E.I. Du Pont De Nemours & Co. vs Gemini Distilleries Ltd.

T.R. Subramanian, Technical Member

This appeal is against the order dated 6th June 1996 by which the Assistant Registrar of Trade Marks has refused the appellants' opposition No.

MAS-2761 opposing the registration of respondents' Trade Mark Application No. 476484B and allowed the registration of the Trade Mark

'DUPONT' in respect of Whisky, Brandy, Gin and Beer in class 33 under the Trade & Merchandise Marks Act, 1958. On 7th August, 1987, the

respondents hereinabove had applied for registration of the Trade Mark 'DUPONT' under No. 476484 in respect of Whisky, Brandy, Gin and Beer

under class 33, before the Trade Marks Registry. The mark was accepted for registration and advertised in the Trade Marks Journal dated 16.6.1992.

On 24th August, 1992, the appellants hereinabove had filed a notice of opposition before the Trade Marks Registry objecting to the registration of the

respondents' mark on the ground that the registration of the impugned mark would be contrary to sections 9, 11(a), 11(e) and 18(1) of the Trade &

Merchandise Marks Act, 1958. Further, they had submitted that in addition to its use as a trade mark the word 'DU PONT' forms an integral part of

their corporate name and trading style and is also their house mark. The Respondent filed their counter-statement denying all the averments in the

notice of opposition and had stated that they are the proprietors of the trade mark 'DUPONT' by virtue of honest adoption and extensive use since 7th

August, 1987. The appellants then had filed their evidence. However, the respondent had not filed any evidence in support of the application.

The matter was heard by the Assistant Registrar of Trade Marks, Chennai on 29th November, 1995 and by his order dated 6th June, 1996, the

Assistant Registrar had refused the opposition. While discussing the grounds under section 11(a), the Assistant Registrar has held that the goods of the

appellants and that of the respondents are different and that there is no record to show or substantiate the appellants claim that their mark has any

reputation or is in use in India and that they have failed to discharge the initial onus of establishing reputation and use of their mark in India. While

discussing the ground under section 9, he had held that the appellants had not filed any evidence in support of their allegation that the respondent's

mark 'DUPONT' is a surname and that even though if it is accepted that it is a surname, it is a very rare surname. In India and hence he rejected the

appellant's objection under section 9. As far as section 11(a) is concerned he has observed that the appellants have not filed even a single invoice

pertaining to the sale of their products under the Trade Mark ""DUPONT"" in India.

The appellants had filed an appeal against the order of the Assistant Registrar of Trade Marks before the Hon'ble High Court of Madras under

Trade Mark Appeal No. 8 of 1996. The above case was transferred to the Intellectual Property Appellate Board under section 100 of the Trade

Marks Act, 1999, and the same was heard by the Board on 19.12.2003.

At the hearing, the appellants were represented by Ms. Gladys Daniel, Advocate and the respondents were represented by Mr. Yashod Vardhan,

Advocate. Ms. Gladys Daniel, the learned counsel for the appellants had submitted that the Assistant Registrar had refused their opposition mainly on

the ground that their goods and the goods of the respondents were different and also that the appellants had not established their reputation or use of

their mark in India. The main contention of the learned counsel for the appellants is that the registration of the respondents' mark 'DUPONT' is

contrary to section 11(a) and section 9 of the Trade & Merchandise Marks Act, 1958. She submitted that the appellants are the proprietors of the

registered Trade Mark 'DU PONT' In oval in India under Registration Nos. 153571, 419010, 419011, 419012, 419013, 419014, 419015, 419016,

420442, 420443, 420444, 420445B, 420446 and 420447 in Classes 10, 17, 22, 10, 16, 5.1, 23, 2, 9, 10, 13, 1 and 5, respectively. She submitted that as

they are the registered proprietors of the above trade mark in different classes, the use of the mark by the respondents would cause deception and

confusion as they have diversified their manufacture in various fields.

The counsel for the respondents in reply submitted that even though the rival marks are similar, because of the fact that the rival goods are different

and that the appellants have not registered their trade mark in Class 33, there would be no confusion or deception in the minds of the public.

We would take up for consideration the objection under section 11(a) which reads as follows:-

Prohibition of registration of certain marks-A mark-

(a) the use of which would be likely to deceive or cause confusion;

The counsel for the appellants in her submission under section 11(a) mainly relied on the transborder reputation of their trade mark 'DU PONT'.

She contended that the appellants have to submit proof of transborder reputation of their trade mark only and that it is not necessary that the mark has

to be used in India to prove reputation. She pointed out that the Indian courts have upheld the transborder reputation of well known Trade Marks. She

relied on the following case laws relating to foreign trade marks like Volvo, Whirlpool, Phillips, 7'O Clock, Caterpillar, Mercedes Benz, etc., in support

of her contention:-

(a) 1998 (Suppl.) ArbLR 627 (DB) (Volvo mark)

(b) 1996 PTC 415 (Del BC) (Whirlpool mark)

(c) 1998 PTC-1 Div. Bench Bombay (7'O Clock mark)

(d) AIR 1983 Punjab & Haryana (Philips mark)

(e) AIR 1994 Del 237 (Benz mark)

(f) (1998) IPLR 326 Mad (DB) (Caterpiller mark)

She submitted that in view of the fact that the principle of trans-border reputation has been recognized by the Indian Courts, the respondent's mark

should not be registered as the appellants mark 'DU PONT' has trans-border reputation and is a well known mark. She also submitted that the use of

the mark 'DUPONT' by the respondents even for different goods would cause confusion and deception in the minds of the public as to the origin of

the goods.

In reply, Mr. Yashod Varadhan, the learned counsel for the respondents contended that the appellants had not adduced any evidence regarding

their reputation and sale of their goods in India. He referred to the case laws relied upon by the counsel for the appellants and submitted that the trade

mark referred to by her were well known trade marks, whereas the appellants' trade mark 'DU PONT' cannot be considered to be a well known

trade mark as the appellants have not adduced sufficient evidence in support of their contention that their mark is a well known trade mark in India.

He referred to BATA case decided by the Calcutta High Court, wherein the court refused to restrain the defendant by an interlocutory injunction

from using the mark BATA in respect of lungies etc. (Rustom Ali v. Bata Shoe Company, AIR 1957 Calcutta 127). He also referred to the decision

of the Bombay High Court in SONY case, where the court held that the mark SONY for nail polish can be registered as the petitioner SONY

KABUSHIKI Kaisha, Japan, has registered their trade mark SONY mainly for electronic goods and that the rival goods are different AIR 1985 Bom

327, AIR 1987 (10) IPLR 406). He also cited AIR 1996 SC 2275. He also referred to section 11 of the Trade Marks Act, 1999 which refers to well

known trade marks.

The various case laws cited by the counsel for the appellants lays down the principle of transborder reputation relating to well known trade marks.

However, each trade mark is unique and each case has to be decided on the basis of the evidences filed in support of reputation of the mark.

Reputation is based on facts. The question to be decided is whether the appellants' foreign reputation, if any, has reached India and that they have

established their presence in India. Furthermore, the cases cited by the Counsel for the appellants relate to grant of injunctions by way of interim

orders and the result of the main suit is not brought to our notice. The counsel for appellants has based her argument that their mark is a well known

trade mark. The Trade & Merchandise Marks Act, 1958 has not specifically defined the terms 'well known trade mark'. However, cases relating to

well known trade marks are mainly decided on common law and under section 11(a) of the act on the basis whether the mark was honestly or

dishonestly adopted. But, the Trade Marks Act, 1999 has provided for protection of well known trade marks under section 11.

The facts to be considered for determining whether a trade mark is a well known trade mark, is provided in section 11(6) of the Trade Marks Act,

1999.

Section 11(6) reads as follows:-

The Registrar shall, while determining whether a trade mark is a well known trade marks take into account any fact which he considers relevant for

determining a trade mark as a well-known trade mark including-

(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion

of the trade mark;

(ii) the duration, extent and geographical area of any use of that trade mark;

(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or

exhibitions of the goods or services to which the trade mark applies;

(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they

reflect the use or recognition of the trade mark;

(v) the record of successful enforcement of the rights in that trade mark; in particular, the extent to which the trade mark has been recognised as a

well known trade mark by any Court or Registrar under that record.

The Tribunal has to adjudge whether the use of the mark applied for is likely to cause confusion in the minds of the consumers. The reputation in

its practical meaning is the knowledge of the mark in the relevant section of the public in India. This knowledge can occur either by the use of the

mark in India or by its publicity in India.

The appellants have not adduced any evidence of the use of their trade mark 'DU PONT' in India. No doubt, they have filed details of foreign

countries where they have registered their trade mark 'DU PONT' and the sales figures of their goods in foreign countries bearing the trade mark

'DU PONT' for the period from 1983 to 1993. Merely filing the above details do not go to prove that their mark has reputation in India. They have not

adduced sufficient evidence in support of their reputation by promotion of their mark in India either through advertising and publicity, presentations at

fairs and exhibitions, newspapers, sports sponsorship, journals, magazines etc. The relevant section of the public in this case are the manufacturers,

distributors and consumers of alcoholic drinks. No evidence from them to prove reputation of their mark in India has been adduced. The appellants

have to file substantial evidence in support of their contention that their mark is a well known mark in India. As they have failed in this matter, we are

of the view that the appellants have not established the reputation of their mark in India either by use or publicity.

Regarding Section 9 of the Act, the counsel for the appellant submitted that the mark 'DUPONT' is a surname and so cannot be registered. In

reply, the counsel for the respondents submitted that 'DUPONT' being a rare surname could be registered in Part B of the Register and the same has

been allowed by the Registrar. It is to be noted that the appellants' mark is also 'DU PONT' and the same has been registered in different classes. If

the objection under section 9 as pointed out by the appellant has to be maintained, then it would have been applicable to the applications of the

appellants also and so they should have been refused. But the Registrar has allowed registration of the appellant mark. We agree with the view of the

Assistant Registrar of Trade Marks that 'DU PONT' even if it is a surname, is a very rare surname in India and it is therefore capable of

distinguishing the goods of the respondents.

Regarding section 18(1), the counsel for the appellants contended that the respondents have not honestly adopted the mark and that they have just

copied their trade mark. In reply, the counsel for the respondents submitted that they were not aware of the appellants' mark and that they have

honestly adopted the trade mark 'DUPONT' in respect of their goods in Class 33 which are different from the goods of the appellants. He also

submitted that they have selected it on the basis of the name of a small hill in the range of Niligiri Hills. No doubt, the appellants have registered the

trade mark in different classes. However, they have not registered their trade mark in class 33. Just because the appellants have registered their mark

in a few classes, they cannot claim monopoly for the word 'DU PONT' in respect of goods falling under other classes of goods for which they have

not registered. The respondents had also submitted that they had selected on the basis of a name of a small hill in the range of Niligiri hills. As the

goods are different, we are inclined to accept the explanation offered by the respondents regarding adoption of the mark. Taking into consideration all

the above, we therefore, dismiss the appeal. There is no order for costs.