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Judgment
S. Jagadeesan, J
The appellant has filed this appeal against the order of the Assistant Registrar of Trade Marks, Ahmedabad, dated 10.4.1995, wherein the
opposition No. AMD 187 of the appellant was disallowed.
2 . S/Shri Jayanthilal Mahidas, Hiralal Mahidas, Smt. Damyantiben Mohanlal , Prakashkumar Mohanlal, Mukeshkumar Vithaldas and Smt. Charoo
Mansukhlal, trading as M/s. Deepak Engineering Syndicate, the first respondent herein, filed an application No. 433988 on 18.2.1985 for registration of
the trade mark 'BULLET' in respect of Diesel Oil Engines and parts thereof included in class 7 of the Fourth Schedule of the rules framed under the
Trade and Merchandise Marks Act, 1958, claiming the user since 1979. The said application was advertised before acceptance in the Trade Marks
Journal No. 971 dated, 16.11.1989 at page 1036. The appellant herein M/s. Enfield India Limited, filed notice of their intention to oppose the
registration of the trade mark on the ground of its violative of Sections, 9, 11(a), 11(e), 12(1) and 18(1) of the said Act. The first respondent filed their
counter statement. Both the parties filed their evidence and the matter was heard by the Assistant Registrar of Trade Marks on 24.11.1994 and
ultimately under the impugned order, the Assistant Registrar disallowed the opposition of the appellant and accepted the application of the first
respondent for registration. Aggrieved by the same, the appellant filed an appeal on the file of the High Court of Gujarat at Ahmedabad in Appeal No.
2/1995. By virtue of Section 100 of the Trade Marks Act, 1999, the said appeal stood transferred to this Appellate Board and numbered as
TA/252/2004/TM/AMD.
3 . We heard the appeal during our sitting at Ahmedabad on 20.12.2004. Shri A.A. Mohan of M/s. Mohan Associates, Chennai, appeared on behalf of
the appellant and Shri Y.J. Trivedi, appeared on behalf of the first respondent.
4 . The learned counsel for the appellant contended that the appellant is the registered proprietor of the trade mark 'BULLET' under No. 203761 in
class 12 and also under No. 387152 and 387054. All these registrations are in respect of motor cycles. The Bullet motor cycles from the Enfield India
Limited are the well known products among the public and has attained distinctiveness in respect of those products. The registration of an identical
mark by the first respondent in respect of their goods, viz., Diesel Oil Engines would cause confusion and deception in the trade as well as among the
public and hence the registration offends Section 11(a) of the said Act. The Assistant Registrar disallowed the opposition of the appellant only on the
ground that the goods are different and as such, Section 12(1) of the Act was not attracted and also the trade channel for the goods of the first
respondent are different from the trade channels of the appellant and hence, there cannot be any confusion and therefore the prohibition contemplated
under Section 11(a) was not attracted. The said reasoning of the Assistant Registrar is totally contrary to the principles laid down by various High
Courts which principles, atleast in some cases were confirmed by the Supreme Court also. He also relied upon two judgments of this Appellate Board
reported in 2004 PTC 634 - S.K. Patel v. Deputy Registrar of Trade Marks and Ors. and2 004 PTC 647 - Usha Rani v. Registrar of Trade Marks
and Anr. and submitted that the Appellate Board has referred to the judgments of various High Courts and as such, he does not want to repeat the
same.
The learned counsel for the first respondent, however, contended that there is no legal infirmity in the order of the Assistant Registrar of Trade
Marks. Actually, the first respondent's goods are Diesel Oil Engines mainly used for the agricultural purposes and the agriculturists in the rural areas
are the consumers, whereas, the appellant's products are motorcycles and as such, there cannot be any confusion or deception. Further, there is
absolutely no evidence let in by the appellant regarding confusion. The trade channels are also being different, the Assistant Registrar of Trade Marks
has rightly held that there is absolutely no confusion or deception in both the marks. Hence, there is absolutely no merit in the appeal.
We have carefully considered the above contentions of both the counsel.
Section 11(a) prohibits the registration of a mark if the use of the same would be likely to deceive or cause confusion. While deciding this question
of confusion, Courts have held that if there is a possibility for the consumer to think that the product which he is purchasing is from that of the
appellant's factory by virtue of similarity of the trade mark, that itself will amount to confusion or deception even though the product of the first
respondent is different. In short, if the disputed trade mark gives rise to a doubt with regard to the source of production, that is more than enough to
come to the conclusion that there is confusion. It is unnecessary to discuss elaborately on this issue in view of the earlier judgments of various High
Courts available on hand.
8 . In AIR 1994 Delhi 239, Daimler Benz Aktiegesellschaft v Hybo Hindusta nthe High Court of Delhi held that the trade mark 'BENZ' was
extensively used with respect to automobiles. The use of an identical mark 'Benz' with respect to undergarments will lead to confusion in the market,
although the manufacturers of Mercedes Benz cars were neither manufacturing nor selling garments or underwear apparels. The said judgment of the
learned single judge was confirmed by the Division Bench of the same High Court and also confirmed by the Supreme Court. In 1998 IPLR 326,
Caterpiller Inc., US v. Jorange and Anr. the Division Bench of the Madras High Court held that the use of 'Caterpillar' name for readymade garments
in India would amount to passing-off since the name 'Caterpillar' is registered in respect of heavy vehicles which name had earned reputation and
goodwill world-wide. The Delhi High Court in the case of Honda Motors Company Limited v. Charanjit Singh and Ors. 2003(26)PTC 1(Del) had held
that the plaintiff's mark Honda has acquired a global goodwill and reputation and the said name is associated with the plaintiff established in the field of
automobiles and power equipments and as such the same trade mark has acquired goodwill and reputation, the use of the said trade mark by the
defendant was for their product pressure cooker, does mislead the public to believe that the defendant's business and goods are that of the plaintiff and
such user by the defendants is also diluted and deface the goodwill and reputation of the plaintiff.
From the above principles, it is clear that a well known mark cannot be permitted to be copied by another even in respect of different goods falling
under different classes because there will be a doubt with regard to the source of production. In such cases, the person who adopts the well known
mark will definitely take advantage of the reputation of that well known mark which cannot be permitted. We have also perused the order of the
Assistant Registrar of Trade Marks. The main reason to reject the opposition in respect of Section 11(a) of the said Act is that the products of the
appellant and the first respondent are different and the trade channels are also different. Apart from that, the Assistant Registrar has also made a
reference that the appellant's product, that is, the motorcycles are known as 'ENFIELD BULLET' whereas, the first respondent's Diesel Oil Engines
are known as 'BULLET' and this difference also would clear the doubt in the minds of the public. When we compared the trade mark, especially in
respect of confusion, as already referred to the category of class or the kind of goods has no role if there is a possibility of confusion in the minds of
the public with regard to the source of production. The appellant's mark 'ENFIELD BULLET' has its own distinctiveness in respect of their product
motorcycles 'ENFIELD' being the company name, 'BULLET' being the trade mark to identify the product, the BULLET motorcycles of the appellant
company were supplied in large numbers to Army and Police personnel. Apart from that, even in the rural areas, it was considered to be a status
symbol among the agriculturists to own a 'BULLET' motorcycle. When that much of reputation had been built up by the appellant in respect of their
motorcycles having the trade mark 'BULLET', the use of the same mark by any other individual for any other category of goods would create
confusion that the goods with the disputed mark are being produced by the appellant company. Hence, we are unable to agree with the reasoning of
the Assistant Registrar of Trade Marks.
Consequently, the appeal is allowed and the opposition of the appellant AMD-187 is allowed. The application No. 433988 of the first respondent is
rejected. No order as to costs.