Philips Electronics NV Through Their Constituted Attorney Cantwell And Company Patent And Trade Mark Agents And Philips India Limited, (Formerly Known As Peico Electronics And Electricals Limited) Through Their Constituted Attorney Cantwell And Company Patent And Trade Mark Agents vs Kanta Arora, Trading As Kumar Enterprises As Proprietor And The Assistant Registrar

S. Jagadeesan, J

The appellants have filed this appeal against the order of the Assistant Registrar of Trade Marks, New Delhi, dated 9.12.1996, disallowing the

opposition Nos. DEL 7841 and 7842 .

The first respondent Smt. Kanta Arora, trading as M/s. Kumar Enterprises, filed an application No. 483753 for registration of the trade mark

'PHILIPS' in respect of Pressure Cooker included in class 21 of the Fourth Schedule of the Rules framed under the Trade and Merchandise Marks

Act, 1958 (hereinafter referred to as the Act). The said application was advertised before acceptance in the Trade Marks Journal No. 1030, dated

1.5.1992 at page 164. On 28.2.1992, the appellants herein gave separate notices of their intention to oppose the registration of the impugned trade

mark advertised on the grounds of its violative of Sections 9, 11, 12(1) and 18(1) of the Act raising the plea that they are the registered proprietors of

the trade mark Philips under No. 145532 in class 21 in addition to which they have obtained more than 30 registration for their trade mark 'PHILIPS'

in different classes. The first respondent filed the counter statement refuting the objections raised by the appellants and also filed the rebuttal

evidence. Both the parties filed their respective evidences as prescribed under the Rules and after the completion of formalities, the application was

taken up for hearing. After hearing the counsel on both sides, under the impugned order, the Assistant Registrar disallowed the opposition of the

appellants and accepted the application of the first respondent. The Assistant Registrar found that the application of the first respondent is violative of

Section 12(1) of the Act. So far as the objection regarding Section 11(a) is concerned, after elaborate discussion and after referring to a number of

judgments, the Assistant Registrar found that the goods of the first respondent are not the same or of the same description since the appellants are not

manufacturing or dealing with non electrical pressure cookers and as such, there cannot be any confusion and consequently held that Section 11(a) is

not attracted. The Assistant Registrar further found that the first respondent is using the mark and the adoption of the trade mark is also bonafide and

consequently she is entitled for the benefit of Section 12(3) of the Act. Even with regard to the objection under Section 18(1) is concerned, the

Assistant Registrar over-ruled the same on the ground that the first respondent is using the impugned mark prior to the date of application and as such,

on the date of application, she is the proprietor of the impugned mark by use. Ultimately the oppositions of the appellants were disallowed and the

application of the first respondent was accepted.

3 . Aggrieved by this order of the Assistant Registrar, the appellants have filed an appeal on the file of the Delhi High Court, New Delhi, in CM(M)

No. 140/97, which stood transferred to this Appellate Board by virtue of Section 100 of the Trade Marks Act, 1999, and numbered as

TA/321/2004/TM/DEL.

4 . We have heard the appeal during our circuit sitting at Delhi on 15.2.2005. We have heard the arguments of Shri N. Mahabir assisted by Ms.

Sheetal Vohra for Shri Manmohan Singh for the appellants. The notice sent to the first respondent was returned with an endorsement ""left without

leaving the address"". The notice sent to the counsel for the first respondent was served. However, there was no representation on behalf of the first

respondent.

5 . The learned counsel for the appellants contended that the Assistant Registrar found that the impugned mark and the registered mark of the

appellants are identical and similar and Section 12(1) of the Act is attracted. In such circumstances, definitely, Section 11(a) will also be attracted and

the reasoning of the Assistant Registrar that the goods of the first respondent are not the same or of the same description cannot be sustained. He

advanced his arguments relying upon the judgments of the Bombay High Court in the case of Sunder Paramanand Lalwani and Ors. v. Caltex (India)

Ltd., AIR 1969 Bombay 24, where the Bombay High Court held that the name 'Caltex' cannot be permitted to be registered in connection with the

applicant's watches on the ground that a large number of persons if they saw or heard about the mark 'Caltex' in connection with the applicant's

watches, would be left to think that watches were in some way connected with the opponents who were dealing in petrol and various oil products with

the mark 'Caltex'. He placed much reliance on the judgment of the Punjab and Haryana High Court in the case of Banga Watch Company,

Chandigarh v. N.V. Philips Eindhoven, Holland and Anr., reported in AIR 1983 Punjab and Haryana 418. The appellant herein was the respondent in

the said case. The learned judge of the Punjab & Haryana High Court held that the trade mark 'PHILIPS' was used extensively with respect to

radios. Use of the identical mark 'Philips' with respect of timepieces, wall clocks which are available across the same counter will lead to passing-off.

It is immaterial that the goods belong to different classes as they are available across the same counter. Reliance was placed on the judgment of the

Allahabad High Court in Bata India Limited v. Pyare Lal & Co., Meerut City and Ors., reported in AIR 1985 Allahabad 242, where it was held that

the trade mark 'Bata' was used extensively with respect to footwear, the use of the mark 'Batafoam' with respect to mattresses would amount to

passing off. Similarly, a reliance was placed on the judgment of Bombay High Court in the case of Bajaj Electricals Limited v. Metals and Allied

Products reported in AIR 1988 Bombay 1967, where it was held that the trade mark 'Bajaj' was used extensively with respect electrical goods.

Despite the fact that 'Bajaj' is a personal name, the use of identical mark with respect to utensils will lead to passing-off. In the case of Daimler Benz

Aktiegesellschaft v. Hybo Hindustan - AIR 1994 Delhi 239, the Delhi High Court held that the trade mark 'BENZ' was extensively used with respect

to automobiles. The use of an identical mark 'Benz' with respect to undergarments will lead to confusion in the market, although the manufacturers of

Mercedes Benz cars were neither manufacturing nor selling garments nor underwear apparels. The Delhi High Court in yet another case ofH onda

Motors Company Limited v. Charanjit Singh and Ors. Reported in 2003(26) PTC 1 (De l)had held that the plaintiff's mark Honda has acquired a

global goodwill and reputation and the said name is associated with the plaintiff established in the field of automobiles and power equipments and as

such the same trade mark has acquired goodwill and reputation, the use of the said trade mark by the defendant was for their product pressure

cooker, does mislead the public to believe that the defendant's business and goods are that of the plaintiff and such user by the defendants is also

diluted and deface the goodwill and reputation of the plaintiff. Though the learned counsel for the appellants relied upon other judgments also, we are

of the view that it is unnecessary to multiply the judgments when the principles laid down there are the same.

We have also perused the impugned order of the Assistant Registrar. At page 8, he has held as follows:-

As regards the goods, the applicants goods are pressure cookers (non electric) while the goods under the aforesaid registered trade mark are

consisting of inter-alia house hold utensils (non-electric) which are definitely goods of the same description as that of the applicants goods. That being

so, both the conditions required to invoke the prohibition contained under Section 12(1) of the Act are fulfilled. I do not agree with the Ld. Counsel for

the applicants in view of the disclaimer of the word PHILIPS, appearing in the opponents registered trade mark, the opponents are not entitled to

invoke the prohibition contained u/s 12(1) of the Act. .......

From the above finding, it is clear that the requirement of both the conditions of Section 12(1) is attracted and as such, the prohibition imposed under

Section 12(1) will operate.

While dealing with Section 11(a) of the Act, the Assistant Registrar has referred to a number of judgments and ultimately found that the goods of

the appellants being different from that of the first respondent, there cannot be any confusion. In fact, some of the judgments relied upon by the

Assistant Registrar were held to be no longer good law in view of the development of the trade and also the value of the Trade Mark.

9 . Here again, with a cautioned note, we refrain from referring to the various judgments referred to by the Assistant Registrar as it would be

sufficient for us to refer to the two judgments of the Delhi High Court in the case of Daimler Benz Aktiegesellschaft v. Hybo Hindustan - AIR 1994

Delhi 239 and Honda Motors Company Limited v. Charanjit Singh and Ors. - 2003 (26) PTC 1 (De,l )which clearly reflects the present trend of the

Courts. Apart from that, it may be worthwhile to refer to the judgment of Banga Watch Company, Chandigarh v. N.V. Philips Eindhoven, Holland and

Anr. - AIR 1983 Punjab and Haryana 480, which will solve the issue in this case.

In fact, in Banga Watch Company case, as early as in 1983, the learned judge of the Punjab and Haryana High Court held that the trade mark

'PHILIPS' (that of the appellants herein) was used extensively with respect of radios. Use of the identical mark with respect to timepieces, wall

clocks will lead to passing-off. In the present case, the Assistant Registrar mainly held that the appellants' trade mark No. 145532 is in respect of

small enamelled hollow wares, glass wares, porcelain ceramics, household utensils, kitchen utensils (non electric), kettle (electric), etc. included in

class 21. It may be pertinent to note that the appellants have obtained the registration of their trade mark 'PHILIPS' in more than thirty numbers in

respect of different classes of which two namely No. 145532 and 563814 relate to class 21. The marks specified by the appellants do not contain the

cooker (non electronic). As the first respondent is seeking registration of the mark in respect of a good which is not being manufactured or sold by the

appellants, the first respondent is entitled for the registration of the impugned mark. The Assistant Registrar has failed to consider the reputation of the

appellants' mark. When once the appellants' mark is accepted to be a globally well known and reputed mark, then the use of such identical mark by

anybody else would cause confusion in the trade since the purchaser may get confused with the goods or the goods of the new manufacturer is that of

the reputed manufacturer of the registered trade mark. In fact, that is what the Delhi High Court has held in Honda Motors Company case -

2003(26)PTC 1, that the plaintiff's mark Honda has acquired a global goodwill and reputation and the said name is associated with the plaintiff

established in the field of automobiles and power equipments and as such the same trade mark has acquired goodwill and reputation, the use of the

said trade mark by the defendant was for their product pressure cooker, does mislead the public to believe that the defendant's business and goods are

that of the plaintiff and such user by the defendant is also diluted and deface the goodwill and reputation of the plaintiff. In the case of Daimler Benz

Aktiegesellschaft v. Hybo Hindustan - AIR 1994 Delhi 239 ,the Court held that the use of the trade mark Benz in respect of under garments will lead

to confusion in the market, although the manufacturers of Mercedes Benz cars were neither manufacturing nor selling garments or undergarment

apparels. If the principles laid down of the recent origin are taken into consideration, we have no hesitation in finding that the order of the Assistant

Registrar cannot be sustained.

11 . Hence, for the above reasons, we are of the view that the findings of the Assistant Registrar of Trade Marks cannot be sustained and accordingly

the order is set aside. The appeal is allowed without costs.