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Judgment
S. Usha, Technical Member
This appeal has been filed against the order of the Deputy Registrar of Trade Marks passed on 29.06.05 allowing the opposition No. CAL-5917 and
refusing the application No. 667703 in class 25.
The appellant herein filed an application for registration of a label mark consisting of the words ""Kashmir Beauty Kalighat"" under application No.
667703 in class 25 on 31.05.1995 claiming user since 15.06.1990. The said application was advertised before acceptance with a disclaimer of the
words Kashmir, Beauty and Kalighat, respectively, in Trade Marks Journal No. V247 dated 16.05.2001 at page 702.
The third respondent filed notice of opposition opposing the registration of the application on various grounds - that the opponents have been using
various trade marks namely, Kashmir, Kothari Kashmir and Kashmir Beauty since the year 1975; that due to extensive use and wide publicity their
goods bearing the impugned trade mark has acquired reputation and goodwill among the public; that by such reputation there was every possibility of
confusion and deception being caused and as such prohibited registration under sections 11 and 12 of the Trade Marks Act, 1999 (hereinafter referred
to as the Act); that the applicant's adoption itself was dishonest and so cannot claim any proprietary right; that the impugned mark was prohibited
registration under sections 9, 11, 12 and 18 of the Act.
The appellants filed their counter statement denying the various allegations made in the notice of opposition and stated that they had been using the
impugned trade mark since 1985 continuously; that they are holding copyright registration; that the appellants and the respondent No. 3 were known to
each other; that the respondent No. 3 had recently adopted the trade mark.
The learned Registrar heard and passed the impugned order on the grounds that the word Kashmir Beauty is not registrable as Kashmir is an
important geographical place and Beauty is descriptive to the quality of the goods, the word ""Kashmir"" can never attain distinctiveness irrespective of
the amount of use and hence rejected under Section 9(1)(a) of the Act; the appellants have admitted that the respondent No. 3 is using the trade mark
'Kashmir Seconds' and that both are known to each other and the Registrar had allowed the opposition and refused registration in exercise of his
discretionary powers under Section 18(4) of the Act.
Aggrieved by the said order, the appellants filed the above appeal for setting aside the order dated 29.06.2005 of the Deputy Registrar and to allow
the application to proceed for registration.
The appellants filed the above appeal on various grounds and the respondents had filed their counter statement denying the various allegations and
averments made in the grounds of appeal. The main ground taken by the appellant was that the respondent No. 3 never used the trade mark 'Kashmir
Beauty'. The above fact has been also approved by the Hon'ble High Court of Calcutta in the civil suit. In an opposition to the appellant's copyright
registration also the appellant were successful in obtaining the copyright registration certificate. The trade mark being a composite label mark was
erroneously not considered by the Registrar while passing the order. The Registrar erroneously passed the order without considering the fact that the
appellant was the prior user of the trade mark. The Registrar went wrong in passing an order relying on Shimla Trade Mark which was a totally
different mark. The appellants prayed that the order be set aside and the appeal be allowed.
The respondent No. 3 filed the counter statement stating that the Registrar was right in passing the impugned order. The trade marks ""Kashmir"",
Kashmir Beauty"" are being used by the respondent No. 3 since 1975. Apart form this trade mark, the respondent No. 3 also adopted various other
trade marks namely ""Challenge"", ""Kothari"", ""Himawooly"" since 1975 and had been using the same without any interruption. The appellants have
obtained orders in their favour in the civil suit by producing fabricated documents before the Hon'ble High Court. The respondent No. 3 denied all the
material allegations made in the memo of appeal and prayed that the appeal be dismissed.
The matter came up for final hearing on 19.06.2008 at the Circuit Bench at Kolkata. Shri Sayantan Basu learned Counsel appeared for the
appellants and learned Counsel Shri Jishnu Saha appeared on behalf of the respondent No. 3.
The learned Counsel for the appellant contended that they had been using the trade mark since 15.06.1990 and had applied for registration on
31.05.1995 and thus by uninterrupted use of five years the mark had acquired distinctiveness and was capable of being registered. The appellant also
stated that in the suit filed by the respondent No. 3 the injunction was granted and the same was confirmed by the Hon'ble Supreme Court. He drew
our attention to the order passed by the Copyright Board dismissing the removal application filed by the respondent No. 3. He further submitted that
even though they had claimed user since 1975 no proof of user since 1975 was filed. He further stated that the suit was filed in June, 2001 and
subsequently the respondent No. 3 has applied for registration of the copyright in July, 2001 claiming user since 1975 which is not a bonafide act. He
also submitted that the cartons produced do not bear the trade mark 'Kashmir' or 'Kashmir Beauty' and in some of the cartons it is only 'Kashmir
Seconds' which only refer to the quality of the goods and does not refer to the brand name. In this regard, he pointed out to the observations made by
the High Court in the suit that the respondent No. 3 has not produced any material to prove user.
The learned Counsel also submitted that in the affidavit of evidence filed in support of opposition, the sales figures were given for all the products
whereas in the Auditors Certificate at page 295, sales figures were the same but for the products bearing the trade mark 'Kashmir' also was given and
that there was no clarification in this regard before the Registrar. He pointed out to the price list from page 102-103 and submitted that no trade mark
was found in the list.
The leaned counsel for the appellant relied on various judgments in support of his appeal. He referred to (i) 1999 PTC 104 (9) - A.T. Raja, Madras
v. Mangalore Ganesh Beedi Works, Mysore in support of his contention that registration of the mark of a city is not prohibited under Section 11 of the
Trade and Merchandise Marks Act, 1958; (ii) E. Griffiths Hughes Ltd., v. Vick Chemical Co., - Registrar has no power to dissect the mark and then
conclude that the some parts were distinctive and some were not; (iii) PTC 2004 (28) 653 (IPAB) Pondicherry Textile Corporation Limited v.
Assistant Registrar of Trade Marks - a geographical name indicating geographical origin is not prima facie capable of distinguishing, it may be
considered for registration upon evidence of acquired distinctiveness.
The learned Counsel for the appellant also referred to Section 9(1)(b) of the Act and submitted that the goods were not exclusively manufactured
in Kashmir and so did not describe the name of the place.
The learned Counsel for the respondent No. 3 vehemently opposed the arguments of the appellant's counsel. The counsel clarified that sales
figures were only for the trade mark 'Kashmir' given in affidavit of evidence. He further submitted that they had been carrying on business for a long
time and that the mark was registered as early as 1971 itself and drew our attention to the trade mark registration certificate (Trade Mark Kothari
Hosiery Kalighat).
The learned Counsel also referred to Section 9(2) and Section 11 of the Act and submitted that if the impugned mark was allowed to be registered
possibility of confusion would definitely arise among the public. He further submitted that 'Kalighat' was the place where goods were manufactured.
In reply to the argument that the price list did not bear the trade marks the counsel for respondent submitted that it only referred to the quality of
goods.
The goods being the same and the trade channel same possibility of confusion and deception would arise. The counsel further submitted that the
appellants had just copied the label of the respondent No. 3 (the two horn shaped semi-circle on either side) and there was no reason given for such
an adoption. The counsel also submitted that the appellants were well aware of the mark of the respondent No. 3 mark as they were erstwhile
employers of the respondent No. 3.
The respondent No. 3 therefore concluded that the impugned trade mark cannot be registered for the reason that no explanation was given for the
adoption; that the applicant/appellant was aware of the opponent's/respondent's reputed trade mark and was trying to earn profit out of the same; that
marks being similar there was every possibility of confusion being caused and that the appeal be dismissed.
The learned Counsel for the appellant in rejoinder to the reply arguments made a few submissions. He submitted that the sales figures mentioned
were not given in the civil suit whereas the same has been mentioned here after the order in the suit only to overcome the order in the civil suit as
observations were made to that effect in the order in the suit. He also pointed out that though the respondent No. 3 claimed user since 1975 the sales
figures were only from the year 1984 whereas nothing was stated as to the availability of the sales figures for the year 1976-1983. The appellant also
submitted that he was not employed in the firm of respondent No. 3 and only his father and brothers were employed. It was false to say that the
appellant was aware of the impugned trade mark even before adoption.
After carefully considering the arguments of both the counsel and after going through the documents we are making our observations in the
paragraph below.
On perusal of the entire records we find that the respondent No. 3 has been using various trade marks like Kothari, Kothari Hosiery Kalighat,
Challenge, etc. whereas no documents have been produced to prove the use of ""Kashmir"" or ""Kashmir Beauty"". The only document filed to show that
Kashmir"" as a trade mark is the copyright registration certificate. The application has been made in the year 2001. Apart from this document, there
are few others which bear the word ""Kashmir Seconds"" which refers to the quality of the goods. We also observe that the Hon'ble High Court of
Calcutta has also given a finding to this effect stating that the respondent No. 3 has not produced any material to prove user whereas the appellants
have sufficient material. On perusal of the cartons above, we are of the view that there is no possibility of confusion being caused as there is no
deceptive similarity between the two marks. Here the mark is a composite mark consisting of geographical name, it may be registered upon proving
distinctiveness, if not distinctive, may be considered for registration upon acquiring distinctiveness by use. Under Section 9(1)(b) a mark which
indicates geographical origin is an absolute ground for refusal of registration. But if a mark has acquired distinctiveness as a result of use it can be
registered. Here ""Kashmir"" does not designate geographical origin of clothing goods and so not attracted under Section 9(1)(b). Here again, it is not
only the word Kashmir which is sought to be registered, but also the whole composite mark which is a label mark. We should consider whether from
the name and description of the goods to which it is applied, it is clear that any ordinary person would understand, that the name could not be intended
to designate the place where the goods were produced. When a label mark is registered as a whole, such registration cannot possibly give any
exclusive right to use any particular word in that label but the mark as a whole is to be taken into account. The appellant has applied for registration in
the year 1995 claiming user since 1990 and thus we are of the opinion that the mark has acquired distinctiveness by use for a period of five years. In
our view, therefore, the trade mark ""Kashmir Beauty Kalighat"" could be registered.
We deem it appropriate impose condition here in this case, to the effect that appellant/applicant is directed to remove the horn shaped two semi-
circles on either side of the trade mark ""Kashmir Beauty Kalighat"" and also to make the three words written in the same font and size and not like the
one which is already applied for. We, therefore, direct the appellant to take out necessary application before the Registrar of Trade Marks for
carrying out the necessary changes as stated above following the proper procedure.
Accordingly, the appeal is allowed in the above terms and the order of the Deputy Registrar of Trade Marks dated 29.06.05 is set aside. No order as
to the costs.