AI Structured Summary
Not yet generated for this judgment
Judgment
S. Usha, Technical Member
The first Respondent herein filed an application for registration of the trade mark 'KAVI' in respect of chewing tobacco for sale in the State of
Assam, West Bengal, Bihar, Maharashtra, Gujarat, Madhya Pradesh and NCT of Delhi in class 34 under No. 534889 on 09.08.1990 under the Trade
and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) claiming user since 01.03.1973. The said application was advertised before
acceptance in Trade Marks Journal No. 1158 dated 01.09.1997 at page 1123.
The Appellants herein, being the opponent in the opposition proceedings filed their notice of opposition on 26.11.1997 opposing the registration of the
trade mark on various grounds. On 12.04.1999 the first Respondent filed their counter statement denying the averments made in the notice of
opposition.
The Assistant Registrar of Trade Marks heard the matter on completion of all formal procedures and passed an order dated 31.07.2001. The
Assistant Registrar had passed the order on two issues, namely (i) the applicant, i.e. the first Respondent herein was entitled for registration under The
provisions of Section 12(3) of the Act as there existed the element of honest and concurrent use of the mark (ii) the applicants have been using the
mark for 13 years as on the date of application for registration and as such the applicants had a definite claim to be the proprietors of the mark and
were entitled for registration as per the provisions of Section 18(1) of the Act.
On the above findings the Assistant Registrar had passed an order dated 31.07.2001 dismissing the opposition No. DEL-T-633/52100 and allowing
application No. 534889 in class 34 to proceed to registration. The opponent/Appellant being aggrieved by the said order filed an appeal before the High
Court of Delhi in CM (M) No. 667/2001 and the same was transferred to this Appellate Board as per the provisions of Section 100 of the Trade
Marks Act, 1999 and re-numbered as TA/181/2003/TM/DEL.
The Appellant filed the appeal on the grounds that the Appellant being prior user of the mark, the first Respondent's application was barred by
Section 12(1) of the Act; that in case of triple identity-identical goods, mark and class of customers, benefit of Section 12(3) cannot be granted; that
the first Respondent failed to prove their user since 1973 or 1977 as claimed; that the first Respondent i.e. applicant for registration had not proved
their case; that the civil suit mentioned by the Registrar was irrelevant to decide the opposition proceedings; that the copyright registration was
irrelevant to decide the opposition proceedings; that on perusal of the sales figures, the first Respondent held no good will or reputation; that the first
Respondent was not the proprietor of the trade mark and was barred for registration as per the provisions of Sections 9, 11, 12 and 18 of the Act; that
the Appellant's prior registration of the trade mark would be affected by the impugned registration.
The matter was taken up for hearing in the circuit bench at New Delhi on 29.05.2008. Learned Counsel Shri Pankaj Kumar appeared on behalf of
the Appellant and learned Counsel Shri Rajesh Sharma appeared on behalf of the first Respondent.
Learned Counsel for the Appellant mainly relied on the earlier registration certificate which was registered as early as 1977 in respect of chewing
tobacco under No. 326402 in class 34. The sales figures since 1992 which was filed as annexure before the Trade Marks Registry was brought to our
notice. Learned Counsel for the Appellant vehemently submitted that the Appellant being the registered proprietor of the trade mark 'KAVI' had
proved the distinctiveness of the mark before the Registrar under No. 326402 and that it need not be done so here.
The other contention of the Appellant was the though he had objected to the registration of the impugned trade mark on the grounds of the
provisions of Section 11(a), 12(1) and 18(1) of the Act, the Registrar had only dealt with Section 12(3) of the Act. Learned Counsel for the Appellant
further contended that though the first Respondent have claimed user since 01.03.1973 in the application for registration, the first document is of the
year 16.4.1977 which is a newspaper advertisement not supported by any sale or use which is subsequent to that of the Appellant's use i.e. 10.03.1977
which is evidenced by invoice No. 196.
Learned Counsel for the Appellant further submitted that the observations made by the learned Assistant Registrar in regard to the goodwill and
reputation was totally wrong. He pointed out to the same in the impugned order. Learned Counsel for the Appellant also submitted that when the
Appellant's use was prior in point of time than that of the first Respondent the registration and the use of the impugned mark by the first Respondent,
when the mark and the goods were identical, there was every possibility of confusion and deception being caused which was not taken note of by the
learned Assistant Registrar.
Learned Counsel for the Appellant submitted that onus to prove user was on the first Respondent/applicant. Here, in this instant opposition, the
applicant though has claimed user since 01.03.1973 has filed evidence only from the year 1977 which is only a newspaper advertisement not supported
by any sales invoice to prove sale. Learned Counsel for the Appellant further submitted that the Suit No. 475/1977 referred to by the Assistant
Registrar in the impugned order was of no relevance to the case on hand as the suit was not between the Appellant and the first Respondent whereas
it was between the first Respondent and a third party who is not connected with the present proceedings.
The adoption of the impugned mark by the first Respondent was dishonest. The sales figures given by the first Respondent is since the year 1985
which is also very meager, whereas the Appellant's sales figure is high. The Appellant need not prove their reputation in view of their earlier
registration. Learned Counsel for the Appellant further submitted that it is an admission by the first Respondent that in the year 1977 M/s. Chourasia
Industries had filed a suit against the first Respondent and the Appellant, this itself goes to prove that the first Respondent were aware of the
Appellant's use of the impugned trade mark 'KAVI' in the year 1977 itself. When that be so, the first Respondent should have taken a search report
while filing this impugned trade mark application in the year 1990. So, the adoption of the trade mark 'KAVI' by the first Respondent is dishonest and
cannot claim registration under Section 12(3) of the Act.
Learned Counsel for the Appellant relied on the following judgments in support of his claim:
(a) 2007 (34) PTC 392 Delhi Ansul Industries v. Shiva Tobacco Co. was relied on in support of his contention that honesty of adoption at the initial
stage itself has to be established to take the benefit of concurrent registration under Section 12(3) of the Act.
(b) 2002 (24) PTC 226 Bom (DB) Bal Pharma Ltd. v. Centaur Laboratories Pvt. Ltd. - balance of convenience is not in favour of a person who
consciously or without taking necessary steps to assure himself of the existence of a mark uses it.
(c) 1995 PTC 165 (SC) Power Control Appliances and Ors. v. Sumeet Machines Pvt. Ltd. and Ors. - The well settled principle of law is that one
mark, one source and one proprietor.
(d) AIR 1978 Del 250 - Prior user gets a valid right than the registered proprietor.
(e) 1986 (1) SCC 465 : 1986 (6) PTC 71 (SC) - American Home Products Corporation v. MAC Laboratories - reputation of trade mark need not be
proved in case of registered proprietor.
Learned Counsel for the first Respondent submitted that they had relied two judgments in support of their contention under the provisions of
Section 12(3) of the Act before the Registrar and the application was proceeded to registration based on the case laws (1998 PTC (18) 800 Maekawa
Bearing Manufacturing Co. Ltd. v. Onkar Bearing Industries and 2006 (32) PTC 852 (IPAB) P. Mittulaul Lalah and Sons v. Lal Products). The case
laws relied by the Appellant are not relevant to the facts of the case on hand. The learned Counsel for the first Respondent further submitted that the
trade mark registration will not prove user as has been held by the Supreme Court in Corn Products Case reported in AIR 1960 SC 142 : PTC (Suppl)
(1) 13 (SC).
The first Respondent claimed user since 01.03.1973 but were not able to produce any documents as they were destroyed and had filed documents
from 16.04.1977 to prove their user. Apart from that, the first Respondent also brought to our notice various other documents, namely copyright
registration certificate, gate pass, sales bills, etc. The first Respondent also submitted that they had been using the Mark for a long and continuous
period of 13 years without any interruption and thus the, Registrar had granted registration based on concurrent user and honest adoption.
The first Respondent also pointed out that the Appellant's registered mark under No. 326402 was applied for registration on 22.06.1977 which was
subsequent to the first Respondent's news paper advertisement dated 16.04.1977 which goes to say that the Respondents were prior to that of the
Appellant.
Learned Counsel for the first Respondent submitted that there was no infirmity in the order of the Registrar, under special circumstances,
registration can be granted to more than one proprietor for the same mark. The first Respondent also submitted that there was no provision that a
person must obtain search report before filing an application. The adoption and use of the impugned trade mark by the first Respondent was honest
and bona fide and thus was entitled for registration under Section 12(3) of the Act.
We have heard both the counsel and we have considered the written submissions of both the parties and have gone through the documents
carefully.
The two issues that arises for consideration are:
(i) Is the first Respondent's trade mark entitled to be registered as per the provisions of Section 12(3) of the Act under special circumstances?
(ii) Is the first Respondent proprietor of the impugned trade mark 'KAVI' as per the provisions of Section 18(1) of the Act?
We shall first deal with the first issue, namely whether the trade mark 'KAVI' is entitled for registration as per the provisions of Section 12(3) of
the Act. It is worthwhile to quote the provisions of Section 12 of the Act.
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
different proprietor in respect of the same goods or description of goods.
(2) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly
resemble each other in respect of the same goods or description of goods, the Registrar may defer the acceptance of the application or applications
bearing later date until after the determination of the proceedings in respect of the earlier application, any may dispose of such application or
applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any.
(3) In case of honest concurrent user or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit
the registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already
registered or not) in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit
to impose.
Sub-section (3) of Section 12 is an exception to Sub-section (1) of Section 12. Sub-section (1) of Section 12 provides that no trade mark shall be
registered in respect of goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered. Hence
the goods or description of goods must also be similar in respect of marks already registered. Sub-section (3) of Section 12 empowers the Registrar to
register the trade mark if there is honest concurrent use or of special circumstances in respect of the same goods or description of goods. Sub-section
(3) of Section 12 also provides that the Registrar may permit registration even if the trade marks are identical. Honest concurrent use or special
circumstances is decided on the question of volume of use which depends on the facts of each case. In considering the length of use to arrive at as a
concurrent user, the quantum of production and sale is not necessary, there may also be interruption in the use but what is required is a constant use in
the commercial sense.
Here, in this instant case, we find that the first Respondent has applied for registration in the year 1990 claiming user since 1973, whereas the
evidence produced to substantiate use is of the date 16.4.1977 which is a newspaper advertisement. We also find that gate pass filed as exhibit is of
the year 1989. The first Respondent though in his written submission has stated that they being small dealers could not preserve documents earlier to
1977 which is a submission made for the first time whereas nothing has been averred either in the counter statement before the Registrar or in the
counter before the High Court of Delhi.
We strongly disagree with the following findings of the Registrar in the impugned order:
In view of the aforesaid evidences, as discussed above, the applicants commenced the use of the mark applied for on 16th April, 1977 while opponents
commenced the use of the trade mark KAVI in respect of chewing tobacco on 10th March, 1977. Thus, the applicants commenced the use of the
mark applied just about one month subsequent to the opponents. It cannot be believed that during the one month period from 10th March, 1977 to 16th
April, 1977 the opponents goodwill of their goods under the trade mark KAVI became so high that it tempted the applicants to copy their trade mark.
The peculiar circumstances of the matter in hand is that word KAVI being a common word was adopted by the applicants independently without any
knowledge of the same in respect of the use of the opponents. Thus, the very adoption of the mark applied for by the applicants and its subsequent use
by the applicant does not appear to be tainted with dishonesty in view of the above discussed circumstances. As regards the concurrency of the use of
both the trade marks the evidence on record indicate that the applicants had been using the mark applied for namely; KAVI in respect of chewing
tobacco since 16th March, 1977 i.e. for about more than 13 years as on the date of application which is 9th August, 1990. In view of the aforesaid
discussion, their exists the element of honest concurrent use of the mark applied for in terms of provisions of Section 12(3) of the Act. Hence, the
applicants are entitled for concurrent registration under Section 12(3) of the Act.
It is admitted by the first Respondent as well as the Registrar that the Appellant has been using the trade mark since 10.3.1977 prior to that of the
first Respondent. The well settled principle of trade mark law is that priority prevails even over a registered user. Based on the above principle, in our
view, the Appellant's right as a prior adopter and user of the trade mark is more valid than that of the first Respondent and the Appellant's rights are to
be protected.
The first Respondent in his own admission has stated that two suits were filed by a third party against the Appellant and the first Respondent by
which the first Respondent was aware of the Appellant's use as early as 1977 itself and to file an application in the year 1990 is with mala fide
intention. When the applicant was aware of the opponent's use, continued to use the same, the same cannot be held to be honest concurrent user as
held by the Division Bench of the Bombay High Court in National Chemicals and Colours Ltd. v. Reckitt and Coleman of India Ltd. AIR 1991 Bom
76 : 1991 (11) PTC 217 (Bom) (DB).
We also would like to make an observation as to triple identity situation. In such cases the question of confusion and deception could be totally
eliminated. In case of identical marks, same goods and same class of customers, registration cannot be allowed.
We are, therefore, of the opinion that the first Respondent's application does not qualify for registration under Section 12(3) of the Act.
The next issue under Section 18(1) of the Act is that whether the first Respondent is the proprietor of the trade mark? Here we find that the first
Respondent has filed the application in the year 1990 claiming user since 1973, whereas whatever documents filed in support of their case is only from
the year 1977. There is no explanation given as to why no documents have been filed for the period from 1973 to 1977. The only document filed is of
the year 1977 - a newspaper advertisement with no reference as to any sale. Though the user is for a period of 13 years, no sufficient evidence has
been produced to substantiate the case.
On the above findings, we are of the considered view that the Respondent has not proved his case of prior user or concurrent use and are,
therefore, not entitled for registration.
Consequently the appeal is allowed and the order of the Assistant Registrar of Trade Marks dated 31.07.2001 dismissing the opposition No. DEL-
T-633/52100 and allowing the application No. 534889 in class 34 to proceed for registration is set aside. There shall be no order as to costs.