Sadhoo vs S.M. Nasir And Ors.

S. Usha, Technical Member

This appeal is arising out of the order dated 7th September 2001 by the learned Assistant Registrar of Trade Marks, New Delhi dismissing the

opposition No. DEL/T.640/52062 and allowing the registration under application No. 477156 in class 34 to proceed to registration subject to condition

that the sale be restricted to the State of Uttar Pradesh.

The 1st respondent filed an application under the Trade and Merchandise Marks Act, 1958 (in short the Act) on 19/08/1987 for registration of a

label mark consisting of the word ""Sadhu Bidi"" and Bidi No. 8 and a device of a saint as its distinguishing feature in class 34 in respect of Bidi claiming

user since 1st April 1983. The said application was advertised in the Trade Marks Journal No. 1160 dated 1st October, 1987 at page 1310. The mark

was advertised before acceptance with a condition that the applicants shall have no right to the exclusive use of the word ""special"" and ""Bidi No. 8

and some other descriptive expressions.

The appellants filed their notice of opposition on Form TM-5 on 3rd December 1997 on the grounds that the registration if granted would be in

contravention of the provisions of the Act. The 1st respondent had filed their counter statement on the 22nd March, 1999. After the formal procedures

were completed, the matter was heard by the Assistant Registrar on 28th February, 2001.

The Assistant Registrar passed the impugned order on 7th September, 2001 on the grounds that the application for registration has been allowed

under Section 12(3) of the Act under the circumstances that the mark is part of the company's name and that the mark has been in use for a

considerable period of time; that the application is allowed under Section 18(1) of the Act as the adoption is honest for the opponents/appellants were

in the market in the Northern part of India on the date i.e. on 1st April. 1983 when the 1st respondent started using the impugned trade mark and are

thus the proprietor of the trade mark. The registration was granted with area restriction as to sale in the State of Uttar Pradesh only.

Aggrieved by the said order the appellants filed the appeal. The appeal has been filed on the following grounds. The appellants adopted the trade

mark ""Sadhoo Bedi"" and the device of a Sadhoo and duly registered under No. 144760 in class 34 since 1950 and had been continuously using the

same without any interruption. The appellants trade mark has become distinctive and the public associate the goods bearing the trade mark Sadhoo

with the appellants only and with none else.

The appellants have spent huge amounts towards advertisement expenses and the goods bearing the said trade mark has thus acquired wide

reputation among the public. The grounds of appeal are that the impugned order is against the provisions of the Act, that the appellants are using the

trade mark since 1950 whereas the 1st respondent adopted the trade mark only in 1983 and that the appellants are the prior adopters and users of the

trade mark; that the marks and the goods being identical there was every possibility of confusion being caused and registration would be in

contravention of Section 11(1) of the Act; that the 1st respondent is not entitled to the benefit of Section 12(3) and Section 18(1) of the Act; that the

decision of the Apex court relied upon by the Registrar is irrelevant as the facts are different. The appellants, therefore, prayed that the appeal be

allowed setting aside the order of the Assistant Registrar dated 7th September, 2001.

The 1st respondent filed their reply stating that they adopted the trade mark Sadhu Bidi label on 1st April 1983 for their business of manufacturing

and marketing of Bidies. They had been carrying on extensive business in the major part of the country. By long and continuous use the trade mark

Sadhu Bidi"" is associated with the 1st respondent among the public. The mark has acquired distinctiveness by long user. The sales turnover runs to

several lakhs of rupees. The 1st respondent has spent huge amount towards publicity and has thus acquired wide reputation. The appellant's goods are

not on sale in the State of Uttar Pradesh. The 1st respondent had been selling the goods bearing the impugned trade mark in Uttar Pradesh for two

decades without any interruption and as such entitled for registration under Section 12(3) of the Act. The respondent had not copied the appellants

trade mark as it was not available in the State of Uttar Pradesh and so were not aware of such trade mark. The judgment of the Supreme Court

reported in AIR 1963 SC 1862 referred to in the impugned order squarely applies to this case. The order passed by the Assistant Registrar is in order

and that the appeal be dismissed.

The appeal was filed before the Hon'ble High Court of Delhi in CM(M)705/2001 and the same was transferred to this Appellant Board pursuant to

the provision of Section 100 of the Trade Marks Act 1999 and renumbered as TA/182/2003/TM/DEL.

We have heard the matter on 19.08.2008 in the Circuit Bench at New Delhi. Learned Counsel Shri C.N. Sreekumar appeared on behalf of the

appellant and learned Counsel Shri S.K. Bansal appeared on behalf of the 1st respondent.

Learned Counsel for the appellant vehemently contended that the Durex case by the Supreme Court reported in AIR 1963 SC 1882 was not

relevant to this case as the facts were totally different. The counsel referred to the impugned order and submitted that the 1st respondent was not

entitled for registration under Section 12(3) of the Act. There was no special circumstances proved by the 1st respondent to take advantage of the

benefit of Section 12(3) of the Act.

The counsel further submitted that even if there was a slight variation phonetically the marks could not be registered, where the marks being

identical and goods being identical, there are every possibility of confusion being carried. In this context, the appellant relied on the judgment reported

in in K.R. Chinna Krishna Chettiar v. Sri Ambal & Co. and in N. Arumugam Pillai v. K.S. Syed Abbas.

The burden to prove that the mark if registered would not cause any confusion would be on the applicant i.e. the 1st respondent, was the other

submission of the counsel and he relied on the judgment reported in AIR 1980 Delhi 125 in Dyer Meakin Brewaries Ltd. v. The Scotch Whisky

Association.

The other submission was that the subsequent registration of an identical mark to the earlier mark, then the subsequent registration becomes

wrong in Lakhpat Rai Sampat Rai Sadh v. dhanpat Rai Goel and Anr.

Finally he reiterated that the judgment referred to in the impugned order was not relevant to this case as the goods were different in that matter

whereas the goods are same herein in the case on hand.

The counsel further submitted that as per Section 11 of the Act, a trade mark shall not be registered if the rival marks are likely to deceive or

cause confusion. Here the marks being identical and the goods being the same, there was every possibility of confusion and deception being caused.

Referring to Section 12 of the Act, the learned Counsel submitted a trade mark shall be registered only under special circumstances if any trade mark

either similar or identical is already registered in respect of any goods similar or identical.

The benefits of Section 12(3) as special circumstances also does not help the 1st respondent as the appellants had been using the impugned trade

mark since 1950 whereas the 1st respondent started using the trade mark only in the year 1983. As a prior adopter and user of the trade mark the

appellants rights are to be protected.

The learned Counsel for the 1 respondent submitted that there was no legal error in the impugned order of the Registrar and ought not to be set

aside. The trade mark ""Sadhu"" was not an invented word. The 1st respondent further submitted that the registration of the trade mark in favour of the

appellant will not prove use of the trade mark. Referring to Section 18(4) of the Trade Marks Act, 1999, the learned Counsel submitted that as per the

provisions of the Act, the Registrar had granted registration imposing condition as to area restrictions. He also referred to Section 12 of the 1999 Act

and submitted that under special circumstances when there is concurrent user of the mark the mark could be registered even if there is already a

mark registered. The counsel further submitted that even though the appellants claim to be the registered proprietors of the impugned trade mark they

have not filed any registration certificate either before the Registrar of Trade Marks or before this Hon'ble Appellate Board.

The counsel submitted that as per the condition imposed by the Registrar, the labels are to be used as a composite mark as per Section 17 of the

Trade Marks Act 1999. The 1st respondent submitted that both the label marks are different. The appellants have not proved any use either in Uttar

Pradesh or in any northern part of India.

The applicants have not produced any evidence to prove confusion or deception by the 1st respondent's use of the trade mark. The 1st respondent

submitted that they adopted the trade mark on 01/04/1983 and had been using the same since then continuously without any interruption. The counsel

further submitted that the appellants goods bearing the trade mark ""Sadhoo Bidi"" are not available in Indian markets and that the sale figures furnished

are also not correct.

The 1st respondent relied on the judgment reported in in Amritdhara Pharmacy v. Satya Deo Gupta to support his contention that under special

circumstances of long user the Registrar allowed his application for registration as per Section 12(3)of the Act.

In reply to the contention of the appellant that his mark was already registered and that the present application ought not be registered as the

marks were identical, the 1st respondent submitted that by long use the mark had gained reputation and he relied on the judgment reported in 1984

Arbitration law reporter at page 214 in Kores(lndia) Ltd. v. Khoday Eshwarsa Son and Anr.

The burden of establishing that there was no possibility of confusion doest not arise in the case of honest concurrent use and the counsel relied on

in support of his claim. The 1st respondent also submitted that his mark has been on the register for a long time and that it ought not be removed and

relied on the judgment reported in 2000 PTC 561 (DB) in Hindustan Pencils Private Limited v. Universal Trading Co. and 2001 PTC (98) Delhi in

Vrajilal Manilal & Co. v. Bansal Tobacco Co.

Registration under Section 12(3) could be justified even if the use of the mark will result in confusion.

The counsel for 1st respondent finally submitted that the appellants till date have not taken any legal action against the 1st respondent. The counsel

also submitted that the Registrar had passed an order exercising his discretionary power and prayed that the appeal be dismissed.

We have carefully considered the arguments of both the counsel and have also gone through the documents filed before the Registrar. The

impugned order has been passed under the provisions of Section 12(3) and 18(1) of the Act.

As per the dictum of Lord Tomlin, the following factors are to be taken consideration for allowing an application for registration under Section

12(3) of the Act:

(a) The extent of concurrent user;

(b) the quantity and the are of trade;

(c) The degree of confusion likely to ensue from the resemblance of the marks, which is, to a large extent indicative of the measure of public

inconvenience;

(d) Honesty of concurrent use;

(e) Whether any instances of confusion have been proved;

(f) Relative inconvenience which would be caused if the mark in suit was registered, subject, if necessary, to any conditions and limitations.

The above factors are not the determinative criteria in every case. The provision of Section 12(3) permits registration by more than one proprietor

of identical or similar trade marks in respect of same or similar goods. The prohibition contained in Section 11 of the Act is an exception and the

provision of Section 12(3) overrides the above. Sub-section (3) of Section 12 of the Act is an exception to Sub-section (1) of Section 12 of the Act.

The use and adoption of the trade mark must be honest. The use should also be continuous one. Generally a subsequent circumstances, it is

considered to be honest. Here in this instant case, we find that the appellants though have said to have registered the trade mark have not produced a

copy of the registration certificate neither before the Registrar in the opposition proceedings nor before us in the appeal stage. The appellants have

produced some bills and invoices only for the business carried on in the Southern part of India and not a single bill or invoice to prove their use in

Northern part of India.

The extent of continuous use under the provision of Section 12(3) of the Act should be over a considerable period of time in the case of identical

marks and similar goods. The appellants have been using the trade mark since 1950 whereas the respondents have been using since 1983. A short

period of concurrent use with special and exceptional circumstances will enable the subsequent user to be registered despite the fact that the earlier

mark remained on the Register. Here, the special circumstances is that the trade mark when applied for registration was in use for considerable length

of time.

The application for registration generally is allowed under this provision on the basis of honest concurrent use or other special circumstances. The

Registrar has used his discretionary power and granted registration with some conditions or limitations imposed. Where the marks and the goods are

same triple identity arises and if the area also is same the registration cannot be allowed. But in the instant case, the area is totally different the

appellants are in the Southern part of India and the sales by the 1st respondent is only in the State of Uttar Pradesh, the Registrar has, therefore,

granted registration with a condition that the sale be confined to the State of Uttar Pradesh.

The general principle is that in an application for registration the burden will be on the applicant to prove no confusion will occur if the mark is

registered. In the case of registration under Section 12(3) of the Act, confusion or instances of confusion are irrelevant if the applicant's use is honest

and is entitled to get the mark registered under special circumstances. The Supreme Court had also expressed the same view in London Rubber Co.

v. Durest Products. In this case, it is also seen that the appellants have had their sale only in the Southern part of India whereas the 1st respondents

have restricted their business to the State of Uttar Pradesh and so there is no confusion being caused among the public. It is also worth mentioning

that the appellants have not denied the fact that they have any business outside Southern part of India or in Uttar Pradesh.

The trade mark ""Sadhu"" is part of their company's name? Sadhu Beedi company is, therefore, entitled for registration under the provision of

Section 12(3) of the Act.

Coming to the provisions of Section 18 of the Act, any person who applies for registration of a trade mark must be a proprietor of the trade mark.

The 1st respondent has adopted the trade mark independently as the appellants on their own admission though pleaded that they have sales in India

and abroad have not produced any document to prove use outside South India. We, therefore, are of the view that the 1st respondent's adoption is

honest.

The 1st respondent is, therefore, the proprietor of the trade mark ""Sadhu"" under the provisions of Section 18 of the Act. We, therefore, find that there

is no infirmity in the order of the Assistant Registrar. The Registrar has also imposed area restrictions and granted registration.

In view of the above, we dismiss the appeal upholding the order or the Assistant Registrar dated 7th September, 2001. However, there shall be no

order as to costs.