Mangalore Sathish Beedi Works, Bye-Pass Road, Bantwal-574211 vs M/s Mangalore Ganesh Beedi Works, Vinoba Road, Mysore - 570005, The Deputy Registrar Of Trade Marks, Trade Marks Registry, Chennai And The Registrar Of Trade Marks, Trade Marks Registry, Mumbai

Prabha Sridevan, J

1 . The appellant's application is No. 516301 in Class 34 on 06.09.1989 for registration of label mark ""MANGALORE SATHISH BEEDIES'

comprising of a devise o a boy Sathish and numeral 37 claiming user from 01.09.1997. It was advertised in the Trade Marks Journal dated 22.01.1995.

The first respondent Mangalore Ganesh Beedi Works filed the notice of opposition. After considering the submissions of the rival parties and the

evidence filed on both sides, the learned Assistant Registrar allowed the opposition and refused to grant registration by order dated 09.09.2009. The

appellant is aggrieved not only because the grounds of opposition have been accepted but also because the matter which was heard on 19.11.2003

was finally ordered only in 2009 and this lapse of six long years from the date of hearing till the date of pronouncement of orders has caused grave

miscarriage of justice. In the impugned order, the second respondent has sustained the objections raised u/S 9, 11 and 18(1) and refused to exercise

discretion u/S 18(4). The learned counsel for the appellant submitted that admittedly the goods are the same and beedi manufacture is a cottage

industry. The beedi labels could be of three kinds, the label wrapped around single beedi or the bundle of beedies or a carton containing bundles. The

appellant applied for registration on 06.09.1989 for outer carton. He submitted that it is relevant to note that normally the beedi customers would

purchase the beedies by referring to the number. In this case the respondent's number is ""501"" whereas the appellant's number is ""37"" and therefore

unlikely to cause any confusion. The application was for a composite label. The learned counsel submitted that Annexure 'A' which was enclosed

along with the notice of opposition as being the respondent's label was not registered. It is this label which is said to be deceptively similar to the

appellant's mark. When there is no evidence of registration of this label, the respondent cannot raise the grounds of deceptive similarity or confusion.

In the counter statement filed by the appellants to the notice of opposition, they have specifically contended that the appellant's mark has been

continuously and extensively in use from 1977, there has been no single instance of confusion or deception all these years. He referred to the Search

Report which was marked as Exhibit 'E' to show that the application for registration was bonafide since the search report did not disclose similar

registrations. According to him, the use from 1977 to 2009 would constitute special circumstances for exercise of discretion in favour of the appellant.

He submitted that Mangalore was commonly used by beedi manufacturers and that the respondent cannot claim exclusivity over Mangalore.

The learned counsel for the respondent submitted that the marks are identical and likely to cause confusion. The appellant has not discharged the

burden of proof that there will not be any confusion. It is not clear whether the adoption was from 1977 or 1989. The respondent has been in existence

from 1932 which has not been denied. According to the learned counsel it is one Sri Vatapuresh Home Industries which supplies beedis to the

respondent and one Sapalya is the contractor for the said beedi supplier. He is the brother-in-law of one of the partners of the appellant firm.

Therefore, the likelihood of copying cannot be ruled out. The learned counsel submitted that the trade dress, layout and design of both the marks are

similar. They are the essential features of the respondent's mark. The learned counsel submitted that there is no explanation why this name was

chosen and it was submitted that the respondent had a well established reputation and the trade mark has been the subject matter of several judicial

proceedings. A list of registrations was referred to by the appellant, all of which contain the word Mangalore. The learned counsel for the respondent

submitted that this cannot be looked into. According to the learned counsel even as early as in 1950, the Court had accepted the existence of the

respondent's mark. According to the learned counsel the adoption itself is tainted. He submitted that the documents filed in the pre-registration stage

were not marked as evidence in the opposition proceedings as per the Rules. According to the learned counsel even after request to produce, the

originals they were not produced. The learned counsel submitted that in the evidence in reply the respondent had called upon the applicants to strictly

prove the user with reference to original documentary evidence and this was not furnished. The labels when compared would show similarity.

Therefore the appeal should be dismissed.

3 . In response the leaned counsel for the appellant submitted that there is no evidence of the use of this particular label by the respondent. The

respondent is attempting to compare the mark with a label for which they have no proof of registration nor user. That there is use proved because of

the search report. Since Vatapuresh Home Industries is the beedi supplier, the respondent must have known the existence of the appellant and

therefore this proves acquiescence. The learned counsel submitted that for all the reasons the appeal must be allowed. They also referred to several

decisions.

This is the appellant's mark: (???)(I)

This is Annexure 'A' MANGALORE GANESH BEEDIES which is alleged to be n registered:

(???)(I)

The registration is for: (???)(I)

The following judgments were cited by the appellants:

(i) Appeal No. 286 of 1992 GTC Industries Ltd., vs. ITC Limited and another -where it was observed that it is common knowledge that smokers who

look for one brand will not accept another brand and that purchasers of cigarettes are brand conscious. Therefore, according to the appellant

somebody who is used to one brand will not use the other;

(ii) ORA/185/2009/TM/CH Thayar Dairy vs. Thayar Food Products where this Board had taken note of special circumstances which was that the

applicant themselves had purchased idli batter from the respondent to show that it was not clandestine use. It is for this idli batter for which this trade

mark registration was applied. This was on the special facts of the case;

(iii) 2008 (2) Bom CR132, ITC Limited vs. GTC Limited where the mark was MAGNUM for Cigarettes.

(iv) 1982 PTC 239 Prem Nath Mayer vs. The Registrar of Trade Marks and another- where referring to S. 17(2) which says that when a trade mark

consists of a part which is not subject of a separate application or is not separately registered, there is no exclusive right. According to the learned

counsel in this case since Annexure 'A' is not separately registered the respondent's objection must be rejected;

(v) 2000 PTC 561 DB of Delhi High Court Hindustan Pencils (P) Ltd., and another vs. M/s Universal Trading Company- where the Division Bench

of the Delhi Court while considering the registration for the mark NATRAJ by two persons were of the opinion that the respondent is an honest and

concurrent user of the trade mark NATRAJ. According to the learned counsel it should apply to the respondent herein also.

The learned counsel for the respondent referred to the following judgments:

(i) AIR 1984 Bom 218 M/s Hiralal Parbhudas, vs. M/s Ganesh Trading Company and others where the Bombay High Court laid down guidelines as to

how similarity of two marks must be decided and held that HIRALAL CHHAP BIDI and HIMATLAL SPECIAL BIDI were deceptively similar.

(ii) 1991 IPLR Vol 16 Deelconda Pedda Chinniah vs. Mangalore Ganesh Beedi Works - This relates to the respondent's label Exh.A-3 in this case

which is reproduced in the judgment and described as a pink rectangular label with an ornamental oval in the center with the device of Lord Ganesh in

the sitting posture. Exh.A-3 is identical to Exh A in this case. There the appellant's mark was DEKONDA CHINNIAH BEEDIES and the number

was 502. The appeal was dismissed and in the course of the judgment, the learned judge of the Andhra Pradesh High Court had accepted the

respondent's case of the registration of the mark as long back as 1942 and used through out India. The appeal against the respondent was dismissed;

(iii) Appeal from Order No. 76 of 2008 Deccan Bottling & Distilling Industries (P) Ltd., vs. Brihan Maharashtra Sugar Syndicate Limited - here the

two opposing marks were ""DESHI DARU PARU SANTRA"" and ""SAKHU SANTRA"". The marks were reproduced in the judgment and the

learned judge felt that there was likelihood of confusion;

(iv) 1994 IPLR 1 Schering Corporation & Ors. vs. Kilitch Co. (Pharma) Pvt. Ltd. - The marks were QUADRI-DERM and CORI-DERM and it was

held that confusion was proved;

(v) AIR 1953 SC 357 - National Sewing Thread Co., Ltds., vs. James Chadwick and Bros. Ltd. - here it was held that the burden of proving that the

trade mark for which registration is applied will not cause deception or confusion is upon the applicant. It is for him to satisfy the Registrar in this

regard;

(vi) AIR 1960 SC 142 - Corn Products Refining Co., vs. Shangrila Food Products Ltd. - In this case it was held that the onus of proof is upon the

applicant. In that case, there was no evidence as to the user of marks and the Court held that in the absence of any evidence no inference of user can

be drawn;

(vii) 1988-PTC-62 M/s Vrajlal Manilal and Co., M/s N.s. Bedi Co. and another - The plaintiff used the numeral 22. The defendant used the numeral

The goods were bidis. The Court held that the defendant had designed the label with the intention of imitating the plaintiff;

(viii) AIR 1992 Bom 195 Hindustan Level Limited, Bombay vs. Nirma Private Limited, Ahmedabad. - In this case the Court dealt with what was an

essential feature, and that it may consist of device or the get up, and unwary purchasers may attach considerable importance to the get up or the

device especially if the customers are semi-illiterate or illiterate;

(ix) 2003 Vol. 105 (3) Bom. L.R. 241 Tata Tea Limited vs. Suruchi Tea Company & Anr. - In this case the two marks were reproduced as a part of

the judgment to show how the concentric curves established in green colour with thatched edges form the design features of the appellant and the

respondent had no explanation why he had adopted a substantially similar get up. The appeal was allowed;

(x) AIR 1972 SC 1359 (V 59 C 243) Parle Products

(P) Ltd. vs. J.P.& Co., Mysore - In this case it was held that for considering deceptive similarity the broad and essential features of the two marks

must be seen and in that case the Hon'ble Supreme Court felt that any one who has a look at one of the marks may easily mistake it for being the

other.

(xi) AIR 1963 SC 449 Amritdhara Pharmacy vs. Satya Deo Gupta - In this case the Hon'ble Supreme Court held that the Act does not lay down any

criteria for determining what is likely to deceive or cause confusion and every case shall depend on its own particular facts and the onus is on the

applicant to satisfy the Registrar that there is no likelihood of deception or confusion.

(xii) AIR 1967 Mad. 148 T.G. Balaji Chettiar vs. Hindustan Lever Ltd. - In this case again it was held that the onus of proving that the mark was

entitled to go on the register was on the applicant and evidence of concurrent and honest user must be specific and clear.

(xiii) MANU/MH/0016/1991 National Chemicals and Colour Co. and others vs. Reckitt and Colman of India Limited and another - Here it was held

that the applicant knew that the trade mark of the opponent was already registered and he still proposed a similar one for registration. Therefore the

user cannot be considered as honest.

(xiv) Misc. Petition No. 1521 of 1976 Messrs. Munshibhai Bidi Works vs. Messrs. Uranmal Tiwadi & Sons - In this case, the question of non

production of assessment orders etc. was referred to and the Court held that mere production of bill books would not prove honest and concurrent

user.

(xv) AIR (38) 1951 Mys 29 Mangalore Ganesh Beedi Works, Mysore and ors., vs Free India Beedi Works, Bangalore City and ors. - This again

relates to the respondent's mark. In this case the defendants started selling beedi in the name of Bangalore Ganesh Beedies. The Court recorded that

the plaintiffs, namely Mangalore Ganesh Beedi Works (the respondents herein) have been carrying on business in the name and style of Mangalore

Ganesh Beedi Works from 1932.

We have heard the arguments of both the counsel and perused the documents filed by the respective parties. According to the appellant they have

been using the mark since 1977. According to the respondent they have been in business from 1932 and using this mark from 1945-46. There is

evidence to show the sale by Mangalore Ganesh Beedi Works from 1975, but those documents do not contain the trade mark. In 1996 alone the bill

and the letter itself carry the registered mark. In the evidence in support of the application, the appellant has stated that nobody can claim monopoly

for the word Mangalore and Satish is the son of one of the partners of the applicant Firm. Since the respondent's mark was not shown in the Search

Report as a conflicting mark, he had applied for registration honestly. An affidavit has been filed stating the year-wise advertisement from 1977. The

assessment orders have been filed from 1980 in the name of Mangalore Sathish Beedi Works.

The two judgments in which the respondent is a party actually tilt the balance in favour of the respondent. Though there is evidence that Mangalore

Sathish Beedi Works was in existence from 1977 on the basis of the assessment orders they alone cannot prove the use of the trade mark. Even

assuming without accepting the appellant's case that Mangalore Sathish Beedi has been using the label from 1977, the judgment in AIR 1951 Mys 29

(cited supra) shows that the respondent has been manufacturing beedies known as Mangalore Ganesh Beedi since 1932. The firm was registered in

Mysore in 1940 and by 1949 they had been doing extensive business to the extent of Rs. 25.0 lakhs per year i.e. almost 62 years ago they had

achieved this amount of sales. This judgment does not describe the label itself but we can see that the respondent had already acquired reputation

which encouraged imitation and copying by rivals to ride on their reputation. So we are unable to brush aside the claim of extensive reputation made

by the respondent.

In the next judgment reported in 1991 IPLR Vol 16 (cited supra) the judgment itself is actually dated 06.10.1988, and the appeal had been filed in

1982. In the plaint the respondent had contended that they had been using the trade mark labels containing the motif of Lord Ganesha and the

numerals 501 set in definite design. The label which is used as a wrapper of the bundle has been shown and reproduced in the judgment as Exh.A-3

and Exh. A-4 is the same as Annexure 'A' and Exh.3 is the label. In the plaint it was contended that the registration has been obtained in 1942 and

there the infringer commenced business in 1977. It is the same year in which this appellant claims that he commenced using the mark. The respondent

had come across a deceptively similar mark called DEKONDA CHINNIAH BEEDIES. It is eviden therefore Exh.A-3 therein is the same (as

Annexure 'A' in this case) was used by the respondent herein even before 1977. The background, design, colour are exactly reproduced by the

appellant as in Tata Tea vs. Suruchi Tea case (supra) where the learned judge of the Bombay High Court had commented on the get up and design.

Here too we find that the get up and design are the same and there is no explanation for the appellant's adoption of something so close to the

respondent's design. The respondent had already established their reputation even in 1977 and had been evidently defending their exclusive right to the

trade mark. In these circumstances, we do not think the order impugned here deserves to be interfered. We have heard the matter in detail and looked

at all the documents filed by the parties and we have arrived at the conclusion.

But we must express our disapproval of the six year gap between hearing of arguments and delivery of the order. In 1976 (3) SCC 574 R.C.

Sharma vs UOI, the Hon'ble Supreme Court said that the litigants confidence ""tends to be shaken if there is excessive delay between hearing of

arguments and delivery of judgment"". This was reiterated in Anil Rai vs State of Bihar 2001 7 SCC 318. It is rather unfortunate that this matter had to

wait for six years for pronouncement of orders. Parties will lose confidence and trust in the Registry if there is systemic delay. It must be avoided, and

orders must be pronounced as early as possible. As concluded earlier there is no merit in the appeal, it is dismissed. No order as to costs.