I.K. Sons vs Prakash Brassware Industries And Anr.

S. Jagadeesan, J

The appellant filed this appeal against the order of the second respondent dated 25.11.1994 rejecting the application of the appellants for registration

of the trademark TARKO'.

The appellants filed the application No. 438802 on 7.6.1985 for registration of the trademark 'PARKO' in respect of electric juicers, electric mixers,

electric heal converters, electric grinders, electric elements and electric accessories and apparatus, not included in other classes. The said application

was advertised in the Trade Mark Journal No. 1011 dated 16.7.1991 at page 512. The first respondent herein, on 22.8.1991, filed their notice of

opposition to oppose the registration on the ground that they have been marketing their goods under the trademark 'PARKO' for the last 25 years and

that they are the registered proprietors of the trademark 'PARKO' under No. 222935 in class 11 and the same has been in use since 1963. Further,

they have stated that the mark applied for by the appellants is identical with that of the first respondent's trademark and, therefore, it is not registrable

under Sections 9, 11(a), 11(b), 11(c) 12(1) and 18(1) of The Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The

appellants filed their counter statement denying all the material averments contained in the notice of opposition filed by the first respondent and further

stated that the appellants are dealing in domestic electrical appliances and their goods are manufactured by third parties under the appellant's direct

supervision and control and the appellants commenced sale of such items after stamping the same with their distinctive trademark 'PARKO' since

1984, This mark has been adopted honestly and bonafidely. The appellants filed evidence by way of affidavit and the first respondent also filed

evidence of rebuttal. After the completion of the formalities, the matter was heard by the Registrar. Ultimately, under the impugned order, the

Registrar rejected the application of the appellants herein for registration of the trademark 'PARKO' and allowed the opposition No. DEL 7366 of the

first respondent on the ground that there is no honest use on the part of the appellants to get the benefit under Section 12(3) of the said Act and that

both the trademarks are in every respect identical and as such, there will be confusion and deception in the minds of the public, consumers as well as

the traders. Aggrieved by the said order, the appellants preferred an Appeal CM (M) 104 of 1995 on the file of High Court of Delhi, which was

transferred to this Appellate Board and numbered as TA 105 of 2003.

We heard both the counsels. Mr. Ajay Sahni, learned counsel for the appellants contented that the appellant's goods are related to electrical

appliances, whereas the first respondent's goods are sanitary wares and as such, the goods of the appellants and that of the first respondent are not

the same nor the description is identical. When the goods of both the parties are totally different and distinct, there is absolutely no chance or

possibility of any confusion or deception. Further, he contented that the appellants are using the impugned trademark since 1984 and as such, the

Registrar ought to have granted registration under Section 12(3) of the Act.

On the contrary, Mr. Shailen Bhatia, the learned counsel for the first respondent vehemently contented that the appellants had committed fraud for

the registration of the impugned trademark by stating that their goods were not included in any other classes and subsequently claimed the registration

under class 9. In fact, the appellant's goods are specifically described as one falling under class 7 and class 11 as per the alphabetical index to the

classification of goods issued by Government of India, Trade Mark Registry. The respondent's goods are in class 11. Hence, it cannot be said that all

the goods of the appellants are of different description. When some of the goods of the appellants fall within the description of class 11, it has to be

taken that the goods are similar or similar in description. In that case, the Registrar has rightly held that the appellant's mark is not registrable. He also

contended that when the respondent's mark is a registered one and they are in the market since 1963, the appellant's adoption of the very same mark

of the respondent cannot said to be bonafide. When the adoption itself is with mala fide intention, Section 12(3) is not applicable. Here again, the

Registrar held rightly. It is also contented that even assuming the goods are of different kind, still, the reputation and goodwill built up by the first

respondent all along cannot be permitted to be shared by the appellants by use of the same identical trademark. Allowing the use of the impugned

trademark by the first respondent, would also cause confusion in the minds of the public as if the first respondents are manufacturing such goods that

are being manufactured by the appellants. He also relied upon the judgment of the Delhi High Court in Daimler Benz Aktiegesellschaft v. Hybo

Hindustan, AIR 1994 Delhi 239 ,which was confirmed by the Supreme Court and another judgment of the Delhi High Court in the case ofH onda

Motors Company Limited v. Charanjit Singh and Ors., 2003 (26) PTC 1 (Del).

Though the learned counsel for the appellants drew our attention to the judgment in AIR 1960 SC 142, Corn Products Refining Company v.

Shangrila Food Products Ltd., and Vishnu Das v. Vishnu Das Kishen Das, familiarly known as the Charminar case, reported in 1996 PTC 512, we are

not inclined to discuss the same elaborately in view of the recent trend in the aspect of the well established reputation and goodwill which has been

taken totally a different role even though the goods are not identical or not of same description.

There is no doubt that the respondents are using the trademark 'PARKO' for their sanitary wares since 1963. While so, the appellants had chosen

to adopt the identical trademark for their electrical goods such as electrical juicers, electrical mixers, electrical heat-converters etc., in the year 1984.

In their application filed on 7.6.1985, they claimed user of the impugned trademark since 1.10.1984. The main claim of the learned counsel for the

appellants is that the goods being totally different kind, the registration of the appellants' mark will not cause any confusion or deception in the minds of

the public and as such, the rejection of the application by the Registrar is unsustainable. The other ground contented by the learned counsel for the

appellants is that the registration could have been granted under Section 12(3) of the said Act. We will take up the first contention of the learned

counsel for appellant and consider whether the appellants are entitled for registration of the impugned trademark on the ground that the goods of the

appellants and the first respondents are different in nature. The learned counsel for the first respondent, however, contented that all the goods of the

appellants are not different in nature and at least a few of the goods of the appellants fall under class 11, the same class under which the first

respondent's mark have been registered. Either the goods are of same nature or of different nature; the question is whether the same trademark can

be registered in the name of two different proprietors. That is the question arose for consideration in the famous Benz Case and Honda Case, which

were relied on by the learned counsel for the respondent. In the Diamler Benz Aktiegesellschaft v. Hybo Hindustan, AIR 1994 Delhi 239, familiarly

known as the 'Benz Case, the Delhi High Court held that the Trademark 'BENZ' was extensively used with respect to automobiles produced by the

plaintiffs and the plaintiffs therein have built up a well reputation and goodwill for their automobiles through the said trademark 'BENZ'. In such

circumstances, the use of such identical mark 'BENZ'. by the respondents with respect to under garments will lead to confusion in the market,

although the manufacturers of Mercedes Benz Cars were neither manufacturing nor selling garments nor underwear apparels. Similarly, in the Honda

Motors Company Limited v. Charanjit Singh and Ors. Case, 2003 (26) PTC 1 (Del), the Delhi High Court held that the plaintiffs mark 'HONDA' has

acquired honour and goodwill and the said name is associated with the plaintiff, who are established manufacturer in the field of automobiles and

power equipments and as such, the same trademark has acquired goodwill and reputation. The use of the same trademark by the defendants for their

product vis., Pressure Cooker will mislead the public to believe that the defendant's business and goods are that of the plaintiffs.

If the principles laid down in the above cases are considered as already stated, the trend has been changing, especially in the registration of the

trademark. In the changed circumstances, it is for us to consider whether the first respondent had built up a reputation and goodwill on their trademark

and whether the use of the same by the appellants would cause confusion in the trade. The first respondent is using the trademark from 1963 and

registered proprietor since 1964. The appellants adopted ' the same trademark nearly after 21 years. The appellants do not claim any ignorance of the

said trademark of the first respondent. Hence it may be a case of deliberate adoption of the impugned trademark by the appellants in order to take

advantage of the reputation and goodwill built up by the first respondent all the 21 years. When the trademark of the first respondent has the

reputation and goodwill, definitely, the adoption of the same by the appellants do cause confusion in the minds of the public as the public may think that

the first respondent is the manufacturer of electrical apparels that are being manufactured by the appellants. The well laid principles of the above

referred Judgment would reiterate that such confusion in the trade cannot be permitted. As the impugned trademark is identical and similar to that of

the appellant's registered trademark, we are of the view that merely because the goods of the appellant are different; the appellants cannot be

permitted to have the registration of the impugned trademark on the basis of the principles laid down by the Delhi High Court in the Benz case and

Honda case. Hence we do not find any infirmity in the order of the second respondent.

Coming to the next contention of the learned counsel for the appellants, as to whether the appellants are entitled for the benefit under Section 12(3),

we are of the view that they are not entitled for such benefits. While considering the claim, under Section 12(3), the following are the relevant

factors:-1. The extent of concurrent use;

The quantity and the area of trade;

The degree of confusion likely to ensue from the resemblance of the mark, which is, to an extent, indicative of the measure of public inconvenience;

Honesty of the concurrent use;

Whether any incidence of confusion has been proved;

Relative inconvenience, which would be caused, if the mark was registered, specially, if necessary, to any conditions and limitations.

However, it is to be noted that the above are not the determinative criteria in every case. As said in KERLY's LAW OF TRADEMARKS (12TH

Edition) Paras 10 to 18:-

The discretion of the Tribunal is un-fettered and concurrent registration may be allowed even when the probability of confusion is considerable. Each

case has to be determined on its own particular merits and circumstances"".

It may be pertinent to note that Section 12(3) is an exception to Sub-section (1) of Section 12, which totally prohibits the registration of identical or

deceptively similar trademark. Hence, first of all, the conditions, to attract Section 12(1), are to be complied with, viz., the goods must be same or the

description of goods must be identical. The contention of the learned counsel for the appellant is that the goods are not same kind. When that is so,

Section 12(1) itself is not attracted. However, the learned counsel for the first respondent contented that few of the goods of the first respondent fall

under class 11, the same class under which the first respondent's goods fall. Even if the goods are different, still to claim the registration, it is for the

appellants to establish that they are the honest concurrent user, on the date of the application. The first respondent's claim to be the user from

1.10.1984 and filed the application for registration on 7.6.1985. On the date of the application, the appellant had used the impugned trademark only for

seven months and did not file any evidence to establish their volume of business within the short spell of time. As already said, the claim of the

appellant that they are the honest concurrent user cannot be sustained. We are of the view that the Registrar has not committed any error in finding

that the appellant is not entitled for registration of the impugned trademark. Hence, we do not find any reason to differ from the view taken by the

Registrar. Accordingly, the impugned order of the Registrar is confirmed and the appeal is dismissed. No costs.