Philips Electronics Nv And Philips India Limited (Formerly Known As Peico Electronics And Electricals Limited) Through Their Constituted Attorney Cantwall And Company Patent And Trade Mark Agent vs Kunj Aluminium Pvt. Ltd. And The Assistant Registrar Of Trade Marks, Trade Marks Registry

S. Usha, Technical Member

This appeal has arisen out of the order passed by the Assistant Registrar of Trade Marks, New Delhi on 09.12.1996 dismissing the opposition Nos.

DEL -7841 and DEL -7842 and allowing the registration under application No. 483753 in class 21 of the Fourth Schedule to the Rules framed under

the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act).

2 The first respondent filed an application for registration of the trade mark 'PHILIPS' under application No. 483753 in class 21 in respect of pressure

cooker included in class 21 claiming user since 1982. The application was advertised before acceptance in the Trade Marks Journal No. 1030 dated

01.05.1992 at page 164. The said registration was opposed by the two appellants under two notices of opposition in opposition Nos. DEL-7841 and

DEL-7842 respectively. The first respondent filed their counter statement denying the various averments made in the notice of opposition. After

completion of the procedures, the matter was heard and decided by the Assistant Registrar of Trade Marks.

The Assistant Registrar passed the impugned order on the grounds that the provisions of Section 11(a) of the Act were not attracted as the goods

were of different description and as such there was no confusion or deception among the public; that the registration would not be in contravention of

the provisions of Section 12(1) of the Act; as regards the user, the Registrar found that the first respondent was prior in use to that of the appellant

and as such they were the proprietors of the trade mark as per the provisions of Section 18(1) of the Act. On the above findings the Assistant

Registrar disallowed the opposition and allowed the application for registration.

Aggrieved by the order of the Assistant Registrar, the appellants herein preferred an appeal before the Hon'ble High Court of Delhi in CM (M) No.

140/97 and the same was transferred to this Appellate Board by virtue of Section 100 of the Trade Marks Act, 1999 and renumbered as

TA/321/2004/TM/DEL

The appellants filed the appeal on the following grounds:

(i) The first appellant is the proprietor of the trade mark 'PHILIPS' word per se as well as a trade mark consisting of a device of a shield with the

word PHILIPS at the top and the circle device at the bottom which device is bisected horizontally by three wavy lines with a device of two stars on

the top left and device of two stars at the bottom right. The second appellant is using the said trade mark under a licence agreement.

(ii) The said trade marks have been registered under various classes in various countries including India. The appellants have been using the said trade

marks in respect of goods, namely, radios, radiogram, tape recorders, record players, transistor sets, electrical apparatus and instruments (including

wireless) such as electric razors, electric lamps, light fittings and domestic appliances, mixers, grinders, electric clocks and clock radios. By virtue of

wide sales and advertisements the goods bearing the said trade mark has become associated with the appellants by the public and with no one else.

(iii) The said trade mark 'PHILIPS' has been registered in India as early as 1950. The mark has been registered in class 21 under No. 145532 and in

class 11 under No. 81810 for electric and kitchen utensils. The sales turnover of the appellants both in India and outside India runs to several lakhs of

rupees. The appellants also have spent considerable amount on sales promotion by way of advertisements. The appellants' registrations are valid,

subsisting and are in force.

The Memorandum of grounds of appeal are hereunder:

(a) The Registrar failed to appreciate the appellants' sales figures.

(b) The Registrar has failed to note that the first respondent has not given any reason for the adoption of the mark 'PHILIPS'

(c) The Assistant Registrar has extended the benefit of Section 12(3) of the Act without any basis.

(d) The use of the trade mark by the first respondent is dishonest and the Registrar ought to have rejected the same.

(e) The Registrar failed to consider the evidence filed' by the appellants.

(f) The Registrar ought not to have granted registration as the trade mark 'PHILIPS' was a surname and it did not qualify for registration under

Section 9(1)(d) of the Act.

(g) The first respondent has only stated that they conceived and adopted the trade mark 'PHILIPS' whereas they have not stated that it is a common

surname but the Registrar has considered the same as a common surname.

(h) The Registrar erred in holding that the goods are different and as such there is no trade connection between the appellants' goods and respondent's

goods.

(i) The Registrar erred in holding that as the goods are different and as such there was no possibility of confusion and deception.

(j) The Registrar went wrong in holding that there is no trade connection between the goods having held that the goods are of the same description.

(k) The Registrar erred in holding that the respondent is honest concurrent user in terms of Section 12(3) of the Act.

(I) The Registrar erred in holding that the application for registration on the date of application was in conformity with the provisions of Section 18(1)

of the Act.

(m) The Registrar erred in disallowing the opposition and accepting the application for registration.

The first respondent filed their counter statement denying the various allegations made in the memo of appeal.

The matter was taken up for hearing at the Circuit Bench sitting at New Delhi on 28.5.2008. Learned Counsel Ms. Sheetal Vohra appeared on

behalf of the appellants and learned Counsel Shri M. Dutta appeared on behalf of the first respondent. Learned Counsel for the appellant argued the

matter in full and the counsel for respondent could not open his arguments. With the mutual consent of both the parties it was agreed to have part of

the hearing at Chennai on 07.07.2008. On 07.07.2008 Ms. Sheetal Vohra appeared on behalf of the appellant and learned Counsel Shri M. Dutta

appeared on behalf of first respondent.

The learned Counsel for the appellant drew our attention to the Trade Mark Journal advertisement and submitted that the application was made on

04.01.1988 claiming user since the year 1982, whereas the appellants were using the said trade mark since several years for a variety of goods,

namely radios, radiogram, tape recorders, etc.

Learned Counsel for appellants drew our attention to the notice of opposition on Form TM-5 filed before the Registrar of Trade Marks at page 42

of the typed set and submitted that the trade mark 'PHILIPS' has been registered under the applicants' name in various classes. The counsel further

submitted that both the appellants as licensor and licensee had filed the two notice of oppositions under Nos. DEL-7841 and DEL-7842 and a common

order was passed by the Registrar. The counsel submitted that the first respondent had not given any reason for adoption of the trade mark

'PHILIPS', whereas had stated that in the year 1982 they honestly and bonafidely conceived and adopted the trade mark, in their counter statement on

Form TM 6 before the Registrar of Trade Marks. The appellants' counsel submitted that the only main contention of the first respondent was that the

goods were different which is totally wrong. The counsel further submitted that in the year 1983 the present second applicant's name was changed

and the same was registered before the Registrar of Companies and a certificate was filed as annexure P4. The counsel also brought to our notice the

various documents and the affidavits filed before the Registrar in the opposition proceedings.

Learned Counsel for the appellant further submitted that the first respondent's date of user was not clear as in the application for registration it

was 1982 and in the affidavit of evidence filed in the year 1995 it was stated that the user for one and a half decades and no proper date of user was

mentioned. The counsel also pointed out to the advertisement where the trade mark 'PHILIPS' with R in a circle was given to denote that the mark

was registered, which again is illegal.

The counsel finally took us to the impugned order and submitted that the Registrar has held that the marks are deceptively similar. But as regards

the goods, the goods are different and so there is no possibility of confusion. The counsel, therefore, prayed that the order of the Assistant Registrar

be set aside and the appeal be allowed.

Learned Counsel for the appellant relied on various judgments in support of her case.

Learned Counsel for the first respondent vehemently opposed the contention of the appellants. Learned Counsel for the first respondent submitted

that the application for registration was made on 04.01.1988 claiming user since 1982 and the same was advertised in the Trade Marks Journal on

01.05.1992. The counsel further submitted that the registration granted was correct and there was no infirmity in the impugned order.

Learned Counsel for the first respondent drew our attention to the documents i.e., the various Trade Mark Journal advertisements where the trade

mark 'PHILIPS' was applied for registration under various classes of goods by various people. He submitted that the trade mark 'PHILIPS' was a

common mark. The registration of the first respondent's trade mark was as per the provisions of the Act.

Learned Counsel for the first respondent also submitted that in the year 1983 itself they had issued caution notice and that their goods bearing the

impugned trade mark had gained reputation among the public. He also submitted that the appellant's goods were electrical goods and the first

respondent's goods were pressure cooker which would definitely not lead to any confusion or deception among the public.

The first respondent's trade mark had acquired distinctiveness by use for a continuous period of five years and thus was qualified for registration

under Section 9 of the Act. The first respondent was thus the proprietor of the trade mark 'PHILIPS' as they had used the trade mark for several

years without any interruption.

Learned Counsel for the first respondent referred to various judgments in support of his case:

(a) London Rubber Co. Ltd. v. Durex Products Incorporated was relied to say that the Registrar may register a trade mark which is identical in

respect of same goods provided he is of the opinion that there was honest concurrent use of the mark.

(b) Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. In deciding a question of similarity, it is to be seen as to how a purchaser would react to a

particular trade mark and in what respect he would connect the trade mark with the goods which he would be purchasing.

(c) Rustom Ali Molla v. Bata Shoe Co. Ltd. The acquisition of an exclusive right to a mark on name in connection with a particular goods cannot

entitle the owner to prohibit the others of the goods of a different character.

Learned Counsel for the appellants in rejoinder submitted that the first respondents have not given any reason for the adoption and no proof of

user and so cannot be said to be the proprietor of the said trade mark under the provisions of Section 18(1) of the Act. Learned Counsel referred to

the provisions of 11(2) of the Trade Marks Act, 1999 and submitted that the mark is not registrable.

The counsel further submitted that the provisions of Section 12(3) of the Act cannot be gone into as it has not been pleaded by the first respondent

in the counter statement or in the submissions made before the Registrar. In fact the earlier application filed by the first respondent was refused. The

letter 'R' within a circle on right top of the trade mark itself clearly proves the attitude of the first respondent. The counsel also pointed out the

discrepancies in the sale figures given by the first respondent at page 224 and 232 of the typed set of papers.

The counsel submitted that the burden lies on the applicant to prove that the mark is distinctive and will not cause any confusion and the same has

not been proved by the applicants. The first respondent has nowhere denied that the appellants' mark is a well known mark.

We have carefully heard and considered the rival submissions of both the counsel and have gone through the documents filed by them.

The issue as to when the goods being different, whether any confusion would arise is to be decided. Here the marks being identical, possibility of

confusion is not likely but certain. The impugned trade mark 'PHILIPS' has acquired a global reputation. The appellants' trade mark has been in use

since 1950 and has become known not only in India but outside India too for various goods. The factors to be considered in deciding the question of

confusion will be the nature of the mark, the class of customers, the extent of reputation, the trade channel and the existence of any connection in the

course of the trade. Considering the fact that the first respondent has virtually copied the trade mark, the adoption is not honest.

The Assistant Registrar has passed the order on the basis that the goods are different i.e. the appellants' goods are electrical goods, whereas the

first respondent's goods is pressure cooker. Even though various judgments were placed before us by the appellants in support of their contention, we

place our findings based on the well known Benz case. The observations made in Daimler Benz Aktiegesellschaft and Anr. v. Hybo Hindustan

reported in ""that if a globally well known mark is used by another in respect of different kinds of goods, the possibility of confusion in mark is still

there"". The said judgment was confirmed by the Supreme Court. While we find that the appellants goods bearing the trade mark 'PHILIPS' have

acquired wide reputation and goodwill in the market, the use of the said trade mark by the first respondent would only make the public think that the

goods bearing the trade mark emanate from the appellants which will deface reputation of the appellants. So, by allowing the application to proceed

for registration would definitely cause confusion among the public.

In view of the well settled principles of law and the various judgments we will have to decide whether there will be any confusion in the minds of

the public. We are of the view that both the marks being identical without any difference, definitely the consumers will be misled to think that the first

respondent's goods are that of the appellant. In such circumstances, there cannot be any denial that the use of the same mark by the two traders in

respect of different goods will cause confusion in the minds of the public and general trade. The contention of the first respondent that their goods are

pressure cooker and the appellant's goods being electrical cooker there is no possibility of confusion cannot be agreed. There is identity of goods,

marks and consumers and the goods are sold under the same shop and so there is every reason for confusion and deception being caused.

The first respondent adopted the said trade mark since 1982 in respect of pressure cooker which was subsequent to that of the appellants who

adopted and started using the trade mark since 1950. The use of the trade mark by the first respondent thus seen is very much subsequent to that of

the appellants. The earlier use of the trade mark by the appellant is not denied by the first respondent except for the contention that the goods are

different.

The first respondents have not given any reason or explanation for the adoption of the trade mark 'PHILIPS.' It is clear that the first respondent's

conduct is not bonafide. The adoption has been done with a deliberate and conscious idea to gain profit from the goodwill of the appellants. As fact as

concurrent use is concerned, there should be a substantial period of user which we are not inclined to deal in detail as the same has not been pleaded

or argued. Apart from that dishonesty is manifest at the beginning itself even before the grant of registration. On perusal of the document filed by the

appellants, it is seen that the first respondent has put R in a circle on the right top of the trade mark. This dishonesty disentitles him of the benefit of

the provisions of the Act.

The appellants being in the market since 1950 have acquired global reputation among the public. The appellants are also seen to be first in the

market whereas the first respondent started only in the year 1982 which is after three decades and hence the first respondent cannot be the proprietor

of the trade mark under Section 18(1) of the Act.

In view of the above, we accordingly allow the appeal by setting aside the order of the Assistant Registrar dated 09.12.1996. However, there shall

be no order as to costs.