Girnar Exports vs Fresh Tea Processors Pvt. Ltd. And Anr.

Trade Mark,Application No.,Class,TMJ

Label with

Prominent device of

5 elephants (label)",505035,30,1119

FIVE JUMBO

BRAND with

device of 5

Elephants with

Numerals 5555",505036,30,1119

It must be stated here that in the order under appeal the learned Assistant Registrar has referred to certain judgments relied upon by the opponents,,,

and for the sake of convenience we extract here under some, not all, of the said precedents as appearing in the order under appeal.",,,

(i) AIR 1941 Bom 3 ""the slight change of language meaning substantially the same also lead to confusion like in this case instead of JUMBO the",,,

elephant or Hathi is used. It is very much likely to be presumed that it is the same mark"". Why they adopted the mark ELEPHANT only and why not",,,

some other device like Pig, Cat.",,,

(ii) 1986 RPC 691 wherein ""the device of Cock has been copied by the Applicants from the label of the opponents constituting not only the device of",,,

Cock but so many other distinctive feature still the device of Cock was held to be deceptively confusing for the unwary customer""",,,

(iii) 1904 RPC 149 popularly known as Cat case where ""the device of Cat was very different in the two labels but still it was held to be confusing",,,

specially because the goods were identical.,,,

(iv) AIR 1967 Mad 148 wherein ""it was held that the person who first designed or used the mark first is its proprietor unless subsequently he has dealt",,,

with it and other have obtained right thereto in lawful manner."" Also the following passage has been extracted in the order under appeal.",,,

The evil of the situation becomes more apparent when we notice the imitation and close similarity in the get up of the label and the particular colour,,,

scheme which has been copied by the Appellant. Therefore, there is no hesitation in holding that under Sections 11(a) and 12(1) of the Act registration",,,

will have to be refused on the ground that the use of the word Surian, the Tamil equivalent of ""Sun"" is deceptively similar and sure to cause confusion",,,

It is to be noticed that the opponents- Appellant are proprietors of the trade mark, particulars whereof have been stated in the earlier part of this",,,

order. The prominent feature of the opponent's registered marks are ELEPHANT (LABEL) and 5 JUMBO brand with device of 5 elephants.,,,

Whereas trade mark applied for registration comprises of the word elephant with device elephant (label). Precedents noticed in the order of the,,,

learned Assistant Registrar (extracted supra) show that where the distinctive feature, in the rival marks/labels are similar the Courts have held the",,,

same to be deceptively confusing for the unwary customer. Opponents have used the English word ELEPHANT/JUMBO whose Hindi equivalent is,,,

HATHI. In the ""SURIAN"" case cited supra registration was refused on the ground that the use of the word SURIAN, Tamil equivalent of Sun is",,,

similar and sure to cause confusion.,,,

We, therefore, are inclined to accept the contention of Shri T.N. Daruwala, learned Counsel for the Appellant that the learned Assistant Registrar",,,

having observed that the word HATHI and JUMBO leave the impression of ELEPHANT in the mind meaning thereby that it is that element which,,,

will fix itself in the minds of the public should have proceeded to hold that the rival marks are deceptively similar so as to cause confusion. The rival,,,

goods covered by the rival marks being identical (tea) and marks being deceptively similar we have no hesitation in holding that there exist a likelihood,,,

of confusion with the registered mark of the Appellants. Application for the said reasons, deserved to be dismissed.",,,

It is noteworthy that even where an applicant satisfies the requirements of Sections 9 and 11, which it would appear to be the view from the order",,,

under appeal, if the device of elephant is excluded, being the conflicting feature, there is a residual discretion conferred on the Registrar to refuse",,,

registration under Section 18(4) of the Act, 1999. This provision confers discretion upon the Registrar to refuse the application or to accept it either",,,

absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit. Keeping in view that the mark applied for",,,

was advertised before acceptance subject to disclaimer and that subsequently the acceptance is subject to amendment deleting the essential feature of,,,

the mark, there is nothing left in the mark applied for which can be granted protection. The learned Assistant Registrar, in our view, on the facts d of",,,

the instant case erred in exercising his discretion in allowing the application to proceed for registration subject to amendment of the mark by way of,,,

deleting the device of ELEPHANT by directing filing of appropriate application in Form TM 16. Also, it must be noted that use of a mark pertains to",,,

the date of the application for registration use subsequent thereto is not relevant. In the order under appeal learned Assistant Registrar arrived at a,,,

finding, which is not questioned before us, that not even a single document has been filed by the applicant where the mark applied for can be said to",,,

have been used as per the label of the applicant. It must be recapitulated that the applicant - Respondent No. 1 claimed user since 1985 and failed to,,,

establish the same. The conduct of the applicant was therefore not bono fide and adoption not honest.,,,

It was urged on behalf of the Appellant to expunge the observation in the order under appeal, which is to the effect that the evidence of the",,,

Appellant is 'shady'. The said observation insofar as the Appellants are concerned is perverse as it has not been substantiated nor any reasons stated,,,

in support there of. Accordingly we uphold the said contention.,,,

In the result the appeal is allowed. The order under appeal dated 08.11.2004 passed by the second Respondent whereby the application bearing,,,

No. 559505 in class 30 was ordered to proceed for registration subject to amendment is set aside. The said Application No. 559505 is dismissed and,,,

opposition No. AMD 61839 is allowed. There shall, however, be no order as to costs.",,,