Sandys Confezioni S.P.A vs Tata Engineering And Locomotive Co. Ltd.

S. Jagadeesan, J

The appellants have filed this appeal against the order of the Deputy Registrar of Trade Marks, New Delhi dated 14.11.1986.

The appellants herein SANDYS CONFEZIONI S.P.A., an Italy based company, filed an application No. 360539 seeking the registration of the

trademark letters 'S' 'T, which appears like a geometrical device in respect of 'articles of sport clothing'. The application was advertised in the Trade

Marks Journal No. 775 dated 16.9.1981 at page 376. The first respondent herein M/s. TATA ENGINEERING & LOCOMOTIVE CO. LTD., on

2.11.1981, filed their notice of opposition protesting the registration of the impugned mark on the ground that they are the proprietors of various

trademarks consisting of letter T' as its essential feature in respect of various goods under Nos. 279758, 297008, 299109, 300234, 345810, 345812,

345824 and 345828 and that their application for registration of T' trademarks in classes 6, 7, and 11 are pending and they are using the said trademark

continuously for the past many years and the said trademark had come to be identified and associated exclusively with them. The letter T (hollow) in a

circle with the words TATA ENGINEERING is the first respondent's house mark and the impugned mark is deceptively similar to that of the first

respondent's mark. The registration of the impugned mark will be contrary to Sections 9, 11, 12(1), 18(1) and Rule 44(b) of the Trade and

Merchandise Marks Act, 1958. The appellants herein filed their counter refuting the statements made by the first respondent and further stating that

the appellants have their trademark 'ST' monogram and they have registered the same in several countries and they are using the same wherever it

was registered and further they stated that the channels of trade and the class of purchasers for their goods are different from the channels and

purchasers of the first respondent's goods. The first respondent filed evidence in support of opposition by way of an affidavit by Shri Ravindranath

Dattatraya Kulkarni. Similarly the evidence of the appellants in support of their application is by way of an affidavit by Sergio Tacchini. The first

respondent filed a reply again by way of another affidavit in the name of Shri Ravindranath Dattatraya Kulkarni and thereafter, the matter was heard

by the Deputy Registrar. Before the Deputy Registrar of Trade Marks, the first respondent confined to the objections based on Rule 144(b) and

Sections 9 and 11(a). After hearing the learned Counsel, the Deputy Registrar overruled the objection of the first respondent under Rule 144(b) as

well as under Section 9. Even though the objection under Section 18(1) has been given up as per statement of the Deputy Registrar in the impugned

order, he proceeded to discuss the same and ultimately found that the said objection also without any merit. The Deputy Registrar ultimately found that

objection under Section 11(a) can be sustained and rejected the application of the appellants. As against the same, the appellants filed an appeal

CM(M) 61/1987 on the file of Hon'ble High Court of Delhi, which was transferred to this Appellate Board by virtue of Section 100 of the Trade

Marks Act, 1999.

We heard the learned Counsel Shri Sanjay Jain, on behalf of the appellants and Shri N.K. Anand, the learned Counsel for the first respondent. The

learned Counsel for the appellants contented that the first respondent's mark ""F is within a circle, whereas the appellant's mark consists of two letters

'S' and T'. The letter 'S' is written in a fashion with the letter 'T forms the impugned trademark. The impugned trademark is totally different from that

of the appellant's mark and further the appellant's goods are also different, Section 11(a) of the Trade and Merchandise Marks Act, 1958, is not

attracted. He also relied upon the Bombay High Court Judgment inS ony Kabushiki Kaisha v. Shamrao Maskar and Ors. PTC (Suppl) (1) 622(Bom) :

AIR 1985 Bombay 327 and in National Sewing Thread Company Limited, Chidambaram v. James Chadwick and Brothers Limited PTC (Suppl)(1)

475(SC) : AIR 1953 SC 357 ;and in Rustom Ali v. Bata Shoe Company AIR 1957 Cal. 120 for the principle that when the goods or the description of

the goods are different, there cannot be any confusion or deception and as such the trademark can be registered.

On the other hand, the learned Counsel for the first respondent contented that the first respondent's mark letter 'T' is their house mark. Hence, the

same should be protected as their mark and they had been using the said mark for considerably a long period and all their goods including the Road

Transport vehicles are recognised with the said trademark. He also contented that with this trademark, the first respondents are able to build up a very

good reputation and goodwill. He further contended that both the marks are identical and as such, the impugned mark, even though relates to different

goods, cannot be registered in view of the judgment of the Delhi High Court in Daimler Benz Aktiegesellschaft and Anr. v. Hybo Hindustan 1994 (14)

PTC 287 (Del).

We have carefully considered the above contentions of both the counsels. The Deputy Registrar has found that though the goods are different but

still there can be some probability of confusion or deception in the minds of the public because of the similarity of the two marks. In fact, to see the

similarity of both the marks, we are placing the marks side by side hereunder.

Appellant's Mark First Respondent's Mark

???

The appellant's mark though consisting of two letters 'S' and T, for a look one has to strain too much to identify the letter 'S', For a bare look, it looks

as if 'T' is within a circle as that of the first respondent's mark. The small gap on either side of the appellant's mark is not so prominently visible. One

should not strain to differentiate or distinguish the trademark. Obviously, this principle is to help the individual to identify the trademark in respect of the

goods easily in order to distinguish the proprietors and their goods. We are of the view that both the marks are almost similar and there is not much

difference to make the appellant's mark a distinctive one from that of the first respondent's house mark. On this ground itself, the application of the

first respondent is liable to be rejected, as the registration would be in violation of Section 11(a) of the said Act.

Even apart from this, the main contention of the learned Counsel for the appellant is that the trading channel and their goods being different from

that of the first respondent, appellant's mark can be registered as there is no possibility of any confusion. Admittedly, the appellant has no sales in

India. They have registered their mark in various countries. The appellants have not let in any evidence to establish that they have acquired any trade

reputation or goodwill in India. They want to register the impugned mark as proposed user and when they want to have the trademark afresh, they can

adopt a non-offending trademark. The first respondent is a well reputed concern dealing in automobiles and also several other goods such as

automobile spare parts, excavators, machine tools, industrial shutters and fork lifts, industrial tractors, etc. The first respondent having established their

goodwill and reputation all over India naturally are entitled to have their trademark safeguarded and protected. If the impugned mark is registered as

the sports-wear mark, it may lead to the public that the sports-wear of the appellant are from the factory of the first respondent and this will lead to

confusion and deception in the minds of the public as to the proprietor of the goods. We do not want to elaborate the principle except to refer the

familiarly known 'Benz Case' (AIR 1994 Delhi) in Daimler Benz Aktiegesellschaft & Anr. v. Hybo Hindustan 1994 (14) PTC 287 (Del), wherein the

learned single Judge held that the name 'Benz' as applied to a car has a unique place in the world and there is hardly one who is conscious of

existence of the car/automobiles, who would not recognise the name 'Benz' used in connection with cars. Thus, the name 'Benz' used for the under-

garments cannot be permitted. In fact the said judgment was confirmed by the Supreme Court also. Though it is by way of an interim order, in a case

of infringement, the principles laid down by the learned Judge can be taken as guidelines to decide the cases of registration also at times. The Hon'ble

High Court of Delhi in yet another case Honda Motors Company Ltd. v. Charanjit Singh and Ors. 2003 PTC 40 8similarly held that the name Honda,

which has the distinctiveness, quality and goodwill of plaintiff in respect of their car cannot be permitted to use by the defendants in respect of their

goods namely, pressure cooker. Following the above principles, we are of the view that the Deputy Registrar of Trade Marks had rightly rejected the

application of the appellant for registration of the impugned mark. Accordingly, we confirm the same. Consequently, the appeal is dismissed. No costs.