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Judgment
S. Usha, J
OA/29/2010/TM/KOL:
The appeal arises from the order dated 4.1.2010 passed by the Registrar of Trade Marks, Kolkata dismissing the opposition No. CAL-10(T) to
application No. 556322 in Class 4 to proceed to registration under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the
'Act').The first respondent herein filed an application on 12.8.1991 for registration of the trade mark ""TITAN"" (word per se) in Class 4 in respect of
Industrial oils and greases, lubricants; including engine oils with and without additives; fuels (including motor spirits)"" under No. 556322. The mark
was advertised in the Trade Marks Journal No. 1273 dated 16.6.2002 at page 948. The appellants herein filed their notice of opposition opposing the
registration on the ground that they are an extremely well known company being manufacturers and dealers of watches and their accessories. Their
company's name is known throughout the world. The company is a joint venture of Tata Industries as the one part and Tamil Nadu Industrial
Development Corporation on the other. The appellants are the proprietors of the trade mark ""TITAN"" and the significant part of their corporate name,
TITAN INDUSTRIES LIMITED"". They are also the registered proprietors of th trade mark in Class 14.
The mark ""TITAN"" being their trade mark is also their house mark having regard to the fact that in the name ""TITAN"", the letters ""TI"" stands for
TATA INDUSTRIES an ""TAN"" stands for TAMIL NADU. The said mark has been in use for a considerable period of time in respect of watches
and jewellery items. The said trade mark is distinctive of the appellants and are identified by the public as the appellant's goods. By reason of use,
advertisement, publicity and sales promotion work and also by reason of the superior quality, the appellant's goods earned enviable reputation and
goodwill among the public. The respondent's registration if granted would definitely lead to confusion and deception as the marks are deceptively
similar. The public and the trade will definitely assume a connection in the course of trade between the respondent's products and their goods. This
should only serve to unduly enrich the respondent at their costs. The other contention by the appellant was that the registration would be in
contravention of Sections 9, 11 & 18 of the Act.
The respondent filed their counter statement denying the various averments made in the notice of opposition. They also submitted that the trade
mark relied on by the appellant in Class 14 has no relevance to the present proceedings. The rival goods have no relevance in the present proceedings.
The respondents further stated that they had been using the trade mark ""TITAN"" in India since the year 1991 and there has been no single instance of
confusion or deception among the public as the goods involved herein are watches, jewellery etc. and ""industrial oils, grease, lubricants etc."" which are
poles apart. They also denied that the appellants had honestly and bonafidely adopted the trade mark ""TITAN"". The trade mark is registered in various
countries of the world.
4 . On completion of the pleadings, the learned Registrar heard the matter and held that the respondent's mark was capable of distinguishing its goods
from those of others and hence rejected the appellant's objections under Section 9 of the Act. As regards the objection under Section 11, the learned
Registrar held that the appellants were not using the mark and the user is also not proved, the inference being that the public are so familiar with the
respondent's trade mark and their use. The respondents have also bonafidely adopted and used the mark first in 1991 in Class 4. By virtue of long use,
there would be no confusion or deception among the public. The respondents are the registered proprietors and therefore can maintain the application
under Section 18(1) of the Act. There is also no evidence to say that the respondents have copied the appellant's mark. In view of the above, the
learned Registrar exercising the discretion, allowed the application to proceed for registration and dismissed the opposition without costs. Aggrieved by
the said order, the appellants are before us on appeal.
5 . The appeal is on the ground that the order is contrary to law, equity, good conscience and evidence. The second respondent failed to appreciate the
principles applicable for refusal of trade mark dismissed the opposition. The Registrar did not exercise the discretionary jurisdiction. He did not apply
the requirements governing the registration of trade marks under the provisions of the Act. The Registrar totally ignored the documents filed and relied
on by the appellant. The Registrar had also totally overlooked the intention and purpose of Section 29 of the Act. The appellant stated that the appeal
be allowed and the registration be refused.
The respondent filed their counter statement in the name of Fuchs Petrolub A.G., the assignor. This defect was not pointed out by either party. The
Registry of this Board had also not looked into and the counter statement was taken on record. After arguments were heard we noticed the same. As
the counter statement has been taken on record and the main matter has been heard and decided, we are not going into that issue. However, the
Registry of this Board on directions by the Board had directed the respondent to file an amended memo of cause title on 5.3.2012. The Counsel as per
the directions had filed the memo of parties on 19.3.2012. The same is therefore taken on file.
7 . The first respondent herein filed their counter statement stating that their predecessor-in-title was formed in the year 1931, in Germany. They are
top ranking front runner with a complete range of lubricants as its core program. The first respondent adopted the trade mark ""TITAN"" for identifying
its products. They had obtained registration of the trade mark in many countries. In order to protect the trade mark ""TITAN"" the first respondent filed
application No. 556322 on 12.8.1991 claiming the user since June, 1991 in respect of the specification of goods falling in Class 4 which was opposed to
by the appellants herein.
8 . It is significant and worth mentioning that being aware of the use and publicity given to TITAN trade mark by the first respondent, the appellants
issued a cease and desist notice on 5.6.1996. The respondents had denied certain averments and stated that the impugned order was not contrary to
law and conscience and in fact had relied on a decision of the Supreme Court in 1998 (Suppl.) Arb. LR 132 (Cal.) (DB) - Milment Oftho Industries
and Others, Appellants Vs. Allergan Inc., Respondents and ""Silverking"" by the Division Bench of the Madras High Court in (1979) 2 IPLR 83 -
Mohan Goldwater Breweries (Private) Limited, Applicants Vs. Khoday Distilleries Private Limited and Another, Respondents. The respondent also
stated that they have been using the trade mark since 1991 and there was no instance of confusion or deception also. The registration would not be in
contravention of the provisions of the Act. The respondents therefore prayed that the appeal may be dismissed and the registration be granted.
OA/32/2010/TM/CH and OA/33/2010/TM/CH:
9 . Both the above appeals arise out of the order dated 28.1.2010 passed by the Deputy Registrar of Trade Marks Chennai allowing the application
No. 630032 in Class 1 and 630041 in Class 4 to proceed for registration thereof dismissing the opposition No. MAS-81717 and 81569 respectively.
The first respondent herein filed two applications for registration of the trade mark ""TITAN"" in Class 1 under application No. 630032 in respect of
chemical products used in industry, science, photography, agriculture, horticulture, forestry, manures (natural and artificial), fire extinguishing
compositions; tempering substances and chemical preparations for soldering; chemical substances for preserving foodstuffs; tanning substances,
adhesive substances used in industry"" and in Class-4 under application No. 630041 in respect of ""Industrial oils and greases (other than edible oils and
fats and essential oils) lubricants; dust laying and absorbing compositions; fuels (including motor spirit) and illuminants; candles, nightlights and wicks
on 6.6.1994. Both the marks were claimed to be ""proposed to be used"" on the date of application. The mark was advertised before acceptance in
Trade Marks Journal No. 1281 dated 16.10.2002 at page 2550 (application No. 630041 in Class 4) and Trade Marks Journal No. 1273 dated 16.6.2002
at page 948 (application No. 630032 in Class 1).
1 0 . The appellant herein filed their notice of oppositions stating that they are engaged in the manufacture and sale of industrial oils and greases,
lubricants; including engine oils with or without additives; fuel oils etc. They have also stated that they are the registered proprietors of the trade mark
TITAN in respect of the aforesaid goods under No. 556322 in Class 4 in India. The aforesaid marks are being used extensively and continuously since
many years and as such it is a well known mark and the public associate the said trade mark with the appellants. They have also stated that the
registration of the impugned trade marks will definitely lead to confusion and deception and therefore is not registerable under Section 11 read with
Section 12 of the Act. The appellants also stated that the registration will lead to passing off of the respondent's products as that of the appellant's
goods. The respondents have never been in the area of marketing or manufacturing lube oil or fuel or petro chemical business. They cannot claim any
proprietary rights as the trade mark has been adopted with a deliberate view of trading upon the appellant's goodwill and reputation.
The first respondent filed their counter statement stating that in the early eighties they have honestly adopted and used the trade mark ""TITAN
and the mark is registered in different Classes. The respondents are a well known company promoted by Tamil Nadu Industries and Tata Industries
and have been manufacturing and dealing with different types of goods and products.
12 . On completion of the pleadings, the learned Registrar heard and passed the impugned order. The learned Registrar held that the first respondent's
trade mark is a well reputed mark and it is known to large segment of the public. The Registrar had also held that the appellants herein relied on the
registration under No. 556322 in Class 4 but the same was pending registration and therefore the appellant cannot be considered to be proprietor of
the trade mark ""TITAN"". The appellants have subsequently adopted and used the trade mark ""TITAN"" for lubricants. The trade mark ""TITAN"" is a
well known trade mark as defined under Section 2(zg) of the Act. The learned Registrar also held that from the available records it is seen that the
respondents have coined the mark ""TITAN"" and their adoption was prior to that of the appellant. The respondents have adopted the mark honestly
and have been using the mark continuously, extensively and bondafidely. Therefore they are entitled to registration under Section 12 of the Act. With
the above finding, the Registrar had accepted the application for registration and dismissed the opposition thereto.
Being aggrieved by the said order, the appellant had filed the above appeal on the grounds that
(i) the respondents never used the trade mark;
(ii) the second respondent has passed the impugned order contrary to law, facts and documents placed on record;
(iii) the impugned order was passed in a hurry;
(iv) the impugned order was in gross violation of the decision passed by the Kolkata Registry.
The appellants also submitted that substantial documentary evidence of prior filing and user, goodwill and reputation was filed by the appellant. The
initial onus on the appellant having been discharged, the burden was on the respondent to show that the proposed use was not likely to cause confusion
and deception which was not set aside but the second respondent had decided the matter in favour of the first respondent. The second respondent had
failed to appreciate evidence filed by the appellant. The second respondent went wrong in deciding that the first respondent was prior in adoption and
the use of the trade mark. The decision that the respondent is the proprietor is also being erroneously given by the second respondent. The impugned
order was therefore liable to be set aside and the registration to be refused.
The respondents filed their counter statement stating that the appellants have claimed user since 1991 for which no evidence was filed. The
appellant also stated that the trade mark ""TITAN"" was registered in favour of the respondents in various other countries. The trade mark ""TITAN
had acquired the status of a well known trade mark as per the provisions of the Act. The appellants had proved user in India. The only defence of the
appellant is that his goods are different and so the possibility of confusion need not arise. It has not been substantiated with cogent evidence. It is also
true that for one mark there can be only one source as was held by the Supreme Court in the ""1994 (2) SCC 448 - M/s. Power Control Appliances
and others, Appellants Vs. Sumeet Machines Pvt. Ltd., Respondent with Sumeet Research and Holdings, Appellant Vs. Sumeet Machines and
Another, Respondents"" case. The appellant has no tenable grounds to justify its appeal for non-registration of respondent's trade mark.
All the three appeals were heard together and a common order is passed as the parties and the issues are one and the same. The parties have
consented for the same and advanced common arguments.
The Kolkata application for registration was the earliest application of the three as well the OA/29/2010/TM/KOL is also earlier, the appellant
started his arguments first and then the respondent. For the sake of convenience, the appellants in OA/29/2010/TM/KOL is referred to as the
appellant in all the appeals and the appellant in OA/32/2010/TM/CH and OA/33/2010/TM/CH is referred to as the respondents in all the appeals. The
appellant's marks will be termed as Chennai mark and the respondent's mark will be termed as Kolkata mark.
The learned Counsel for the appellant submitted that the respondents filed an application for registration of the trade mark ""TITAN"" in Class 4
under No. 556322 claiming use since June, 1991 and the said application was opposed by the appellant. The opposition was dismissed and the
registration was allowed - OA/29/2010/TM/KOL.
In the other two appeals namely, OA/32/2010/TM/CH and OA/33/2010/TM/CH, the respondents opposed the application filed by the appellants
under Nos. 630032 in Class 1 and 630041 in Class 4 claiming as proposed to be used mark. The opposition was dismissed and the registration granted.
1 9 . The Counsel further submitted that the Kolkata application was filed by one Fuchs MineralOelwerke GmBH but now Fuchs Petrolub AG is
litigating the matters. There is no amendment or correction for the change. The Counsel then referred to the deed of assignment and submitted that
consideration mentioned therein was too small an amount which cannot be accepted. The provisions of Section 45 and Rule 73 have not been
complied with. The request on Form TM 24 has not been filed. The Counsel submitted that recordal of the change have not been complied with and
relied on the judgment reported in MANU/TN/0091/1995 - M. Ramaswami Chettiar, Appellants Vs. M/s T.M. Ramaswamy Chettiar and Co.,
Respondent. In the affidavit of evidence in support of application - Kolkata mark - the respondent has given sales figures from the year 1999 where
there is no whisper of its sales earlier to 1999.
The Counsel also pointed out to the magazine Autocar India dated November, 2000, where it was stated the ""FUCHS LUBRICANTS (India) has
launched its Tita GTI engine oil..."" and submitted that if at all use by the respondent would only be from 2000 and not 1991 as claimed in their
application for registration. In fact only in October, 2000, they planned to set up a plant in Mumbai and therefore user since 1991 is false. The
respondents obtaining registration abroad will not prove use of the trade mark in India. The Counsel then submitted that the sales figures given in the
proceedings were different from one another.
The appellants trade mark ""TITAN"" is a well known trade mark as defined under Section 2(zg) of the Act. The adoption of the trade mark by any
other third person would be detrimental to the appellants distinctive trade mark. A mark which is identical to an earlier trade mark and is to be
registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor shall
not be registered as per Section 11(2) (a&b) of the Act.
The Counsel then relied on few judgments in support of his case -
(i) MANU/TN/1911/2003 - Antony Devaraj and Anr., Appellants Vs. Aralvaimozhi (Kurusadi) Devasahayam Mount Oor and Thuya Viagula, rep. by
the Trustee and Ors., Respondent
(ii) (1898) 15 RPC 105 - The Eastman Photographic Materials Co. Ltd. and another, Vs. The John Griffiths Cycle Corporation Ltd. and The Kodak
Cycle Co. Ltd.
(iii) (1955) 72 RPC 75 Ch.D.-H.J. Leas and Son (London) Ltd's Appln. - ""Leesona"" T.M.
(iv) (1965) RPC 363 TMR - ""Players"" T.M.
(v) MANU/IC/0061/2011 - M/s. Karnataka Cooperative Milk Producers Federation Limited, Appellants Vs. M/s. Sree Nandhini Palace and The
Deputy Registrar of Trade Marks, Chennai, Respondents
(vi) MANU/IC/0033/2011 - Jupiter Infosys Ltd., Appellant Vs. Infosys Technologies Ltd. and The Registrar of Trade Marks, Respondents
(vii) MANU/TN/0252/1967 - T.G. Balaji Chettiar Vs. Hindustan Lever Ltd., Bombay
(viii) (2011) 2 MLJ 849 (SC)-T.V. Venugopal, Appellant Vs. Ushodaya Enterprises Ltd. and Another, Respondents
The Counsel further submitted that in the Chennai mark the respondents had not filed their evidence in time and were treated as abandoned.
In reply, the Counsel for the respondent submitted that the word ""TITAN"" is not an invented word. The appellants are using the trade mark
TITAN"" only for the goods falling in Class 14 and not for goods like lube oils, fuels etc. The respondents are first in the market as regards Class 4
goods. The appellants had not pleaded well known mark whereas the Registrar had suo motu granted the status of a well known trade mark. The
mark cannot be said to be a well known mark as it is registered in the name of several traders. The appellants were only proposing to use the trade
mark on the date of their application for registration.
The Counsel then relied on few judgments namely
(i) 2011 (47) PTC 175 (Del.) - Shell Brands International AG & Anr., Plaintiffs Vs. Pradeep Jain Proprietor Shell Exports, Defendant
( i i ) (1979) 2 IPLR 83 -Mohan Goldwater Breweries (Private) Limited, Applicants Vs. Khoday Distilleries Private Limited and Another,
Respondents
(iii) 1941 (91) RPC 58 - In the matter of an application by Edward Hack for the Registration of a Trade Mark
(iv) 1998 (Suppl.) Arb. LR 132 (Cal.) (DB) - Milment Oftho Industries and Others, Appellants Vs. Allergan Inc., Respondents
(v) AIR 1996 SC 2275 - Vishnudas Trading as Vishnudas Kishandas, Petitioner Vs. Vazir Sultan Tobacco Co. Ltd., Hyderabad and Another,
Respondents
The Counsel for the appellant in rejoinder submitted that the word ""TITAN' was not a dictionary word. The Counsel then submitted that as early
as 1996 a cease and desist notice was issued to the respondents for which till date there was no reply. The respondent's argument that the trade
channels are different cannot be accepted. The respondents have various trade marks was the appellants other submission. The appellant's Counsel
then relied on section 29(4) of the Act.
We have heard and considered the arguments of both the Counsel and have gone through the pleadings and documents.
We shall first deal with the appeal under OA/29/2010/TM/KOL - Kolkata mark. The application for registration has been filed by one Fuchs
MineralOelwerke GmBH which has changed its name to Fuchs Schmenerstoffe GmBH, there is no evidence in support of the above contention of
change. Fuchs Schmenerstoffe GmBH assigned the trade marks to Fuchs Petrolub AG by a deed of assignment dated 10.12.2002. The respondent
has not clearly mentioned about their proprietorship. The appellants contended that when the mark was applied for it was proposed to be used and in
the Trade Marks Journal advertisement the date of user was from June, 1991. The respondents have filed additional representation along with their
counter statement, one, representation states it to be ""proposed to be used""; and the other states ""June 1991"". Even without going into the additional
representations filed by the respondent in the Kolkata mark, we think the user can be claimed only from the year 1994 as it is their own statement. But
though the respondents submit that they used the trade mark ""TITAN"" since 1994 through the joint venture, there has been no evidence to show their
user since 1994.
In fact, the respondent's document, a Newspaper cutting of the year 2000, there is a mention that the respondent launches its product only then. If
that be the case, it is to be taken that they started the business only in 2000. That paper cutting also mentions the trade mark ""TITAN GTI"" and not
the ""TITAN"" alone. The sales figures are given from the year 1999 only which again is not supported by any document like invoices, bills, etc.
We do not agree with the finding in the impugned order that a search was made and as there was no mark pending, the respondents applied for
the registration. The respondent's contention is that they derived the right from ""Titan Chemicals"" as they withdrew the application after amicable
settlement. The application for registration of the trade mark ""TITAN"" was filed in 1988 even before the respondents and the same was advertised in
1995. Titan Chemicals had withdrawn the application only in 2000. The conflicting mark for identical goods were on the register pending when the
respondents applied for in the year 1991. The mark therefore cannot be said to have acquired distinctiveness by use.
3 0 . The issue regarding confusion and deception has to be satisfied by the respondents. In an opposition proceedings the onus is on the applicant for
registration, that is, the respondent herein to prove that registration of the impugned trade mark would not lead to confusion. In this regard the
respondent's contention is that there is no possibility of confusion or deception as the goods are totally different. The appellants' trade mark ""TITAN
has been used since 1986 and they are the registered proprietors of the trade mark in Class 14. The mark has thus earned good reputation among the
public. The use by the respondents would definitely lead the public to think that the respondent's goods emanate from the appellants. The word
TITAN"" is not only a trade mark also the appellant's trading style. The mark which is likely to cause confusion is barred registration by the provisions
of the Act.
3 1 . The rival marks are identical. The appellants have been using in India and abroad. The appellants are registered proprietors of the trade mark in
various classes. The appellants have been using the trade mark since 1986. The respondents user as claimed by them is only from 1994 but as
observed earlier there is no user at least till 2000. No doubt both the appellants and the respondents have obtained registration in various countries and
are also carrying on business abroad. The appellants are the prior adopters of the trade mark. The appellants have given the reason for their adoption
whereas the respondents have no reason for the adoption of the trade mark ""TITAN"". It is also seen that the respondents have been using various
other marks with the trading style ""Fuchs"" as a prefix. The respondent therefore cannot be a proprietor of the trade mark ""TITAN"". The registration
of the mark would therefore be in contravention of the Act. The registration has to be refused.
For the reasons stated above, the impugned order is set aside and the appeal OA/29/2010/TM/KOL is allowed with costs of Rs. 5,000/-.
Consequently, the application for registration of the trade mark ""TITAN"" under No. 556322 in Class 4 is refused registration.
33 . Now we shall deal with the application for registration of the Chennai marks under No. 630032 in class 1 and 630041 in Class 4.
The impugned trade marks are well known among the public especially in respect of Watches. The respondent's contention as regards the
appellants submission that the trade mark is a well known trade mark is that the appellants had not pleaded and the Registrar cannot hold the
appellant's mark to be a well known mark. We find force in the arguments of the appellants that the concept of well known mark was not available
before the 1999 Act and so could not be pleaded. In this regard, we quote the observation from the judgment - MANU/IC/0033/2011 (cited supra) -
It is indisputable that the provisions relating to the well-known trade mark was introduced only in 1999 Act, Section 2(zg) defines what is a well-
known trade mark. It is a mark of certain goods or services which has become so well-known to a large number of people with the result that the use
of such a mark in relation to some other goods or services would be taken as an indicator of the link between these goods or services and the goods or
services first mentioned. Section 11(6) (7) (8) (9) and (10) deal with well-known trade marks. Now why was it necessary to introduce the concept of
well-known trade mark? The basis for introducing the concept of well-known trade mark is inextricably linked with maintaining the purity of the
Register. Purity of Register is based on public interest. When the mark is well known it is as if the public gets a warranty of quality relating to the
goods for which the mark was originally used/registered and by virtue of the quality or satisfaction or assurance, the public assumes that if the same
mark is used in relation to other goods, there is a link between the first mentioned goods and the subsequent goods warranting the same quality or
satisfaction or assurance. S.11(10) of the new Act bars the Registrar from registering any mark which is identical to a well known mark. This is to
prevent anyone attempting to deceive or confuse the public by adopting a well-known mark so that they can ride on their goodwill. Even without the
introduction of Section 2(zg), these principles must guide while considering a mark that is identical or deceptively similar to a mark which has acquired
a strong reputation. The concept of well-known trade mark has undoubtedly been introduced in the Act only now. But the principles underlying this
have definitely existed right from the days when the Trade Mark Protection was given statutory recognition. We have the case of Daimler Benz
Aktiegesellschaft v. Hybo Hindustan (AIR 1994 Del 239), Sunder Parmanand Lalwani and Ors. v, Caltex (AIR 1969 Bom 24) where the protection
was given to trade marks which were so entrenched in the minds of the people that the Courts restrained others from using the trade mark albeit for a
totally different class of goods because the Courts were of the opinion that to use the trade mark which had acquired a certain degree of reputation by
some totally unconnected would not be in the interest of the public nor would it add to the purity of the Register. Therefore, the introduction of the
concept of well-known trade mark is only one facet of maintaining the purity of the Register and safeguarding public interest. The law makers
obviously felt that it should be clarified and given a statutory form so that such well-known trade marks are not used/abused by others who have no
connection with the original users/owners of such well-known marks so as to gain an advantage which they are not entitled to nor to mislead the public
into believing there was a business connection. Therefore, while we accept the legal point raised by the applicant that the concept of well-known trade
mark was not in the Statute book before the new Act came, undoubtedly and indisputably there were marks which were considered well-known even
earlier. Now Section 11(8) of the new Act provides that if any Court determines that the mark is well-known among at least one relevant section of
the public the Registrar shall consider it as a well-known trade mark.
Based on the above decision we hold that the appellants have used the trade mark ""TITAN"" in respect of Watches etc. falling in Class 14. The
public definitely associate the goods bearing the trade mark ""TITAN"" only with the appellants and no one else. The concept of well known mark was
not available at that period of time and therefore was not pleaded in the opposition proceedings. The word ""TITAN"" is a coined word. The mark has
acquired distinctiveness by long and extensive use.
When the mark has acquired the well known status in respect of any goods or class of goods, the marks becomes known to the public and if the
mark is used in respect of any other goods the public would definitely think that there is a trade connection and would not be led to any confusion. In
the instant case, no doubt the mark was proposed to be used. The original intention of the proprietor is not material when he commenced to use. The
actual practice is that the mark has come to be associated by the public and trade as to origin of the goods. In the instant case, the appellant's trade
mark is associated with them by the public and the use for any other goods will only lead the public to think that the origin is that of the appellants. The
appellants therefore can be said to be the proprietor of the mark.
In view of the above, we think that there is no infirmity in the impugned order to be interfered by us. The appeals OA/32/2010/TM/CH and
OA/33/2010/TM/CH are therefore dismissed and the registrations No. 630032 in Class 1 and No. 630041 in Class 4 are granted. All Miscellaneous
Petitions closed.