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Judgment
218 paragraphs · 12,632 wordsSanjeev Kumar Chaswal, Technical Member
In the instant case, the applicant has preferred a rectification application before the Board, thereby challenging the grant of registration certificate for the trade mark No. 1544245 in class 20 to the respondent herein.
Case of the applicant
The applicant is a family run business incorporated in 1926 and now it is a limited company in United Kingdom.
2 . The applicant is one of the most renowned manufacturer of uniquely designed, hand-crafted and technologically highly advanced beds, mattresses, pillows etc.
The applicant is a registered proprietor of the mark 'HYPNOS' (word). The applicant claims that the mark 'HYPNOS' was first adopted by as a trade mark several decades ago in relation to its products beds and bedding, like mattresses, pillows etc. and other allied products.
4 . That owing to the popularity of applicant's brand 'HYPNOS' which was adopted as the dominant and distinguishing part of the applicant's company name in 1988 and the said name is being used as trade mark in respect of its goods on an international scales too.
5 . The applicant has international affiliations world over through its associated company which has commercial business and operations in United Kingdom, U.S.A., Canada, Germany, Australia, Taiwan, Austria, Czech Republic, Greece, Holland, Hungary and Switzerland, etc.
6 . The applicant's trade mark and brand 'HYPNOS' has an excellent reputation and goodwill and it is exclusively identified and associated with the applicant alone. The worldwide operations of Hypnos Limited cater to highly specialized market and consumers namely royal palaces and estates, luxury and boutique hotels, cruise liners, yacht, spa and serviced apartments. Some of consumers of the applicant are prestigious clubs, hotels and hotel chains world wide over.
The applicant has supplied Hypnos beds to Premier Inn Bangalore in the year 2008-2009 and to Premier Inn Delhi in the year 2010 against direct order placed with Hypnos Limited, United Kingdom.
8 . The applicant initiated dialogues with Shri Balaji Industries of F-61-62, Sidhgul Industrial Area, Haridwar, Uttarakhand for a collaboration for manufacture and marketing of the applicant's HYPNOS beds in India in the year 2011.
Due to superior quality, extensive and continuous use including wide publicity and promotion of the applicant's products bearing the mark 'HYPNOS', the applicant's said trademark has acquired factual distinctiveness and has become inextricably linked with the applicant's products only. The use of trade mark 'HYPNOS' in relation to said goods or related goods would connote and denote the applicant as the source thereof. Therefore, the applicant trademarks 'HYPNOS' is well known within the ambit of Section 2(1)(zg) of the Trade Marks Act 1999.
That by virtue of its first worldwide use coupled with trans border reputation, the applicant's trademark 'HYPNOS' is the earlier trade mark within the meaning of section
11 of the Trade Marks Act, 1999, which clearly indicate that the applicant's 'HYPNOS' is a well known trade mark in India. The definition of well known trade mark as prescribed under section 2(1)(zg) of the Trade Marks Act, 1999 reads as under
11 . Still to attain statutory protection to its mark, the applicant has obtained registration in many countries. Further the applicant has applied for registration of the trade mark 'HYPNOS' and the said application is pending in India under application No. 2127838 in class 20 in respect of the furniture, beds, bed bases, bed castors, bed glides, bed headboards, sofa beds, bedding namely mattresses, pillows, duvets, sheets, pillow cases, valances, duvet covers etc. The above said application of the applicant is pending for registration before the Registrar of Trade Marks, Kolkota.
12 . The registered proprietor/respondent had dishonestly adopted and applied for registration of the impugned trade mark 'HYPNOS' which is an internationally well known mark exclusively associated with the applicant, the second respondent is admittedly the exclusive licensee of the first respondent/registered proprietor of the trade mark 'HYPNOS'.
The first and second respondent jointly filed a civil suit bearing No. 3396 of 2011 before the said civil court Bangalore against the applicant as well as against the business associates Shri Balaji Industries Private Limited with whom the applicant has entered into an agreement of collaboration to manufacture and market the Hypnos beds in India.
The said Civil Suit lodged for the act of infringement of the first respondent's impugned registered trade mark 'HYPNOS' under registration No. 1544245 in class 20. The suit of the respondents is a frivolous action lodged by the registered proprietor and its licensee to unlawfully usurp our rights over the internationally well known trade mark 'HYPNOS'. The said civil suit is being appropriately defended by the applicant and is pending before the above said civil court.
The applicant is a prior adopter and user of the well known mark 'HYPNOS' in respect of the above mentioned goods using in world market. Therefore, the registered proprietor/respondent could not claim proprietorship to the impugned trade mark which has contrary to section 18 of the Trade Marks Act, 1999.
The registered/proprietor respondent has obtained registration of the trade mark by making false claims of proprietorship and misleading statements. The registered proprietor/respondent must have been fully aware of the reputation and goodwill adopted by the applicant's trade mark 'HYPNOS', when the registered proprietor/respondent adopted the identical trade mark in respect of identical goods in the year 2007.
17 . The impugned registered trade mark is being identical to the applicant's internationally well known mark and which is also registered in relation to identical goods, thus stands in violation of the relevant provisions as stated in section 11 of the Act.
The adoption of the impugned trade mark 'HYPNOS' by the respondent is tainted with dishonesty and no amount of use of the impugned registered trade mark by the registered proprietor/respondent can be inured to the benefit of the registered proprietor. Therefore, the registered proprietor/respondent is not entitled to claim any right to the registration under section 12 of the Act.
19 . The registered proprietor/respondent registered the trade mark 'HYPNOS' or impugned trade mark 'HYPNOS without any bonafide intention or in fact, there has been no bonafide use and the trade mark up to a date of 3 months before the date of this application and as such the impugned mark is liable to be expunged under section 47(1)(a) of the Act.
The registered proprietor/respondent has obtained the registration by making false and misleading statement. Therefore, the legal validity of the trade mark is being vitiated and the impugned trade mark entry remains wrongly on the trade mark register and so remains without sufficient cause hence registration is liable to be expunged from the Trade Mark Registry under section 57(2) of the Act.
21 . The impugned trade mark of the registered proprietor/respondent is registered wrongly without any benefit to the public, on the other hand, the impugned registration is contrary to public interest, and hence the mark is liable to be expunged under section 57 of the Act.
22 . The registered proprietor/respondent had applied for registered mark, knowing fully well that the applicant company is the proprietor of the mark 'HYPNOS' in respect of the identical goods. The registered proprietor/respondent has obtained registration of the trade mark solely to derive unlawful commercial gains at the cost of the applicant's company. As such, the trade mark registration is liable to be cancelled.
The applicant's company mark 'HYPNOS' is well known worldwide and consumers as well as members of the public and trade associate the mark 'HYPNOS' in respect of the goods related with the applicant's company only. Therefore, existence on the registration of identical trade mark in the name of different entities are detrimental to the applicant's business interests as the applicant is true and bonafide proprietor of internationally well known trade mark 'HYPNOS' in respect of the above said goods.
The registered proprietor/respondent has mischievously filed the suit based on the impugned registered trade mark, thus the applicant's company is a 'person aggrieved' by the impugned registration and very much within its right to file rectification application against the impugned registered trademark.
Case of the Respondent
25 . The respondent is a well known company incorporated in Indian company Act 1956 and is the proprietor of the registered trade mark 'HYPNOS' bearing No. 1544245 under class 20 for selling mattresses and other related products. The registration of trade mark 'HYPNOS' is valid and subsisting.
The respondent has filed the application for registration of the mark 'HYPNOS' on 28/03/2007 and since 16th October, 2008 the respondent have been continuously using the impugned trade mark in relation to the products as mentioned above.
2 7 . The respondent No. 1 has carried out due diligence while adopting the mark 'HYPNOS' and after obtaining the registration, the respondent No. 1 gave exclusive license to respondent No. 2 to use the registered trade mark 'HYPNOS' in India and since its introduction by the respondent No. 2 in the market in the year 2008, the respondent No. 2 has been using continuously and extensively the trade mark? HYPNOS' in India for selling sleep comfort products.
The respondent No. 2 as exclusive license, extensively advertising and promoting the brand 'HYONOS' in print and other media and due to outstanding quality of its products and exclusive promotion of its brand 'HYPNOS' the respondent No. 2 has received tremendous response from the public at large.
The respondent has became aware that the registered trade mark 'HYPNOS' was being used by some Indian entities by publishing advertisement in well known hospitality periodical in the year 2011, initially, the respondent No. 2 sent out a legal notice on 16th March, 2011 to the applicant and its distributor Shri Balaji Industries.
That after non-receipt of response from the applicant, the respondent filed a Civil Suit No. 3396 of 2011 before the City Civil Judge to restrain the applicant from using the registered trade mark 'HYPNOS' and the said Suit is currently pending before the Hon'ble Civil Court.
The respondent has been manufacturing and selling sleep comfort products since 2008 and respondent have been continuously using the mark 'HYPNOS' in relation to these products. The respondent has been using the impugned trade mark 'HYPNOS' with honest bona fide adoption.
The applicant has come to know during the course of filing the application that the respondent's impugned trade mark 'HYPNOS' already exists in the Indian trademark register, in order to circumvent, the applicant went ahead of filing trademark application in India not as 'word mark' but filed the trademark application for registration under label mark 'HYPNOS'. But after receipt of the examination report from the Trade Mark office that the applicant's trade mark is in conflict with respondent already registered trade mark 'HYPNOS' was the sole reason of filing rectification proceeding to cancel the registration of the respondent herein without any tangible cause.
APPLICANT ARGUMENTS:
3 3 . The Ld. Counsel for the applicant Mr. Sushant Singh has advanced his oral submissions at length highlighting the core issue more or less surrounding on the principle of trans border reputation and its subsequent spill over of reputation to other country, so the crux of his argument was on firstly to the extent that the rights in common law can be conferred upon the proprietor on the strength of its trans-border reputation traveling to India whereby the requirement of localized use in India is inconsequential for the purposes of attaining such right.
The Ld. Counsel for the applicant Mr. Sushant Singh has further argued with his second proposition that the said right of priority of worldwide use in case of reputation spilling over to India will get precedence over priority of use in India is now well accepted by the courts in India.
The Ld. Counsel for the applicant Mr. Sushant Singh has further argued with his third proposition on the principle of the classical trinity in passing off action whereby the gist of passing off action is defined. The said classical trinity was laid down in the case of Reckitt & Colman Ltd. v Borden Inc 1990 RPC 341 by House of Loards also known as Jif Lemon case. This is a reformed/compact version of passing off tests laid down by Lord Diplock earlier in Advocaat case (Erven Warnink B.V. v. J. Townend & Sons (Hull) Ltd.). Reckitt follows the three essential ingredients which are (a) goodwill (b) misrepresentation and (c) damage which together build the classical trinity of passing off.
The Ld. Counsel for applicant has drawn our attention to relevant section 9, 11 and 18 of the Trademarks Act. He has submitted that by virtue of its first worldwide use coupled with trans border reputation, the applicant's trademark 'HYPNOS' is the earlier trade mark within the meaning of section 11 of the Trade Marks Act, 1999.
The said trade mark 'HYPNOS' advertisement has already appeared many times in several well known magazines like Forbes, CNN, Washington Post, Chicago Tribune. The beds bearing the trade mark 'HYPNOS' are installed at the palace of Queen Elizabeth 11 of UK and all other five star hotels, which clearly indicate that the applicant's 'HYPNOS' is a well known trade mark in India and has a trans-border reputation spill over to India and is covered within the definition of well known trade mark as prescribed under section 2(1)(zg) of the Trade Marks Act, 1999.
In order to show existence of the applicant trans-border reputation spilling over to India at the relevant time, of the year 2007, when the respondent has filed trade mark application. The Ld. Counsel for the applicant Mr. Sushant Singh invited our attention to his compilation of documents to show that the applicant for rectification had sufficient trans border reputation in India:--
"a. Letter showing the supply of articles under the trade mark "HYPNOS" in the year 1939 at page 70 of the documents file.
b. Invoices showing the supply of "HYPNOS" at several places across the globe commencing from the year 2002 including New York, California, Chicago, Houston and other places in USA, Vancouver, Toronto, Montreal and other places in Canada places in Italy, Spain, Russia, Germany, Taiwan, Lebanon, Belgium, Austria, etc. and also in India in the year 2009.
c. Document at page No. 130 showing an article published in USA Today dated 15th August 2003, which is accessible by all persons including Indians residing there and persons who are expatriate from USA in India.
d. Documents at page No. 131 Washington Post showing popularity of trade mark "HYPNOS" based products in the year 2004 in US which is accessible by all persons including Indians residing there and persons who are expatriate from USA in India.
e. Document at page 132 is New York Times evidencing the similar popularity of extensive sale of "HYPNOS" based mattresses dated Feb 8, 2004.
f. Documents at page 133 is Forbes Magazine which has circulation not merely in other countries but in India showing extensive popularity and reputation of the trade mark "HYPNOS" which is an article written in March 25, 2005.
g. Document at page 134 which shows popularity of trade mark "HYPNOS" on CNN dated May 30, 2004 which is accessible by all Indians and other countrymen and sufficient for the purposes of establishing the connect in India.
h. Document at page 136 is Chicago Tribune written on March 8, 2007 testifying the similar effect.
i. Document at page 140 showing blogs written on Internet comparing "HYPNOS" to 'Rolls-Royce' for beds.
j. Document at page 157 showing Five Star Hotels in England and other countries advertising on their website that hotels contain "HYPNOS" beds showing popularity of trade mark "HYPNOS".
k. Document at page 159 are communications in Premiere Inn almost at the same time when the respondent applied for the trade mark in India.
l. Document at page 165, 166, 167, 176, 185 and 187 are the documents showing popularity of the trade mark 'HYPNOS'.
m. In view of the above documents, it is apparent that the petitioner's reputation pertaining to the trade mark "HYPNOS" has traveled to India by virtue of documents evidencing the dispensation of knowledge in India. The said knowledge can travel to India on following counts:--
n. Circulation of documents showing popularity of trade mark 'HYPNOS' based products in India at the relevant time.
o. Knowledge received from the Indians residing abroad and coming back to India as expatriate reputation.
p. Indians traveling to five star luxury hotels abroad where 'HYPNOS' beds are installed and they are shown as their specialty.
q. Knowledge of the concerned industry segment in India, particularly the traders, merchants and craftsmen in India involved in the same manufacturing industry segment, who keep themselves informed of the news, developments, techniques and styles of their counterparts in other countries, mostly in the UK and the USA.
r. All this coupled with actual physical use of the trade mark 'HYONOS' by the applicant in India is sufficient to establish trans border reputation. In view of subsisting trans border reputation of the trade mark 'HYPNOS' in India in the year 2006-07, the adoption and use of the trade mark 'HYPNOS' by the respondent subsequent to that of applicant's trade mark is clearly barred under the provisions of Trade Marks Act, 1999.
s. The applicant has subsisting goodwill and the use of identical trade mark 'HYPNOS' by the respondent would cause misrepresentation in course of trade establishing that both applicant and respondent are now in the same market. The resultant damage is likely to ensue to the applicant in the form of loss of goodwill and reputation and dilution of the trade mark 'HYPNOS' which is a well known trade mark in India.
t. The Ld. Counsel for the applicant claims that the applicant has supplied Hypnos beds to Premier Inn Bangalore in the year 2008-2009 and to Premier Inn Delhi in the year 2010 against direct order placed with Hypnos Limited, United Kingdom.
u. The applicant further submitted that the applicant initiated dialogues with Shri Balaji Industries of F-61-62, Sidhgul Industrial Area, Haridwar, Uttarakhand for a collaboration for manufacture and marketing of the applicant's 'HYPNOS' beds in India in the year 2011 only with the intent to use in India."
39 . The Ld. Counsel for the applicant Mr. Sushant Singh has further drawn our attention to the definition "2(1)(zg) is of "well known trade mark", of the trademark Act of 1999, in relation to any goods or services, means a mark which has become, so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services".
After having combined reading of section 2(1)(zg) read with section 11(6) and 11(9) further demonstrates out that for the purposes of determination that the trade mark is well known trade mark in India, there is no requirement in law to insist that the trade mark is used in India or trade mark is registered in India.
That by virtue of trans-border reputation the trade mark qualifies to be well known in India without the requirement of use or registration of the mark in India, as per the mandate of section 11(9) of the Trade Marks Act, 1999 once it is discerned that the trade mark 'HYPNOS' is the earlier trade mark and is a well known trade mark in India, the provisions of section 11(1) and (2) are clearly attracted against the registration No. 1544245 applied in the year 2007, the trade mark of the respondent is clearly violative of section 11(1) and (2) of the Trade Marks Act, 1999.
42 . The applicability of section 11(2) of the Act, is based upon the principle of dilution of trade mark wherein the wordings "detrimental to the distinctive character of the trade mark or unfair advantage to the goodwill and reputation of the trade mark" are mentioned and in such cases the use of the trade mark 'HYPNOS' by the respondent is causing misrepresentation in the course of trade and is also causing dilution in the form of erosion and tarnishing of the reputation.
It is further submitted that the trademark 'HYPNOS' offends section 11(3) in as much as the use of trade mark in all likelihood be prevented by the law of passing off The registration of the mark in question offends the said provision in as much as the impugned mark is not capable of distinguishing respondent goods from those of others and the said trade mark 'HYPNOS' is highly distinctive qua the applicant.
The impugned trade mark also offends the provisions of section 9(2) of the Act as the said trade mark is likely to cause confusion and deception due to the fact that the trademarks are identical, goods are identical and purchasing public is same and even the territory where the petitioner and respondent are doing business are same and thus impugned mark is violative of provisions of section 9(2) of the Act.
4 5 . The applicant has submitted that once, it is established that on the date of adoption of trade mark 'HYPNOS' by the respondent, applicant's trade mark 'HYPNOS had and still has spill over reputation in India, it becomes conclusive that adoption of the trade mark 'HYPNOS' by the respondent is not bonafide and is dishonest. It is submitted that the respondent has not given any justification for the adoption of the trade mark 'HYPNOS'. Applying the said principle, it is beyond any doubt that the adoption of the trade mark 'HYPNOS' by the respondent is dishonest and cannot be justified on the grounds of honesty or even inadvertence.
Lastly, the impugned trade mark is clearly a fraud on the Register in as much as the respondent was already aware about the goodwill and reputation of the applicant's trade mark 'HYPNOS' spilling over to India at the relevant time which was a matter of public knowledge. The impugned trade mark offends the provision of section 18 of the Act as the respondent is not the lawful proprietor of the trade mark 'HYPNOS' and has made wrongful claim before the Trade Mark Registry while claiming to be proprietor of the said trade mark. The impugned trade mark thus offends the provisions of section 9, 11, 18 and 57 of the Trade Marks Act, 1999.
47 . The Applicant has relied further on the following authorities in support of his submissions which are reproduced as under:--
"i) N.R. Dongre v. Whirlpool Corporation -1996 PTC (16)
ii) Milmet Oftho Industries & Ors. v. Allergan Inc. 2004 (28) PTC 585 (SC)
iii) M/s. Hindustan Pencils Pvt. Ltd., v. M/s. India Stationery Products Co. AIR 1990 Delhi 19
iv) Ansul Industries v. Shiva Tobacco Company: & 2007(34) PTC 392
v) Hiralal Parbhudas v. Ganesh Trading Company and others AIR 1984 Bom 218.
vi) L.D. Malhotra Industries v. Ropi Industries PTC (Suppl) (2) 564 (Del)
vii) Pratyush Kumar Jana & Anr. v. New Howrah Bakery (Bapuji)Private Ltd. "2009 (40) PTC 442 (Cal.) (DB) -
viii) Bloomberg Finance LP v. Prafull Saklecha & Ors. 207 (2014) Delhi Law Times 35"
RESPONDENT ARGUMENTS:
On contra, the Ld. Counsel for the respondent Dr. kalyan has advanced his oral submissions at length highlighting the core issue of more or less surrounding on the principle of territoriality use of trademark and further spilling of trans border reputation to other country, so the main crux of his argument was firstly to the extent that because of territoriality factor is trademark laws so local use is must to claim spill over of reputation secondly to claim refuge under well known, the applicant has to show well known of the territory where it claims use of the impugned trademark of almost few decades, thirdly in application for rectification to expunge/remove the trade mark from the Register, the onus always lies on the applicant to prove his case by producing cogent evidence. The respondent has raised few tenable points against the rectification application of the applicant are stated as under:--
The Ld. Counsel for the respondent Dr. kalyan has submitted that as per section 2(1)(zg) of the Trade Marks Act, 1999, the trade mark will be considered to be well known only if it is known to substantial segments of consumers and there is likelihood of association or connection in the course of trade by the consumers. However, there are no clear procedures or definition with regard to 'Substantial Segment'.
That the evidences provided by the applicant are very limited in nature and in no manner assist them in proving well known-ness of their mark 'HYPNOS' in any jurisdiction including India. Therefore, the rectification application filed by the applicant fails on the ground that the applicant's mark is not well known and Section 11(2) of the Trade Marks Act, 1999 makes it clear that the said section is applicable only if the alleged conflicting mark is well known in nature.
A combined reading of section 11(2) and section 2(1)(zg) of the Trade Marks Act, 1999 indicates that in order to prove grounds under section 11(2) in a rectification petition, the applicant has to prove that there exists a likelihood of association of the respondents mark 'HYPNOS' with the mark of the applicant. Furthermore, the use of the mark by the respondents does not amount to misrepresentation by any stretch of imagination as the applicant's mark has no reputation, no goodwill and no recognition among consumers in India as of the critical date i.e. 28th March, 2007.
The applicant has miserably failed to prove the first two requisites for applicability of section 11(2) of Trade Marks Act, 1999, the factors related to unfair advantage, detriment to repute and detriment to distinctive character of the trade mark shall not apply to the instant case. The concept of detriment to the distinctive character of trademarks i.e. blurring and the detriment to the repute of trade mark i.e. tarnishment under section 11(2) requires a very high standard of proof.
The applicant for rectification in fact is required to prove any such tarnishment or blurring by providing actual proof and mere submission that there is a likelihood of detriment shall not be sufficient under section 11(2) of the Trade Marks Act, 1999. None of the evidences submitted by the applicant proves that use of the mark 'HYPNOS' by the respondent's leads to actual or even likelihood of detriment to the distinctive character or repute of its trade mark that respondents have actually gained any unfair advantage by using their mark 'HYPNOS'.
As far as the document is concerned, the applicant primarily has relied on few documents before the critical date; i.e. 28th of March 2007 the evidence document provided by the applicant's is a royal warrant. The applicant has failed to submit any further evidence where the applicant has supplied materials to royal family in support of the warrant that merely showing a royal warrant will not be sufficient to establish reputation of the mark. As holding a royal family and it does not mean that, it is a best or well-known product.
The applicant has submitted registration certificate of some countries. The said registration certificates are without any extensive sales evidences that the mark has been substantially use in the said countries and recognized by consumers to be a mark of well known trademark. As such, the evidence on record does not lead to any conclusion that the applicant mark is well known either in its home country UK or in any other country.
The respondent has submitted 64 acceptable and 14 documents are before the critical date 28th March 2007 of the registration of respondent trademark documents. The submission of 5 invoices in relation to 2 countries cannot lend fame or well known to the applicant mark by any stretch of imagination. Even e-mail communication and sales invoices submitted by the applicant in case of India do not clearly indicate the actual sale was affected or not.
The respondent has submitted few sales invoices, which are not sufficient to prove that its mark is a well known even in one country as the respondent has merely submitted 4 invoices of US one in while related to Taiwan and no other invoices of any other country. Before the date of use claimed by the respondent which reflect that the mark 'HYPNOS' well known in the country where it is being used
The sales invoices as well as advertisements and news reports concerning to USA that the said evidences are barely enough to prove that the mark is genuinely use in USA. Even the statements of sales are self made; the applicant has failed to file certified sales statements authenticated by government departments of his home country, or of other country, the uncertified sales statements cannot be accepted as cogent proof of use and reputation.
The applicant has submitted few advertisement and promotional material, which are cannot be taken as sufficient to prove the applicant mark is well known as the respondent has failed to submit the advertisement related to many other countries except USA. In many other countries by virtue of the claim of registration, the promotional materials submitted by the respondent in the case of USA is insufficient but does not show any extensive promotion or knowledge of the mark among US consumer that the mark has attained the reputation of well known. Furthermore, the date of advertisements and promotional evidences as submitted by the applicant are much after the adoption and use of the trade mark by the respondent.
60 . That the applicant has submitted other documents is solely related to contract agreement with some Taiwanese Company, which merely indicates that the applicant has forged a relationship with the said company but nowhere it reflects the use of the mark in Taiwan or neither any other country nor the applicant has filed other sale documents in extension related to Taiwan. So, nowhere the contract documents as submitted by the applicant corroborate the statement of the applicant that it has attained the status of well known in Taiwan.
If we are further peruse the relevant documents which can be counted on fingers as submitted by the applicant of different jurisdiction before the date of use by the respondent. The applicant documents submitted along with the petition does not reflect any use in relation to mark 'HYPNOS' in any manner. Even the respondent has claimed a prior use then the applicant in India
The applicant has submitted invoices of 2009 mentioning Premier inn but nowhere the invoice shows that the applicant has supplied the so-called goods under the mark 'HYPNOS, further the applicant has also failed to submit any cogent evidence, which shows that the respondent has taken undue advantage of it. The evidences submitted by the applicant falls short of proving any such actual confusion and/or association or any likelihood of confusion or association among the public.
The respondents that they are genuine adopters and prior users of the trade mark 'HYPNOS' in India: The respondents have adopted the fanciful word 'HYPNOS' from th English term HYPNOSIS. Though the mark HYPNOS' means the God of sleep in Gree language, the mark will not be considered to be descriptive, suggestive or arbitrary in India as Indian consumers do not know or understand the meaning of the Greek term 'HYPNOS' making this mark fanciful.
The respondents have adopted the mark, 'HYPNOS' for their products by filing for a trade mark and using it as a brand for pillows. The respondents have been honestly and genuinely using the trade mark 'HYPNOS' since the date of first use in 2008. The respondents have submitted more than 150 invoices spread over 2008 to 2014 indicating their genuine and honest use.
65 . In the light of the above-mentioned submissions, the applicant is not able to prove through any of the evidences or corroboration evidence that the impugned mark of the applicant is well known in any of the countries connected to the applicant alone.
Therefore, the applicant in the instant case has utterly failed to show that-"1. Its mark is well known.
The Indian consumers actually or link the word 'HYPNOS' with them.
3 . The use of respondents mark 'HYPNOS' would amount to free riding of reputation of applicant's mark 'HYPNOS' or is detrimental to the distinctive character or repute of its mark 'HYPNOS'
4 . the use of the respondent's mark will mount to confusion or deception among the public or passing off."
The applicant has approached this hon'ble IPAB with unclean hands and has no bonafide intent. The applicant has claimed a different date of first use in its trademark application before the Indian Trade Mark Registry and a totally different date in this petition for rectification which raises a question on the applicant's bonafide intent.
The applicant has submitted in his pleadings that the respondent was aware of the applicant trademark, if we apply same yardstick on the applicant, than the applicant was very much aware of the prior use and presence of the respondent in India. The fact that the applicant, who claims to be an international IP savy company has not taken such basic steps indicate that the applicant has no basic intent to enter into India.
The respondents contended that they have been honestly and genuinely using the trade mark 'HYPNOS' since the date of first use in 2008. The respondents have submitted 171 invoices in original spread over 2008 to 2014 indicating their genuine and honest use.
The applicant has merely filed this petition for rectification a parallel proceedings during the pendency of an infringement suit, only to frustrate the genuine efforts of the respondents to enforce their trade mark rights.
7 1 . The Respondent has relied on the following authorities in support of his submissions:
"a) Ansul Bv v. Ajax Brandbeveiliging BV [2003] ECR I-2439 - It
b) Tata Sons Ltd. v. Manoj Dodia and Ors., MIPR 2011
(1) 341, 2011(46) PTC 244 (Del).
c) British Sons v. James Robert - 1996 (RPC)281 (page 305-306)
d) Kitply Industries Limited v. Shri Binod Kumar Golchha, ORA/7/2005/TM/KOL, Order (No. 37 of 2013)
e) Milmet Oftho Industries and Ors. V. Allergan Inc. 2004 (28) PTC 585 (SC) It was held that
f) E.I. Du Pont De Nemours and Company USA v Zip Industries Private Limited, Ta/6/2003/TM/CH (Tma 7/1996)
g) St.Ives Laboratories Inc. v. G.K. International Pvt. Limited, M.P. No. 117/2006 in ORA/73/2005/TM/DEL
h) Kaira district co-operative milk producers' union limited v. Deputy Registrar of Trade Marks and Others, OA/56/2011/TM/KOL, Order (No. 34 of 2013).
i) The Wellcome Foundation Limited v. Reliance Formulations Private, 2005 (30) PTC 533 IPAB
j) Hotel Hilton International v. Hotel Hilltone Private Limited, 2005 (31) PTC 625 IPAB..
k) M/s. World Wide Brands Inc. v. Smt. Dayavanti Jhamnadas Hinduja2009-1-L W658, MIPR 2009 (2) 310, 2009 (39) PTC 457 (Mad)
l) Intel Corporation Inc v. CPM United Kingdom Ltd., (Case C-252/07)"
SUMMARISATION AND CONCLUSION
After going through the pleadings and oral submissions on the issues advanced by both of parties at length, which are more or less are same on the issue of connected to well known, trans-border reputation and reputation spill over to other country without use. we have crystallize issues in to two common but pertinent issues, in our view for adjudicating the case in hand the issues are paramount and are interconnected are reproduced as under:
"1. Whether the trademark 'HYPNOS' of the applicant is well known trademark and carries Trans- border reputation.?
If yes, what affect of spill over of reputation of the trade mark 'HYPNOS' in India.?
3 . Whether the respondent's adoption is contrary to section 12 of the Trade Marks Act, 1999.?"
Issue No. 1 and 2
As far as the issue No. 1 and 2 is concerned as both of issues are inter-connected, so we taking up these issues firstly for our consideration, the applicant has shed light partly and only on the issue No. 1 connected to aspect of well known, trans-border reputation without touching the aspect of territorial use of applicant trademark 'HYPNOS' in India. To buttress his arguments in support of his pleadings, the Ld. Counsel for the applicant placed high reliance on the judgments of trans-border reputation but placed less reliance on facts and corroborative documents attached with application, the Ld. Counsel for the applicant submitted that the requirement of localized use in India is inconsequential for the purposes of attaining such right
After going through the Trademarks Act, we are of the view, as far as Trademarks Act before us is concerned, as it clearly suggests that the rights emerging from the Trademarks Act is a monopolistic right and the trademarks existence and its relevance only comes when it is used on a product, this is routed by the principle of territoriality, whereby the existence of the trademark becomes paramount within the such territory, under the Trademarks Act the owner has been granted monopolistic exclusive rights to protect his trademark and trademarked goods Thus, infringement only occurs when trademark is used on a product without authorization of the trademark owner on a particular territory of a nation.
The trademark rights exist in each country separately in accordance to the country specific statutory scheme. The disputes relating to trademark are adjudged by the law of the land specifically, where the dispute have arisen. The territorial character of trademark has been further strengthened because the foundational intellectual property conventions of respective country were built around the specific principle of territorial treatment.
76 . In this case the Ld. Counsel for applicant has led arguments, firstly with the premise that the impugned trademark 'HYPNOS' of the applicant is well known and it has attained reputation by virtue of extensive use, secondly its reputation spills over to India by its international use, thirdly the Ld. Counsel for the applicant has shown the judgments of various courts in support of his submissions putting less emphasis on facts, the Ld. Counsel for the applicant during the course of arguments, did not touch any of issues in extensio with regard to misrepresentation, resulting to damage, loss of goodwill and reputation and dilution of the trade mark 'HYPNOS'.
7 7 . The applicant has submitted around total 125 documents, which are only photocopies and are not substantiated by any originals along with application as evidence. The respondent has questioned the authenticity of the documents on various grounds and brought it down to 64 documents of the applicant as acceptable. The respondent has further culled out 14 documents out of 64 documents which are relevant which are before the critical date of 28th March 2007 registration date of the respondent trademark.
The dissection of the applicant documents filed as evidence further reveals that only 14 documents which are before the critical date of 28th March 2007 registration date of the respondent trademark and out of 14 documents, the applicant has submitted of 5 invoices specifically in relation to 2 countries only. The 4 invoices of US and one invoice is related to Taiwan and the applicant did not submit any other invoices of any other country, where one can see the applicant claims of its extensive use before the date of use claimed by the respondent of the mark 'HYPNOS'. The submission of few invoices cannot lend fame or well known to the applicant mark by any stretch of imagination.
The documents submitted by the applicant do not reflect firstly the extensive use or show the well known recognition of the mark among the consumers in India or internationally. The Ld. Counsel for the applicant to buttress his arguments has relied primarily on few documents before the critical date including royal warrant. The applicant has failed to submit any further supportive evidence, where it shows that the applicant has supplied the said materials to royal family as claimed in the warrant as mere holding a royal family warrant do not give credence that it is a best or well-known product.
8 0 . We have gone through the authorities submitted by the applicant related to principle of well known and trans-border reputation and as such they are not much helpful to the applicants in context of the present case, as this proceeding is related to rectification proceedings under section 57 of the trademarks Act, which specifically deals with the power to cancel or vary registration and to expunge the trademark from the register is based on different tenets altogether different from the suit of passing off, as most of the judgments are rendered in passing off cases and are of injunction stages.
We agree with the proposition propounded in the judgment of Hon'ble Supreme Court on same issue, wherein the Hon'ble Apex court has held that in the case of National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd. (Supra).
"Wherein the Hon'ble court has taken view that "the suit of passing-off and the opposition proceedings pending before the Registrar of Trademarks are different from each other."
We are also of the same opinion as this proposition lay down in above judgment that the rectification proceeding under section 57 of the trademarks Act is also altogether quite different from the suit of passing off or of opposition proceedings before the Registrar. The rectification proceedings before the board under section 57 of the trademarks Act cannot be equated to be similar with as in the case of passing off action, where the burden rests on the plaintiff to prove whether there is likelihood of the defendant's goods being passed off as the goods of the plaintiff but in rectification proceedings under section 57 of the trademarks Act it deals with the power to cancel or vary registration on many grounds and to expunge the trademark from the register is based on different tenets altogether not as in the case suit for passing off, as such the rectification application also has inherent different structure in totality than the suit of passing off.
To claim Trans-border reputation for a mark in India, the impugned trademark 'HYPNOS' must be well known substantial segment of consumers in India must know about the existence of the mark of the foreign entity. Such knowledge may come from free availability of the product to Indian consumers or extensive advertising, which reaches a substantial segment of Indian consumers because of extensive circulation of those advertisements in India.
84 . After going through the pleading and rival contention of the parties. We have observed that even assuming the applicant's trademark acquired reputation in foreign countries, where their trade mark is registered, but no presumption can be drawn at this juncture that trade mark of the applicant registered in foreign countries has automatically acquired reputation in India or trans-border reputation is percolated in India, as we have already pointed out that no document of the applicant shows of its extensive usage of the mark in India or any other place of registration.
The applicant has failed to establish that indeed the applicant has trans-border reputation due to its long and extensive use of the impugned trademark in question and the impugned trademark 'HYPNOS' is well known. The applicant has further failed to establish that the trademark "HYPNOS" has attained the reputation and goodwill which has spilled over in to other countries and India. The substantial segments of consumers in India know about the existence of the mark 'HYPNOS' as of the foreign entity.
It is well settled proposition that the onus is on the applicant applying rectification to establish by letting his evidence about the trans-border reputation, so the burden is on the applicant herein, the applicant has to discharge his burden by showing extensive use and making out strong ground for rectification. The applicant applying for rectification application has to discharge its onus in removing of registered trademark from register.
8 7 . The respondent has submitted and relied the case citations in relations to discharge of onus is on the applicant of submitting ample evidence to show established goodwill of the business in support of his application for rectification are as under:
"a. Kitply Industries Limited v. Shri Binod Kumar Golchha (supra)
b. E.I. Du Pont De Nemours and Company USA v Zip Industries Private Limited (supra)
c. Hotel Hilton International v. Hotel Hilltone Private Limited, (supra)
d. St.Ives Laboratories Inc. v. G.K. International Pvt. Limited, (supra)
e. Indo Pharma Pharmaceutical Works Pvt. Ltd. v. Farbenfabriken Buyer AG, (commonly known as Indon case)
f. Jabbar Ahmed v. Prince Industries and Anr. (supra)
g. The Wellcome Foundation Limited v. Reliance Formulations Private (supra).
h. M/s. World Wide Brands Inc. v. Smt. Dayavanti Jhamnadas Hinduja, (supra)
i. Intel Corporation Inc v. CPM United Kingdom Ltd. (supra)."
We have also gone through the authorities submitted by the respondent in support of his contention. We agree with propounded proposition in the above citations that the onus is on the applicant to discharge by producing substantial evidence in his support and it is burden on the applicant to establish evidence of extensive, long use of its mark and show the well knownness, trans-border reputation and making out strong ground for rectification.
The applicant has failed to remove the veil of substantive credence of the raised contentions from the mind of the bench with regard to his submissions, in our considered view, that could not withstand our scrutiny due to lack of credence of his evidence in support of his case, in place of leading evidence in extensio, the applicant Ld. Counsel has cited only judicial authorities on trans-border reputation and well knownness and its spilling over reputation to India, which could not withstand the factum of fact.
We agree with the view rendered in the judgment, as rightly held in the case of M/s. World Wide Brands Inc. v. Smt. Dayavanti Jhamnadas Hinduja, (Supra)
"Law on trans-border reputation may be stated as follows It is for the firm to establish an adequate good will in the business which could be said to suffer damage by reason of the activity of the other firm. The firm must also establish that it has a business reputation in this country which they are entitled to protect. It would not be sufficient even a mere knowledge of the make of the petitioner in the country without any business activity. The petitioner cannot also take advantage of simple advertisement in India in order to prove that it is the user of a trade mark in this country"
91 . The IPAB has again reaffirmed the proposition on Trans-border reputation and well knownness of the mark in the matter of The Welcome Foundation Limited v. Reliance Formulations Private, 2005 (30)PTC 533 IPAB, in an application filed for removal of registered trademark based on applicant's well knownness and transborder reputation held that :
"9. While considering the transborder reputation, it is for the appellant to establish by letting in evidence about the trans-border reputation. If the appellant wants to rely upon the transborder reputation, it is for them to furnish the materials such as availability of pamphlets and advertisements in India and also the foreign journals in which the advertisements of the appellant's goods or the marks were made, are available for circulation in India and thereby those in the field of dealing with such goods have knowledge about the appellant's mark. In the case on hand, the appellant did not let in any evidence to establish that the foreign journals in which theadvertisements in respect of their mark were made are available in India. Equally, the appellants failed to produce any material that the circulars or pamphlets or write-ups with regard to the appellant's goods are made available in India especially among those who are dealing in such goods. In the absence of any such material, we are unable to accept the contention of the learned counsel for the appellant that the appellant had established the transborder reputation of their mark in India. Hence this contention of the learned counsel for the appellant also fails."
It is worthwhile to mention the several other decisions rightly relied by the Ld. Counsel for the respondent the same are reproduced as under:
"In E.I. Du Pont De Nemours and Company USA v. Zip Industries Private (supra) petition filed opposing the registration of respondents trade mark based on transborder reputation, the IPAB dismissing the appeal held that:
"14. ......The applicants have not adduced any evidence of the use of their trade mark 'TEFLON' in India. They had also virtually accepted that their mark had not been used in India. No doubt they have filed details of foreign countries where they have registered their trade mark 'TEFLON' and advertisement expenses for the period 1966 to 1984 incurred by them for advertisements outside India and sales figures for their goods in foreign countries bearing the trade mark 'TEFLON' for the period 1966 to 1985. The appellants have also filed copies of a few advertisements pertains to the goods bearing the trade mark. Merely filing a few set of documents like foreign sales and advertisement expenses do not go to prove that their mark has reputation in India. They have not adduced sufficient evidence in support of their reputation by promotion of their mark in India either through advertising and publicity, presentations at fairs and exhibitions, newspapers, sports sponsorship, journals, magazines etc........ No evidence from them to prove reputation of the appellants'
mark in India has been adduced. The appellants have to file substantial evidence in support of their contention that their mark is a well known mark in India. As they have failed in this matter, we are of the view that the appellants have not established the reputation of their mark in India either by use or publicity."
The IPAB in another of matter of St. Ives Laboratories Inc. v. G.K. International Pvt. Limited, (supra) while dismissing the application filed for removal of the Trademark based on well knownness and transborder reputation of the applicant it was held that
"19. Considering the above, we are of the view that the applicants have not made out a prima facie case for the mark to be removed from the Register of Trade Marks. Moreover in an application for rectification to expunge/remove the trade mark from the Register, the onus always lies on the applicant to prove his case by producing cogent evidence. The applicants failed to make out any ground for rectification except making some vague statements which are not sufficient to consider the claim of the applicants."
The IPAB in another of matter of Hotel Hilton International v. Hotel Hilltone Private Limited, (Supra) while deciding an appeal based on transborder reputation held that
"8. In considering the plea of the learned counsel for the appellant regarding the transborder reputation, we are of the view that the appellant has not let in any piece of evidence that their mark was so familiar in India. There is no documentary evidence to show that their mark was advertised in any of the journals in India. They also failed to produce any evidence that the foreign journals in which their advertisements were made, are in circulation in India. The first correspondence is of the year 1988. Prior to that, there is absolutely no evidence for the use of the appellant's mark in India either directly or indirectly. Hence we do not find any infirmity in the findings of the Assistant Registrar of Trade Marks and accordingly, we confirm the same."
The IPAB in another of matter of Jolen Inc. v. The Assistant Registrar of Trade Marks and Shri Shoban Lal Jain, Trading as Hindustan Rimmer, 2005(30) PTC 542 (IPAB) dismissing the appeal based on trans-border reputation held
"33. In the case on hand, undoubtedly the second respondent is the first in the market in India since 1985 and got the registration of the disputed mark in respect of associated goods. The appellant failed to establish through evidence about their trans-border reputation.
Considering all above factors, we conclude that the appellant did not establish their reputation the and even otherwise, they did not have any visible activity in furtherance of acquiring reputation in India, assuming for argument sake, such a reputation does exist, no evidence with regard to the circulation of the foreign magazines containing the advertisements of the appellant's goods with the disputed trade mark, no evidence with regard to any publicity in the magazines or any other media. In such a case, we have unhesitatingly to hold that the appellant has miserably failed in establishing the trans-border reputation and on this short ground, the appeal fails and accordingly, the appeal is dismissed. However, there will be no order as to costs."
9 3 . The principles as enumerated by the IPAB in the decisions cited (supra) are squarely applicable to the issue involved in the instant case as we have already held that the applicant has to discharge its onus by establishing that they have attained trans-border reputation, goodwill and are much prior in adoption and use of the impugned trade mark in India.
94 . We further take up the contentions raised by the Ld. Counsel for and against determining of the trademark as well known trademark. In our considered view, the definition of Section 11(6), Sub-section (7), sub-section 9 of the Trademarks Act, that the power to determine the question with regard to whether the Trademark is well known or not, is solely vests with Registrar or the Court. Further there is no two opinion that the above section does not contain or specify the procedures to be adopted for determination of trademark as "well known" nor there is any judicial precedence, which lays path and procedures, as to how to determined well knowness of the particular trademark under the specified laws of the trademarks
Our view is also strengthened by the another recent judgment of the Delhi High Court in the case of Tata Sons Ltd. v. Manoj Dodia and OrsMIPR 2011 (1) 341 : 2011 (46) PTC 244 (Del)
"Hon'ble High Court has held in Para 13 of the judgment that "Trademarks Act, 1999 does not specify the factors which the Court needs to consider while determining whether a mark is a well known mark or not, though it does contain factors which the Registrar has to consider whether a trademark is a well known mark or not. In determining whether a trademark is a well known mark or not, the Court needs to consider a number of factors including (i) the extent of knowledge of the mark to, and its recognition by the relevant public;
(ii) the duration of the use of the mark; (iii) the extent of the products and services in relation to which the mark is being used; (iv) the method, frequency, extent and duration of advertising and promotion of the mark; (v) the geographical extent of the trading area in which the mark is used; (vi) the state of registration of the mark; (vii) the volume of business of the goods or services sold under that mark; (viii) the nature and extent of the use of same or similar mark by other parties; (ix) the extent to which the rights claimed in the mark have been successfully enforced, particularly before the Courts of law and trademark registry and (x) actual or potential number of persons consuming goods or availing services being sold under that brand. A trademark being well known in one country is not necessarily determinative of its being well known and famous in other countries, the controlling requirement being the reputation in the local jurisdiction."
The similar view was taken in another judgment, in the case of IHHR Hospitality Pvt. Ltd. v. Bestech India Pvt. Ltd., rendered by the Hon'ble Justice V.K Jain of Delhi High, it was held
"There is no material on record to show that the mark 'Ananda' has acquired such a high brand equity in India that its use by persons other than the plaintiff in respect of totally unrelated goods/services will dilute the reputation which the brand 'Ananda' enjoys in India. In my view, considering an altogether different nature of the product being promoted by the defendant, coupled with the use of the words 'Bestech Parkview' before the word Ananda, there is no reasonable possibility of any confusion being caused among the consumers as regards the source of the product being offered by the defendant nor is there any reasonable probability of any damage to the reputation which is claimed to be enjoyed by the trademark 'Ananda' in India. Considering the origin of the word Ananda which means nothing, but bliss and which is used primarily to express a state of mind of a human being, it is difficult to say that this word has become distinctive with the plaintiff-company and the defendant is trying to take an unfair advantage by using this word as a part of the name being used by it to promote its housing project in Gurgaon. In the facts and circumstances of the case, I find it difficult to accept that the attempt of the defendant-company by use of the word 'Ananda' as a part of the name of its project at Gurgaon is to capitalize on the reputation which the trademark 'Ananda' claims to enjoy in hospitality sector.
We are also of the view that the goodwill and reputation is not created in vacuum or without sale, the claim of extensive goodwill and spill over reputation requires evidence of long and extensive continuous use of the impugned mark is requisite, as exclusive right under trademark is territorial right, if the party is able to prove the substantive usage and residual reputation of the impugned trademark in question, then the issues of dilution, blurring, misrepresentation, erosion, tarnishing of the reputation and unfair advantage over the goodwill and reputation which will emerge on the later stage as these issues are basically of secondary to the 1st issue. So in the rectification application, it is paramount onus on the part of the applicant is to first to show and prove legitimate right over the trademark.
The applicant has not shown that the impugned trademark 'HYPNOS is well known in any other country and or the applicant has acquired distinctiveness by long and continuous use outside India, and has become household name as well as it is indentified with the applicant alone, by submission of mere authorities of various courts cannot substantiate or enhance the credibility of the contentions of the applicant rather non submission of the extensive credible evidence has created a lack of credibility to the applicant contentions, as the onus is on the applicant to show strong ground to dislodge already registered trademark. The claim of applicant becomes shaky and without any substance and thereby raises questionable doubt on its credence.
The hon'ble Apex court has held the decision in Milmet Oftho Industries & Ors v. Allergan Inc (supra) the Hon'ble Apex Court has held that
"Thus, if a mark in respect of a drug is associated with the Respondents worldwide it would lead to an anomalous situation if an identical mark in respect of a similar drug is allowed to be sold in India. However one note of caution must be expressed. Multinational corporations, who have no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian Company by not permitting it to sell a product in India, if the Indian Company has genuinely adopted the mark and developed the product and is first in the market. Thus the ultimate test should be who is first in the market."
The Ld. Counsel of the respondent has rightly contended that Delhi high court has held in the matter of N.R. Dongre and other v. whirlpool corporation and Anr. and AIR 1995 Delhi 300 at Para 15 and 25, which was later affirmed by the Hon'ble Apex Court:
"that the knowledge and awareness of a well known trademark among the relevant consumers in India may be result of extensive advertising of a mark among the relevant consumers in India may be the result of extensive advertising of a well known trade mark through different media such as print, video and television in other countries provided such advertisements are part of magazines, journals and other media, which have extensive circulation and reach among the Indian consumers. As per the Court free availability of products due to import restrictions, or other reasons, may not prevent a reputed trade mark from becoming well known among Indian consumers by virtue of extensive advertisements.
Two important conditions may be drawn from this decision, one, the mark in question to have trans-border reputation must be well known internationally, and two, such mark must be the subject of extensive long term and far reaching advertisements in reputed magazines, or other media, which have wide circulation or reach among Indian consumers."
The principles enumerated by the Hon'ble Apex Court in the decision cited above (supra) makes it clear that the multinational companies, who have no intention of introducing their product in India should not be allowed to throttle an Indian company and the Indian company, who has genuinely adopted the mark and developed product and it is first in the market cannot be prevented from using the mark.
The respondent has filed an application for registration of impugned trademark 'HYPNOS' vide registration no 1544245 in class 20 on 28th of march 2007 as proposed user but started using the impugned trademark from 16th of October 2008. The trademark certificate was granted to the respondent bearing no 760221 on 23rd of October 2008 by Indian Trademark Registry.
On the other hand, no action was initiated by the applicant against the respondent, though as per contention of the Ld. Counsel for applicant; the applicant was trying to make presence in India at that time. Further the applicant has placed a reliance on the email document of 20th February 2009 and also same in the case of the email communication dated 16th October 2008, the said both documents does not show specific mentioning of the mark 'HYPNOS' in the said email communications. The respondent has started using the impugned trademark 'HYPNOS' from 16th of October 2008 and has produced 23 copies of sales invoices and 9 separate email communications of the 2008 and also 29 copies of invoices of the year 2009 that clearly reflects the use of the mark 'HYPNOS' on their end.
104 . While comparing the usage, sales and other documents of the impugned trademark 'HYPNOS' of the applicant and the respondent belonging to year of 2011, we have found that the applicant has submitted one magazine report of February 2011, 3 news paper reports covering alliance reports with Indian Company M/s. Balaji Enterprises besides one document of filing of application for a label mark 'HYPNOS' with Indian trademark registry claiming use from 1st of March 2011, on contra we have found 31 sales invoices of the respondent clearly reflecting the usage of the mark 'HYPNOS' by the respondent?.
Further scrutinizing the documents of the both parties qua use of the impugned trademark of further years in relation to the year 20012, 2013 and the year 2014 the applicant has failed to submit any document in relation to sales or other material in support of his contentions, on contra, for the year 2012, the respondent has filed 24 sales invoices of the respondent clearly reflecting the usage of the mark 'HYPNOS',. for the year 2013, the respondent has filed 24 sales invoices of the respondent clearly reflecting the usage of the mark 'HYPNOS' along with the chattered Accountant certificate certified sales turnover of the year 2012-13, for the year 2014, the respondent has filed 07 sales invoices of the respondent clearly reflecting the usage of the mark 'HYPNOS' along with the chattered Accountant certificate certified sales turnover of the year 2013-14. On the other hand the applicant has submitted only few self made statement of sales without any certification or authentication to establish its goodwill and reputation.
The applicant has failed to place adequate documents in support his contentions, the applicant has filed only uncertified photocopies of the documents related to registrations, sales figures etc no original document was submitted along with the application. The shown documents as evidence is thus inadequate and does not command confidence or credence, as the applicant has failed to submit bills/invoices or advertisements of the newspapers in extensio, the submission of meager evidence cannot transpires the spillover of the reputation to any other territory including India, further it does not lead credence to the contention of the applicant that its impugned trademark "HYPNOS" is well known the within section 2(1)(zg) of the Trade Marks Act is unrealistic. Thus the claim of the applicant looks farfetched.
107 . At the risk of repetition, we are constrained to reiterate that mere filing applications or thereafter obtaining certificates of registrations for the impugned trademark from some countries itself is not sufficient to establish world wide reputation or trans border reputation at the same we are very much well aware that to establish trans-border reputation, there is no requirement of actual use of the trademark, but wherein a person who is claiming to have attained well known trademark and is deriving trans-order reputation of his mark, so the onus is cast upon the applicant to establish his bonafide of its worldwide reputation to be a well known mark and at the same time the impugned mark enjoys trans-border reputation and lastly such attained reputation travels or spills over to another country but in the instant case is concerned the applicant has failed miserably to discharge the such burden.
In our considered opinion that the applicant has not able to substantiate his contentions that the respondent has gained unfair advantage over the goodwill and reputation of the petitioner and their registered trademark contravenes the provisions of Section 9, 11 and 18 of the Trade Marks Act 1999
Therefore, the applicant in the instant case has utterly failed to prove the number 1 and 2 issues, as dispute crystallize by us surrounding the impugned trademark 'HYPNOS, whether it is a well known trademark and its reputation spilling over to India. The applicant has failed to show any credible evidence in support of the contentions that the Indian consumers actually or link and identify the word 'HYPNOS' with them and the use of respondents mark 'HYPNOS' would amount to free riding of reputation of applicant's mark 'HYPNOS' or is detrimental to the distinctive character or repute of its mark 'HYPNOS' the use of the respondent's mark will mount to confusion or deception among the public or passing off. Thus the claim of the applicant looks farfetched without any substance and in our considered opinion the applicant has failed also in both the issues.
Issue No. 3
Now we take up the issue No. 3 with regard to the claim of respondent under the Section 12 of the Act which lays down that in the case of honest concurrent use or of other special circumstances, which in the opinion of the Registrar of Trade mark, make it proper so to do, he may permit the registration by more than one proprietor of the Trade marks which are identical or similar (whether any such Trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose. This provision over rides the stipulation contained in Section 11(1) of the Act.
The intention of the legislature here is that the court be able to weigh and measure all the possibilities of deception or confusion as occurs in the minds of the consumers/public at large with respect to Trade mark registration in consideration of commercial claims. There are certain factors that ought to be considered while granting registration to such a disputed Trade mark that needs to be observed by the Registrar and based on these the trade mark in question will be registered in favour of the concurrent user.
That the doctrine of rational of assessment of relevant factors in deciding the issue of honest concurrent use was as decided House of Lords by lord Tomlin Pirie's in the Appl., (1933) 50 RPC 147.
What factors to be taken in to account or considered in order to assess whether a case of honest concurrent use is made out or not and whether the said honest concurrent use justifies grant of registration of Trade mark under the said exception were laid down by the pronouncement in a decision of House of Lords by lord Tomlin Pirie's (Supra)
The Hon'ble High Court Delhi has accepted drawn doctrine in House of Lords by lord Tomlin Pirie's (Supra) how to assess relevant factors in deciding the issue of Honest concurrent use and the Hon'ble High Court Delhi has held in while deciding the issue of honest concurrent in the matter of Alkem Laboratories Ltd. v. Mega International (P) Ltd. MIPR 2007 (2) 97, 2007 (34) PTC 557
"It has been further observed that as per the dictum of Lord Tomlin in the Matter of an Application by Alex Pirie and Sons Ltd. (1933) 50 RPC 147, the following factors are to be taken into account while considering registration on the ground of honest concurrent user:
the extent of concurrent use
the quantity and area of trade
the degree of confusion likely to ensue from the resemblance of the marks which is, to a large extent, indicative of the measure of public inconvenience
honesty of concurrent use
whether any instances of confusion have been proved
6 . relative inconvenience which would be caused if the mark in the suit was registered, subject, if necessary to any conditions and limitations."
That as we have already opined that the applicant has failed to establish its long use as well as reputation in India, therefore it becomes paramount that whether the use by the respondent of the impugned trademark 'HYPNOS' will come under the special circumstances and whether the respondent can claim honest concurrent use in these circumstances and the relevant factors that are to be taken in to account in order to assess, whether a case of honest concurrent use is made out or not and whether the said honest concurrent use justifies grant of registration of trade mark under the said enumerated exception which were laid down by the pronouncement in a decision of House of Lords by Lord Tomlin Pirie's in the Appl., (Supra).
The applicant claimed in his pleadings that the respondent must be aware of the applicant trademark, if we apply same yardstick on the applicant, than the applicant must also be aware of the prior use and presence of the respondent in India and despite of knowing this fact, the applicant did not initiate action of filing opposition to the impugned mark against the respondent within time, rather allowed the respondent to claim registration of the impugned trademark, rather the applicant action, This act of the applicant has acquiesced the respondent and now cannot claim blurring or tarnishement.
The factors in relation to honest concurrent use to weighed judiciously, as the respondent has prior registration in its stride and use qua applicant in India, as the applicant has failed to show invoices in relation to their use and has failed to prove that the reputation of impugned trademark comes under the ambit of well known and it is spilling over India too, whether it creates confusion due to resemblance of the marks of the respondent in India, which is to a large extent, indicative of the measure of public inconvenience.
That in both counts the applicant herein has not able to show or prove by any tangible evidence in indicating of the measure of public inconvenience from the resemblance of the marks, nor the applicant has able to prove his case though any instances of confusion and further the applicant has also failed in proving the rectification application that relative inconvenience which would be caused, if the mark in rectification application if it is not removed.
As In the another case before the Hon'ble Supreme Court of India, the Hon'ble Court has held in the case of London Rubber Co. Ltd. v. Durex Products 1963 AIR 1882, 1964 SCR (2) 211,
"that no hard and fast rule can be laid down regarding the volume of use for the purposes of Sub-s. (2) of s. 10. Ordinarily it would be sufficient if it is shown that there was a commercial use of the mark. There was such a use in this case, cannot be disputed and the honest concurrent use of the mark by the respondent for a considerable period has been established. The circumstances in this case can be properly regarded as special circumstances to justify the registration of the mark and there is hardly any likelihood of confusion or deception.
In this rectification application the applicant has utterly failed to fulfill any of the factors as enumerated in preceding paragraphs, if that are to be taken in to account in order to assess whether a case of honest concurrent use is made out or not and whether the said honest concurrent use justifies grant of registration of trade mark under the said exception were laid down by the said pronouncement.
In view of the authorities as discussed in preceding paragraphs, with regard to the issue No. 3, we are in our considered view that the applicant has not able to substantiate the contentions with any cogent documentary evidences that there is confusion which is likely from the resemblance of the marks of the respondent in India, the applicant herein has also not able to show or prove any tangible evidence to a large extent by indicating the measure of public inconvenience from the resemblance of the respondent mark, nor the applicant has able to prove his case though any instance of such impending confusion.
The applicant has further failed to prove such association or linkage which may cause unfair advantage or detriment to the distinctive character or repute of the applicant mark. The applicant has further failed to nail down the respondent that adoption of the trademark 'HYPNOS' was amount to free riding and/or taking unfair advantage of the applicant's mark. Thus the claim of the applicant looks as imaginative; therefore in our considered opinion the applicant has failed in the issue no 3 and goes against the applicant.
We are in our considered view that the applicant has failed to make out any ground for rectification, except making some lofty statements, which are not sufficient to consider the claim of the applicants at this stage.
Therefore, in view of the aforesaid reasons, we are constrained to dismiss the rectification application, as it is devoid of merits, as the Board has already concluded the matter after hearing both the parties, hence both the pending Miscellaneous Petition No. 396/2012 and 127/2013 of the respondent are accordingly closed. No order as to cost.