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Judgment
Prabha Sridevan, J
The appellant's application No. 609360 for registration of the label mark ""Hero"" in class 34, was rejected. Use of the word ""Hero"" was claimed
from 1942, but the application was ""proposed to be used"" It was advertised subject to association with the appellant's earlier registered trademark
under No. 7657 in class 34. The respondent lodged its notice of opposition, the Registrar was not inclined to exercise his discretion in favour of
registration and was of the opinion there was dishonesty in adoption. Aggrieved by this order dated 29.04.2005 the present appeal has been filed.
The Notice of Opposition raised the following grounds to resist the registration of the mark ""Hero"".
*The respondents are an international company of considerable repute and their business includes sale of cigarettes and other tobacco products
*They are the owners of the trademark ""Hero"" and other variations of it and they have been registered or/are pending registrations in countries the
world over. The first of them is the Indonesian mark No: 62770 dated December 10, 1957.
* Their mark in No: 589487 dated January 28, 1993 are earlier to the appellant's by nine months.
*Their claim of user is prior to the appellant's.
*The claim of user has no factual basis, and to reinforce an obviously weak case, the appellant has attempted to use it in connection with an earlier
mark, which was not in use, in any event the word ""Hero "" is not the predominant feature of that mark, nor is the word separately registered.
The respondents claimed dishonesty of adoption and opposed it on the grounds of Sections 9(1),11(a) and (e), and 18(1) of the Act.
3 . The appellants in their counter statement denied the allegations and raised the following grounds in defense.
*The appellants and their predecessors in title have been in the business inter alia of manufacturing and marketing tobacco and tobacco products. The
original mark has been used since 1942, and the present mark since September 1993.
* The 1942 registration is prior to the Indonesian registration of the year 1957.
*The appellants are also the registered owners of the mark Hero in No. 45607 in class 34.There are two other numbers Hero(L) Application No.
627910, 13.05.1994 in class 34, and HERO Application No. 646114, 21.11.1994 in class 34.
4 . They claimed that none of the grounds merited acceptance and the opposition must be disallowed and the mark must proceed to registration.
The evidence in support of the opposition was:
Exhibit A: list of countries where the mark HERO was registered in the name of the respondent.
Exhibit B: copies of the registration certificates granted in various countries to the respondent.
Exhibit C: the magazines and journals in India and abroad containing the Respondent's mark.
Exhibit D: Advertisements in India.
Exhibit E: Promotional materials
Exhibit F Annual world wide sales figures.
Exhibit G The excerpt of the details of registration No: 7657.
Exhibit H copies of advertisement.
Exhibit I Copy of the Indonesian registration.
5 . The Appellant did not file any evidence before the Registrar. However they have now filed the following documents. We will call them A1, B1 and
so on.
Exhibit A1 copies of invoices from the year 1994
Exhibit B1 Renewal certificates from the registry
Exhibit C1 Copy of the order passed by the District Court Ludhiana suit 2 of 9-8-94 on 25-3-02.
The learned counsel for the appellant submitted that the evidence was necessary. The counsel relied on the judgment of AIR 1972 ALL 515
Deputy Registrar, Co-operative Societies, U.P., Lucknow vs. Chaudhari Sarfaraz-un-Zaman and Anr.
The learned counsel for the respondent objected to the filing of the documents at the appellate stage. We will receive them as evidence since they
are necessary for deciding the use. Further Exhibit B1 is public records. Exhibit C1is the order passed by the Civil Court and Exhibit A1 are invoices.
Rule 11 of the Intellectual Property Appellate Board (Procedure) Rules, 2003 give the appellant to file a reply along with affidavit. The rule permits us
to entertain evidence at this stage. So we have taken this evidence on record.
8 . The Learned counsel for the appellant submitted that the adoption of the word ""Hero"" in connection with their goods dates back to 1942. It was not
as if the word ""Hero"" was adopted by the appellant only now. It is true the 1942 mark was the figure of a sailor with the words ""Player's navy Cut
with cap. But the cap contained the words ""Hero"" The word ""Hero "" has subsequently been registered as the mark of the appellant in other
applications. Exhibit C1 order is a piece of evidence to show the user from 1994. The learned counsel submitted that there is no evidence of user of
the mark ""Hero"" by the Respondent in India. The order of the Trade Marks Opposition Board dated 24.08.1999 was not correctly understood by the
Registrar. If properly understood it is actually in favour of the appellant. This order was affirmed by the Federal Court of Canada in 2001 FCT 250 by
judgment dated 27.03.2001 - N.V. Sumatra Tobacco Trading Company Vs. Imperial Tobacco Limited. He relied on (1996) 5 SCC 714 (N.R. Dongre
& others vs. Whirlpoo Corpn,): AIR 1991 Bom 76 (National Chemical and Color Co v Reckitt and Colman,) and AIR 1972 ALL 515 -Deput
Registrar, Co-operative Societies, U.P., Lucknow vs. Chaudhari Sarfaraz-un-Zaman and Another.
The learned Counsel for the respondent submitted that the 1942 mark can be of no use to the appellant. The word ""Hero"" is hardly prominent. It is
clear that the appellant intended to ride on the respondent's reputation. He relied on the exhibits to prove the case. He submitted that in all the invoices
produced by the appellant, the word Hero is written by hand while the other brands are printed. This is enough to show that the evidence can not be
relied on.
1 0 . The learned counsel for the respondent produced a document which is downloaded from the registry web site, to show that the mark 457607 was
removed in 1999. On his side the appellant produced a copy of the receipt issued on 27.6.2007 for renewal of mark No. 457607 and others.
1 1 . The respondent No. 2 has relied on the order passed in Canada to deny registration. Before the Trade Mark Opposition Board in Canada, the
applicant was N.V. Sumatra the respondent herein. Imperial Tobacco Limited was the opponent. The Registrar held that Sumatra had not proved that
it intended to use the mark in Canada. He however disagreed with the objection raised by the opponent that there was likelihood of confusion. Against
this order Sumatra filed the appeal before the Federal Court of Canada. The appeal was dismissed. To put it clearly, Sumatra's registration was
rejected. We do not understand how this dismissal would help Sumatra the respondent No. 1 herein. Exhibit J is the order of the Registrar at Canada..
The order in Exhibit J is of no use to the respondent N.V. Sumatra for this case. What has weighed with the respondent No. 2 herein perhaps is the
fact that the Registrar at Canada held that there was no likelihood of confusion, and the observation that the average consumer would not be aware
that the sailor's cap contained the word ""Hero"". So the respondent No. 2 in this case was of the opinion that since it has been held by the Canadian
Court that the word 'Hero"" occupies a most insignificant position in the 1942 label, the association with the 1942 mark cannot help the appellant.
Here the issue we have to decide is who has the priority of user and whether there is dishonesty of adoption.
In the year 1942 mark the word ""Hero"" is found. The word ""Hero"" has no direct connection with a sailor, so this term has been deliberately used
by the appellant, however small the words may be in size. This word has been used in connection with the goods in question by the predecessor in
interest of the appellant as far as the mark is concerned. That is why the appellant had filed the amendment to include mark 7697. But today i.e. on
the date of the judgment of the Canadian Court, Imperial Tobacco Limited and ITC are different corporate entities and different juristic persons. The
Registrar erred in thinking that the appellant was a party to the judgment of the Canadian Court.
The appellant had specifically mentioned that they had in their favour Hero marks registered in class 16 and in class 34. This finds a place in the
impugned order in the beginning. But while discussing the merits, the Registrar has lost sight of this. This earlier registered mark is Trade Mark No.
457607 dated 1986. The appellant had specifically pleaded this as a special circumstance for invoking Section 12(3). Mark 457607 ""Hero"" has been
registered and has been renewed. It is there from the year 1986. Though in the evidence in support of the opposition, the respondent has denied the
relevance of the application No. 627910 and 646114, they have nothing to say with regard to the mark Hero No. 457607 registered in 1986. So this
mark cannot be ignored while assessing the honesty of adoption
With regard to the present mark, the appellants have produced bills showing sale of goods with the mark ""Hero"" from 1995. We are not referring
to the bills where the word Hero is written in hand. We are ignoring them. The learned counsel for the appellant gave an explanation. But any
explanation regarding documentary evidence must found in the deposition or proof affidavit as the case may be. We cannot accept oral explanation. A
suit was filed by Hero Cycles in 1994, O.S. No. 2 dated 9. 08.1994 alleging infringement against appellant. It is alleged that the appellant had launched
low price cigarette under the mark ""Hero"" for sale in North India. The appellant pleaded that they had introduced the trade mark from September
1993. The District Court, Ludhiana by the order dated 18.03.2002 refused to grant injunction. This Canotorates the plan of user. So by the bills and the
pleadings in the suit, the user of the mark is proved.
Now we have to see if the adoption is honest. The 1942 mark Player's Navy Cut shows a sailor with a cap containing the word Hero. Though the
word Hero is not specifically mentioned as a part of the mark, the mark shows that the proprietor had thought of a sailor wearing a cap containing the
mark Hero as a pictorial mark.
16 . The appellant had produced several invoices to prove user. We have already referred to the invoices where the word ""Hero"" is added in script.
There are from pages 43 to 47 of the paper book. But there are other invoices produced by the appellant which are of the year 1994 when the word
Hero is shown are from pages 49 to 59. The mark is proposed to be used and there is evidence of user from 1994. On the other hand the respondent
had no evidence to show user in India. They rely on their reputation. We will deal with it later. As far as user is concerned the Registrar failed to see
that the appellant had proved sales of the goods concerned at least from 1994 while the respondent had not proved user in India.
17 . Several foreign trade journals have been produced as evidence to show the respondent's formidable reputation. We are not shown if these
journals are known or read in India. The case of the respondent is that their mark is of the year 1957 and their reputation is world wide. But we have
before us the case where the respondent's registration was rejected in Canada, because there was no proof of user. We will assume the case of
worldwide reputation to be true but even if it were true we will still exercise our discretion in favour of the appellant. This is because right through the
appellant has shown that it had intended to associate the word ""Hero"" prominently or not prominently with its Cigarettes. The appellant had used the
word Hero in 1942 although only on the sailor's cap. It was not the predominant feature of the mark, but it was undoubtedly a feature of the mark.
The appellant's inclusion of the word ""Hero"" on the cap was not by chance but by intent. This is further proved by the registration of the mark ""Hero
in 1986. So the intent to use ""Hero"" in connection with the goods is shown by the 1942 mark and the 1986 mark. When that is so, the respondent must
prove by very strong evidence the dishonesty in adoption. Evidence of such strength is not produced by the respondent. We cannot at all reject the
case of the appellant that ""Hero"" was always intended to be used in connection with their goods as evidenced by the earlier marks. The Registrar
erred in holding that the adoption was dishonest.
With regard to the application the appellant has pleaded the earlier marks as special circumstances. Here there is identity of goods and identity of
marks. That is why, the appellant pleaded special circumstances, because of the identity of goods, and word used.
19 . The Registrar must exercise his discretion correctly. The learned counsel had relied on AIR 1991 Bom 76 - M/s. National Chemicals and Color
Co. and Others Vs. Reckitt and Colman of India Limited and Another. ""In this present appeal however, the only question which arises is whether the
discretion, assuming that it has been exercised by the Registrar, is wrongly exercises; and whether the learned Judge was right in interfering with that
discretion. If we come to the conclusion that the learned single Judge was in errors in interfering with the discretion exercised by the Registrar, it
would be competent for us to set the matter right. We however, agree with learned single Judge that the Registrar was clearly wrong in coming to the
conclusion that he did reach."" In the present case the Registrar had failed to even advert his attention to the special circumstances pleaded. Under
Section 12(3), the Registrar shall consider if there is honest concurrent user or any other special circumstances untainted by dishonesty. The appellant
had shown that the word Hero had always been used by them and the 1986 mark is still alive. The appellant had referred to two other marks that they
owned in which the word used was ""Hero"". The respondent had not proved that their goods were sold in India. So it is a case of alleged cross border
reputation of the respondent on the one hand for which there is some slight evidence and on the other hand there is substantial evidence of the
appellant's intention to use the word ""Hero"" in connection with their goods almost continuously. These are special circumstance in this case warranting
exercise of discretion. We therefore accept the case of special circumstances pleaded by the appellant and invoke Section 12(3) to permit registration
of the mark.
The impugned order is set-aside and the appeal is allowed. No order as to costs. © Manupatra Information Solutions Pvt. Ltd.