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Judgment
S. Usha, Technical Member
The above appeals arising out of the order dated 3rd November, 1999 rejecting the opposition and allowing the application to proceed for
registration. TA Nos. 159 -161/2003/TM/DEL have been filed by M/s. Nutrine Confectionery Company Limited and TA No. 158/2003/TM/DEL has
been filed by M/s. Time Warner Entertainment Company L.P.
For the sake of convenience M/s. Times Warner Entertainment Company L.P. the appellant in TA/158/2003/TM/DEL and respondent in TA/159-
161/2003/TM/DEL argued all the four matters first and so they would be referred to as the appellants in all the four appeals and M/s. Nutrine
Confectionery Company Limited the respondent in TA/158/2003/TM/DEL and appellant in TA/159-161/2003/TM/DEL replied in turn would be
referred to as the respondents.
The appellants had filed four applications under application Nos. 520041 in class 16, 520042 in class 9, 520153 in class 28 and 520155 in class 16 on
20th November 1989 for registration of their trade mark Bunny Device as proposed to be used. The said applications were advertised as accepted in
the trade marks journal as under:
WILE E. COYOTE
(Editor: The text of the vernacular matter has not been reproduced. Please write to [email protected] if the vernacular matter is required.)
Application No. 520041 in Class 16 (advertised in Journal No. 1103 dated 16th May, 1995)
Goods: Printed matter, newspapers and periodicals, comic books, books, paper articles including stationery, tablets and other writing materials,
crayons,, markets and colored pencils, chalk and chalkboards, decals and heat transfers, posters and photographs, instructional and teaching materials,
paper goods, party declarations.
(Editor: The text of the vernacular matter has not been reproduced. Please write to [email protected] if the vernacular matter is required.)
WILE E. COYOTE
Application No. 520042 in class 9 (advertised in Journal No. 1101 dated 16th April, 1995)
Goods: Motion picture and television films comprised of live action and/or animated cartoons, prerecorded goods, namely, prerecorded records and
prerecorded audio and audio-vide tapes, cassettes and discs, firm clips within cassettes used with hand held viewers or projectors, video games, audio
tape and video tape playback and recording devices, radios.
(Editor: The text of the vernacular matter has not been reproduced. Please write to [email protected] if the vernacular matter is required.)
BUGS BUNNY
Application No. 520153 in class 28 (advertised in Journal No. 1100 dated 1st April, 1995)
Goods: Toys, dolls, games and other playthings, figureiness made of plastic, wood, rubber, china or other materials, toy cars, and trucks, toy guns, toy
hats, electronic amusement apparatus with and without video display and computer activated games, recreational equipment and apparatus, stuffed
plush dolls land figures of fabric, fur and other materials.
(Editor: The text of the vernacular matter has not been reproduced. Please write to [email protected] if the vernacular matter is required.)
BUGS BUNNY
Application No. 520155 in class 16 (advertised in Journal No. 1103 dated 16th May, 1995)
Goods: Printed matter, newspapers and periodicals, comic books, books, paper articles including stationery, tablets and other writing materials, crayons,
markers and colored pencils, chalk and chalkboards, decals and heat transfers, posters and photographs, instructional and teaching materials, paper
goods, party decorations.
The respondents herein filed their notice of opposition on the grounds that the registrations of the above marks are in contravention to the provisions
of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The appellants herein filed their counter denying the various
allegations made in the notice of opposition. After the completion of the formal procedures, the matter was taken up for hearing and was decided by
the Assistant Registrar of Trade Marks.
The Assistant Registrar had rejected the objection under Section 12 of the Act on the grounds that the rival trade marks were totally different and
that the registration was not prohibited under Section 12(1) of the Act. The other objection that the mark applied for was prohibited under Section
11(a) of the Act was also rejected on the ground that the trade marks as well as the goods were too different to create any likelihood of confusion or
deception in the minds of the consumers. The objection that the mark was not distinctive and not capable of being registered under Section 9 of the
Act was also rejected by the Registrar on the grounds that the mark applied for consisted not only of the caricature device of animal but also the
words Bugs Bunny, WILE E. COYOTE. Therefore, by taking the mark as a whole it is capable of distinguishing the goods from that of the other
traders.
The objection under Section 18(1) of the Act was also rejected on the ground that though the mark is proposed to be used, the appellants was the
proprietor of the mark, as the objections under Sections 11(1) and 12(1) of the Act were rejected. The Assistant Registrar had finally held that the
appellant's mark shall have no exclusive right to use the caricature device of animals separately and had directed the appellants to file a request on
Form TM-16 to amend the application.
The appellants being aggrieved had filed an appeal against the last part of the order directing them to take out an application on Form TM-16 to
carry out the disclaimer part, before the Hon'be High Court of Delhi in CM(M) No. 120 of 2003. The respondents being aggrieved by the main order,
filed the appeal before the Hon'ble of the High Court of Delhi in CM(M) No. 131/2000, CM(M) No. 132/200 and CM(M) No. 133/2000 and the same
has been transferred to this Board as per the provisions of Section 100 of the Trade Marks Act, 1999 and renumbered as TA/158/2003/TM/DEL &
TA/159-161/2003/TM/DEL respectively.
The respondents are the leading manufacturers of food preparations of bread, biscuits, and confectionaries. In the course of the above said
business, the appellants had adopted the trade mark consisting of device of BUNNY and the word NUTRINE and had been using the same since
1970. The respondents have been doing extensive business and have been spending considerable amount and efforts for promoting the sale of their
product under the said impugned trade mark. The mark has come to be associated with the trade and public with the products of the appellants.
The respondents also submitted that the trade mark under No. 291606 in class 30 for non-medicated and confectionery like bread, biscuit, cake etc.
is registered and the device of BUNNY also registered under No. 322428 in class 30. The respondents have also applied for registration of the trade
mark NUTRINE with BUNNY device in class 16 under application No. 495418 and the same is pending registration.
The respondents herein had filed this appeal on the following grounds that:
(a) the appellants had applied for registration claiming user as proposed to be used and therefore the impugned mark was not registerable under
section 9 of the Act;
(b) the rival trade marks were identical and as the goods were same, the registration was prohibited under Section 12(1) of the Act;
(c) the Assistant Registrar failed to consider the fact that the respondents had established their reputation by using the trade mark on the goods, but
had considered the documents filed by the appellants and had rejected the objection under Section 11(a) and 11(e) of the Act;
(d) the Assistant Registrar had gone wrong in deciding the objection under Section 18(1) and (4) of the Act;
(e) the Assistant Registrar had erred in granting registration to the appellants;
(f) the Assistant Registrar had also erred in passing a common order in all the four applications as the applications were in different classes and for
different goods.
The respondents therefore prayed that the impugned order be set-aside and the appeal be allowed refusing the four applications for registration
filed by the appellants.
We have heard Shri Chander M. Lall, learned Counsel for the appellant and Shri Sushant Singh, learned Counsel for the respondent in the Circuit
Bench at New Delhi on 17th September, 2008.
With the consent of both the counsel, the matters were heard together as the parties were the same and the issues were also one and the same in
all the appeals.
The counsel for the appellant submitted that the trade mark device of BUNNY worth words BUGS BUNNY and WILE E COYOTE and BUGS
BUNNY were registered in various classes namely classes 9, 16, 25, 28, 29, 32, etc. The appellants had made an application as early as 1971 claiming
user as proposed to be used. The counsel further submitted that the respondents had applied for registration only for confectionery in class 30 claiming
user since 1970. The appellants were registered users as of 1971 itself and produced before us various registration certificates. The counsel further
submitted that the respondents had not filed any application for cancellation of the registrations which were already granted in favour of the appellants.
The counsel further submitted that the respondents were carrying on business of manufacturing and selling confectionery products and hence were
not interested in the other goods under various classes and other classes. The counsel further pointed out to the finding of the Registrar that under
special circumstances though the mark was proposed to be used in India, the evidence on record proved their user though the mark was only proposed
to be used in India (as on the date of application). The mark as a whole along with the caricature device and the words BUGS BUNNY had acquired
distinctiveness and therefore was registered under section 9 of the Act.
The appellants further contended that they had been using the mark since 1940 and were prior in use to that of the respondent's use since 1970.
The counsel further submitted that outside India they were prior to the respondents where as in India the registration was of the year 1971. The
counsel also drew our attention to the various registration certificates which was also recorded by the Registrar in impugned order. The counsel relied
upon the following judgments in support of his case:
(i) Milment Oftho Industries and Ors. v. Allergan Inc. - was relied on to say that mere fact that the appellants were not using the mark in India would
be irrelevant, if they were in a position to prove that they were first in the market.
(ii) Allergan Inc. v. Sun Pharmaceuticals Industries Ltd. - was relied on to say that the registration certificates filed, will prove their user as has been
observed in this case that the registration certificates issued by the concerned authorities should be taken into as evidence as all the formalities have
been observed as provided under Evidence Act.
(iii) 1996 PTC (16) (SC) N.R. Dongre v. Whirlpool Corporation - the rights of the prior user has got to be protected.
The appellants relying on the above judgments and contentions prayed that the order be made absolute and registration be proceeded with.
The learned Counsel for the respondents mainly contended that the matter has to be dealt with under the old Act, namely, the Trade and
Merchandise Marks Act, 1958 and not the new Act i.e. the Trade Marks Act, 1999 as was held by this Hon'ble Board that the transferred matters
are to be dealt under the old Act. In TA/158/2003/TM/DEL, the respondents submitted that the effect of disclaimer has become infructuous as such
concept is not found under the new Act. The counsel for the respondents mainly relied on Section 9 of the act and submitted that the marks applied
for registration were proposed to be used and no amount of user was shown to acquire the distinctiveness and hence registration if granted would be
in contravention of section 9 of the Act.
The counsel for the respondents further submitted that mere registration of the trade mark BUNNY device will not prove any amount of user. The
counsel pointed out the observation of the Registrar in the impugned order that the rival mark was deceptively similar and submitted that the marks are
deceptively similar, possibility of confusion was certain which would lead the public to think that the goods of the respondents emanate from them
which would cause undue loss and hardship which cannot be compensated in terms of money. The learned Counsel also brought to our notice the
definition of deceptive similarity under Section 2(1)(d) of the Act.
The counsel relied on various judgments in support of his contentions:
(a) 1987 (7) PTC 250 Delhi Surjit Singh trading as Lecto Laboratories (India) v. Alembic Glass Industries Ltd. - was relied on to say that when the
trade mark were identical, goods need not be the same but confusion was certain;
(b) PTC (Suppl) (1) (Del) (DB) Registrar of Trade Marks v. Hamdard National Foundation (India) - was relied on to say that a mark in order to be
registered in part 'B' of the Register. The mark need not be distinctive but it should be distinguishable from that of the other party;
(c) Imperial Tobacco Co. of India Ltd. v. Registrar of Trade Marks and Anr. - was relied on to distinguish registration in part 'A' and 'B' of the
Register;
(d) 1994 (14) PTC 250 (Delhi) WWF International v. Mahavir spinning Mills Ltd. - was relied on to say that when the device was same and the goods
different there was every possibility of confusion being caused.
The counsel for the respondents prayed that the appeals be allowed setting aside the order of the Registrar.
With the consent of the both counsels as the four appeals were heard together a common order is being passed. We have considered the
arguments of both the counsel and have gone through the pleadings.
The issues that arise for consideration are whether the mark applied for registration is in contravention of the provisions of Sections 9, 11, 12 and
18 of the Act. The trade mark should be distinctive or capable of being distinguished to be registered. Whether a mark is capable of distinguishing to
qualify for registration may be either inherently capable of distinguishing or in fact capable of distinguishing. To determine whether a mark is inherently
distinguishing or in fact capable of distinguishing is by virtue of use or other circumstances. It is a matter of proof to be established by evidence of user
of a mark and other relevant circumstances.
A device mark for the purpose of registration has to be looked as a whole. Device includes pictorial representation of any object or thing. Such
devices are obviously capable of being represented graphically. Devices may be considered prima facie capable of distinguishing goods of one person
from those of others if they have no direct reference to the character or quality of the goods in question. It is desirable that the device must contain
striking feature which will be in the minds of the consumers so as to enable them to remember the device and identify the goods bearing the marks. If
the device is along with the words, the mark acquires distinctiveness when it is taken as a whole both phonetically and visually.
In the case on hand, it is clear that the caricature device of bunny is alongwith the words either WILE E COYOTE or Bugs Bunny. Considering
the mark as a whole the impugned mark is capable of being distinguished under other circumstances. The caricature device of bunny and word being
bunny or WILE E COYOTE bears no direct reference to the character or quality of goods in question and is used without suggesting anything. The
objection under section 9 of the Act is therefore rejected.
The next issue is whether the registration of the impugned mark would be in contravention of Section 11 of the Act. The objection that the possible
use of the applicants mark is likely to cause confusion or deception may arise both under Sections 11 and 12(1) of the Act. In an opposition the ground
of likelihood of confusion or deception the onus is on the opponent to prove user that the mark is so known to the public and that the use by the
applicants for registration is likely to lead to confusion and deception among them. If the opponents mark is not known in the market, the use by the
applicant will not lead to confusion. The onus thereafter lies or the applicant to show that the use of the mark is not likely to deceive or cause
confusion. Therefore the onus of establishing a sufficient reputation lies on the opponent to attract the provisions of Section 11 of the Act.
On the facts of the case, the use of a trade mark is likely to deceive or cause confusion within the meaning of Section 11 or not is purely a
question of fact. The deception or confusion may arise by reason of similarity between the marks. When the opponents/appellants contend that his
goods have come to be known under the name and that the registration if granted would cause confusion that onus is for the opponents/appellant to
establish its case. The fact that the appellants mark has became a household mark does not minimize the likelihood of confusion.
It is worthwhile to quote the test applicable under Section 11 in determining the issue of deception and confusion by Romer J - ""(1) In all
applications for registration of a trade mark the onus is for the applicant to satisfy the Registrar (or the court) that there is no reasonable probability of
confusion. (2) It is not necessary, in order to find that a mark offends against the section, to prove that there is an actual probability of deception
leading to passing off. It is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might
not be the case that the two products come from the same source. It is enough, if the ordinary person entertains a reasonable doubt. (3) In considering
the probability of deception, all the surrounding circumstances have to be taken into consideration. (4) In application for registration, the rights of the
parties are to be determined as at the date of application. (5) The onus must be discharged by the applicant in respect of all goods coming within the
specification applied for and not only in respect of those goods on which he is proposing to use it immediately, nor is the onus discharged by proof only
that any particular method of user will not give rise to confusion; the test is ""What can the applicant do?"" His Lordship added that the second
proposition must be qualified in so far as a mere possibility of confusion was not sufficient and that ""the court must be satisfied that there is a real
tangible danger of confusion if the mark which it is sought to register is put on the Register.
An opposition under Section 11(a) of the Act, it is to be established by use and reputation of the opponents/appellants mark that the public have
become so familiar with the mark and that they would be mislead if the impugned trade mark is registered while the onus is on the applicant to show
that the use of the mark seeking registration is not likely to deceive or confuse, the onus of establishing a sufficient reputation under Section 11 of the
Act is on the opponent and if he fails, the objection under Section 11(a) does not arise. Reputation has got to be established by cogent evidence.
On perusal of the rival trade marks, we are of the view that the marks as well as the goods are different. Even following the principles laid down
by various courts based on the observations made in the famous Benz's case, we are of the opinion that there is no prohibition under Section 11(a) of
the Act. Here the appellants have not established that their trade mark is a well known mark and has got to be protected by not allowing the
registration of the trade mark of the respondents.
Under Section 12(1) of the Act, the questions for consideration are (1) Whether goods for which registration is sought are goods of the same
description as those for which the opponents' mark is registered, and (2) if so, whether any normal use by the applicant, of his mark will lead to
confusion with the opponents mark, also used in a normal manner by reason of the similarity between the two marks. There is an absolute bar to the
registration, if the marks are identical. To determine, whether the marks are identical, the marks are to be compared and surrounding circumstances
are also to be considered.
In comparing the two marks emphasis should be laid on their distinguishing or essential features. In ""Saville Perfumery Limited v. June Perfect
Limited (1941) 58 R.P.C. 147 at P.162 - the Master of the Rolls observed that ""the question of resemblance and the likelihood of deception are to be
considered by reference not only to the whole mark, but also to its distinguishing or essential features, if any"" and that ""the mark comes to be
remembered by some features in it which strikes the eye and faces itself in the recollection"". Such a feature being referred to sometimes as the
distinguishing or essential feature of the mark.
In the light of the above principles, the issue under Section 12(1) also falls to ground. The rival marks being not identical there is no bar for
registration. There is a distinguishing feature in the impugned mark and the question of deception or confusion does not arise.
Coming to the issue under Section 18(1) of the Act, whether the respondent is the proprietor of the trade mark. The claim to be a proprietor of the
trade mark, the use of the mark or the goods is to be considered. The trader who first adopted and used a distinctive trade mark is considered to be
the proprietor of the trade mark. In the instant case on hand, the respondents claim to have adopted the trade mark since 1970, whereas the appellants
claim is that they had adopted and used the same since 1940 outside India and since 1971 in India. The said fact has not been denied by the
respondents. In this connection, we take support of the findings of the Supreme Court in Milment Oftho Industries and Ors. - ""The mere fact that the
respondents have not been using the trade mark in India would be irrelevant if they were first in the world market."" Considering the fact that the
appellants are the prior adopter and user of the mark they are the proprietors of the trade mark as per Section 18 of the Act.
We shall now deal with the appeal No. TA/159/2003/TM/DEL filed by the appellant in TA/159-160/2003/TM/DEL The appeal has been filed
against the order passed as to imposing a condition and to be registered in Part B of the Register. A mark was considered to qualify for registration in
Part B Register if it was capable of distinguishing the appellants goods from those of others. Part B of the Register is intended to comprise marks
which in use can be demonstrated as indicating the trade origin in that interfering with the freedom of the traders. When a distinctive label is registered
as a whole, such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular name or
word contained therein apart from the mark as a whole. Therefore a label consists not of each particular part but a combination of all. The above
position was under the 1958 Act and under the New Act - Trade Marks Act, 1999 such provision has been removed. In view of the above position as
per the Trade Marks Act, 1999 we set aside the order of the Registrar and allow the appeal -TA/158/2003/TM/DEL
In the light of the above findings, we do not find any need to infer with the order of the Assistant Registrar in appeal - TA/159-161/2003/TM/DEL
We, therefore, direct that the application Nos. 520041 in class 16, 520042 in class 9, 520153 in class 28 and 520155 in class 16 be proceed to
registration. No order as to costs.