E.I. Du Pont De Nemours & Co. vs Zip Industries Private Limited

T.R. Subramanian, Technical Member

This appeal is against the order dated 13th June 1996 by which the Assistant Registrar of Trade Marks has disallowed the appellants' opposition

No. MAS-2693 opposing the registration of respondents' Trade Mark Application No. 419168 and allowed the registration of the Trade Mark

'TUFFLON' in respect of Zip Fasteners in class 26 under the Trade & Merchandise Marks Act, 1958. On 14th March 1984, the respondents

(applicants) M/s. Zip Industries Private Limited having their office at 118, Broadway, First Floor, Chennai - 600 108 had applied for registration of the

Trade Mark 'TUFFLON' under No. 419168 in respect of Zip Fasteners under class 26, before the Trade Marks Registry. The mark was advertised in

the Trade Marks Journal No. 1025 dated 16.2.1982 at p. 1438. On 24th April 1992, the appellants (opponents) M/s. E.I. DU PONT DE NEMOURS

& CO. OF USA, having their office at 1007, Market Street, D-4068, Wilmington, DELAWARE 19898, U.S.A., 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), 12(1), 18(1) and 18(4) of the Trade & Merchandise Marks Act, 1958. The Respondent had filed their counter-statement

denying all the averments in the notice of the opposition. Thereafter, the evidence in support of the opposition was filed by the appellants. The

respondents did not file any evidence but relied on their counter-statement.

The matter was heard by the Assistant Registrar of Trade Marks, Chennai on 19th September 1995 and by his order dated 13th June 1996, he had

disallowed the opposition filed by the appellants. While discussing the grounds under Section 11(a) of the Trade & Merchandise Marks Act, 1958, the

Assistant Registrar of Trade Marks has held that the appellants have failed to discharge the initial onus of establishing reputation and use of their mark

in India. He has observed that the appellants have not filed even a single invoice pertaining to the sale of their products under the Trade Mark -

TEFLON -- in India. The Assistant Registrar of Trade Marks while discussing the grounds under Section 12(1) had held that the goods sold by the

appellants and the respondents' are neither the same nor are of the same description.

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

Trade Mark Appeal No. 6 of 1986. The above case was transferred to the Intellectual Property Appellate Board under Section 100 of the Trade

Marks Act, 1999, which Section came into effect from 6th October 2003. This present transferred appeal case was heard by the Intellectual Property

Appellate Board on 18.12.2003.

At the hearing, the appellants were represented by Ms. Gladys Daniel, Advocate and the respondents were represented by Mr. Ashok Kumar J.

Daga, Advocate of M/s. Daga & Daga. Ms. Gladys Daniel, the learned counsel for the appellants submitted that the Assistant Registrar of Trade

Marks had disallowed their opposition mainly on the ground that their good and the goods of the respondents were different and also that the

appellants had not established their reputation and use of their goods in India. The main contention of the learned counsel for the appellants is that the

registration of the respondents' mark 'TUFFLON' is contrary to Sections 12(1) and 11(a) of the Trade & Merchandise Marks Act, 1958. She

submitted that the appellants are the proprietors of the registered Trade Mark 'TEFLON' and that they had obtained registration of their mark in India

in different classes. She referred to a list of their registration in India under different classes, which are as follows:-

SL. No., Registration No., Date, Class, Goods

1., 237465, 8/9/1996, Plastics in the form of sheet, rods, tubes etc.

2., 242147, 16/5/1967, 2, Resinous coating solutions and emulsions to impart non stick finish to metallic surfaces

3., 242148, 16/5/1967, 21, Cooking utensils etc

4., 258487, 31/7/1969, 1, Resinous moulding powders

5., 413912, 2/12/1983, 21, Cookware etc

6., 423279, 16/6/1984, 4, Dry and wet lubricants

7., 413908, 2/12/1983, 11, Electric cookware

8., 470880, 15/4/1987, 1, Adhesive tapes for industrial use

9., 470881, 15/4/1987, 24, Fibre glass cloth

As they are the registered proprietors of the above trade mark in different classes, she contended that the use of the mark by the respondents would

cause deception and confusion.

The counsel for the respondents in reply submitted that the respondents' mark 'TUFFLON' and the appellants' mark 'TEFLON' are quite different.

He also pointed out that the rival goods are different and that the appellants had not registered their trade mark in class 26.

Section 12(1) of the Trade & Merchandise Marks Act, 1958 reads as follows:-

Prohibition of registration of identical or deceptively similar trade marks - (1) Save as provided in sub-Section (3), no trade mark shall be registered

in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of

a different proprietor in respect of the same goods or description of goods.

As far as Section 12(1) of the Trade & Merchandise Marks Act, 1958 is concerned, the learned counsel for the appellants agreed that the goods of

the appellants and that of the respondents are not the same. The Assistant Registrar of Trade Marks has also held that the goods in respect of the

rival trade marks are neither the same nor are of the same description. We also agree with the above findings of the Assistant Registrar. The

Assistant Registrar has also held that the marks 'TEFLON' AND 'TUFFLON' are deceptively similar. We also agree with his views. Hence, we

agree with the findings of the Assistant Registrar that even though the rival marks are deceptively similar, the appellants' objection under Section 12(1)

of the Trade & Merchandise Marks Act, 1958 cannot be allowed as the rival goods are different.

Next, we would take up 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 'TEFLON'. 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:-

1998 (Suppl) ARB LR 627 (DB) (VOLVO mark)

1998 PTC 415 (Del) (WHIRLPOOL mark)

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

AIR 1983 Punjab & Haryana (PHILIPS mark)

AIR 1994 Del 237 (BENZ mark)

(1998) IPLR 326 Mad(DB) (CATERPILLER mark)

She submitted that in view of the fact that the principle of transborder reputation has been recognized by Indian courts, the respondents' marks should

not be registration as the appellants' mark 'TEFLON' has transborder reputation and is a well known mark. She also submitted that the use of their

trade mark 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. Ashok Kumar J. Daga, the learned counsel for the respondents contended that at the opposition stage itself, 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 'TEFLON' 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, 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, 1985-86 (10) IPLR 406). The counsel for the respondents also referred to Vol. 3 page 2474 of the book 'Cases and Materials on

Trade Marks and Allied Laws' and contended that the appellants has to establish by evidence that their mark has acquired reputation by use in India.

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 only 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 term 'well known trade mark'. However, 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 mark takes into account any fact which he considered 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 'TEFLON' in India. They had also virtually accepted that their mark

had not been used in India. No doubt they have filed details of foreign countries where they have registered their trade mark 'TEFLON' and

advertisement expenses for the period 1966 to 1984 incurred by them for advertisements outside India and sales figures for their goods in foreign

countries bearing the trademark 'TEFLON' for the period 1966 to 1985. The appellants have also filed copies of a few advertisements pertains to the

goods bearing the trade mark. Merely filing a few set of documents like foreign sales and advertisement expenses 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 tailors and manufacturers of garments, handbags, soft luggages etc, who use zip fasteners. No evidence from them to prove

reputation of the appellants' 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 18(1), the counsel for the appellants contended that the respondents have not honestly

adopted the mark and that they have 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 adopted and coined the trade mark 'TUFFLON' from the words 'TUFF' and 'NYLON'. No doubt, that the

appellants cannot claim monopoly for the trade mark 'TEFLON' in respect of all classes just because they had registered their mark in India in a few

classes. As the goods are zip fasteners, which are generally made of plastics, we are inclined to accept the explanation offered by the respondents

regarding adoption of the mark.

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