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Judgment
S. Usha, J
The above appeal arises out of the order dated 04/10/2006 passed by the Deputy Registrar of Trade Marks allowing the opposition No. CAL-
162087 and refusing the registration No. 1027503 in class 9. The appellants herein filed an application for registration of the trade mark KADIO under
No. 1027503 in class 9 on 15/07/2001, claiming user since 01/04/2000. The said application was advertised in the Trade Marks Journal No. 1306
Supplementary (2) dated 04/11/2003 at page 362. The respondents herein filed an opposition objecting to the registration of the trade mark. The main
objection was that they are the registered proprietors of the trade mark Casio in respect of various goods in classes 9 and 14. The word Casio is the
essential feature of their corporate name.
The rival marks Casio and Kadio are deceptively similar and there was possibility of confusion and deception and hence prohibited under section 11
and 12 of the Trade Marks Act, 1999. The respondents' trade mark had acquired international repute and appellants' adoption was only to trade upon
the goodwill earned by the respondents. The appellants therefore cannot claim any proprietary right under section 18(1) of the Act.
The appellants filed their counter statement stating that they are using the trade mark since 2000 and that there has been no instance of confusion
and deception.
On completion of the pleadings, the Deputy Registrar heard the matter and passed the impugned order.
The Deputy Registrar held that the two marks are deceptively similar. While deciding the issue of similarity both the marks are to be compared by
look and sound considering the observation made by Lord Parker in the Pianists Case. The plea of bonafide adoption is not correct. There is no
sufficient proof of use for the mark to have acquired distinctiveness. Considering the overall facts and circumstances of the case, the adoption cannot
be said to be bonafide. The impugned trade mark is prohibited registration in view of the fact that there is already existing trade mark Casio a
deceptively similar trade mark on the register. Therefore, the registration is refused and the opposition is allowed.
Being aggrieved by the said order, the appellants are before us on appeal.
The learned Deputy Registrar erroneously held that the rival marks Casio and Kadio are deceptively similar. The marks are visually, phonetically
and structurally dissimilar. It was observed that the appellants are not bonafide adopters as claimed in their counter statement filed before the
Registrar of the Trade Marks.
There is no discrepancy in the claim of use. In India, the appellants have used since 2000 and worldwide use is since 1999. The documents filed by
the appellants were not considered by the learned Registrar. The registrar has held that the adoption was doubtful without any reasoning.
Both the marks co-exist in many other countries was not relevant to the present proceedings; was wrongly held by the Registrar. The conduct of
the respondent and its acquiescence in the use of the mark and its registration outside India is a relevant factor to the present proceeding.
There has been no instance of confusion and deception. The impugned order therefore, be set aside and the application to proceed to registration.
The respondents filed their counter statement to the grounds of appeal. The respondents are an established international company manufacturing
and selling calculators, cameras etc, since the year 1952. They were officially launched in India on 01/02/1996 as a joint venture partner. Casio India
Company is one wholly owned subsidiary and is being managed by a dynamic staff strength of 60 people under the leadership of Japanese Managing
Director. They sell and market calculators, desktop calculators, scientific calculators, wrist watches, digital clocks etc under the trade mark Casio.
The respondents are the first adopters of the trade mark Casio. They are the registered proprietors of the trade mark Casio in classes 9 and 14.
By virtue of extensive and large use, the trade mark Casio is associated with the respondents and none else.
We heard Shri E.R. Bakshi, learned counsel for the appellants and Mr. Ravi Chada, learned counsel for the respondents.
The learned counsel for the appellants submitted that they applied for registration in the year 2001 claiming user since 2000. The mark by
extensive sale had acquired distinctiveness. The rival marks are Kadio Vs. Casio. The marks, goods and class of customers are different. There is no
instance of confusion or deception. The issue of special circumstances is in favour of the appellants as both the appellants and the respondents were
using the trade mark with the knowledge of the other. The appellants are using the mark for several years.
The respondents relied on 1955 RPC 151 and submitted that the words Bostik and Dustic are not similar. Dustic was derived from the first 2
letters of Dundas and the termination Stic commonly used in the names of adhesives. Dustic is an invented word and has no reference to the
character and quality of the goods. The mark of the appellants therefore, herein is not an invented word and also has not direct reference to the goods.
In reply, the learned counsel for the respondents submitted that they adopted and used the trade mark since the year 1946. The respondents relied
on the Order No. 148 of 2009 of IPAB in TA/202/2003/TM/DEL [C.M. (M) No. 244 of 2003]- Mr. Baldev Singh, Trading as Madaan Plastic
Industry New Delhi Vs. (1) Registrar of Trade Marks, Trade Marks Registry, New Delhi and (2) M/s. Casio Keisaniki Kabushiki Kaisha, Japan-
Here, it is submitted that their trade mark Casio was recognised as a trade mark as well it formed part of their corporate name which was neither a
surname or a trading style. The appellants were not clear in their use. The class of customers were both literate and illiterate and therefore there is
every possibility of confusion, there was no reason for adoption of the trade mark by the respondents.
We have considered the arguments of both the counsel and have gone through the documents and pleadings.
The rival marks are Casio Vs. Kadio for similar goods. In an opposition proceedings, the onus is always on the applicant to satisfy the issue of
confusion and deception. The appellant herein, the applicant for registration will have to prove that the registration if granted, will not cause any
confusion or deception. Only there after the burden shifts on to the respondent. The appellant has not satisfied the same as to confusion and deception
and the issue under Section 11 is answered in favour of the respondents.
In our considered opinion, the rival marks are deceptively similar and there is possibility of confusion being caused. The goods herein are
purchased by both class of customers. In the words Kadio and Casio, the pronunciation is Ka and the letter d and C if slurred would definitely be
mistaken for the other. The possibility of confusion and deception is therefore certain.
The next issue would be as to the adoption of the impugned trade mark Kadio. The respondents are no doubt using the trade mark Casio since
1964 whereas the appellants have claimed user only since 2000. That apart, the appellants have no reason for the adoption of the trade mark. When
the appellants have given no reason for the adoption of the trade mark ""Kadio"" then it cannot be considered to be an honest adoption. When the
adoption is said to be not honest then whatever be the amount of user, it will not help the appellants.
The rival marks when held to be deceptively similar, the mark which is in use earlier is placed in a better position. The subsequent adoption and
use does not acquire a status to be registered. For the reasons stated above, we do not think it necessary to interfere in the impugned order. The
appeal is therefore dismissed with costs of Rs. 5,000/-.