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Judgment
V. Ravi, Technical Member
The appellant herein are aggrieved by the refusal of the opposition filed by them against the registration of the trade mark application No. 1255896
of the respondent by the Deputy Registrar of Trade Marks, Kolkata and have filed the instant appeal to set aside the order and decision dated 3rd
July, 2007 permitting the registration of the respondent's trade mark ""abt SONY"" in class 25. The particulars and the grounds of the appeal are briefly
as follows: The appellant is a world famous Japanese Company with subsidiaries and affiliates all over the globe.
They are the registered proprietor of the trade mark ""SONY"" in India in classes 3, 9, 14, 21 and 25. The appellants mark ""SONY"" is an
internationally well known trade mark used and registered in over 200 countries. According to a survey conducted by Harris Interactive in 2006, Sony
was registered as the ""Best Brand"" in USA for the 7th consecutive year with an estimated brand value of over US $ 15 billion. In fact, by common
consensus it is one of the famous mark in the world.
The appellant have set up a wholly owned Indian subsidiary ""SONY INDIA PVT. LTD. It is using the trade mark Sony on all its products. Further,
through its subsidiary Sony Music Entertainment Incorporated and Sony Picture Entertainment it has built up a worldwide music and image based
software market. In fact, it is the world leader in commercial, industrial electronic and entertainment business aggressively expanding its business
outside Japan.
The respondent is admittedly using the trade mark ""abt SONY"" in relation to ""undergarments for ladies namely, brassieres, panties, lingerie's, bikinis,
T-shirts, socks and stockings and undergarments for men namely, underwear, banian, T-shirts, socks and stockings
The mark ""abt SONY"" is visually, phonetically structurally and deceptively identical to the appellant's well known trade mark ""SONY' and as it used
the most prominent word in the respondent's label. The use of a deceptively similar mark ""abt SONY"" by the respondent is an infringement of the
appellant's registered trade mark SONY (No. 397934 in class 25).
The impugned mark was published in the Trade Marks Journal and opposed by the appellant herein. After the final hearing on 26th March, 2007 the
Deputy Registrar passed an order on 3rd July, 2007, the operative portion of which reads as follows;
Application No. 1255896 for the mark ""abt SONY"" to proceed to registration with respect to the goods applied for to read as ""under garments for
ladies namely brassieres, panties, lingeries, bikinis for sale in the States of West Bengal, and Assam only"".
The impugned order of the Deputy Registrar is totally misconceived, untenable and bad in law for the following reasons:
i) The Deputy Registrar had erred in ignoring relevant facts and did not apply the correct judicial principle to the facts of this case. There can be no
doubt that the competing marks are exceedingly similar and the likelihood of confusion by an average consumer with imperfect recollection is
extremely high.
ii) The Registrar has completely ignored the provisions of Sections 9(1)(a), 9(2)(a), 11(2), 11(6), 11(8) and 11(10)(i) and (ii) of the Trade Marks Act
while passing the impugned order.
iii) There is no plausible explanation why the respondent adopted the trade mark Sony? The appellants are doing business in India since 1960 and the
trade mark ""Sony"" has been widely advertised in various magazines, newspapers having international circulations. In fact, the Hon'ble Bombay High
Court has held in the case of Kamal Trading Company v. Gillette UK Ltd., reported in 1988 PTC 1 in the following words ""Take for example, the
televisions and VCRS are not imported in India and sold in open market because of trade restrictions, but is it possible even to suggest that the word
'National' or 'Sony' have not acquired reputation in this country."" Thus, the appellant's trade mark qualifies as a well known trade mark.
iv) The appellant submits that the use of the trade mark ""abt SONY"" by the respondent is infringement of the registered trade mark SONY under
section 29(4) of the Trade Marks Act, 1999.
v) The appellant further submits that ""the trade marks law is not intended to protect a person who deliberately sets out to take the benefit of somebody
else's reputation with reference to goods, especially so when the reputation extends worldwide."" (Mercedes Benz case in Daimler Benz
Aktiegesellcaft and another v. Hybo Hindustan 1994 PTC 287).
vi) The appellant further states the Deputy Registrar had erred in not applying the doctrine of dilution of well known trade mark approved by the
Hon'ble Supreme Court in the above mentioned Benz case. The appellant's case herein is on the very same footing and the respondent cannot dilute
the appellants mark SONY with respect to products like undergarments.
vii) The appellant submits that the respondent originally applied for the impugned mark ""as proposed to be used"" on 17th December, 2003 and it was
published as such in the Trade Marks Journal No. 1328 (5) dated 14th February, 2005. Subsequently, the respondent filed a request in Form TM -16 to
amend the user date to read as 1st January, 1998. On the other hand, the appellants have been using the Trade Marks "" SONY"" in India since 1960.
viii) The Deputy Registrar has also failed to appreciate the observations made by the Hon'ble Delhi High Court in the case of N.R. Dongre v.
Whirlpool Corporation 1996 (16) PTC 476) wherein it was observed:
There is no plausible and convincing explanation by the appellants as to how they came to adopt the mark 'WHIRLPOOL'. In absence of any
satisfactory explanation by the appellants, the adoption of the mark by them cannot prima facie be regarded as honest
ix) In view of the foregoing reasons, the appellant prays that the order of the Deputy Registrar be overturned and the impugned mark refused
registration.
The case of the respondent is as follows:--
i) The respondents are using the composite mark abt SONY extensively in the States of West Bengal and Assam since 1998. The use of expression
abt"" is derived from the trading style A.B. Textiles. It sufficiently differentiates the respondents mark from that of the appellant. The respondents
have been using the impugned mark for the last 9 years without any proof of confusion.
ii) Although the appellants are registered in class 25 also, they have never used the trade marks Sony for the goods falling in that class. Further the
trade marks ""SONY"" is well known only in the electronic trade.
iii) At the outset the respondents submit that the notice of opposition filed by the appellant was itself beyond statutory period prescribed under the Act
and on this ground alone the appeal is liable to be dismissed and the order of the Joint Registrar who dealt with the matter was bad in law.
iv) The Hon'ble Deputy Registrar had applied the correct judicial principle in the evaluation of the relevant facts and evidence before him in permitting
the registration of the impugned mark with territorial restriction.
v) The respondent denies that the appellants mark is a well known mark. The citation of the observation of the Hon'ble Supreme Court relied on by
the appellants on the test of similarity has no scope in the present proceedings as the respondents are dealing in goods for which the appellants has no
reputation.
vi) The word 'SONY' is a common feminine personal name and there are several other manufacturers who have registered it as a trade mark in India
as per details given below:
(a) AIR 1985 Bom 327 : Sony v. Sony
The Word 'SONY"" was allowed registration for the goods Nail Polish in spite of registration of the word SONY for electronic goods.
(b) 1989 IPLR 92: Sony v. Sony
The word SONY was allowed registration for the goods frames for spectacles and goggles against use of the same word for radios and electronic
goods.
vii) Other similar examples where marks were allowed to co-exist.
(a) AIR 1996 SC 2275 : Chairminar case
The words CHAIRMINAR was allowed registration for kimam and Zarda in spite of registration of the word CHAIRMINAR for cigarettes.
(b) 1999 PTC 23 : HERO case.
The trade mark HERO was allowed in respect of 'sewing machines and parts thereof in spite of the objection raised by the opponents who are
registered proprietors of the famous brand HERO in respect of cycles.
viii) The respondents state that the findings and decision of the Deputy Registrar are perfectly in order and the subject appeal should be dismissed.
ix) The matter was listed for hearing on 14th June, 2013. We have heard the detailed arguments, gone through the pleadings, records and documents.
BRIEF SUMMARY OF APPELLANT'S ARGUMENTS.
Their case is the trade mark SONY is a well known mark in use for more than 60 years. It is registered in 200 jurisdictions. Their earliest registration
in India dates back to 20th June, 1960 under No. 196589 in Class 9. There are many judgments of various High Courts in India which has recognized
SONY as a well known mark. The respondents adopted the impugned mark in 1998 diluting the fame and reputation of the appellants trade mark
SONY. In India the word SONY is not used as a personal name as such. However, in Punjab and in North India the word SONI is some times used
as a feminine name such as SOHNI MEHWAL which is a folklore. The fact that the respondents are purposely using SONY as a part of its trade
mark is meant to exploit the fame and reputation of the appellant's mark and dilute and deface the reputation of a world famous mark and the
impugned mark should be refused registration.
BRIEF SUMMARY OF RESPONDENT'S ARGUMENTS.
The counsel submitted that SONY is a common female name in every village in North India. There is no infirmity in the findings of the Registrar's
order. The competing goods are totally different. The types of customers are totally different. There is no stay by any Court in India against the order
of the Deputy Registrar. The respondents submit that as the instant appeal is not accompanied with a stay petition the Registrar's order should not be
lightly disturbed and no case has been made out to set aside the order of the Deputy Registrar.
The learned counsel for the appellant relied on the following judgments:--
i.) In Bombay High Court in M.P. No. 27 of 1996 dated 17.01.2002 in Ciba Geigy Ltd., v. Biochem Pharmaceutical Industries Ltd. & Another -
Plaintiff TM OTRIVIN - Respondent applied for OTRIM - Plaintiff opposed it but it was dismissed by Registrar - Plaintiff established use of the mark
prior to respondent - petitioner succeeds on appeal.
ii.) 1988 PTC 8 1 Kamal Trading Co., Bombay & Another v. Gillette U.K. Limited, Middle Sex, England - The mark 7 O'clock having acquired
worldwide reputation there is every likelihood of deception as the user of the mark 7 O' clock by defendant would clearly give the impression that the
tooth brush came from the house of Gillette.
iii.) 2006 (33) PTC 336 (Bombay) Sony Kabushiki Kaisha v. Aashish Electronic & Others - Brand SONY top brand in India - In these circumstances
use of the trade mark SONNY for electric goods like a/c adapter definitely would create confusion.
iv.) 1994 PTC 287 (Delhi) Daimler Benz Aktiegeselschaft & Another v. Hybo Hindustan - Plaintiffs mark 'BENZ with three pointed star - associated
with world famous Mercedes BENZ - Defendant using word 'BENZ and three pointed human being in a ring for undergarments - cannot be
considered 'Honest Concurrent User'.
v.) 2008 (36) PTC 223 (Del) (DB) Larsen & Toubro Ltd. v. Lachmi Narain Trades & Others. - Application for registering TM 'LARSEN &
TOURBO' and L & T pending. Defendant used name 'LNT and 'ELENT for electrical goods like miniature circuit breaker. Restraining the defendant
it was held, the test - field of activity no more a valid question - question is real likelihood of confusion.
vi.) 1996 (5) SCC 714 N.R. Dongre & Others v. Whirlpool Corporation & Another - ""Civil Procedure Code, 1908 - Order 39, Rules 1, 2, 4 -
Temporary interim injunction in passing off action - Grant of, by High Court against a registered owner of trade mark - Supreme Court's interference
when not called for - Registration of trade mark 'Whirlpool' on proposed user basis granted in favour of appellants - Suit in the nature of passing off
action brought by respondents to restrain appellants from manufacturing, selling, advertising or in any way using the trade mark 'Whirlpool' in their
produce (washing machine) deceptively or confusingly - High court inter alia found that mark/name 'Whirlpool' long associated with respondents who
acquired trans-India reputation in respect of the same, that there was no reliable evidence of appellants having marketed their product by that name
for a considerable length of time, that irreparable injury would be caused to respondents' reputation and goodwill as the product of appellants bearing
that mark was of lower standard and quality, whereas no injury would be caused to appellants by grant of injunction as their product could be sold by
just removing/replacing the label 'Whirlpool' - Accordingly injunction granted by High Court -Held, conclusion reached by High Court reasonable and
based on relevant material and hence Supreme Court's interference by reassessment of material not called for at this stage- Constitution of India,
Article 136 - Trade and Merchandise Marks Act, 1958 Sections 46, 56 - Equity - Injunction, grant of is based on equitable principles.
B. Torts - Passing off action - Action for deceit - Unfair trade competition - Trade mark, already used by a company, got registered by another
company through deception to obtain economic benefit of reputation by injuring goodwill and business of the other company - Passing off action by the
affected party even against the registered owner of trade mark maintainable and the party entitled to protection.
vii.) AIR 1963 SC 449 - Amritdhara Pharmacy v. Satya Deo -Trade Marks Act (1940), Sections 14, 18(a), 10(1), 10(2) - Trade name likely to
deceive and cause confusion"" - Tests indicated - Overall similarity has to be considered - Trade names ""Lakshmanandhara"" & "" Amritdhara"" in
respect of medical preparation for alleviation of various ailments - Word ""Lakshmanandhara"" held was likely to deceive and confuse persons of the
class who generally purchased such preparation -""Lakshmandhara"" widely advertised and sold for a long time in particular State -Proprietors of
Amritdhara"" standing by and allowing ""Lakshmanandhara"" to grow in business - Held that there was ""acquiescence"" to bring case within expression
Special circumstances"" in Section 10 (2) - Registration of ""Lakshmanandhara"" in that particular state granted - AIR 1958 All 823, reversed.
viii) AIR 1969 Bom 24 - Sunder Parmanand Lalwani & Others v. Caltex (India) Ltd. - Onus of proving mark is not calculated to deceive or cause
confusion is on the applicant.
ix.) AIR 1972 Cal 261 Prem Nath Mayer v. Registrar of Trade Marks & Another - If the new mark proposed to be registered would create confusion
registration to be refused - onus of proof lies on applicant.
x.) 1998 PTC (18) (DB) Madras High Court Caterpillar Inc. v. Jorange -Plaintiff having transborder reputation succeeded in a restraint action.
xi.) 2003 (26) PTC 160 (Del) Cartier International B.V. v. Choosy Corner & Others - Plaintiff registered owner of CARTIER trade mark for a range
of consumer goods for over 150 years. Defendant using same trade mark was restrained. Both civil and criminal action initiated.
xii.) 2003 (26) PTC-1 (Del) - Honda Motors Co. Ltd. v. Charanjit Singh & Others - Held, plaintiff mark HONDA had acquired global goodwill with
reputation for quality products especially automobiles and power equipments. Defendant started using HONDA for pressure cookers. Restrained.
xiii.) 2008 (38) PTC 109 (Del) Hamdard National Foundation v. Abdul Jalil - Plaintiff using HAMDARD DAWAKHANA since 1906 - defendant
using HAMDARD in relation to processing and marketing, rice - Standard to be adopted in such cases is likelihood of confusion and not actual
deception and actual damage - Defendant injuncted.
xiv.) 2009 (41) PTC 184 (Cal) (FB) Sony Kabushiki Kaisha v. Mahaluxmi Textile Mills - To hold that the reputation of a trade mark shall remain
restricted to those goods and services only in which the proprietor is directly engaged would be ignoring ground reality of today's business would -
Held, action maintainable even in respect of different class of goods.
xv.) 2009 (41) PTC 284 (Del) Rolex SA v. Alex Jewellery Pvt. Ltd. & Others - Plaintiff trade mark ROLEX - defendant carrying on business as
ROLEX JEWELLERY HOUSE - Plaintiff used Rolex since 1908 - ROLEX well known mark - transborder reputation - injunction application
allowed.
xvi.) AIR 1996 BOM 149 - Kirloskar Diesel Recon P. Ltd. v. Kirloskar Proprietary Ltd. & Ors. - It is not necessary for respondents to prove causing
of actual confusion amongst customers or public at large by appellants. What the respondents were required to establish, which they have was the
likelihood of confusion.
xvii.) AIR 1985 All. 242 Bata India Ltd., v. Pyare Lal & Co. - The use of word ""Bata"" in 'Bata foam' could cause deception in the mind of ordinary
customer - Injury to ""Bata"" company also could be caused - Prima facie case made out.
xviii.) In IPAB Order No. 148 of 2009 - Baldev Singh, Trading as Madan Plastic Industry VS. Registrar of Trade Marks, New Delhi & Another
(04.09.2009) - Appellant adopted trade mark CASIO for foot wears. Respondent filed opposition - Respondent owner of CASIO trade mark -
Japanese company - Held, on appeal it is very clear that irrespective of defendant goods use of well known mark would dilute and defuse goodwill and
reputation xix.) (2005) IPAB 13 Sony Corporation, Tokyo v. Jasbir Singh Kohli And Another (10.03.2005) Appellant's mark SONY - Respondent
Mark SONICO - Registrar allowed registration of respondent mark refusing SONY's objection - Board overturned and struck down the Registrar's
order.
The learned counsel for the respondent's relied on the following judgments:--
a.) 2001 (5) SCC 73 - Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. - Suit filed in District Court, Vadodara by appellant to restrain
respondent from using trade mark. FALLIGO being medicinal good allegedly similar to appellants brand FALLCITAB - Apex Court elaborated on
principle of law of deceptive similarity -overturned Gujarat High Court's order stating exclusive right under Section 28 subject to Section 34. Benefit of
Section 34 available to respondent to prevent proprietor of a registered trade mark to interfere with or restrain the continued usage of an identical
mark by the respondents/defendants.
b.) The Division Bench decision of the Madras High Court reported in MIPR (1) SNC 03 M/s. Nakoda Dairy (P) Ltd., v. M/s. Kewal Chand Vinod
Kumar & Others, held as follows:
Held, when a party is using prior user as a shield in an action for infringement, it is necessary to prove that they have been continuously using the trade
mark in respect of the goods manufactured or marketed by them. The Statutory presumption under Section 28 of the Trade Marks Act, 1999 loses its
significance once prior user as provided under Section 34 of the Act is established. The exclusive right granted under Section 28 of the Act to the
petitioner is subject to the provisions in Section 34 which are protecting rights. The benefit of Section 34 will thus, be available to the Respondents-
Defendants to prevent the proprietor or registered user of a registered trade mark to interfere with or restrain the continued usage of an identical mark
by the Respondents-Defendants. Defendants were the prior user of the mark, even though defendants failed to submit documents since, the records
were destroyed, which the court had considered. Appellant-Plaintiff had failed to establish the prima facie case that the Respondents-Defendants
were the prior and long term user of the trade mark ""NAKODA"" and if the Respondents/Defendants were to be injuncted, the
Respondents/Defendants would suffer irreparable loss and injury.
c.) In 2002 (2) AWC 1448 Vinayak Tea Co. v. Kothari Products Ltd. the decision of the Allahabad High Court at the end of paragraph 14 of the
judgment, it is held as follows:
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, (e) overall structure, phonetic similarity and similarity of idea
or 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, microspic 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 take into consideration -
the nature of the community, the class of purchasers, the mode of purchase and other surrounding circumstances.
d) In AIR 1978 Delhi 250: 15 (1979) DLT 269 Century Traders v. Roshan Lal Duggar Co. the Delhi High Court in para 12 it is held as follows:
For the purpose of claiming such proprietorship of a mark, it is not necessary that the mark should have been used for considerable length of time. As
a matter of fact, a single actual use with intent to continue such use co instanti confers a right to such mark as a trademark. It is sufficient if the article
with the mark upon it has actually become a vendible article in the market with intention on the part of the proprietor to continue its production and
sales. It is not necessary that the goods should have acquired a reputation for quality under that mark. Actual use of the mark under such
circumstances as showing an intention to adopt and use it as a trade mark is the test rather than the extent or duration of the use. However, a mere
casual intermittent or experimental use may be insufficient to show an intention to adopt the mark as a trade mark for specific article or goods.
e.) In 1997 (1) ARBLR 337 Delhi Sunstar Lubricants Ltd. & Another v. Federal Chemical Industries - the Delhi High Court held that the Plaintiffs
mark GOLDEN Cruiser 1200 and the Defendant's mark SUN Cruiser 2001 and the above said marks phonetically different and there is no question
of infringement and passing off.
f) 1966 RPC 568 - U.K. Trade Marks Act - Julian La Morgn Higgins v. U.S. Government & Its Federal Agency (NASA) - Applicants mark NASA
(NICE AND SAFE ATTITUDE) for clothing in class 25 - opposed by US Space agency -Opposition failed as no use in UK of NASA - visitor
purchasing goods/mementos US cannot be basis of objection under Section 11.
g.) 1998 RPC 631 - Oasis Stores Ltd. v. Ever Ready Plc. - Application for trade mark EVEREADY in class 10 for contraceptives; condoms.
Opposed by proprietor of Eveready registered in class 9 & 11 (Batteries and other goods) - Opposition failed.
It will be worthwhile to examine the operative portion of the Deputy Registrar's order before giving our ruling:--
I have considered the submissions of both the parties and have gone through the records. It is correct that the Opponents are the registered
proprietors of the word ""SONY"" in various classes in India since long. It is also correct that they are using their mark ""SONY"" mainly for electronic
goods. No doubt the Opponents have the registration of the word ""SONY"" in class 25 but there is no evidence on record with regard to its use. It is
also correct that the Opponents have substantial use and reputation of their trade mark ""SONY"" not only in India but world-wide but at the same time
it may be mentioned here that they have admittedly used the same only for electronic goods. It may be mentioned that while deciding the question of
deceptive similarity between the two rival marks, the marks have to be compared as a whole. In a case reported as 1955 (72) RPC 75 and RPC 568 it
was held that ""Likelihood of confusion or deception has to be compared among the class of customers of the goods in question and not among the
general public at large"" (p 148). In a case reported in 1980 RPC 107 it was held that ""Where the opponent's mark is confined to use in one particular
field, it is unlikely that an association with the opponent could properly be inferred, if the same, or a similar trade mark were to be applied to goods
quite remote from any on which they had established any reputation"" (p. 151). Similarly in a case reported as AIR 1969 Bombay 24 the Hon'ble Court
enumerated the factors which are likely to create or allay deception or confusion and the Court held that ""All factors which are likely to create or allay
deception or confusion must be considered in combination. Broadly speaking, factors creating confusion would be, for example, the name of the mark
itself, the class of customers, the extent of the reputation, the trade channels, and the existence of any connection in the course"" (P. 151). I have also
gone through the cited cases as referred by the Hon'ble Bombay High Court in a case reported as AIR 1985 Bombay 327 upheld the order of the
Learned Assistant Registrar of Trade Marks permitting the registration of one identical mark ""SONY"" for the goods ""nail polish"" in an opposition filed
by the present Opponents only. The Hon'ble Court observed that ""it is claimed that the two band transistors under the mark ""SONY"" are easily
available in Bombay and even assuming to be so, it cannot b e overlooked that the trade channels for sale of the two items are entirely different. The
electronic goods and nail polish are not sold under one roof and there will not be any confusion in the mind of the customers that both the items come
from the petitioner's house in Japan. There is also no common field of activity in course of trade of two items and the class of customers who would
purchase the two items which are distinct and different."" Similarly in yet another case the word ""SONY"" was allowed registration which was held as a
common surname in India for the goods ""frames for spectacles and goggles"" against use of the same word for radios and electronic goods (1989 IPLR
92). Also the word ""BRIDGESTONE' was allowed registration in respect of the bicycle parts other than tyres and tubes against opposition by the
registered proprietors of the same mark for heavy vehicle, tyres and tubes. (FAO (T & M) 156-D/1963 (Delhi) (p. 154) Word 'EVEREADY' for
contraceptive and condoms was allowed registration against the same word used for torches etc. (1988 RPC 631).
It may be mentioned that while deciding the question of likelihood of confusion or deception, the Tribunal in all cases has necessarily to assess the
psychological reaction and mental association the mark will generate in the mind of an average customer when he buys the goods under normal
circumstances and condition of the trade. The following factors are necessary and were held relevant for consideration AIR 1982 Delhi 308 and AIR
1965 SC 980) for deciding the question of deceptive similarity or likelihood of deception or confusion during the course of the use of the impugned
mark and are as under:--
(1) the nature of the marks, i.e. whether they are words, coined or descriptive or non-descriptive, surname or geographical name, devices, letters or
numbers or numerals or a combination of two or more of the above,
(2) the degree of resemblance between the marks and essential features i.e. similarity in phonetic, visual and in idea,
(3) the nature of the goods in respect of which they used or likely to be used as trade marks,
(4) the similarity in the nature, character, and purpose of the goods of the rival traders,
(5) the class of purchasers who are likely to buy the goods bearing the marks, their level of education and intelligence, and the degree of care they are
likely to exercise in purchasing the goods,
(6) the mode of purchase of the goods or of placing orders for the goods,
(7) any other surrounding circumstances.
These factors are not to be treated in isolation. The weight to be attached to one factor may often depend upon the relative importance of other
factors.
In the case as referred by Shri Shukla the Hon'ble Division Bench of Allahabad High Court held ""The appellant is selling tea in packets and the
respondent is selling Pan Masala, Gutkha and chewing tobacco in different packets. They are totally different commodities. It has to be established
prima facie that there is any misrepresentation to the public that the appellant is selling its goods as that of the respondent. Prima facie there is no such
evidence on the record. It was further held ""If a person can purchase milk in the name of 'Parag Milk' knowing fully that it is not being manufactured
and sold by the respondent, or saree is being sold in the name of Parag Saree' and the customer is not confused then unless there is an evidence to
show that if the tea is sold as Parag Tea' by the appellant, the purchaser will be confused and misrepresented that he is purchasing the tea
manufactured by the appellant as that of the respondent the Court will not grant injunction to the plaintiff.' It was further held ""The parties produced
before us the packets and the labels used by them. They are in different colours, different sizes and different shapes. The appellant is using tea leaf in
is labels while the respondent is using betel leaf in its labels. The respondent has to lead evidence that in spite of such difference the confusion is
caused in the mind of customers. It was further held it is further to be noted that the balance of convenience has to be examined. In case the
injunction is granted to the respondent, the appellant would suffer a greater hardship.
In this case, the impugned mark is a label mark having distinct features like stylized letters ""ABT"" and the word 'SONY"" whereas the Opponents'
mark is only the word ""SONY"". Further, the impugned mark is being used right from the year 1998 continuously and extensively only in certain
territories of India and that too for specific goods. The Opponents in spite of the registration in class 25 have not produced any evidence of their such
use for the goods as per their registration, the Opponents are mainly using their trade mark for electronic goods; the balance of convenience is
certainly in favour of the Applicants who are using their impugned label right from the year 1998 i.e. more than 9 years till date. There has not been a
single instance of confusion or deception brought to the notice of this Tribunal by the Opponents with regard to the Applicants' use since last more
than 9 years. There are many instances where an identical mark 'SONY' has been granted registration in India itself and which has been approved by
the Hon'ble High Court like 'SONY"" for nail polish and 'SONY' for frames and spectacles and goggles on evidence of distinctiveness and there are
still many instances where identical marks have been granted registration in spite of the registration of the reputed marks like 'EVEREADY', 'HERO'
and 'BRIDGESTONE'. The word 'SONY' is not an invented word but is a feminine name and a surname in India. All these factors coupled with the
fact that the impugned mark is being used only for a specific goods i.e. undergarments for ladies and that too in a specific area, this Tribunal is of the
view that there will be no likelihood of any confusion and deception during the course of use of the impugned mark and the issue is decided
accordingly. I have also no hesitation in sustaining the proprietary claim of the Applicants under Section 18(1) of the Act as the impugned mark which
is a label mark consisting of other prominent features like letters 'ABT written in a stylized form. Similarly keeping in view of the overall facts and
circumstances of the case, there is no justifiable reason or ground to exercise my discretion adverse to the Applicants as prayed for by the Opponents.
However, on consideration of the evidence of use and other surrounding circumstances and consideration of the submissions made at the hearing by
Shri Shukla it is ordered that the application shall proceed further only with the goods to read as ""undergarments for ladies namely, brassieres, panties,
lingeries, bikinis for sale in the States of West Bengal and Assam only. A further condition is also imposed on the applicants that they shall use the
whole impugned label as one trade mark. The applicants are directed to file the necessary request on Form TM-16 for such amendment in their goods
as given within 15 days, where after only the application shall proceed further after the necessary notification in the Trade Marks Journal.
We are amazed at how far and to what extent the learned Deputy Registrar laboured with his analytical rigour to justify his decision to extend
statutory protection in favour of the respondent but the devastating negative impact such rulings send a wrong signal to the international business
community and give a needless opportunity for elements inimical to the country's IPR interest to finger point the absurdity of such decision. The
impugned order was issued in July, 2007. The appellant had relied on the Benz case (supra) decided some 12 years earlier by the Delhi High Court,
castigating the respondent therein for using Benz for undergarments. The Deputy Registrar simply and willfully shut his eyes to an open and shut case.
The respondent application should have been thrown out of the window long time ago. Instead, the appellant has been made to suffer needlessly for
over ten years.
We need to make a few pointed observations how the Deputy Registrar cleverly and with phony reasoning circumvented the law. The error was
in holding that appellants are only dealing in electronic goods - ignoring the spill over effect of goodwill and reputation of a well known mark that
travels across the borders and across all type of goods. He has then analyzed decisions favourable to the respondent but maintained studied silence on
the numerous citations relied on by the appellant/opponents. The essential features of the respondent mark abt SONY include the whole of appellants
mark ""SONY"" with 'abt' used as a prefix in conjunction with SONY which is merely an alibi. The public and consumer will ask for SONY garments
and not 'abt' possibly thinking it originates from SONY trade mark owners. Incautious, ignorant and upcountry consumers are likely to be deceived.
The main idea of both the marks hinges on SONY. It is clear the respondent are trying to take unfair advantage of the famous mark SONY to the
detriment of the reputation of the appellant's and is against honest practice in industrial or commercial matters. The inclusion of the word SONY in the
respondent's mark very prominently is completely and out rightly dishonest as the impugned mark includes the whole of the appellant's mark and it
stands out very prominently. These are unacceptable commercial behaviors and unfair to the point of bad faith. In the result, OA/49/2007/TM/KOL is
allowed and the application No. 1255896 in class 25 is refused registration.