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Judgment
S. Usha, J
Appeal arising out of the order dated 05.10.1994 passed by the Deputy Registrar of Trade marks allowing opposition No. DEL 7758 and refusing
registration of application No. 487904 in class 6.
The brief facts of the case are;
The Appellant herein filed an application for registration on 23.3.1988 under No. 487904 in class 6 consisting of the trade mark T.T. with heart shaped
device along with the word Swastik in respect of steel pipes and tubes included in class 6 claiming user since 1975. The said trade mark was
advertised in the Trade Marks Journal No. 1029 dated 16.4.92 at page 88.
The second Respondent herein filed the notice of opposition on the ground that they have been carrying on business of manufacturing and
marketing all kinds of hosiery goods such as genjis, jangias, bras, socks, etc., under the name and style of T.T. Industries since 1968. They are the
registered proprietors of various other trade marks. By virtue of extensive use and advertisement, publicity, the opponent's mark has attained goodwill
and reputation all over India. The Appellant herein has filed an application for registration consisting of the letters T.T. within oval border and the word
Swastik. The letters T.T. with or without oval object is identical to the second Respondents. No reason given for the adoption of the impugned trade
mark. The application for registration is contrary to the provisions of Sections 9, 11(a), 11(e), 12(1) and 18 of the Act.
The Appellant herein filed the counter-statement denying all the material allegations made in the notice of opposition and stated that they adopted
the trade mark T.T. in the special artistic manner within the device of oval in the year 1975 in respect of steel pipes and tubes. ""Tested tubes are the
abbreviation of the letters T.T. as every tube is tested before it is sold. Under Section 12(3) of the Act, the Appellant cannot be refused registration as
the rival goods are different.
After completion of the formal procedures, the matter was heard by the Deputy Registrar of trade marks and the impugned order was passed on
the finding that the objection under Section 9 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) was upheld as the
marks were phonetically, visually, structurally similar. The marks are identical and therefore objected to under Section 11(a) and (e) of the Act. The
objection under Sections 12(1) (3) and Section 33 of the Act were also upheld as the adoption of the identical mark was dishonest. The Appellants had
not proved their use and reputation since the year 1975, as claimed by proper evidence and hence do not qualify for registration as proprietors of the
trade mark. The impugned trade mark is in violation of norms of purity of the Register of Trade marks. The Appellant has not proved their case
whereas the first Respondent has filed sufficient documents and proved their case. The opposition No. DEL 7758 is therefore allowed and the
application No. 487904 in class 6 is refused registration.
Aggrieved by the said order, the Appellants herein filed the instant appeal before the Hon'ble High Court of Delhi in CM (M) No. 551/94 and the
same was transferred to this Appellate Board in compliance of the provisions of Section 100 of the Trade Marks Act, 1999 and re-numbered as
TA/100/2003/TM/DEL.
The Appellant company was incorporated in the year 1975 and started using the trade mark T.T. within the device of oval in its special design and
get up in respect of the goods - steel tubes . The Appellant's goods are tested before sale. The Appellants could not adopt the term tested tubes as
their trade mark hence they adopted the mark T.T. The Appellant added the word Swastik as a suffix to the trade mark T.T. within the device of oval
to read as T.T. Swastik wherein the word Swastik appeared along with the device of oval from September, 1985. The goods of the Appellant bearing
the said trade mark has acquired a very valuable goodwill and reputation in the market on account of the superior quality of goods and on account of
the wide publicity given by the Appellant throughout India.
The Appellant had filed the impugned application for registration on 23.1.1988 and the same was advertised in the Trade Marks Journal which was
opposed by the first Respondent herein and the impugned order under appeal was passed on 5.10.1994. The grounds of appeal are that:
(a) the impugned order is illegal, arbitrary and against the facts and evidence on record;
(b) the impugned order is based on the wrong assumption of the facts and on this ground alone the impugned order cannot be sustained and is liable to
be quashed;
(c) the learned Registrar seriously erred in comparing the marks of the T.T. v. T.T. wherein he totally ignored the Judgments of the Supreme Court
where it has held that the marks are to be compared as a whole;
(d) the first Respondent erred in disallowing the application under Section 9 of the Act on the ground that the mark of the Appellant is deceptively
similar to that of the second Respondent;
(e) the first Respondent has further seriously erred in completely ignoring the explanation given by the Appellant regarding honest adoption of the
trade mark T.T;
(f) the first Respondent has further seriously erred in holding that the adoption of the mark T.T. by the Appellant is dishonest;
(g) the first Respondent has further erred in holding that the mark of the Appellant is likely to cause confusion or deception;
(h) the first Respondent has erred in holding that the application is prohibited under Section 11(e) of the Act where no evidence was filed by the
second Respondent;
(i) the learned Registrar erred in holding the application was prohibited for registration under Section 12(1) of the Act;
(j) the first Respondent erred in holding that the application is not remittable under Section 18(1) of the Act;
(k) the first Respondent erred in not exercising the discretion vested in him in deciding the case;
(l) the learned Registrar completely ignored the objection made by the Appellant as well failed to consider the Judgments relied on by the Appellant;
The second Respondent filed their counter-statement to the appeal denying the various allegations made therein. They stated that the Appellants
have not come to Court with clean hands as they have concealed and suppressed the material facts. The Appellants are not the proprietors of the
trade mark T.T. or T.T. Swastik in respect of any goods. The Appellants are operators of the registered trade mark T.T. and are not entitled to any
relief as prayed for in the appeal. They further denied the various grounds made therein .
We have heard both the counsel on 19.05.2010 at Delhi where Ms. Anuradha Salhotra learned Counsel appeared for the Appellant and Shri
Rajesh Mahajan learned Counsel along with Ms. Shilpi Jain Sharma appeared on behalf of the second Respondent.
The learned Counsel for the Appellant contended that the application for registration was made on 29.03.1988 claiming user since 1975 in class 6
and the impugned trade mark application was associated with application under No. 417580 where the user was since 16.10.1979 which was only for
the letters T.T. whereas this trade mark was for the letter T.T. within a circle along with the word Swastik. The second Respondent had admitted that
they were carrying on business only in respect of hosiery goods and allied products. The letters T.T. denotes testing tubes. As it was descriptive, the
word Swastik was added to the same.
The counsel further brought to our notice the documents filed at pages 48 and 49 of the typed set of papers and submitted that the document only
mentioned the word specimen where no date or goods was mentioned. The document at page 50 a statement showing the sales by the second
Respondent and the licencee, only created a doubt as to the veracity of the document. The list of dealers given at page 51 and marked as exhibit 'C'
only gives the details of the dealers where no mention as to the sales. The details of the advertisement though given at page 75 of the typed set not
supported by any proof. The second Respondent has no business in class 6 and therefore cannot claim any monopoly over the same.
The Appellant further submitted that the second Respondent has not given any explanation or reason for adopting the letters T.T. as their trade
mark. Therefore, their adoption is dishonest and cannot claim any proprietary right in the trade mark T.T.
The learned Counsel for the second Respondent submitted that in the rival marks the logo was totally different. They further submitted that the
Respondent need not have to give any reason or explanation for the adoption of the trade mark T.T. The Appellant though claim user since 1975, no
documentary evidence produced, whereas the second Respondent had adopted and used the mark since 1968 prior to that of the Appellant. The letter
dated 9th May, 1972 is a proof of the second Respondent's use of the trade mark atleast since the year 1972 prior to the Appellant's use since 1975.
The statement of sales filed at page 50 of the typed set has been certified by the Chartered Accountant and is a valid document.
The affidavit of evidence filed in support of the application for registration before the Registrar of Trade Marks is given by the General Manager
of the Appellant company who is not competent to swear in the affidavit and depose evidence. The sales figures and the advertisement expenses at
page Nos. 101 and 102 respectively are not authentic as they are not certified by the Chartered Accountant. The Bills are only for the year 1981
though the user is claimed since the year 1975. The counsel finally relied on some Judgments.
In rejoinder to the reply, the counsel for the Appellant submitted that the affidavit was sworn in by a competent person who had personal
knowledge about the case.
The instant matter was heard by this Appellate Board on 23.01.2004 where the Appellants were heard and the second Respondent was absent
and set expert and orders were passed on 30.01.2004. Against the said order, Review Petition No. 1/2004 was filed and the same was dismissed by
this Appellate Board by order dated 09.02.2005 against which the second Respondent preferred a Writ Petition in W.P ( c) 6027/2005 before the
Hon'ble High Court of Delhi. In the writ petition, the Hon'ble High Court passed an order on 12.03.2010 without going into the merits of the matter
directing this Appellate Board to list the matter before the IPAB Principal Bench at Chennai within a period of four weeks from today and in any
event on or before 6th April, 2010 and with a direction to hear and dispose of the appeal within a period of three months from the date. The Registry
of this Board received the said order only on 03.05.2010 and hence could not list the matter on 06.04.2010 instead had listed the matter on 17.05.2010
in the immediate sitting at Delhi. The matter was therefore heard on 19.05.2010 and orders are being pronounced today.
We have heard and considered the arguments of both the counsel and have gone through the pleadings and documents.
The first issue to be decided is whether the rival marks are deceptively similar which is likely to cause confusion or deception. The test of
comparison of two word marks are formulated by Lord Parker in Pianotist Co. Ltd.'s application (1906) 23 RPC 777 as follows:
You must take two words. You must judge of them both by their look and by their sound. You must consider the goods to which they are to be
applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding
circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the
goods of the respective owners of the marks. If considering all those circumstances, you come to the conclusion that there will be a confusion-that is
to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public
which lead to confusion in the goods then you may refuse the registration, or rather you must refuse the registration in that case.
In Sandow Ltd's application, 31 RPC 205 has explained that among the surrounding circumstances to be taken into account one of considerable
importance is the imperfect recollection a person is likely to have of a mark with which he is only vaguely acquainted. While approving the above tests
for comparison of the two word marks, the Supreme Court, has held in F Hoffman-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Private Ltd.,
AIR 1970 SC 2062) as follows:
It is also important that the marks must be compared as a whole. It is not right to take a portion of the word and say that because that portion of the
word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether
the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of the person accustomed to the
existing trade mark.
Further the Supreme Court in the same decision cited with approval Lord Johnston's words in Lavroma Case, Tokalon Ltd. v. Davidson & co. 32
RPC 133 at page 136 -
We are not bound to scar the words as we would in a question of comparative literarum. It is not a matter for microscopic inspection, but be taken
from the general and even casual point of view of a customer walking into a shop.
On a comparison of the two marks, it is very clear and also following the principles mentioned above, the rival marks are different. The second
Respondent's mark being T.T. the Appellant's mark is T.T. along with the word Swastik. Therefore, on comparison of the mark as a whole, there is
no similarity between the two marks. The goods are also different as seen from the documentary evidence where only hosiery goods are being dealt
with by the Respondents whereas the Appellants are dealing in class 6 in respect of steel pipes.
It is a well settled principle that the prior users rights are to be protected against the subsequent user. In the instant case, the issue as to who is the
prior user or adopter need not have to be gone into when we have already decided that the rival marks are not similar.
The other issue as to possibility of confusion or deception also fails on account of the reason that in our considered opinion that the marks are not
deceptively similar. Therefore, the objection raised by the Respondent does not sustain.
Having answered all the issues in favor the Appellants, we have no hesitation in setting aside the order of the Deputy Registrar dated 05.10.1994
and allow the appeal with no order as to costs.