Chamanlal & Sons vs Bharat Industries

T.R. Subramanian, Technical Member

This is an appeal filed by the appellants/applicants against the order of the Deputy Registrar of Trade Marks in opposition No. DEL 4328 opposing

the registration of the appellant's trade mark application No. 372298. The Deputy Registrar had refused the trade mark application No. 372298. On

16th February 1981, the appellants hereinabove had filed a trade mark application No. 372298 in class 30 for registering a trade mark label containing

inter alia the device of rising sun and the words 'SUN BRAND RICE' in respect of the goods 'rice' claiming user since April 1977. The application

was advertised in the Trade Mark Journal dated 16th October 1984.

On 5th December 1984, the respondents hereinabove filed a notice of opposition opposing the registration of the appellant's trade mark on the

ground that they are the proprietors of the trade mark 'SURAJ' (word and device) in respect of rice. They have submitted that they have been using

the said trade mark since 20th November 1973 and that the trade mark of the appellants and that of the respondents are similar or deceptively similar

and this would likely to deceive or cause confusion. They contended that the registration of the appellants' mark would be contrary to sections 9, 11(a),

11(e), 12(1) and 18(1) of the Trade and Merchandise Marks Act, 1958. They further contended that the appellant's mark is not also registrable under

section 12(3) of the Act.

The appellants in their counter-statement denied all the allegations and statements made by the respondents and submitted that they have adopted

the trade mark 'SUN BRAND' honestly and that it is registrable under section 12(3) of the Act. The respondents filed an affidavit dated 26th

September 1985 of Shri Lachhmandas in their support. The appellants filed three affidavits of Shri Rajeev Kumar, Shri Mahendra Mehta and Shri

Anup Kumar Gupta in support of their case. The respondents filed their evidence in reply by way of an affidavit dated 23rd April 1986 of Shri

Lachhmandas.

The matter was heard by the Deputy Registrar of Trade Marks on 26th August 1986 and by his order dated 9th September 1986, he had allowed

the opposition and refused the application. The appellants filed an appeal before the Hon'ble High Court of Delhi vide CM(M)/19 of 1987, which was

transferred to Intellectual Property Appellate Board (IPAB) under section 100 of the Trade Marks Act, 1999, which section came into force on 6th

October 2003. This is the present appeal before the Appellate Board. At the hearing, Shri P.K. Jain, Advocate appeared for the appellants but none

appeared for the respondents.

The learned counsel for the appellants submitted that the mark of the respondents is 'SURAJ', which is not similar to the mark of the appellants,

which is 'SUN BRAND'. It is seen from the records and also from the order of the Deputy Registrar of Trade Marks that the Deputy Registrar has

considered the question of similarity between the two rival marks. He has referred to the Book by Shri Narayanan on Trade marks and Passing-off,

third edn., paras 660, which reads as follows:-

In considering the question of similarity between two word marks it is necessary to take into account the meanings conveyed by the words or the

ideas suggested by them, for words are remembered not only by their sound and appearance but also by the ideas suggested by them. Words

conveying the same meaning or suggesting the same idea are in general likely to deceive or cause confusion.

He has also referred to Balakrishnayya v. Registrar of Trade Marks for Hyderabad, ILR (1954) Hyd. 694, where it was held that the word

'Prabhat' (meaning 'Sun' in Hindi) was similar to ""Sun"". In Balaji Chettiar v. Hindustan Lever Ltd., AIR 1967 Mad 148, the word ""Surian"" (the Tamil

equivalent of ""Sun"") was held deceptively similar to ""Sun"".

As regards section 11(a) of the Act, the learned counsel for the appellants submitted that the respondents mark 'SURAJ' is not similar to the

appellant's trade mark 'SUN'. He also submitted that the respondents have not produced evidence regarding use of their mark from 1973.

In the present case, the respondents trade mark 'SURAJ' whose English equivalent word is 'SUN'. The trade mark applied for by the appellants

consists of the device of Sun and the words 'SUN BRAND RICE'. As the ideas conveyed by each of the competing trade mark is that of the Sun, we

agree with the views of the Deputy Registrar that the appellants trade mark 'SUN' is deceptively similar to the respondents' trade mark 'SURAJ'.

Further, the goods of the rival parties are also same namely, rice. It is also seen from the records and the order of the Deputy Registrar that the date

of the user of the respondents' trade mark 'SURAJ' is from 20.11.1973 as per the documentary evidence available. On the other hand, the appellants

have themselves stated in the application that they have adopted and used the trade mark 'SUN' brand from April 1977 only. It is seen from the above

that the respondents are prior users of the trade mark and they have been using it from that date continuously. Accordingly, we uphold the order of the

Deputy Registrar that the registration of the appellants' trade mark is prohibited under section 11(a) of the Act.

The counsel for the appellants also referred to the trade mark application No. 338817 filed by the respondents for registering the trade mark 'SUN

BRAND' in respect of rice, which they had opposed under No. DEL 3314. However, the Deputy Registrar in this case had dismissed the opposition

and allowed the registration of the respondents' application No. 338817. It is seen from the order of the Deputy Registrar in the above case that the

Deputy Registrar has held that the appellants have been using the trade mark from 1977 whereas the respondents have been using the trade mark

from 20.11.1973. This again goes to prove that the respondents are prior users of the trade mark.

As regards the contention of the counsel for the appellants that their mark is registrable under section 12(3), it is seen that the appellants have

been using the mark from April 1977 only. However, the respondents have been using the mark from 20.11.1973. The respondents belong to Kota

(Rajasthan) whereas the appellants are from Amritsar (Punjab). It is impossible to believe that the appellants who are dealing in rice in the adjoining

State of Punjab were not aware of the trade mark of the respondents who has been dealing in rice in Rajasthan. In order to succeed under section

12(3), the appellants have to honestly and concurrently use the trade mark. In the present case, we are of the opinion that there has been no honest

and concurrent use of the mark by the appellants. As the appellants has been using the trade mark only from April 1977, which is much later than the

use of the mark of the respondents, which is from 20.11.1973, the appellants have not made out a case under section 12(3). Hence, we agree with the

order of the Deputy Registrar that the appellants mark is not registrable under section 12(3) of the Act. In view of the above reasons, the appeal is

dismissed and there is no order for costs.