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Judgment
S. Usha, J
All these four appeals arise out of the order dated 19.9.2009 dismissing the oppositions and allowing the applications to proceed for registration as
per the procedure.
OA/12/2010/TM/MUM:
The respondents herein filed an application for registration of the trademark Maggi in Class-11 in respect of electric fans, heater, geysers, bulbs, tube-
lights, torch, exhaust fan, emergency light, transformer, electric fittings, stabilizer, regulator, electric hot plate for cooking, fridge, air conditioner, water
cooler, room cooler. Electric components, gas lighter and other heating, lighting and cooking apparatus and utensils under No. 52532. The application
was filed on 10.01.1990 claiming user since January, 1984. The said application was advertised in the Trade Marks Journal No. 1129 dated
16.06.1996. This was opposed by the appellants herein on various grounds.
OA/13/2010/TM/MUM:
The respondents herein filed an application for registration of the trademark Maggi under No. 522533 in class-21 in respect of Domestic utensils,
household articles, plasticwares, glasswares vegetable cutters, thermowares, flower plates, buckets, plant sets, vacuum flasks, water filters, casserolls,
caterers (food) brushes, cup, saucers all being goods included in class 21 in January, 1990 claiming user since January, 1984. This was advertised in
the Trade Mark Journal No. 1129 dated 16.6.1996. This was opposed registration by the appellants.
OA/14/2010/TM/MUM:
The respondents herein filed an application for registration of the trademark Maggi in January 1990 under No. 522531 in class-7 in respect of
washing machine, grinding machine, mixer, juicers and slicer attachments and parts thereof claiming user since January 1984. The same was
advertised in the Trade Marks Journal No. 1129 dated 16.06.1996. The appellants herein opposed the registration.
OA/19/2010/TM/MUM:
The respondents herein on 22.03.1994 filed an application for registration of the trademark Maggi under No. 622735 in Class 8 in respect of hand
tools and implements (hand operated) and cuttery claiming user since August, 1992 which was advertised in the Trade Marks Journal No. 1299 dated
21.07.2003. The same was opposed by the appellants herein.
All the four matters were heard together and a common order was passed. The objection under Sections 9 and 11 of the Act was rejected as the
possibility of confusion among the public was less. Though the marks were identical the goods were different. The objection under Section 11(2) was
not accepted as the opponents (appellants) have not proved that their trademark is a well known trademark and therefore objection under Section
11(10) was also not accepted. The respondent's adoption is not in bad faith. The objection under Section 11(3) is acceptable as the applicants
(respondents) trademark is disentitled to protection in a court of law. Origin of goods leading to confusion or deception is likely between the competing
goods as the trademarks are identical.
The objection under Section 18(1) was not accepted as the application was filed in January 1994 and March 1994 claiming user since 1984 and
1992 respectively. The appellants though have their trademark registered since 1970 have not proved the use whereas the respondents have proved
their user since 1984.
The appellants have claimed their trademark Maggi as a well known mark for which no court order has been filed. In the suit filed by the appellants
against the respondents no interim orders have been granted by the Court and hence, the objection under Section 11(3) is rejected. The appellants
have not proved their user whereas the respondents have proved their use since 1984 and 1992.
The goods and the purchasers are different. There is no dishonesty in the respondents adoption. The opposition was therefore dismissed and the
application was allowed to proceed to registration.
The appellants are therefore before us against the above order by appeal.
The appellant is engaged in the business of manufacturing and selling various culinary products such as noodles, sauce, soups, etc. under the
trademark ""Maggi"" in various international markets. The word Maggi was derived from the surname of Julius Maggi founder of the business of Nestle
Group carried on from 1886 upto 1947 under the name Maggi Alimantana SA which emerged with the appellant in 1947 and became Nestle
Alimantana SA. The word Maggi is not a dictionary word. The word Maggi connotes and denotes the goods of the appellants exclusively. The
appellants are the prior user of the trademark Maggi. In view of the distinctiveness acquired in the trademark Maggi, it has been associated only with
the appellants goods and with none else.
The appellants products Maggi were sold in Switzerland as early as 1886 and in France, Austria and Germany since 1887, in South East Asia
countries since 1936, in Singapore since 1939 and in Malaysia since 1960. The trademark Maggi features into the publication titled ""World's Greatest
Brands"" (1996 Edition) published by 'Inter Brands' which ranked Maggi amongst world's top 50 brands. The appellants have sold Maggi products in
India since 1974 and are the registered proprietors of the trademark Maggi.
The appellants' trademark Maggi is registered under No. 267814 dated 02.11.1970 in class-30 in respect of farinaceous products, cereals and
preparations made from cereals, rice and rice preparations, all for human consumption, flour, pastry, bread, biscuits and cakes (not animals)
preparation included in class-30 for making puddings, sweets, candy, honey and artificial honey, sugar, chocolates, cocoa, ice cream, sauces, tea and
tea extracts, coffee and coffee extracts, coffee essences, vinegar, flavourings (other than essential oils) condiments (for food), spices (other than
poultry spices). They have also obtained registration of the trademark Maggi under No. 267813 in Class 29 in respect of meat and meat products
including meat extracts, fish and other crustacean and moluscous animal products, prepared foods consisting of vegetables, fruit, meat and animal
products all the aforesaid being food products included in class 29, jams, fruit preserves and vegetable preserves, eggs, milk and other dairy products
(for food) edible oils and edible fats, marmalades soups and preparations included in class-29 for use as sandwich spreads, bouillon.
The trademark Maggi has been extensively advertised worldwide including India through various medias at large financial expenses without
territorial limitation. The advertisement and promotional expenses incurred by the appellant in its trademark Maggi for the year 1984 was Rs. 5 crores
and for the year 2007 was in excess of Rs. 37 crores.
On account of such extensive advertisement and sales promotion campaigns undertaken, the same has acquired formidable goodwill and
reputation, the public identify and associate the goods with the appellants only. The annual sales turnover runs to Rs. 6 crores in the year 1984 and
increased to Rs. 673 crores in the year 2007. On account of prior adoption, long and continuous use the trademark Maggi has acquired enviable
goodwill and reputation among the public and trade. The goodwill and reputation is the result of decades of huge financial investment. The 3rd
respondent ignored the evidence filed by the appellants while passing the impugned order.
The 3rd respondent has given a finding that the user claim is not clear as the appellants are not firm in their claim. This is arbitrary and contrary as
the affidavit filed by the appellants are clear and the claim is clearly stated as 1974 and the sales figures were also given from the period 1974 as well
the advertisement expenses from the period from 1978. The annual report for the period from 1974 were not considered by the 3rd respondent. All
these evidence were neither denied nor disputed by the 1st respondent and therefore, there was no reason for the 3rd respondent to discard the
evidence. The fact that Maggi is a well known trademark was not considered by the 3rd respondent. The 3rd respondent failed to consider the fact
that the appellants are registered proprietors of the trademark Maggi since 1916 worldwide and since 1970 in India.
In an identical matter where one M/s. Jain Ram Tradings had obtained registration of the trademark Maggi in class 29. The appellants filed a
rectification of the trademark. This Board had held that the appellants mark Maggi had acquired a wide reputation and the mark on the register is
likely to cause confusion and deception. This was brought to the notice of the 3rd respondent and the same was not considered.
The 1st respondent claims that the trademark Maggi was adopted in the year 1984, but no evidence was produced nor any reason given for the
adoption of the mark. The order passed by IPAB was placed before the 3rd respondent where it was held that the trademark Maggi is a well known
trademark. But, the 3rd respondent held that there is no order placed to prove that Maggi is a well known trademark.
The 3rd respondent has not given any valid reason for rejecting the objection under Section 11(3) of the Act except that no permanent injunction
was granted by the Hon'ble Delhi High Court in S. No. 1187/93 & S. No. 3047/96. As no final decision has been given by the High Court in the suit,
the finding of the 3rd respondent is erroneous.
The finding of the 3rd respondent that Maggi is a common surname as pleaded by the 1st respondent is not supported by them except for few
internet printouts of some users of Maggi in India. Internet download does not constitute commercial use of the trademark. The use claimed by the
respondent since 1984 is neither prior use nor recent use.
The 1st respondent i.e., the applicant Swaraj Industrial and Domestic Appliances Pvt. Ltd. is a company incorporated under the Companies Act.
The use claimed since 1984 was by a proprietor Mr. Rajesh Mehta trading as Supreme Electricals which was converted into a partnership firm by the
name of Essar Industries. There is no deed of assignment placed to prove the connection between the respondent and Essar Industries. This fact has
not been gone into by the 3rd respondent.
In report, the 1st respondent filed their counter statement. The stated that in view of the original and honest adoption and bona fide use established
the respondent is entitled to claim proprietorship under Section 18(1) of the Act. In 1982, M/s. Supreme Electrical original conceived and adopted the
trademark Maggi in respect of mixing and grinding machines for domestic use. By an assignment deed dated 20.09.1989 the business was assigned in
favour of M/s. Essar Industries which in turn assigned the business by deed dated 05.03.1993 to the 1st respondent.
The appellants on their own admission have stated that Maggi is a popular feminine name. They had also accepted that they are using the same in
respect of culinary products namely, soup and noodle.
The 1st respondent's trademark is a feminine name and is capable of distinguishing the goods from those of others in the course of trade. The
respondents trademark Maggi, by virtue of long and continuous use since 1984 has acquired distinctiveness. The use of the trademark Maggi by the
respondent is not likely to cause confusion and deception. The goods are different and therefore, the customers are not likely to be misled.
The trademark Maggi is used by many others in respect of various goods. The appellants alleged goods and goods covered under the present
application are not in common trade channel. There is no connection between the goods. Appellants have failed to prove that their trademark is a well
known trademark. The rest of the averments were denied by the respondents.
On completion of the pleadings, the matter was heard. In all the appeals, Mr. Hemanth Singh, learned counsel appeared for and on behalf of the
appellant and Mr. Poojari, learned counsel appeared for and on behalf of the respondents.
The learned counsel for the appellants submitted that there were four applications filed by the 1st respondent in classes 7, 8, 11 and 21. The user
claimed is since 1984. It is not clear as to how the respondent has claimed user since 1984 when they have not placed any evidence in proof of use.
The impugned order is passed in an arbitrary manner. The appellants use is insufficient and rejected the claim that their trademark is a well known
mark.
It becomes obligatory on the part of the Court to interfere in an order where the discretion has been exercised arbitrarily and capriciously or where
the order under scrutiny ignores the settled principles of law [vide: Laxmikant V. Patel v. Chetanbhat Shah AIR 2002 SC 275]
The counsel further submitted that they had clearly stated in their nature of opposition that they are the registered proprietors of the trademark
Maggi as of 1970 in India and earlier in other countries worldwide. The marks are identical and that the possibility of confusion is certain.
The respondents state that their predecessors had adopted the trademark Maggi in 1984. There is nothing stated as to how the present applicants
i.e., the respondents are claiming proprietorship.
The appellants adopted and used the trademark Maggi as early as 1886 outside India. They are the registered proprietors of the trademark in India
as early as 1970.
The respondents have not produced any evidence for the adoption of the trademark Maggi. It goes to say that the adoption is only to trade upon
the goodwill of the appellant. The respondents are subsequent users and their adoption is dishonest, for these reasons, the 3rd respondent is not the
proprietor and the registration ought not to be granted. The only defence of the respondent was that the goods are different.
The appellants had filed an interlocutory petition to take on record the additional evidence and the same was allowed and all evidence were taken
on record. In the various affidavits filed by one Mr. M.S.I. Lakdawala, Vice President (legal) and Company Secretary of Nestle India Ltd. and
Charles, Vice President of Societe Des Produits Nestle SA., the appellants have claimed user at least since 1986 and given the sales figures for the
period from 1986.
The respondents evidence - the first advertisement is of the year 1990 and not earlier.
The appellants in the affidavit of Ms. Vanita Gabriel, Constituted Attorney of Societe Des Produits Nestle SA have stated that the trademark
Maggi was adopted in the year 1883 by Mr. Julius Maggi. The word Maggi formed part of their corporate name as ""The Maggi Company"" (Maggi
Alimentane SA).
The trademark Maggi is a well known trademark. In the year 2001, the Readers' Digest Magazine had identified Maggi as a Super Brand. As
early as 1936, the appellants had registered their trademark in Philippines. At page 261 in the annual report of the company in the year 1974 where the
trademark Maggi was seen mentioned.
The two goods i.e., the appellants and the respondents' goods are found in the kitchen side by side. There is intimate and inseparable connection
between the goods. The food items and the kitchen-wares are available in the same shop. Therefore, there is trade connection between the goods.
They are allied and cognate goods.
The respondents manufacturing licence is issued in the name of M/s. Essar Industries which is valid from 30.12.1990. It is not clear as to the
connection between the respondents and M/s. Essar Industries.
The appellants relied on few judgments:
(1) N.R. Dongre v. Whirlpool Corporation I 1996 PTC (16) 583) - In the absence of any satisfactory explanation by the applicant as to how they
came to adopt the trademark, the adoption of the trademark cannot prima facie be regarded as honest.
(2) M/s. Hindustan Pencils Pvt. Ltd. v. M/s. India Stationery Products Co. AIR 1990 Del 19) - Adoption if not bona fide, the applicants' mark cannot
continue.
(3) Sunder Paramanand v. Caltex (India) Ltd. AIR 1969 Bom 24) - In an application for registration, the onus of proving that the mark is not
calculated to deceive or cause confusion lies on the 3 applicant. If the marks are identical for different goods, then the public who were aware of one
mark and then, if used by another would be made to think that the goods are from the same manufacturer even if the goods are different.
(4) Daimler Benz Aktiegesellschaft v. Hybo Hindustan AIR 1994 Del 239] - None should be continued to be allowed to use a world famed name to
goods which have no connection with the type of goods which have generated the worldwide reputation.
(5) Larsen & Tourbro Ltd. v. Lachmi Narain Traders & Ors. 2008 (36) PTC 223 (Del) (DB)) - Test of field of activity is no more valid question.
Question is one of real likelihood of confusion and deception among the consumers and the resultant damages.
(6) Sony Kabushiki Kaisha v. Mahaluxmi Textile Mills 2009 (41) PTC 184 (Cal) (FB)) - Even if the goods or services of the rival traders are different,
in our opinion, this factor alone would not altogether eliminate the possibility of confusion and deception. If a highly distinctive trademark is applied to a
class of goods which its proprietor does not deal with, consumers may always wonder as to whether the proprietors of the trademark have launched a
new product.
(7) Honda Motors Co. Ltd. v. Charanjit Singh 2003 (26) PTC 1 (Del))-The plaintiffs trademark Honda has acquired international repute, the use of an
identical trademark by the defendant is to acquire the benefit of its goodwill and reputation so as to create deception among the public.
(8) T.V. Venugopal v. Ushodaya Enterprises Ltd. 2011) 4 SCC 85) - Permitting a person to sell his product with the mark Eenadu would be
encroaching on the reputation and goodwill of the other person and this would constitute invasion of proprietary rights vested in the respondent
company.
(9) Societe Des Produits Nestle SA v. Jai Ram trading as M/s. R.K. Industries 2009 (39) PTC 514 (IPAB)) - The trademark Maggi has acquired
wide reputation among the public at large by sales and advertisement.
In reply, the learned counsel for the respondent submitted that they had been using the trademark Maggi since 1984. The rival goods are different.
The appellants in one place state that Maggi is an invented and coined word and in another place, state that it is a surname. The concept of well
known trademark was not present in the Old Act and the same does not apply in the instant case.
There is no instance of confusion and deception among the public and therefore, registration granted ought to be allowed.
(1) Jugmug Elec. Industries v. Telerad Pvt. Ltd. (IPLR 1977 73) - Difference in the nature of goods becomes material. If one trademark is used to
denote two entries which are not in common trade channel, then, even a common trademark is not likely to create an impression in the minds of the
customers that they are made by the same maker.
The counsel further submitted that they had given their sales turnover since 1986 which was Rs. 3,92,316/- and which increased to Rs. 34,44,000/- in
the year 2009. Their first invoice is of the year 1998 at page-46 (Exhibit 4) of the counter statement to the grounds of appeal.
(2) Bajaj Electricals Ltd. v. Metals & Allied Products [AIR 1988 Bombay 167] - Family name of defendant identical to trade name of plaintiff -
defendant using its family name as trading style but as trademark or trade sign - such user is not permissible.
(3) Consolidated Foods Corporation v. Brandon & Co. Private Limited [1961 BLR 612] - A trader acquires a right of property in a distinctive mark
merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade.
We have heard and considered the arguments of both the counsel and have gone through the pleadings and documents.
The impugned trademark is Maggi. The appellants mark is also Maggi. The impugned application for registration of the trademark Maggi is in
respect of various household articles falling in classes 7, 8, 11 & 21. For goods falling under classes 7, 8 & 11, the user is claimed since 1984 and in
class 21, the user is since 1992.
We shall first deal with the issue of proprietorship of the trademark Maggi. As per the provisions of Section 21 of the Act, the applicant must
prove that he is the proprietor of the trademark Maggi. On perusal of the impugned application, it is seen that all the invoices are in the name of
Supreme Electrical Appliances. It is not clear as to how he claims proprietorship of the trademark Maggi from Supreme Electrical Appliances. Though
this plea was raised in the affidavit of evidence, the respondent had not answered nor had they filed any evidence to prove the same.
The respondent on the other hand, has filed two assignment deeds before us. The appellants objected to filing of these documents at the appeal
stage without leave being obtained. We have looked into those 2 deeds (1) deed of assignment dated 20.09.1989 by Smt. Namrata Mehta of M/s.
Magnetic Controls in favour of Shri Rajnath S. Dubey and Shri Rajesh O Mehta of M/s. Essar Industries. This relates to assignment of the trademark
Sony. (2) Deed of assignment dated 05.03.1993 by Shri Rajesh O Mehta & Shri Rajnath S. Dubey of M/s. Essar Industries in favour of Shri Rajesh O
Mehta, Managing Director of Swaraj Industrial and Domestic Appliances. These two deeds were though objected to be taken on record by the
appellant, we looked into those documents to see if they would be relevant to decide this case on hand. In our view, these deeds were not relevant. If
we had decided or considered them to be relevant, we would have afforded an opportunity to the appellant to rebut the same.
In our considered view, the deed of assignment dated 20.09.1989 has no relevance to the case on hand. We do not find the name, Supreme
Electrical Appliances in any of these assignment deeds. It is worth quoting the observation of Lloyd Jacob, J. in 1956 RPC 1, In the matter of
Vitamins Ltd.'s Application for trademark at p. 12 and particularly the following,
A proprietary right in a mark sought to be registered can be obtained in a number of ways. The mark can be originated by a person or can be
acquired, but in all cases, it is necessary that the person putting forward the application should be in possession of some proprietary right which, if
questioned, can be substantiated.
In the case on hand, the applicant i.e., the respondent has failed to establish the proprietorship. Even assuming Shri Rajesh O Mehta was holding
charge either as a partner or as Managing Director or Proprietor, there is no linkage between the various firms. There is nothing to prove the link
between Supreme Electrical Appliances and the present applicant (respondent). The respondent has failed to satisfy the claim of proprietorship.
Now, we shall deal with the issue of adoption of the trademark. The respondent has no reason or explanation for the adoption of the trademark,
Maggi. The appellants have established their business under the trademark, Maggi in India and abroad. The appellants goods bearing the trademark
Maggi has thus acquired a good reputation and goodwill among the public and trade. The respondents adoption in such circumstances cannot be said
to be honest and it is only to trade upon the goodwill and reputation of the appellants.
As held in Eenadu case (cited supra), permitting the respondent to carry on the business under the trademark, Maggi would be approving their
dishonest and willful conduct. This would also amount to encouraging the respondent to practice fraud on the public. When the respondents have no
reason for their adoption, that such adoption or use shall not be allowed to be used or registered.
The next would be the issue of confusion and deception. The well settled proposition of law is that the onus to establish the fact that there will be
no confusion or deception among the trade and public if the mark is allowed to be registered would be on the applicant for registration. In this case, the
marks are identical. The goods are allied and cognate goods. The appellants goods are goods falling in classes 29 and 30 - food items. The
respondents goods are goods falling in classes 7, 8, 11 & 21 - electrical goods like, fans, light, etc. and household goods like, mixer, grinder, etc.
The appellants goods under the trademark Maggi are food, snacks items which are being purchased by common man. The household goods of the
respondents would make the common man to think that the goods emanates from the respondents source. This will lead the common man to associate
the household goods under the trademark Maggi with the Nestle Group i.e., the appellants. Therefore, we are of the opinion that if the application for
registration is allowed, it is likely to cause confusion and deception.
Even if we consider the fact that the goods are different as argued by the respondent (we do not accept this view), once it is decided that the
appellants goods bearing the trademark has acquired goodwill and reputation and the public associate those goods only with the appellants. Even
though the goods are different, the possibility of confusion is certain as the marks are identical. The appellants which is a large company with more
sources can expand its field of business. It is worth mentioning the observation of the Full Bench of the Hon'ble Calcutta High Court in Sony case
(cited supra)
xxxx
xxxx Even if the goods or services of the rival traders are different, in our opinion this factor alone would not altogether eliminate the possibility of
confusion or deception. If a highly distinctive trademark is applied to a class of goods which its proprietor does not deal with, consumers may always
wonder as to whether the proprietor of the trademark has launched a new product. The purchasing decision of the consumers may be determined by
this factor.
The burden of establishing proprietorship, user, the reasons for adoption and the likelihood of confusion and deception-all these lie on the applicant
for registration. The applicant i.e., the respondent though claims user since 1984, the first invoice is dated 1998 which is not that of the respondents. It
is in the name of M/s. Supreme Electrical Appliances, which is not clear as to how the respondent is connected with M/s. Supreme Electrical
Appliances. The respondent has no reason for the adoption of the trademark. If no reason is given, it is only to ride upon the goodwill and reputation
earned by the appellants. The adoption cannot be said to be honest.
The 3rd respondent has held that the trademark is not a well known trademark as the appellants have not proved the same. The appellants have
not proved their use since 1970. We do not accept the finding of the 3rd respondent. As observed earlier, the burden is on the applicant to prove their
case of use, adoption and if registration granted, there would be no confusion or deception and it is not for the appellants to prove the use. As per
Section 21 of the Act, any person may oppose the registration of the trademark.
The impugned order has been passed by the Senior Examiner of Trade Marks. We are unable to understand as to under what authority did the
Senior Examiner hear and decide the matter. Though this issue was not raised by either side, we are expressing our view that the Registrar alone has
the power to hear and decide the matter. As per Section 3 of the Act, the Registrar is the Controller General of Patents, Designs and Trade Marks
appointed by the Central Government. The Central Government may also appoint Officers who will discharge the functions under the direction of the
Registrar. Section 3 read with Section 91(1) of the Act makes it clear that any order or decision passed by the Registrar is appealable. Considering
this, we are of the view that the order passed by the Examiner without any authority cannot be said to be lawful. We are therefore of the opinion that
the order passed by the Senior Examiner is not valid. In view of the above mentioned observations, the impugned order is set aside and the appeals are
allowed. There shall be costs of Rs. 40,000/-(Rs. 10,000/- each). All connected MPs. are closed.