Vishnu Pulse Mills vs Sachdeva and Sons

S.B. Palo, Asst. Registrar of Trade Marks

On 6.7.1992 Manubhai Bhailalbhai Patel and others trading as Vishnu Pulse Mills, Vasad 388306, (W.Rly), Gujarat (hereinafter referred to as the applicants) filed an application under No. 576556 in class 30 for registration of trade mark PARI with device of Fairy with garland in her hand in respect of Toor Dall. The said application was examined and ordered to advertised before acceptance and accordingly advertised in the trade marks journal No. 1242 dtd. 8.3.2001 at page 171. M/s. Sachdeva & Sons. Post Office Gilwali, Sangrana Sahib, Taran Taran Road, Amritsar-143022, Punjab (hereinafter referred to as the opponents) objecting to the registration of trade mark of the applicants by filing notice of opposition on form TM-5 on 3.4.2001 on the following grounds :

(1) The opponents are engaged in the business of manufacturing and selling and marketing of various kinds of Rice. The opponents are using the trade mark PARI and device Fairy with garland in her hand since the year 1968 in respect of various kinds of rice.

(2) That by virtue of prior adoption and extensive use the said trade mark has become distinctive and popular among the public and also in trade

(3) That the opponents are registered proprietors of trade mark PARI under application No. 260390 in class 30 and other classes as mentioned in paragraph 5 of the notice of opposition.

(4) That the opponents have successfully filed the opposition proceedings against the identical trade mark adopted by the other traders. The details of such proceedings has mentioned in para 13 of the notice of opposition.

(5) That the impugned trade mark of the applicants is visually, phonetically and structurally in all such other essential aspects identical with and/or deceptively similar to the trade mark of the opponents so the registration is contrary to the provisions of section 9T 11 and 18 of the Act.

(6) That the opponents stated that the impugned application is not maintainable and barred by the principle of res-judicata u/s 10 of the C.P.C., as the applicants earlier application under No. 408050 has already been dismissed by the Asst. Registrar of Trade Marks vide order dated 9.3.1992 in opposition No. AMD-364.

In view of the above pleadings the opponents prayed for the refusal of impugned application.

In their counter statement the applicants stated that they are engaged in the business of manufacturing and marketing of Toor Dal since the year 1982. In the year 1982 they have adopted a trade mark PARI CHAP and using the same continuously and uninterruptedly since then. Due to extensive use and excellent quality of their products they have gained considerable reputation and goodwill in the trade. The applicants stated that their trade mark is different and dissimilar from the opponents and hence the question of any confusion or deception does not arise. The applicants finally prayed that the opposition may be dismissed and application may be proceeded to registration.

Both opponents and applicants have not filed evidence in support of opposition and application. Thereafter the matter was set down for hearing and finally came up before me on 9.3.2011 when Shri Kamal Kishore Arora and Gaurav Arora, Advocate appeared for the opponents and Shri Dipen Thakkor, Advocate appeared for the applicants. The hearing concluded on the same day and order reserved.

The counsel for the opponents submitted that the opponents are the registered proprietor of trade mark PARI and device Fairy with garland in her hand in class 30 and in other classes. He submitted that even though the opponents have not adduced any evidence but rely on the registrations. In this regard he relied on the decision of IPAB 2006(1) CTMR 82 wherein it is decided that existence of registration in the Register of trade marks is a prima facie evidence of user of the mark. He also relied on the following case laws:

(1) 2004 (2) CTMR 23 (IPAB)

(2) A.I.R 1932 Privy Council 95

(3) IPLR 1987 135 BOM

In reply the counsel for the applicants submitted that the applicants have adopted the impugned trade mark PARI with device of Fairy with garland in her hand and have been using the same since 1982 in respect of Toor Dal. The applicants has also not filed any evidence to substantiate their claim of use. The counsel further argued that the impugned trade mark is not similar/deceptively similar to the opponents trade marks. The goods of the applicants are also not same and similar to the opponents goods.

Now I take up opponents objection u/s 11 of the Act. Section 11 prohibits registration of a trade mark which is identical with or deceptively similar to earlier registered trade mark. In the present case both the parties have not adduced evidence to prove their respective claim. However in an opposition proceedings the onus lies ultimately upon the applicants to establish that he is entitled to registration of the mark applied for. In the present case the applicants have failed to file evidence to substantiate their use. Similarly the opponents have also not filed any evidence In support of their opposition but they have relied upon their registrations in various classes. Now question arises whether the use of applicants mark in fair and normal manner will likely to cause deception having regard to prior registered trade mark of opponents. To arrive at first conclusion I compare the applicants mark with opponents registered mark. The applicants mark consists of word PARI CHAPP with device of Fairy with garland in her hand, whereas opponents are registered proprietors of trade mark PARI CHAP and device of Pari/Fairy. Prima facie in both the marks the essential features are same and similar. Where one mark contains the whole of the other or its essential feature, it is a factor to be taken into consideration. It should be considered whether the individuality of the common part is lost or whether the common part stands out prominently (decided and reported in (1951) 68 RPC 103). The expression "Pari Chap" is common and prominent in both impugned and rival trade marks. In this connection, I refer to the settled principle decided in Parle Products (P) Ltd. Vs. J.P. and Co., Mysore, at 1362 in which it was observed that:

...in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential feature of the two marks are to be considered. They should riot be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one designs from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him

In Pianotist Co. Ltd., Application the principle laid down as follows :

You must take the 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 kinds of customers 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 mark 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 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 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.

Now question arises whether the rival goods are same/similar description of goods or not. Undoubtedly the rival goods will be sold on the same shop, on the same counter and to the same class of customer. The two sets of the goods are also of the same character i.e. consumer/household goods. It is also settled principle that the right acquired by reputation in the market through a trade mark not only extends to the particular goods sold by the proprietor but also to cognate classes of goods. The possibility of confusion or deception on account of resemblance of the two marks and same/similar description of goods cannot be ruled out under the aforesaid circumstances. I find that by reason of the opponents registered trade mark, the use of the applicants mark in normal and fair manner is likely to cause confusion and deception and as such section 11 of the Act constitute or bar to the registration of the applicants mark. I therefore upheld opponents objection u/s 11 of the Act.

Now I take up opponents objection u/s 18(1) of the Act. The opponents are the registered proprietor of trade mark PARI CHAP in class 30 under application No. 260390 in class 30. In the present proceedings the applicant has not filed any evidence or given any explanation of the adoption of the mark. In absence of any cogent evidence and satisfactory explanation of the adoption of mark, I do not find any reason to accept the applicants claim of proprietary right on impugned mark and upheld the opponents objection u/s 18(1) of the Act.

Since all the objection taken by the opponents goes in their favour I do not find any reason as to why I should exercise my discretion vested u/s 18(4) of the Act against the opponents.

So to sum opposition No. AMD-58760 is allowed and application No. 576556 in class 30 is refused registration. It is hereby ordered that the aforesaid applicants shall forthwith pay a sum of Rs. 1000/- (Rupees One Thousand only) to the aforesaid opponents as cost of these proceedings. Signed and sealed at Ahmedabad this 22 day of December, 2011.