HBI Branded Apparel Limited Inc. A Corporation Organized Under The Laws Of Delaware vs Assistant Registrar Of Trade Marks, Trade Marks Registry

S. Usha, J

This appeal has arisen out of the order dated 17.01.2008 passed by the Assistant Registrar of Trade Marks refusing to register the application for

registration under the provisions of Sections 9 and 11 of the Trade Marks Act, 1999 (in short the Act).

2 . The appellant herein filed an application for registration of the trade mark 'BRA-LET' under No. 1401104 in class 25 in respect of Brassieres on

23.11.2005 as a proposed to be used mark. On 26.04.2006, the appellant received an examination report along with the search report wherein an

objection under Sections 9 and 11 of the Act as to the trade mark designates to the goods and that the mark applied for was identical with or

deceptively similar to the registered trade marks respectively. The appellant sent a reply to the examination report. The application was set down for

personal hearing on 05.07.2007. Thereafter, the appellant received an order dated 17.01.2008 stating that the application was refused registration

under Sections 9 and 11 of the Act.

The Assistant Registrar held that the impugned trade mark designates the kind and quality of goods. The mark was not capable of distinguishing the

appellant's goods from the goods of others. The mark had not acquired distinctive character as the mark was only proposed to be used. The impugned

trade mark and the conflicting trade marks are identical/similar and the goods are also same/similar. The likelihood of confusion was also there as the

trade marks are identical/similar in respect of same/similar goods.

Aggrieved by the said order, the appellant has preferred the appeal on the grounds hereunder:

(a) The impugned order is contrary to law and hence liable to be set aside.

(b) The conflicting marks cited in the search report sent along with the examination report was valid only till 2007 and the goods were restricted for

sale in the State of West Bengal and Bihar.[(c) The conflicting marks were visually and phonetically different from the appellant's mark.

The appellant, therefore, prayed that the order be set aside and the application be allowed to proceed for registration.

We have heard Ms. R. Hema, learned Counsel for the appellant in the hearing held on 24.7.2009.

6 . The learned Counsel for the appellant contended that the trade mark 'BRA-LET' was a single word and to split the word and give a meaning

would be against the well settled principles of law. The learned Counsel also cited the famous case of Dropovit and Protovit and submitted that the

words are to be compared as a whole. The counsel further submitted that the conflicting marks which were shown in the search report were valid

only till 2007 and also that they were on sale only in the State of West Bengal and Bihar. The registration of the impugned trade mark would,

therefore, not be a prohibition.

We have considered the arguments of the counsel for the appellant. The impugned order was passed under the provisions of Sections 9 and 11 of

the Act. Accordingly, the application was refused on absolute grounds and relative grounds. On perusal of the order, it is clear that the Registrar had

held that the trade mark as a proposed to be used mark cannot be said to have acquired distinctiveness. The relative ground for refusal of registration

as to likelihood of confusion was also present as the goods were same and the trade marks were similar.

The provisions of Section 9 of the Act clearly states that the trade mark which is devoid of any distinctive character or which consists of

exclusively of marks or indications which have become customary in the current language as in the bonafide and established practice of trade shall not

be registered unless it is shown that the mark has acquired distinctiveness as a result of use before the date of application for registration. A mark or

word or words to be distinctive of a person's goods must be incapable of application to the goods of another. Any word, which may be used to

describe the character or quality of goods/services can be used only for such purpose and not to distinguish the goods/services of one person from

those another person. The words which are descriptive of goods, are not considered prima facie capable of distinguishing.

In considering whether a word is descriptive or not, three points are to be taken into consideration (i) the word has to be considered in relation to the

goods (ii) the mental reaction of the purchaser to the word and (iii) the particular customer concerned in the goods. Thus, if a word or device is found

to be non descriptive or arbitrary, it would perfectly justify for registration as a trade mark.

10 . The trade mark 'BRA-LET' is too descriptive. The mark has not acquired distinctiveness or is capable of acquiring distinctiveness as the mark is

only proposed to be used.

Next, coming to the issue of relative grounds for refusal of registration, we find that there are similar marks shown as conflicting marks in the

search report. We do not find any merit in the argument of the appellant that those conflicting marks which are shown as registered are not valid as on

date and that they are sold only in the State of West Bengal and Bihar. The appellant has neither produced any documentary evidence to prove that

the marks have not been renewed nor any evidence produced [before us to say that those goods bearing the conflicting marks are sold only in West

Bengal and Bihar.

Where there exists a likelihood of confusion on the part of public because of the identity with an earlier trade mark or similarity of goods or

services, the trade mark shall not be registered as per the provisions of sub Clause (1) of Section 11 of the Act. Sub-clause (2) of Section 11 of the

Act provides that where the goods or services are not similar and the use of trade mark are identical with or similar to an earlier trade mark without

due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark and shall not be registered.

The risk of likelihood of confusion is obvious where the marks and the goods are identical. While every case will have to be judged on its own merits,

prima facie where either the goods or the marks are identical the Registrar's objection will be more.

In the instant case, we find that the conflicting mark is deceptively similar to that of the appellant and the goods are identical and as such there is

every possibility of confusion and deception.

We are of the opinion that the mark must be distinctive of the goods or if it is not distinctive, it should be capable of distinguishing the goods of the

proprietor from the goods of others. The use of the mark in the instant case is only a proposed one on the date of application for registration and it

cannot be said to have acquired distinctiveness. The marks were identical/similar in respect of the same goods and there was every possibility of

confusion. Therefore, registration of the trade mark was refused.

In view of the above, there is no merit in the appeal and the appeal is liable to be dismissed. Accordingly, the appeal is dismissed. There shall be

not order as to costs.