Shiva Tobacco Company vs Registrar Of Trademarks And Ors.

Sanjeev Kumar Chaswal, Technical Member

The present appeal has been filed by the appellant against the Order dated 18/12/2012 passed by the Registrar of Trademarks, in Opposition No. MAS - 61467 to Application No. 721429 in Class 34, whereby the appellant's opposition has been dismissed and the respondent No. 2's application for registration of trademark under No. 721429 has been ordered to proceed for registration. Facts of the case are as under:-

a) The appellant, Shiva Tobacco Company is a Partnership firm consisting of Mr. Rattan Lal Aggarwal & Mr. Rajinder Mohan as its partners. The appellant is having its office at Novelty Road, Ambala City, Haryana.

b) The respondent No. 2 filed an application for registration of the trademark BENGAL TIGER (Label) in respect of Safety Matches under No. 721429 in Class 34. The said label mark also contains Device of man caricature. It is apparent that the respondent No. 2 is not the proprietor of the impugned mark under section 18 of the Act and was not entitled for the discretion of the Registrar of Trademarks.

c) The said application was advertised before acceptance in the Trademarks journal No. 1268 dated 01.04.2002. The advertisement of application before acceptance itself evident of the fact that the registration of the impugned application was considered to be prohibited registration under section 9 & 11 of the Trademarks Act, 1999. The said application was subject to the following disclaimers:-

"Registration of the mark shall not give any right to the exclusive use of device of human caricature and the word Bengal and other descriptive matters appearing in the label"

The two labels shall be used as one trademark.

d) The appellant herein preferred notice of opposition dated 5.7.2002 on the basis of its proprietary right in the trademark TIGER in respect of chewing Tobacco on account of priority in adoption, long, continuous and established use thereof since the year 1955 and also on the basis of registrations of the trademark TIGER (Labels) under Nos. 167909, 256652 & 299271 all in Class 34, which was filed by the appellant against application No. 721429 in Class 34 and the said opposition proceeding was designated as MAS - 61467.

e) As the essential feature of the impugned label mark in the said label have been disclaimed. After deletion of the said disclaimed portions what is left out in the label mark is the Device of TIGER & the word TIGER. The objections were raised by the appellant under sections 9, 11 & 18 of the Trademarks & Merchandise Act, 1958.

f) The counter statement was filed in the matter by the advocates of the respondent No. 2. A copy of the counter statement was served by the Registrar of Trademarks on the appellant. The appellant filed evidence in support of the opposition by way of an affidavit. Subsequently copy of the affidavit of Mr. A Ethiraj was filed by the respondent No. 2 as evidence.

g) The arguments were heard by the Registrar and the order was reserved, but not passed. The matter again came up for fresh hearing before the Registrar of Trademarks, Chennai on 20/06/2012. The arguments were heard by the Registrar of Trademarks, Chennai on 20/06/2012.

h) The Registrar of Trademarks, Chennai passed an order dated 18/12/2012, the Registrar has disallowed the opposition of the appellant under No. MAS - 61467 and has ordered that the application of the respondent No. 2 under No. 721429 in Class 34 to proceed for registration. The appellant aggrieved with the said order dated 18/12/2012 passed by the Dy. Registrar of Trademarks, Chennai the present appeal has been filed.

The notice of the present petition was sent by this Board to the respondent No. 2 Despite service, the respondent No. 2 has not appeared in the matter and nor has filed its counter.

Arguments of the applicant:-

It is argued by the counsel for the applicant that the respondent no. 1 has failed to deal with the objection of the appellant under Section 9 of the Act. There is no evidence on record to establish distinctiveness of the impugned mark with the applicant/Respondent, it is submitted by the respondent no. 1

The Registrar ought to have held that since the adoption of the impugned mark on the part of respondent No. 2 itself was dishonest, as such no length of user could have purified the mark in question that defect. Moreover, there was nothing on record to show that the use of the impugned mark by the applicant.

3.1 It is submitted that the respondent no. 1 has erred in holding that the competing marks are not similar. Though essential feature of the competing marks is TIGER though word per se & device are similar. Further there is a disclaimer on the word BENGAL, which has been added as prefix with the mark TIGER for the respondent No. 2's application under No. 721429 in Class 34. Thus, the Registrar erred while not comparing the competing marks as per the law laid down by Hon'ble Supreme Court in Parle Case reported as AIR 1972 SC 1359

3.2 It is alleged that the respondent no. 1 erred in law and the test applied by the Ld. Registrar in arriving at the said conclusion is contrary to the test laid down by the Hon'ble Supreme Court of India and different High Courts for the comparison of competing marks. The respondent no. 1 ought to have considered the essential features of the competing marks and considered the phonetic, visual and structural similarity of competing marks from the point of view of an ordinary person of average intelligence. AIR 1970 SC 146 & AIR 1960 SC 142.

3.3 It is also stated that the respondent no. 1 erred while not taking into consideration the fact that essential features of appellant's registered trademark Nos. 167909, 256652 & 299271 is TIGER/SHER (word &/or device) and the essential feature of the respondent No. 2's application TIGER (word & device). The essential features of the competing marks are thus identical and/or deceptively similar. The registration and use of the impugned label mark titled BENGAL TIGER (with the disclaimer to the word BENGAL) on the part of the respondent No. 2 is bound to cause confusion and deception in the minds of unwary class of purchasers.

3.4 But the respondent no. 1, while not considering that the conduct of the applicant in adopting the impugned mark was dishonest. The Registrar did not consider the concept of cognate and allied goods, the goods of the same description and also the principle of spilling over of reputation of a trademark to other goods, which pass through the same channels, displayed side by side on the same counters and purchased and used/consumed by the same class of purchasers.

3.5 The Registrar failed to appreciate that the appellant is the registered proprietor of the trademark TIGER and the registration of the impugned mark in the name of the applicant/respondent No. 2 for the impugned goods is barred under section 12 of the Trademarks Act 1999. The Ld. Registrar erred by not appreciating that the adoption of the impugned mark on the part of respondent No. 2 itself was dishonest, malafide and tainted.

3.6 The Registrar has failed to consider the appellant claim of having adopted the impugned mark on to the year 1955, whereas the applicant has claimed user 09.04.1990 which is much subsequent to the year 1955. The said finding given by the Ld. Registrar on the basis of the so-called evidence of subsequent use of the mark TIGER on the part of respondent No. 2 is bad in law. The subsequent use of the mark cannot prove by any iota of imagination that the adoption of the mark was honest, no case of bonafide adoption and/or concurrent use was pleaded or proved on record.

3.7 The Registrar failed to appreciate that the words like LION & SHER are good trademarks and the opponent is holding registrations of the said trademarks for the last several decades and has been using the same since the year 1955. The Ld. Registrar erred in holding the applicant is entitled to get registration of the impugned mark under section 18(1) of the Trademarks Act 1999.

3.8 The Registrar erred while holding that the applicant is the proprietor of the impugned mark in view of the facts and circumstances of the case. The Ld. Registrar has miserably failed to discharge its onus under section 9, 11, 12 & 18 of the Act. The Ld. Registrar erred while not allowing the objections raised by the appellant under sections 9, 11 (a), 11(e), 12(1) & 18 of the Trade & Merchandize Marks Act.

The concept of concurrent user has been misinterpreted by the Registrar thereby Ld. Registrar failed to appreciate that under the provisions of section 12 of the Act, the applicant was required to prove the honest concurrent use of the impugned mark. There is nothing on record to show honest concurrent use of the impugned mark on the part of the applicant The Registrar ought to have held that the registration of the impugned mark in the name of the respondent No. 2 is barred under section 12 (1) of the Act as the appellant is holding registrations of the trademark, mentioned above.

The appellant counsel has referred the citations to buttress his pleadings and arguments in the matter, the applicant relies upon in support his submissions the applicant counsel has further referred the citations in the instant matter

In the matter of 2008(38) PTC 49 Delhi DB. The Division Bench of Hon'ble Delhi High Court held that the mark RASMOLA is deceptively similar to the trademark HAJMOLA. It was held that when the adoption of the mark is dishonest no length of user can cure that defect. It was further held that subsequent adoption, even if honest, has to be injuncted. and in case of fraudulent conduct of the defendant, delay and concurrent use are insignificant.

In the other matter - 2004 (29) PTC 314 (IPAB)- The appellate Board has held that deceptively similar marks and goods of similar description. Registration refused. Finding was given by the Registrar below that the applicant cannot claim proprietary right in the trademark 'APPU' which has been taken by him from the Asian Games logo. The said finding was not upset by this Hon'ble Board.

In the other matter of PTC (Suppl.)(2) PAGE 31 DELHI, the defendant was restrained from using the mark RAJANI in respect of PAN MASALA in view of the plaintiffs rights in the trademark RAJNI for CHEWING TOBACCO. Chewing tobacco and pan masala were held to be the goods of the same description/cognate and allied goods. It is pertinent to mention here that the said judgment has been relied upon by this Appellate Board in various cases including in PRESTIGE case reported as 2007 (38) PTC 876.

In the other matter AIR 1974 DELHI 12 the mark VIJAY SUDARSHAN was held to be deceptively similar to SUDARSHAN. It was held that no one can use someone else's trademark by adding any prefix or suffix thereto.

In the other matter of 2007(34) PTC 392 DELHI. The mark UDTA PANCHHI it was held to be deceptively similar to the trademark PANCHHI. The competing goods were chewing tobacco. The goods in question are sold, purchased and consumed by persons of average intelligence.

In the other matter of 2009 (40) PTC 417 DELHI DB The use of the mark HARA QILLA (word per se & device) was restrained in view of the proprietary rights of the plaintiff in the trademarks LAL QUILLA (word per se & device), GOLDEN QILLA (word per se & device). NEELA QUILLA (word per se & device). It was further held that the goods in question are sold, purchased and consumed by persons of average intelligence.

In the other matter of AIR 1988 BOMBAY 167 Use of the mark BAJAJ was restrained for KITCHEN utensils and appliances in view of the plaintiff's rights in the trademark BAJAJ in respect of electric lamps, lighting, fittings, accessories, stoves, toasters, mixers, grinders, pressure cookers and kitchen wares.

In the other matter of 2011 (45) PTC 52 (DELHI), The registration of the mark COBRA was refused in respect of voltage stabilizers in view of the opponent's rights in the said trademark for electrical cables.

In the other matter of the Appellate Board Order No. 29 of 2014 passed by this Hon'ble Board in ORA/159/2010/TM/CH. The registration of the trademark TIGER (label) in respect of snuff was removed from the Register by allowing the appellant's rectification petition on the basis of its rights in the trademark TIGER for chewing tobacco.

In other case of in Rati Traders v. K.P. Pouches Pvt. Ltd. 2004 (25) PTC 254 (MP) it was observed that in between two parties claiming actual user as against the prior user, the party who is prior in point of time will have the advantage over the other. Even in regard to the prior registration of the trademark, as against prior user, the action of the later will prevail.

In our view while going through the issue in hand we are of considered view the Ld. Registrar has decided this matter in very lackadaisical manner without going in to issue in detail rather decided without considering any of the factors in detail It is abundant duty cast on the part of the Registrar to determine each issue in detail by focusing on the question of likelihood of confusion whether the purchasing public would mistakenly assume that the applicant's goods originate from the same source as, or are associated with, the goods in the cited registrations. The Registrar has to make determined on a case-by-case basis.

That Registrar has rendered his decision in the instant case in a very mechanical manner without going detail in the subject matter, the Registrar contention by merely saying that both parties are having different area of operation, the may not create space for the later adopter to use the mark without any hindrance and claim a subsequent right over the similar trademark and further when the usage of the mark is in dispute, as such prior user of the mark has much better right then the later adopter, later adopter cannot invoke plea of the honest concurrent use to take advantage its dishonest adoption and usage under section 12 of the act, when particularly the applicant has failed to prove his honest adoption, in the present appeal the Registrar did not put light on the fact how the applicant claimed honest adoption and its usage by raising the plea honest concurrent user. In the present appeal the Registrar has failed to devolved light on the honest concurrent use of the applicant as such, we are of the opinion the Registrar is erroneous in invoking the honest concurrent use in favour of the applicant/respondent.

In our considered view, while deciding the cases of oppositions the Registrar has to keep certain these factors surrounding to "likelihood of confusion" that are paramount in nature and has to be kept in mind, while deciding the cases in relation to these issues of disputes, the Registrar has a limited jurisdiction solely related prior use or likelihood of confusion in relation to the trademark dispute that limited scope is also required to be determined judiciously while arriving on conclusion by Ld. Registrar as to whether there is "likelihood of confusion" between trademark and another trademark in the minds of the consuming public exists or not.

In our considered opinion we are of the view that these factors are to kept in mind as standard while deciding such disputes, in our view these above standards are paramount factors and are requisite in arriving the conclusion of "likelihood of confusion" between marks for the Ld. Registrar are detailed below:

(1) The extent of similarity between marks;

(2) The extent of similarity between of the goods or its services

(3) The extent of relationship between the parties' channels of trade;

(4) The reputation of the prior mark;

(5) The classes of prospective purchasers;

(6) The nature and extent of any actual confusion;

(7) The intent in adopting alleged similar mark; and

(8) The strength of the Applicant mark

(9) The number and nature of similar marks in use on similar goods.

We are fully further agree with the legal propositions referred by the applicant in support of the above case, in the case of Ciba Limited v. M. Ramalingam & S. Subramaniam, (supra) the duty of the Court must always be to protect the public irrespective of what hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive of cause confusion. In another case of Rati Traders v. K.P. Pouches Pvt. Ltd., (supra) it was observed that in between two parties claiming actual user as against the prior user, the party who is prior in point of time will have the advantage over the other. In another case of S. Syed Mohideen v. P. Sulochana., (supra) It was had held that the scheme of the Act is such where rights of the prior user are recognised superior than that of the registration and even the registered proprietor cannon disturb interfere with the rights of the prior user.

In our view "likelihood of confusion" or prior use are the paramount issues and to be decided invoking standards stated below in the nature of such disputes, wherein the question of "likelihood of confusion" or prior use is matter of dispute and the Ld. Registrar has to invoke these paramount factors along with other peripheral factors and it has to be applied as basic standard in arriving on conclusion of each case of dispute separately.

Keeping in view of the extensive submissions made herein above by the counsel for the applicant along with supporting judgments, we are of the considered opinion that the registration impugned label mark consisting of words "Bengal Tiger" along with device of Tiger and human caricature for the goods "safety matches under application No. 721429 in class 34 is granted contrary to the provisions of Sections 9, 11, & 18 of under the Trade Marks Act, 1999 and Rules. The appeal filed by the appellant is thus to be allowed. Thus, the opposition is allowed, consequently, the application filed by respondent no. 2, under no. 721429 in class 34 for the goods "safety matches from the Trademark Register. As both set of goods are available in the same shop. The purchasers are same. If the mark is allowed, it would create confusion and do carter

In view of the above submissions, the impugned order passed by the Registrar of Trademarks, Chennai in Opposition No. MAS-61467 is set aside and the present appeal is allowed by dismissing the respondent No. 2's application under No. 721429 in Class 34 Bengal Tiger" along with device of Tiger and human caricature for the goods "safety matches, we further direct the Registrar of the Trademarks to cancel the registration certificate granted to applicant's impugned label mark consisting of words "Bengal Tiger" along with device of Tiger and human caricature for the goods "safety matches under application No. 721429 in class 34, as the respondent no. 2 is not the proprietor of the mark applied for.

The copy of the order be sent to the Registrar of Trademarks in order initiate necessary steps for removal of the trademark No. 721429 Bengal Tiger" along with device of Tiger and human caricature in Class 34 for the goods "safety matches. No Costs