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Judgment
Z.S. Negi, J
This appeal under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) is directed against the order dated 31.1.2005,
passed by the Assistant Registrar of Trade Marks, Chennai, dismissing the opposition No. MAS-54857 of the Appellant/opponent filed in opposition to
the application No. 489117, in class-5 and allowing the application to proceed to registration.
The first Respondent, a private limited company carrying on the business of manufacturing and sale of pain balm and oil, filed an application No.
489117 in class-5 in respect of pain balm and oils on 12.4.1988 for registration of the trade mark 'LEO' with device of a lion. The mark was proposed
to be used. The Registry of Trade Marks had raised preliminary objections that there were identical or deceptively similar and pending conflicting
marks. On hearing, the word 'LEO' was deleted from the mark applied for and confined the device of lion by filing request on Form TM-16 and
amending the specification of goods as Pain Balm included in class-5.' Thereafter, the application was advertised under proviso to Sub-section (1) of
Section 20 of the Trade and Merchandise Marks Act, 1958 by the Registrar of Trade Marks in the Trade Marks Journal No. 1207 (Suppl.) dated
21.9.1999 at page No. 13. The appeal set out by the Appellant is that, thereupon the Appellant/opponent filed opposition No. MAS-54857 opposing the
aforesaid application for registration on the ground that their predecessors in business have been carrying on a well established and multi-jurisdictional
business of manufacture, sale and export of medicinal, herbal and pharmaceutical preparations and substances including medicated balms, oils and
ointments for more than a century and their merchandise are sold under the internationally reputed trade mark 'TIGER/TIGER BALM' with the
device of a leaping tiger; that the mark of the first Respondent is identical and similar to that of the Appellant's/opponents' mark of trans-border
reputation; that the mark applied for is not distinctive and neither adapted to distinguish the goods nor it is capable of distinguishing their goods in the
course of trade and also applications for registration of the trade marks consisting of the words TIGER/TIGER BALM with the device of a tiger have
been filed in India by the Appellant/opponent. The second Respondent has found that the marks are not identical and directed the application of the
first Respondent to proceed for registration. Aggrieved by the order of the second Respondent, the Appellant/opponent has filed this appeal for setting
aside the said impugned order.
The first Respondent filed its counter-statement, alongwith typed set of documents, denying the material averments in the appeal. The appeal came
up for hearing before us on 6.2.2007, when Shri Satish Parasaran, Advocate appeared for the Appellant and Shri K. Rajasekharan, Advocate
appeared for the first Respondent.
The learned Counsel for the Appellant submitted mainly that the second Respondent erred in not considering the Appellant's objection that mark
applied for is lacking and devoid of any distinctive character under Section 9 of the Act and erroneously held that objection of the Appellant to be
without any merit and unsustainable. The second Respondent ought to have, instead, held that the first Respondent's mark is not distinctive mark
qualifying for registration within the meaning and scope of the aforesaid section. The fact that the mark was advertised before acceptance in the
Trade Marks Journal shows that such course of action was adopted because the second Respondent did not find the mark distinctive and had some
doubt about the registrability of the first Respondent's mark. He further submitted that the second Respondent has erred in not agreeing with the
Appellant's objection under Clause (a), and not considering the objection under Clause (e), of Section 11 of the Trade and Merchandise Marks Act,
1958 or any other corresponding provisions of the Act. The rival marks are deceptively and confusingly similar to each other and the first
Respondent's mark is likely to confuse or deceive the consumers and trade by taking the goods bearing the mark of the first Respondent to be that of
the goods of the Appellant. The learned Counsel also contended that the second Respondent failed to appreciate that the Appellant's trans-border
reputed mark TIGER/TIGER BALM with device of a tiger in respect of pain balm, the use of which started in or about the year 1900 and has
acquired a household popularity world over including India. This device of cat family has come to be exclusively associated and identified with the
Appellant's and its medicinal products to such an extent that the use of device of similar animal or of same family in relation to similar goods by the
first Respondent is likely to cause confusion or deception. The learned Counsel, relying upon the decision of High Court of Delhi in the cases of
Madan Lal Arora v. Soni Udyog 1997 (17) PTC 651 and Lakhbir Singh v. Bakhat Singh AIR 1973 Del 325, submitted that there are judicial
precedents in India holding 'Tiger' and 'Lion' brands as deceptively similar as is the case on hand.
He contended that the second Respondent failed to appreciate the well settled rules of comparison of the two marks and proposition of law relating
thereto and thus erred in concluding that the two marks are not similar. He submitted that the test of similarity should be on the overall impression as
has been held by the High Court of Bombay, in M/s. National Chemicals and Colour Co. Ltd. v. Reckitt and Coleman of India Ltd. AIR 1991 Bom 76,
that the trade marks comprising of Bul Bul and Robin were deceptively similar and leaning on that judgment, the learned Counsel had made particular
reference to para 11 of that judgment, the Hon'ble High Court relied upon Kerly as under:
Kerly's Law of Trade Marks and Trade Names, 12th Edition, paragraph 17-08 states, ""Two marks, when placed side by side, may exhibit many
and various difference, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side
by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with
goods which have the same mark as that with which he was acquainted."" The learned Counsel relied upon the principles for determining deceptive
similarity as laid down by the Apex Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 and the nature of confusion that
ought to be avoided as stated in the case of United Biscuits (U.K.) Ltd. v. Asda Stores Ltd. (1997) R.P.C. 513.
He further contended that the second Respondent ought to have appreciated that in facts and circumstances of the case, the first Respondent was
not and could not claim any proprietary right over the impugned trade mark and the objection raised under Section 18(1) of the Act by the Appellant
should not have erroneously been rejected. It was also contended that the second Respondent erred in not holding that the first Respondent did not
deserve the exercise of any discretionary power under Section 18(4) of the Act.
The learned Counsel raised objection of use of expression 'FORMULA MALAYSIA' on the labels and submitted that the purpose behind the first
Respondent using 'Formula Malaysia' on their Ayurvedic preparation is apparent, that is, to come as close to Appellant as possible as there is no proof
about the connection with the any Malaysian company. In R. Gopalakrishnan v. Venkateshwara Camphor Works 2001 PTC 233 (Mad.), the suit for
perpetual injunction was decreed in appeal. The rival marks comprised of Lord Krishna and Lord Muruga with similar colour scheme, get up, etc. In
the course of the judgment, the learned Judge relied on the judicial observation made in Slazenger v. Feltham (1889) 6 RPC 531 by Linley, L.J. that
One must exercise one's common sense, and if you are driven to the conclusion that what is intended to be done is to deceive if possible. I do not
think it is stretching the imagination very much to credit the man with occasional success or possible success. Why should we be astute to say that he
cannot succeed in doing that which he is straining every nerve to do? Where an intention to deceive is found, it is not difficult for the Court to infer
that the intention has been, or in all probability will be, effective."" Learned Counsel submitted that the expression 'Formula Malaysia' has nothing to do
with the goods of the Respondent and the use of such expression cannot be said to be without any purpose except to convey to the consumers that
they are purchasing the goods produced by using such formula. In support of his submission, the learned Counsel relied upon the observations made by
the High Court of Madras in the case of Jolen Inc. v. Shobanlal Jain and Ors. 2005 (30) PTC 385 (Mad) -DB) that ""No doubt, the container of the
Respondents an additional information is available to the effect that it is manufactured by Hindustan Rimmer which is followed by the expression,
'manufactured in technical collaboration with Laboratoire Nouveau, U.S.A and marketed by Jolen International"" Limited. We are of the view that the
addition of the words in the container and carton does not help the Respondent as in the advertisement they have advertised that the goods were
manufactured in collaboration with Laboratoire Nouveau, U.S.A. and marketed by Jolen International Limited and the expression used in the
advertisements cannot be said to be without any purpose except to convey to a purchaser that he or she is purchasing a product made in collaboration
with a company in U.S.A.
Learned Counsel for the Appellant raised objection against the imposition of cost on the Appellant by the second Respondent.
The learned Counsel for the first Respondent vehemently opposing the above submissions of the learned Counsel for the Appellant has argued that
the trade mark applied for is distinctive and adapted to distinguish the goods of the first Respondent and the passage of the impugned order overruling
the objections of the Appellant under Section 9 of the Act was not an error. He further argued that it is not correct to state that the mark is not
distinctive and, therefore, advertised before acceptance because such an advertisement by the Registrar is not unusual and there is large number of
instances where marks advertised before acceptance were finally approved. The learned Counsel, while drawing our attention to the documents
annexed to the counter statement, submitted that the adoption of the mark by the first Respondent was bona fide. Before the launch of his
goods/merchandise, the first Respondent had conducted and filed search applications with the Registry of Trade Marks for arriving at and applying for
a distinctive and feasible trade mark. Out of search applications filed in respect of random trade marks such as Panther, Lion, Leo, etc. concerning
goods of pain balm falling under class-5, Leo was considered to be the most feasible one in view of the fact that trade marks Lion and Panther were
either in existence or pending for registration. Accordingly, the first Respondent bona fidely decided to get the logo designed from the advertising
agency and file application for registration of word Leo and device thereof. After preliminary objections raised and followed by a show cause hearing,
the Deputy Registrar of Trade Marks passed order for amendment of mark and specification of goods. He submitted that this shows that the first
Respondent had made application bona fidely and with an open mind to accept any order the Registrar may make in the matter. The first Respondent
accepted the order of the Deputy Registrar of Trade Marks and amendments made in the mark and specification of goods as has been stated by the
second Respondent in the opening paragraph of his order.
Learned Counsel argued that the objection under Clause (a) of Section 11 of the Trade and Merchandise Marks Act, 1958 is only imaginary and
has no relevance to the facts of the case because there is neither any possibility of deception and confusion between the two trade marks nor there is
any instance of confusion and deception noticed over the last 18 years. The first Respondent sells pain balm in volumes and prices are in accordance
with the affordability of the common men. even those who live in remote areas of the country. He submitted that the Appellant has placed nothing
before the second Respondent to show that the first Respondent is disentitled to protection in a Court under Clause (e) of Section 11. He further
stated that the second Respondent has also rightly held that Section 12(1) of the Trade and Merchandise Marks Act, 1958 constitutes no bar to
registration of the mark applied for. The learned Counsel produced one carton alongwith container of balm each used by the Appellant and the first
Respondent to show that the rival marks are not similar and the trade dress too are different. He also argued that whatever claim of the Appellant as
regards international use and reputation may be, which is however denied, the user and reputation of the Appellant in India in respect of Tiger Balm is
much later and subsequent to that of the first Respondent's user. He submitted that it may be pertinent to note that the first Respondent adopted the
trade mark LEO with device of Lion and commenced its use in India several years earlier than the Appellant. The contention of the Appellant which
smack of suggesting that any animal belonging to the cat family of animals would be the sole prerogative of the Appellant and that no one else should
be permitted to adopt and use any other cat family animal like cheetah, jaguar, leopard, jungle-cat, etc. amounts to overstating and stretching beyond
proportions the claims of the Appellant, to which also the Appellant has failed to gain exclusive rights in India even with a disclaimer. The learned
Counsel took us to pages 60 to 64 of the documents annexed to the counter statement of the first Respondent containing photocopies of the Journal
showing different trade marks advertised before acceptance by the Registrar of Trade Marks, Calcutta. Out of the five pages, two contain disclaimer
for the device of tiger, two with condition and one is without disclaimer or condition.
Learned Counsel for the first Respondent submitted that the second Respondent has passed his order after satisfying himself that the requirements
of law in relation to registration of the trade mark, including the proprietary right over the mark, is fulfilled by the first Respondent and the
discretionary power in favour of the first Respondent has been exercised by the second Respondent as no mala fide or dishonest intention in the
adoption of the mark was found and all the objections raised by the Appellant have been overruled.
After having heard carefully both the counsel, the issues that emerge are mainly whether the registration of trade mark as ordered by the second
Respondent is contrary to or hit by the provisions of Sections 9, 11(a) and (e), 12(1) and 18(1) of the Trade and Merchandise Marks Act, 1958 or
corresponding provisions of the Act as have been contended above. It would be appropriate if all the issues raised in relation to above-mentioned
sections are considered together as they are interwoven issues. Any person claiming to be the proprietor of a trade mark used or proposed to be used
by him and desirous of registration is entitled to make an application in the prescribed manner to the Registrar of Trade Marks. The conditions of
registrability of a trade mark is that the mark should be capable of being represented graphically, capable of distinguishing the goods or services of one
person from that of another and it is used in relation to goods or services for the purpose of indicating a connection in the course of trade between the
goods or services, as the case may be, and some person having the right to use it. The definition of mark includes a device, brand, heading label, ticket
and so on. A trade mark is not registrable if it is identical with or similar to an earlier trade mark and the goods or services are similar to those of the
earlier mark or in either of the cases there is likelihood of confusion in the mind of the customers. In the case on hand, trade mark is a device of lion
which is alleged to be devoid of any distinctive character. One of the absolute grounds for refusal of registration provided in the Act is the trade marks
which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or service of one person from those of another
person subject to the exception that such trade mark shall not be refused registration if before the date of application for registration it has acquired a
distinctive character as a result of the use made of it or is a well-known trade mark. The test of distinctiveness was laid down by Jacob, J. in British
Sugar Plc. v. Jagmes Robertson and Sons Ltd. (1996) RPC 281 at 306 lines 1-5 where he said: What does devoid of any distinctive character mean? I
think the phase requires consideration of the mark on its own, assuming no use. Is it the sort of word (or other sign) which cannot do the job of
distinguishing without first educating the public that it is a trade mark?' It is undisputed that the mark applied for registration was proposed to be used.
The onus is on the first Respondent to prove that the mark is distinctive which the first Respondent has not discharged. There is not an iota of
evidence on record to prove that the mark is not devoid of any distinctive character. It is merely stated in the counter-statement that the Registrar's
order in overruling the objections of the Appellant under Section 9 was not an error and accordingly the registrar's orders are a reiteration of the
examination report of the registrar. The second Respondent has not examined this issue, though raised in the notice of opposition, on the ground that
'There was no objection raised under Section 9 of the Act by the Registrar at the application stage and the mark was considered to be distinctive itself
and qualify for registration under Section 9 of the Act. I must say that the Section 9 of the Act does not call for consideration and accordingly, the
objection raised under Section 9 of the Act is without merit and is not sustainable. Such a conclusion is based on presumption and an authority
responsible to ensure purity of register should not reject objection of opposition in such slip shot manner. By applying the aforesaid test of
distinctiveness, we do not think that the device mark can do the job of distinguishing, on the date of making application, without first educating the
public that the device is a trade mark for pain balm, unless evidence is there to show that people regard the pain balm with device mark emanates
from the first Respondent. Since the first Respondent has not discharged the onus to prove distinctiveness, we are of the view that the impugned order
is hit by Section 9(1) of the Act. However, the contention about advertisement before acceptance amounts to a doubt about the distinctiveness of
mark is not tenable.
The well settled proposition in considering whether one mark is deceptively similar to another, is that the marks should be looked at as a whole.
The trade mark is the whole thing, the whole picture on each. In order to see whether one mark is deceptively similar to another, only the broad and
essential features are to be considered. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or
confusion or mistake in the minds of persons accustomed to the existing trade mark.
The Apex Court in the case of Parle Products (P) Ltd. v. J.P. and Co. AIR 1972 SC 1359 has held as follows:
In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be
considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character
as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered
mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. It is of no use to note on how many points
there is similarity and in how many others there is absence of it.
The same Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (supra), has laid down the following factors to be taken into
consideration in deciding the question of deceptive similarity:
(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label marks.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they, require, on their education and intelligence and a degree of care
they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods, and
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Leaving apart our finding under Section 9 of the Act, before we go into the aspect of similarity of the two marks on the basis of above proposition of
law, it is necessary to refer to few more facts. We have already stated above about the production of two cartons alongwith containers of balm by the
first Respondent. If we look at the Appellant's cartoon, we find a hexagonal cartoon in reddish colour with the words 'TIGER BALM' and TIGER in
English and Chinese character and white strip running in the middle of the carton (except a small portion of the strip in between the joining of
beginning and end portion of the strip where a leaping tigers in reddish colour with black strips on the orange background is shown and below that the
words TIGER BALM is written in white on a patch of blue background) on which ENG AUNTONG (trading name), tiger balm in Bengali, Urdu,
Hindi, Marathi, and Tamil languages, manufacturing licence No., net weight and for external use only, composition, manufacturer name and certain
other information are written; above and below the white strip and on the top and bottom of the carton, several leaping tigers in reddish colour with
black strips within the circles on green back ground (fifteen tigers in each raw on the sides of the carton, ten tigers on the top and ten tigers on the
bottom) have been shown. The essential features of Appellant's mark is the device of a leaping tiger in reddish colour with black strips, the words
TIGER BALM written in English and Chinese characters and TIGER. When we come to the first Respondent's carton we see a dark blue coloured
rectangular carton, on two sides, with the words LEO BALM, below that on the right hand corner written WHITE in short font and down below the
carton is written FORMULA MALAYSIA in white and in between the LEO BALM and FORMULA MALAYSIA, there is bounded in a white
circle are inscribed the words LEO BALM FORMULA MALAYSIA in white letters in a circular manner on the red background and in the middle
thereof contain a white standing leo with red face and the words LEO written just below that. On the third side of the carton LEO BALM in English,
Hindi and Tamil and information about net content, composition, etc. are written in white and on the fourth side of the carton is also written LEO
BALM in English, Telgu, Kannada and Malayalam languages and the manufacturer's name in white letters. On the top of the carton certain pains or
aches for which the balm be effective is written in English in white letters and on the bottom of the carton the manufacturing licence No., Batch No.,
Manufacturing and Expiry dates and Price have been written in white letters. The essential features of the first Respondent's mark is the words LEO
BALM, down below the standing leo in white colour with red face on red background inside a white circle and around it inscribed in white in a circular
manner the words LEO BALM FORMULA-MALAYSIA is written. It would, for the sake of appreciation, be appropriate here to state that the
impugned mark as has been approved by the second Respondent for registration is confined to the device of lion and specification of goods modified
as Pain Balm included in class-5, in other words, after registration the word LEO will not be depicted and it will confine the device of a Lion.
Where the Appellant's mark is TIGER/TIGER BALM and a device of leaping tiger and the balm is packed in a hexagonal reddish colour carton of
and where the first Respondent's mark is standing lion (without the word lion) and the balm is packed in a rectangular dark blue colour carton, the first
sight impression a person gets is that both merchandise come from different sources. Though the class of goods is same and also the trade channels
and customers are common, yet we are of the view that both the marks are not visually and structurally identical or deceptively similar to each other
and, therefore, there is no likelihood of causing confusion or deception to consumers. However, in view of the judgments relied upon by the learned
Counsel for Appellant in the case of Lakhbir Singh v. Bakhat Singh AIR 1973 Delhi 225 in which the High Court has not reversed the finding of the
Assistant Registrar of Trade Marks that both the words 'Lion' and 'Tiger' were known in Hindi, Urdu and Punjabi as 'Sher' and in the case of Madan
Lal Arora v. Soni Udyog 1997 PTC 651 the Court held that both the words LION and TIGER are known and called in Hindi, Urdu and Punjabi and
perhaps in other local dialects as ""SHER"", we have no alternative but to follow those decisions of the Delhi High Court. Since the above-mentioned
judgments have persuasive force and no other judgment holding contrary to that has been brought to our notice, we hold that the impugned device
mark lion closely resembles to the mark of the Appellant's device mark tiger and there exists a likelihood of confusion on the part of the public. The
mark is therefore, hit by Section 11 of the Act. In view of our conclusion that the impugned mark is hit by Sections 9 and 11 of the Act, it is
unnecessary to consider the claim of prior use of the first Respondent and the averment of Appellant that the first Respondent cannot claim any
proprietary right over the impugned mark.
The objection raised by the learned Counsel for the Appellant that the use of expression 'FORMULA MALAYSIA' on the label by the first
Respondent is not admissible at this stage as we do not find any such objection in the pleadings. It has been held by the Apex Court in M/s. Trojan and
Co. v. N.N. Nagappa Chettiar AIR 1953 SC 235 had at para 22 held that a decision of the case cannot be based on grounds outside the pleadings of
the parties and it is a case pleaded that has to be found. Without amendment of the plaint the Court was not entitled to grant the relief not asked for
Similarly in the Gramophone Co. of India Limited v. Mars Recording Pvt. Ltd. and Anr. 2001 PTC 681 (SC), para 10 wherein the Apex Court held
that in the absence of any pleadings in any record, the Court cannot decide the matter on that score. In view of that, proper amendment of the
pleadings is necessary. 'Before we examine the tenability of the contentions raised, we think it necessary that the parties shall lay factual foundation in
the pleadings. If, as contended for Respondent No. 1, these aspects bring out the true controversy between the parties and there are no pleadings to
that effect in either form or content, to proceed to grant any temporary injunction or to decide the matter will be hazardous.
The Registrar has power under Section 127 of the Act to order as to costs as he considers reasonable. The second Respondent in exercise of
powers under Clause (b) of Section 127 of the Act has ordered costs of Rs. 250 which we do not feel is unreasonable. The Hon'ble High Court of
Bombay had occasion to consider the question of Registrar's jurisdiction to grant costs in the case of S.M. Nooruddin v. Mahomed Oomer Mahomed
Nurulla Saheb AIR 1956 Bom 641 (AIR v. 43 C 256 Oct.) wherein Tendulkar, J. observed thus: ""In my opinion the discretion of the Registrar in
awarding costs under Rule 81 is entirely unfettered and he is to award such costs as he considers reasonable having regard to all the circumstances of
the case. In awarding a lump sum as costs the Registrar was the best Judge of all the circumstances and therefore this High Court will not interfere
with his discretion in awarding Rs. 3000 as costs to the opponent although the Petitioner succeeded partially on his petition in that he got registration
for the city of Trichinopoly."" We, therefore, do not see any reason to interfere with the order of costs passed by the second Respondent in exercise of
his discretionary power.
In view of the above, the Appellant succeeds and accordingly, we allow the appeal and dismiss the impugned order of the second Respondent.
Consequently, the opposition No MAS-54857 is allowed and application No. 489117 is dismissed. However, there is no order as to costs.