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Judgment
S. Jagadeesan, J
The appellant filed this appeal aggrieved by the order of the Assistant Registrar of Trade Marks dated 27.8.1992 dismissing their opposition DEL-
4662.
First respondent herein filed application No. 374126 on 30.3.1981 for registration of the trade mark 'SONICO' with the first letter 'S' and the last
letter 'O' in bold and double the size of the other letters in respect of rubber bushes for use in automobiles included in class 12 of the Fourth Schedule
of the Rules framed under the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). First respondent claimed user since
28.12.1980. The said application was advertised before acceptance in Trade Marks Journal No. 895 dated 16.9.1986 at page 481. On 17. 12.1986 M/s
Sony Kabushiki Kaisha trading as M/s Sony Corporation, joint stock company organized under the laws of Japan gave notice of their intention to
oppose the registration of the impugned mark on the ground of its violative of sections 9, 11, 12 and 18 of the Act. First respondent filed their counter
statement denying all the material objections raised by the appellant. The appellant filed evidence in support of their opposition and the first respondent
also filed evidence in support of their application by way of affidavits annexing some documents. After the completion of formalities the matter was
listed for hearing by the Assistant Registrar on 12.2.1992. After hearing the respective counsel, the impugned order was passed rejecting the
objections raised by the appellants and found that the impugned mark is invented word having no meaning, thereby with reference to or quality of the
goods and as such the objection under section 9 is not maintainable. Though the Assistant Registrar found that the impugned mark is identical to the
registered trade mark of the appellant, but he held the objection under section 12(1) of the Act cannot be maintained as the goods are entirely
different. The objection under section 11(a) cannot be sustained on the ground that the impugned mark is not similar both visually and phonetically to
that of the appellant's trade mark. The difference between the two trade marks coupled with the difference in the nature of goods of the first
respondent will avoid any likelihood of confusion. Lastly the objection under section 18(1) of the Act of the appellant was overruled on the ground that
the first respondent adopted the trade mark 'SONICO' from their trading style Soni Industrial Corporation by taking its first word 'SONI' and 'CO'
from the word corporation and further the goods of the first respondent being different, the objection was without any merits.
Aggrieved by the order of the Assistant Registrar of Trade Marks the appellant filed appeal in CM(M) 67/93 on the file of High Court of Delhi at
New Delhi and the same has been transferred to this Board by virtue of section 100 of the Trade marks Act, 1999 and numbered as TA/313/2004.
The appeal was listed for hearing on 15.2.2005 during the sitting of the Board at Delhi. Learned counsel Shri A.R.Lall assisted by Ms. Anjula
Chopra appeared on behalf of the appellant and learned counsel Shri V.P. Ghiraiya appeared on behalf of the first respondent.
5 . Learned counsel for the appellant with all force contended that the appellant's mark 'SONY' has attained international reputation and thereby
globally it is a well known mark. The appellant has registered the mark in respect of electronic goods under class 9 of the Fourth Schedule. When
once the trade mark of the appellant is a globally well known mark, the use of an identical mark by anybody would dilute such reputation of the
registered mark of the appellant which cannot be permitted. He based his argument relying upon Corn Products Refining Co. v. Shangrila Food
Products Ltd., case AIR 1960 SC 142 where the learned judges of the Supreme Court held that the mark applied for registration 'Gluvita' for biscuits
cannot be permitted to be registered on the objection raised by the registered trade mark proprietor of 'Glucovita' for glucose, finding that the
commodities are so connected as to make a confusion or deception likely in view of the similarity of the two trade marks. He also relied upon the
judgment in the case of Banga Watch Company, Chandigarh v. N.V. Philips Eindhoven, Holland AIR 1983 Punjab and Haryana 418 where the
registration of the trade mark 'PHILIPS' in respect of timepieces and wall clocks was refused on the ground that the same was used extensively with
respect to radios. He also relied upon the judgment of the Delhi High Court in Daimlet Benz Aktiegeselleschaft v. Hybo Hindustan AIR 1994 Delhi
239 wherein the learned Judges held that the trade mark 'BENZ' was extensively used with respect to automobiles and the use of an identical mark
with respect to under garments 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 was confirmed by the Supreme Court. He also relied upon another judgment of
Division Bench of Madras High Court in Caterpillar Inc., US v. Jorange and Anr. 1998 IPLR 326 where the learned Judges held that the use of
'Caterpillar' name for readymade garments in India would amount to passing -off since the name of 'Caterpillar' is registered in respect of heavy
vehicles which name had earned reputation and goodwill worldwide.
6 . On the contrary the learned counsel for the first respondent contended that the Assistant Registrar had applied his mind carefully and found that
there cannot be any confusion either among trade or among the public in view of the goods of different nature and also that there is a slight distinction
between the two marks. The appellant claimed that they are using the mark 'SONY' whereas the first respondent 's mark being 'SONICO', definitely
there cannot be any confusion in the trade. The appellant having registered the mark 'SONYCO' had never used the same in respect of any of the
goods. They are using the trade mark 'SONY' only which is different from that of the registered mark. He also relied upon the judgment in the case of
Sony Kabushiki Kaisha v. Shamrao Maskar and Ors. AIR 1985 Bombay 327 wherein the learned Judge held that the registration of the mark 'SONY'
in respect of nail polish sought by the respondents in the said case is not likely to cause confusion or deception in the minds of the customers of
electronic goods like television, tape recorders etc., by the petitioners, a joint stock company of Japan under the mark 'SONY'. He also relied upon the
judgment of this Board in the Nutrine Confectionary Company Limited v. Ayyan Fire Works Factory Private Limited 2004 (29) PTC 620 where we
held that the appellant therein has miserably failed in supporting the claim that its mark is a well known trade mark and as such it deserves to be
vested with exclusive monopolistic right for the mark relatable to the word 'BUNNY'.
7 . We have carefully considered the above contentions of both the counsel. At the outset we have to distinguish the judgment of the Bombay High
Court in AIR 1985 Bombay 327 where the SONY company is the appellant on the short ground that the present trend of development of law is totally
different which is very clear from the judgments cited by the learned counsel for the appellant, especially the Caterpiller case and Benz case.
So far as the reputation of the registered mark of the appellant is concerned, the Assistant Registrar in page 7 of his order has found as follows:-
There can be no doubt about the use and reputation of the trade mark 'SONY' all over the world including India in respect of goods mentioned
above"".
The goods mentioned are electrical as well as electronic goods like television, video cassette recorders, television cameras, music system, radio, etc.
9 . The learned counsel for the first respondent did not advance any argument challenging the finding of the Assistant Registrar. He also did not
advance any argument that the appellant's mark is not a globally well known one. His main argument was that the appellant registered the mark as
'SONYCO', but used the mark 'SONY' only, thereby the registered mark in class 9 has never been used and as such the said registered mark of the
appellant cannot be said to be a globally well known mark or the same has attained worldwide reputation. The other contention put forth by the
learned counsel for the first respondent is that the goods are different. The first respondent also got registration of their mark 'SONICO' under the
provisions of Copyright Act, 1957 in respect of three separate marks for radiator carton, gaskets carton and bearing carton respectively.
The appellant in their opposition has clearly stated that they are the proprietors of the trade mark 'SONY' and they have extensively used the same
in respect of various electrical and electronic goods. Further the word 'SONY' also forms part of their trading style. The impugned mark consists of
the word 'SONICO' which includes whole of the appellant's mark 'SONY' and is identical to 'SONYCO', of which the appellants are the registered
proprietors. So far as the similarity of goods are concerned, the Assistant Registrar in page 5 of his order clearly found that he has no hesitation in
coming to the conclusion by mere visual as well as phonetic representation of the mark that both the marks are identical marks. When it is the case of
the appellant that they are the proprietors of the trade mark 'SONY' as well as the trade mark 'SONYCO', the objection of the learned counsel for the
first respondent that the appellants are using the trade mark 'SONY' and not the word 'SONYCO' registered in class 9 cannot be sustained.
Apart from the fact that the mark 'SONY' of the appellant and the mark 'SONICO of the first respondent do not have any difference, as admitted
by the first respondent, the letters 'C' and 'O' is taken only from the word corporation. The word corporation is a general term being used by everyone.
Hence in respect of the same they cannot claim proprietorship. If that is excluded from the mark of the first respondent only the word 'SONI'
remains. If that is compared with the mark of the appellant 'SONY', we do not find any difference to distinguish the same.
As already observed, the Assistant Registrar of Trade Marks while dealing with the objection under section 12(1) of the Act held as follows:-
I have no hesitation in coming to the conclusion that by mere visual as well as phonetic representation of the mark that both the marks are identical
ones"".
So it is a categorical finding that both the marks are visually and phonetically similar. But when he deals with the objections under section 11(a) of the
Act, he makes out the differences between the marks as follows:-
Applicant's trade mark 'SONICO' as has been represented in the representation of their application consists of the first alphabet 'S' and the last
alphabet 'O' in bold letters, double in size than that of other letters . This special representation of the word 'SONICO' makes it visually and
phonetically different than that of the opponents trade mark SONY"".
When it comes to the objections under section 11 of the Act the Assistant Registrar had a different view with regard to the similarity of the marks.
However, both the findings are mutually contradicting which reveals the inconsistency in the mind of the Assistant Registrar of Trade Marks which
also vitiates the impugned order.
A perusal of the impugned order of the Assistant Registrar clearly indicate that he proceeded apparently on the basis that the goods are different,
appellant's goods are electronics falling in class 9 whereas the goods of the first respondent are rubber bushes in class 12. It is not necessary to repeat
the judgments relied upon by the learned counsel for the appellant. If we have a glance at Daimler Benz case AIR 1994 Delhi 239 ,the principles laid
down therein is that if a globally well known mark is used by another in respect of different kinds of goods, still there will be confusion in the market.
The same principles were laid down in Caterpillar Inc. 1998 PTC 31=1998 IPLR 326. Even in Honda Motors Company Limited v. Charanjit Singh and
Ors 2003 (26) PTC 1 the High Court of Delhi has held that the plaintiff's mark Honda has acquired a global goodwill and reputation and the said name
is associated with the plaintiff especially in the field of automobiles and power equipments and as such the same trade mark 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.
From the above principles it is very clear that irrespective of the goods being different, if the use of a well reputed trade mark by others is
permitted, the same would dilute and deface such goodwill and reputation of the registered trade mark, which cannot be permitted.
15 . In view of the above enlightened principles of various High Courts and the Supreme Court, we are of the view that the impugned order of the
Assistant Registrar rejecting the opposition of the appellant cannot be sustained. Accordingly the appeal is allowed. The application of the first
respondent for registration of the mark 'SONICO' is rejected.