Mangalore Ganesh Beedi Works vs Sangishetty Ramulu And Ors.

Manmohan Singh, J

The appellants have filed the above appeal from the order and decision dated 30th June 2009 (hereinafter referred to as "the impugned order"), passed by the Assistant Registrar of Trade Marks, at Trade Marks Registry, Chennai in the matter of Opposition No. MAS-3260 to Application No. 479278 in class 34 for registration of trade mark label containing the Device of God GANESH and Goddess LAXMI. The opposition was dismissed by the said impugned order. Case of the appellants

The appellants are old established and reputed manufacturers and traders inter alia of bidis. Since past more than seven decades. The appellants and their predecessors have been continuously and extensively using upon and in relation to their bidis the trade mark labels inter alia containing the word GANESH and the motif of Lord Ganesh as its leading and essential features with a view to distinguish their bidis from those of others.

1.1 The appellants and their predecessors have effected open, continuous regular, large and ready sales of their bidis and have taken efforts to popularize the said bidis bearing the said trade mark labels. As a result, the said trade mark labels and the word GANESH and motif of Lord Ganesh have acquired wide and tremendous popularity amongst the members of the trade and the consumers have been exclusively denoting and/or connoting the Appellants' bidis.

1.2 The appellants have also secured registrations of their said trade marks and the said registrations have been duly renewed and are valid and subsisting. The Appellants have also filed the relevant documentary evidence proving the ownership and reputation acquired by them by use of the said trade marks/labels. Thus, the proprietor of the trade mark GANESH and motif of Lord Ganesh and are entitled to the exclusive use of the same.

On 1st October, 1987 the respondent No. 1 made an application to the Registrar of Trade Marks, Chennai being application No. 479278 in class 34 for registration of the trade mark label containing the word GANESH, motif of Lord Ganesh and Goddess LAXMI as its leading and essential features ("the impugned trade mark") in respect of bidis, claiming user of the impugned trade mark from 16th March 1984.

On 24th March 1995 the appellants filed their opposition to the 1st respondent's impugned trade mark application inter alia on the grounds that the appellants are the registered proprietors of the word GANESH and/or the motif of Lord Ganesh; that the said trade marks/labels have been continuously and extensively used by the appellants; that the said trade marks have become well-known; that the 1st respondent's impugned trade mark label which contained the word GANESH and the motif of Lord Ganesh as its leading and essential features are deceptively similar to the appellants' said trade marks; that the rival goods namely bidis are same; that use of the 1st respondent's mark would likely to cause confusion and deception and would result in infringement of the appellants' registered trade marks and passing off of the 1st Respondent's bidis as and for the appellants' bidis; that the 1st respondent was not and cannot be proprietor of the impugned trade mark and that registration of the 1st respondent's impugned mark was prohibited under the Trade Marks Act.

On 24th October 2000, the 1st Respondent filed its counter statement inter alia denying all the material allegations in the appellants' Notice of Opposition and inter-alia contended that the impugned trade mark of the 1st Respondent as a whole is dissimilar to the appellants' said trade marks/labels and that the 1st respondent is entitled to the registration of the impugned trade mark.

The appellants filed their evidence in support of the Opposition by way of affidavit A, affidavit of Sriramulu Naidu dated 24th May 2002 and affidavit of C.S. Rampriyadas dated 20th December 1996, the Chartered Accountants of the appellants, certifying the correctness of the sales figures, advertisement and publicity expenses.

The 1st Respondent did not file its evidence in support of the application although he claimed to have purportedly used the impugned trade mark since 1984.

The Registrar of Trade Marks upon hearing the matter, by his impugned order dismissed the appellants' opposition and allowed the 1st Respondent's impugned application No. 479278 in Class 34 inter alia on the following reasons.

a) that the 1st Respondents' composite trade mark label was different and dissimilar from the appellants' trade mark label and that the public at large were able to distinguish the bidis of the 1st respondent and the appellants;

b) that even an unwary customer of imperfect recollection including illiterates, labourers and servants would not mistake the 1st respondents bidis as and for the appellants' bidis;

c) that the colour scheme and getup of the rival trade marks label were different;

d) that in view of the above, the evidence in support of opposition led by the appellants no longer remained relevant;

e) that as main objections on deceptive similarity/confusion and reputation and goodwill of the appellants were rejected, the 1st respondent's impugned trade mark was considered to be distinguish the bidis of the 1st respondent;

f) that in view of above, the Appellants' objections under Sections 9(1), 9(2)(a) and 11(1) were not maintainable and stand rejected;

g) that the adoption of the mark by the 1st respondent was considered to be bonafide as a result the 1st respondent is considered as proprietor of the impugned trade mark;

h) that as the objections raised under the other Sections of the Trade Marks Act were rejected, there was no reason to use the Registrar's discretion under Section 18(4) in favour of the 1st respondent;

The appellants challenged the impugned order before us inter alia on the grounds as more particularly set out in the above appeal in paragraph 5(a) to 5(ad).

It is the admitted position that the 1st respondent had neither filed any evidence in support of impugned application in respect of his alleged claim of user since 1984 nor discharged the burden of proof of distinctiveness of impugned trade mark.

In the present case, the 1st respondent was required to deal with the evidence in support of opposition led by the appellants and to rebut the case set out by the appellants.

In the case of the Mohan Goldwater Breweries (Private) Limited v. Khoday Distillers Private Limited reported in 1977 IPLR Vol-1 page 83 at page 88 relying upon judgment given by the Bombay High Court reported in AIR 1952 Bombay 165 it is held as under:

"In Md. Omer v. S.M. Noorudin, AIR 1952 Bom. 165, while construing the expression 'evidence in support of the application' in rule 54 of the rules framed under the Trade Marks Act, 1940, Chagla C.J. speaking for the Bench expressed the view that under the Trade Marks Act and the rules framed thereunder, the Registrar has to decide any matter that comes before him on the basis of affidavits, that as per the procedure set out in the rules framed under the Trade Marks Act, after notice of opposition is given, affidavit evidence in support of the opposition is to be given by the opponent setting out the evidence on which he intends to rely, and that the expression used in rule 54, 'evidence in support of the application' will include evidence in rebuttal of the case of the opponent -and, therefore, it is incumbent upon the applicant dealing with the evidence in support of the opposition to rebut any case that might have been set up by the opponents under that rule. The above decision indicates that if affidavit evidence in support of the application is not filed by the applicant under Rule 54 it should be taken that he has no evidence in rebuttal to the case put forward by the opponent in his evidence in support of the opposition."

It is admitted position of the 1st respondent, the respondent in the impugned trade mark label has disclaimed the features viz. device of Lord GANESH and Goddess LAXMI and has admitted that these features are common to the trade.

It is factual circumstances that the disclaimers claimed by the applicants normally do not go into the market place and the public generally does not notice them. The matter which is disclaimed is not necessarily disregarded, when question of possible confusion or deception of the public, as distinct from the extent of a proprietors' exclusive rights, are to be determined, as held in case of Pidilite Industries Ltd. v. S.M. Associates and others reported in 2004 (28) PTC 193 Bombay at page 211 as under:

"As Lloyd-Jacob, J. Put It in Ford-Werkes Application, (1955) 72 TPC at 195 lines 30 to 38, a disclaimer does not affect the significance which a mark conveys to others when used in the curse of trade. Disclaimers do not go into the market place, and the public generally has no notice of them. In my opinion matter which is disclaimed is not necessarily disregarded when question of possible confusion or deception of the public, as distinct from the extent of a proprietors exclusive rights, are to be determined."

In view of the peculiar facts of case, the burden of proof heavily lies upon the 1st respondent and the 1st respondent has failed to discharge his onus. The 1st respondent ought to have discharged the burden of proving his case by leading cogent documentary proof over his right. As held in the case of National Sewing Thread Co. Ltd. v. James Chandwick & Bros. reported in AIR 1953 Supreme Court 357 at page 363 paragraph 22 : 1950-2000 (22) PTC (Suppl) (1) 475 (SC) as under:

"(22) The principles of law applicable to such cases are well-settled. The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant. It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of S. 8 and therefore it should be registered. Moreover in deciding whether a particular trade mark is likely to deceive or cause confusion that duly is not discharged by arriving at the result by merely comparing it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the mark. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing."

With regard to the question of deceptive similarity between the rival marks, the principles governing the question of deciding similarity between the rival marks is well established. As held in the case of Hiralal Prabhudas v. Ganesh Trading Co. and Ors. Reported in AIR 1984 Bom page 218 at 220 at paragraph 5 : 1984 (4) PTC 155 (Bom).

"5. What emerges from these authorities is (a) what is the main idea or salient features, (b) marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole, (c) overall similarity is the touchstone, (d) marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection, overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied (f) the purchaser must not be put in a state of wonderment, (g) marks must be compared as a whole, microscopic examination being impermissible, (h) the broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design and (i) overall similarity is sufficient. In addition, indisputably must also be taken into consideration the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances."

In view of the settled principle of law and finding in the above judgment, we agree that in mind while applying the tests of comparison between the rival labels involved in the facts of the present case, the Registrar was erred in holding that the rival marks are different. As a matter of facts the two rival marks are to be compared as whole while deciding the facts of similarity. In the present case, the respondent No. 1 has appropriate the essential feature of the registered trademark of the appellant is being used for the last seven decades.

The Court has developed upon in detail in the matter wherein the appellant was party to the proceeding viz. Deekonda Pedda Chinniah v. Mangalore Ganesh Beedi Works reported in 1991 IPLR Vol. 16 at page 53 at pages 57, 58 and 59 wherein the Hon'ble High Court of Andhra Pradesh has taken into consideration of the facts "that the purchasers of bidis are mostly illiterate and also because of the reason that the places at which the names are inscribed are almost in identical design. Further, the labels used for wrapping the bidis would not remain in their flat form since the labels get into almost a semi-circular form once it is used a top-seal to the pack. The packing has a cylindrical shape with a little more diameter at the top end as against the bottom end". The court also observed that whether or not the party intended to deceive or cause confusion in the minds of the consumers of the bidis, it is enough to find him guilty of the infringement if the impugned trade mark is deceptively similar to the registered mark. The court further observed that side by side comparison of the labels is not a sound test since the purchaser would seldom have both the marks side by side while making the purchase.

As far as regard to the ground of adoption of 1st Respondent's impugned trade mark, it is submitted that the Hon'ble Madras High Court in the case of T.G. Balaji Chettiar v. Hindustan Lever Ltd. Reported in AIR 1967 Madras 148 at page 156 in paragraphs 24, 25 and 26 has observed that since the Applicant has not complied with Rule 54 hence it is impossible to uphold the plea of honest or concurrent user. The Court also observed that document any evidence must be furnished when user is challenged. It is submitted that adoption of impugned trade mark by the 1st Respondent is dishonest.

The appellant has also relied upon the Order dated 21st September, 2012 passed by the IPAB Bench comprising of then Hon'ble Chairman Smt. Justice Prabha Sridevan (OA/22/2020/TM/CH) in the matter of Mangalore Sathish Beedi Works v. the Appellants herein, wherein this Hon'ble Board has observed, after going through various case laws referred to therein, the rival marks involved therein were deceptively similar. This Hon'ble Tribunal has also observed that the Appellants trade marks are in use since 1945 and that the appellants have been doing extensive business almost past 62 years under the said registered trade mark and that there was no explanation forth coming from applicant therein regarding the adoption of the label used by Mangalore Sathish Beedi Works. This Hon'ble Tribunal therefore refused to register the label applied for by Mangalore Sathish Beedi Works.

The decision passed by the earlier bench has a binding effect, thus Bench cannot ignore the preceding judgement unless and until special circumstances are shown by the parties. The said situation is not available here.

Applying the same principles, the rival mark of the respondent is deceptively similar to the appellant's mark. Further the respondent even did not seriously contest the matter. The Registrar is not supposed to form his own opinion on the facts which are not part of the proceedings and cannot play the role of private party by giving findings which are otherwise contrary to law.

Thus, the 1st respondent is not entitled to the registration of the impugned trade mark under the above application which is afforded the mandatory provisions of section 9, 11 and 18 of the Trade Mark Act, 1999.

The impugned order is set-aside by allowing the appeal.

No costs. Copy be sent to the Registrar of Trade Marks for taking necessary steps.