Syngenta Limited vs Hyderabad Chemical Supplies Limited & Anr

Prabha Sridevan, J

1 . The appellant is aggrieved by the order dated 20.08.2007 disallowing the appellant's opposition No. MAS-196225 and registering application No.

1124847 of the respondent No. 1 in Class 5. The matter came for hearing on 08.06.2011 at Chennai. Learned counsel Shri M.S. Bharath appeared for

the appellant and learned counsel Shri N- Krishnamurthy appeared for the respondent No. 1.

The brief facts of the case are as follows:

The respondent No. 1 had sought for registration under application No. 1124847 in Class 5 for the goods ""pesticides, insecticides, weedcides,

fungicides"" on 08.08.2002 for the mark IMICON. The application showed that on the date of application the mark was ""proposed to be used"". The

application was advertised as accepted vide Trade Marks Journal No. 1327 (S-3) dated 17.01.2005

The aggrieved appellant lodged a notice of opposition objecting to the registration of the above mark on 20.06.2005. According to them, they were

an established business manufacturing, inter alia, insecticides, herbicides, fungicides and preparations for destroying vermin and they were the

registered proprietors of the trade mark 'ICON' under No. 529037 in class 5 since 03.05.1990. According to the appellant, the aforesaid mark ICON'

has come to be identified and associated with them exclusively because of extensive use and publicity and therefore, the respondent's mark which is

opposed as being deceptively similar to the applicants' mark was barred by section 11 read with section 12 of the Trade Marks Act, 1999 ('Act' in

short). According to the appellant, the very adoption of the mark by the respondents was dishonest. They cannot claim any rights in if under section

18(1) of the Act since admittedly as per the application the mark was only ''proposed to be used"". The opposition was resisted by the respondent No. 1

stating the rival marks are not similar, that they had adopted it bona fide and had been using it continuously and extensively since the year 2002 and

that the applicant's product is almost exclusively used only by Government and public authorities whereas the respondent's product is used by farmers

id therefore, the apprehension of the appellant is unfounded.

4 . The Deputy Registrar of Trade Marks felt on a consideration of the overall facts and circumstances that the rival marks are not deceptively similar

and there is no bar to registration of the mark IMICON.

The learned counsel for the appellant Shri M. S. Bharath submitted that though the impugned order referred to the relevant judgements and also

specifically rejected the objections of the respondent that since the applicants are selling their products mostly to government institutions there will be

no chance of confusion or deception, still proceeded to disallow the opposition. The learned counsel submitted that the trade mark 'ICON' has been

used from the year 1990. It was originally filed in the name of Zeneca Limited. Now the name had been changed to Syngenta Limited and therefore it

is Syngenta Limited which is at present the owner of the trade mark. This trade mark had been used in various countries in the world by the applicant.

In fact, it has been registered in 89 countries. It had been used by the appellants from the year 1997. Their products are in great demand and a list of

the clients of the appellants including Department of Health, Tamil Nadu, Government of India etc. was read out and submitted that the list has been

given in the grounds of appeal. The learned counsel submitted that this list would show that the customers are not only government authorities as seen

from the fact that a company called Accord Pest Solutions finds a place in the list.

The learned counsel submitted that admittedly the respondent No. 1 had adopted the mark only after the year 2002 and 'IMICON' is clearly

deceptively similar to the appellant's trade mark 'ICON' therefore would amount to infringement. The learned counsel submitted that no explanation

has been given by the respondent No. 1 for adopting the trade mark 'IMICON' and in the absence of any satisfactory explanation, it would be

justifiable to assume that the intention was to deceive. The learned counsel referred to the Computer generated Public Search Report which has been

produced by the respondent No. 1 to show that there were several other persons who had been using the mark ICON. The learned counsel submitted

that in fact this document only strengthens the case of the appellant since wherever the mark ICON had been used by the manufacturers in the same

business who are dealing with goods in Class 5, the appellant had either opposed the registration or the registration had been abandoned or withdrawn

and two of the names found in the computer generated Public Search Report are actually the appellant's own goods in the name of ICONET and

ICONETMAXX.

The learned counsel submitted that there are decisions to show that the issue had to be decided on the basis of facts prevailing on the date of

application and subsequent events cannot be taken note of and the Deputy Registrar had erred in taking into account the fact that the respondent No.

1 is selling their products under the mark IMICON from the year 2002.

8 . The learned counsel referred to various documents produced which would show the customers to whom the appellant had been supplying his

product and read out the notice of opposition and the respondent's counter statement filed by the parties. The learned counsel submitted that the

respondent No. 1 cannot be heard to say that since the appellant had not taken any action for the alleged passing off or for infringement, they had

waived their legal rights. According to the counsel, the appellants were entitled to have their opposition to the registration considered.

The learned counsel referred to paragraph 8 of the counter statement in which it is stated that the letters 'IM' in IMICON are used to distinguish

their trade mark from the trade marks of others which would show that the respondent No. 1 had the intention to take advantage of the goodwill

earned by the appellant. The learned counsel also submitted that paragraph 14 of the counter statement virtually admits that the appellant's goods and

the respondent's goods are of the same description and used for the same purpose. In these circumstances, it is essential that their registration shall

not be allowed so that the customers are not deceived in to thinking that the respondent's products and the appellant's products are one and the same.

The learned counsel referred to the following decisions:

(i) AIR 1972 CAL 261 Prem Nath Mayer v. Registrar Of Trade Marks and another where the Division Bench of the Calcutta High Court held that

the burden of proving that the trade mark was not likely to deceive or cause confusion was on the persons who seeks to register his trade mark.

Therefore in the instant case, it is for the respondent to prove that the word IMICON is not likely to cause deception or confusion,

(ii) The learned counsel next relied on AIR 1959 CAL 654 (V 46 C 180) Griffiths Hughes Limited v. Vick Chemical Co., where the Division Bench of

the Calcutta High Court held that in case of all application for registration including opposition, the right of the parties shall be determined as on the

date of the application. In this case since on the date of the application he had not started using but he only proposed to use this mark, it should not

have been registered,

(iii) The learned counsel then referred to 2004 (28) PTC 585 (SO Milment Oftho Industries and ors v. Allergan Inc. where the Supreme Court held

that if prior user is shown, then where there is possibility of confusion the person who shows prior user is entitled to injunction.

(iv) The learned counsel then referred to (2011) 4 SCC 85 T.V. Venugopal v. Ushodaya Enterprises Ltd and another where the Supreme Court held

that the fact that others are carrying on business deceptively similar to the plaintiff will not offer a license to the world at large to infringe the trade

mark of the plaintiff. It was held that the use of similar marks by a third party cannot be a defense to an illegal act of passing off.

(v) He also referred to AIR 1969 Mad 126 The Andhra Perfumery Works joint family Concerns v. Karupakula Suryanarayaniah and Ors., Where the

Madras High Court held that a few fraudulent infringement without the knowledge of the proprietor will not make the mark common to the Trade.

(vi) He then referred to 2002 (24) PTC 226 (Bom) (DB) Bal Pharma Ltd., v. Centaur Laboratories Pvt. Ltd. and another where it was held that if a

person had not taken the elementary precaution of making himself aware by looking at the public record of the Registrar as to whether the mark in

question is the property of another, then he cannot be heard to complain, ""for he has been using it negligently"" for want of taking the precaution.

(vii) The learned counsel then referred to 1986 IPLR 16 (TMR) Pharma Research and Analytical laboratories v. Jal Private Limited where it was

held that even if the Opponent's mark remains wrongly on the Register, in violation of Section 12 (@) of the Act, the application to register another

identical or deceptively similar will be refused unless the registered trade mark is removed form the Register.

(viii) The learned counsel referred to AIR 1900 Del 19 : 1989 (9) PTC 61 (Del) Hindustan Pencils (P) Ltd., v. India Stationery Products Co. and

another where it was held that ""if the user in its inception was tainted it would be difficult in most cases to purify it subsequently.

The learned counsel referred to the impugned order where the judgement of Lord Parker in the Pianotist case 1906 23 RPC 774 was quoted

where it was held that one must consider all the surrounding circumstances and if the conclusion is there will be confusion ""then you may refuse the

registration or rather you must refuse the Registration"". He submitted that, having referred to this citation, the Deputy Registrar ought to have allowed

the opposition. Instead he had proceeded to reject the opposition. The learned counsel prayed that the appeal may be allowed.

The learned counsel for the respondent Shri N. Krishnamurthy submitted that the applicant cannot claim any ownership in the word ICON. Icon

means a thing that is held in high esteem or an ideal model and it is used in connection with very many products where a claim of excellence is made.

It is a descriptive word and in fact the word ICON ought not to have been registered on the appellant's application. According to the counsel for the

respondent the basic drug of their product is 'Imidacloprid' and the letters from the basic drug have been taken to coin the word IMICON. According

to the learned counsel ICON is not a coined word whereas IMICON is. There was no dishonest intention. The appellants trade mark is not at all

popular in the market since they mainly dealt with government agencies and their product is used for mosquito control. The respondent's products are,

on the other hand, used only for agriculture and available in open market. The appellant's products are not available in open market. In these

circumstances, there is no ground for confusion or deception. The appellant has no potential customers in the open market except the public health

organizations and therefore, the Registrar had rightly dismissed their opposition. More importantly, the learned counsel submitted, that IMICON and

ICON are so different that there is no likelihood of confusion.

We have considered the submissions made by both the counsel. The Registrar have referred to the Pianotist case. Hence we will also refer to it

for guidance. That was a case where the two trade marks which were in conflict with each other were"" Pianola"" and ""Neola"" Parker J. held that

You must take the two words. You must judge of them, both by their look and by their sound. You must consider whit 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 will lead to confusion in the goods - then you may refuse the

registration or rather you must refuse the registration in that case...The second way it is put to me is, that the sounds of the words, although the look of

the words may be different, are likely to be so similar that person asking for a ""Pianola"" might have a ""Neola"" passed off on him, or vice versa... I

cannot imagine that anybody hearing the word ""Pianola"", if pronounced in the ordinary way in the shop, and knowing the instruments as all shopmen do

would be likely to be led to pass off upon that customer a ""Neola"" instead of a ""Pianola""."" So from this it is clear that we have to judge the matter from

the general appearance or sound of the two words. We must consider the goods to which they are to be applied and the persons who purchase and all

the surrounding circumstances and also whether there is likely to be confusion in the mind of the public. We must also consider whether a person

asking for one will have the other given to him or vice-versa.

1 4 . There is no dispute that the appellant has been in the market before the respondent No. 1. Though the appellant pointed to one single non-

governmental customer, it is clear from the pleadings that the appellants supply is mainly to government and public undertakings and mainly for vector

control. The respondent, on the other hand, has produced invoices to show that he supplies in the open market. The appellant does not dispute the

genuineness of the invoices but submits that the invoices show that on the date of the application, the respondent's products were not in use. Both the

submissions have to be accepted. One is that the respondent's mark was proposed to be used on the date of the application and it is also clear from

the evidence before us that the appellant's products were mainly sold to government organizations. There is very little evidence to show that an

ordinary customer purchased the goods of the appellant in the open market. The goods of the appellant and the respondent are classified under Class 5

but the evidence and the pleadings support the case of the respondent No. 1 that while the appellant's products are for mosquito control etc., and

specifically for non-agricultural purposes, the respondent's products are directed for farmers and strictly for agricultural purposes.

Now we come to the mark themselves which is what we have to compare and decide. The word ICON is not a coined word. Even a watch

manufacturer which carries a different brand name can call his watch the icon of all watches. Personalities of stature are called icons. Therefore, icon

only connotes excellence and it has not been indisputably demonstrated that the respondent chose to incorporate the letters ICON as his trade mark

with dishonest intention. According to the counsel for the respondent their intention was to claim that they were best pesticide manufacturers and they

incorporated the letters of the basic drug. We are not able to throw out the submissions as unacceptable. Moreover, ICON phonetically is pronounced

as 'aikon' whereas IMICON is more like 'imeekon'. The two sound very different. In AIR 1970 SC 2062 Roche and Company v. Manners and

Company where the two products were DROPOVIT and PROTOVIT. The Suprem Court held ""The words are so dissimilar that there is no

reasonable probability of confusion"". If the word ICON had been an invented word or coined word and the respondent had added 'IM' to it, there

might have been more strength in the appellant's case of deliberate deception. Here the appellant cannot lay any ownership or claim to the word

ICON. The computer generated Public Search Report shows several entries in the name of ICON which is evidence of the fact that many in the

market have chosen the word ICON for its etymologic connotations. Though the appellant has been able to show sales there is no evidence to show

that he had gained such popularity that the respondent has adopted IMICON to ride on his goodwill. In any event in the present proceedings we are

only concerned with whether the mark is likely to deceive. We have given our reasons as to why we think that no confusion or deception is likely to

arise and we, therefore, agree with the conclusion of the Registrar. The appeal is dismissed. M.P. No. 202/2009 is closed.