appeal be dismissed.
The appellant in reply to the submissions made by the second respondent contended that they had not consented for the disclaimer of the word
Duro"" as contended by the second respondent and that it was imposed by the Assistant Registrar. He further submitted that the appellants have been
using the trade mark ""Duro"" for several years and prayed that the appeal be allowed and the application be proceeded for registration.
We have carefully considered the arguments of both the counsel and the pleadings on file.
The main issue that arises for consideration in the instant case is whether the mark has acquired distinctiveness to qualify for registration. The
mark is seen to have been applied on 8.12.1988 claiming user from 1.10.1987. The use of the mark for a period of one year and more prior to the filing
of the application for registration of the mark could not have acquired any distinctiveness. On perusal of sales figures and the bills and vouchers, it is
seen that the appellant has used since 1964 various marks with Duro as a prefix and ""Duro"" word per se has been used since 1.10.87 as stated in the
application. To qualify for registration under Section 9 of the Act, the mark should have acquired distinctiveness by long user. The mark should be
distinctive of the goods of the proprietor or should be capable of distinguishing the goods of the proprietor from the other proprietors. We are of the
opinion that the requisites for qualifying for registering under Section 9 of the Act is lacking as the user of the mark is only for a period of one year
and more. We, therefore, are of the view that the finding of the Assistant Registrar to this issue sustains.
Next coming to the issue of similarity, as the marks are not distinguishable, the appellant's adoption is not bona fide. Section 11 of the Act prohibits
registration of a mark which would be likely to deceive or cause confusion. Here, the marks are deceptively similar and the same cannot be registered
as it would cause confusion and the prohibition under Section 11 of the Act is attracted.
We also observe that as both the appellants and the respondents goods fall under the same class of goods under Schedule IV, and as such the
trade channel and consumers are also same. The impugned mark being deceptively similar to that of the respondent's mark especially considering the
fact that both are in respect of the goods of the same description and as such the registration of the impugned mark is in total violation of Section 11 of
the Act. We, therefore, have no hesitation in agreeing with the finding of the Registrar of Trade Marks in this regard. The appellants though are the
registered proprietors of various trade marks containing the word ""Duro"" as a prefix, but at the same time keeping in mind the descriptive meaning of
the word ""Duro"" it cannot be allowed to be monopolised by anyone especially for the goods in question. The main requisites required for qualifying
under Section 9 of the Act are grossly lacking in view of the user of the mark being for a limited period of 14 months only. Similarly the consumers,
trade channels and selling outlets for both products are same; there is every likelihood of confusion and deception being caused to attract
disqualification under Section 11 of the Act. Since the mark is not distinctive there cannot be a ground in favour of the appellant to claim proprietor of
the mark applied for and as such right under Section 18 of the Act is not available.
In view of the above, we have no hesitation in holding that the Registrar was right in rejecting the application for registration and allowing the
opposition. Hence, the appeal is dismissed with no order as to costs. As the main appeal itself has been dismissed, M.P. No. 68/2005 does not survive
and becomes infructuous.