Tata Engineering And Locomotive vs Deputy Registrar Of Trade Marks And Ors.

S. Jagadeesan, J

The appellant has filed this appeal challenging the order of the Deputy Registrar of Trade Marks, New Delhi, dated 7.4.1995, wherein the

opposition of the appellant was disallowed.

M/s. Super Cassettes Industries Limited, the second respondent herein, filed an application No. 452037 for registration of a letter trade mark 'T' in a

circle with the word SERIES in respect of electric and electronic apparatus and instruments, radio and T.V. transmitting and receiving sets, electric

and electronic communication devices, audio and video recording, transmitting and reproducing equipment, electronic and electrical controlling

equipments, etc., in class 9 of the Trade and Merchandise Marks Act, 1958, (hereinafter referred to as the Act). The said application was advertised

in the Trade Marks Journal No. 1005 dated 16.4.1991 at page 106. The appellant M/s. Tata Engineering and Locomotive Company Limited, filed their

notice of opposition No. DEL-7265 on 20.6.1991, opposing the registration of the impugned mark on the ground that they are the registered proprietors

of the trade mark letter 'T' in respect of goods falling under classes 6, 7, 9 and 12 of the said Act and that their registered mark has attained goodwill

and reputation in the market. As such, the impugned mark cannot be registered. Further, the registration of the impugned mark would offend the

provisions of Sections 9, 11(a), 12(1) and 18(1) of the said Act. The second respondent filed its counter statement refuting the material averments

contained in the notice of opposition and further contended that they have been carrying on the business as manufacturers and dealers in electric and

electronic apparatus and instruments particularly, audio and video cassettes, records and tapes, etc. since 1979 and that by virtue of long, continuous

and extensive use and wide publicity, their trade mark 'T SERIES' has become distinctive and is exclusively identified with their goods. Both the

parties filed their evidence and after completion of the formalities, the matter was heard by the Deputy Registrar of Trade Marks, Delhi. The Deputy

Registrar, under the impugned order, disallowed the opposition No. DEL-7265 filed by the appellant and directed the application No. 452037 to be

proceeded for registration finding that the goods of the appellant and the second respondent are totally different and further the appellant cannot

monopolize the letter 'T'. Aggrieved by the same, the appellant preferred an appeal in CM(M) 344/1995 on the file of the Delhi High Court. After the

new amended Trade Marks Act, 1999, came into force, pursuant to Section 100 of the new Act, the appeal was transferred to this Board and

numbered as TA/117/2003/TM/DEL.

We have heard the arguments of Shri Mahaveer, the learned Counsel for the appellant and Shri N.K. Anand, the learned Counsel for the second

respondent.

The learned Counsel for the appellant contended that the letter 'T' in a circle is the registered house mark of the Tata Group Industries. The said

mark is available on every product of the Tata Group Industries. They are engaging themselves in various fields such s, automobiles, consumer goods,

chemicals, metal materials, etc. The said mark has obtained a goodwill and reputation and it is clearly identified with the products of the Tata Group

Industries. The adoption of the same mark by the second respondent is respect of their goods would create a confusion in the mind of the public and

as such, the registration of the impugned mark in the name of the second respondent cannot be permitted. The Deputy Registrar has mainly permitted

the registration of the impugned mark on the ground that the characteristic feature of the second respondent's mark is 'T' and not the device of circle

and therefore, there is no likelihood of deception or confusion. The design and style of the second respondent's mark is somewhat different from those

of the appellant. The Deputy Registrar further stated that at present, the rival devices or presentation of the rival marks are not likelihood to cause

confusion and deception amongst the purchasers and the letter 'T' cannot be monopolized. The learned Counsel for the appellant further contended

that none of the reasons given by the Deputy Registrar will hold good because the second respondent has applied for registration of the mark 'T

SERIES', a letter 'T' within a circle and below the circle the word SERIES and all within a rectangle. The letter 'T' within a circle is being identified

with the appellant. He will be satisfied if the circle is removed. In fact, the TV advertisements by the second respondent includes the circle, whereas,

the Deputy Registrar proceeded on the basis that the circle has been removed which is not correct.

The learned Counsel for the second respondent contended that though the second respondent is seeking registration of the trade mark 'T SERIES',

of which the letter 'T' within a circle, the trade mark of the second respondent and that of the appellant are distinct by themselves. When that be so,

there cannot be any confusion or deception. Apart from that, the goods manufactured by the second respondent are nothing to do with the goods

manufactured or dealt with by the appellant. Hence, the Deputy Registrar has rightly concluded that the opposition is of no merit.

The second respondent had applied for registration in application No. 501305 for the trade mark 'T - series'. In fact, the second respondent itself

has furnished the various trade marks registered under different classes in its favour which are as follows:

When the second respondent has obtained the registration of 'T-Series' in a particular fashion or a particular type, then, why should they change the

pattern of the trade mark now? There is absolutely no reason for the second respondent as to why the new impugned mark is being adopted. That too,

with the same name 'T-Series. Hence, the adoption of the impugned mark with the letter 'T' within a circle and the words SERIES lower down,

cannot be said to be with any bona fides. When the appellant seeks the removal of the circle alone from the impugned mark, it is clear that they do not

want to monopolize the letter 'T'. But, they are particular that the letter 'T' should not be used within a circle in the same fashion as that of the

appellant, as it is a logo of the appellant.

Though the appellant and the second respondent are engaged themselves in different goods, it has become necessary in the recent days that one

has to safeguard his own mark not only to prevent any confusion or deception, but also their reputation. It is unnecessary for us to add the precedents

by giving a list of cases except mentioning the case reported in Daimler Benz Aktiegesellschaft and Anr. v. Hybo Hindustan, popularly known as Benz

case, where the use of the name of Benz which is associated with the automobile cars of the plaintiff was prevented in respect of the use for under

garments.

Considering all the circumstances, we are of the view that the second respondent cannot be permitted to have the trade mark with the letter 'T'

within a circle. Hence, we modify the impugned order of the Deputy Registrar by directing the second respondent to remove the circle around the

letter 'T' and get the registration in respect of the mark T-Series with letter 'T' and below that the word 'Series' in a rectangle. Accordingly, the appeal

is partly allowed. There will be no order as to costs.