Pradeep Kumar Dhoot And Anr. vs Jai Prakash Gupta And Ors.

S. Jagadeesan, J

The appellant has filed this appeal against the order of the Deputy Registrar of Trade Marks, Delhi, dated 22.5.1995, wherein the opposition of the

appellant was disallowed.

The first respondent M/s. Sarvodaya Metal Industries, filed its application No. 510129, for registering the mark 'VIDEOCON' in respect of their

goods 'Pressure Cookers' in class 21 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The said application was

advertised in the Trade Marks Journal No. 1055, dated 16.5.1993, at page 179. The appellant herein, M/s. Videocon India, filed their notice of

opposition on 5.8.1993, in No. DEL-8187, opposing the registration of the impugned mark on the ground that the impugned mark is not distinctive or

capable of distinguishing the goods of the first respondent and the appellant's trade mark is exclusively identified with them as they are the registered

proprietors of mark 'VIDEOCON' in respect of their multifarious business activities and their group concern manufacturing and marketing Television

sets, Stereos, Video cassettes, record players, head cleaner of tape recorder and head cleaning solution for video and audio cassettes, washing

machines, air cooler and air conditioner, etc. The said trade mark Videocon forms distinctive and memorable part of Videocon International Ltd.

which are popularly known as Videocon Group Companies and that the impugned mark cannot be registered as the same is hit by the provisions of

Sections 9(a), (b) and (e) and also the impugned mark is contrary to the provisions of Section 9, 12(1), 12(2) and 18(1) of the said Act. The first

respondent filed the counter-statement refuting the material averments of the opposition and further stated that the first respondent has adopted the

trade mark Videocon in the year 1986 in respect pressure cookers (non electric) and the impugned mark has come to be associated with the pressure

cookers of the first respondent by attaining goodwill and reputation in the market and also the goods being different, the impugned mark is registerable

under the Act. Both the parties filed their evidence and after completion of formalities, the matter was heard by the Deputy Registrar.

After hearing both the counsel, under the impugned order, the Deputy Registrar disallowed the opposition filed by the appellant finding that the

appellant's have not placed any evidence on record to establish that the Television on the one hand and the pressure cookers on the other hand are the

goods of same description and further the word VIDEOCON is also very common and well known to the public and the combination of the two words

VIDEO and CON is not extraordinary or strange or otherwise combination of two well known words which can be done by any person on the earth.

Ultimately, the Deputy Registrar allowed the application of the first respondent to proceed for registration on the ground that their goods are not the

same or of same description of goods under the registered trade mark of the appellant. Aggrieved by the same, the appellant filed the appeal CM(M)

345/1995 on the file of Delhi High Court, which stood transferred to this Appellate Board, by virtue of Section 100 of the Trade Marks Act, 1999, and

numbered as TA/118/2003-TM-DEL.

We have heard the arguments of Shri Surinder Singh on behalf of the appellant and Mrs. Dharam Kiran on behalf of the respondents. We have also

carefully gone through the written submissions sent by Shri Surinder Singh, learned counsel for the appellant and Shri S.K. Aggarwal, learned counsel

for the first respondent through their letters dated 20th August, 2004 and 14th August, 2004, respectively.

The learned counsel for the appellant contended that the Deputy Registrar has allowed the application of the first respondent for registration of the

impugned mark primarily on the ground that the goods of the first respondent 'Pressure Cooker' is not the same or of the same description as that of

the goods of the appellant. In fact, the Deputy Registrar had placed reliance on some of the old judgments to come to the said conclusion. A perusal of

the impugned order of the Deputy Registrar would reveal that he has discussed or accepted the arguments of the counsel for the first respondent and

nowhere, he made any reference to the arguments of the counsel for the appellant. The Deputy Registrar's conclusion that the impugned mark is

registerable under Section 12(3) of the said Act cannot be sustained. He also drew our attention to a number of recent judgments which reveal the

present trend in respect of registration of identical or similar marks in respect of different goods. It is unnecessary for us to refer to all the judgments

except to refer to a few to bring out the principles laid down by the Apex Court and to follow the same guidelines.

The learned counsel for the first respondent contended that the appellant is using the registered mark VIDEOCON in respect of Television sets, Air

conditioners, Air coolers, Washing machines, Refrigerators, and other items and established their reputation only in respect of those goods dealt with

by them. The first respondent is seeking registration of the trade mark in respect of ""Pressure Cookers"" falling under class 21. The appellant never

enjoyed any reputation in respect of ""Pressure Cookers"" as they failed to produce any evidence for the use of their mark in respect of Pressure

Cookers and they have also to produce any evidence to establish confusion or deception. The goods being of different description, the learned counsel

upon the following judgments:

Hindustan Pencils Pvt. Ltd. v. Universal Trading Co., 2000 PTC 561.

London Rubber Co. v. Durex Products Inc.AIR 1963 SC 1882,

Hindustan Pencils Ltd. v. Aptudet Industries, 1991 PTC 204.

Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd., 1996 PTC 512.

Nestle Products Ltd. v. Milkmaid Corporation and Anr.AIR 1974 Del 40 ,

Sri Premchand Gupta of Universal Trading Co. v. Hindustan Pencils Pvt. Ltd., 1983 PTC 6.

We have carefully considered the respective contentions of the learned counsel.

There is no dispute that the appellant herein is the registered proprietor of the mark 'VIDEOCON' and they are dealing with Television sets, Stereo,

Video cassettes, washing machines, air coolers, etc. for more than a decade on the date of their opposition. The first respondent filed the application

on 10.5.1989 for registration of a similar mark 'VIDEOCON' in respect of their goods, i.e., pressure cookers. It is for us to consider whether the

registration of the impugned mark would create any confusion or deception in the trade. We do not want to elaborate our discussion as the judgments

relied upon by the learned counsel for the appellant provide us the guidelines to be followed. We would refer to a few cases hereunder:-

In Sunder Paramanand Lalwani and Ors. v. Caltex (India) Ltd., AIR 1969 Bombay 2 4the 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'.

In a case reported in Banga Watch Company, Chandigarh v. N.V. Philips Eindhoven, Holland and Anr.AIR 1983 Punjab And Haryana 418 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 to 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.

In Daimler Benz Aktiegesellschaft v. Hybo Hindustan AIR 1994 Delhi 239 the High Court of Delhi 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 or underwear apparels. The said judgment of the learned

single Judge was confirmed by the Division Bench of the same High Court and also confirmed by the Supreme Court.

The Delhi High Court in the case of Honda Motors Company Limited v. Charanjit Singh and Ors. had held that the plaintiffs 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.

In view of the legal trend extracted above, we are unable to agree with the contentions of the learned counsel for the first respondent. In fact, in the

Honda Motors Co. Ltd. v. Charanjit Singh, 2003 (26) PTC ,1 the learned Judge referred to the London Rubber case, AIR 1963 SC 1992; Nestle

Products Ltd. Case, and also the Vishnudas v. Vazir Sultan Tobacco Co. Ltd. Case, The learned Judge held that the principle's laid down therein

cannot be relied upon to decide the case on hand by observing as under:

The aforesaid authorities relied upon by the learned counsel for the defendants are to be considered on their own facts. In fact none of the

authorities can be applied on facts to the present case. Whether there is a mis-representation is such as to be likely to pass off his goods as the goods

of the plaintiff is in each case a question of fact. No previous case can, therefore, be an authority for any other case, each case must depend upon the

facts applicable to that case alone. It was so observed in Cellular Clothing v. Nexton, (1899) 16 RPC 397 (HL).

The learned Judge, further to decide the issue on hand, held as follows:

In the present case the plaintiff's mark HONDA has acquired a global goodwill and reputation. Its reputation is for quality products. The name of

HONDA is associated with the plaintiff's especially in the filed of automobiles and power equipments on account of their superior quality and high

standard. The plaintiff's business or products under the trade mark HONDA has acquired such goodwill and reputation that it has become distinctive

of its products and the defendants' user of this mark for their product ""Pressure Cooker"" tends to mislead the public to believe that the defendants

business and goods are that of the plaintiff. Such user by the defendants has also diluted and debased the goodwill and reputation of the plaintiff.

From the principles laid down by the above judgments, it is clear that merely because the goods are different in description, two identical marks

cannot be registered for the simple reason that the well established goodwill and reputation of the registered proprietor of the trade mark cannot be

allowed to be diluted or defaced by the registration of an identical mark in respect of other goods. Further, when the registered mark had built up a

reputation and goodwill of their own, naturally, there will be confusion or deception in the minds of the public with the goods of the other description as

if they are being produced by the same well known trade mark proprietor, when they have no connection with the said product. Even though the cases

referred to mostly arising out of passing of action and infringement, we are of the view that the principles laid down by the Courts can be taken as

guidelines to decide the issue of registration.

On these principles, even though the goods are different, the two identical trade marks cannot be registered in the name of two different owners

as the same would cause confusion. In the case on hand, there is no much dispute that the appellant has got a global reputation of goodwill of their

mark 'VIDEOCON' which is closely associated with Television, washing machine, Air cooler and air conditioners. If the impugned mark is permitted

to be registered by the first respondent, the same does mislead the public to believe that the first respondent's goods are that of the appellant. Hence,

following the principles laid down by various Courts, we are of the view that the reason given by the Deputy Registrar for accepting the application of

the first respondent for registering the impugned trade mark cannot be sustained.

Even with regard to the finding of the Deputy Registrar that the impugned mark is registerable under Section 12(3) of the said Act, we are unable

to agree with the same. Section 12(3) is an exemption to Section 12(1). Section 12 reads as follows:

Prohibition of registration of identical or deceptively similar trade marks- (1) Save as provided in Sub-section (3), no trade mark shall be registered

in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of

different proprietor in respect of the same goods or description of goods.

(2) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly

resemble each other in respect of the same goods or description of goods, the Registry may defer the acceptance of the application or applications

bearing a later date until after the determination of the proceedings in respect of the earlier application, and may dispose of such application or

applications in the light of the evidence tendered in relation to earlier application and the opposition thereto, if any.

(3) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit

the registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already

registered or not) in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit

to impose.

Sub-section (1) of Section 12 contemplates that no trade mark shall be registered in respect of any goods or description of goods which is identical

with or deceptively similar to a trade mark which is already registered. Hence, the goods or the description of goods must also be similar in respect of

the mark already registered. Section 12(3) also makes it clear as a proviso to Sub-section (1) of Section 12 empowering the Registrar to register the

trade mark if there is honest concurrent use or of special circumstances in respect of the same goods or description of goods. When the goods are

different, Section 12 has no role to play. Hence, the order of the Deputy Registrar permitting the registration of the impugned mark under Section

12(3) also cannot be sustained.

For our above view, we are fortified with the judgment of the Supreme Court in the case of Vishnudas trading as Vishnudas Kishendas v. Vazir

Sultan Tobacco Company Ltd., 1996 PTC 512. In para 45, the learned Judges have held as under:

...Section 12 of the Trade Marks Act prohibits registration of identical or deceptively similar trade marks in respect of goods and description of goods

which is identical or deceptively similar to the trade mark already registered. For prohibiting registration under Section 12(1), goods in respect of which

subsequent registration is sought for, must be (i) in respect of goods or description of goods being same or similar and covered by earlier registration

and (ii) trade mark claimed for such goods must be same or deceptively similar to the trade mark already registered. It may be noted here that under

Sub-section (3) of Section 12 of the Trade Marks Act, in an appropriate case of honest concurrent use and/or of other special circumstances, same

and deceptively similar trade marks may be permitted to another by the Registrar. It is also to be noted that the expression ""goods"" and ""description of

goods"" appearing in Section 12(1) of the Trade Marks Act indicate that registration may be made in respect of one or more goods or of all goods

conforming a general description. The Trade Marks Act has noted distinction between description of goods forming a genus and separate and

distinctly identifiable goods under the genus in various other Section, e.g., goods of same description in Section 46, Sections 12 and 34 and class of

goods in Section 18, Rules 12 and 26 read with 4th Schedule to the Rules framed under the Act.

For the reasons stated above, we allow the appeal and set aside the order of the Deputy Registrar. Consequently, the application of the first

respondent for registration of the trade mark is rejected. There will be no order as to costs.