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Judgment
Syed Obaidur Rahaman, Technical Member
This is an appeal filed by the Appellant/Petitioner Soongachi Tea Industries Pvt. Ltd. against the order dated 5.9.2000 of the Assistant Registrar of
Trade Marks, Delhi. In that order the opposition No. DEL-T-793/52241 was disallowed and Application No. 551031 in class 30 was accepted to be
proceed to registration and also awarded a cost of Rs. 102 to the applicant.
The Appellant's case is that it was the owner of the registered trade mark 'SONA'. An application filed by M/s. Kasturilal Bharat Bhushan the
alleged predecessor in title of the Respondent No. 1, on 13.5.1991 sought for registration of trade mark GOLD LEAF in respect of tea included in
class 30. The Respondent No. 1 claimed the user of the mark since 1.4.1987. The said application was ordered to be advertised before acceptance
and the same was advertised in the Trade Marks Journal No. 1168 dated 1.2.1998 at page 2051 with condition of disclaimer of word of LEAF.
On 4.5.1998, the Appellant gave notice of its intention to oppose the registration on the ground that the mark is violative of the provisions of the
Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act).
The learned Assistant Registrar of Trade Marks took up the matter for hearing on 28.3.2000. In that hearing, the learned Counsel for the opponent
submitted that the opponent is the registered proprietor of trade mark SONA under No. 407039 as of 23.6.1983 in respect of tea and had been using
the trade mark SONA since 1978. The mark applied for namely, GOLD LEAF is consisting of the word GOLD which means SONA in Hindi, hence,
the mark applied for is deceptively similar to that of the opponent's already registered trade mark in the same goods, namely, tea. The mark applied for
is prohibited under Section 12(1) of the Act. The opponent had been using the trade mark SONA extensively in respect of its goods, namely, tea and
the opponent has also given the sale figure since the year of 1978-79 to 1998-99. The mark applied for registration is likely to deceive or cause
confusion amongst the consumers. Hence, the registration is also barred by operation of Section 11(a) of the Act. Further the applicant adopted the
mark applied for dishonestly, in order to take benefit of the reputation of the opponent's trade mark SONA. The Appellant has no claim to the
proprietorship of the mark applied for which is dishonestly adopted. He also contended that the applicant has no entitlement for concurrent registration
even under Section 12(3) of the Act. The learned Counsel for the opponent relied upon the decision dated 28.2.1997 taken by the Assistant Registrar
of Trade Marks at Trade Marks Registry, Kolkata in relation to opposition No. CAL-2537.
On the other hand, the applicant's case is that the predecessors of the applicant adopted the trade mark applied for on 1.4.1987 and since then it had
been used by it till 28.8.1997. Also submitted that thereafter the mark applied for was assigned to the applicant who had been using the same
continuously and extensively. In support of his submission, the counsel referred to the affidavit containing relevant figure of sales of goods under the
mark applied for. The Appellant argued vehemently that the mark applied for is totally different than that of the opponent's registered trade mark
SONA. The learned Counsel for the opponent submitted that the registered trade mark SONA is in a very special and particular artistic work. Also
the case is that mark SONA when compared as a whole with the mark GOLD LEAF does not have the same meaning of the word SONA.
Therefore, the learned Counsel contended that in view of the mark applied for being different than that of the opponent's, the objection of the Section
11(a), Section 12(1) and Section 18(1) of the Act, raised by the opponent are not maintainable.
The Assistant Registrar took the view in the instant case, that the mark applied for is GOLD LEAF, while the opponent's registered trade mark is
SONA and the word SONA is the Hindi word equivalent to the word GOLD and not GOLD LEAF. As aforesaid while determining deceptive
similarity, both the marks have to be compared as a whole. Thus, while adjudging the similarity based upon the idea conveyed by the respective marks,
the tribunal has to consider the idea of both the competing marks taking them as a whole. In the instant case, the word SONA, as aforesaid, never
means GOLD LEAF.
A consumer who is well acquainted with the opponent's trade mark SONA is, if confronted with the applicant's trade mark GOLD LEAF, it
appears to be an unusual approach to the human thinking, if it is assumed that the same consumer shall be in the state of wonder by seeing the
applicant's mark GOLD LEAF because the word SONA means gold.
Also relied upon the Amritdhara Pharmacy v. Satyadev AIR 1963 SC 449, in which the words 'Amritdhara' and 'Lakshmandhara' were held to be
similar, but registration of 'Lakshmandhara' was allowed on the basis of honest concurrent use.
Applying the above ruling of the Hon'ble Supreme Court, the mark applied for cannot be splitted into GOLD and LEAF and then equating the word
GOLD with the opponent's trade mark SONA. Therefore, in accordance with the above reproduced principle, the mark applied for, namely, GOLD
LEAF taking as a whole is totally different then that of the opponent's trade mark SONA.
In the light of the above findings of this tribunal that the mark applied for, namely, GOLD LEAF was totally different then that of the opponent's
trade mark SONA, as discussed above.
Firstly, he took up the issue under Section 11(a) of the Act. This Sub-section prohibits the registration of the trade mark, which is likely to deceive
or cause confusion. In the view of the Assistant Registrar of Trade Marks, since the tribunal has already held that the mark applied for is totally
different then that of the opponents trade mark SONA, hence, there appears to be no likelihood of any confusion or deception in the minds of the
consumers in spite of the fact that both the marks are used in respect of the same goods, namely, tea. The registration of the mark applied for is,
therefore, not barred by the provisions of Section 11(a) of the Act.
The Assistant Registrar of Trade Marks then came to the issue under Section 12(1) of the Act. This Sub-section prohibits registration of a trade
mark in the name of some other proprietor and also in respect of the same or same description of goods as that of under the registered trade mark in
the name of that other proprietor. It has already been held that the mark applied for is totally different then that of the opponent's already registered
trade mark, hence the prohibition under Section 12(1) of the Act against the registration of the mark applied for is not maintainable.
Then he come to the issue under Section 18(1) of the Act. This Sub-section provide that an application for registration of a trade mark must have
a definite claim to be the proprietor of the trade mark sought to be registered by him. A person can claim proprietorship of trade mark by its use or by
its registration. In the instant case, the applicants have claimed user of the mark applied for since 1.4.1987. The applicant has filed evidence in support
of its application by way of an affidavit dated 3.11.1999.
On the basis of this issue and in addition, the mark applied for, namely, GOLD LEAF for tea, being distinctive trade mark, hence, there cannot be
any legal infirmity in claiming the proprietorship of this trade mark, by the applicant even if the same is proposed to be used. Under these
circumstances the applicant has definite claim to be the proprietor of the trade mark applied for in terms of the provision of Section 18(1) of the Act.
The application for registration of the mark applied for is, therefore, in conformity with the provisions of Section 18(1) of the Act.
In view of the above, the Opposition No. DEL-T-793/52241 is disallowed and Application No. 5510331 in class 30 is accepted and the same shall
proceed to registration.
This appeal came up for hearing on 20.12.2006 before the Circuit Bench of the Appellate Board at New Delhi.
The learned Counsel Shri Sachin Gupta appeared for Appellant and learned Counsel Shri S.K. Bansal appeared for the Respondent No. 1.
The counsel for Appellant submitted that the Respondent has no locus standi to contest the present opposition proceedings, as there is no valid
deed of assignment in writing in favour of the assignee of the trade mark in question.
Also the Respondent No. 2 has committed a grave error in law by holding that the trade mark 'SONA' is totally different from the trade mark
GOLD LEAF and hence there appears to be no likelihood of confusion or deception in the minds of the consumers inspite of the fact that both marks
are in respect of tea. It is respectfully submitted that such reasoning is rather paradoxical and irrational. The trade mark 'SONA' in English means
'GOLD'. There is bound to arise considerable confusion amongst the public at large considering the trade origin of the Respondent's goods 'GOLD
LEAF' tea. There is every probability that consumers might well believe 'GOLD LEAF' tea to be the Petitioner's extended business venture or a
variation product considering that idea and impression conveyed by the trade marks 'GOLD', and 'SONA' is one and the same.
The mark 'LEAF' is non-distinguishing, generic and descriptive word, incapable of registration as a trade mark. The applicant has further
disclaimed any trade mark right in the said mark, and hence the competing trade marks are 'SONA' and 'GOLD'. The application is therefore, barred
under Section 11(a) of the Trade and Merchandise Marks Act, 1958 and the mark does not deserve registration being barred under this statute.
Also submits as per Section 12(1) of the Trade and Merchandise Marks Act, 1958, which prohibits registration of a trade mark which is either
identical or deceptively similar to an already registered trademark in respect of the same or same description of goods as that of the registered trade
mark in the name of another proprietor. As is apparent from the submission made and evidence filed by the Petitioner before the Trade Mark
Registry, the Petitioner enjoys a valid and subsisting registration of trade mark 'SONA' for tea in class 30. Moreover, the same has come to enjoy
tremendous popularity amongst consumers as is evident from the voluminuous sales figure. The consumers, therefore, associate the trademark
'SONA' with goods of the Petitioner and none other. The mark 'GOLD LEAF', where in the word 'LEAF' has been disclaimed, does not qualify for
registration being barred by Section 12(1) of the Trade and Mechandise Marks Act, 1958. Disclaimer of the word 'LEAF' leaves only the word
'GOLD' which is nothing but a mere translation of the Hindi word 'SONA' to its equivalent in the English language.
As submitted earlier, this results in the mark 'GOLD LEAF' being deceptively similar to the registered mark 'SONA' with regard to the goods
'TEA'.
The Appellant averred in ground D(i) of the appeal that the Respondent No. 2 has further erred by adjudicating incorrectly on the opposition. The
Respondent No. 2 placed reliance on AIR 1963 SC 449 (Amritdhara Pharmacy v. Staya Deo.) The principle laid down by the Supreme Court has
been incorrectly applied to the case at hand. The trade marks in question in the above mentioned case were 'Amritdhara' and 'Laxmandhara' and
while laying down the tests for judging which trade names are likely to deceive and cause confusion, the Apex Court held that the trade marks were
deceptively similar.
Registration of the mark 'Lakshmandhara' was allowed as the case fell under 'special circumstances' owing to the fact that there was
acquiescence on part of the proprietor of 'Amritdhara' in allowing 'Lakshmandhara' to grow in business.
In the ground D(ii) also it is submitted that as has been elucidated above, the facts of the case at hand do not attract the above cited principle. In
fact the Court did hold the marks to be deceptively similar. In the instant case, as has been submitted earlier, 'GOLD' is but a mere translation of the
Hindi word 'SONA' and is undoubtedly deceptively similar and the word 'LEAF' is subjected to a disclaimer.
Secondly, there is no acquiescence on part of the Petitioner who has in fact been extremely diligent in safeguarding his proprietary rights.
Moreover, this case does not fall under the category of 'special circumstances' nor has it been pleaded to be so.
Furthermore, in taking plea in the appeal, the Respondent No. 2 has also erred while adjudicating on the issue under Section 18(1). The
Respondent No. 2 has completely ignored contradictory facts stated in the affidavits of the Respondent No. 1, which facts have resulted in the
Respondents failing to establish definite proprietary right to the trade mark applied for.
The affidavit of the applicant states that the sale figures for the same period as year-wise sale of M/s. Kasturilal Bharat Bhushan and then for the
period 1997 to 1999 as year-wise sales of M/s. Takkar (India) Tea Co., but no sales figures have been provided for the interim period i.e. 1995 to
1997.
He also took up the point that the affidavit of the applicant states that the trade mark 'GOLD LEAF' had been used by his predecessor from
1.4.1987 to 28.8.1997.
He also took plea that the Respondent No. 2 has completely ignored the annunciation made in Balaji Chelliar v. Hindustan Lever AIR 1967 MAD
148 wherein the Hon'ble High Court of Madras held that trade mark 'SURIAN' similar to the mark 'SUN' as the former was only the Tamil equivalent
of the later.
He also relied upon the following judgments:
(a) 24 (1983) DLT 237, Hindustan Lever Ltd. v. Poiner Soap Factory
It was held by the Hon'ble High Court Delhi - Plaintiff prior user and adopter of trade mark 'SURYA' in respect of fluorescent tubes, lamps, bulbs,
chokes etc. -adoption of trade mark 'BHASKAR' with the device of Sun by the Defendant in respect of electronic chokes- confusion and deception.
In this case held the trade mark 'Sun' for washing soap as 'Suraj' (English translation of sun) and Defendant to be restrained from using mark till
disposal of suit.
(b) AIR 1941 Bom 3, J.C. Eno Ltd. v. Vishnu Chemical Co.
It was held that copy of words used as trade mark in any other language intended to deceive or likely to deceive can be restrained. Plaintiff
establishing exclusive right to use of words 'fruit salt' for saline manufactured by them. Defendants held could be restrained from using word 'falazar'
a Marathi translation of 'fruit salt' in respect of similar class of goods.
(c) 1997 PTC (17) 651, Madan Lal Arora v. Soni Udyog
In this case, Plaintiff sought injunction against Defendant for using trade mark 'LION BRAND' in respect of sale of goods of wire netting which is
similar to trade mark 'TIGER BRAND' of Plaintiff, identical, deceptive) and also passing off damages. Plaintiff acquired goodwill in use of trade mark
'TIGER'.
(d) AIR 1929 PC 11, Juggi Lal v. Swadeshi Mills Co.
It was held that the evidence is quite satisfactory to show that Plaintiffs' cloth was associated with the name of 'Lotus' and that any lotus deceive
would lead to cloth being able to be palmed off as their cloth which was the cloth of another manufacturer. There was perhaps a little difficulty as to
one of the emblems, where the emblem on the Defendants trade mark, if looked at properly was not a lotus but a rose; but it was not only the question
of the flower there; there was a garter-like enclosure with a straight line beneath and the whole get-up of the one was so like the whole get-up of the
other that their Lordships have no doubt that the Court below was right in making their injunction extended as it did (in this case the Court ordered for
damages).
(e) AIR 1960 SC 142, Corn Products v. Shangrila Food Products
It was held that in tests for determining, similarity of two marks. The question whether two marks are likely to give-rise to confusion or not is a
question of first impression. It is for the Court to decide that question. English cases proceeding on the English way of pronouncing an English word by
English men, which is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity. It is well
recognized that in deciding a question of similarity between two marks, the marks have to be considered as a whole.
Again in deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence and
of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably
likely to cause a confusion between them.
The absolute identity of the two competing marks or their close resemblance is only one of the tests for determining the question of likelihood of
deception or confusion. Trade connection between different goods is another such test. Ex hypothesi, this latter test applies only when the goods are
different. These tests are independent tests. There is no reason why the test of trade connection between different goods should not apply where the
competing marks closely resemble each other just as much as it applies where the competing marks are identical. Whether by applying these tests in a
particular case the conclusion that there is likelihood of deception or confusion should be arrived at would depend on all the facts of the case.
The Respondent applied for registration of the mark 'Glucovita' used with reference to biscuits manufactured by him. The Appellant who had been
using the registered mark, 'Glucovita' with reference to his glucose with vitamins opposed the application under Section 8(a). It was established that
the Appellants' trade mark had acquired a reputation among the buying public.
Held applying the above tests that the commodities concerned were so connected as to make confusion or deception likely in view of the similarity of
the two trade marks. Apart from the syllable 'co' in the Appellant's mark, the two marks were identical. That syllable was not such as would enable
the buyers in our country to distinguish the one mark from the other. Hence the Respondents' mark could not be registered.
(f) AIR 1965 SC 980 : PTC (Suppl) (2) 680 (SC), Durga Dutt Sharma v. N.P. Laboratories
It was held that 'In the course of trade', the question whether there has been an infringement is to be decided by comparison of the marks. Where the
two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the Plaintiff would
have to establish that the mark used by the Defendant so nearly resembles the Plaintiffs registered trade mark as is likely to deceive or cause
confusion and in relation to goods in respect of which it is registered.
(g) AIR 1963 SC 449, Amritdhara Pharmacy v. Satya Deo
It was held that the trade name likely to 'deceive and cause confusion'. Tests indicated. Tests indicated, overall similarity has to be considered. Trade
names 'Lakshmandhara' and 'Amritdhara' in respect of medicinal preparation for alleviation of various ailments - Word 'Lakshmandhara' held was
likely to deceive and confuse persons of the class who generally purchased such preparation. 'Lakshmandhara' widely advertised and sold for a long
time in particular state. Proprietors of 'Amritdhara' to grow in business. Held that there was 'acquiescence' to bring case within expression 'special
circumstances'.
On the other hand learned Counsel Mr. S.K. Bansal on behalf of Respondent No. 1 submits that the appeal is an abuse of process of law which
cannot be allowed. The learned Assistant Registrar of Trade Marks has rightly applied his mind to all the issues raised before him in the application
before him and after applying the right principles of law passed the impugned order. The impugned order is just and proper and no error of law or fact
exists therein. The impugned order deserves to be upheld.
He also taking the ground submitted that the averments made in para A is wrong and, therefore, denied and what has been stated in the counter
statement be referred to. He denied that the Respondent No. 2 committed grave and fundamental error in allowing the application for registration in
favour of Respondent No. 1. The Respondent No. 1 validly acquired the rights for the trade mark GOLD LEAF from their predecessors by way of
Deed of Assignment and accordingly it is wrong to suggest that the Respondent No. 1 has no locus standi to contest the opposition proceedings.
The counsel denied that the trade mark SONA in English means only gold. The trade mark SONA has many other meanings, such as sleep. The
word SONA is otherwise a common personal name in India. The allegations of confusion and deception are absolutely refuted. The also denied that
the idea and impression conveyed by the trade mark GOLD and SONA is one and the same. The trade mark of the Respondent No. 1 if compared as
a whole is not identical with or deceptively similar and Section 11(a) is, therefore, not a bar to the Respondent No. 1's registration.
He also denied that the competing trade marks are identical with or deceptively similar. It is denied that the consumers associate the trade mark
SONA with the goods of the Appellant/Petitioner. It is denied that the application of trade mark GOLD LEAF of Respondent No. 1 is barred by
Section 12(1) of the Act.
He also submitted that the Respondent No. 1 has completely established their proprietary rights over the trade mark GOLD LEAF on account of
prior adoption and continuous user under Section 18(1) of the Act. Cogent and sufficient documentary evidence has been placed on record by
Respondent No. 1 in order to substantiate the proprietary rights. The contents of para above are legal and does not need any admission or denial.
He also submits, that the appeal being devoid of any merit deserves to be dismissed.
He also relied upon the decision of 1996 PTC (16) and 1994 PTC (244) and 1996 (16) PTC 699 (Del), Roshan Lal Oil Mills Ltd. v. 'Assam Co.
Ltd. Also relied upon Shangrila case and Durga Dutt Sharma case and Amritdhara case.
(i) In Roshan Lal Oil Mills Ltd. v. Assam Co. Ltd.
It was held the Plaintiff registered proprietor of Trade Mark 'JUMBO LABEL' with device of Aeroplane in respect of EDIBLE OILS. Defendant
also using Trade mark JUMBO LABEL but with device of Elephant in respect of its product TEA. The two marks as its visually dissimilar. The
device used also different in chance of deception. Interim injunction refused.
(ii) In 1994 (14) PTC 244 (Del), M/s. Surya Roshini Ltd. v. Electronic Sound Components Co I.t was held the Plaintiff prior user and adopter of trade
mark 'SURYA' in respect of fluorescent tubes, lamps, bulbs, chokes, etc. The adoption of trade mark 'BHASKAR' with the device of Sun by the
Defendant in respect of electronic chokes - and mark create confusion and deception - In case of passing off in market and marked is deceptively
similar.
(iii) In 1995 (15) PTC 209 (Del), Murari Lal Harish Chander Jaiswal v. Raj Zarda Work sThe Defendant shall during the pendency of the suit remain
restrained from using any mark or label which may be deceptively similar with or may or may be likely to cause confusion with the Plaintiffs label of
HANS CHHAP. The photo to bird and the photo of Plaintiff or any other similar photo as may infringe the copyright of the Plaintiff shall not be used
by the Defendants. The word DUCK does not have any phonetic structural or visual similarity with the word HANS. The two words do not mean the
same thing.
Also he cited a page of dictionary of Bhargava's, where the SONA means GOLD, SONA means lie, to sleep. An excellent thing a swan.
Now after going through all documents and hearing the submission of both the parties, we are of the view that the public are not so ignorant that
they may be unable to distinguish the meaning of GOLD and SONA. All are aware the SONA means GOLD and both are same thing. In Northern
India, in Hindi speaking, all the people know that GOLD means SONA and SONA means GOLD. Learned Assistant Registrar has allowed the
application by his order, based upon the judgement of Amritdhara case. On the basis of that judgement he dismissed the opposition. In this case we
are of the view that case law is not applicable. In the present case, the trade channel is same, the goods are also same, it will cause confusion among
the general buying public as the mark used by the Respondent convey similar idea as the registered mark of the Appellant. The registered owner of
Trade Mark has a proprietary rights upon his trade mark and also have right to protect his proprietary right. No one can have right to encash his
goodwill and reputation which acquired in course of trade in long run, by duplicating to another persons Trade Mark. The trade mark owner naturally
not to allow his goodwill and reputation. In this case competing marks are identical and deceptively similar. The mark is deceptively similar and is likely
to cause confusion amongst the consumers. So it is prohibited to registration under Section 11(a) of Trade Mark and Merchandise Mark Act, 1958.
For the purity of register, this mark cannot be allow to registration.
In view of the above, we allow the appeal and set aside the order dated 5th September 2000 of learned Assistant Registrar on the above
observation, without any cost.