M/S. Sarkar Soap Factory vs M/S. Sree Ma Soap Factory

S. Usha, J

1 . The Original Rectification Application is for cancellation of the trade mark "Hogla" registered under No. 1286619 in class 3 under the provisions of the Trade Marks Act 1999 (hereinafter referred to as the Act). The applicant was a partnership firm represented by Tulsidas Sarkar and Ranendra Narayan Sarkar. By virtue of a deed of dissolution dated 28/04/1979, Ranendra Narayan Sarkar retired and Tulsidas Sarkar became the sole proprietor. The applicant has been manufacturing and marketing inter alia of washing soap and detergent of all kinds since the year 1974 under the trade.

The applicant was first to adopt the trade mark "Hogla" to distinguish their products from those of others and they had been using the said trade mark since 1974 continuously and extensively. The applicants are the registered proprietors of the trade mark "Hogla" under No. 305127 in class 3.

The applicant's trade mark "Hogla" has acquired immense goodwill and reputation by virtue of long, continuous use. The trade and public associate the trade mark "Hogla" with the applicants and with none else. The applicant has also obtained copyright registration of the artistic work comprising the trade mark "Hogla". By long use and wide range of publicity the trade mark "Hogla" has acquired the status of a well known trade mark. Their sales turn over increased from Rs. 6,10,881.62 in the year 1974-75 to Rs. 70,52,700.00 in the year 2004-05. The estimates for advertisement also increased from 1974-75 to 2004-05.

In or about August, 2000, it came to the applicant's notice that the respondents are manufacturing and selling detergent cakes and washing powder under the trade mark "Hopla" imitating the applicant's artistic work. The applicant filed an application under No. 51/2000 against the respondent before the Chief Judicial Magistrate under section 156(3) of code of Criminal Procedure. The Chief Judicial Magistrate was pleased to issue direction to the O.C., Mainaguri to register a case and to treat the same as FIR. In pursuance of the direction, the respondent's place of business was raided and huge quantities of spurious products were seized and the father Mr. Anil Kumar Das of both the partners of the respondents was arrested.

5 . The respondents filed a suit bearing No. 196/2000 before the Civil Judge, Junior Division, Jalpaiguri and also sought for interim order which was refused. The respondents thereafter preferred an appeal before the District Judge. Jalpaiguri. The District Judge was pleased to grant an order of injunction restraining the applicants from using the trade mark "Hogla" until further orders. After hearing the applicants the District Judge dismissed the Miscellaneous appeal. The respondent has applied for registration of the trade mark under No. 1282144 in class 3 which has been opposed by the applicant and the same is pending.

The applicant is the prior adopter and user of the trade mark "Hogla" in respect of washing soap and detergent of all kinds. The said trade mark has become distinctive of the applicants goods and the public associate the trade mark only with the applicants. The use of the impugned trade mark by the respondent is unlawful and the registration is in contravention of Sections 9(1)(a) & 2(a), 11(1)(a) & (b), 3(b) & 18(1) of the Act.

The grounds of rectification are-

(a) that the impugned trade mark was wrongly registered and is wrongly remaining on the register;

(b) that the registered proprietor is not a bonafide proprietor and user of the impugned trade mark;

(c) that the registration has been obtained by making false statements, wrong averments before the Registrar of Trade Marks;

(d) that the impugned trade mark is devoid of any distinctive character and not capable of being distinguished;

(e) that the registration affects the purity of the register;

(f) that the respondent's adoption of the trade mark is not honest and bonafide;

(g) that the registration is in contravention of the provisions of the Act;

(h) that the impugned mark is disentitled to the protection of law; and

(i) that fraud has been played on the Register in obtaining registration.

8 . The respondents filed their counter statement stating that they adopted the trade mark as early as 1989 in respect of detergent cakes and washing powder of all kinds. The trade mark "Hopla" was used continuously and extensively. The respondent's sales turn over runs to several lakhs of rupees.

9 . Due to the popularity the respondent's trade mark has been associated only with the respondents and none else. The trade marks are not similar. The applicants have not been using the trade mark since the year 1974. The applicants are not the prior adopter and user of the trade mark. The rest of the allegation and averments were denied.

The matter was listed for hearing on 23/06/2010 and adjourned to various dates i.e. on 23/06/2011, 06/12/2012, 13/06/2013, 16/12/2013 and 18/12/2013. In all the hearing dates, there was no representation on behalf of the respondents except on 23/06/2011. On 03/12/2012, 01/06/2013 and 11/12/2013, the respondents have filed a request on Form 5 for adjournment for the hearings on 06/12/2012, 13/06/2013 and 16/12/2013 respectively. On 16/12/2013 the counsel for applicant submitted that the pleadings were completed in the year 2010 and the respondents are taking adjournment on the same ground only to enjoy the registration. We therefore, directed the applicants to serve a notice for the hearing on 18/12/2013. On 16/12/2013, though notice was served on the respondents by the applicants and an acknowledgement was filed before us, no one appeared on 18/12/2013. We therefore set the respondents ex-parte and proceeded to hear the applicants. It is also pertinent to mention that the respondents have filed Form 5 for adjournment on the same ground i.e.-

(1) The matter is under preparation and yet to collect some important documents.

(2) The person (Attorney for the respondent) who is looking after the matter will be out of station on that date.

The counsel for the applicant vehemently opposed the adjournment and submitted that the reason for adjournment in all the occasions are identical and there is no valid reasons for adjournment and therefore the matter be heard as it is pending since 2006.

In fact, we had afforded several opportunities to the respondent but they were not before us. We would also gently say that the respondents have been filing form 5 for adjournment only on the above grounds in all the matters. We, therefore, thought it fit and necessary to hear the applicants as the matter was pending since the year 2006.

13 . The learned counsel for applicant submitted that they adopted the trade mark "Hogla" in respect of washing soap in cake and bar forms as early as 1974. The respondents had adopted a deceptively similar trade mark "Hopla" and applied for registration of the trade mark on 27/5/2004 claiming user since 01/4/1989. The respondents are therefore subsequent in adoption and use. The adoption of a deceptively similar mark by the respondent is only to trade upon the goodwill and reputation earned by the applicants.

The counsel further submitted that the registration was in contravention of the provisions of Sections 9 and 11 of the Act. The marks i.e. "Hogla" and "Hopla" are deceptively similar and the goods are identical. In such case the possibility of confusion is certain.

The applicants counsel relied on two judgments-

(1) AIR 1965 Bom. 35- [Consolidated Foods Corporation v. Brandon and Co. Private Ltd.]--it is not necessary that the mark should have been used for considerable length of time to claim proprietorship. A single actual use with intent to continue such use confers a right to such mark as a trade mark.

(2) AIR 1978 Delhi 250-[Century Traders v. Roshan Lal Duggar and Co. and others]-Priority in adoption and use of a trade mark is superior to priority in registration.

We have carefully considered the applicants arguments and have gone through the pleadings and documents and also the counter statement alongwith documents filed by the respondents.

The issues that arise for consideration in this case are that whether the marks are deceptively similar and whether there is any possibility of confusion and deception among the public.

18 . The rival marks are "Hogla" versus "Hopla". The applicant's use is since 1974 whereas the respondents have claimed user since 1989. Except for the letters g & p the marks are almost similar. When we are to consider the fact as to deceptive similarly the class of customers and the goods are to be taken into account. In the instant case, the goods are identical and both the applicants and the respondents are using the trade mark for washing soap in various form. The purchasers of the goods i.e. Soaps are both literate and illiterate. On a bare perusal of the marks, the respondent has just copied the impugned trade mark i.e. the font is exactly the same. When we are of the opinion that the trade marks are deceptively similar both visually and phonetically the possibility of confusion is certain especially when the goods are the same.

The applicants have produced the sales bills dated 25/12/1976 for the sale of their soap cakes. The respondents have produced sales bills of the year 1990 for their sale. The respondents have in fact claimed user only since 01/4/1989. Even if we consider the respondent's use since 1989 to be true and correct (though no document since 1989) the respondents are subsequent to that of the applicants.

The settled principle of law is that prior adopter's right is superior to that of the subsequent registered proprietor-Century Trader's Case (Supra). In view of the above proposition, the applicant's rights are to be protected as their use is prior to that of the respondents.

The respondents have not given any reason for the adoption of the trade mark "Hopla" in their counter statement nor have they appeared before us to justify their adoption. The adoption cannot be said to be honest in such a case. Having observed all the issues against the respondents we think it fit to cancel the registered trade mark. Accordingly, the application is allowed with a direction to the Registrar of Trade Marks to remove the trade mark "Hopla" registered under No. 1286619 in class 3. There shall be no order as to costs.