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Judgment
Prabha Sridevan, J
1 . This appeal has been filed against the order dismissing the opposition and directing the registration of the mark ""KLICK"" with the device of
lightning and woman caricature, in respect of lace and embroidery, rebinds and braid buttons, press buttons, hooks and eyes, pins and needles, artificial
flowers. The application was advertised before acceptance in Trade Marks Journal No. 1303 dated 16.9.2003 at Page No. 300. The period of user
claimed was ""since 1.4.1987"". The appellants are trading as Nischal's Klick Selections. They filed their notice of opposition giving evidence of their
use and sales. The appellants are engaged in business in ready made garments including shirts, trousers, coats under the trade mark ""KLICK"". The
impugned trade mark is also KLICK in respect of the goods, laces and embroidery, ribands and braid buttons, hooks and eyes, pins and needles which
are cognate and allied goods of the same description as the goods of appellants. The appellants claimed that they enjoy a vast reputation and goodwill
and also that the respondent is using the mark only in respect of electrical goods and not for the goods in Class 26. Several decisions were also cited
before the Deputy Registrar to support the pleadings and evidence.
2 . The respondents/applicant claimed that the goods of the appellant are different from the goods of the impugned trade mark as the trade channel
was different and user was from 1987.
The opposition was dismissed on the ground that there is no evidence to indicate likelihood of deception and that the respondent's mark with device
is distinctive and capable of distinguishing the goods of the respondents from others and therefore under Section 11 of the Trade Marks Act, 1999
(hereinafter referred to as the Act) objection cannot stand.
4 . It was also dismissed on the ground that there is no evidence to show respondent's goods have been passed off as the appellant's goods. So Section
18(1) of the Act objection is not made out.
Then the Deputy Registrar exercised his discretion under Section 18(4) of the Act and ordered registration.
6 . The learned Counsel for the appellant submitted that the mark deserved to be removed since there is absolutely no evidence of user; and the goods
are allied, and there is likelihood of confusion. The learned Counsel submitted that indisputably the appellant is prior in use and registration. The
learned Counsel for the respondent submitted that the appellant must prove non-user, and there is no evidence for it. Further, the end users of the two
categories of goods are different and so there is no likelihood of deception nor evidence of the same.
We will test the correctness of the order on the basis of the materials produced.
8 . The appellant is Nischal's Klick Selections. The respondent is trading as Klick Electrical Industries.
9 . The appellant has proved user from 1987. Shirts and other garments have been sold as Klick shirts. Klick Selections has been registered under No.
564524 from 27.12.1991. The certificate is dated 29.5.1998 for goods in Class 25 readymade garments.
1 0 . The respondent's application is dated 18.5.2001. The user is claimed from 1.4.1987. It was advertised on 16.9.2003. There is absolutely no
evidence of user of the mark in relation to the goods in question. The evidence of user is only for electrical goods and nothing else. The respondent
has registered this trade mark for goods in Classes 1,2,3,4,7,9,10,13,14,15,18,19,20,21,22,27,30,31 and 32.
We are informed that the mark No. 1010252 for goods in Class 15 has been rectified. The appellant is aggrieved only by the registration in Class
26 (the appeal on hand) and two others.
The learned Counsel for the appellant cited AIR 1960 SC 142 - Corn Products Refining Co., Appellants V. Shangrila Food Products Ltd.,
Respondents -
The presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not
permissible to draw any inference as to their user from the presence of the marks on the register.
So the fact that there are numerous registrations in favor of the respondent, does not advance the case of the respondent.
It is held in AIR 1953 SC 357 - National Sewing Threa Co. Ltd., Chidambaram, Appellants v. James Chadwick and Bros. Ltd., Respondent - The
Registrar of Trade Marks, Intervener, para 22 that - (22) The principles of law applicable to such cases are well-settled. The burden of proving that
the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant. It is for him to satisfy the Registrar
that his trade mark does not fall within the prohibition of S.8 and therefore it should be registered. Moreover in deciding whether a particular trade
mark is likely to deceive or cause confusion that duty is not discharged by arriving at the result by merely comparing it with the trade mark which is
already registered and whose proprietor is offering opposition to the registration of the mark. The real question to decide in such cases is to see as to
how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he
would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing.
In opposition proceedings, it is the applicant who seeks registration who must prove that his mark deserves registration.
In Batt & Co.'s TM, LORD LINDLEY, M.R.,(1898) 15 RPC 534 - In the matter of the Registered Trade Marks Nos.27,850 and 72,790 of J.
Batt and Co. in his judgment, which was the judgment of the whole Court, held thus:
A question of law then arises, which may be stated shortly as follows: -Can a man properly register a Trade Mark for goods in which he does not
deal, or intend to deal - meaning by intending to deal, having at the time of registration some definite and present intention to deal in certain goods or
descriptions of goods, and not a mere general intention to extending his business at some future time to anything which he may think desirable? This
question we answer in the negative. To answer it otherwise would be unduly to strain the language of the Acts relating to Trade Marks, and to render
those Acts extremely mischievous, instead of beneficial to trade and commerce.
The words which refer to bonafide intention to use in the Act cannot be ignored. The registration of a trade mark secures to the proprietors of the
mark an invaluable right. It is a property right, and Courts protect the owners from infringement and violation of the rights. Therefore a person who
secures registration must show that there exists a genuine and real intention to use the trade mark. He cannot get his mark on the register without
such an intention and prevent others from using it. That is not in public interest and we cannot close our eyes to it. The Trade Marks Act protects
registration of mark in connection with some business or trade in some kind of goods made, sold and otherwise dealt with. So a person who has
neither carried on any trade or business in the goods in question, nor has any bonafide intention to do so cannot properly register a trade mark. So we
need not go into the question whether the goods are allied and cognate goods. There is absolutely no evidence that the respondent has used the mark
in respect of the goods claimed. The legal position as held in Corn Products Refining Co., Appellants V. Shangrila Food Products Ltd., Respondents
(cited supra) is that registration does not mean user.
In fact we are not sure whether the registration of a mark in respect of several classes of goods when the owner of the goods is evidently using it
only in one class will be in public interest at all but here we are concerned only with the mark. This is why in Vazir Sultan's case, 1996 (16) PTC 512 -
Vishnudas trading as Vishnudas Kishendas Vs. Vazir Sultan Tobacco Co. Ltd. where the manufacturer was clearly a one product manufacturer did
not get relief.
The Deputy Registrar was not justified in dismissing the opposition. In fact when the appellant in his opposition had specifically raised the ground
of non user, the Deputy Registrar has not dealt with this objection and had instead taken up the other objections and rejected. The respondent has
claimed user from 1987. But there is no evidence to prove this user. The evidence of user is only for electrical goods and nothing else. The appellants
have proved user from 1987 which we have already referred to. The appellant's mark was registered and a certificate was granted in 1998. The
respondent is therefore clearly neither prior user nor is the respondent's registration earlier to the appellant. This fact has also been unnoticed by the
Registrar. But more specifically the fact that the respondents has never used the mark is the crucial one. To use the words in the Batt & Co.
judgment, In the matter of the Registered Trade Marks Nos.27,850 and 72,790 of J. Batt and Co. (cited supra), registration obtained without any
intention of dealing with those goods or description of goods definitely would instead of being in the interest of trade and commerce be positively
prejudicial to public interest.
17 . Obtaining registration without any use of the mark is clearly malafide and therefore the appeal OA/28/2010/TM/DEL has to be allowed. The
registration of the mark 1010261B in Class 26 is set aside. Miscellaneous Petition No. 137/2010 is closed.